53132 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3, 5, 7, and 10

[Docket No. : 960606163–7130–02]

RIN 0651–AA80

Changes to Patent Practice and

Procedure

AGENCY: Patent and Trademark Office,

Commerce.

ACTION: Final rule.

SUMMARY: The Patent and Trademark

Office (Office) is amending the rules of

practice to simplify the requirements of

the rules, rearrange portions of the rules

for better context, and eliminate

unnecessary rules or portions thereof as

part of a government-wide effort to

reduce the regulatory burden on the

American public. Exemplary changes

include: simplification of the procedure

for filing continuation and divisional

applications; amendment of a number of

rules to permit the filing of a statement

that errors were made without deceptive

intent, without a requirement for a

further showing of facts and

circumstances; and elimination of the

requirement that the inventorship be

named in an application on the day of

its filing, which eliminates the need for

certain petitions to correct inventorship.

EFFECTIVE DATE: December 1, 1997.

FOR FURTHER INFORMATION CONTACT:

Hiram H. Bernstein or Robert W. Bahr,

Senior Legal Advisors, by telephone at

(703) 305–9285, or by mail addressed to:

Box Comments— Patents, Assistant

Commissioner for Patents, Washington,

DC 20231 marked to the attention of Mr.

Bernstein or by facsimile to (703) 308–

6916.

SUPPLEMENTARY INFORMATION: This rule

change implements the

Administration’s program of reducing

the regulatory burden on the American

public in accordance with the changes

proposed in the Notice of Proposed

Rulemaking entitled ‘‘1996 Changes to

Patent Practice and Procedure’’ (Notice

of Proposed Rulemaking), published in

the Federal Register at 61 FR 49819

(September 23, 1996), and in the Official

Gazette at 1191 Off. Gaz. Pat. Office 105

(October 22, 1996). The changes

involve: (1) simplification of procedures

for filing continuation and divisional

applications, establishing lack of

deceptive intent in reissues, petition

practice, and in the filing of papers

correcting improperly requested small

entity status; (2) elimination of

unnecessary requirements, such as

certain types of petitions to correct

inventorship under § 1.48; (3) removal

of rules and portions thereof that merely

represent instructions as to the internal

management of the Office more

appropriate for inclusion in the Manual

of Patent Examining Procedure (MPEP);

(4) rearrangement of portions of rules to

improve their context; and (5)

clarification of rules to aid in

understanding of the requirements that

they set forth.

Changes to Proposed Rules: This Final

Rule contains a number of changes to

the text of the rules as proposed for

comment. The significant changes (as

opposed to additional grammatical

corrections) are discussed below.

Familiarity with the Notice of Proposed

Rulemaking is assumed.

Discussion of Specific Rules and

Response to Comments: Forty-three

written comments were received in

response to the Notice of Proposed

Rulemaking. The written comments

have been analyzed. For contextual

purposes, the comment on a specific

rule and response to the comment are

provided with the discussion of the

specific rule. Comments in support of

proposed rule changes generally have

not been reported in the responses to

comments sections.

Title 37 of the Code of Federal

Regulations, Parts 1, 3, 5, 7, and 10 are

amended as follows:

Part 1

Section 1.4

Section 1.4, paragraphs (d)(1) and (2),

are amended to be combined into § 1.4

paragraphs (d)(1)(i) and (d)(1)(ii).

Section 1.4(d)(1)(ii) is also amended to

include the phrase ‘‘direct or indirect

copy’’ to clarify that the copy of the

document(s) constituting the

correspondence submitted to the Office

may be a copy of a copy (of any

generation) of the original document(s),

or a direct copy of the original

document(s).

Section 1.4(d)(2) is amended to

provide that the presentation to the

Office (whether by signing, filing,

submitting, or later advocating) of any

paper by a party, whether a practitioner

or non-practitioner, constitutes a

certification under § 10.18(b), and that

violations of § 10.18(b)(2) may subject

the party to sanctions under § 10.18(c).

That is, by presenting a paper to the

Office, the party is making the

certifications set forth in § 10.18(b), and

is subject to sanctions under § 10.18(c)

for violations of § 10.18(b)(2), regardless

of whether the party is a practitioner or

non-practitioner. The sentence ‘‘[a]ny

practitioner violating § 10.18(b) may

also be subject to disciplinary action’’

clarifies that a practitioner may be

subject to disciplinary action in lieu of

or in addition to sanctions under

§ 10.18(c) for violations of § 10.18(b).

Section 1.4(d)(2) is amended so that

the certifications set forth in § 10.18(b)

are automatically made upon presenting

any paper to the Office by the party

presenting the paper. The amendments

to §§ 1.4(d) and 10.18 support the

amendments to §§ 1.6, 1.8, 1.10, 1.27,

1.28, 1.48, 1.52, 1.55, 1.69, 1.102, 1.125,

1.137, 1.377, 1.378, 1.804, 1.805,

(§§ 1.821 and 1.825 will be reviewed at

a later date in connection with other

matters), 3.26, and 5.4 that delete the

requirement for verification (MPEP 602)

of statements of facts by applicants and

other parties who are not registered to

practice before the Office. The absence

of a required verification has been a

source of delay in the prosecution of

applications, particularly where such

absence is the only defect noted. The

change to §§ 1.4(d) and 10.18

automatically incorporates required

averments thereby eliminating the

necessity for a separate verification for

each statement of facts that is to be

presented, except for those instances

where the verification requirement is

retained. Similarly, the amendments to

§§ 1.4(d) and 10.18 support an

amendment to § 1.97 (§§ 1.637 and

1.673 will be reviewed at a later date in

connection with other matters) that

changes the requirements for

certifications to requirements for

statements. This change in practice does

not affect the separate verification

requirement for an oath or declaration

under § 1.63, affidavits or declarations

under §§ 1.130, 1.131, and 1.132, or

statements submitted in support of a

petition under § 5.25 for a retroactive

license. The statements in §§ 1.494(e)

and 1.495(f) that verification of

translations of documents filed in a

language other than English may be

required is also maintained, as such

requirements are made rarely and only

when deemed necessary (e.g., when

persons persist in translations which

appear on their face to be inaccurate).

The requirements for certification of

service on parties in §§ 1.248, 1.510,

1.637 and 10.142 are also maintained.

Section 1.4 is also amended to add a

new paragraph (g) related to an

applicant who has not made of record

a registered attorney or agent being

required to state whether assistance was

received in the preparation or

prosecution of a patent application. This

is transferred from § 1.33(b) for

consistent contextual purposes.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53133

Section 1.6

Section 1.6(d)(3) is amended to

provide that continued prosecution

applications under § 1.53(d) may be

transmitted to the Office by facsimile.

However, the procedures described in

§ 1.8 do not apply to, and no benefit

under § 1.8 will be given to, a continued

prosecution application under § 1.53(d).

That is, an applicant may file a

continued prosecution application by

facsimile transmission, but the filing

date accorded such continued

prosecution application will be the date

the complete transmission of the

continued prosecution application is

received in the Office. For example, a

continued prosecution application

transmitted by facsimile from California

at 10:30 p.m. (Pacific time) on

November 18, 1997, and received in the

Office at 1:30 a.m. (Eastern time) on

November 19, 1997, will be accorded a

filing date of November 19, 1997. An

applicant filing a continued prosecution

application by facsimile transmission

bears the responsibility of transmitting

such application in a manner and at a

time that will ensure its complete and

timely (§ 1.53(d)(1)(ii)) receipt in the

Office.

An applicant filing an application

under § 1.53(d) (a continued

prosecution application) by facsimile

must include an authorization to charge

(at least) the basic filing fee to a deposit

account, or the application must be

treated under § 1.53(f) as having been

filed without the basic filing fee (as fees

cannot otherwise be transmitted by

facsimile). To avoid paying the late

filing surcharge under § 1.16(e), an

application (including an application

under § 1.53(d)) must include the basic

filing fee (§ 1.16(e)). As such, payment

of the basic filing fee for an application

under § 1.53(d) on any date later than

the filing date of the application under

§ 1.53(d) (even if paid within the period

for reply to the last action in the prior

application) is ineffective to avoid the

late filing surcharge under § 1.16(e).

Therefore, unless an application under

§ 1.53(d) filed by facsimile includes an

authorization to charge the basic filing

fee to a deposit account, the applicant

will be given a notification requiring

payment of the appropriate filing fee

(§ 1.53(d)(3)) and the late filing

surcharge under § 1.16(e) to avoid

abandonment of the § 1.53(d)

application.

Section 1.6(d)(3) is also amended to

delete the reference to § 1.8(a)(2)(ii)(D)

as this paragraph was deleted in the

Final Rule entitled ‘‘Communications

with the Patent and Trademark Office’’

(‘‘Communications with the Office’’),

published in the Federal Register at 61

FR 56439, 56443 (November 1, 1996),

and in the Official Gazette at 1192 Off.

Gaz. Pat. Office 95 (November 26, 1996).

Section 1.6(d)(6) is amended to reflect

the transfer of material from §§ 5.6, 5.7,

and 5.8 to §§ 5.1 through 5.5.

Section 1.6(e)(2) is amended to

remove the requirement that the

statement be verified in accordance with

the change to §§ 1.4(d)(2) and 10.18.

Section 1.6(f) is added to provide for

the situation in which the Office has no

evidence of receipt of an application

under § 1.53(d) (a continued

prosecution application) transmitted to

the Office by facsimile transmission.

Section 1.6(f) requires that a showing

thereunder include, inter alia, a copy of

the sending unit’s report confirming

transmission of the application under

§ 1.53(d) or evidence that came into

being after the complete transmission of

the application under § 1.53(d) and

within one business day of the complete

transmission of the application under

§ 1.53(d). Therefore, applicants are

advised to retain copies of the sending

unit’s reports in situations in which

such unit is used to transmit

applications under § 1.53(d) to the

Office or otherwise maintain a log book

of the transmission of any application

under § 1.53(d) to the Office. See also

‘‘Communications with the Patent and

Trademark Office’’ Final Rule.

No comments were received regarding

the proposed change to § 1.6.

Section 1.8

Section 1.8(a)(2)(i)(A) is amended to

specifically refer to a request for a

continued prosecution application

under § 1.53(d) as a correspondence

filed for the purposes of obtaining an

application filing date, which is

excluded by § 1.8(a)(2)(i)(A) from the

procedure set forth in § 1.8. The purpose

of this amendment is to render it clear

that, notwithstanding that a continued

prosecution application under § 1.53(d)

may be filed by facsimile transmission,

the procedure set forth in § 1.8 does not

apply to a request for a continued

prosecution application under § 1.53(d)

(or any correspondence filed for the

purpose of obtaining an application

filing date). That is, the date on the

certificate of transmission (§ 1.8(a)) of an

application under § 1.53(d) is not

controlling (or even relevant), in that an

application under § 1.53(d) (a continued

prosecution application) filed by

facsimile transmission will not be

accorded a filing date as of the date on

the certificate of transmission (§ 1.8(a)),

unless Office records indicate, or

applicant otherwise establishes

pursuant to § 1.6(f), receipt in the Office

of the complete application under

§ 1.53(d) on the date on the certificate of

transmission, and that date is not a

Saturday, Sunday, or Federal holiday.

Section 1.8(b)(3) is amended to

remove the requirement that the

statement be verified in accordance with

the change to §§ 1.4(d)(2) and 10.18.

Section 1.9

Section 1.9(d) is amended to define a

small business concern as used in 37

CFR Chapter I as any business concern

meeting the size standards set forth in

13 CFR Part 121 to be eligible for

reduced patent fees. The regulations of

the Small Business Administration

(SBA) set forth the size standards of a

business concern to be eligible for

reduced patent fees. See 13 CFR

121.802. Thus, the language in § 1.9(d)

duplicating such size standards is

deleted as redundant, and to avoid

confusion in the event that such size

standards are subsequently changed by

the SBA. The MPEP will include SBA’s

regulations concerning size standards

for a business concern to be eligible for

reduced patent fees.

Section 1.9(f) is amended to add the

phrase ‘‘eligible for reduced patent fees’’

to clarify that a small entity as used in

37 CFR Chapter I is limited to an

independent inventor, a small business

concern or a non-profit organization that

is eligible for reduced patent fees under

35 U.S.C. 41(h)(1).

Section 1.10

Sections 1.10 (d) and (e) are amended

to remove the requirement for a

statement that is verified.

Comment 1: One comment suggested

that § 1.10 be amended to clearly set

forth the controlling date for

correspondence filed by ‘‘Express Mail’’

under § 1.10.

Response: Section 1.10 was

substantially amended in the

‘‘Communications with the Office’’ Rule

Final (discussed supra). Section 1.10(a)

as amended in the aforementioned Final

Rule provides that: (1) correspondence

received by the Office that was

delivered by the ‘‘Express Mail Post

Office to Addressee’’ service of the

United States Postal Service (USPS)

under § 1.10 will be considered filed in

the Office on the date of deposit with

the USPS; (2) the date of deposit with

the USPS is shown by the ‘‘date-in’’ on

the ‘‘Express Mail’’ mailing label or

other official USPS notation; and (3) if

the USPS deposit date cannot be

determined, the correspondence will be

accorded the Office receipt date as the

filing date.
53134 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Section 1.11

Section 1.11(b) is amended to provide

that the filing of a continued

prosecution application under § 1.53(d)

of a reissue application will not be

announced in the Official Gazette.

Although the filing of a continued

prosecution application of a reissue

application constitutes the filing of a

reissue application, the announcement

of the filing of such continued

prosecution application would be

redundant in view of the announcement

of the filing of the prior reissue

application in the Official Gazette.

Section 1.14

Section 1.14(a) is amended to: (1)

clarify the provisions of § 1.14(a); (2)

provide that copies of an application-asfiled may be provided to any person on

written request accompanied by the fee

set forth in § 1.19(b), without notice to

the applicant, if the application is

incorporated by reference in a U.S.

patent; and (3) treat applications in the

file jacket of a pending application

under § 1.53(d) as pending rather than

abandoned in determining whether

copies of, and access to, such

applications will be granted.

Under current practice, the public is

entitled to access to the original

disclosure (or application-as-filed) of an

application, when the application is

incorporated by reference into a U.S.

patent. See In re Gallo, 231 USPQ 496

(Comm’r Pat. 1986). Section 1.14(a)(2) is

added to avoid the need for a petition

under § 1.14(e) to obtain a copy of the

original disclosure (or application-asfiled) of an application that is

incorporated by reference into a U.S.

patent.

Section 1.14 is also amended to add

a paragraph (f) to recognize the change

to § 1.47 (a) and (b) which add

exceptions to maintaining pending

applications in confidence by providing

public notice to nonsigning inventors of

the filing of a patent application.

Comment 2: One comment stated that

the change from ‘‘applications preserved

in secrecy’’ to ‘‘applications preserved

in confidence’’ suggests a lower level of

security for the applications permitting

greater discovery by third parties.

Response: The term ‘‘secrecy’’ in

§ 1.14 was changed to ‘‘confidence’’ in

the Final Rule entitled ‘‘Miscellaneous

Changes in Patent Practice’’

(‘‘Miscellaneous Changes in Patent

Practice’’), published in the Federal

Register at 61 FR 42790 (August 19,

1996), and in the Official Gazette at

1190 Off. Gaz. Pat. Office 67 (September

17, 1996). This change did not represent

a change in practice, but merely

conformed the language of § 1.14 to that

of 35 U.S.C. 122 (the term ‘‘secrecy’’ is

a term of art in regard to matters of

national security, and its former use in

§ 1.14 was inappropriate).

Section 1.16

Section 1.16 is amended to add new

paragraphs (m) and (n) including the

unassociated text following paragraphs

(d) and (l).

No comments were received

concerning § 1.16.

Section 1.17

Section 1.17 (and § 1.136(a)) adds a

recitation to an extension of time fee

payment for a reply filed within a fifth

month after a nonstatutory or shortened

statutory period for reply was set.

Section 1.17(a) is subdivided into

paragraphs (a)(1) through (a)(5), with

paragraphs (a)(1) through (a)(4) setting

forth the amounts for one-month

through four-month extension fees.

Section 1.17(a)(5) provides the small

entity and other than small entity

amounts for the new fifth-month

extension fee.

Section 1.17(a) is being amended to

permit a petition for a fifth-month

extension of time. As the Office may set

a shortened statutory period for reply of

one-month or thirty days, whichever is

longer, this authority for a petition

under § 1.136(a) will permit an

applicant to extend the period for reply

until the six-month statutory maximum

(35 U.S.C. 133) without resorting to a

petition under § 1.136(b), or to extend

by five months, pursuant to § 1.136(a),

a non-statutory period for taking action

(e.g., the time period in § 1.192(a) for

filing an appeal brief).

Section 1.17 paragraphs (e), (f), and

(g) are rewritten as § 1.17 paragraphs (b),

(c), and (d).

Section 1.17(h) is amended to delete

references to petitions under §§ 1.47,

1.48, and 1.84. Sections 1.47, 1.48, and

1.84 (a) and (b) are amended to contain

a reference to the petition fee set forth

in § 1.17(i), rather than the petition fee

set forth in § 1.17(h).

Section 1.17(i) is amended to: (1) add

a petition under § 1.41 to supply the

name(s) of the inventor(s) after the filing

date without an oath or declaration as

prescribed by § 1.63, except in

provisional applications; (2) add a

petition under § 1.47 for filing by other

than all the inventors or a person not

the inventor; (3) add a petition under

§ 1.48 for correction of inventorship,

except in provisional applications; (4)

add a petition under § 1.59 for

expungement and return of information;

(5) delete the references to petitions

under §§ 1.60 and 1.62 in view of the

deletion of §§ 1.60 and 1.62; (6) add a

petition under § 1.84 for accepting color

drawings or photographs; and (7) add a

petition under § 1.91 for entry of a

model or exhibit.

Section 1.17(q) is amended to add a

petition under § 1.41 to supply the

name(s) of the inventor(s) after the filing

date without a cover sheet as prescribed

by § 1.51(c)(1) in a provisional

application.

Section 1.17, as well as §§ 1.103,

1.112, 1.113, 1.133, 1.134, 1.135, 1.136,

1.142, 1.144, 1.146, 1.191, 1.192, 1.291,

1.294, 1.484, 1.485, 1.488, 1.494, 1.495,

(§§ 1.530, 1.550, 1.560, 1.605, 1.617,

1.640, and 1.652 will be reviewed at a

later date in connection with other

matters), 1.770, 1.785, (§ 1.821 will be

reviewed at a later date in connection

with other matters), and 5.3 are also

amended to replace the phrases

‘‘response’’ and ‘‘respond’’ with the

phrase ‘‘reply’’ for consistency with

§ 1.111.

Comment 3: One comment questioned

why the terms ‘‘respond’’ and

‘‘response’’ in the rules of practice were

being replaced with the term ‘‘reply.’’

Response: It is appropriate to use a

single term (‘‘reply’’) throughout the

rules of practice, to the extent possible,

to refer to that ‘‘reply’’ by an applicant

to an Office action required to avoid

abandonment and continue prosecution.

Comment 4: At least one comment

noted that there is no statutory authority

under 35 U.S.C. 41(a)(8)(C) for the

$2,010 amount set for the fifth month

extension of time.

Response: While the Notice of

Proposed Rulemaking proposed a fifth

month extension fee of $2010, a Notice

of Proposed Rulemaking entitled

‘‘Revision of Patent and Trademark Fees

for Fiscal Year 1998’’ (‘‘1998 Fee

Revision’’), published in the Federal

Register at 62 FR 24865 (May 7, 1997),

and in the Official Gazette at 1198 Off.

Gaz. Pat. Office 97 (May 27, 1997),

proposed that this fee be set at $2060.

The Office is now adopting the $2060

fifth month extension fee as proposed in

the ‘‘1998 Fee Revision’’ Notice of

Proposed Rulemaking.

Under 35 U.S.C. 41(a)(8)(C) (1991),

the Commissioner is authorized to

charge $340 for any third or subsequent

petition for a one-month extension of

time. However, under 35 U.S.C. 41(f),

the additional fee established pursuant

to 35 U.S.C. 41(a)(8)(C) for a subsequent

petition for a one-month extension of

time has been increased to $560 (i.e.,

$560 is the current difference

(established under 35 U.S.C. 41(a)(8)(C))

between the $1510 fee for a four-month

extension of time and the $950 threemonth extension of time). The $1510 fee
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53135

for a four-month extension of time plus

the $560 fee for an additional month is

$2070 (this differs from the $2060 fee

proposed in the ‘‘1998 Fee Revision’’

Notice of Proposed Rulemaking due to

rounding). Therefore, the Office is

authorized under 35 U.S.C. 41(a)(8) to

establish a fee of $2060 for a five-month

extension of time.

Section 1.21

Section 1.21(l) is amended for

consistency with § 1.53, and § 1.21(n) is

amended to change the reference to an

improper application under §§ 1.60 or

1.62 to a reference to an application in

which proceedings are terminated

pursuant to § 1.53(e).

No comments were received regarding

the proposed change to § 1.21.

Section 1.26

Section 1.26(a) is amended to better

track the statutory language of 35 U.S.C.

42(d) and to add back language relating

to refunds of fees paid that were not

‘‘required’’ that was inadvertently

dropped in the July 1, 1993, publication

of title 37 CFR, and from subsequent

publications.

No comments were received regarding

the proposed change to § 1.26.

Section 1.27

Section 1.27 paragraphs (a) through

(d) are amended to remove the

requirement that a statement filed

thereunder be ‘‘verified,’’ and to replace

‘‘aver’’ and ‘‘averring’’ with ‘‘state’’ and

‘‘stating.’’ See comments relating to

§ 1.4(d). Section 1.27(b) is also amended

for clarification with the movement of a

clause relating to ‘‘any verified

statement’’ within a sentence.

No comments were received regarding

the proposed change to § 1.27.

Section 1.28

Section 1.28(a) is amended to remove

the requirement for a statement that is

‘‘verified.’’ See comments relating to

§ 1.4(d).

Section 1.28(a) is also amended to

provide that a new small entity

statement is not required for a

continuing or reissue application where

small entity status is still proper and

reliance is placed on a reference to a

small entity statement filed in a prior

application or patent or a copy thereof

is supplied. Section 1.28(a) is further

amended to state that the payment of a

small entity basic statutory filing fee in

a nonprovisional application, which

claims benefit under 35 U.S.C. 119(e),

120, 121, or 365(c) of a prior application

(including a continued prosecution

application) or in a reissue application,

where the prior application or the

patent has small entity status, will

constitute a reference in the continuing

or reissue application to the small entity

statement in the prior application or in

the patent, thereby establishing small

entity status in such a nonprovisional

application.

Section 1.28(a) is also amended to

require a new determination of

continued entitlement to small entity

status for continued prosecution

applications filed under § 1.53(d) and to

clarify that the refiling of applications as

continuations, divisions and

continuation-in-part applications and

the filing of reissue applications also

require a new determination of

continued entitlement to small entity

status prior to reliance on small entity

status in a prior application or patent.

Comment 5: One comment asked

whether the change to § 1.28 regarding

small entity requires that a small entity

statement be filed with each continuing

application.

Response: While the filing of a

continuing application requires a new

determination of entitlement to small

entity status, § 1.28(a) continues to

permit reliance on a small entity

statement filed in a prior application for

nonprovisional continuing applications.

Section 1.28(c) is amended to remove

the requirement for a statement of facts

explaining how an error in payment of

a small entity fee(s) occurred in good

faith and how and when the error was

discovered. A fee deficiency payment

under § 1.28(c) must include the

difference between fee(s) originally paid

as a small entity and the other than

small entity fee(s) in effect at the time

of payment of the complete fee

deficiency. A fee deficiency payment

under § 1.28(c) will be treated as a

representation by the party submitting

the payment that small entity status was

established in good faith and that the

original payment of small entity fees

was made in good faith. Any paper

submitted under § 1.28(c) will be placed

in the appropriate file without review

after the processing of any check or the

charging of any fee deficiency payment

specifically authorized.

Comment 6: One comment suggested

that § 1.28(c) be amended to clarify

current Office practice regarding the

acceptance of papers under § 1.28(c)(2)

in light of two recent District Court

decisions: (1) Haden Schweitzer Corp. v.

Arthur B. Myr Industries, Inc., 901 F.

Supp. 1235, 36 USPQ2d 1020 (E.D.

Mich. 1995); and (2) DH Technology,

Inc. v. Synergstex International, Inc.,

937 F. Supp. 902, 40 USPQ2d 1754

(N.D. Cal. 1996).

Response: The Office is also aware of

a recent District Court decision in

Jewish Hospital of St. Louis v. Idexx

Laboratories, 951 F. Supp 1, 42 USPQ2d

1720 (D. Me. 1996), that relies on

§ 1.28(c)(2) exclusively. The changes to

§ 1.28(c) are not directed to the issue of

whether § 1.28(c)(2) must be viewed as

the exclusive remedy. Nevertheless, an

applicant or patentee can avoid

undesirable results by not claiming

small entity status unless it is absolutely

certain that the applicant or patentee is

entitled to small entity status (i.e.,

resolving any doubt, uncertainty, or lack

of information in favor of payment of

the full fee). See MPEP 509.03 (‘‘Small

entity status must not be established

unless the person or persons signing the

* * * statement can unequivocally

make the required self-certification’’

(emphasis added)).

Section 1.33

Section 1.33 is amended to no longer

provide that the required residence and

post office address of the applicant can

appear elsewhere than in the oath or

declaration under § 1.63. Section

1.63(a)(3) is amended to require that the

post office address as well as the

residence be identified therein and not

elsewhere. Permitting the residence to

be elsewhere in the application other

than the oath or declaration, as was in

§ 1.33(a), would be inconsistent with

unamended § 1.63(c) that states that the

residence must appear in the oath or

declaration. The requirement for

placement of the post office address is

equivalent to the requirement for the

residence to eliminate confusion

between the two, which often are the

same destination and are usually

provided in the oath or declaration. The

reference in § 1.33(a) to the assignee

providing a correspondence address has

been moved within § 1.33(a) for

clarification. Other clarifying language

includes a reference to § 1.34(b), use of

the terms ‘‘provided,’’ ‘‘furnished’’

rather than ‘‘notified,’’ and

‘‘application’’ rather than ‘‘case,’’ and

deletion of the expression ‘‘of which the

Office.’’

The former language of § 1.33(b) is

transferred to new § 1.4(g). Section

1.33(b) is amended to set forth the

signature requirement for papers filed in

an application (formerly in § 1.33(a)).

Section 1.33(b) is specifically amended

to provide that amendments and other

papers filed in an application must be

signed by: (1) an attorney or agent of

record appointed in compliance with

§ 1.34(b); (2) a registered attorney or

agent not of record who acts in a

representative capacity under the

provisions of § 1.34(a); (3) the assignee

of record of the entire interest (if there

is such); (4) an assignee of record of an
53136 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

undivided part interest (if there is such),

so long as the amendment or other

paper is also signed by any assignee(s)

of the remaining interest and any

applicant retaining an interest; or (5) all

of the applicants, including applicants

under §§ 1.42, 1.43 and 1.47, unless

there is an assignee of record of the

entire interest and such assignee has

chosen to prosecute the application to

the exclusion of the applicant(s), and, as

such, has taken action in the application

in accordance with §§ 3.71 and 3.73.

This is not a change in practice, but

simply a clarification of current

signature requirements.

No comments were received regarding

the proposed change to § 1.33.

Section 1.41

Section 1.41(a) (and § 1.53) is

amended to no longer require that a

patent be applied for in the name of the

actual inventors for an application for

patent to be accorded a filing date. The

requirement for use of full names is

moved to § 1.63(a) for better context.

Section 1.41(a) is specifically amended:

(1) To provide that a patent is applied

for in the name(s) of the actual

inventor(s); (2) to add paragraphs (a)(1)

and (a)(2) indicating how the

inventorship is set forth in a

nonprovisional and provisional

application; and (3) to add paragraph

(a)(3) indicating the need for an

identifier consisting of alphanumeric

characters if no name of an actual

inventor is provided.

Section 1.41(a)(1) provides that the

inventorship of a nonprovisional

application is that inventorship set forth

in the oath or declaration as prescribed

by § 1.63, except as provided for in

§§ 1.53(d)(4) and 1.63(d). Section

1.41(a)(1) also provides that if an oath

or declaration as prescribed by § 1.63 is

not filed during the pendency of a

nonprovisional application, the

inventorship is that inventorship set

forth in the application papers filed

pursuant to § 1.53(b), unless a petition

under this paragraph accompanied by

the fee set forth in § 1.17(i) is filed

supplying the name(s) of the inventor(s).

Section 1.41(a)(2) provides that the

inventorship of a provisional

application is that inventorship set forth

in the cover sheet as prescribed by

§ 1.51(c)(1). Section 1.41(a)(2) also

provides that if a cover sheet as

prescribed by § 1.51(c)(1) is not filed

during the pendency of a provisional

application, the inventorship is that

inventorship set forth in the application

papers filed pursuant to § 1.53(c), unless

a petition under this paragraph

accompanied by the fee set forth in

§ 1.17(q) is filed supplying the name(s)

of the inventor(s).

35 U.S.C. 120 and § 1.78(a) require,

inter alia, that an application have at

least one inventor in common with a

prior application to obtain the benefit of

the filing date of such application.

Considering the executed oath or

declaration (or cover sheet in a

provisional application) the sole

mechanism for naming the inventor(s)

would operate as a trap in the event that

an application were abandoned prior to

the filing of an oath or declaration in

favor of a continuing application (or in

the event that a cover sheet was not

filed in a provisional application). To

avoid this result, § 1.41 as adopted

provides that the inventorship is that

inventorship named in an executed oath

or declaration under § 1.63 (or in the

cover sheet under § 1.51(c)(1) in a

provisional application), but that if no

executed oath or declaration under

§ 1.63 (or cover sheet under § 1.51(c)(1)

in a provisional application) is filed

during the pendency of the application,

the inventorship will be considered to

be the inventor(s) named in the original

application papers.

In the peculiar situation in which no

inventor is named in the original

application papers (or the correct

inventor(s) are not named in the original

application papers), and no executed

oath or declaration under § 1.63 (or

cover sheet under § 1.51(c)(1) in a

provisional application) is filed during

the pendency of the application, it will

be necessary for the applicant to file a

petition under § 1.41(a) (and appropriate

fee) to name the inventor(s). No

explanation (other than that the paper is

supplying or changing the name(s) of

the inventor(s)) or showing of facts

concerning the inventorship or any

delay in naming the inventorship is

required or desired in a petition under

§ 1.41(a). The petition fee is required to

cover (or defray in a provisional

application) the costs of updating the

Office’s records for the application.

Where no inventor(s) is named on

filing, the Office requests that an

identifying name be submitted for the

application. The use of very short

identifiers should be avoided to prevent

confusion. Without supplying at least a

unique identifying name the Office may

have no ability or only a delayed ability

to match any papers submitted after

filing of the application and before

issuance of an identifying application

number with the application file. Any

identifier used that is not an inventor’s

name should be specific, alphanumeric

characters of reasonable length, and

should be presented in such a manner

that it is clear to application processing

personnel what the identifier is and

where it is to be found. It is strongly

suggested that applications filed

without an executed oath or declaration

under § 1.63 or 1.175 include the name

of the person(s) believed to be the

inventor for identification purposes.

Failure to apprise the Office of the

application identifier being used may

result in applicants having to resubmit

papers that could not be matched with

the application and proof of the earlier

receipt of such papers where

submission was time dependent.

As any inventor(s) named in the

original application papers is

considered to be the inventor(s) only

when no oath or declaration under

§ 1.63 is filed in a nonprovisional

application or cover sheet under

§ 1.51(c)(1) filed in a provisional

application, the recitation of the

inventorship in an application

submitted under § 1.53 (b) or (d)

without an executed oath or declaration

or cover sheet, respectively, for

purposes of identification may be

changed merely by the later submission

of an oath or declaration executed by a

different inventive entity without

recourse to a petition under § 1.41 or

1.48.

Comment 7: One comment noted that

when an application is filed only an

alphanumeric identifier may be used,

which would of necessity require a

correction of inventorship, and

questioned how a verified statement

under § 1.48(a) could be filed as there

would be no person to sign such

statement, whether the Office will

require that the name(s) of the

inventor(s) be submitted within a

specified period, and whether the filing

date will be lost if the name(s) of the

inventor(s) is not submitted within such

period.

Response: The name(s) of the

inventor(s) in a nonprovisional

application are provided in the oath or

declaration under § 1.63 (§ 1.41(a)(2))

and the name(s) of the inventor(s) in a

provisional application are provided in

the cover sheet (§ 1.41(a)(3)). Thus, an

application filed without the name(s) of

the inventor(s) must also have been filed

without an oath or declaration under

§ 1.63 (nonprovisional) or cover sheet

(provisional).

The Office will set a time period in a

nonprovisional application filed

without an oath or declaration under

§ 1.63 for the filing of such an oath or

declaration (§ 1.53(f)). The Office will

set a time period in a provisional

application filed without a cover sheet

for the filing of such cover sheet

(§ 1.53(g)). The subsequently filed oath

or declaration or cover sheet will
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53137

provide the name(s) of the inventor(s).

No petition under § 1.48(a) would be

required where there was an

alphanumeric identifier (and not a name

of a person) or where the person(s) set

forth as the inventor(s) was incorrect.

In the event that an oath or

declaration or cover sheet is not timely

filed, the application will become

abandoned and the inventorship will be

considered to be the inventor(s) named

in the original application papers. The

failure to timely file an oath or

declaration, cover sheet, or the name(s)

of the inventor(s) is not a filing date

issue.

Comment 8: One comment thought

that the proposed change eliminating

the need to identify any inventor would

lead to sloppy filing procedures and that

it should in almost all cases be possible

for practitioners to correctly identify the

inventors at the time of filing.

Response: Experience has

demonstrated that a significant number

of applications filed under § 1.53(b)

without an executed oath or declaration

have been filed with incorrect

inventorships with explanations

running from ‘‘there was no time to

investigate the inventorship’’ to ‘‘the

inventors contacted either did not

understand the inventorship

requirements under U.S. patent law or

did not appreciate that the claims as

filed included or did not include the

contribution of the omitted or

erroneously added inventor.’’

Additionally, Office experience is that

while almost all § 1.48(a) petitions

concerning such matters are eventually

granted, only a small percentage are

granted on the initial petition thereby

causing a prolonged prosecution period,

which is undesirable in view of the

amendment to 35 U.S.C. 154 contained

in the Uruguay Round Agreements Act

(URAA), Pub. L. 103–465, 108 Stat. 4809

(1994).

Section 1.47

Section 1.47 paragraphs (a) and (b) are

amended, pursuant to 35 U.S.C. 116 and

35 U.S.C 118, to provide for publication

in the Official Gazette of a notice of

filing for all applications, except for

continued prosecution applications

under § 1.53(d), submitted under this

section rather than only when notice to

the nonsigning inventor(s) is returned to

the Office undelivered or when the

address of the nonsigning inventor(s) is

unknown. The information to be

published, after grant of the § 1.47

petition, will include: The application

number, filing date, invention title and

name(s) of the nonsigning inventor(s).

Letters returned as undeliverable are

difficult to match with the related

application file, and when matched

with the file, the applications are

burdensome to flag as requiring further

action by the Office. Accordingly, the

return of letters is not a desirable means

of triggering publication of a notice to a

nonsigning inventor as to the filing of

the application. Furthermore, when a

returned letter is used as such a trigger,

another review of the application must

be made for returned correspondence.

As the best time for review of returned

letters is after allowance, but before

issuance, of an application, processing

of the application would be delayed and

done at a time that could be best used

for printing related processing

requirements. Printing of notice of the

filing of all applications wherein § 1.47

status is granted does not require any

such review to be made. In order to best

balance the obligation of providing

notice to inventors and efficient

processing of applications, notice in the

Official Gazette of the filing of § 1.47

applications will be prepared essentially

at the same time that the letter notice is

directly sent to the nonsigning inventor.

Paragraphs (a) and (b) of this section

are also amended to exclude the filing

of continued prosecution applications

under § 1.53(d) from the notice

requirement.

Section 1.47 is also amended for

clarification purposes. A reference to an

‘‘omitted inventor’’ in § 1.47(a) is

replaced with ‘‘nonsigning inventor.’’

The statements in § 1.47 paragraphs (a)

and (b) that a patent will be granted

upon a satisfactory showing to the

Commissioner are deleted as

unnecessary. Section 1.47(b) is amended

to clarify that it applies only where

none of the inventors are willing or can

be found to sign the oath or declaration

by substitution of ‘‘an inventor’’ by ‘‘all

the inventors.’’ The use of ‘‘must state’’

in regard to the last known address is

deleted as redundant in view of the

explicit requirement for such address in

the rule. The sentence in § 1.47(b)

referring to the filing of the assignment,

written agreement to assign or other

evidence of proprietary interest is

deleted as redundant in view of the

requirement appearing earlier in

§ 1.47(b) calling for ‘‘proof of pertinent

facts.’’

Comment 9: One comment believed

that the amendment to § 1.47(b) results

in a change in practice permitting an

assignee to proceed thereunder only

where all the inventors refuse to sign,

and that the assignee should not be

precluded from making the required

declaration where only one inventor

refuses to cooperate as the other

inventors may not have personal

knowledge of the facts.

Response: While the specific language

of § 1.47(b) is amended to recite the

condition that ‘‘all the inventors refuse

to execute an application’’ the prior use

of the term ‘‘inventor’’ was intended to

mean and was interpreted as meaning

all inventors. See MPEP 409.03(b).

Accordingly, the language clarification

is not a change in practice.

Although it is unclear as to what

particular ‘‘facts’’ the comment is

addressed to that the other inventors

would not have personal knowledge of,

facts as to the inventorship of the

noncooperating inventor would better

lie with the other inventors who are

after all required to be joint inventors,

35 U.S.C. 116, and therefore the other

inventors should have the best

knowledge of the facts required for a

declaration under § 1.63. Any

declaration of facts, in support of the

petition, to show, e.g., that an inventor

has refused to sign a declaration after

having been given an opportunity to do

so, should be made by someone with

first-hand knowledge of the events, such

as the attorney who presented the

inventor with the application papers.

Section 1.48

Section 1.48 provides for correction of

inventorship in an application (other

than a reissue application). Section

1.324 provides for correction of

inventorship in a patent. Sections 1.171

and 1.175 provide for correction of

inventorship in a patent via a reissue

application.

Section 1.48 is amended in its title to

clarify that the section concerns patent

applications, other than reissue

applications, and not patents. Where a

patent names an incorrect inventive

entity, the inventorship error may be

corrected by reissue. See MPEP 1402.

Where a reissue application names an

incorrect inventive entity in the

executed reissue oath or declaration

(whether the reissue application is filed

for the sole purpose or in-part to correct

the inventorship, or is filed for purposes

other than correction of the

inventorship), a new reissue oath or

declaration in compliance with § 1.175

may be submitted with the correct

inventorship without a petition under

§ 1.48. This is because it is the

inventorship of the patent being

reissued that is being corrected (via a

reissue application).

35 U.S.C. 251, ¶ 3, provides that the

provisions of title 35, U.S.C., relating to

applications apply to reissue

applications. 35 U.S.C. 116, ¶ 3,

authorizes the Commissioner to permit

correction of inventorship in an

application under such terms as the

Commissioner prescribes. The
53138 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Commissioner has determined that

correction of inventorship in a reissue

application may be accomplished under

35 U.S.C. 251 via the reissue oath or

declaration, without resort to a petition

under § 1.48. Therefore, § 1.48 has been

amended to specifically exclude its

applicability to correction of

inventorship in a reissue application.

Section 1.48(a) will not require

correction of the inventorship if the

inventorship or other identification

under § 1.41 was set forth in error on

filing of the application. Section 1.48(a)

is amended to apply only to correction

of inventor or inventors, in applications,

other than reissue applications, from

that named in an originally filed

executed oath or declaration and not to

the naming of inventors or others for

identification purposes under § 1.41.

The statement to be submitted will be

required only from the person named in

error as an inventor or from the person

who through error was not named as an

inventor rather than from all the original

named inventors so as to comply with

35 U.S.C. 116. The requirement that any

amendment of the inventorship under

§ 1.48(a) be ‘‘diligently’’ made has been

removed. The applicability of a rejection

under 35 U.S.C. 102(f) or (g) against an

application with the wrong inventorship

set forth therein and any patent that

would issue thereon is a sufficient

motivation for prompt correction of the

inventorship without the need for a

separate requirement for diligence.

Comment 10: Two comments

expressed opposition to deletion of the

diligence requirement in § 1.48

paragraphs (a) through (c) in that

removal thereof would seem to promote

delay in correction of the inventorship

and decrease the importance of having

the correct inventorship.

Response: In addition to the

motivation noted in the explanation of

the rules for not allowing a patent to

issue with improper inventorship, the

criteria for correction of the

inventorship becomes more restrictive

subsequent to issuance under § 1.324

(having a statutory basis under 35 U.S.C.

256) than under § 1.48(a) (having a

statutory basis under 35 U.S.C. 116). 35

U.S.C. 256 requires participation by all

the parties including each original

named inventor, which participation

may be harder to obtain after the patent

has issued. Petitions under § 1.48(a)

filed earlier while the application is

pending may seek waiver under § 1.183

of participation of some of the parties

needed to participate. Additionally,

petitions under § 1.48 in pending

applications are not entered as a matter

of right in rejected (the criteria of

§ 1.116 applies) or allowed (the criteria

of § 1.312 applies) applications. See

§ 1.48(a) and MPEP 201.03.

A clarifying reference to § 1.634 is

added in § 1.48(a) for instances when

inventorship correction is necessary

during an interference and has been

moved from § 1.48(a)(4) for improved

contextual purposes.

The § 1.48(a)(1) statement requires a

statement only as to the lack of

deceptive intent rather than a statement

of facts to establish how the

inventorship error was discovered and

how it occurred, since the latter

requirement is deleted. Additionally,

the persons from whom a statement is

required now includes any person who

through error was not named as an

inventor but limits statements from the

original named inventors to only those

persons named in error as inventors

rather than all persons originally named

as inventors including those correctly

named. The paragraph is amended to

remove the requirement that the

statement be verified in accordance with

the change to §§ 1.4(d)(2) and 10.18.

Comment 11: One comment opposed

the removal of the Office from

examining the issue of inventorship as

substantive law invalidates patents that

have issued in the names of incorrect

inventors and the Office is charged with

the duty of examining applications for

the purpose of denying issue to those

applications that do not meet the

standards of patentability. Where an

oath has originally been filed asserting

the proper inventor is one entity and a

subsequent paper asserts that the proper

inventor is another, under such

circumstances ‘‘the facts are inherently

suspect’’ and an investigation by the

Office is warranted and required by

statute.

Response: The amendments to § 1.48

have otherwise received overwhelming

support.

The Office has pursued the existence

of improper inventorship in

applications by rejection under 35

U.S.C. 102(f) or (g) and will continue to

do so independent of the change in the

verified statement requirements under

§ 1.48 paragraphs (a) or (c). A request to

change inventorship, however, often

requested by the current inventors or

assignee on their own initiative is not

seen to be inherently fraught with

deceptive intent as to warrant a close

and detailed examination absent more.

A statement that the error was made

without deceptive intent is seen to be a

sufficient investigation complying with

the statutory requirement under 35

U.S.C. 116, particularly as most

petitions are eventually granted or an

application can be refiled naming the

new desired inventive entity. Refiling of

the application to change the

inventorship will not cause the Office,

absent more, to initiate an investigation

as to the correct inventorship or cause

a rejection under 35 U.S.C. 102(f) or (g)

to be made. Additionally, it should be

noted that the Office views a petition

under § 1.48 to be a procedural matter

and not to represent a substantive

determination as to the actual

inventorship. See MPEP 201.03,

Verified Statement of Facts.

For those situations where there was

deceptive intent, the Office is lacking

certain necessary tools for a thorough

inquiry (e.g., subpoena authority) to

ascertain the truth thereof (as in other

situations under §§ 1.28 and 1.56).

However, the inquiry cannot be waived

by the Office due to the statutory

requirement under 35 U.S.C. 116. There

is no other reasonable course of action

than to accept as an explanation for the

execution of a § 1.63 oath or declaration

setting forth an erroneous inventive

entity that the inventor did not

remember the contribution of the

omitted inventor at the time the oath or

declaration was executed (absent

subpoena power and inter parties

hearings), and therefore further

inquiries into the matter other than a

statement of lack of deceptive intent are

a waste of Office resources.

Comment 12: One comment suggested

that in limiting the submission of a

verified statement of facts to only the

parties being added or deleted as

inventors, agreement of the original

named inventors should also be

obtained as is currently done when

verified statements of facts from all the

original named inventors are required.

Response: Agreement or acquiescence

of the original named inventors, to the

extent that they remain as inventors, to

the new inventorship will be obtained

through the retained requirement that

the actual inventive entity complete a

new oath or declaration under § 1.63,

which must set forth the new inventive

entity. Additionally, through the rule

changes to this section and §§ 1.28 and

1.175 the Office is decreasing its

investigation of claims relating to a lack

of deceptive intent. The remaining

purpose of these rules is to force the

applicant(s) to merely make an assertion

as to a lack of deceptive intent thereby

permitting subsequent reviewers

(tribunals or otherwise) to determine, in

light of all the available facts, whether

the applicant(s) complied with the

statute.

Section 1.48(a)(2) is amended for

clarification purposes to indicate the

availability of §§ 1.42, 1.43 or 1.47 in

meeting the requirement for an executed

oath or declaration under § 1.63 from
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53139

each actual inventor. Section 1.47 is

only applicable to the person to be

added as an inventor (inventors named

in an application transmittal letter can

be deleted without petition). For those

persons already having submitted an

executed oath or declaration under

§ 1.63, a petition under § 1.183,

requesting waiver of reexecution of an

oath or declaration, may be an

appropriate remedy. The requirement

for an oath or declaration is maintained

in § 1.48(a) notwithstanding its

replacement in § 1.324 for issued

patents by a statement of agreement or

lack of disagreement with the requested

change in view of the need to satisfy the

duty of disclosure requirement in a

pending application that is set forth in

a § 1.63 oath or declaration.

Section 1.48(a)(4) is amended to

include a citation to § 3.73(b) to clarify

the requirements for submitting a

written consent of assignee, which is

subject to the requirement under

§ 3.73(b), and to delete the reference to

an application involved in an

interference, which is being moved to

§ 1.48(a). Section 1.48(a)(4) is also

amended to clarify that the assignee

required to submit its written consent is

only the existing assignee of the original

named inventors at the time the petition

is filed and not any party that would

become an assignee based on the grant

of the inventorship correction.

Section 1.48(b) is also amended to

remove the requirement that a petition

thereunder be diligently filed. The

applicability of a rejection under 35

U.S.C. 102 (f) or (g) against an

application with the wrong inventorship

set forth therein and any patent that

would issue thereon is sufficient

motivation for prompt correction of the

inventorship without the need for a

separate requirement for diligence.

Section 1.48(b) is amended to have a

clarifying reference to § 1.634 added for

instances when inventorship correction

is necessary during an interference.

Comment 13: A comment noted that

the literal wording of § 1.48(b) permits

correction thereunder only where the

correct inventors were named on filing

thereby excluding correction under

§ 1.48(b) where an incorrect

inventorship was named on filing that

was subsequently corrected under

§ 1.48(a) and, subsequent to the

correction prosecution of the

application, required additional

correction under § 1.48(b).

Response: The comment is accepted

and § 1.48(b) has been modified to

delete ‘‘when filed’’ after

‘‘nonprovisional application’’ for

clarification purposes. Additionally, the

term ‘‘originally’’ in the first sentence of

paragraph (b) has been replaced with

‘‘currently.’’

Section 1.48(c) is amended so that a

petition thereunder no longer needs to

meet the current requirements of

§ 1.48(a), which are also changed. A

statement from each inventor being

added that the inventorship amendment

is necessitated by amendment of the

claims and that the error occurred

without deceptive intent is required

under § 1.48(c)(1) rather than the

previous requirement of a statement

from each original named inventor. The

previous requirements under § 1.48(a)

for an oath or declaration, the written

consent of an assignee and the written

consent of any assignee are retained, but

are now separately set forth in §§ 1.48

paragraphs (c)(2) through (c)(4). The

particular circumstances of a petition

under this paragraph, adding an

inventor due to an amendment of the

claims that incorporates material

attributable to the inventor to be added,

is seen to be indicative of a lack of

deceptive intent in the original naming

of inventors. Accordingly, all that must

be averred to is that an amendment of

the claims has necessitated correction of

the inventorship and that the

inventorship error existing in view of

the claim amendment occurred without

deceptive intent. The previous

requirement for diligence in filing the

petition based on an amendment to the

claims is not retained as applicants have

the right, prior to final rejection or

allowance, to determine when particular

subject matter is to be claimed.

Applicants should note that any petition

under § 1.48 submitted after allowance

is subject to the requirements of § 1.312,

and a petition submitted after final

rejection is not entered as a matter of

right.

Section 1.48(c)(2) is amended to

clarify the availability of §§ 1.42, 1.43

and 1.47 in meeting the requirement for

an executed oath or declaration under

§ 1.63. Section 1.47 is only applicable to

the person to be added as an inventor.

For those persons already having an

executed oath or declaration under

§ 1.63, a petition under § 1.183,

requesting waiver of reexecution of an

oath or declaration, may be an

appropriate remedy.

Section 1.48(c)(4) is amended to

clarify that the assignee required to

submit its written consent is only the

existing assignee of the original named

inventors at the time the petition is filed

and not any party that would become an

assignee based on the grant of the

inventorship correction. A citation to

§ 3.73(b) is presented.

Section 1.48(d) is amended by

addition of ‘‘their part’’ to replace ‘‘the

part of the actual inventor or inventors’’

and of ‘‘omitted’’ to replace ‘‘actual’’ to

require statements from the inventors to

be added rather than from all the actual

inventors so as to comply with 35 U.S.C.

116.

Section 1.48(d)(1) is also clarified to

specify that the error to be addressed is

the inventorship error. It is not expected

that the party filing a provisional

application will normally need to

correct an error in inventorship under

this paragraph by adding an inventor

therein except when necessary under

§ 1.78 to establish an overlap of

inventorship with a continuing

application.

Section 1.48(d)(1) is also amended to

remove the requirement that the

statement be verified in accordance with

the change to §§ 1.4(d)(2) and 10.18.

Section 1.48(e)(1) is amended to

replace a requirement in provisional

applications that the required statement

be one ‘‘of facts’’ directed towards

‘‘establishing that the error’’ being

corrected ‘‘occurred without deceptive

intention,’’ requiring only a statement

that the inventorship error occurred

without deceptive intent. Paragraph

(e)(1) is also amended to remove the

requirement that the statement be

verified in accordance with the change

to §§ 1.4(d)(2) and 10.18. It is not

expected that the party filing a

provisional application would need to

file a petition under this paragraph

since the application will go abandoned

by operation of law (35 U.S.C.

111(b)(5)), and the need to delete an

inventor will not affect the overlap of

inventorship needed to claim priority

under § 1.78(a)(3) for any subsequently

filed nonprovisional application.

Section 1.48(e)(3) is amended to

clarify that the assignee required to

submit its written consent is only the

prior existing assignee before correction

of the inventorship is granted and not

any party that would become an

assignee based on the grant of the

inventorship correction. A reference to

§ 3.73(b) is added.

Section 1.48(f) is added to provide

that the later filing of an executed oath

or declaration (or cover sheet

(§ 1.51(c)(1)) in a provisional

application) during the pendency of the

application would act to correct the

inventorship without a specific petition

for such correction and will be used to

further process the application

notwithstanding any inventorship or

other identification name earlier

presented.

Section 1.48(g) is added to

specifically recognize that the Office

may require such other information as

may be deemed appropriate under the
53140 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

particular circumstances surrounding a

correction of the inventorship.

Section 1.51

Section 1.51, paragraphs (a)(1) and

(a)(2), are re-written as § 1.51,

paragraphs (b) and (c), respectively, and

§ 1.51(b) is re-written as § 1.51(d).

Section 1.51(c) covering the use of an

authorization to charge a deposit

account is removed as unnecessary in

view of § 1.25(b).

No comments were received regarding

the proposed change to § 1.51.

Section 1.52

Section 1.52, paragraphs (a) and (d),

are amended to remove the requirement

that the translation be verified in

accordance with the change to

§§ 1.4(d)(2) and 10.18. Section 1.52,

paragraph (c), is amended to remove the

reference to §§ 1.123 through 1.125 to:

(1) reflect a transfer of material from

§§ 1.123 and 1.124 to § 1.121; (2) further

clarify that § 1.125 is not a vehicle

amendment of an application; and (3) to

clarify that alterations to application

papers may be made on, as well as

before, the signing of the oath or

declaration. Section 1.52, paragraphs (a)

and (d), are also amended to clarify the

need for a statement that the translation

being offered is an accurate translation,

as in § 1.69(b).

Comment 14: Two comments were

received asking whether the attorney

can sign the statement that the

translation is accurate, and how much

firsthand knowledge does a practitioner

need to know that the translation is

accurate.

Response: The Office will accept a

statement that the translation is accurate

from any party. However, any party

signing such statement must keep in

mind the averments that are made under

§§ 1.4(d) and 10.18. The actual firsthand

knowledge needed by a practitioner is

that amount of knowledge to comply

with the averments in §§ 1.4(d) and

10.18.

Comment 15: A comment questioned

whether there is any difference between

the previous language of ‘‘verified

translation’’ and the present language of

‘‘accurate translation.’’

Response: The previous language was

directed at a verification that the

translation is accurate. A verification

requirement is now unnecessary due to

the amendments to §§ 1.4(d) and 10.18.

Thus, § 1.52(d) is amended to include

the more direct term ‘‘accurate.’’

Section 1.53

Section 1.53 is amended to include

headings for each paragraph for

purposes of clarity.

Section 1.53(a) is amended to state

that ‘‘[a]ny papers received in the Patent

and Trademark Office which purport to

be an application for a patent will be

assigned an application number for

identification purposes.’’ That is, the

Office will refer to papers purporting to

be an application for a patent as an

‘‘application’’ and assign such

‘‘application’’ an application number for

identification purposes. This reference,

however, does not imply that such

papers meet the requirements in

§ 1.53(b) to be accorded a filing date or

constitute an ‘‘application’’ within the

meaning of 35 U.S.C. 111.

Section 1.53(b) is amended to provide

that: (1) the filing date of an application

for patent filed under § 1.53(b) is the

date on which a specification as

prescribed by 35 U.S.C. 112 containing

a description pursuant to § 1.71 and at

least one claim pursuant to § 1.75, and

any drawing required by § 1.81(a) are

filed in the Office; (2) no new matter

may be introduced into an application

after its filing date; (3) a continuation or

divisional application filed by all or by

fewer than all of the inventors named in

a prior nonprovisional application may

be filed under § 1.53(b) or (d); and (4)

a continuation or divisional application

naming an inventor not named in the

prior nonprovisional application or a

continuation-in-part application must

be filed under § 1.53(b).

Section 1.53(c) is amended to provide

for provisional applications (formerly

provided for in § 1.53(b)(2)). Section

1.53(c) includes the language of former

§ 1.53(b)(2), with certain changes for

purposes of clarity. Section 1.53(c)(i),

for example, includes language

requiring either the provisional

application cover sheet required by

§ 1.51(c)(1) or a cover letter identifying

the application as a provisional

application. The cover letter may be an

application transmittal letter or some

other paper identifying the

accompanying papers as a provisional

application.

Section 1.53(d) is amended to provide

for continued prosecution applications.

Section 1.53(d)(1) provides that a

continuation or divisional application,

but not a continuation-in-part, of a prior

nonprovisional application may be filed

as a continued prosecution application

under § 1.53(d), subject to the

conditions specified in paragraph

(d)(1)(i) and (d)(1)(ii). That is, an

application under § 1.53(d) cannot be a

continuation-in-part application, and

the prior application cannot be a

provisional application.

Section 1.53(d)(1)(i) specifies that the

prior application be either: (1) Complete

as defined by § 1.51(b) and filed on or

after June 8, 1995; or (2) the national

stage of an international application in

compliance with 35 U.S.C. 371 and filed

on or after June 8, 1995. The phrase

‘‘prior’’ application in § 1.53(d)(1)

means the application immediately

prior to the continued prosecution

application under § 1.53(d), in that a

continued prosecution application

under § 1.53(d) may claim the benefit

under 35 U.S.C. 120, 121, or 365(c) of

applications filed prior to June 8, 1995

so long as the application that is

immediately prior to the continued

prosecution application under § 1.53(d)

was filed on or after June 8, 1995.

Section 1.53(d)(1)(ii) specifies that the

application under § 1.53(d) be filed

before the earliest of: (1) Payment of the

issue fee on the prior application, unless

a petition under § 1.313(b)(5) is granted

in the prior application; (2)

abandonment of the prior application;

or (3) termination of proceedings on the

prior application.

Section 1.53(d)(2) provides that the

filing date of a continued prosecution

application is the date on which a

request on a separate paper for an

application under § 1.53(d) is filed. That

is, a request for an application under

§ 1.53(d) cannot be submitted within

papers filed for another purpose (e.g.,

the filing of a ‘‘conditional’’ request for

a continued prosecution application

within an amendment after final for the

prior application is an improper request

for a continued prosecution application

under § 1.53(d)).

In addition, a ‘‘conditional’’ request

for a continued prosecution application

will not be permitted. Any

‘‘conditional’’ request for a continued

prosecution application submitted (as a

separate paper) with an amendment

after final in an application will be

treated as an unconditional request for

a continued prosecution application of

such application. This will result (by

operation of § 1.53(d)(2)(v)) in the

abandonment of such (prior)

application, and (if so instructed in the

request for a continued prosecution

application) the amendment after final

in the prior application will be treated

as a preliminary amendment in the

continued prosecution application.

Section 1.53(d)(2) further provides

that an application filed under § 1.53(d):

(1) Must identify the prior application

(§ 1.53(d)(i)); (2) discloses and claims

only subject matter disclosed in the

prior application (i.e., is a continuation

or divisional, but not a continuation-inpart) (§ 1.53(d)(1)(ii)); (3) names as

inventors the same inventors named in

the prior application on the date the

application under § 1.53(d) was filed,

except as provided in § 1.53(d)(4)
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53141

(§ 1.53(d)(2)(iii)); (4) includes the

request for an application under

§ 1.53(d), will utilize the file jacket and

contents of the prior application,

including the specification, drawings

and oath or declaration, from the prior

application to constitute the new

application, and will be assigned the

application number of the prior

application for identification purposes

(§ 1.53(d)(2)(iv)); and (5) is a request to

expressly abandon the prior application

as of the filing date of the request for an

application under § 1.53(d)

(§ 1.53(d)(2)(v)).

Section 1.53(d)(3) provides that the

filing fee for a continued prosecution

application filed under § 1.53(d) is: (1)

The basic filing fee as set forth in § 1.16;

and (2) any additional § 1.16 fee due

based on the number of claims

remaining in the application after entry

of any amendment accompanying the

request for an application under

§ 1.53(d) and entry of any amendments

under § 1.116 not entered in the prior

application which applicant has

requested to be entered in the continued

prosecution application. See 35 U.S.C.

41(a) (1)–(4).

Section 1.53(d)(4) provides that an

application filed under § 1.53(d) may be

filed by fewer than all the inventors

named in the prior application,

provided that the request for an

application under § 1.53(d) when filed

is accompanied by a statement

requesting deletion of the name or

names of the person or persons who are

not inventors of the invention being

claimed in the new application, and that

no person may be named as an inventor

in an application filed under § 1.53(d)

who was not named as an inventor in

the prior application on the date the

application under § 1.53(d) was filed,

except by way of a petition under § 1.48.

Thus, an application under § 1.53(d)

must name as inventors either the same

as (§ 1.53(d)(2)(iii)) or fewer than all of

(§ 1.53(d)(4)) the inventors named in the

prior application. A request for an

application under § 1.53(d) purporting

to name as an inventor a person not

named as an inventor in the prior

application (even if accompanied by a

new oath or declaration under § 1.63

listing that person as an inventor) will

be treated as naming the same inventors

named in the prior application

(§ 1.53(d)(2)(iii)).

Section 1.53(d)(5) provides that: (1)

Any new change must be made in the

form of an amendment to the prior

application; (2) no amendment in an

application under § 1.53(d) (a continued

prosecution application) may introduce

new matter or matter that would have

been new matter in the prior

application; and (3) any new

specification filed with the request for

an application under § 1.53(d) will not

be considered part of the original

application papers, but will be treated

as a substitute specification in

accordance with § 1.125. Pursuant to the

provisions of § 1.53(d)(5), where

applicant desires entry of an

amendment in the application under

§ 1.53(d) that was previously denied

entry under § 1.116 in the prior

application, the applicant must request

its entry (and pay any additional claims

fee required by § 1.53(d)(3)(ii)) in the

application under § 1.53(d) prior to

action by the Office in the application

under § 1.53(d). Any amendment

submitted with the request for an

application under § 1.53(d) that seeks to

add matter that would have been new

matter in the prior application will be

objected to under § 1.53(d), and the

applicant will be required to cancel the

subject matter that would have been

new matter in the prior application.

Section 1.53(d)(6) provides that the

filing of a continued prosecution

application under § 1.53(d) will be

construed to include a waiver of

confidentiality by the applicant under

35 U.S.C. 122 to the extent that any

member of the public who is entitled

under the provisions of § 1.14 to access

to, copies of, or information concerning

either the prior application or any

continuing application filed under the

provisions of this paragraph may be

given similar access to, copies of, or

similar information concerning, the

other application(s) in the application

file.

Section 1.53(d)(7) provides that a

request for an application under

§ 1.53(d) is a specific reference under 35

U.S.C. 120 to every application assigned

the application number identified in

such request, and that no amendment in

a continued prosecution application

under § 1.53(d) shall delete this specific

reference to any prior application. That

is, other than the identification of the

prior application in the request required

by § 1.53(d) for a continued prosecution

application, a continued prosecution

application needs no further

identification of or reference to the prior

application (or any prior application

assigned the application number of such

application under § 1.53(d)) under 35

U.S.C. 120 and § 1.78(a)(2).

Section 1.53(d)(8) provides that in

addition to identifying the application

number of the prior application,

applicant is urged to furnish in the

request for an application under

§ 1.53(d) the following information

relating to the prior application to the

best of his or her ability: (1) Title of

invention; (2) name of applicant(s); and

(3) correspondence address.

Section 1.53(d)(9) provides that: (1)

Envelopes containing only requests and

fees for filing an application under

§ 1.53(d) should be marked ‘‘Box CPA’’

and (2) requests for an application

under § 1.53(d) filed by facsimile

transmission should be clearly marked

‘‘Box CPA.’’

Section 1.53(e)(1) provides that if an

application deposited under § 1.53

paragraphs (b), (c), or (d) does not meet

the respective requirements in § 1.53

paragraphs (b), (c), or (d) to be entitled

to a filing date, applicant will be so

notified, if a correspondence address

has been provided, and given a time

period within which to correct the filing

error.

Section 1.53(e)(2) provides that: (1)

Any request for review of a notification

pursuant to § 1.53(e)(1), or a notification

that the original application papers lack

a portion of the specification or

drawing(s), must be by way of a petition

pursuant to § 1.53(e); (2) any petition

under § 1.53(e) must be accompanied by

the fee set forth in § 1.17(i) in an

application filed under § 1.53

paragraphs (b) or (d), and the fee set

forth in § 1.17(q) in an application filed

under § 1.53(c); and (3) in the absence

of a timely (§ 1.181(f)) petition pursuant

to this paragraph, the filing date of an

application in which the applicant was

notified of a filing error pursuant to

paragraph (e)(1) of this section will be

the date the filing error is corrected.

Section 1.53(e)(3) provides that if an

applicant is notified of a filing error

pursuant to § 1.53(e)(1), but fails to

correct the filing error within the given

time period or otherwise timely

(§ 1.181(f)) take action pursuant to

§ 1.53(e)(2), proceedings in the

application will be considered

terminated, and that where proceedings

in an application are terminated

pursuant to § 1.53(e)(3), the application

may be disposed of, and any filing fees,

less the handling fee set forth in

§ 1.21(n), will be refunded.

Section 1.53(f) is amended to include

the language of former § 1.53(d)(1) and

to provide that the oath or declaration

required for a continuation or divisional

application under § 1.53(b) may be a

copy of the executed oath or declaration

filed in the prior application (under

§ 1.63(d)).

Section 1.53 paragraphs (g), (h), (i),

and (j) are added and include the

language of former § 1.53 paragraphs

(d)(2), (e)(1), (e)(2), and (f), respectively.

Comment 16: The majority of the

comments supported the deletion of

§§ 1.60 and 1.62 in favor of the

proposed amendment to § 1.53.
53142 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Response: The Office is deleting

§§ 1.60 and 1.62 in favor of an amended

§ 1.53.

Comment 17: Several comments

suggested that the Office adopt a

continued prosecution procedure for

applications filed on or after June 8,

1995 similar to the practice set forth in

§ 1.129(a), rather than the continued

prosecution application practice set

forth in § 1.53(d).

Response: Section 532(a)(2)(A) of Pub.

L. 103–465 provides specific

authorization for the practice set forth in

§ 1.129(a). There is currently no

statutory authority for the Office to

simply charge the patent fees set forth

in 35 U.S.C. 41(a) for further

examination of an application. 35 U.S.C.

41(d) would authorize the Office to

further examine an application for a fee

that recovers the estimated average cost

to the Office of such further

examination; however, as 35 U.S.C.

41(h) is applicable only to fees under 35

U.S.C. 41 (a) and (b), the Office would

not be authorized to provide a small

entity reduction in regard to such fee.

Thus, the only mechanism by which the

Office may provide further examination

for a fee to which the small entity

reduction is applicable is via a

continuing application.

Section 209 of H.R. 3460, 104th Cong.,

2d Sess. (1996), would have provided

statutory authority for the further

reexamination of an application for a fee

to which the small entity reduction was

applicable. Section 209 of H.R. 400,

105th Cong., 1st Sess. (1997), if enacted,

will provide statutory authority for the

further reexamination of an application

for a fee to which the small entity

reduction will be applicable.

Comment 18: One comment stated

that the combination of §§ 1.53, 1.60,

and 1.62 into a single § 1.53 was

complex and confusing. Another

comment suggested that § 1.53 be split

into a number of sections, or that

headings be used in § 1.53 in the

manner that headings are used in

§§ 1.84 and 1.96.

Response: Placing the provisions of

§ 1.53 into multiple sections, rather than

multiple paragraphs of a single section,

would not result in a simplification of

its provisions. The Office considers it

appropriate to place the filing

provisions concerning all applications

(nonprovisional, provisional, and

continued prosecution) into a single

section to reduce the confusion as to the

filing requirements for any application

for patent. Section 1.53 as adopted

includes headings in each paragraph of

§ 1.53 to indicate the subject to which

each of these paragraphs pertains.

Comment 19: One comment suggested

amending § 1.53 to require applicants to

indicate changes to the disclosure in a

continuation or divisional application.

Response: The suggestion is not

adopted. The Office did not propose to

amend § 1.53 to require applicants to

indicate changes to the disclosure in

any continuing application. Thus,

adopting a change to impose this

additional burden on an applicant is not

considered appropriate in this Final

Rule.

Comment 20: One comment suggested

that the Office permit applicants to file

a statement requesting deletion of an

inventor in a continuation or divisional

application any time prior to or

coincident with the mailing of an issue

fee payment. The comment questioned

whether the time period in § 1.53(e)(1)

addresses this issue.

Response: Unless a statement

requesting the deletion of the names of

the person or persons who are not

inventors in the continuation or

divisional application accompanies the

copy of the executed oath or declaration

submitted in accordance with § 1.63(d)

in an application filed pursuant to

§ 1.53(b), or accompanies the request for

an application under § 1.53(d) in an

application filed pursuant to § 1.53(d),

the inventorship of the continuation or

divisional application filed under

§ 1.53(b) using a copy of the oath or

declaration of the prior application

pursuant to § 1.63(d) or filed under

§ 1.53(d) will be considered identical to

that in the prior application, and

correction of the inventorship (if

appropriate) must be by way of § 1.48.

Identification of the inventorship is

necessary to the examination of an

application (e.g., 35 U.S.C. 102(f) and

(g)). As such, the Office must require

identification of the inventorship prior

to examination of an application.

Section 1.53(e)(1) applies in those

instances in which papers filed as an

application under § 1.53 (b), (c), or (d)

do not meet the respective requirements

of § 1.53 (b), (c), or (d) to be entitled to

a filing date. Submitting an oath or

declaration is not a filing date issue, and

naming the inventors is no longer a

filing date issue. Thus, the provisions of

§ 1.53(e) do not apply to the filing of a

statement requesting deletion of an

inventor in a continuation or divisional

application.

Comment 21: One comment

questioned whether § 1.53(d) applies

only to applications filed on or after

June 8, 1995, and questioned whether

§ 1.53(d) should be made applicable to

pending applications filed prior to June

8, 1995. The comment also questioned

the relationship between § 1.129(a) and

§ 1.53(d).

Response: Section § 1.53(d), by its

terms, permits the filing of a

continuation or divisional thereunder of

only a nonprovisional application that,

inter alia, is either: (1) Complete as

defined by § 1.51(b) and filed on or after

June 8, 1995 or; (2) resulted from entry

into the national stage of an

international application in compliance

with 35 U.S.C. 371 filed on or after June

8, 1995. While § 1.53(d) and § 1.129(a)

both provide for the continued

prosecution of an application, these

sections are distinct in that they apply

to a virtually mutually exclusive class of

applications and have separate

requirements (e.g., a request for a

§ 1.53(d) application may be filed

subsequent to the filing of an appeal

brief, so long as the request is filed

before the earliest of: (1) Payment of the

issue fee on the prior application, unless

a petition under § 1.313(b)(5) is granted

in the prior application; (2)

abandonment of the prior application;

or (3) termination of proceedings on the

prior application).

Comment 22: One comment suggested

that the rules of practice permit the

execution of copies of an oath or

declaration by fewer than all of the

inventors, without cross-reference to the

other copies to facilitate

contemporaneous executions by

geographically separated inventors.

Response: The suggestion is not

adopted. Section 1.63(a)(3) requires that

an oath (or declaration), inter alia,

identify each inventor. The rules of

practice permit inventors to execute

separate oaths (or declarations), so long

as each oath (or declaration) sets forth

all of the inventors (the necessary crossreference). That is, § 1.63(a)(3) prohibits

the execution of separate oaths (or

declarations) in which each oath (or

declaration) sets forth only the name of

the executing inventor. An amendment

to the rules of practice to permit an

inventor to execute an oath or

declaration that does not set forth each

inventor would not only lead to

confusion as to the inventorship of an

application, but would be inconsistent

with the requirement in 35 U.S.C. 115

that the applicant make an oath (or

declaration) that the applicant believes

himself (or herself) to be the original

and first inventor of the subject matter

for which a patent is sought, as the

oaths or declarations would conflict as

to the inventorship of the application.

Comment 23: Several comments

suggested that the statement required

under 35 U.S.C. 120 in a continued

prosecution application will be

confusing as the continued prosecution
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53143

application will have the same

application number as the prior

application. One comment indicated

that this will cause confusion: (1) As to

which application is being referenced in

a 35 U.S.C. 120 statement in the

divisional application when a divisional

application under § 1.53(b) and a

continued prosecution application filed

under § 1.53(d) are filed from the same

prior application; and (2) in docketing

applications as most commercially

available software identify applications

by application number. Another

comment questioned what sentence was

required pursuant to § 1.78(a)(2) in a

continued prosecution application.

Response: 35 U.S.C. 120 provides that

an application may obtain the benefit of

the filing date of an earlier filed

application if, inter alia, the application

‘‘contains or is amended to contain a

specific reference to the earlier filed

application.’’ Section 1.78(a) requires

that this specific reference be in the first

sentence of the specification and

identify each earlier filed application by

application number or international

application number and international

filing date and relationship of the

applications. Thus, while a ‘‘specific

reference to the earlier filed

application’’ is a requirement of statute

(35 U.S.C. 120), the particulars of this

specific reference (by application

number, filing date, and relationship) is

a requirement of regulation (§ 1.78(a)),

not the patent statute.

The purpose of the ‘‘specific

reference’’ requirement of 35 U.S.C. 120

is to provide notice to the public of the

filing date upon which a patentee may

rely to support the validity of the patent:

[35 U.S.C. 120] embodies an important

public policy. The information required to be

disclosed is information that would enable a

person searching the records of the Patent

Office to determine with a minimum of effort

the exact filing date upon which a patent

applicant is relying to support the validity of

his application or the validity of a patent

issued on the basis of one of a series of

applications. In cases such as this, in which

two or more applications have been filed and

the validity of a patent rests upon the filing

date of an application other than that upon

which the patent was issued, a person, even

if he had conducted a search of the Patent

Office records, could unwittingly subject

himself to exactly this type of infringement

suit unless the later application adequately

put him on notice that the applicant was

relying upon a filing date different from that

stated in the later application.

Sampson v. Ampex Corp., 463 F.2d

1042, 1045, 174 USPQ 417, 419 (2d Cir.

1972); see also Sticker Indus. Supply

Corp. v. Blaw-Knox Co., 405 F.2d 90, 93,

160 USPQ 177, 179 (7th Cir.

1968)(’’Congress may well have thought

that [35 U.S.C.] 120 was necessary to

eliminate the burden on the public to

engage in long and expensive search of

previous applications in order to

determine the filing date of a later

patent * * *. The inventor is the person

best suited to understand the relation of

his applications, and it is no hardship

to require him to disclose this

information’’).

To reduce the delay in processing a

continued prosecution application, the

Office will maintain in its records (e.g.,

in the Patent Application Locating and

Monitoring (PALM) records for an

application) for identification purposes

the application number and filing date

of the prior application. Thus, in a

continued prosecution application, the

application number of the continued

prosecution application will be the

application number of the prior

application, and the filing date

indicated on any patent issuing from a

continued prosecution application will

be the filing date of the prior application

(or, in a chain of continued prosecution

applications, the filing date of the

application immediately preceding the

first continued prosecution application

in the chain). In addition, as a

continued prosecution application will

use the file wrapper of the prior

application, the prior application will

be available upon inspection of the

continued prosecution application.

Unless excepted from § 1.78(a)(2), the

first sentence of a continued

prosecution application would consist

of a reference to that application as a

continuation or divisional of an

application having the identical

application number and the effective

filing date of (the filing date to be

printed on any patent issuing from) the

continued prosecution application.

Such a sentence would provide no

useful information to the public.

Therefore, § 1.53(d)(7) as adopted

provides that a request for an

application under § 1.53(d) is a specific

reference under 35 U.S.C. 120 to every

application assigned the application

number identified in such request, and

§ 1.78(a)(2) as adopted provides that the

request for a continued prosecution

application under § 1.53(d) is the

specific reference under 35 U.S.C. 120

to the prior application. That is, the

continued prosecution application

includes the request for an application

under § 1.53(d) (§ 1.53(d)(2)(iv)), and the

recitation of the application number of

the prior application in such request (as

required by § 1.53(d)) is the ‘‘specific

reference to the earlier filed

application’’ required by 35 U.S.C. 120.

No further amendment to the

specification is required by 35 U.S.C.

120 or § 1.78(a) for a continued

prosecution application for such

continued prosecution application to

contain the required specific reference

to the prior application, as well as any

other application assigned the

application number of the prior

application (e.g., in instances in which

a continued prosecution application is

the last in a chain of continued

prosecution applications).

Where an application claims a benefit

under 35 U.S.C. 120 of a chain of

applications, the application must make

a reference to the first (earliest)

application and every intermediate

application. See Sampson, 463 F.2d at

1044–45, 174 USPQ at 418–19; Sticker

Indus. Supply Corp., 405 F.2d at 93, 160

USPQ at 179; Hovlid v. Asari, 305 F.2d

747, 751, 134 USPQ 162, 165 (9th Cir.

1962); see also MPEP 201.11. In

addition, every intermediate application

must also make a reference to the first

(earliest) application and every

application after the first application

and before such intermediate

application.

In the situation in which there is a

chain of continued prosecution

applications, each continued

prosecution application in the chain

will, by operation of § 1.53(d)(7),

contain the required specific reference

to its immediate prior application, as

well as every other application assigned

the application number identified in

such request. Put simply, a specific

reference to a continued prosecution

application by application number and

filing date will constitute a specific

reference to: (1) The non-continued

prosecution application originally

assigned such application number (the

prior application as to the first

continued prosecution application in

the chain); and (2) every continued

prosecution application assigned the

application number of such noncontinued prosecution application.

Where the non-continued prosecution

application originally assigned such

application number itself claims the

benefit of a prior application or

applications under 35 U.S.C. 120, 121,

or 365(c), § 1.78(a)(2) continues to

require that such application contain in

its first sentence a reference to any such

prior application(s). As a continued

prosecution application uses the

specification of the prior application,

such a specific reference in the prior

application (as to the continued

prosecution application) will constitute

such a specific reference in the

continued prosecution application, as

well as every continued prosecution

application in the event that there is a
53144 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

chain of continued prosecution

applications.

Where an applicant in an application

filed under § 1.53(b) seeks to claim the

benefit of an application filed under

§ 1.53(d) under 35 U.S.C. 120 or 121 (as

a continuation, divisional, or

continuation-in-part), § 1.78(a)(2)

requires a reference to the continued

prosecution application by application

number in the first sentence of such

application. Section 1.78(a)(2) has been

amended to also provide that ‘‘[t]he

identification of an application by

application number under this section is

the specific reference required by 35

U.S.C. 120 to every application assigned

that application number.’’ Thus, where

a referenced continued prosecution

application is in a chain of continued

prosecution applications, this reference

will constitute a reference under 35

U.S.C. 120 and § 1.78(a)(2) to every

continued prosecution application in

the chain as well as the non-continued

prosecution application originally

assigned such application number.

Therefore, regardless of whether an

application is filed under § 1.53(b) or

(d), a claim under 35 U.S.C. 120 to the

benefit of a continued prosecution

application is, by operation of

§ 1.53(d)(7) and § 1.78(a)(2), a claim to

every application assigned the

application number of such continued

prosecution application. In addition,

applicants will not be permitted to

choose to delete such a claim as to

certain applications assigned that

application number (e.g., for patent term

purposes).

Finally, while it is recognized that

using a common application number

(and file wrapper) for a continued

prosecution application and its prior

application (which may also be a

continued prosecution application) will

necessitate docketing modifications (as

well as the Office’s PALM system), the

burden of such modifications is

outweighed by the benefits that will

result from the elimination of the initial

processing of such applications.

Comment 24: One comment suggested

that the phrase ‘‘now refiled’’ be used in

lieu of ‘‘now abandoned’’ to reflect the

status of the prior application.

Response: Under 35 U.S.C. 120, the

status of an application is one of three

conditions: (1) pending; (2) patented; or

(3) abandoned. See In re Morganroth, 6

USPQ2d 1802, 1803 (Comm’r Pat. 1988).

As the filing of a continued prosecution

application under § 1.53(d) operates to

expressly abandon the prior application

under § 1.53(d)(2)(v), the status of the

prior application is appropriately

designated as ‘‘abandoned.’’

Comment 25: Several comments

suggested that the proposed continued

prosecution application practice be

made applicable in instances in which

the prior application was filed prior to

June 8, 1995, to expedite the

prosecution of such applications.

Response: Permitting the continued

prosecution application practice to be

applicable in instances in which the

prior application was filed prior to June

8, 1995, would result in confusion as to

whether the patent issuing from the

continued prosecution application is

entitled to the provisions of 35 U.S.C.

154(c). As the continued prosecution

application practice was not in effect

prior to June 8, 1995, no patent issuing

from a continued prosecution

application is entitled to the provisions

of 35 U.S.C. 154(c).

As discussed supra, the application

number of a continued prosecution

application will be the application

number of the prior application, and the

filing date indicated on any patent

issuing from a continued prosecution

application will be the filing date of the

prior application (or, in a chain of

continued prosecution applications, the

filing date of the application

immediately preceding the first

continued prosecution application in

the chain). Thus, any patent issuing

from a continued prosecution

application, where the prior application

was filed prior to June 8, 1995, will

indicate that the filing date of the

application for that patent was prior to

June 8, 1995, which will confuse the

public (and possible the patentee) into

believing that such patent is entitled to

the provisions of 35 U.S.C. 154(c).

The Office has implemented

§ 532(a)(2)(A) of Pub. L. 103–465 in

§ 1.129(a) to conclude the examination

of applications pending at least two

years as of June 8, 1995, taking into

account any reference made in such

application to any earlier filed

application under 35 U.S.C. 120, 121,

and 365(c). Further examination of any

application may be obtained via the

filing of a continuing application under

§ 1.53(b). Requiring applications filed

prior to June 8, 1995, that are not

eligible for the transitional procedure

set forth in § 1.129(a) to obtain further

examination via the filing of a

continuing application under § 1.53(b)

is a reasonable requirement to avoid

confusion as to whether a patent issuing

from a continued prosecution (§ 1.53(d))

application is entitled to the provisions

of 35 U.S.C. 154(c).

Comment 26: One comment suggested

that the phrase ‘‘most immediate prior

national application’’ rather than ‘‘prior

application’’ was confusing. The

comment further stated that if the prior

application was one filed under § 1.62,

there is no copy in that complete

application of the (oath or) declaration

filed in the application under § 1.62.

Response: The phrase ‘‘most

immediate prior national application for

which priority is claimed under 35

U.S.C. 120, 121 or 365(c)’’ is changed to

‘‘prior application.’’ An application

under §§ 1.53(d), 1.60, or 1.62 must

ultimately be a continuing application

of an application filed under § 1.53(b).

Where the prior application is an

application under § 1.60, the oath or

declaration is the copy of the oath or

declaration from the prior application

vis-a`-vis the application under § 1.60

submitted in accordance with

§ 1.60(b)(2). Where the prior application

is an application under §§ 1.62 or

1.53(d), the oath or declaration is the

oath or declaration from the prior

application vis-a`-vis the application

under §§ 1.62 or 1.53(d). Where there is

a chain of applications under §§ 1.62 or

1.53(d) preceding the prior application

to an application under § 1.53(d), the

oath or declaration of the prior

application will be the oath or

declaration of the application under

§§ 1.53 or 1.60 immediately preceding

the chain of applications under §§ 1.62

or 1.53(d), as each application in the

chain of applications under §§ 1.62 or

1.53(d) utilizes the oath or declaration

of the prior application.

Comment 27: One comment suggested

that applications filed under § 1.53(d)

should be taken up as amended

applications, rather than as newly filed

applications.

Response: The comment implies that

taking up a continued prosecution

application as an amended application

may result in the examiner acting on the

application in a more timely manner

than if the application were accounted

for as a new application. The matter is

under consideration along with other

administrative issues, and a decision

shall be made in due course.

Comment 28: One comment suggested

that § 1.129(a) be amended so as not to

be limited to applications under final

rejection, such that an applicant in an

application in which a notice of

allowance under § 1.311 has been

mailed may obtain entry of an

information disclosure statement

without regard to the requirements of

§ 1.97(d).

Response: The Notice of Proposed

Rulemaking did not propose to amend

§ 1.129(a). While the language of

§ 532(a)(2)(A) of Pub. L. 103–465 does

not expressly exclude the further

examination of an application that has

been allowed (as opposed to an
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53145

application under a final rejection),

§ 102(d) of Pub. L. 103–465 provides

that ‘‘[t]he statement of administrative

action approved by the Congress under

section 101(a) shall be regarded as an

authoritative expression by the United

States concerning the interpretation and

application of the Uruguay Round

Agreements and this Act in any judicial

proceeding in which a question arises

concerning such interpretation or

application.’’ The statement of

administrative action specifies that such

further examination is to facilitate the

completion of prosecution of

applications pending before the Office,

and to permit applicants to present a

submission after the Office has issued a

final rejection on an application. See

H.R. Rep. 826(i), 103rd Cong., 2nd Sess.

1005–06, reprinted in 1984 U.S.C.C.A.N.

3773, 4298.

Upon mailing of a notice of allowance

under § 1.311, prosecution of an

application before the Office is

concluded. The proposed amendment to

obtain further examination pursuant to

§ 1.129(a) after allowance would nullify

(rather than facilitate) the completion of

prosecution of the above-identified

application, and, as such, would be

inconsistent with the purpose for the

provisions of § 532(a)(2)(A) of Pub. L.

103–465.

Comment 29: One comment

questioned how the filing of a continued

prosecution application would result in

less delay than the filing of a continuing

application under § 1.53(b), as a

continued prosecution application

would be subject to pre-examination

processing delays.

Response: The Office will not issue a

new filing receipt for a continued

prosecution application under § 1.53(d).

See § 1.54(b). By not issuing a filing

receipt for a continued prosecution

application, the Office will be able to

perform the pre-examination of any

continued prosecution application in

the examining group to which the prior

application was assigned. Likewise,

§ 1.6(d) has been amended to permit an

applicant to file a continued

prosecution application under § 1.53(d)

by facsimile, and the use of this means

of filing a continued prosecution

application will avoid the delay

inherent in routing an application (or

any paper) from the mailroom to the

appropriate examining group. These

provisions will enable the Office to

process a continued prosecution

application in the manner that a

submission under § 1.129(a) is

processed.

Comment 30: One comment

questioned whether the filing date of a

continued prosecution application is the

filing date for determining patent term,

or is significant only in establishing

copendency. Another comment

questioned what filing date was relevant

for determining patent term.

Response: Notwithstanding that a

continued prosecution application is

assigned the application number of the

prior application, the filing date of the

continued prosecution application is the

date on which the request for such

continued prosecution application was

filed (§ 1.53(d)). While the filing date of

the continued prosecution application is

relevant to establishing the copendency

required by 35 U.S.C. 120 and § 1.78(a)

between the continued prosecution

application and the prior application,

the filing date of a continued

prosecution application will never be

relevant to the term under 35 U.S.C.

154(b) of any patent issuing from the

continued prosecution application.

Any continued prosecution

application under § 1.53(d) will be filed

on or after June 8, 1995, and will claim

the benefit of an earlier application as

a continuation or divisional application.

Section 1.53(d)(7) specifically provides

that:

A request for an application under this

paragraph is the specific reference required

by 35 U.S.C. 120 to every application

assigned the application number identified in

such request. No amendment in an

application under this paragraph shall delete

this specific reference to any prior

application.

Thus, an application under § 1.53(d)

cannot be amended to delete the

specific reference to the prior

application, as well as the specific

reference to any application to which

the prior application contains a specific

reference under 35 U.S.C. 120, 121, and

365(c). As an application under

§ 1.53(d) will also contain a specific

reference to at least one other

application under 35 U.S.C. 120, 121,

and 365(c), the expiration date under 35

U.S.C. 154(b)(2) of any patent issuing

from the application under § 1.53(d)

will be based upon the filing date of the

prior application (or the earliest

application to which the prior

application contains a specific reference

under 35 U.S.C. 120, 121, and 365(c)).

Comment 31: One comment argued

that the Office should address not only

the filing requirements for continuing

applications, but also the cause of the

filing of continuing applications. The

comment specifically argued that the

current second action final practice

should be reevaluated as an applicant

no longer has an incentive to delay the

prosecution of an application due to

Pub. L. 103–465.

Response: The suggestion is being

taken under advisement as part of a

comprehensive effort by the Office to

reengineer the entire patent process.

However, it should be noted that any

changes to the current second action

final practice to provide additional

examination of an application prior to a

final Office action would necessitate a

corresponding increase in patent fees.

Comment 32: One comment suggested

that the Office simply eliminate the

‘‘true copy’’ requirement of § 1.60,

rather than add new provisions

permitting the use of a copy of the oath

or declaration of a prior application.

The comment also suggested that the

Office simply amend § 1.62 to eliminate

the requirement that the Office assign a

new application number to the

application, rather than add a new

§ 1.53(d).

Response: The amendments to § 1.53

do not simply make minor changes to

§§ 1.60 and 1.62. Sections 1.60 and 1.62

are anachronisms that have outlived

their usefulness. A significant number

of applications filed under § 1.60 do not

meet the requirements of § 1.60 (and, as

such are improper), but would be proper

under § 1.53 (in the absence of a

reference to § 1.60). The elimination of

§ 1.60 will result in a reduction in the

Office’s burden in treating and the

applicant’s burden in correcting these

improper applications under § 1.60, as

such applications would generally have

been proper applications if filed under

§ 1.53 (without a reference to § 1.60).

Section 1.63(d) retains most of the

benefits of § 1.60, but eliminates the

filing ‘‘traps’’ of § 1.60.

Section 1.62 practice also causes

problems concerning its prohibition

against including a new or substitute

specification, and its permitting the

filing of a continuation-in-part. To avoid

continued prosecution application

practice under § 1.53(d) being confused

with the former file-wrappercontinuation practice under § 1.62, the

Office has deemed it advisable to use a

new § 1.53(d) rather than § 1.62 in

regard to continued prosecution

application practice.

Comment 33: One comment stated

that the Office should anticipate the

filing of applications containing a

reference to § 1.60 or § 1.62 for some

period.

Response: That applications

containing a reference to §§ 1.60 or 1.62

will continue to be filed has been

anticipated. The treatment of such

applications is discussed infra with

respect to the elimination of §§ 1.60 and

1.62.

Comment 34: One comment stated

that the safeguard in § 1.60 concerning
53146 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

the filing of an application lacking all of

the pages of specification or sheets of

drawings of the prior application has

not been retained in § 1.53(b). The

comment suggested that § 1.53 contain a

presumption that a continuation or

divisional be presumed, absent evidence

to the contrary, to be the filing of an

application identical to the prior

application.

Response: The Court of Customs and

Patent Appeals (CCPA) has held that a

mere reference to another application,

patent, or publication is not an

incorporation of anything therein into

the application containing such

reference. See In re de Seversky, 474

F.2d 671, 177 USPQ 144 (CCPA 1973);

see also Dart Industries v. Banner, 636

F.2d 684, 207 USPQ 273 (CCPA

1980)(related decision). These decisions

relied upon In re Lund, 376 F.2d 982,

153 USPQ 625 (CCPA 1967), which

considered the incorporation by

reference issue in the context of whether

a prior art patent adequately

incorporated by reference a prior

application. The court, in Lund,

specifically stated:

There is little in the term ‘‘continuation-inpart’’ which would suggest to the reader of

the patent that a disclosure of the nature of

Example 2 is present in the earlier

application and should be considered a part

of the patent specification. Thus, we cannot

agree that the subject matter of claim 3 is

tacitly ‘‘described’’ in the Margerison patent

within the meaning of § 102(e).

Id. at 989, 153 USPQ 631–32 (footnote

discussing the definition of

‘‘continuation-in-part’’ as set forth in

MPEP 201.08 omitted). While the

holdings in Dart Industries, de Seversky

and Lund appear to be based upon the

definitions of the various categories of

continuing applications set forth in the

MPEP (and thus could be changed by a

revision to the MPEP), the Office is not

at this time inclined to disturb settled

law in this area.

Nevertheless, an applicant may

incorporate by reference the prior

application by including, in the

continuing application-as-filed, a

statement that such specifically

enumerated prior application or

applications are ‘‘hereby incorporated

herein by reference.’’ The inclusion of

this incorporation by reference of the

prior application(s) will permit an

applicant to amend the continuing

application to include any subject

matter in such prior application(s),

without the need for a petition.

Section 1.54

Section 1.54(b) is amended to add the

phrase ‘‘unless the application is an

application filed under § 1.53(d).’’ To

minimize application processing delays

in applications filed under § 1.53(d),

such applications will not be processed

by the Office of Initial Patent

Examination as new applications.

No comments were received regarding

the proposed change to § 1.54.

Section 1.55

Section 1.55(a) is amended to remove

the requirement that the statement be

verified in accordance with the change

to §§ 1.4(d)(2) and 10.18.

No comments were received regarding

the proposed change to § 1.55.

Section 1.59

Section 1.59 is amended: (1) By

revising the title to indicate that

expungement of information from an

application file would come under this

section; (2) by revising the existing

paragraph and designating it as

paragraph (a)(1); and (3) by adding

paragraphs (a)(2), (b) and (c). Section

1.59(a)(1) retains the general prohibition

on the return of information submitted

in an application, but no longer limits

that prohibition to an application that

has been accorded a filing date under

§ 1.53. The portion of the paragraph

relating to the Office furnishing copies

of application papers has been shifted to

new paragraph (c). Section 1.59(a)(2)

makes explicit that information, forming

part of the original disclosure (i.e.,

written specification including the

claims, drawings, and any preliminary

amendment specifically incorporated

into an executed oath or declaration

under §§ 1.63 and 1.175) will not be

expunged from the application file.

Section 1.59(b) provides an exception

to the general prohibition of paragraph

(a) on the expungement and return of

information and would allow for such

when it is established to the satisfaction

of the Commissioner that the requested

expungement and return is appropriate.

Section 1.59(b) covers the current

practice set forth in MPEP 724.05 where

information is submitted as part of an

information disclosure statement and

the submitted information has initially

been identified as trade secret,

proprietary, and/or subject to a

protective order and where applicant

may file a petition for its expungement

and return that will be granted upon a

determination by the examiner that the

information is not material to

patentability. Any such petition should

be submitted in reply to an Office action

closing prosecution so that the examiner

can make a determination of materiality

based on a closed record. Any petition

submitted earlier than close of

prosecution may be dismissed as

premature or returned unacted upon. In

the event pending legislation for pregrant publication of applications, which

provides public access to the

application file, is enacted, then the

timing of petition submissions under

this section will be reconsidered.

Petitions to expunge were formerly

considered under § 1.182, with the

Office of Petitions consulting with the

examiner on the materiality of the

information at issue prior to rendering

a decision. A possible result of the

amendment to § 1.59 would be to have

petitions under § 1.59 to expunge

simply decided by the examiner who

determines the materiality of the

information.

Comment 35: One comment suggested

that petitions to expunge under § 1.59

should be decided by Group Directors or

officials in the Office of Petitions, rather

than by examiners. The comment

argued that any individual examiner

would decide such a petition so rarely

that it would be difficult to produce

uniform and consistent decisions.

Response: The preamble has been

amended to reflect that a possible result

of the rule change is to have petitions

under § 1.59 decided by the examiners.

The heart of most petitions to expunge

is a determination as to whether the

material sought to be expunged is

material to examination, a matter that is

now referred to examiners prior to a

decision on the petition. Given the

major role examiners now play in

expungement matters, it is not clear

why examiners would be rendering

inconsistent decisions, particularly as so

many other matters are routinely

assigned to examiners including

petitions under § 1.48. Nevertheless, the

comment is not germane to § 1.59 as

proposed (or adopted), but concerns the

internal Office delegation of such

petitions for consideration. Moreover, a

petition to expunge a part of the original

disclosure would have to be filed under

§ 1.183 and would continue to be

decided in the Office of Petitions.

Comment 36: A comment in

requesting some examples of things that

may be expunged asked whether a

design code listing as an appendix in an

application may be expunged.

Response: The standard set forth in

paragraph (b) of § 1.59 permits

information other than what is

enumerated in paragraph (a) of the

section to be expunged if it is

established to the satisfaction of the

Commissioner that the return of the

information is appropriate. The types of

information and rationales why the

information may be returned are varied

and will be evaluated on a case-by-case

basis with the basic inquiry being

whether the information is material to
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53147

examination of the application.

However, to the extent that an appendix

to a specification of an application is

considered part of the original

disclosure it cannot be expunged from

the file under § 1.59(a)(2).

Section 1.59(b) also covers

information that was unintentionally

submitted in an application, provided

that: (1) The Office can effect such

return prior to the issuance of any

patent on the application in issue; (2) it

is stated that the information submitted

was unintentionally submitted and the

failure to obtain its return would cause

irreparable harm to the party who

submitted the information or to the

party in interest on whose behalf the

information was submitted; (3) the

information has not otherwise been

made public; (4) there is a commitment

on the part of the petitioner to retain

such information for the period of any

patent with regard to which such

information is submitted; and (5) it is

established to the satisfaction of the

Commissioner that the information to be

returned is not material information

under § 1.56. A request to return

information that has not been clearly

identified as information that may be

later subject to such a request by

marking and placement in a separate

sealed envelope or container shall be

treated on a case-by-case basis. It should

be noted that the Office intends to start

electronic scanning of all papers filed in

an application, and the practicality of

expungement from the electronic file

created by a scanning procedure is not

as yet determinable. Applicants should

also note that unidentified information

that is a trade secret, proprietary, or

subject to a protective order that is

submitted in an Information Disclosure

Statement may inadvertently be placed

in an Office prior art search file by the

examiner due to the lack of such

identification and may not be

retrievable.

Section 1.59(b) also covers the

situation where an unintended heading

has been placed on papers so that they

are present in an incorrect application

file. In such a situation, a petition

should request return of the papers

rather than transfer of the papers to the

correct application file. The grant of

such a petition will be governed by the

factors enumerated above in regard to

the unintentional submission of

information. Where the Office can

determine the correct application file

that the papers were actually intended

for, based on identifying information in

the heading of the papers (e.g.,

Application number, filing date, title of

invention and inventor(s) name(s)), the

Office will transfer the papers to the

correct application file for which they

were intended without the need of a

petition.

Section 1.59(c) retains the practice

that copies of application papers will be

furnished by the Office upon request

and payment of the cost for supplying

such copies.

Section 1.60

Section 1.60 is removed and reserved.

Section 1.60 is now unnecessary due

to the amendment to § 1.63(d) to

expressly permit the filing in a

continuation or divisional application

using a copy of the oath or declaration

filed in the prior application, and to

provide (§ 1.63(d)(2)) for the filing of a

continuation or divisional application

by all or by fewer than all the inventors

named in a prior application.

See comments relating to § 1.53.

Section 1.62

Section 1.62 is removed and reserved.

Section 1.62 is unnecessary due to the

addition of § 1.53(d) to permit the filing

of a continued prosecution application.

It is anticipated that applications

purporting to be applications filed

under §§ 1.60 or 1.62 will be filed until

the deletion of §§ 1.60 and 1.62 become

well known among patent practitioners.

An application purporting to be an

application filed under § 1.60 will

simply be treated as a new application

filed under § 1.53 (i.e., the reference to

§ 1.60 will simply be ignored).

Applications purporting to be an

application filed under § 1.62 will be

treated as continued prosecution

applications under § 1.53(d), and those

applications that do not meet the

requirements of § 1.53(d) (e.g.,

continuation-in-part applications or

continuations or divisional of

applications filed before June 8, 1995)

will be treated as improper continued

prosecution applications under

§ 1.53(d). Such an improper application

under § 1.53(d) may be accepted and

treated as a proper application under

§ 1.53(b) by way of petition under

§ 1.53(e) (and submission of the $130 fee

pursuant to § 1.17(i)).

A petition under § 1.53(e) to accept

and treat an improper application under

§ 1.53(d) as a proper application under

§ 1.53(b) must include: (1) The $130

petition fee; (2) a true copy of the

complete application designated as the

prior application in the purported § 1.62

application papers; (3) any amendments

entered in the prior application; and (4)

any amendments submitted but not

entered in the prior application and

directed to be entered in the purported

§ 1.62 application papers. In an

application purporting to be a

continuation or divisional application

under § 1.62, the true copy of the prior

application will constitute the original

disclosure of the application under

§ 1.53(b), and any amendments entered

in the prior application or not entered

in the prior application but directed to

be entered in the purported § 1.62

application papers and submitted with

the § 1.53(e) petition will be entered in

the application under § 1.53(b) and

considered by the examiner for new

matter under 35 U.S.C. 112, ¶ 1, and

132. In an application purporting to be

a continuation-in-part application under

§ 1.62, the true copy of the prior

application, any amendments entered in

the prior application or not entered in

the prior application but directed to be

entered in the purported § 1.62

application papers and submitted with

the § 1.53(e) petition, and any

preliminary amendment submitted with

the purported § 1.62 application will

constitute the original disclosure of the

application under § 1.53(b).

See comments relating to § 1.53.

Section 1.63

Section 1.63(a)(3) is amended to

require the post office address to appear

in the oath or declaration and to have

the requirement from § 1.41(a) for the

full names of the inventors placed

therein.

Comment 37: Two comments raised

the issue regarding the continued

requirement that both a post office

address and a residence be supplied and

indicated that the residence is not

required by statute, the post office

address is sufficient for communication

purposes, and that the burden of

submitting both far outweighs the

infrequent need to contact any

particular inventor bypassing counsel so

that the residence alone should be

sufficient.

Response: Under the proposed

comment the applicants would still be

required to submit either the residence

or post office address. To request that

they also supply the other or state that

both are the same is not seen to be a

significant burden as the information is

to be supplied on the oath or declaration

form that they must sign anyway and

spaces can be provided to ensure that

the information is supplied. While

neither the residence nor the post office

address are statutory requirements, the

Office requires this information for the

applicant’s benefit. As more than one

person may have the same name, a

person’s name is often not sufficient to

provide a unique identification of the

inventor. Thus, the Office also requires

an inventor’s residence (which is not

required to be sufficiently detailed to
53148 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

suffice as a post office address) to

specifically identify the person(s)

named in the oath or declaration as the

inventor(s), which is a common practice

for legal documents. The post office

address is also required in the event that

the Office finds it necessary to directly

contact the inventor(s). It is not

uncommon for an inventor to revoke a

power of attorney or authorization of

agent in a paper providing no address

for future correspondence from the

Office. Also, the Office will need to

directly contact the inventor if the

Office is notified of the death of a sole

attorney or agent of record (MPEP 406).

Section 1.63(d) is amended to: (1)

relocate its current language in a new

§ 1.63(e); and (2) provide that a newly

executed oath or declaration is not

required under § 1.51(b)(2) and 1.53(f)

in a continuation or divisional

application filed by all or by fewer than

all of the inventors named in a prior

nonprovisional application containing

an oath or declaration as prescribed by

§ 1.63, provided that a copy of the

executed oath or declaration filed in the

prior application is submitted for the

continuation or divisional application

and the specification and drawings filed

in the continuation or divisional

application contain no matter that

would have been new matter in the

prior application. The copy of the oath

or declaration must show the signature

of the inventor(s) or contain an

indication thereon that the oath or

declaration was signed (e.g., the

notation ‘‘/s/’’ on the line provided for

the signature).

A continuation or divisional

application may be filed under 35

U.S.C. 111(a) using the procedures set

forth in § 1.53(b), by providing either:

(1) A copy of the prior application,

including a copy of the oath or

declaration in such prior application, as

filed; or (2) a new specification and

drawings and a copy of the oath or

declaration as filed in the prior

application so long as no matter is

included in the new specification and

drawings that would have been new

matter in the prior application. The

specification and drawings of a

continuation or divisional application is

not limited to a reproduction or ‘‘true

copy’’ of the prior application, but may

be revised for clarity or contextual

purposes vis-a`-vis the prior application

in the manner that an applicant may file

a substitute specification (§ 1.125) or

amend the drawings of an application so

long as it does not result in the

introduction of new matter. Of course,

35 U.S.C. 115 requires that a

supplemental oath or declaration

meeting the requirements of § 1.63 be

filed in the continuation or divisional

application, if a claim is allowed in the

continuation or divisional application

which is drawn to subject matter

originally shown or described in the

prior application but not substantially

embraced in the statement of the

invention or claims originally presented

in the prior application as filed. See

§ 1.67(b).

The patent statute and rules of

practice do not require that an oath or

declaration include a date of execution,

and the Examining Corps has been

directed not to object to an oath or

declaration as lacking either a recent

date of execution or any date of

execution. The applicant’s duty of

candor and good faith including

compliance with the duty of disclosure

requirements of § 1.56 is continuous and

applies to the continuing application.

A new application containing a copy

of an oath or declaration under § 1.63

referring to an attached specification is

indistinguishable from a continuation or

divisional application containing a copy

of an oath or declaration from a prior

application submitted pursuant to

§ 1.63(d). Unless an application is

submitted with a statement that the

application is a continuation or

divisional application (§ 1.78(a)(2)), the

Office will process such application as

a new non-continuing application.

Applicants are advised to clearly

designate any continuation or divisional

application as such to avoid the

issuance of a filing receipt that does not

indicate that the application is a

continuation or divisional.

To continue the practice in

§ 1.60(b)(4) of permitting the filing of a

continuation or divisional application

by all or by fewer than all of the

inventors named in a prior application

without a newly executed oath or

declaration, new § 1.63(d)(2) provides

that the copy of the oath or declaration

submitted for a continuation or

divisional application under § 1.63(d)

must be accompanied by a statement

from applicant, counsel for applicant or

other authorized party requesting the

deletion of the names of the person or

persons who are not inventors in the

continuation or divisional application.

Where the continuation or divisional

application and copy of the oath or

declaration from the prior application is

filed without a statement from an

authorized party requesting deletion of

the names of any person or persons

named in the prior application, the

continuation or divisional application

will be treated as naming as inventors

the person or persons named in the

copy of the executed oath or declaration

from the prior application. Accordingly,

if a petition under § 1.48 (a) or (c) was

granted in the prior application, an oath

or declaration filed in a continuation or

divisional application pursuant to

§ 1.63(d) should be the oath or

declaration also executed by the added

inventor(s). For situations where an

inventor or inventors are to be added in

a continuation or divisional application,

see § 1.63(d)(5).

The statement requesting the deletion

of the names of the person or persons

who are not inventors in the

continuation or divisional application

must be signed by person(s) authorized

pursuant to § 1.33(b) to sign an

amendment in the continuation or

divisional application.

Section 1.63(d)(3) provides for the

situation in which the executed oath or

declaration of which a copy is

submitted for a continuation or

divisional application was originally

filed in a prior application accorded

status under § 1.47. Section 1.63(d)(3)(i)

requires a copy of any decision granting

a petition to accord § 1.47 status to such

application, unless each nonsigning

inventor(s) or legal representative

(pursuant to § 1.42 or 1.43) has filed an

oath or declaration to join in an

application of which the continuation or

divisional application claims a benefit

under 35 U.S.C. 120, 121 or 365(c).

Where a nonsigning inventor or legal

representative (pursuant to § 1.42 or

1.43) subsequently joins in any

application of which the continuation or

divisional application claims a benefit

under 35 U.S.C. 120, 121 or 365(c),

§ 1.63(d)(3)(ii) also requires a copy of

any oath or declaration filed by an

inventor or legal representative to

subsequently join in such application.

Section 1.63(d)(4) provides that where

the power of attorney (or authorization

of agent) or correspondence address was

changed during the prosecution of the

prior application, the change in power

of attorney (or authorization of agent) or

correspondence address must be

identified in the continuation or

divisional application, or the Office may

not recognize in the continuation or

divisional application the change of

power of attorney (or authorization of

agent) or correspondence address during

the prosecution of the prior application.

A newly executed oath or declaration

will continue to be required in a

continuation or divisional application

naming an inventor not named in the

prior application, or a continuation-inpart application, and § 1.63(d)(5)

expressly states that a newly executed

oath or declaration must be filed in a

continuation or divisional application

naming an inventor not named in the

prior application.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53149

New § 1.63(e) provides that a newly

executed oath or declaration must be

filed in a continuation-in-part

application, which application may

name all, more, or fewer than all of the

inventors named in the prior

application, and includes the language

relocated from former § 1.63(d)

concerning an oath or declaration in a

continuation-in-part application.

Comment 38: One comment suggested

that the practice of permitting the use of

an executed oath or declaration of a

prior application creates a trap for the

unwary in the situation in which an

applicant believes in error that no new

matter has been added in the

‘‘continuation’’ application and does not

file a new declaration.

Response: The situation outlined in

the comment is less of a trap for the

unwary than the situation in which an

applicant files a substitute specification

and believes in error that no new matter

has been added, in that the error in the

‘‘continuation’’ may be corrected by

redesignation of the application as a

continuation-in-part and the filing of a

new oath or declaration. Nevertheless, it

remains the applicant’s responsibility to

review any substitute specification or

new specification submitted for a

continuation application to determine

that it contains no new matter. See

MPEP 608.01(q). An applicant is

advised to simply file a continuing

application with a newly executed oath

or declaration when it is questionable as

to whether the continuing application

adds material that would have been new

matter if presented in the prior

application.

Comment 39: One comment suggested

that the option of submitting ‘‘a copy of

an unexecuted oath or declaration, and

a statement that the copy is a true copy

of the oath or declaration that was

subsequently executed and filed to

complete * * * the most immediate

prior national application for which

priority is claimed under 35 U.S.C. 120,

121 or 365(c)’’ was strange at best as the

applicant or representative should have

a copy of the oath or declaration that

was filed to complete the prior

application or could obtain one from

Office records.

Response: The suggestion is adopted.

Section 1.63(d) as adopted provides

that: ‘‘[a] newly executed oath or

declaration is not required under

§ 1.51(b)(2) and § 1.53(f) in a

continuation or divisional application

filed by all or by fewer than all of the

inventors named in a prior

nonprovisional application containing

an oath or declaration as prescribed by

paragraphs (a) through (c) of this

section, provided that a copy of the

executed oath or declaration filed in the

prior application is submitted for the

continuation or divisional application.’’

Comment 40: One comment

questioned whether § 1.53 (or § 1.63) is

consistent with § 1.48 as to whether the

oath or declaration filed in a continuing

application adding an inventor must be

executed by all of the inventors, or just

the added inventor.

Response: The oath or declaration

filed in a continuing application adding

an inventor or a continuation-in-part

application must name and be executed

by all of the inventors. Sections 1.48

and 1.63(e) are consistent in this regard.

Comment 41: One comment

questioned whether, in a continuation

or divisional application following a

chain of continuation or divisional

applications, the copy of the executed

oath or declaration may be a copy of the

oath or declaration filed in the

immediate prior application (which may

itself be a copy of an oath or declaration

from a prior application), or must be a

direct copy of the originally executed

oath or declaration.

Response: Section 1.63(d) requires a

copy of the oath or declaration from the

prior application. In instances in which

the oath or declaration filed in the prior

application is itself a copy of an oath or

declaration from a prior application,

either a copy of the copy of the oath or

declaration in the prior application or a

direct copy of the original oath or

declaration is acceptable, as both are a

copy of the oath or declaration in the

prior application. See § 1.4(d)(1)(ii).

Section 1.67

Section 1.67 paragraph (b) is amended

to change ‘‘§ 1.53(d)(1)’’ to ‘‘§ 1.53(f)’’

for consistency with § 1.53.

No comments were received regarding

§ 1.67.

Section 1.69

Section 1.69(b) is amended to remove

the requirement that the translation be

verified in accordance with the change

to §§ 1.4(d)(2) and 10.18. Section 1.69(b)

is also amended to clarify the need for

a statement that the translation being

offered is an accurate translation, as in

§ 1.52 paragraphs (a) and (d).

Two comments were received in

regard to § 1.69 that also raised similar

issues in regard to § 1.52, which

comments are treated with § 1.52.

Section 1.78

Section 1.78(a)(1) is amended to

remove the references to §§ 1.60 and

1.62 in view of the deletion of §§ 1.60

and 1.62, and to include a reference to

an ‘‘international application entitled to

a filing date in accordance with PCT

Article 11 and designating the United

States of America.’’ Section 1.78(a)(2) is

amended for consistency with the

changes to § 1.53, and to provide that

‘‘[t]he identification of an application by

application number under this section is

the specific reference required by 35

U.S.C. 120 to every application assigned

that application number.’’

No comments were received regarding

the proposed change to § 1.78.

Section 1.84

Section 1.84(b) is amended by

removing references to the filing of

black and white photographs in design

applications as unnecessary in view of

the reference in § 1.152 to § 1.84(b).

Section 1.84 paragraphs (c) and (g) are

amended for consistency in regard to

the English equivalents (5/8 inch.) for

1.5 cm.

No adverse comments were received

regarding the proposed change to § 1.84.

Section 1.91

The title of § 1.91 is amended to

clarify that a certain type of material is

not generally admitted in the file record

by substitution of ‘‘admitted’’ for

‘‘required.’’

Section 1.91 is also amended to

clarify the type of material that is not

generally admitted into the file record of

an application. Section 1.91(a)

specifically requires a petition (with the

fee set forth in § 1.17(i)) including an

appropriate showing why entry of the

model or exhibit into the file record is

necessary to demonstrate patentability,

unless the model or exhibit: (1)

substantially conforms with § 1.52 or

§ 1.84; or (2) was required by the Office.

Section 1.91 is also amended to state

that a model, working model or other

physical exhibit, whose submission by

applicants is generally not permitted,

may be required by the Office if deemed

necessary for any purpose in the

examination of the application. This

language is moved from § 1.92.

Comment 42: Several adverse

comments were received expressing

concern that the addition of the term

‘‘exhibits’’ to the bar against admission

of models, unless specifically required

by the Office, would prevent applicants

from making their best possible case for

patentability, and that exhibits would be

interpreted by the Office as barring twodimensional as well as threedimensional exhibits.

Response: The preamble of the

proposed rule indicated that the change

to the rule is in the nature of a

clarification and not a change in

practice. Further clarification has been

added to the rule by reference to § 1.52
53150 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

or § 1.84 and to the instant discussion

of the rule to indicate that the use of the

term ‘‘exhibits’’ is in the nature of other

three-dimensional models, such as

videos, and will not bar twodimensional exhibits currently being

accepted. Additionally, a petition route

has been added to the rule that would

permit entry of three-dimensional

models or exhibits where they are

necessary to establish patentability.

Section 1.91 is also amended to

expressly provide for the filing of a

petition thereunder (rather than to

require the filing of a petition under

§ 1.183) such that an applicant may gain

entry of a model or exhibit, without a

showing of an extraordinary situation

where justice requires grant of the relief

sought.

The fact that a three-dimensional

model or exhibit will not generally be

entered in the record absent an

appropriate showing does not prevent

an applicant from showing the exhibit

to the examiner for purposes of

clarifying the examiner’s understanding

of the invention and reducing the model

or exhibit to two-dimensional

conformance with § 1.52 or § 1.84 for

entry of that reduction to the record

(which issues are separate and distinct

from the questions as to whether the

later presented material was originally

required for an understanding of the

invention and its subsequent addition

being subject to a new matter objection

under 35 U.S.C. 132).

Due to the unusual difficulties of

storage for three-dimensional materials

and little demonstrated need for their

presence in the file record over what

would be provided for via petition

under § 1.91, it is not seen to be

appropriate to permit unrestricted entry

of three-dimensional exhibits in the file

record.

Section 1.92

Section 1.92 is removed and reserved

and the language transferred to § 1.91(b)

for improved contextual purposes.

No comments were received regarding

the proposed change to § 1.92.

Section 1.97

Sections 1.97 (c) through (e) are

amended by replacement of

‘‘certification’’ by ‘‘statement’’ (see

comments relating to § 1.4(d)), and by

clarifying the current use of ‘‘statement’’

by the terms ‘‘information disclosure.’’

Section 1.97(e)(2) is further amended

to replace ‘‘or’’ by ‘‘and’’ to require that

no item of information contained in the

information disclosure statement was

cited in a communication from a foreign

patent office in a counterpart foreign

application, and, to the knowledge of

the person signing the statement, after

making reasonable inquiry, no item of

information contained in the

information disclosure was known to

any individual designated in § 1.56(c)

more than three months prior to the

filing of the information disclosure

statement. The use of ‘‘and’’ rather than

‘‘or’’ is in keeping with the intent of the

rule as expressed in the MPEP

609(B)(2)(ii), that the conjunction be

conjunctive rather than disjunctive. The

mere absence of an item of information

from a foreign patent office

communication was clearly not

intended to represent an opportunity to

delay the submission of the item when

known more than three months prior to

the filing of an information disclosure

statement to an individual having a duty

of disclosure under § 1.56.

No comments were received regarding

the proposed change to § 1.97.

Section 1.101

Section 1.101 is removed and

reserved as relating to internal Office

instructions.

Comment 43: A number of comments

opposed the deletion of the rules that

solely govern Office procedure. The

reasons given for this opposition are: (1)

The Office should subject its procedures

to the notice and comment provisions of

the Administrative Procedure Act

(APA); (2) the inclusion of such

procedures in the rules of practice

imparts the force and effect of law to

such procedures; (3) the greater

deference given to procedures set forth

in the rules of practice, rather than the

MPEP, during court action.

Response: The CCPA has held that

applicants before the Office are entitled

to rely not only on the patent statute

and rules of practice, but on the

provisions of the MPEP, during the

prosecution of an application for patent.

See In re Kaghan, 387 F.2d 398, 401,

156 USPQ 130, 132 (CCPA 1967). Thus,

there is in practice little, if any, benefit

to applicants before the Office in having

the Office procedure set forth in the

rules of practice, rather than the MPEP.

In any event, no comment pointed to

any specific decision, and the Office is

not aware of any decision, in which the

result turned on the inclusion of Office

procedure in the rules of practice (rather

than simply in the MPEP).

Nevertheless, in view of the concern

expressed in the comments as to the

rules of practice setting forth the

fundamentals of the examination of an

application, the Office will retain the

substance of §§ 1.104 and 1.105 in the

rules of practice. See In re Phillips, 608

F.2d 879, 883 n.6, 203 USPQ 971, 974

n.6 (CCPA 1979) (although irrelevant to

the result, the Office was criticized for

piecemeal examination contrary to

§§ 1.104 and 1.105). The substance of

§§ 1.104, 1.105, 1.106, 1.107, and 1.109,

however, will be combined into § 1.104

paragraphs (a)–(e).

The Office will also retain § 1.351 in

the rules of practice, as it has been

relied upon as the notice that the Office

will provide concerning changes to the

rules of practice in 37 CFR Part 1. See

In re Nielson, 816 F.2d 1567, 1571, 2

USPQ2d 1525, 1527 (Fed. Cir. 1987).

Finally, the Office will retain § 1.181

paragraphs (d), (e), and (g) to avoid

confusing petition practice, and § 1.325

to avoid confusion as to the

requirements for correction of a patent.

The Office, however, will delete

§§ 1.101, 1.108, 1.122, 1.184, 1.318, and

1.352 from 37 CFR Part 1. The

procedures set forth in §§ 1.101, 1.122,

1.184, and 1.318 do not provide

meaningful safeguards to applicants

(e.g., § 1.101 does not ensure or give an

applicant the right to examination of an

application within any reasonably

specific time frame). The proscription in

§ 1.108 is simply an administrative

instruction based upon the fact that,

unless otherwise publicly available,

abandoned applications do not

constitute prior art under 35 U.S.C. 102

(and thus 103). Finally, as former

§ 1.352 included a ‘‘whenever required

by law’’ prerequisite, it provided no

independent requirement that the Office

publish proposed rule changes for

comment.

Section 1.102

Section 1.102(a) is amended to

remove the requirement that the

showing be verified in accordance with

the change to §§ 1.4(d)(2) and 10.18.

No comments were received regarding

the proposed change to § 1.102.

Section 1.103

Section 1.103(a) is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.103.

Section 1.104

Section 1.104 is amended to include

paragraphs (a) through (e) including the

substance of former §§ 1.104, 1.105,

1.106, 1.107, and 1.109. The re-writing

of §§ 1.104, 1.105, 1.106, 1.107, and

1.109 as § 1.104 (a) through (e) involves

no change in substance.

See comment relating to § 1.101.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53151

Section 1.105

Section 1.105 is removed and

reserved as the subject matter was

transferred to § 1.104(b).

See comment relating to § 1.101.

Section 1.106

Section 1.106 is removed and

reserved as the subject matter was

transferred to § 1.104(c).

See comment relating to § 1.101.

Section 1.107

Section 1.107 is removed and

reserved as the subject matter was

transferred to § 1.104(d).

See comment relating to § 1.101.

Section 1.108

Section 1.108 is removed and

reserved as relating to internal Office

instructions.

See comment relating to § 1.101.

Section 1.109

Section 1.109 is removed and

reserved as the subject matter was

transferred to § 1.104(e).

See comment relating to § 1.101.

Section 1.111

Section 1.111 is amended to

consistently refer to a ‘‘reply’’ to an

Office action. The prior section used the

term ‘‘response’’ and ‘‘reply’’ in an

inconsistent manner and created some

confusion. Paragraph (b) of § 1.111 is

also amended to explicitly recognize

that a reply must be reduced to a writing

which must point out the specific

distinctions believed to render the

claims, including any newly presented

claims, patentable. It is noted that an

examiner’s amendment reducing a

telephone interview to writing would

comply with § 1.2.

Comment 44: One comment asked

whether pointing out one distinction is

sufficient or must applicant provide an

exhaustive list of all distinctions.

Additionally, inquiry is made as to

whether it is sufficient to point out the

impropriety of a rejection under 35

U.S.C. 102 that should have been a

rejection under 35 U.S.C. 103, or must

a rejection under 35 U.S.C. 103 be

anticipated and answered.

Response: A distinction should be

kept in mind between what is necessary

for a reply to be considered sufficient to

continue prosecution of the application

and what will advance the application

to issuance in the most efficient manner.

While pointing out only one distinction,

such as why a rejection under 35 U.S.C.

102 is inappropriate, would comply

with the requirements of § 1.111,

advancement of the prosecution of the

application would best be served by

pointing out all possible distinctions, so

that if the argument for one distinction

is not persuasive, another may be.

Similarly, anticipation of and argument

against a rejection under 35 U.S.C. 103

where a rejection under 35 U.S.C. 102

should have been made under 35 U.S.C.

103 could possibly prevent making of

the rejection under 35 U.S.C. 103 by the

examiner and an earlier issuance of the

application thereby preserving patent

term under 35 U.S.C. 154 as amended

by Pub. L. 103–465.

Comment 45: Three comments

pointed to instances where a reply

would not necessarily require that

distinctions be pointed out, such as: (1)

where context and arguments presented

make the distinctions clear beyond

doubt; (2) where a prima facie case has

not been established or motivation for

modification of a reference is lacking;

(3) a secondary reference is from a

nonanalogous art improperly combined;

or (4) no reference has been applied.

Response: The comment has been

adopted to the extent that the paragraph

(b) of the rule has been amended to refer

to ‘‘any’’ rather than ‘‘the’’ applied

references. Any argument that would

make the distinctions clear beyond

doubt would seem to require

identification of the distinctions therein.

Where a reply contains an argument that

motivation for a modification of a

reference made by an examiner does not

exist, or that a nonanalogous secondary

reference has been improperly

combined, the identification of the

claim element involved and the

particular factual basis that makes the

modification or combination relating to

that claim element inappropriate are

necessary elements of a reply. That an

applicant considers a rejection,

objection, or other requirement in an

Office action to be inappropriate does

not relieve the applicant of the burden

under 35 U.S.C. 133 of prosecuting the

application to avoid abandonment.

Comment 46: A comment suggested

that the requirement for supplying claim

distinctions for a newly presented claim

is at odds with the Office’s burden in

the first instance of explaining any

objection or rejection of an applicant’s

claim, and that the existing requirement

that an applicant distinctly and

specifically point out the errors in the

examiner’s action and reply to every

ground of objection and rejection are

sufficient without the added language.

Another comment noted that it is

believed that the rule already requires

that specific distinctions be supplied

and questions what new requirements

are being added by that additional

language.

Response: To the extent that the

already existing language would require

that claim distinctions be presented, the

added language is seen to clarify what

is required of an applicant in replying

to an Office action and is not seen to be

at odds with the Office’s burden in first

going forward with a rejection of the

claims. Once a claim is rejected, there

is a duty on applicants under § 1.111 to

provide an appropriate reply as defined

therein for applicant to be entitled to

reconsideration or further examination.

Section 1.112

Section 1.112 is amended to remove

as unnecessary the statement that ‘‘any

amendments after a second Office action

must ordinarily be restricted to the

rejection, objections or requirements

made in the office action’’ to reflect

actual practice, in which amendments

after the second action need not be

restricted to the rejection or the

objections or requirements set forth in

an Office action. The heading of § 1.112

is also amended to add ‘‘before final

action’’ to clarify that such

reconsideration does not apply after a

final Office action.

No comments were received regarding

the proposed change to § 1.112.

Section 1.113

Section 1.113(a) is amended to add

‘‘by the examiner’’ after ‘‘examination or

consideration,’’ change ‘‘objections to

form’’ to ‘‘objections as to form’’ for

clarity, and replace ‘‘response’’ with

‘‘reply’’ in accordance with the change

to § 1.111.

Section 1.113(b) is amended to change

‘‘clearly stating the reasons therefor’’ to

‘‘clearly stating the reasons in support

thereof’’ for clarity.

Comment 47: A number of comments

argued that first action final practice

should be eliminated without regard to

an amendment to § 1.116 as: (1) 35

U.S.C. 132 does not authorize first

action final practice; and (2) the filing

fee paid in a continuing application

should entitle an applicant to an

examination and reexamination in the

continuing application.

Response: The argument that 35

U.S.C. 132 does not authorize first

action final practice has been

considered by the Office and rejected in

In re Bogese, 22 USPQ2d 1821 (Comm’r

Pat. 1992). Specifically, continuing

applications have historically been

considered part of a continuous

proceeding in regard to the prior

application. Id. at 1827. First action

final practice denies an applicant the

delay inherent in an additional Office

action in a continuation application,

thus compelling the applicant to draft
53152 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

claims in a continuation application in

view of the prosecution history of the

parent application (i.e., the rejections

and prior art of record in the parent

application), and thus make a bona fide

effort to define the issues for appeal or

allowance. Id. at 1824–25.

In addition, under the current patent

fee structure, a significant portion of the

Office’s costs of examining patent

applications is recovered through issue

and maintenance fees. That is, the filing

fees required by 35 U.S.C. 41(a) (1)–(4)

and § 1.16 for an application do not

cover the Office’s full costs of

examining that application pursuant to

35 U.S.C. 131 and 132. Therefore, the

argument that first action final practice

is inherently unfair in view of the filing

fees paid by the applicant fails to

appreciate the current patent fee

structure.

Due to the overwhelming opposition

to the proposed changes to § 1.116 to

simplify after final practice, the

proposed change to § 1.113 to eliminate

first action final practice and the

proposed changes to § 1.116 to simplify

after final practice are not adopted in

this Final Rule. The Office will give

further consideration to the elimination

of first action final practice.

Comment 48: One comment suggested

that § 1.113 should be clarified to reflect

the intent of the rule change that a first

action final rejection not issue in a

continuation application.

Response: The proposed change to

§ 1.113 to prohibit a first action final

rejection is not being adopted.

Section 1.115

Section 1.115 has been removed and

reserved, rather than amended to

contain the material of former §§ 1.117

through 1.118, 1.123 and 1.124. The

subject matter proposed to be included

in § 1.115 has been transferred to

§ 1.121. The change does not constitute

a change in substance; the material of

the deleted sections has simply been

rearranged and edited for clarity and

contextual purposes in § 1.121. The

reference in § 1.115(b)(2) relating to the

rejection of claims containing new

matter has not been retained in § 1.121

as unnecessary.

Comment 49: One comment

recognizing that the subject matter of

§ 1.118 is transferred to § 1.115 (now

§ 1.121) noted that the particular

material of the second and third

sentences of paragraph (a) of § 1.118(a)

was not so transferred and should be.

Response: While the exact language of

the second and third sentences of

paragraph (a) of § 1.118 was not

transferred to 1.121 (§ 1.115 as

originally proposed), the concept is

retained in § 1.121, paragraphs (a)(6),

(b)(5), and (c)(1), in condensed form.

Comment 50: One comment objected

to the requirement of paragraph (d) of

§ 1.115 (now § 1.121) where a disclosure

must be amended to secure

correspondence between the claims, the

specification and the drawings. Forcing

the specification to parrot the language

of new claims, where only new claims

originally use a term not found in the

original disclosure and in the original

claims, is said to impose an undue

burden on applicant and jeopardize the

validity of all the claims if the new term

is found to be new matter.

Response: The comment does not

explain why a specification containing

a later added expression subsequently

found to contain new matter will

adversely affect claims that do not

contain that expression, particularly if a

portion of the specification is retained

that provides support for claims not

containing that expression.

Additionally, the requirement being

criticized is not a new requirement but

was material transferred from § 1.117.

However, the comment was adopted inpart in that § 1.121, paragraphs (a)(5)

and (b)(4), require only ‘‘substantial

correspondence’’ between the claims,

the remainder of the specification, and

the drawings.

Comment 51: One comment suggested

that the term ‘‘sketch’’ in paragraph (e)

of § 1.115 (now § 1.121) be broadened to

‘‘drawing.’’

Response: Sections 1.121(a)(3)(ii) and

1.121(b)(3)(ii) recite sketch, which has

been interpreted by the Office to include

a copy. The use of sketch is seen to be

the broader term in allowing a

handwritten alteration of a copy of the

previously submitted drawing to be

done without the need for a color copy

being obtained.

Comment 52: One comment suggested

that paragraph (f) of § 1.115 (now

§ 1.121), requiring no interlineations to

appear in a clause as finally presented,

is inconsistent with the requirements of

§ 1.121 requiring brackets and

underlining of the subject matter

deleted and added.

Response: The comment was adopted

by clarifying § 1.121(a)(iii) as adopted

by reciting that the interlineation

prohibition relates to previous

amendments being depicted in a

subsequent amendment, and to limit its

applicability to applications other than

reissue applications (thereby also

excluding reexamination proceedings)

in that all changes from the patent are

required to be shown in reissue

applications and reexamination

proceedings.

Section 1.116

Section 1.116 is amended by adding

the phrase ‘‘or appeal’’ to its heading.

This change clarifies the current

practice that paragraphs (b) and (c)

apply to amendments filed after an

appeal, regardless of whether the

application was subject to a final

rejection prior to the appeal.

Section 1.116(a) is also amended for

clarity to limit amendments after a final

rejection or other final action (§ 1.113)

to those amendments cancelling claims

or complying with any requirement of

form set forth in a previous Office

action, and replaces the phrase ‘‘any

proceedings relative thereto’’ with ‘‘any

related proceedings’’ for clarity. The

amendment does not represent a change

in practice under § 1.116(a) as was

originally proposed, but merely a

clarification of when an applicant is

entitled to entry of an amendment under

§ 1.116(a).

Comment 53: Almost every comment

relating to the proposed change to

§ 1.116 to limit entry of amendments

after a final Office action based on

simplification of issues for appeal

opposed the change. The various

rationales included: (1) A liberal

practice by examiners in entering

amendments after final rejection based

on a willingness to engage in significant

negotiations after final rejection; (2) an

increased burden on the Board of Patent

Appeals and Interferences (Board); (3) a

loss of potential patent term under 35

U.S.C. 154 if refiling an application was

routinely required; (4) a loss of clarity

by applicant and the examiner of the

issues involved, in that it is frequently

only after the second action that the

issues become clarified, particularly as

counsel are not aware of the art that may

actually be applied against the claims

and therefore do not submit claims that

can read over such art; (5) to the extent

the need to enter amendments causes

refiling of an application, greater

resources from the Office are required as

opposed to simply entering the

amendment in the prior application; (6)

there will be an increase in the requests

for interviews after first action; (7) the

change represents encouragement for

examiners to cut down on papers

entered particularly in view of the

crediting system; and (8) the proposal is

not helpful to applicant and is only a

revenue generator.

Several alternative suggestions were

made including: (1) A fee to have

amendments after final entered as a

matter of right; (2) discretion for

examiners to enter any amendment

should be explicitly stated in the rule;

(3) consider substantive amendments if
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53153

submitted at least one month in advance

of the end of the reply period; (4)

eliminate applicant’s concern for

expedited handling of § 1.116

amendments by having a new period for

appealing or refiling; (5) entry of

amendment to solely correct rejections

under 35 U.S.C. 112, ¶ 2, should be

permitted; (6) first after final submission

permitted entry under simplification of

issues standard and any subsequent

submission would only be permitted

under standard as proposed without

simplification of issues available; (7)

merging of a dependent claim into an

independent claim ought to be

explicitly permitted as a matter of right;

(8) provide a standard of entry

dependent upon good and sufficient

reason as to why the amendment after

final was not made earlier; (9) permit

consideration of the amendment for

allowable subject matter to save

applicant cost of refiling for such

determination; and (10) change should

be linked with a prohibition on

applying a new reference in a final

rejection.

Response: In view of the issues raised

and the alternative suggestions

presented, it has been determined that

further study is required. The comments

have been adopted solely to the extent

that the proposed change to delete

simplification of issues for purpose of

appeal, as a basis for entry of an

amendment after final rejection, will not

be implemented at this time.

Section 1.117

Section 1.117 is removed and

reserved as the subject matter was

transferred to § 1.121.

No comments were received regarding

the proposed change to § 1.117.

Section 1.118

Section 1.118 is removed and

reserved and its subject matter

transferred to § 1.121.

See first comment related to § 1.115.

Section 1.119

Section 1.119 is removed and

reserved as duplicative of the provisions

of §§ 1.111 and 1.121.

No comments were received regarding

the proposed change to § 1.119.

Section 1.121

Section 1.121, paragraphs (a) through

(f), are replaced with paragraphs (a)

through (c), which separately treat

amendments in non-reissue

nonprovisional applications (paragraph

(a)), amendments in reissue applications

(paragraph (b)), and amendments in

reexamination proceedings (paragraph

(c)). The intent of the changes is to

retain amendment practice in regard to

non-reissue applications prior to the

changes proposed in the Notice of

Proposed Rulemaking and to make final

the changes in amendment practice in

regard to reissue applications proposed

in the Notice of Proposed Rulemaking,

except for requiring copies of all claims

as of the date of submission of an

amendment and a constructive

cancellation in their absence.

Additionally, while retaining the

previous amendment practice in nonreissue applications, the regulations

have been clarified by deletion of

§§ 1.115, 1.117 through 1.118, 1.123,

and 1.124 and placement of subject

matter thereof in § 1.121.

Comment 54: Most comments

received on the proposed change in

amendment practice as it relates to nonreissue applications to bring it into line

with reissue and reexamination

amendment practices were very

negative. In particular, the proposed

changes to present a complete copy of

the claims when any amendment to the

claims is made, and to hold a

constructive cancellation for any claim

copy not presented were alarming.

However, similar comments were not

received in regard to the proposed

changes to bring reissue and

reexamination practice closer together.

Response: The comments were

adopted in that the proposed changes,

other than clarifications of current

practice, will not be implemented now

and further study will be undertaken to

include suggestions presented in regard

to this rule.

Comment 55: Several comments

offered suggestions and requested

clarifications: (1) Whether this was an

attempt to push the practice closer to

PCT where substitute pages are used; (2)

use of different markings such as

strikeouts of word processors; (3) only

require complete copy of claims at

issue; (4) only have a status listing of all

claims not complete copy with each

response; (5) continuations or divisions

should be filed showing markups; (6)

require only that new claims pages be

substituted; (7) objection to the

submission of a separate complete set of

claims in addition to the amendments

being made; (8) some instances separate

set may be appropriate and not too

much of a burden; and (9) there should

be exception, liberal reinstatement, or

rebuttable presumption for constructive

cancellation if clerical omission.

Response: Paragraphs (a) and (b) of

§ 1.121 each separately treat amendment

of the specification (paragraphs (a)(1)

and (b)(1)), and of the claims

(paragraphs (a)(2) and (b)(2)). In

comparing amendment practice to the

specification for non-reissue and reissue

applications, all amendments in the

reissue application are to be made

relative to (i.e., vis-a`-vis) the

specification (including the claims) and

drawings of the original patent as of the

date of the filing of the reissue

application. Changes are shown using

underlining and bracketing relative to

the patent specification. In addition, the

entire paragraph of disclosure with the

changes and the entire claim with the

changes must be presented, in making

the amendment. On the other hand,

amendments in a non-reissue

application are to be made relative to

prior amendments (with underlining

and bracketing in a reproduced claim

reflecting changes made relative to the

prior amendment), and insertions and

deletions can be made without

reproducing the entire paragraph of

disclosure or the entire claim. Further

(for a non-reissue application), in

amending the text of the disclosure

other than the claims, changes are not

shown by underlining and bracketing,

even where a paragraph of disclosure is

reproduced.

Paragraph (a) of § 1.121 relates to

amendments in non-provisional

applications, other than reissue

applications, and retains a reference to

§ 1.52. Paragraph (a)(1) relates to the

manner of making amendments in the

specification, other than in the claims.

Paragraph (a)(1)(i) requires the precise

point in the specification to be indicated

where an addition is to be inserted.

Paragraph (a)(1)(ii) requires the precise

point in the specification to be indicated

where a deletion is to be made. This

should be compared to addition or

cancellation of material from the patent

specification in a reissue application

(paragraph (b)(1)(ii)) or in a

reexamination proceeding

(§ 1.530(d)(1)(ii), e.g., by way of a copy

of the rewritten material). An

amendment containing deletions mixed

with additions will be treated according

to both paragraphs (a)(1)(i) and (a)(1)(ii).

Amendments to the specification,

additions or deletions, do not require

markings, only identification of an

insertion point. However, where the

changes made are not readily apparent

the applicant may be requested by the

examiner to provide an explanation of

the changes or a marked up copy

showing the changes made. Paragraph

(a)(1)(iii) provides that to reinstate

matter previously deleted it must be

reinstated by a new amendment

inserting the matter.

Paragraph (a)(2) of § 1.121 relates to

the manner of making amendments in

the claims of a non-reissue application.
53154 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Paragraph (a)(2)(i) permits

amendment by instructions to the Office

for a deletion, paragraph (a)(2)(i)(A), or

for an addition limited to five words in

any one claim, paragraph (a)(2)(i)(B).

The ability to provide directions to the

Office for the handwritten deletion of

five words or less for each claim does

not encompass deletion of equations,

charts or other non-word material.

Paragraph (a)(2)(ii) sets forth that a

claim may be amended by a direction to

cancel the claim, or by rewriting the

claim with markings showing material

to be added and deleted. Additionally,

previously rewritten claims are required

to be so marked and not to have

interlineations showing amendment(s)

previous to the one currently being

submitted.

Paragraph (a)(3) of § 1.121 clarifies

that amendments to the original

application drawings for non-reissue

applications are not permitted and are

to be made by way of a substitute sheet

for each original drawing sheet that is to

be amended. The paragraph contains

material from cancelled § 1.115.

Paragraph (a)(4) of § 1.121 requires

that any amendment presented in a

substitute specification must be

presented under the provision of this

section either prior to or concurrent

with the submission of the substitute

specification. The paragraph contains

material from cancelled § 1.115.

Paragraph (a)(5) of § 1.121 requires

amendment of the disclosure in certain

situations (i.e., to correct inaccuracies of

description and definition) and to

secure substantial correspondence. The

paragraph contains material from

cancelled § 1.117. The previous

requirement for ‘‘correspondence’’ has

been modified by use of ‘‘substantial

correspondence.’’ See comments to

§ 1.115.

Paragraph (a)(6) prohibits the

introduction of new matter into the

disclosure of a non-reissue, nonprovisional application.

Paragraph (b) of § 1.121 applies to

amendments in reissue applications.

Paragraph (b)(1) of § 1.121 relates to the

manner of making amendments to the

specification, other than in the claims,

in reissue applications. Paragraph

(b)(1)(i) requires that amendments

including deletions be made by

submission of a copy of one or more

newly added or rewritten paragraphs

with markings, except that an entire

paragraph may be deleted by a

statement deleting the paragraph

without presentation of the text of the

paragraph. Paragraph (b)(1)(ii) requires

indication of the precise point in the

specification where the paragraph

which is being amended is located.

When a change in one sentence,

paragraph or page results in only format

changes to other pages (e.g., shifting of

non-amended text to subsequent pages)

not otherwise being amended, such

format changes are not to be submitted.

Compare to amendments to the

specification, other than in the claims,

of non-reissue applications wherein

deletions are permitted, paragraph

(a)(1)(ii) of this section. Paragraph

(b)(1)(iii) defines the marking set forth

in paragraph (b)(1)(ii) of this section.

Proposed paragraph (b)(1)(iii), relating

to a requirement for submission of all

amendments be presented when any

amendment to the specification is made,

was not implemented.

Paragraph (b)(2) of § 1.121 relates to

the manner of making amendments to

the claims in reissue applications.

Paragraph (b)(2)(i)(A) of § 1.121 requires

the entire text of each patent claim that

is being amended by the current

amendment and of each claim being

added by the current amendment.

Requests that the Office hand-enter

changes of five or less words, former

§ 1.121(c)(2), will no longer be

permitted. Pending claims, whether

previously amended or not, that are not

being amended by the current

amendment are not to be resubmitted.

This procedure is different from

§ 1.121(a)(2)(i)(B), which permits

requests that the Office hand-enter

changes of five or less words in a nonreissue application. Additionally,

provision is made for the cancellation of

a patent claim by a direction to cancel

without the need for marking by

brackets. Paragraph (b)(2)(i)(B) requires

that patent claims not be renumbered.

Paragraph (b)(2)(i)(C) identifies the type

of marking required by paragraph

(b)(2)(i)(A), single underlining for added

material and single brackets for material

deleted.

Paragraph (b)(2)(ii) of § 1.121 requires

that each amendment submission set

forth the status (i.e., pending or

cancelled) of all patent claims and all

added claims as of the date of the

submission, as not all claims (nonamended claims) are to be presented

with each submission, paragraph

(b)(2)(iv). The absence of submission of

the claim status would result in an

incomplete reply (§ 1.135(c)).

Paragraph (b)(2)(iii) of § 1.121 requires

that each claim amendment be

accompanied by an explanation of the

support in the disclosure of the patent

for the amendment. The absence of an

explanation would result in an

incomplete reply (§ 1.135(c)).

Comment 56: One comment requested

that the Office clarify how an applicant

would satisfy this requirement when the

amendment involves a simple editorial

change, or when the amendment uses

terms that find no explicit support in

the patent.

Response: When it is clear that the

amendment simply involves an editorial

change and does not add material for

which support in the disclosure is

required, the reply may simply explain

that the amendment is merely making

an editorial change. When the

amendment uses terms that find no

explicit support in the specification, the

reply must set forth where the

specification provides, at least

implicitly, support for the amendment

as required by 35 U.S.C. 112, ¶ 1. In

addition, an amendment to the

specification to secure correspondence

between the specification and the

claims will also be required. See

§ 1.75(d)(1) and MPEP 608.01(o).

Obviously, an amendment that does not

find either explicit or at least implicit

support in the specification as required

by 35 U.S.C. 112, ¶ 1, is not permitted.

See 35 U.S.C. 251, ¶ 1, (last sentence).

Proposed paragraphs (b)(2) (iv) and (v)

of this section, relating to a requirement

for presentation of all amendments as of

the date any amendment to the claims

is made, and to the treatment of the

failure to submit a copy of any added

claim as a direction to cancel that claim,

were not implemented.

Paragraph (b)(3) of § 1.121 clarifies

that amendments to the patent drawings

are not permitted and that any change

must be by way of a new sheet of

drawings with the amended figures

being identified as ‘‘amended’’ and with

added figures identified as ‘‘new’’ for

each sheet that has changed. The

paragraph contains material from

cancelled § 1.115.

Paragraph (b)(4) of § 1.121, added in

view of the deletion of § 1.115

paragraph (d), requires amendment of

the disclosure in certain situations (i.e.,

to correct inaccuracies of description

and definition) and to secure substantial

correspondence between the claims, the

remainder of the specification, and the

drawings. The previous requirement for

‘‘correspondence’’ has been modified by

use of ‘‘substantial correspondence.’’

See comments to § 1.115.

Paragraph (b)(5) of § 1.121, containing

material transferred from proposed

paragraph (b)(2)(vi) (now deleted),

clarifies that: (1) No reissue patent will

be granted enlarging the scope of the

claims unless applied for within two

years from the grant of the original

patent (additional broadening outside

the two-year limit is appropriate as long

as some broadening occurred within the

two-year period, In re Doll, 419 F.2d

925, 164 USPQ 218 (CCPA 1970)); and
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53155

(2) no amendment may introduce new

matter or be made in an expired patent.

Paragraph (b)(6) of § 1.121 has been

added to clarify that all amendments

must be made relative to (i.e., vis-a ́-vis)

the specification (including the claims)

and drawings of the original patent as of

the date of the filing of the reissue

application. If there was a prior change

to the patent (made via a prior

reexamination certificate, reissue of the

patent, certificate of correction, etc.), the

first amendment must be made relative

to the patent specification as changed by

the prior proceeding or other

mechanism for changing the patent. In

addition, all amendments subsequent to

the first amendment must be made

relative to the patent specification in

effect as of the date of the filing of the

reissue application, and not relative to

the prior amendment.

Paragraph (c) of § 1.121 clarifies that

amendments in reexamination

proceedings are to be made in

accordance with § 1.530(d).

Section 1.121 as applied to reissue

applications does not provide for

replacement pages whereby a new page

would be physically substituted for a

currently existing page.

However, an applicant can direct that

a page or pages (‘‘Page(s) llll’’) be

cancelled and that updated materials be

inserted in its place.

The wide availability of word

processing should enable applicants to

more easily submit updated material

providing greater accuracy and thereby

eliminating the need for the Office to

hand-enter amendments. To that end,

§ 1.125 is amended to reflect current

practice that a substitute specification

may be submitted in an application,

other than a reissue application, at any

point up to payment of the issue fee as

a matter of right, provided that such

substitute specification is submitted in

compliance with the requirements set

forth in § 1.125.

Section 1.122

Section 1.122 is removed and

reserved as representing internal Office

instruction.

See comments related to § 1.101.

Section 1.123

Section 1.123 is removed and

reserved and its subject matter

transferred to § 1.121 for better context.

No comments were received regarding

the proposed change to § 1.123.

Section 1.124

Section 1.124 is removed and

reserved and its subject matter

transferred to § 1.121 for better context.

No comments were received regarding

the proposed change to § 1.124.

Section 1.125

Section 1.125 is amended by addition

of paragraphs (a) through (d). Section

1.125(a) retains the current practice that

a substitute specification may be

required by the examiner and has been

clarified to note that if the legibility of

the application papers shall render it

difficult to consider the application, the

Office may require a substitute

specification.

Section 1.125 is amended in view of

the continued prosecution application

under § 1.53(d), to reflect the current

liberalized practice as set forth in MPEP

608.01(q), and to delete the verification

requirement for the no new matter

statement. See comments to § 1.4(d).

Section 1.125(b) specifically provides

for the filing of a substitute

specification, excluding the claims, at

any point up to payment of the issue

fee, if it is accompanied by: (1) A

statement that the substitute

specification includes no new matter;

and (2) a marked-up copy of the

substitute specification showing the

matter being added to and the matter

being deleted from the specification of

record (i.e., the specification to be

replaced by the substitute specification).

While § 1.125(b)(2) requires the markedup copy show the additions and

deletions, it does not require that such

additions and deletions be shown by

underlining and bracketing. Rather, it

permits the use of other indicia (e.g.,

redlining and strikeouts) to show

additions and deletions so that the

document-compare feature of

conventional word-processing programs

can be used to produce the marked-up

substitute specification.

Section 1.125(b), as proposed, would

have required that a substitute

specification contain only changes that

were previously or concurrently

submitted by an amendment under

§ 1.121. The Office, however, is not

adopting this proposal. Creating a copy

of the substitute specification showing

the additions and deletions is relatively

easy using the document-compare

feature of a conventional wordprocessing program, when compared to

the burden of preparing an amendment

under § 1.121(a)(1) showing numerous

changes to a specification. Thus, the

Office is adopting the requirement

currently set forth in MPEP 608.01(q) for

a marked-up copy of the substitute

specification showing the additions and

deletions.

Comment 57: One comment stated

that it is not clear exactly what is to be

submitted with the substitute

specification under paragraph (b)(2) of

this section even though paragraph (c)

requires it to be in clean form without

markings.

Response: Section 1.125 requires an

applicant filing a substitute

specification to submit: (1) the

substitute specification in clean form

without markings (§ 1.125(c)); (2) a

marked-up copy showing the additions

and deletions relative to the

specification it is replacing

(§ 1.125(b)(2)); and (3) a statement that

the substitute specification includes no

new matter (§ 1.125(b)(1)).

Section 1.125(c) is amended to clarify

that a substitute specification is to be

submitted without markings as to

amended material.

Section 1.125(d) does not permit a

substitute specification in reissue or

reexamination proceedings as markings

for changes from the patent are required

therein.

Section 1.126

Section 1.126 is amended to delete

the phrase ‘‘, except when presented in

accordance with § 1.121(b)’’ for

consistency with the change to § 1.121.

No comments were received regarding

§ 1.126.

Section 1.133

Section 1.133(b) is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.133.

Section 1.134

Section 1.134 is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.134.

Section 1.135

Section 1.135 paragraphs (a) and (c)

are amended by replacement of

‘‘response’’ with ‘‘reply’’ in accordance

with the change to § 1.111. Section

1.135(b) is amended to clarify that the

admission of or refusal to admit any

amendment after final rejection, and not

just an amendment not responsive to the

last Office action, shall not operate to

save the application from abandonment.

Section 1.135(c) is amended to

provide that a new ‘‘time period’’ under

§ 1.134 may be given if a reply to a nonfinal Office action is substantially

complete but consideration of some

matter or compliance with some

requirement has been inadvertently

omitted. This replaces the practice in

which an applicant may be given an
53156 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

opportunity to supply the omission

through the setting of a ‘‘time limit’’ of

one month that is not extendable. Under

§ 1.135(c) as adopted, a one-month

shortened statutory time period will

generally be set enabling an applicant to

petition for extensions of time under

§ 1.136(a). Where 35 U.S.C. 133 requires

a period longer than one month (i.e.,

actions mailed in the month of

February), a shortened statutory period

of 30 days will be set.

The setting of a time period for reply

under § 1.134 (rather than a time limit)

results in the date of abandonment

(when no further reply is filed) being

the expiration of the new time period

rather than the date of expiration of the

period of reply set in the original Office

action for which an incomplete reply

was filed. Thus, the amendment to

§ 1.135(c) permits the filing of a

continuing application as an alternative

to completing the reply, whereas the

previous practice required an applicant

to complete the reply that was held to

be incomplete or else the application

was held to be abandoned (retroactively)

as of the expiration of the original

period for reply. Thus, applicants had to

file an unnecessary reply to preserve

pendency where their only intent was to

file a continuing application. Section

1.135(c), as amended, sets forth a new

period within which a continuing

application can be filed, without the

applicant having to supply the omission

in the prior application to preserve

pendency. In addition, applicant may

file any other reply as may be

appropriate under § 1.111, regardless of

whether a continuing application is

filed.

Comment 58: Two comments objected

to the change on the basis that it is

subject to intentional misuse. It is

argued that it encourages an applicant to

send in piecemeal replies and permits

use of the time period as a subterfuge for

extending prosecution as § 1.135(c) does

not specify how many times an

incomplete reply can be given.

Response: 35 U.S.C. 154 as amended

by Pub. L. 103–465 should provide the

necessary incentive for applicants to

prosecute an application without undue

delay. Additionally, the examiner can

determine that the failure to provide a

complete reply was not ‘‘inadvertent’’

(especially where an applicant was

previously notified of the deficiencies in

the reply), and not set a period under

§ 1.135(c).

Comment 59: One comment suggested

amending § 1.135(c) from ‘‘may’’ to

‘‘shall’’ so that an examiner must

provide an opportunity to an applicant

to complete a reply, and that § 1.135(c)

should not be limited to replies to nonfinal Office actions so that if an

application is in condition for

allowance except for an inadvertent

omission it would be beneficial for all

parties to provide the same benefit as for

non-final actions.

Response: The term ‘‘may’’ is used

rather than ‘‘shall’’ to encourage

applicants to provide a complete reply,

in that an applicant providing an

incomplete reply cannot be certain of

being provided with an additional time

period to prosecute the application.

Section 1.113(a) provides that the

only reply to a final Office action

effective to avoid abandonment of an

application is: (1) an amendment under

§ 1.116 that prima facie places the

application in condition for allowance;

or (2) a notice of appeal (and appeal fee)

under § 1.191. Thus, the only reply

under § 1.113(a) that will ensure that

abandonment of the application will be

avoided is: (1) an amendment under

§ 1.116 that cancels all of the rejected

claims; or (2) a notice of appeal (and

appeal fee) under § 1.191 (§ 1.113(a)).

That is, an applicant filing a proposed

amendment under § 1.116 or arguments

in reply to a final Office action has no

assurance that such reply will

necessarily result in allowance of the

application. Given the limited nature of

the replies under § 1.113 to a final

Office action, it is not appropriate to

provide a time period under § 1.135(c)

to complete a reply to a final Office

action.

Section 1.135(c) is also amended to

remove an unnecessary reference to

consideration of the question of

abandonment and to clarify that the

reply for which applicant may be given

a new time period to reply to must be

a ‘‘non-final’’ Office action.

Section 1.136

Section 1.136(a)(1) is amended to

recite the availability of a maximum of

five rather than four months as an

extension of time, subject to any

maximum period for reply set by

statute. For example, when a one-month

or 30-day period is set for reply to a

restriction requirement or for

completing a reply under § 1.135(c), that

period may be extended up to the sixmonth statutory (35 U.S.C. 133)

maximum. In addition, as the twomonth period set in § 1.192(a) for filing

an appeal brief is not subject to the sixmonth maximum period specified in 35

U.S.C. 133, the period for filing an

appeal brief may be extended up to

seven months.

Comment 60: At least one comment

noted that there is no statutory authority

under 35 U.S.C. 41(a)(8)(C) for the

$2,010 amount set for the fifth month

extension of time.

Response: See the response to

comment 5.

Section 1.136(a)(1) is also amended by

replacement of ‘‘respond’’ with ‘‘reply’’

in accordance with the change to § 1.111

and for clarification.

Section 1.136(a)(2) is amended by

replacement of ‘‘respond’’ with ‘‘reply’’

in accordance with the change to § 1.111

and other clarification changes.

Comment 61: One comment

questioned whether the addition in

paragraph (a)(2) of § 1.136 that requires

a reply to be filed prior to the expiration

of the period of extension to avoid

abandonment of the application will

affect the timely filing of a reply under

§§ 1.8 or 1.10 where the mail date rather

than the receipt date is the end of the

period for reply.

Response: The referred to addition

has been noted to be a clarification and

not a change in practice. The added

language does not change current

practice under §§ 1.8 and 1.10.

Section 1.136 is amended by addition

of paragraph (a)(3) that provides for the

filing in an application a general

authorization to treat any reply

requiring a petition for an extension of

time for its timely submission as

containing a request therefor for the

appropriate length of time. The

authorization may be filed at any time

prior to or with the submission of a

reply that would require an extension of

time for its timely submission,

including submission with the

application papers. Previously, the mere

presence of a general authorization,

submitted prior to or with a reply

requiring an extension of time, to charge

all required fees does not amount to a

petition for an extension of time for that

reply (MPEP 201.06 and 714.17) and

under the proposed amended rule the

submission of a reply requiring an

extension of time for its timely

submission would not be treated as an

inherent petition for an extension of

time absent an authorization for all

necessary extensions of time. The Office

will continue to treat all petitions for an

extension of time as requesting the

appropriate extension period

notwithstanding an inadvertent

reference to a shorter period for

extension and will liberally interpret

comparable papers as petitions for an

extension of time. Applicants are

advised to file general authorizations for

payment of fees and petitions for

extensions of time as separate papers

rather than as sentences buried in

papers directed to other matters (such as

an application transmittal letter). The

use of individual papers directed only
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53157

to an extension of time or to a general

authorization for payment of fees would

permit the Office to more readily

identify the presence of such items and

list them individually on the

application file jacket, thus facilitating

future identification of these

authorizations.

Comment 62: Two comments

requested that it be clarified whether the

reference to submission of a paper with

an authorization is to be construed as

allowing for submission of a standard

sentence in a general reply to an Office

action that includes a check box on an

application transmittal form.

Response: The comments have been

adopted and the proposed language of

paragraph (a)(3) of § 1.136 modified to

replace the reference to ‘‘paper’’ with

‘‘written request.’’

Section 1.136(a)(3) is additionally

amended to provide that general

authorizations to charge fees are

effective to meet not only the

requirement for the extension of time

fee for replies filed concurrent or

subsequent to the authorization but also

represent a constructive petition for an

extension of time, which is a change

from current practice wherein a general

authorization to charge additional fees

does not represent a petition for an

extension of time, which petition must

be separately requested.

Section 1.136(a)(3) also includes the

sentence ‘‘[s]ubmission of the fee set

forth in § 1.17(a) will also be treated as

a constructive petition for an extension

of time in any concurrent reply

requiring a petition for an extension of

time under this paragraph for its timely

submission.’’ This provides for those

instances in which an applicant files a

reply with a check (or other means of

payment under § 1.23) for the requisite

fee under § 1.17(a) (1) through (5) for the

petition under § 1.136(a) required to

render such reply timely, but omits a

request (i.e., a petition) for an extension

of time under § 1.136(a). In such

instances, the mere submission of the

appropriate fee will be treated as a

constructive petition for the extension

of time to render the reply timely.

Section 1.136(b) is amended for

clarity and to replace the phrase

‘‘response’’ with the phrase ‘‘reply’’ for

consistency with § 1.111.

Section 1.137

Section 1.137 is amended to, inter

alia, incorporate revival of abandoned

applications and lapsed patents for the

failure: (1) to timely reply to an Office

requirement in a provisional application

(§ 1.139); (2) to timely pay the issue fee

for a design application (§ 1.155); (3) to

timely pay the issue fee for a utility or

plant application (§ 1.316); or (4) to

timely pay any outstanding balance of

the issue fee (§ 1.317) (lapsed patents).

Section 1.137(a) is amended to

provide: (1) that it is the paragraph that

applies to petitions under the

‘‘unavoidable’’ standard; (2) that ‘‘where

the delay in reply was unavoidable, a

petition may be filed to revive an

abandoned application or a lapsed

patent pursuant to [§ 1.137(a)]’’; and (3)

the requirements for a grantable petition

pursuant to § 1.137(a) in paragraphs

(a)(1) through (a)(4).

Section 1.137(a)(1) (and § 1.137(b)(1))

are amended to provide that a grantable

petition pursuant to § 1.137(a) must be

accompanied by ‘‘[t]he required reply,

unless previously filed.’’ Section

1.137(a)(1) (and § 1.137(b)(1)) is

amended to further provide that ‘‘[i]n a

nonprovisional application abandoned

for failure to prosecute, the required

reply may be met by the filing of a

continuing application’’ and that ‘‘[i]n

an application or patent, abandoned or

lapsed for failure to pay the issue fee or

any portion thereof, the required reply

must be the payment of the issue fee or

any outstanding balance thereof.’’

Under § 1.137(a)(1) (and § 1.137(b)(1)),

a continuing application is a permissive

(i.e., ‘‘may be met’’) reply in a

nonprovisional application abandoned

for failure to prosecute, in that an

applicant in a nonprovisional

application abandoned for failure to

prosecute may file a reply under § 1.111

to a non-final Office action or a reply

under § 1.113 (e.g., notice of appeal) to

a final Office action, or may simply file

a continuing application as the required

reply. The Office, however, may require

a continuing application (or request for

further examination pursuant to

§ 1.129(a)) to meet the reply requirement

of § 1.137(a)(1) (or § 1.137(b)(1)) where,

under the circumstances of the

application, treating a reply under

§§ 1.111 or 1.113 would place an

inordinate burden on the Office.

Exemplary circumstances of when

treating a reply under §§ 1.111 or 1.113

may place an inordinate burden on the

Office are: (1) an application abandoned

for an inordinate period of time; (2) the

application file containing multiple or

conflicting replies to the last Office

action; and (3) the submission of a reply

or replies under § 1.137(a)(1) (or

§ 1.137(b)(1)) that are questionable as to

compliance with §§ 1.111 or 1.113.

While the revival of applications

abandoned for failure to timely

prosecute and for failure to timely pay

the issue fee are incorporated together

in § 1.137, the statutory provisions for

the revival of an application abandoned

for failure to timely prosecute and for

failure to timely submit the issue fee are

mutually exclusive. See Brenner versus

Ebbert, 398 F.2d 762, 157 USPQ 609

(D.C. Cir.), cert. denied 393 U.S. 926,

159 USPQ 799 (1968). 35 U.S.C. 151

authorizes the acceptance of a delayed

payment of the issue fee, if the issue fee

‘‘is submitted * * * and the delay in

payment is shown to have been

unavoidable.’’ 35 U.S.C. 41(a)(7)

likewise authorizes the acceptance of an

‘‘unintentionally delayed payment of

the fee for issuing each patent.’’ Thus,

35 U.S.C. 41(a)(7) and 151 each require

payment of the issue fee as a condition

of reviving an application abandoned or

patent lapsed for failure to pay the issue

fee. Therefore, the filing of a continuing

application without payment of the

issue fee or any outstanding balance

thereof is not an acceptable proposed

reply in an application abandoned or

patent lapsed for failure to pay the issue

fee or any portion thereof.

The Notice of Allowance requires the

timely payment of the issue fee in effect

on the date of its mailing to avoid

abandonment of the application. In

instances in which there is an increase

in the issue fee by the time of payment

of the issue fee required in the Notice

of Allowance, the Office will mail a

notice requiring payment of the balance

of the issue fee then in effect. See In re

Mills, 12 USPQ2d 1847 (Comm’r Pat.

1989). The phrase ‘‘for failure to pay the

issue fee or any portion thereof’’ applies

to those instances in which the

applicant fails to pay either the issue fee

required in the Notice of Allowance or

the balance of the issue fee required in

a subsequent notice. In such instances,

the proposed reply must be the issue fee

then in effect, if no portion of the issue

fee was previously submitted, or any

outstanding balance of the issue fee then

in effect, if a portion of the issue fee was

previously submitted.

These changes to § 1.137(a)(1) (and

§ 1.137(b)(1)) are necessary to

incorporate into § 1.137 the revival of

abandoned applications and lapsed

patents for the failure to: (1) Timely

reply to an Office requirement in a

provisional application (§ 1.139), (2)

timely pay the issue fee (§§ 1.155 and

1.316), or (3) timely pay any outstanding

balance of the issue fee (§ 1.317).

Section 1.137(a)(3) is amended to

provide that a grantable petition

pursuant to § 1.137(a) must be

accompanied by ‘‘[a] showing to the

satisfaction of the Commissioner that

the entire delay in filing the required

reply from the due date for the reply

until the filing of a grantable petition

pursuant to this paragraph was

unavoidable.’’
53158 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Section 1.137(a) deletes the

requirement that a petition thereunder

be ‘‘promptly filed after the applicant is

notified of, or otherwise becomes aware

of, the abandonment.’’ The genesis of

the ‘‘promptly filed’’ requirement in

§ 1.137(a) is the legislative history of

Pub. L. 97–247, § 3, 96 Stat. 317 (1982)

(which provides for the revival of an

‘‘unintentionally’’ abandoned

application), which provides, inter alia,

that:

In order to prevent abuse and injury to the

public the Commissioner could require a

terminal disclaimer equivalent to the period

of abandonment and could require applicants

to act promptly after becoming aware of the

abandonment.

See H.R. Rep. No. 542, 97th Cong., 2d

Sess. 7 (1982), reprinted in 1982

U.S.C.C.A.N. 771 (emphasis added).

Nevertheless, 35 U.S.C. 133 and 151

each require a showing that the ‘‘delay’’

was ‘‘unavoidable,’’ which requires not

only a showing that the delay which

resulted in the abandonment of the

application was unavoidable, but also a

showing of unavoidable delay until the

filing of a petition to revive. See In re

Application of Takao, 17 USPQ2d 1155

(Comm’r Pat. 1990). The burden of

continuing the process of presenting a

grantable petition in a timely manner

likewise remains with the applicant

until the applicant is informed that the

petition is granted. Id. Thus, an

applicant seeking to revive an

‘‘unavoidably’’ abandoned application

must cause a petition under § 1.137(a) to

be filed without delay (i.e., promptly

upon becoming notified, or otherwise

becoming aware, of the abandonment of

the application).

An applicant who fails to file a

petition under § 1.137(a) ‘‘promptly’’

upon becoming notified, or otherwise

becoming aware, of the abandonment of

the application will not be able to show

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 [§ 1.137(a)] was

unavoidable.’’ The removal of the

language in § 1.137(a) requiring that any

petition thereunder be ‘‘promptly filed

after the applicant is notified of, or

otherwise becomes aware of, the

abandonment’’ should not be viewed as:

(1) Permitting an applicant, upon

becoming notified, or otherwise

becoming aware, of the abandonment of

the application, to delay the filing of a

petition under § 1.137(a); or (2)

changing (or modifying) the result in In

re Application of S, 8 USPQ2d 1630

(Comm’r Pat. 1988), in which a petition

under § 1.137(a) was denied due to the

applicant’s deliberate deferral in filing a

petition under § 1.137. An applicant

who deliberately chooses to delay the

filing of a petition under § 1.137 (as in

Application of S) will not be able to

show 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 [§ 1.137(a)] was

unavoidable’’ or even make an

appropriate 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

[§ 1.137(b)] was unintentional.’’

Therefore, the requirement in

§ 1.137(a) that a petition thereunder be

‘‘promptly filed after the applicant is

notified of, or otherwise becomes aware

of, the abandonment’’ is deleted solely

because it is considered redundant in

light of the requirement for a showing

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 § 1.137(a) was

unavoidable.

Section 1.137(a)(3) (and § 1.137(b)(3))

is further amended to delete the

requirement that the showing

(statement) must be a verified showing

or statement if made by a person not

registered to practice before the Patent

and Trademark Office. Section 1.56

currently provides that each individual

associated with the filing and

prosecution of a patent application has

a duty of candor and good faith.

Sections 1.4(d) and 10.18 are amended

to provide that a signature on a paper

submitted to the Office constitutes an

acknowledgment that willful false

statements are punishable under 18

U.S.C. 1001, and may jeopardize the

validity of the application or any patent

issuing thereon. Therefore, requiring

additional verification of a showing or

statement under § 1.137 would be

redundant. In addition, this requirement

results in delays in the treatment of the

merits of petitions that include

unverified statements.

Section 1.137(a)(4) (and § 1.137(b)(4))

are added to provide that a grantable

petition under § 1.137 must be

accompanied by ‘‘[a]ny terminal

disclaimer (and fee as set forth in

§ 1.20(d)) required pursuant to

[§ 1.137(c)].’’

Section 1.137(b) is amended to

provide: (1) That it is the paragraph that

applies to petitions under the

‘‘unintentional’’ standard; (2) that

‘‘where the delay in reply was

unintentional, a petition may be filed to

revive an abandoned application or a

lapsed patent pursuant to [§ 1.137(b)]’’;

and (3) the requirements for a grantable

petition pursuant to § 1.137(b) in

paragraphs (b)(1) through (b)(4).

Section 1.137(b)(1) is amended (as

discussed supra) to provide that a

grantable petition under § 1.137(b) must

be accompanied by ‘‘[t]he required

reply, unless previously filed.’’ Section

1.137(b)(1) is amended to further

provide that ‘‘[i]n a nonprovisional

application abandoned for failure to

prosecute, the required reply may be

met by the filing of a continuing

application’’ and that ‘‘[i]n an

application or patent, abandoned or

lapsed for failure to pay the issue fee or

any portion thereof, the required reply

must be the payment of the issue fee or

any outstanding balance thereof.’’

Section 1.137(b)(3) is amended to

provide that a grantable petition under

§ 1.137(b) must be accompanied by ‘‘[a]

statement that the entire delay in

providing the required reply from the

due date for the reply until the filing of

a grantable petition pursuant to this

paragraph was unintentional’’ and that

‘‘[t]he Commissioner may require

additional information where there is a

question whether the delay was

unintentional.’’ While the Office will

generally require only the statement that

the entire delay in providing the

required reply from the due date for the

reply until the filing of a grantable

petition pursuant to § 1.137(b) was

unintentional, the Office may require an

applicant to carry the burden of proof to

establish that the delay from the due

date for the reply until the filing of a

grantable petition was unintentional

within the meaning of 35 U.S.C. 41(a)(7)

and § 1.137(b) where there is a question

whether the entire delay was

unintentional. See In re Application of

G, 11 USPQ2d 1378, 1380 (Comm’r Pat.

1989).

Section 1.137(b)(4) is amended to

delete the one-year filing period

requirement. Section 1.137(b)(4) is

amended to provide that a grantable

petition under § 1.137 must be

accompanied by ‘‘[a]ny terminal

disclaimer (and fee as set forth in

§ 1.20(d)) required pursuant to

[§ 1.137(c)].’’

Requirement That the Entire Delay Until

the Filing of a Grantable Petition Was

Unavoidable (§ 1.137(a)) or

Unintentional (§ 1.137(b))

There are three periods to be

considered during the evaluation of a

petition under § 1.137: (1) The delay in

reply that originally resulted in the

abandonment; (2) the delay in filing an

initial petition pursuant to § 1.137 to

revive the application; and (3) the delay

in filing a grantable petition pursuant to

§ 1.137 to revive the application.

Where the applicant deliberately

permits an application to become
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53159

abandoned (e.g., due to a conclusion

that the claims are unpatentable, that a

rejection in an Office action cannot be

overcome, or that the invention lacks

sufficient commercial value to justify

continued prosecution), the

abandonment of such application is

considered to be a deliberately chosen

course of action, and the resulting delay

cannot be considered as ‘‘unintentional’’

within the meaning of § 1.137(b). See

Application of G, 11 USPQ2d at 1380.

Likewise, where the applicant

deliberately chooses not to seek or

persist in seeking the revival of an

abandoned application, or where the

applicant deliberately chooses to delay

seeking the revival of an abandoned

application, the resulting delay in

seeking revival of the abandoned

application cannot be considered as

‘‘unintentional’’ within the meaning of

§ 1.137(b). An intentional delay

resulting from a deliberate course of

action chosen by the applicant is not

affected by: (1) The correctness of the

applicant’s (or applicant’s

representative’s) decision to abandon

the application or not to seek or persist

in seeking revival of the application; (2)

the correctness or propriety of a

rejection, or other objection,

requirement, or decision by the Office;

or (3) the discovery of new information

or evidence, or other change in

circumstances subsequent to the

abandonment or decision not to seek or

persist in seeking revival. Obviously,

delaying the revival of an abandoned

application, by a deliberately chosen

course of action, until the industry or a

competitor shows an interest in the

invention (a submarine application) is

the antithesis of an ‘‘unavoidable’’ or

‘‘unintentional’’ delay. An intentional

abandonment of an application, or an

intentional delay in seeking either the

withdrawal of a holding of

abandonment in or the revival of an

abandoned application, precludes a

finding of unavoidable or unintentional

delay pursuant to § 1.137. See In re

Maldague, 10 USPQ2d 1477, 1478

(Comm’r Pat. 1988).

The Office does not generally

question whether there has been an

intentional or otherwise impermissible

delay in filing an initial petition

pursuant to § 1.137 (a) or (b), when such

petition is filed: (1) Within three months

of the date the applicant is first notified

that the application is abandoned; and

(2) within one year of the date of

abandonment of the application. Thus,

an applicant seeking revival of an

abandoned application is advised to file

a petition pursuant to § 1.137 within

three months of the first notification

that the application is abandoned to

avoid the question of intentional delay

being raised by the Office (or by third

parties seeking to challenge any patent

issuing from the application).

Where a petition pursuant to § 1.137

(a) or (b) is not filed within three

months of the date the applicant is first

notified that the application is

abandoned, the Office may consider

there to be a question as to whether the

delay was unavoidable or even

unintentional. In such instances, the

Office may require: (1) A showing as to

how the delay between the date the

applicant was first notified that the

application was abandoned and the date

a § 1.137(a) petition was filed was

‘‘unavoidable’’; or (2) further

information as to the cause of the delay

between the date the applicant was first

notified that the application was

abandoned and the date a § 1.137(b)

petition was filed, and how such delay

was ‘‘unintentional.’’ To avoid delay in

the consideration of a petition under

§ 1.137 (a) or (b) in instances in which

such petition was not filed within three

months of the date the applicant was

first notified that the application was

abandoned, applicants should include a

showing as to how the delay between

the date the applicant is first notified by

the Office that the application is

abandoned and filing of a petition under

§ 1.137 was: (1) ‘‘Unavoidable’’ in a

petition under § 1.137(a); or (2)

‘‘unintentional’’ in a petition under

§ 1.137(b).

Where a petition pursuant to § 1.137

(a) or (b) is not filed within one year of

the date of abandonment of the

application (note that abandonment

takes place by operation of law, rather

than the mailing of a Notice of

Abandonment), the Office may require:

(1) Further information as to when the

applicant (or the applicant’s

representative) first became aware of the

abandonment of the application; and (2)

a showing as to how the delay in

discovering the abandoned status of the

application occurred despite the

exercise of due care or diligence on the

part of the applicant (or the applicant’s

representative) (see Ex parte Pratt, 1887

Dec. Comm’r Pat. 31 (1887)). To avoid

delay in the consideration of a petition

under § 1.137 (a) or (b) in instances in

which such petition was not filed

within one year of the date of

abandonment of the application,

applicants should include: (1) The date

that the applicant first became aware of

the abandonment of the application; and

(2) a showing as to how the delay in

discovering the abandoned status of the

application occurred despite the

exercise of due care or diligence on the

part of the applicant.

In either instance, applicant’s failure

to carry the burden of proof to establish

that the ‘‘entire’’ delay was

‘‘unavoidable’’ or ‘‘unintentional’’ may

lead to the denial of a petition under

§ 1.137(a) or § 1.137(b), regardless of the

circumstances that originally resulted in

the abandonment of the application.

Section 1.137(d) specifies a time

period within which a renewed petition

pursuant to § 1.137 must be filed to be

considered timely. So long as a renewed

petition is timely filed under § 1.137(d)

(including any properly obtained

extensions of time), the Office will

consider the delay in filing a renewed

petition under § 1.137(a) ‘‘unavoidable’’

under § 1.137(a)(3), and will consider

the delay in filing a renewed petition

under § 1.137(b) ‘‘unintentional’’ under

§ 1.137(b)(3). Where an applicant files a

renewed petition, request for

reconsideration, or other petition

seeking review of a prior decision on a

petition pursuant to § 1.137 outside the

time period specified in § 1.137(d), the

Office may require, inter alia, a specific

showing as to how the entire delay was

‘‘unavoidable’’ (§ 1.137(a)) or

‘‘unintentional’’ (§ 1.137(b)). As

discussed supra, a delay resulting from

the applicant deliberately choosing not

to persist in seeking the revival of an

abandoned application cannot be

considered ‘‘unavoidable’’ or

‘‘unintentional’’ within the meaning of

§ 1.137, and the correctness or propriety

of the decision on the prior petition

pursuant to § 1.137, the correctness of

the applicant’s (or the applicant’s

representative’s) decision not to persist

in seeking revival, the discovery of new

information or evidence, or other

change in circumstances subsequent to

the abandonment or decision to not

persist in seeking revival are immaterial

to such intentional delay caused by the

deliberate course of action chosen by

the applicant.

Retroactive Application of § 1.137(b)

There was no prohibition in former

§ 1.137(b) against requests for waiver of

its one-year filing period requirement;

however, waiver of the one-year filing

period requirement of former § 1.137(b)

was subject to strictly limited

conditions (§ 1.183). See Final Rule

entitled ‘‘Changes in Procedures for

Revival of Patent Applications and

Reinstatement of Patents,’’ published in

the Federal Register at 58 FR 44277

(August 20, 1993), and in the Official

Gazette at 1154 Off. Gaz. Pat. Office 35

(September 14, 1993). Thus, under the

terms of former § 1.137, an applicant in

an application abandoned for more than
53160 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

one year could file either a petition

under § 1.137(a) to revive the

application on the basis of

‘‘unavoidable’’ delay, or a petition

under §§ 1.183 and 1.137(b) to revive

the application on the basis of

‘‘unintentional’’ delay. That is, where an

application was abandoned for more

than one year, and the delay was

‘‘unintentional’’ but not ‘‘unavoidable,’’

it was incumbent upon an applicant

desiring revival of the application to

promptly file a petition under §§ 1.183

and 1.137(b) to revive the application.

While § 1.137(b), as amended, is, by

its terms, applicable to applications

abandoned prior to its effective date,

§ 1.137(b) requires, by its terms, ‘‘[a]

statement that the entire delay in

providing the required reply from the

due date for the reply until the filing of

a grantable petition pursuant to this

paragraph was unintentional.’’ Thus,

where an applicant (or the applicant’s

representative) previously chose not to

seek revival of an application (e.g., due

to the opinion that the former

provisions of § 1.137 (a) or (b) did not

permit revival thereunder), the resulting

delay in seeking revival of the

application cannot be considered

‘‘unintentional’’ within the meaning of

§ 1.137(b). Likewise, where an applicant

(or the applicant’s representative)

previously requested revival of an

application, received an adverse

decision (e.g., a dismissal or denial),

and chose not to persist in seeking

revival of the application (e.g., by

request for reconsideration or review),

the resulting delay in seeking revival of

the application likewise cannot be

considered ‘‘unintentional’’ within the

meaning of § 1.137(b). The elimination

of the one-year filing period

requirement in § 1.137(b) does not

create a new right to overcome any prior

intentional delay caused by a deliberate

course of action (or inaction) chosen by

the applicant. Thus, any applicant filing

a petition under § 1.137 after the

effective date of this Final Rule, but

outside the period set in § 1.137(d) for

seeking reconsideration of a prior

adverse decision on a request to revive

an application will be considered to

have acquiesced in the abandonment of

the application or lapse of the patent.

Section 1.137(c) is amended to change

the introductory phrase ‘‘[i]n all

applications filed before June 8, 1995,

and in all design applications filed on

or after June 8, 1995’’ to ‘‘[i]n a design

application, a utility application filed

before June 8, 1995, or a plant

application filed before June 8, 1995’’

for clarity. Section 1.137(c) is further

amended to change the phrase ‘‘any

petition to revive pursuant to paragraph

(a) of this section’’ to ‘‘any petition to

revive pursuant to this section,’’ and the

phrase ‘‘not filed within six months of

the date of abandonment of the

applications’’ is deleted. Section

1.137(c) is further amended to change

the phrase ‘‘must also apply to any

patent granted on any continuing

application entitled under 35 U.S.C. 120

to the benefit of the filing date of the

application for which revival is sought’’

to ‘‘must also apply to any patent

granted on any continuing application

that contains a specific reference under

35 U.S.C. 120, 121, or 365(c) to the

application for which revival is sought,’’

since it is the claim for, and not the

entitlement to, the benefit of the filing

date of the application for which revival

is sought that triggers the requirement

for the filing of a terminal disclaimer in

the continuing application.

Section 1.137(d) is amended to

change ‘‘application’’ to ‘‘abandoned

application or lapsed patent’’ to

incorporate into § 1.137 the revival of

lapsed patents. In view of the

elimination of a time period from

§ 1.137(b), the provisions of former

§ 1.137(e) are incorporated into

§ 1.137(d) as ‘‘[u]nless a decision

indicates otherwise, this time period

may be extended under the provisions

of § 1.136.’’

Section 1.137(e) is amended to

expressly provide that a provisional

application, abandoned for failure to

timely reply to an Office requirement,

may be revived pursuant to § 1.137(a) or

(b) so as to be pending for a period of

no longer than twelve months from its

filing date. In accordance with 35 U.S.C.

111(b)(5), § 1.137(e) clearly indicates

that ‘‘[u]nder no circumstances will a

provisional application be regarded as

pending after twelve months from its

filing date.’’ Prior § 1.139 (a) and (b)

each provided that a provisional

application may be revived so as to be

pending for a period of no longer than

twelve months from its filing date, and

that under no circumstances will a

provisional application be regarded as

pending after twelve months from its

filing date.

Comment 63: The majority of

comments opposed amending § 1.137(a)

and (b) to include time limits based

upon the mail date of a notification of

abandonment, as well as the retroactive

application of such a change to the rules

of practice. While these comments

recognized that any filing period

requirement § 1.137 is better based upon

the date of notification, rather than the

date of abandonment, they argued that

there will inevitably be instances in

which a blameless applicant will not be

able to meet the filing period

requirement due to extenuating

circumstances. The majority of

comments supported amending § 1.137

(a) and (b) to remove the filing period

requirement, as well as the retroactive

application of such a change to the rules

of practice.

Response: The Office will adopt a

§ 1.137 that does not include filing

period requirements, and will not limit

the retroactive application of § 1.137(b)

as adopted, other than by the terms of

the rule (as discussed supra).

Comment 64: One comment generally

supported the change to § 1.137(b) to

remove the filing period requirement,

but expressed concerns as to the routine

revival of abandoned applications. The

comment specifically suggested that the

Office continue to require a high

showing to justify the revival of an

abandoned application, especially

where the petition was filed

substantially after abandonment or

applicant’s receipt of the notice of

abandonment.

Response: The Office does not

consider the revival of an abandoned

application to be a ‘‘routine’’ matter.

The Office will require, inter alia, a

‘‘showing to the satisfaction of the

Commissioner that the entire delay in

filing the required reply from the due

date for the reply until the filing of a

grantable petition pursuant to

[§ 1.137(a)] was unavoidable’’ as a

prerequisite to the grant of any petition

based upon unavoidable delay

(§ 1.137(a)). The Office will require,

inter alia, 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

[§ 1.137(b)] was unintentional’’ by a

registered practitioner or other party in

interest having firsthand knowledge of

the circumstances surrounding the

delay as a prerequisite to the grant of

any petition based upon unintentional

delay (§ 1.137(b)). The Office expects

that such statement made by a registered

practitioner not having firsthand

knowledge of the circumstances

surrounding the delay be based upon a

reasonable investigation of the

circumstances surrounding the

abandonment of the application

(§ 10.18), and that such statement by

any person be consistent with the duty

of candor and good faith and the duty

to disclose material information to the

Office (§ 1.56).

Regardless of the length of the delay,

§ 1.137(a) requires 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 § 1.137(a)

was unavoidable. Likewise, regardless

of the length of the delay, § 1.137(b)
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requires 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 § 1.137(b) was

unintentional. As ‘‘unintentional’’ delay

does not require that the delay have

occurred despite the exercise of due

care and diligence (as does

‘‘unavoidable’’ delay), the Office does

not routinely require a ‘‘showing’’ of

unintentional delay for a petition under

§ 1.137(b). However, where there may be

a question whether the delay was

unintentional, the Office may require a

showing of unintentional delay for a

petition under § 1.137(b). Such question

may arise from papers submitted to the

Office prior to the petition under

§ 1.137(b) (e.g., a letter of express

abandonment, or other communication

evidencing a desire to discontinue

prosecution) or from facts set forth in

the petition itself. Such question may

also arise simply from the length of the

delay between the date the applicant

was notified of the abandoned status of

the application and the date action was

taken to revive the abandoned

application, or the length of the period

of abandonment. Specifically, where

there is a delay of three months between

the date the applicant was notified of

the abandoned status of the application

(i.e., the mail date of the notice of

abandonment) and the date a petition

under § 1.137(b) was filed, or where the

application was abandoned for more

than one year prior to the date a petition

under § 1.137(b) was filed, the Office

may require further information and a

showing that the delay was

unintentional.

Finally, it should be stressed that the

mere fact that a petition under § 1.137(b)

was filed within three months of the

date the applicant was notified of the

abandoned status of the application (i.e.,

the mail date of the notice of

abandonment) or within one year of the

date of abandonment does not imply

that the delay was ‘‘unintentional.’’ That

is, an applicant who deliberately delays

the filing of a petition under § 1.137

until three months from the mail date of

the notice of abandonment (or based

upon the one-year anniversary of the

date of abandonment) cannot

appropriately make the statement that

‘‘the delay was unintentional.’’ This

time frame is provided simply as an

indication as to when an applicant

should expect the Office to inquire

further into the circumstances of the

abandonment of an application for

which a petition under § 1.137(b) is

filed, and in which case the applicant

may expedite consideration of such

petition by providing information as to

when applicant was notified of the

abandoned status of the application, and

the cause of the delay between the date

of notification and the date a petition

under § 1.137 was filed.

Comment 65: One comment suggested

that the Office include in § 1.137 all of

the basic interpretations and guidelines

by which the Office applies § 1.137. The

comment specifically suggested that

§ 1.137 include the time periods (e.g.,

three months) by which the Office

measures the applicant’s diligence in

taking action to revive the application

and the differences between postabandonment delay in taking action to

revive the application and any preabandonment delay which may have

resulted in the abandonment.

Response: The Office will adopt a

§ 1.137 that does not include filing

period requirements, but requires that

the ‘‘entire’’ delay was ‘‘unavoidable’’

(§ 1.137(a)) or ‘‘unintentional’’

(§ 1.137(b)). The requirements for a

petition to revive an abandoned

application or lapsed patent are set forth

in § 1.137; additionally, the Office will

set forth its basic interpretations and

guidelines for application of § 1.137

(instructional information) in the MPEP.

Section 1.181 provides the basis for

generic requests for relief by petition,

and sets forth a two-month time period

therein for the timely filing of a petition

(§ 1.181(f)). While the three-month time

frame employed by the Office during the

consideration petitions under § 1.137

exceeds the two-month period in

§ 1.181(f) for the timely filing of a

petition, this three-month period is the

most frequently set period for reply by

an applicant (see MPEP 710.02(b)).

While the Office considers the twomonth period in § 1.181(f) to be the

appropriate period by which the

timeliness of a petition should be

determined, it is certainly reasonable to

expect that any applicant desiring to

restore an abandoned application to

pending status will file a petition under

§ 1.137 to revive such abandoned

application no later than three months

after notification of abandonment of the

application. See In re Kokaji, 1 USPQ2d

2005, 2006 (Comm’r Pat. 1986).

The ‘‘three-month’’ time frame set

forth in this Final Rule is a guideline as

to when an applicant can expect further

inquiry by the Office (and, as such,

should attempt to provide the relevant

information in the initial petition to

avoid delay), in that: (1) it is possible

that an applicant is incapable of filing

a petition under § 1.137 within three

months of the date of notification of

abandonment (e.g., pro se applicant

incapacitated from date of notification

of abandonment until action taken to

revive the application) rendering the

entire delay in filing the required reply

from the due date for the reply until the

filing of a grantable petition

unavoidable; and (2) it is also possible

that an applicant, by a deliberately

chosen course of action, delays the

filing of a petition under § 1.137 until

exactly three months after the date of

notification of abandonment to use this

period as an extension of time, in which

case a statement that ‘‘the entire delay

in filing the required reply from the due

date for the reply until the filing of a

grantable petition pursuant to this

paragraph was unintentional’’ is not

appropriate. To avoid substitution of the

three-month time frame for review by

the Office for the requirement for

unavoidable or unintentional delay, the

Office will not amend § 1.137 to include

this time frame.

Comment 66: One comment indicated

that the phrase ‘‘the delay was

unintentional’’ is unclear. The comment

recited a specific example in which an

applicant, under final rejection, submits

an amendment or other correspondence

which is believed by the applicant to

place the application in condition for

allowance (and thus constitute a reply

within the meaning of § 1.113), and, as

such, the applicant, in a deliberate

course of action/inaction, takes no

further steps to ensure the filing a reply

within the meaning of § 1.113 (e.g., a

notice of appeal) to the final rejection.

The comment suggested that § 1.137 is

unclear as to whether the delay in this

situation, which may be deliberate or

intentional in the literal sense, would

constitute an ‘‘unintentional’’ delay

within the meaning of § 1.137(b).

Response: The Office has amended

§ 1.137 to require that ‘‘the entire delay

in filing the required reply from the due

date for the reply until the filing of a

grantable petition’’ was ‘‘unavoidable’’

(§ 1.137(a)) or ‘‘unintentional’’

(§ 1.137(b)). Thus, intentional delays

occurring prior to the due date for reply

to avoid abandonment do not preclude

relief pursuant to § 1.137. Should the

delay in the example given extend past

the extendable due date for reply (under

§ 1.113) to the final rejection, an

appropriate statement of unintentional

delay could be made as the applicant

did not intend to have the deadline for

reply under § 1.113 to the final rejection

expire.

In addition, there is a distinction

between: (1) a delay resulting from an

error in judgment as to whether to

permit an application to become

abandoned (whether to prosecute the

application) or whether to seek or

persist in seeking the revival of the

abandoned application; and (2) a delay
53162 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

resulting from an error in judgment as

to the steps necessary to continue the

prosecution delay in seeking revival of

the application. Where the

abandonment and ensuing delay results

from an error in judgment as to whether

to permit an application to become

abandoned (whether to prosecute the

application) or whether to seek or

persist in seeking the revival of the

abandoned application, the

abandonment of such application is

considered a deliberately chosen course

of action, and the resulting delay cannot

be considered ‘‘unintentional’’ within

the meaning of § 1.137(b). Where,

however, an error in judgment as to the

steps necessary to continue prosecution

results in abandonment of the

application, the abandonment of such

application is not necessarily

considered a deliberately chosen course

of action, and the resulting delay may be

considered ‘‘unintentional’’ within the

meaning of § 1.137(b).

However, §§ 1.116 and 1.135(b) are

manifest that proceedings concerning an

amendment after final rejection will not

operate to avoid abandonment of the

application in the absence of a timely

and proper appeal. Unless the applicant

is informed in writing that the

application is allowed prior to the

expiration of the period for reply to the

final Office action, it is the applicant’s

responsibility to timely file a notice of

appeal (and fee) to avoid the

abandonment of the application. The

abandonment of an application subject

to a final Office action is not

‘‘unavoidable’’ within the meaning of 35

U.S.C. 133 and § 1.137(a) in the

situation in which the applicant simply

permits the maximum extendable

statutory period for reply to a final

Office action to expire while awaiting a

notice of allowance or other action.

Comment 67: One comment opposed

the changes to § 1.137 on the bases that:

(1) it permits submarine patents, in that

an applicant may permit an application

to become abandoned and wait to see

whether the invention was developed

by other entities; and (2) the revival of

a long-abandoned application will have

an adverse impact on the examiner, in

that the examiner who originally

examined that application may no

longer be at the Office, or will have to

reacquaint himself or herself with the

application.

Response: The change to § 1.137(b)

does not permit an applicant to obtain

revival where either: (1) the applicant

deliberately permitted the application to

become abandoned; or (2) the applicant

deliberately delayed seeking revival to

see whether the invention was

developed by other entities. It is well

established that where applicant

deliberately permits an application to

become abandoned, the abandonment of

such application is considered a

deliberately chosen course of action,

and the resulting delay cannot be

considered ‘‘unintentional’’ within the

meaning of § 1.137(b). See Application

of G, 11 USPQ2d at 1380. Likewise,

where the applicant deliberately

chooses not to either seek or persist in

seeking the revival of an abandoned

application, the resulting delay in

seeking revival of the application cannot

be considered ‘‘unintentional’’ within

the meaning of § 1.137(b). The

intentional abandonment of an

application, or an intentional delay in

seeking either the withdrawal of a

holding of abandonment in or the

revival of an abandoned application,

precludes a finding of unavoidable or

unintentional delay pursuant to § 1.137.

See Maldague, 10 USPQ2d at 1478.

While it is possible for an applicant

to make a misleading statement that the

delay was unintentional to obtain

revival of an abandoned application, the

Office simply must rely upon the candor

and good faith of those prosecuting

patent applications (e.g., it is equally

possible for a party to fabricate evidence

and obtain the revival of a longabandoned application on the basis of

unavoidable delay). Any applicant

obtaining revival based upon a

misleading statement that the delay was

unintentional may find the achievement

short-lived as a result of the question of

intentional delay being raised by third

parties challenging any patent issuing

from the application.

The revival of any long-abandoned

application will have an adverse impact

on the examiner; however, longabandoned applications have been

previously revived pursuant to

§ 1.137(a) on the basis of unavoidable

delay. See In re Lonardo, 17 USPQ2d

1455 (Comm’r Pat. 1990)(application

revived after being abandoned for more

than sixteen years). Thus, this change to

§ 1.137(b) will not create a burden on

examiners that did not exist before, and

could in fact reduce the burden as a

result of the requirement that in

applications abandoned for excessive

periods of time would have to show that

the entire delay was ‘‘unavoidable’’ or

‘‘unintentional.’’

Comment 68: One comment suggested

that the two-year limitation in 35 U.S.C.

41(c) is a ‘‘good compromise’’ in regard

to a filing period for filing petitions to

revive based upon unintentional delay.

Response: The suggestion is not

adopted. Changing the one-year filing

period requirement in § 1.137(b) to a

two-year filing period requirement

would not substantially change the

problem caused by a filing period

requirement, namely, that it causes

inequitable results in certain instances.

In addition, the inclusion of any filing

period requirement in § 1.137(a) or (b)

will likely induce applicants, or their

representatives, to delay the filing of a

petition under § 1.137 until the end of

such filing period. See Application of S,

8 USPQ2d at 1632. The Office has no

discretion in regard to the twenty-four

month filing period requirement in 35

U.S.C. 41(c), but the presence of a

twenty-four month filing period

requirement in 35 U.S.C. 41(c) does not

imply that the Office must place a

twenty-four month filing period

requirement into the rules

implementing 35 U.S.C. 41(a)(7), which

contains no filing period requirement.

Comment 69: One comment opposed

the changes to § 1.137 on the basis that

the right to revive an abandoned

application should be limited due to the

public’s right to practice a technology

‘‘that an applicant has abandoned.’’

Response: 35 U.S.C. 41(a)(7)

authorizes the Office to revive an

abandoned application where the

abandonment was unintentional (or

unavoidable, the epitome of

unintentional), but not where the

abandonment was intentional. Section

1.137 does not authorize the revival of

an abandoned application where the

applicant, by deliberate course of action,

has abandoned an application or

delayed seeking its revival.

Additionally, in many instances the

disclosure in a patent maturing from a

revived application would not have

been disclosed and the technology

therein would not be public knowledge,

but for the revival of the application.

Comment 70: One comment suggested

the need for an intervening rights

provision to protect innocent infringers.

Response: The issue of intervening

rights relates to the enforcement of

patent rights, which does not directly

concern the conduct of proceedings in

the Office. Thus, it is unclear whether

the Office is authorized under 35 U.S.C.

6 to promulgate regulations including

an intervening rights provision.

Comment 71: Several comments

suggested that § 1.137(b) be amended to

include the ‘‘promptly filed’’

requirement of § 1.137(a).

Response: The suggestion is

effectively adopted, although via a

different mechanism as explained

below. While there is considerable merit

to the suggestion for the inclusion of a

‘‘promptly filed’’ requirement in both

§ 1.137(a) and (b), the Office has

eliminated the ‘‘promptly filed’’

requirement from § 1.137(a) to avoid
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53163

confusion between ‘‘promptly filed’’

and ‘‘unavoidable delay.’’ The phrase

‘‘promptly filed’’ has been associated

with § 1.137(a) and its requirement for

‘‘unavoidable’’ delay, and, as such, the

inclusion of a ‘‘promptly filed’’

requirement in § 1.137(b) might cause

confusion in regard to the distinction

between the circumstances that

constitute unavoidable delay and the

circumstances that constitute

unintentional delay.

Section 1.137(a)(3) and (b)(3) as

adopted requires that ‘‘the entire delay

in filing the required reply from the due

date for the reply until the filing of a

grantable petition’’ has been

‘‘unavoidable’’ (§ 1.137(a)) or

‘‘unintentional’’ (§ 1.137(b)) to clarify

the requirements for a petition under

§ 1.137(a) and (b). As discussed supra,

an applicant who fails to file a petition

under § 1.137(a) or (b) ‘‘promptly’’ upon

becoming notified, or otherwise

becoming aware, of the abandonment of

the application will not be able to show

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 [§ 1.137(a)] was

unavoidable,’’ and will probably not

even be able to make an appropriate

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 [§ 1.137(b)] was

unintentional.’’ Obviously, any petition

under § 1.137(a) or (b) should be

‘‘promptly filed’’ upon discovery of

abandonment to avoid a question as to

whether the filing of such a petition was

intentionally delayed.

Comment 72: One comment

questioned how a patent could lapse for

failure to pay the issue fee, as a patent

does not issue unless the issue fee is

paid.

Response: 35 U.S.C. 151 provides that

where an applicant timely submits the

sum specified in the Notice of

Allowance as the issue fee, but a

balance of the issue fee remains

outstanding (due to a fee increase), the

patent will lapse unless the balance of

the issue fee is timely paid. See Mills,

12 USPQ2d at 1848; see also Ex parte

Crissy, 201 USPQ 689 (Bd. Pat. App.

1976).

Comment 73: One comment suggested

that § 1.137(a)(1) and (b)(1) not require

a continuing application if the

application became abandoned for

failure to reply to a non-final Office

action.

Response: Section 1.137(a)(1) and

(b)(1) each provide that a petition

thereunder include:

The required reply, unless previously filed.

In a nonprovisional application abandoned

for failure to prosecute, the required reply

may be met by the filing of a continuing

application. In an application or patent,

abandoned or lapsed for failure to pay the

issue fee or any portion thereof, the required

reply must be the payment of the issue fee

or any outstanding balance thereof.

As discussed supra, there may be

circumstances under which the Office

may require a continuing application to

meet this reply requirement.

Nevertheless, in a nonprovisional

application abandoned for failure to

prosecute, a continuing application is

generally a permissive (i.e., ‘‘may be

met’’) reply, in that an applicant in a

nonprovisional application abandoned

for failure to prosecute may file a reply

under § 1.111 to a non-final Office

action or a reply under § 1.113 (e.g.,

notice of appeal) to a final Office action,

or may simply file a continuing

application as the required reply. In an

application or patent, abandoned or

lapsed for failure to pay any portion of

the required issue fee, the issue fee or

any outstanding balance thereof is the

mandatory (i.e., ‘‘must be’’) reply. As

the ‘‘continuing application’’ option is

limited to an abandoned nonprovisional

application, the reply in an abandoned

provisional application must be any

outstanding reply to an Office

requirement.

Comment 74: One comment suggested

that § 1.137(c) be amended to take into

account the provision in 35 U.S.C.

154(c) that an application (other than a

design application) is entitled to a

patent term of not less than twenty years

from its filing date, or if the application

contains a specific reference to an

earlier filed application(s) under 35

U.S.C. 120, 121, or 365(c), the date

twenty years from the filing date of the

earliest such application(s).

Response: The suggestion is not

adopted. The Office considers this

situation to be applicable to a relatively

small class of applications, and, as such,

does not deem it prudent to introduce

into § 1.137(c) the complexity necessary

to account for this situation. Applicants

in this situation (e.g., instances in which

an application filed prior to June 8,

1995, is to be revived solely for

purposes of copendency with an

application filed on or after June 8,

1995) may file a petition pursuant to

§ 1.183 requesting that the Office waive

the provisions of § 1.137(c) to the extent

that § 1.137(c) requires a disclaimer of

the period in excess of the date twenty

years from the filing date of the

application, or if the application

contains a specific reference to an

earlier filed application(s) under 35

U.S.C. 120, 121, or 365(c), the date

twenty years from the filing date of the

earliest such application(s). The Office

will refund the § 1.17(h) petition fee if

the § 1.183 petition is granted.

Comment 75: One comment suggested

that the last paragraph of § 1.137 read:

Under no circumstance may a petition to

revive a provisional application be filed more

than twelve months after the filing date of the

provisional application. No application filed

more than twelve months after the filing date

of a provisional application is entitled to a

claim of priority from the provisional

[application], notwithstanding the

copendency of any petition to revive the

provisional application.

Response: The suggestion is not

adopted. 35 U.S.C. 111(b)(3)(C)

authorizes the revival of an abandoned

application on the basis of unavoidable

or unintentional delay. 35 U.S.C.

111(b)(5) provides that a ‘‘provisional

application shall be regarded as

abandoned 12 months after the filing

date of such application and shall not be

subject to revival thereafter.’’ 35 U.S.C.

111(b) does not contain any limitation

on the filing date of a petition to revive

an abandoned provisional application

(or the date by which such a petition

must be granted), but only a limitation

as to the period of pendency of the

provisional application. Thus, § 1.137(e)

as adopted provides that ‘‘[a]

provisional application * * * may be

revived * * * so as to be pending for a

period of no longer than twelve months

from its filing date. Under no

circumstances will a provisional

application be regarded as pending after

twelve months from its filing date.’’

Section 1.139

Section 1.139 is removed and

reserved and its subject matter added to

§ 1.137.

No comments were received regarding

the proposed change to § 1.139.

Section 1.142

Section 1.142 is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.142.

Section 1.144

Section 1.144 is amended for

clarification purposes.

No comments were received regarding

the proposed change to § 1.144.

Section 1.146

Section 1.146 is amended for

clarification purposes.

No comments were received regarding

the proposed change to § 1.146.
53164 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Section 1.152

Section 1.152 is amended to place its

former provisions into paragraphs (a),

(a)(1), and (a)(2) for clarification.

Section 1.152 is also amended to

remove the prohibition against color

drawings and color photographs in

design applications. Section 1.152 is

amended to permit the use of color

photographs and color drawings in

design applications subject to the

petition requirements of § 1.84(a)(2)

inasmuch as color may be an integral

element of the ornamental design. While

pen and ink drawings may be lined for

color, a clear showing of the

configuration of the design may be

obscured by this drafting method. New

technologies, such as holographic

designs, fireworks and laser light

displays may not be accurately

disclosed without the use of color.

The term ‘‘article’’ of § 1.152(a) is

replaced by the term ‘‘design’’ as 35

U.S.C. 171 requires that the claim be

directed to the ‘‘design for an article’’

not the article, per se. Therefore, to

comply with the requirements of 35

U.S.C. 112, ¶ 1, it is only necessary that

the design as embodied in the article be

fully disclosed and not the article itself.

The term ‘‘must’’ has been replaced by

the term ‘‘should’’ to allow for latitude

in the illustration of articles whose

configuration may be understood

without surface shading. Clarification

language has been added to note that the

use of solid black surfaces is permitted

for representation of the color black as

well as color contrast and that

photographs and ink drawings must not

be combined as formal drawings in one

application.

A new § 1.152(b) is added to clarify

Office practice concerning details

disclosed in the ink drawings, color

drawings, or photographs deposited

with the original application papers.

Specifically, § 1.152(b) provides that

any details disclosed in the ink or color

drawings, or photographs deposited

with the original application papers

constitutes an integral part of the

disclosed and claimed design, except as

otherwise provided in § 1.152(b).

Section 1.152(b) further specifies that

this detail may include color or contrast,

graphic or written indicia, including

identifying indicia of a proprietary

nature (e.g., a company logo), surface

ornamentation on an article, or any

combination thereof. The ‘‘but not

limited to’’ phrase in § 1.152(b) clarifies

that this list is exemplary, not

exhaustive.

Section 1.152(b)(1) provides that

when any detail shown in informal

drawings or photographs does not

constitute an integral part of the

disclosed and claimed design, a specific

disclaimer must appear in the original

application papers either in the

specification or directly on the drawings

or photographs. This specific disclaimer

in the original application papers will

provide antecedent basis for the

omission of the disclaimed detail(s) in

later-filed drawings or photographs.

That is, in the absence of such a

disclaimer, later-filed formal or informal

drawings not including any detail

disclosed in the original drawings will

be considered to contain new matter,

and will be treated accordingly. See 35

U.S.C. 112, ¶ 1; § 1.121(a)(6).

Comment 76: One comment stated

that applicant may misunderstand the

implications of submitting a design

drawing in color and suggested that

§ 1.152 should explain and give notice

of the consequences of submitting an

initial color drawing in design

applications.

Response: The comment has been

adopted.

Section 1.152(b)(2) provides that

when informal color drawings or

photographs are deposited with the

original application papers without a

disclaimer pursuant to § 1.152(b)(1),

formal color drawings or photographs,

or a black and white drawing lined to

represent color, will be required.

Section 1.154

The heading of § 1.154 is amended to

read ‘‘[a]rrangement of application

elements’’ for consistency with §§ 1.77

and 1.163. Section 1.154 paragraph (a)

is amended to clarify that a voluntary

submission (see comments under

§ 1.152 relating to substitution of

‘‘design’’ for ‘‘article’’) may and should

be made of ‘‘a brief description of the

nature and intended use of the article in

which the design is embodied.’’ It is

current practice for design examiners, in

appropriate cases, to inquire as to the

nature and intended use of the article in

which a claimed design is embodied.

The submission of such description will

allow for a more accurate initial

classification, and aid in providing a

proper and complete search at the time

of the first action on the merits. In those

instances where this feature description

is necessary to establish a clear

understanding of the article in which

the design is embodied, provision of the

feature description would help in

reducing pendency by eliminating the

necessity for time-consuming

correspondence. Specifically, requests

for information prior to first action

would be avoided. Absent an

amendment requesting deletion of the

description it would be printed on any

patent that would issue.

No comments were received regarding

the proposed change to § 1.154.

Section 1.155

Section 1.155 is amended to include

only the language of former § 1.155(a).

The subject matter of former paragraphs

(b) through (f) of § 1.155 were added to

§ 1.137.

No comments were received regarding

the proposed change to § 1.155.

Section 1.163

The heading of § 1.163 is amended to

read ‘‘[s]pecification and arrangement of

application elements’’ for consistency

with §§ 1.77 and 1.154. Section 1.163(b)

is amended to remove an unnecessary

and outmoded reference to a ‘‘legible

carbon copy of the original’’

specification for plant applications.

No comments were received regarding

the proposed change to § 1.163.

Section 1.165

The proposed amendment to § 1.165

to remove the reference to the artistic

and competent execution of plant patent

drawings is withdrawn.

Comment 77: One comment argued

that the language proposed to be deleted

was actually relied upon by examiners

to obtain new and better illustrations.

Response: The comment was adopted

to the extent that the proposed change

is withdrawn to allow for further study

of what language related to the type of

plant drawings should appear in

§ 1.165.

Section 1.167

Section 1.167 is amended to include

only the language of former § 1.167(a),

in that paragraph (b) is removed as

unnecessary in view of § 1.132.

Comment 78: One comment

questioned whether § 1.132 covers

paragraph (b) of § 1.167, which

paragraph has been deleted.

Response: Paragraph (b) of § 1.167

provided for the submission of affidavits

by qualified agricultural or horticultural

experts regarding the novelty and

distinctiveness of the variety of plant.

Section 1.132 relates to affidavits

traversing grounds of rejection, and is

recognized as the appropriate rule under

which an affidavit may be submitted

which does not fall within or under

other specific rules. See MPEP 716.

Section 1.171

Section 1.171 is amended to no longer

require an order for a title report in

reissue applications as the requirement

for a certification on behalf of all the

assignees under concomitantly amended
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53165

§ 1.172(a) obviates the need for a title

report and fee therefor. Section 1.171 is

also amended by deletion of the

requirement for an offer to surrender the

patent, which offer is seen to be

redundant in view of § 1.178.

No adverse comments were received

regarding the proposed change to

§ 1.171.

Section 1.172

Section 1.172 is amended to require

that all assignees establish their

ownership interest in compliance with

§ 3.73(b). The amendment as originally

proposed repeated requirements found

in § 3.73(b) rather than incorporating

§ 3.73(b), as assignees of a part interest

are frequently involved in reissue

applications.

Comment 79: One comment noted

that the proposed amendment repeated

requirements already found in § 3.73(b)

and was unnecessary.

Response: The comment was adopted,

in that § 1.172 is amended to simply

reference § 3.73(b). Section 3.73(b) is

amended to replace a reference to an

assignee of the entire right, title and

interest with a reference to an assignee,

so as to include assignees of a part

interest.

Section 1.175

Section 1.175 relating to the content

of the reissue oath or declaration (MPEP

1414), as well as §§ 1.48 and 1.324

relating to correction of inventorship in

an application and in a patent,

respectively, are amended to remove the

requirement for a factual showing

relating to a matter in which a lack of

deceptive intent must be established. A

statement as to a lack of deceptive intent

is sufficient to meet the statutory

requirement under 35 U.S.C. 251 of a

lack of deceptive intent relating to the

error(s) to be corrected by reissue, and

a factual showing of how the error(s) to

be corrected by reissue arose or

occurred is not required. As the Office

no longer investigates fraud and

inequitable conduct issues and a reissue

applicant’s statement of a lack of

deceptive intent is normally accepted

on its face (See MPEP 1448), the

requirement in former § 1.175(a)(5) that

it be shown how the error(s) being relied

upon arose or occurred without

deceptive intent on the part of the

applicant appears to be unduly

burdensome upon applicants and the

Office, and is deleted. This applies to

the initially identified error(s), under

paragraph (a), and any subsequently

identified error(s) under paragraph (b).

Comment 80: Although the

elimination of the requirement for a

factual showing relating to how the

errors arose or occurred enjoyed

overwhelming support, three comments

cited the need for continued

investigation by the Office. One

comment, while agreeing that some

relaxation of reissue oath or declaration

requirements are in order, stated that

the Office should not decline to

investigate entirely or adopt a pro forma

requirement that can merely be

incanted. Two comments stated that it

is hard to get the courts to review this

issue and that the courts and the public

are at a disadvantage absent an

explanation of how the error occurred.

Response: Current Office practice is to

reject reissue applications only where

there is ‘‘smoking gun’’ evidence of

deceptive intent, which will not be

demonstrated by the type of inquiry

limited to a showing of how the error

arose or occurred without the ability to

subpoena witnesses or evidence.

Accordingly, the burden presented on

all reissue applicants based on the mere

collection of such information for every

error is not seen to be warranted.

Comment 81: One comment suggested

that a final declaration is not needed,

and that, as an alternative, counsel

should be allowed to submit a statement

based on information and belief counsel

is not aware of deceptive intent.

Response: 35 U.S.C. 251 requires that

an error have been made without

deceptive intention to be corrected via

reissue. Accordingly, all errors being

corrected by reissue must have been

made without deceptive intention, in

that an error made with deceptive

intention cannot be bootstrapped onto

an error made without deceptive

intention and corrected via reissue. The

parties with the best knowledge of the

lack of deceptive intention are the

patentees and owners of the patent, not

counsel for the reissue application.

An initial reissue oath or declaration

filed pursuant to § 1.175(a) is limited to

identification of the cause(s) of the

reissue, and stating generally that all

errors being corrected in the reissue

application at the time of filing of the

oath or declaration arose without

deceptive intent. Paragraph (a)(1)

requires the identification of at least one

error and only one error may be

identified as the basis for reissue. The

current practice under § 1.175 (a)(3) and

(a)(5) of specifically identifying all

errors being corrected at the time of

filing the initial oath or declaration is

not retained. Although only one error

need be identified to provide a basis for

reissue, where only one error among

more than one is so identified, applicant

should carefully monitor that the error

is retained or submit a supplemental

oath or declaration identifying another

error or errors.

Comment 82: One comment suggested

that since a reissued patent and a

reexamined patent may also be reissued,

paragraph (a)(1) of § 1.175 may be

clarified to substitute for ‘‘original

patent,’’ ‘‘reissued,’’ or ‘‘existing patent’’

as what is wholly or partly inoperative

or invalid.

Response: The effect of a reissue or

reexamination proceedings is to cause a

substitution for the original patent so

that the reissued or reexamined patent

becomes the original patent.

Paragraph (b)(1) of § 1.175 requires a

supplemental reissue oath or

declaration for errors corrected that

were not covered by an earlier presented

reissue oath or declaration, such as the

initial oath or declaration pursuant to

paragraph (a) of this section or one

submitted subsequent thereto (a

supplemental oath or declaration under

this paragraph), stating generally that all

errors being corrected, which are not

covered by an earlier presented oath or

declaration pursuant to § 1.175 (a) and

(b), arose without any deceptive

intention on the part of the applicant. A

supplemental oath or declaration that

refers to all errors that are being

corrected, including errors covered by a

reissue oath or declaration submitted

pursuant to paragraph (a) of this section,

would be acceptable. The specific

requirement for a supplemental reissue

oath or declaration to cover errors

sought to be corrected subsequent to the

filing of an initial reissue oath or

declaration is not a new practice, but

merely recognition of a current

requirement for a supplemental reissue

oath or declaration when additional

errors are to be corrected. However, the

current practice of specifically

identifying all supplemental errors

being corrected in a supplemental

reissue oath or declaration is not

retained.

A supplemental oath or declaration

under paragraph (b)(1) must be

submitted prior to allowance. The

supplemental oath or declaration may

be submitted with any amendment prior

to allowance, paragraph (b)(1)(i), or in

order to overcome a rejection under 35

U.S.C. 251 made by the examiner where

there are errors sought to be corrected

that are not covered by a previously

filed reissue oath or declaration,

paragraph (b)(1)(ii). Any such rejection

by the examiner will include a

statement that the rejection may be

overcome by submission of a

supplemental oath or declaration, which

oath or declaration states that the errors

in issue arose without any deceptive

intent on the part of the applicant. An
53166 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

examiner ordinarily will be introducing

a rejection under 35 U.S.C. 251 based on

the lack of a supplemental declaration

for the first time in the prosecution once

the claims are determined to be

otherwise allowable. The introduction

of a new ground of rejection under 35

U.S.C. 251 will not prevent an action

from being made final, except first

actions pursuant to § 1.113(c), because

of the combination of the following

factors: (1) The finding of the case in

condition for allowance is the first

opportunity that the examiner has to

make the rejection; (2) the rejection is

being made in response to an

amendment of the application (to deal

with the errors in the patent); (3) all

applicants are on notice that this

rejection will be made upon finding of

the case otherwise in condition for

allowance where errors have been

corrected subsequent to the last oath or

declaration filed in the case, therefore,

the rejection should have been expected

by applicant; and (4) the rejection will

not prevent applicant from exercising

any rights as to curing the rejection,

since applicant need only submit the

supplemental oath or declaration with

the above-described language, and it

will be entered to cure the rejection

provided it raises no additional issue,

such as an informality or substantive

reissue question (e.g., a previously

omitted claim for priority under 35

U.S.C. 119).

A supplemental oath or declaration

under paragraph (b) of this section

would only be required for errors sought

to be corrected during prosecution of

the reissue application. Where an Office

action contains only a rejection under

35 U.S.C. 251 and indicates that a

supplemental oath or declaration under

this paragraph would overcome the

rejection, applicants are encouraged to

authorize the payment of the issue fee

at the time the supplemental reissue

oath or declaration is submitted in view

of the clear likelihood that the reissue

application will be allowed on the next

Office action. Such authorization will

reduce the delays in the Office awaiting

receipt of the issue fee. Where there are

no errors to be corrected over those

already covered by an oath or

declaration submitted under paragraphs

(a) and (b)(1) of this section (e.g., the

application is allowed on first action),

or where a supplemental oath or

declaration has been submitted prior to

allowance and no further errors have

been corrected, a supplemental oath or

declaration under this paragraph, or

additional supplemental oath or

declaration under paragraph (b)(1),

would not be required.

Paragraph (b)(2) provides that for any

error sought to be corrected after

allowance (e.g., under § 1.312), a

supplemental oath or declaration must

accompany the requested correction

stating that the error(s) to be corrected

arose without any deceptive intent on

the part of the applicant.

The quotes around lack of deceptive

intent, currently found in § 1.175(a)(6),

are removed as the exact language is not

required. The reference to § 1.56,

currently found in § 1.175(a)(7), is

removed as unnecessary in view of the

reference to § 1.56 in § 1.63 that is also

referred to by § 1.175(a). The stated

ability of applicant to file affidavits or

declarations of others and the ability of

the examiner to require additional

information, currently found in

§ 1.175(b), is deleted as unnecessary in

view of 35 U.S.C. 131 and 35 U.S.C 132.

New paragraph (c) of § 1.175 has been

rewritten to clarify its intent that a

subsequently submitted oath or

declaration under this section need not

identify any errors other than what was

identified in the original oath or

declaration provided at least one of the

originally identified errors to be

corrected is retained to provide a basis

for the reissue.

In new paragraph (d) of § 1.175 a

reference to § 1.53(f) is inserted to

clarify that the initial oath or

declaration under § 1.175(a) including

those requirements under § 1.63 need

not be submitted (with the specification,

drawing and claims) in order to obtain

a filing date.

Section 1.176

The adoption of a final change to

§ 1.176 is held in abeyance pending

further consideration by the Office of

the decision by the Federal Circuit in In

re Graff, 111 F.3d 874, 42 USPQ2d 1471

(Fed. Cir. 1997). Graff involved two

issues: (1) whether it is permissible to

have a continuation of a reissue

application when the reissue

application has issued as a reissue

patent; and (2) whether broadened

claims can be presented more than two

years after the original patent date in a

reissue application which was filed

within two years but did not include

any broadened claims. While Graff is

more directly related to § 1.177 than

§ 1.176, §§ 1.176 and 1.177 are

sufficiently interrelated that the Office

considers it appropriate to hold the final

changes to both § 1.176 and § 1.177 in

abeyance pending further consideration

by the Office of the decision in Graff.

Comment 83: A comment requested

clarification regarding how restriction,

between claims added in a reissue

application and the original patent

claims, by the examiner would be

permitted in § 1.176 while § 1.177

would prohibit multiple reissue patents

except among the distinct and separate

parts of the thing patented.

Response: The comment will receive

further consideration when a final

change to § 1.176 is adopted.

Section 1.177

Section 1.177 was proposed to be

amended to discontinue the current

practice that copending reissue

applications must be issued

simultaneously unless ordered

otherwise by the Commissioner

pursuant to petition. As discussed

supra, the adoption of a final change to

§ 1.177 is held in abeyance pending

further consideration by the Office of

the decision in Graff.

Comment 84: One comment would

limit the granting of multiple reissue

patents on different dates to where a

petition for the grant of multiple reissue

patents has been approved prior to the

issuance of any reissue patent. Another

comment thought that only one petition

fee should be charged notwithstanding

whether a petition in more than one

reissue application is required.

Response: The comments will receive

further consideration when a final

change to § 1.177 is adopted.

Section 1.181

The proposed change to § 1.181 will

not be made, see comments relating to

§ 1.101.

Comment 85: One comment requested

that the material to be deleted from

§ 1.181, paragraphs (d), (e), and (g)

should be retained as they give fair

warning to all and the consequences of

failure to pay a petition fee.

Response: The comment has been

adopted.

Section 1.182

Section 1.182 is amended by

providing that a petition under the

section may be granted ‘‘subject to such

other requirements as may be imposed’’

by the Commissioner, language similar

to that appearing for petitions under

§ 1.183. The proposal to remove the

statement that a decision on a petition

thereunder will be communicated to

interested parties in writing is

withdrawn.

Comment 86: One comment opposed

the proposal to remove the statement

that a decision on a petition under

§ 1.182 will be communicated to

interested parties in writing, arguing

that it would not be appropriate for the

Office to decide a petition under § 1.182

without communicating the decision to

the interested parties in writing.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53167

Response: The suggestion is adopted.

The Office did not propose to remove

the statement that a decision on a

petition under § 1.182 will be

communicated to interested parties in

writing because the Office intended to

discontinue providing written decisions

on petitions under § 1.182 (or any other

petition), but because it was considered

unnecessary to state as much in the rule

itself. While the Office will

communicate the decision on any

petition under § 1.182 to the interested

parties in writing, such decision may

not always take the form of a traditional

decision on petition. For example, the

grant of a petition under § 1.182 to

accept the omitted page(s) or drawing(s)

in a nonprovisional application and

accord the date of such submission as

the application filing date will be

indicated by the issuance of a new filing

receipt stating the filing date accorded

the application. See Notice entitled

‘‘Change in Procedure Relating to an

Application Filing Date’’ published in

the Federal Register at 61 FR 30041,

30043 (June 13, 1996), and in the

Official Gazette at 1188 Off. Gaz. Pat.

Office 48, 50–51 (July 9, 1996).

Section 1.184

Section 1.184 is removed and

reserved as representing internal

instructions.

Comment 87: Comments suggested

that § 1.184 not be deleted

notwithstanding its internal directions.

See response to comment relating to

§ 1.101.

Section 1.184 relates to the refusal of

a subsequent Commissioner to

reconsider a case once decided by a

previous Commissioner, except in

accordance with principles which

govern the granting of new trials. As the

Commissioner is free to waive any

requirement of the rules not required by

statute, the prohibition against

reconsideration is ineffective.

Additionally, the deletion of the

material does not necessarily represent

an intent to engage in reconsideration of

matters previously decided.

Section 1.191

Section 1.191(a) is amended to permit

every applicant, and every owner of a

patent under reexamination, any of

whose claims have been twice or finally

(§ 1.113) rejected (rather than ‘‘any of

the claims of which have been twice

rejected or given a final rejection

(§ 1.113)’’), to file an appeal to the Board

of Patent Appeals and Interferences

(Board) to better track the language of 35

U.S.C. 134. Section 1.191(a) is also

amended to: (1) explicitly refer to a

‘‘notice of appeal’’ to provide

antecedent for such term in § 1.192; (2)

replace ‘‘response’’ with ‘‘reply’’ in

accordance with the change to § 1.111;

and (3) refer to § 1.17(b) for consistency

with the change to § 1.17.

Comment 88: One comment argued

that the proposed change to § 1.191,

limiting the ‘‘twice rejected’’

requirement for appeal to a particular

application, was inconsistent with 35

U.S.C. 134, as indicated by the Board in

the unpublished decision Ex parte

Lemoine, Appeal No. 94–0216 (Bd. Pat.

App. & Inter., December 27, 1994). A

second comment argued that § 1.191

should permit an appeal based on one

rejection in a prior application and one

rejection in a continuing application to

avoid requiring an applicant to file a pro

forma reply to meet the requirement

that the particular application be twice

rejected.

Response: The comments have been

adopted by elimination of the limitation

to twice rejected being related to a

particular application. To avoid

inconsistency between § 1.191 and 35

U.S.C. 134, § 1.191 as adopted tracks the

language of 35 U.S.C. 134, except that

§ 1.191 states ‘‘twice or finally (§ 1.113)

rejected’’ rather than ‘‘twice rejected.’’

The patent statute and rules of practice

do not permit an application to be

finally rejected (even under first action

final practice) under 35 U.S.C. 132,

unless the applicant is one ‘‘whose

claims have been twice rejected’’ within

the meaning of 35 U.S.C. 134. Thus, the

phrase ‘‘or finally (§ 1.113)’’ may be

viewed as redundant. Nevertheless, as

applicants generally delay appeal until

final action (although Pub. L. 103–465

may change this practice), and there has

been some confusion as to when 35

U.S.C. 134 and § 1.191 permit an

applicant to appeal a rejection,

§ 1.191(a) as adopted states ‘‘twice or

finally (§ 1.113) rejected.’’

Section 1.191(b) is amended to

eliminate the requirement for a notice of

appeal to: (1) be signed; or (2) identify

the appealed claims. These two

requirements have been deleted as being

redundant of the requirements of § 1.192

for an appeal brief, which is necessary

to avoid dismissal of the appeal. Section

1.33 requires that an appeal brief filed

in either an application (§ 1.33(b)) or a

reexamination proceeding (§ 1.33(c)) be

signed. Thus, a signed appeal brief

under § 1.192 (which must be filed to

avoid dismissal of the appeal) will serve

to, in effect, ratify any unsigned notice

of appeal under § 1.191. Likewise, the

former requirement of § 1.191(b) for an

identification of the appealed claims is

unnecessary as § 1.192(c)(3) requires

that the appeal brief, inter alia, identify

the ‘‘claims appealed.’’ While it is no

longer specifically required by

§ 1.191(b), an applicant or patent owner

should continue to sign notice of

appeals under § 1.191(b) (like other

papers) and to also identify the claims

appealed. The change to § 1.191(b), in

effect, permits an appeal brief to

constitute an automatic ‘‘correction’’ of

a notice of appeal that is not signed or

does not identify the appealed claims.

The failure to timely file an appeal

brief will result in dismissal of an

appeal (§ 1.192(b)). Thus, the failure to

timely file an appeal brief (signed in

compliance with § 1.33(b) or (c)) after

the filing of an unsigned notice of

appeal will result in dismissal of the

appeal as of the expiration date

(including any extensions of time

actually obtained) for filing such appeal

brief. It will not result in treatment of

the application or patent under

reexamination as if the notice of appeal

had never been filed. This distinction is

significant in an application containing

allowed claims, in that dismissal of an

appeal results in cancellation of the

rejected claims and allowance of the

application, not abandonment of the

application (which would have

occurred if the notice of appeal had

never been filed).

The Office has eliminated the

requirements for a notice of appeal to be

signed and to identify the appealed

claims to avoid the delay and expense

to the applicant and the Office that is

involved in treating a defective notice of

appeal. These changes were not made to

encourage the filing of unsigned notices

of appeal or notices of appeal that do

not identify the claims being appealed;

rather, a notice of appeal should be

signed and identify the claims appealed.

As the change to § 1.191(b) does not

affect other papers submitted with a

notice of appeal (e.g., an amendment

under § 1.116) or other actions

contained within the notice of appeal

(e.g., an authorization to charge fees to

a deposit account), the failure to sign a

notice of appeal (or accompanying

papers) may have adverse effects

notwithstanding the change to

§ 1.191(b). For example, an unsigned

notice of appeal filed with an

authorization (unsigned) to charge the

appeal fee to a deposit account as

payment of the notice of appeal fee

(§ 1.17(b)) will be unacceptable as

lacking the appeal fee, as § 1.191(b)

applies to the notice of appeal, but not

to an authorization to charge a deposit

account that happens to be included in

the notice of appeal.

Section 1.192

Section 1.192(a) is amended by

replacement of ‘‘response’’ with ‘‘reply’’
53168 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

in accordance with the change to

§ 1.111, and to refer to § 1.17(c) for

consistency with the change to § 1.17.

Comment 89: One comment suggested

that the appeal process could be

improved by the imposition of a

reasonable page limit on briefs.

Response: The suggestion will be

reviewed for further consideration.

Section 1.193

Section 1.193, as well as §§ 1.194,

1.196, and 1.197, are amended to change

‘‘the appellant’’ to ‘‘appellant’’ for

consistency. Section 1.193 is also

amended by revision of paragraph (a)

into paragraphs (a)(1) and (a)(2) and

revision of paragraph (b) into

paragraphs (b)(1) and (b)(2). Paragraph

(a)(1) retains the subject matter of

current paragraph (a), except that the

phrase ‘‘and a petition from such

decision may be taken to the

Commissioner as provided in § 1.181’’ is

deleted as superfluous. Section 1.181(a),

by its terms, authorizes a petition from

any action or requirement of an

examiner in the ex parte prosecution of

an application which is not subject to

appeal.

Section 1.193(a)(2) specifically

prohibits the inclusion of a new ground

of rejection in an examiner’s answer, but

also expressly provides that when (1) an

amendment under § 1.116 proposes to

add or amend one or more claims, (2)

appellant was advised (in an advisory

action) that the amendment under

§ 1.116 would be entered for purposes of

appeal, and (3) the advisory action

indicates which individual rejection(s)

set forth in the action from which the

appeal was taken (e.g., the final

rejection) would be used to reject the

added or amended claim(s), then (1) the

appeal brief must address the

rejection(s) of the claim(s) added or

amended by the amendment under

§ 1.116 as indicated in the advisory

action, and (2) the examiner’s answer

may include the rejection(s) of the

claim(s) added or amended by the

amendment under § 1.116 as indicated

in the advisory action. This provision of

§ 1.193(a)(2) is intended for those

situations in which a rejection is stated

(i.e., applied to some claim) in the final

Office action, but due to an amendment

under § 1.116 (after final) such rejection

is now applicable to a claim that was

added or amended under § 1.116. For

example, when an amendment under

§ 1.116 cancels a claim (the ‘‘canceled

claim’’) and incorporates its limitations

into the claim upon which it depends or

rewrites the claim as a new independent

claim (the ‘‘appealed claim’’), the

appealed claim has become the canceled

claim since it now contains the

limitations of the canceled claim (i.e.,

the only difference between the

appealed claim and the canceled claim

is the claim number). In such situations,

the appellant has been given a fair

opportunity to react to the ground of

rejection (albeit to a claim having a

different claim number). Thus, the

Office does not consider such a rejection

to constitute a ‘‘new ground of

rejection’’ within the meaning of

§ 1.193(b). Nevertheless, § 1.193(b)(2)

expressly permits such a rejection on

appeal and further provides that ‘‘[t]he

filing of an amendment under § 1.116

which is entered for purposes of appeal

represents appellant’s consent that

when so advised any appeal proceed on

those claim(s) added or amended by the

amendment under § 1.116 subject to any

rejection set forth in the action from

which the appeal was taken’’ to

eliminate controversy as to the

rejection(s) to which claim(s) added or

amended under § 1.116 may be subject

on appeal.

The phrase ‘‘individual rejections’’ in

§ 1.193(a)(2) addresses the situation in

which claim 2 (which depends upon

claim 1) was rejected under 35 U.S.C.

103 on the basis of A in view of B and

claim 3 (which depends upon claim 1)

was rejected under 35 U.S.C. 103 on the

basis of A in view of C, but no claim was

rejected under 35 U.S.C. 103 on the

basis of A in view of B and C, and an

amendment under § 1.116 proposes to

combine the limitations of claims 2 and

3 together into new claim 4. In this

situation, the action from which the

appeal is taken sets forth no rejection on

the basis of A in view of B and C, and,

as such, § 1.193(a)(2) does not authorize

the inclusion of rejection of newly

proposed claim 4 under 35 U.S.C. 103

on the basis of A in view of B and C in

the examiner’s answer. Of course, as a

claim including the limitations of both

claim 2 and claim 3 is a newly proposed

claim in the application, such an

amendment under § 1.116 may properly

be refused entry as raising new issues.

Conversely, that § 1.193(a)(2) would

authorize the rejection in an examiner’s

answer of a claim sought to be added or

amended in an amendment under

§ 1.116 has no effect on whether the

amendment under § 1.116 is entitled to

entry. The provisions of § 1.116 control

whether an amendment under § 1.116 is

entitled to entry; the provisions of

§ 1.193(a)(2) control the rejections to

which a claim added or amended in an

amendment under § 1.116 may be

subject in an examiner’s answer.

While § 1.193(a) generally prohibits a

new ground of rejection in an

examiner’s answer, it does not prohibit

the examiner from expanding upon or

varying the rationale for a ground of

rejection set forth in the action being

appealed. That is, the parenthetical

definition of ‘‘new ground of rejection’’

in MPEP 1208.01 as including an ‘‘other

reason for rejection’’ of the appealed

claims means another basis for rejection

of the appealed claims, and not simply

another argument, rationale, or reason

submitted in support of a rejection

previously of record.

There is no new ground of rejection

when the basic thrust of the rejection

remains the same such that an appellant

has been given a fair opportunity to

react to the rejection. See In re Kronig,

539 F.2d 1300, 1302–03, 190 USPQ 425,

426–27 (CCPA 1976). Where the

statutory basis for the rejection remains

the same, and the evidence relied upon

in support of the rejection remains the

same, a change in the discussion of or

rationale for supporting the rejection

does not constitute a new ground of

rejection. Id. at 1303, 190 USPQ at 427

(reliance upon fewer references in

affirming a rejection under 35 U.S.C.

103 does not constitute a new ground of

rejection). Where the examiner simply

changes (or adds) a rationale for

supporting a rejection, but relies upon

the same statutory basis and evidence in

support of the rejection, there is no new

ground of rejection.

In any event, an allegation that an

examiner’s answer contains an

impermissible new ground of rejection

is waived if not timely (§ 1.181(f)) raised

by way of a petition under § 1.181(a).

Section 1.193(b)(1) provides appellant

with a right to file a reply brief in reply

to an examiner’s answer which is not

dependent upon a new point of

argument being present in the

examiner’s answer. The former practice

of permitting reply briefs based solely

on a finding of a new point of argument,

as set forth in former paragraph (b), is

eliminated thereby preventing present

controversies as to whether a new point

of argument has been made by the

primary examiner. Appellant would be

assured of having the last submission

prior to review by the Board. Upon

receipt of a reply brief, the examiner

would either acknowledge its receipt

and entry or reopen prosecution to

respond to any new issues raised in the

reply brief. Should the Board desire to

remand the appeal to the primary

examiner for comment on the latest

submission by appellant or to clarify an

examiner’s answer (MPEP 1211,

1211.01, and 1212), appellant would be

entitled to submit a reply brief in reply

to the answer by the examiner to the

Board’s inquiry, which answer would be

by way of a supplemental examiner’s

answer.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53169

Thus, § 1.193(a)(2) does not permit a

new ground of rejection in an

examiner’s answer, and § 1.193(b)(1)

does not, in the absence of a remand by

the Board, permit an answer (other than

a mere acknowledgment) to a timely

filed reply brief. Section 1.193 requires

the examiner to reopen prosecution to

either: (1) enter a new ground of

rejection; or (2) provide a substantive

answer to a reply brief.

Section 1.193(b)(2) provides that if

appellant desires that the appeal process

be reinstated in reply to the examiner’s

reopening of prosecution under

§ 1.193(b)(1), appellant would be able to

file a request to reinstate the appeal and

a supplemental appeal brief as an

alternative to filing a reply (under

§§ 1.111 or 1.113, as appropriate) to the

Office action. Amendments, affidavits or

other new evidence, however, would

not be entered if submitted with a

request to reinstate the appeal. Like a

reply brief, a supplemental appeal brief

submitted pursuant to § 1.193(b)(2)(ii)

need not reiterate the contentions set

forth in a previously filed appeal brief

(or reply brief), but need only set forth

appellant’s contention with regard to

the new ground of rejection(s) raised in

the Office action that reopened

prosecution. The supplemental appeal

brief will automatically incorporate all

issues and arguments raised in the

previously filed appeal brief (or reply

brief), unless appellant indicates

otherwise.

The intent of the change to § 1.193(b)

is to give appellant (rather than the

examiner) the option to continue the

appeal if desired (particularly under

Pub. L. 103–465), or to continue

prosecution before the examiner in the

face of a new ground of rejection.

Should a supplemental appeal brief be

elected as the reply to the examiner

reopening prosecution based on a new

ground of rejection under § 1.193(b)(1),

the examiner may under § 1.193(a)(1)

issue an examiner’s answer. Where an

appeal is reinstated pursuant to

§ 1.193(b)(2)(ii), no additional appeal fee

is currently required.

Comment 90: A number of comments

favored permitting appellants to file a

reply brief as a matter of right. One

comment argued that the Board, rather

than the examiner, should determine

whether the appellant should be

permitted to file a reply brief.

Response: Section 1.193 as adopted

permits an appellant to file a reply brief

as a matter of right. This change

eliminates the authority of an examiner

to refuse entry of a timely filed reply

brief.

Comment 91: One comment suggested

that a reasonable page limit could be

placed on reply briefs.

Response: The comment will be

studied.

Comment 92: A number of comments

opposed the proposed change to require

a substitute appeal brief, rather than a

reply brief. These comments argued that

requiring an entirely new brief

reiterating previously submitted

arguments, rather than a mere reply to

the examiner’s answer, would result in

a less readable and coherent record.

Response: Section 1.193 as adopted

permits a reply brief (rather than a

substitute appeal brief) where the

appellant desires to reply to an

examiner’s answer or and a

supplemental appeal brief where the

appellant requests reinstatement of an

appeal. Contentions (or information) set

forth in a previously filed appeal (or

reply brief) need not be reiterated in a

reply brief or supplemental appeal brief.

Comment 93: A number of comments

favored prohibiting a new ground of

rejection in an examiner’s answer.

Response: Section 1.193 as adopted

prohibits a new ground of rejection in

an examiner’s answer, except under the

limited circumstance specifically

provided for in § 1.193(a)(2).

Comment 94: Two comments

suggested that if the examiner reopens

prosecution after an appeal brief has

been filed, §§ 1.193 or 1.113 should be

amended to state that the action issued

by the examiner cannot be made final.

Response: The finality of an Office

action is determined under MPEP

706.07(a), which states that ‘‘any second

or subsequent actions on the merits

shall be final, except where the

examiner introduces a new ground of

rejection not necessitated by

amendment of the application by

applicant.’’ Whether the action

subsequent to the reopening of

prosecution may be made final will be

determined solely by whether such

action includes a new ground of

rejection not necessitated by

amendment of the application by the

applicant. Thus, where an amendment

under § 1.116 entered as a result of

reopening of prosecution necessitates a

new ground of rejection, the action

immediately subsequent to the

reopening of prosecution may be made

final. See MPEP 706.07(a) and 1208.01.

Comment 95: One comment would go

further in permitting applicant to

reinstate an appeal as a reply to the

examiner reopening prosecution by

permitting amendments, affidavits and

other evidence to address the new

ground of rejection. Another comment

desired the ability to reply directly to

the Board for any new ground of

rejection raised by the Board.

Response: The comments amount to

having the Board conduct the

prosecution of the application and not

act as an appellate review. Amended

claims, affidavits and other evidence

should be seen by the examiner first for

a determination as to whether a new

search is required, to conduct any newly

required search, and also to evaluate the

newly submitted and any newly

discovered material at the examination

level. See comments to § 1.196(d).

Comment 96: One comment would

further amend § 1.193 to waive any

subsequent appeal notice fee and appeal

brief fee, and start the time period for

extension of patent from the time of first

appeal in that if the examiner did his or

her duty properly there would be no

need to reopen prosecution.

Response: Under current practice, a

new fee is due for each notice of appeal,

each brief, and each request for an oral

hearing, so long as a decision on the

merits by the Board resulted from the

prior notice of appeal, brief, and request

for an oral hearing. Thus, when an

examiner reopens prosecution after

appeal but prior to a decision by the

Board on the appeal, the fee for the

notice of appeal, brief, and request for

an oral hearing will apply to a later

appeal. The change to § 1.193 in this

Final Rule is not germane to patent term

extension under 35 U.S.C. 154(b) and

§ 1.701.

In any event, that prosecution is

reopened subsequent to the filing of an

appeal brief is not necessarily a

concession that the rejection of the

appealed claims was in error. It is often

the case that prosecution is reopened

subsequent to the filing of an appeal

brief in the situation in which the

examiner considers the rejection of the

appealed claims to be appropriate (and

thus the appeal to be without merit), but

discovers a better basis for rejecting the

claims at issue (e.g., even better prior art

references). To characterize an

examiner, who decides to reopen

prosecution to avoid wasting the

Board’s resources (and the appellant’s

time) with a rejection that is not the best

possible rejection of the appealed

claims, as an examiner who is not

properly performing his or her duties,

would be non-sensical.

Comment 97: One comment opposed

prohibiting a new ground of rejection in

an examiner’s answer. The comment

argued that this change will result in

unnecessary delays in prosecution.

Response: The proposal to prohibit a

new ground of rejection in an

examiner’s answer otherwise received

overwhelming support. Under Pub. L.
53170 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

103–465, any delay in prosecution

resulting from the reopening of

prosecution is to the detriment of the

applicant. Thus, it is considered

appropriate to give the applicant the

choice of whether to prosecute the

application before the examiner or

reinstate the appeal.

Section 1.194

Section 1.194(b) is amended to

provide that a request for an oral

hearing must be filed in a separate

paper, and to refer to § 1.17(d) for

consistency with the change to § 1.17.

Section 1.194(c) is amended to

provide that appellant will be notified

when a requested oral hearing is

unnecessary (e.g., a remand is required).

Comment 98: One comment argued

that § 1.194 leaves an open statement as

to when the Board may decide that an

oral hearing is not necessary, in that this

section does not limit considering an

oral hearing not necessary to when the

application has been remanded to the

examiner.

Response: The situation in which an

application has been remanded to the

examiner was simply an exemplary

situation of special circumstances in

which the Board may determine that an

oral hearing is not necessary. Section

1.194 was not meant to limit the

discretion of the Board to determine that

an oral hearing is not necessary to those

situations when the application has

been remanded to the examiner.

Section 1.196

Section 1.196 paragraphs (b) and (d)

are combined by amending paragraph

§ 1.196(b) to specifically provide therein

for a new ground of rejection for both

appealed claims and for allowed claims

present in an application containing

claims that have been appealed rather

than the current practice under

§ 1.196(d) of recommending a rejection

of allowed claims that is binding on the

examiner. The effect of an explicit

rejection of an allowed claim by the

Board is not seen to differ from a

recommendation of a rejection and

would serve to advance the prosecution

of the application by having the

rejection made at an earlier date by the

Board rather than waiting for the

application to be forwarded and acted

upon by the examiner. The former

practice that the examiner is not bound

by the rejection should appellant elect

to proceed under § 1.196(b)(1) and an

amendment or showing of facts not

previously of record in the opinion of

the examiner overcomes the new ground

of rejection, is not changed. A period of

two months is now explicitly set forth

for a reply to a decision by the Board

containing a new ground of rejection

pursuant to § 1.196(b), which would

alter the one month previously set forth

for replies to recommended rejections of

previously allowed claims. See MPEP

1214.01. Extensions of time continue to

be governed by § 1.196(f) and § 1.136(b)

(and not by § 1.136(a)).

The last sentence of § 1.196(b)(2) is

amended to clarify that appellants do

not have to both appeal and file a

request for rehearing where only a

rehearing of a portion of the decision is

sought. A decision on a request for

rehearing will incorporate the earlier

decision for purposes of appeal of the

earlier decision in situations in which

only a partial request for rehearing has

been filed. Additionally, it is clarified

that decisions on rehearing are final

unless noted otherwise in the decision

in that under some circumstances it may

not be appropriate to make a decision

on rehearing final as is currently

automatically provided for. Section

1.196(b) is also amended to clarify that

the appellant must exercise one of the

two options with respect to the new

ground of rejection under § 1.196(b) to

avoid termination of proceedings

(§ 1.197(c)) as to the rejected claims.

Section 1.196(b)(2) (and §§ 1.197(b)

and 1.304(a)(1)) are amended to change

the phrase ‘‘request for reconsideration’’

to ‘‘request for rehearing’’ for

consistency with 35 U.S.C. 7(b). See In

re Alappat, 33 F.3d 1526, 1533, 31

USPQ2d 1545, 1548 (Fed. Cir. 1994)(en

banc)(noting ‘‘imprecise regulation

drafting’’ in regard to the phrase

‘‘request for reconsideration’’ in

§ 1.197).

Section 1.196(d) is amended to

provide the Board with explicit

authority to have an appellant clarify

the record in addition to what is already

provided by way of remand to the

examiner (MPEP 1211), and appellant’s

compliance with the requirements of an

appeal brief (§ 1.192(d)). Section

1.196(d) specifically provides that an

appellant may be required to address

any matter that is deemed appropriate

for a reasoned decision on the pending

appeal, which may include: (1) The

applicability of particular case law that

has not been previously identified as

relevant to an issue in the appeal; (2) the

applicability of prior art that has not

been made of record; or (3) the

availability of particular test data that

would be persuasive in rebutting a

ground of rejection. Section 1.196(d)

also provides that appellant would be

given a non-extendable time period (not

a time limit) within which to reply to

any requirement under § 1.196(d).

Comment 99: One comment suggested

that § 1.196(b) would appear to

authorize the Board to reverse a

restriction requirement, as § 1.196(b)

authorizes the Board to reject any

pending claim. The comment suggested

that § 1.196(b) authorize the Board to

reject any examined (rather than

pending) claim.

Response: Section 1.196(b) authorizes,

but does not require, the Board to reject

claims not involved in the appeal. The

Board has held that a restriction

requirement is not an adverse decision

within the meaning of 35 U.S.C. 7 and

134 subject to appeal, and the CCPA and

Federal Circuit have supported this

position. See In re Hengehold, 440 F.2d

1395, 169 USPQ 473 (CCPA 1971); see

also In re Watkinson, 900 F.2d 230, 14

USPQ2d 1407 (Fed. Cir. 1990). Thus,

concerns that the Board will use the

provisions of § 1.196(b) to review

restriction requirements are misguided.

Comment 100: Several comments

opposed the change to § 1.196(d) on the

basis that it places the Board in the

position of acting as an examiner in the

first instance.

Response: Section 1.196(d)

authorizes, but does not require, the

Board to require an appellant to clarify

the record without remanding the

application to the examiner. This

change will authorize the Board to

obtain clarification directly from the

appellant in those situations in which

the Board considers a remand to or

further action by the examiner

unnecessary. Where the Board considers

action by an examiner in the first

instance to be necessary or desirable,

the Board retains the authority to

remand the application to the examiner

for such action. Additionally, after reply

to an inquiry under § 1.196(d) (e.g., does

there exist test data that would be

persuasive in rebutting a particular

ground of rejection), a remand to the

examiner may be deemed to be

appropriate (e.g., to evaluate test data

received in reply to an inquiry).

Section 1.197

Section 1.197(b) is amended to

eliminate its use of the passive voice.

Section 1.197(b) is also amended to

change ‘‘reconsideration or

modification’’ to ‘‘rehearing’’ for

consistency with 35 U.S.C. 7(b). For

consistency with the two-month period

set forth in § 1.196(b), § 1.197(b) is also

amended to provide a two-month period

(rather than a one-month period) within

which an appellant may file the single

request for rehearing permitted by

§ 1.197(b).

No comments were received regarding

the proposed change to § 1.197.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53171

Section 1.291

Section 1.291(c) is amended by

removing the blanket limitation of one

protest per protestor and would provide

for a second or subsequent submission

in the form of additional prior art. Mere

argument that is later submitted by an

initial protestor would continue not to

be entered and would be returned

unless it is shown that the argument

relates to a new issue that could not

have been earlier raised. See MPEP

1901.07(b). Although later submitted

prior art would be made of record by a

previous protestor without a showing

that it relates to a new issue, it should

be noted that entry of later submitted

prior art in the file record does not

assure its consideration by the examiner

if submitted late in the examination

process. Accordingly, initial protests

should be as complete as possible when

first filed.

In view of the amendment to

§ 1.291(a) in the ‘‘Miscellaneous

Changes in Patent Practice’’ Final Rule

(discussed supra) to require that a

protest be filed prior to the mailing of

a notice of allowance under § 1.311 to

be considered timely (§ 1.291(a)(1)), the

restriction of protests by number is

deemed unnecessary and is recognized

as ineffective, in that a party may

effectively file multiple protests by

submitting each protest through a third

party agent acting on behalf of such

party.

Comment 101: One comment

suggested that permitting more than one

submission by a particular party relating

to prior art poses a risk that a third party

may sequentially submit individual

pieces of prior art as a delaying factor.

Response: Any delay in submission of

a piece of prior art by a third party poses

the risk that the later submitted prior art

will not be considered, particularly if it

is seen as part of a pattern. The review

of any piece of prior art, assuming it is

not part of a large package, to determine

its value is not seen to result in any

delay in issuing an Office action. It is

recognized that some delay may result

where a piece of prior art in a second

submission by a third party is utilized

in a rejection that could have been made

sooner if that art had been submitted

earlier; however, on balance the Office

would prefer to delay prosecution of an

application and consider and apply a

newly submitted reference not found by

the examiner rather than issue an

invalid claim.

Section 1.291(c) is also amended to

(1) delete the sentence ‘‘[t]he Office may

communicate with the applicant

regarding any protest and may require

the applicant to reply to specific

questions raised by the protest’’ as

superfluous as the Office may

communicate with an applicant

regarding any matter, and require the

applicant to reply to specific questions,

concerning the application; (2) replace

‘‘respond’’ with ‘‘reply’’ in accordance

with the change to § 1.111.

Section 1.293

Section 1.293 paragraph (c) is

amended to replace the reference to

§ 1.106(e) with a reference to

§ 1.104(c)(5), to reflect a transfer of

material.

Section 1.294

Section 1.294 paragraph (b) is

amended by replacement of ‘‘response’’

with ‘‘reply’’ in accordance with the

change to § 1.111.

No comments were received regarding

the proposed change to § 1.294.

Section 1.304

Section 1.304(a)(1) is amended to

replace ‘‘consideration’’ by

‘‘reconsideration’’ to correct a

typographical error.

No comments were received regarding

the proposed change to § 1.304.

Section 1.312

Section 1.312(b) is amended to have

a reference to § 1.175(b) added in view

of the change in § 1.175(b) referencing

§ 1.312(b).

No comments were received regarding

the proposed change to § 1.312.

Section 1.313

Section 1.313 will not be amended

with the addition of paragraph (c)

informing applicants that unless written

notification is received that the

application has been withdrawn from

issue at least two weeks prior to the

projected date of issue, applicants

should expect that the application will

issue as a patent. The matter will be

further studied. It should be noted,

however, that once an application has

issued, the Office is without authority to

grant a request under § 1.313

notwithstanding submission of the

request prior to issuance of the patent.

Section 1.316

Section 1.316 is amended to include

only the language of former § 1.316(a).

The subject matter of former paragraphs

(b) through (f) of § 1.316 were added to

§ 1.137.

No comments were received regarding

the proposed change to § 1.316.

Section 1.317

Section 1.317 is amended to include

only the language of former § 1.317(a).

The subject matter of former paragraphs

(b), (c), (e) and (f) of § 1.317 were added

to § 1.137.

No comments were received regarding

the proposed change to § 1.317.

Section 1.318

Section 1.318 is removed and

reserved as being an internal Office

instruction.

See comments relating to § 1.101.

Section 1.324

Section 1.324 is amended by creating

paragraphs (a) and (b). The requirement

for factual showings to establish a lack

of deceptive intent is deleted, with a

statement to that effect being sufficient,

paragraph (a).

Office practice is to require the same

type and character of proof of facts as

in petitions under § 1.48(a). See MPEP

1481. Unlike former § 1.48, former

§ 1.324 contained no diligence

requirement. See Stark v. Advanced

Magnetics, Inc., 29 F.3d 1570, 1574, 31

USPQ2d 1290, 1293 (Fed. Cir. 1994).

Section 1.324 (and § 1.48) as adopted

contain no diligence requirement, for

the reasons set forth in the discussion of

§ 1.48.

Section 1.324(b)(1) is amended to

explicitly require a statement relating to

the lack of deceptive intent only from

each person who is being added or

deleted as an inventor, as opposed to

the current practice of requiring a

statement from each original named

inventor and any inventor to be added.

The current requirements for an oath

or declaration under § 1.63 by each

actual inventor is replaced, paragraph

(b)(2) of § 1.324, by a statement from the

current named inventors who have not

submitted a statement under paragraph

(b)(1) of § 1.324 either agreeing to the

change of inventorship or stating that

they have no disagreement in regard to

the requested change. Not every original

named inventor would necessarily have

knowledge of each of the contributions

of the other inventors and/or how the

inventorship error occurred, in which

case their lack of disagreement to the

requested change would be sufficient.

Paragraph (b)(3) of § 1.324 requires

the written consent of the assignees of

all parties who submitted a statement

under paragraph (b)(1) and (b)(2) of this

section similar to the current practice of

consents by the assignees of all the

existing patentees. A clarification

reference to § 3.73(b) is added.

Paragraph (b)(4) of § 1.324 states the

requirement for a petition fee as set

forth in § 1.20(b).

No adverse comments were received

regarding the proposed change to

§ 1.324.
53172 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Section 1.325

The proposed removal of § 1.325 is

withdrawn. See comments relating to

§ 1.101.

Section 1.351

The proposed removal of § 1.351 is

withdrawn. See comments relating to

§ 1.101.

Section 1.352

Section 1.352 is removed and

reserved as unnecessary as an internal

instruction.

See comments relating to § 1.101.

Section 1.366

Section 1.366(b) is amended to

remove the term ‘‘certificate’’ as

unnecessary. Section 1.366(c) is

amended for clarity by changing ‘‘serial

number’’ to ‘‘application number,’’

which consists of the serial number and

the series code (e.g., ‘‘08/’’).

Paragraph (d) removes the request for

the information concerning the issue

date of the original patent and filing

date of the application for the original

patent as unnecessary. The term ‘‘serial’’

is also removed from paragraph (d).

No comments were received regarding

the proposed change to § 1.366.

Section 1.377

Section 1.377(c) is amended to

remove the requirement that the petition

be verified in accordance with the

change to §§ 1.4(d)(2) and 10.18.

No comments were received regarding

the proposed change to § 1.377.

Section 1.378

Section 1.378(d) is amended to

remove the requirement that the

statement be verified in accordance with

the change to §§ 1.4(d)(2) and 10.18.

No comments were received regarding

the proposed change to § 1.378.

Section 1.425

Section 1.425 is amended by

removing paragraph (a) and its

requirement for proof of the pertinent

facts relating to the lack of cooperation

or unavailability of the inventor for

which status is sought. In addition,

§ 1.425 is further amended by deleting

paragraph (b) and its requirements for

proof of the pertinent facts, presence of

a sufficient proprietary interest, and a

showing that such action is necessary to

preserve the rights of the parties or to

prevent irreparable damage.

Additionally, the requirement that the

last known address of the non-signing

inventor be stated has been removed.

The current requirements are thought to

be unnecessary in view of the need for

submission of the same information in

a petition under § 1.47 during the

national stage. The paragraph added

parallels the requirement in PCT Rule

4.15 for a statement explaining to the

satisfaction of the Commissioner the

lack of the signature concerned for

submission of the international

application.

No comments were received regarding

the proposed change to § 1.425.

Section 1.484

Section 1.484 paragraphs (d) through

(f) are amended by replacement of

‘‘response’’ and ‘‘respond’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.484.

Section 1.485

Section 1.485(a) is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.485.

Section 1.488

Section 1.488(b)(3) is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.488.

Section 1.492

Section 1.492 is amended to add new

paragraph (g). See the amendment to

§ 1.16 adding a new paragraph (m).

No comments were received regarding

the proposed change to § 1.492.

Section 1.494

Section 1.494(c) is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.494.

Section 1.495

Section 1.495(c) is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.495.

Section 1.510

Section 1.510(e) is amended to

replace a reference to § 1.121(f) with a

reference to § 1.530(d), which sets forth

the requirements for an amendment in

a reexamination proceeding.

No comments were received regarding

the proposed change to § 1.510.

Section 1.530

The title has been changed by the

addition of a semicolon to clarify that

the section is intended to cover not only

amendments submitted with the

statement, but also amendments

submitted at any other stage of the

reexamination proceedings.

Section 1.530(d) is replaced by

paragraphs (d)(1) through (d)(7)

removing the reference to § 1.121(f) in

accordance with the deletion of

§ 1.121(f). The manner of proposing

amendments in reexamination

proceedings is governed by § 1.530

(d)(1) through (d)(6). Paragraph (d)(1) is

directed to the manner of proposing

amendments in the specification, other

than in the claims. Paragraph (d)(1)(i)

requires that amendments including

deletions be made by submission of a

copy of one or more newly added or

rewritten paragraphs with markings,

except that an entire paragraph may be

deleted by a statement deleting the

paragraph without presentation of the

text of the paragraph. Paragraph

(d)(1)(ii) requires indication of the

precise point in the specification where

the paragraph which is being amended

is located. When a change in one

sentence, paragraph, or page results in

only format changes to other pages (e.g.,

shifting of non-amended text to

subsequent pages) not otherwise being

amended, such format changes are not

to be submitted. Paragraph (d)(1)(iii)

defines the markings set forth in

paragraph (d)(1)(ii). Proposed paragraph

(d)(1)(iii), relating to a requirement for

submission of all amendments be

presented when any amendment to the

specification is made, was not

implemented.

Paragraph (d)(2) of § 1.530 relates to

the manner of proposing amendments to

the claims in reexamination

proceedings. Paragraph (d)(2)(i)(A) of

§ 1.530 requires that a proposed

amendment include the entire text of

each patent claim which is proposed to

be amended by the current amendment

and each proposed new claim being

added by the current amendment.

Additionally, provision has been made

for the cancellation of a patent claim or

of a previously proposed new claim by

a direction to cancel without the need

for marking by brackets. Paragraph

(d)(2)(i)(B) prohibits the renumbering of

the patent claims and requires that any

proposed new claims follow the number

of the highest numbered patent claim.

Paragraph (d)(2)(i)(C) identifies the type

of markings required by paragraph

(d)(2)(i)(A), single underlining for added

material and single brackets for material

deleted.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53173

Paragraph (d)(2)(ii) requires the patent

owner to set forth the status (i.e.,

pending or cancelled) of all patent

claims, and of all currently proposed

new claims, as of the date of the

submission of each proposed

amendment. The absence of claim status

would result in a notice of informal

response.

Paragraph (d)(2)(iii) of § 1.530

requires an explanation of the support

in the disclosure for any amendments to

the claims presented for the first time on

pages separate from the amendments

along with any additional comments.

The absence of an explanation would

result in a notice of informal response.

Proposed paragraphs (d)(2) (iv) and

(v), relating to a requirement for

presentation of all amendments as of the

date any amendment to the claims is

made, and to the treatment of the failure

to submit a copy of any added claim as

a direction to cancel that claim, were

not implemented.

Paragraph (d)(3) of § 1.530 provides

that: (1) an amendment may not enlarge

the scope of the claims of the patent, (2)

no amendment may be proposed for

entry in an expired patent, and (3) no

amendment will be incorporated into

the patent by certificate issued after the

expiration of the patent.

Paragraph (d)(4) of § 1.530 provides

that amendments proposed to a patent

during reexamination proceedings will

not be effective until a reexamination

certificate is issued. This replaces

paragraph (e) of § 1.530, which has been

removed and reserved.

Paragraph (d)(5) of § 1.530 provides

the criteria for the form of amendments

in reexamination proceedings (i.e.,

paper size must be either letter size or

A4 size, and not legal size).

Paragraph (d)(6) of § 1.530 clarifies

that proposed amendments to the patent

drawing sheets are not permitted and

that any change must be by way of a

new sheet of drawings with the

proposed amended figures being

identified as ‘‘amended’’ and with

proposed added figures identified as

‘‘new’’ for each sheet that has changed.

Material in paragraph (d)(6) has been

transferred from cancelled § 1.115.

Paragraph (d)(7) of § 1.530, has been

added in view of the deletion of § 1.115

paragraph (d), requires amendment of

the disclosure in certain situations (i.e.,

to correct inaccuracies of description

and definition) and to secure substantial

correspondence between the claims, the

remainder of the specification, and the

drawings. The previous requirement for

‘‘correspondence’’ has been modified by

use of ‘‘substantial correspondence.’’

See comments to § 1.115.

Paragraph (d)(8) of § 1.530 has been

added to clarify that all amendments to

the patent being reexamined must be

made relative to (i.e., vis-a`-vis) the

patent specification in effect as of the

date of the filing of the request for

reexamination (the patent specification

includes the claims). If there was a prior

change to the patent (made via a prior

reexamination certificate, reissue of the

patent, certificate of correction, etc.), the

first amendment must be made relative

to the patent specification as changed by

the prior proceeding or other

mechanism for changing the patent. In

addition, all amendments subsequent to

the first amendment must be made

relative to the patent specification in

effect as of the date of the filing of the

request for reexamination, and not

relative to the prior amendment.

Paragraph (e) of § 1.530 has been

removed with the material formerly

contained therein transferred to new

paragraph (d)(4) of § 1.530.

The proposed change in §§ 1.530,

1.550, and 1.560 to replace ‘‘response,’’

‘‘responses’’ and ‘‘respond’’ with

‘‘reply’’ in accordance with the change

to § 1.111 is not being adopted at this

time. As the term ‘‘reply’’ in a

reexamination proceeding refers to the

‘‘reply’’ of a third party requester

(§ 1.535), the Office is withdrawing for

further consideration what term should

consistently be used for the ‘‘reply’’ or

‘‘response’’ by the patent owner and

what term should consistently be used

for the ‘‘reply’’ by a third party

requester.

Section 1.550

Paragraph (a) of § 1.550 is amended to

conform the citation to §§ 1.104 through

1.119 to the changes to §§ 1.104 through

1.119. Paragraphs (b) and (e) of § 1.550

are amended for clarification purposes.

Paragraph (e) of § 1.550 clarifies present

Office practice of requiring, after filing

of a request for reexamination by a third

party requester, the service of any

document filed by either the patent

owner or the third party on the other

party in the reexamination proceeding

in the manner provided in § 1.248.

No comments were received regarding

the proposed change to § 1.550.

Section 1.770

Section 1.770 is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.770.

Section 1.785

Section 1.785 is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

No comments were received regarding

the proposed change to § 1.785.

Section 1.804

Section 1.804(b) is clarified

grammatically by changing ‘‘shall state’’

to ‘‘stating’’ and is amended to delete

the requirement that the statement be

verified in accordance with the change

to §§ 1.4(d)(2) and 10.18.

No comments were received regarding

the proposed change to § 1.804.

Section 1.805

Section 1.805(c) is amended by

deleting ‘‘verified’’ in accordance with

the change to §§ 1.4(d) and 10.18 and

removing unnecessary language noting

that an attorney or agent registered to

practice need not verify their

statements.

No comments were received regarding

the proposed change to § 1.805.

Part 3

Portions of Part 3 are amended to

incorporate Part 7, which part is

removed and reserved.

No comments were received regarding

the proposed change to Part 3.

Section 3.11

Section 3.11(a) is created for the

current subject matter and a new

paragraph (b) is added citing Executive

Order 9424 of February 18, 1944 (9 FR

1959, 3 CFR 1943–1949 Comp., p. 303)

and its requirements that several

departments and other executive

agencies of the Government forward

items for recording.

Section 3.21

Section 3.21 is amended to replace

the reference to ‘‘§ 1.53(b)(1)’’ with a

reference to ‘‘§ 1.53(b)’’ and to delete the

reference to ‘‘§ 1.62’’ for consistency

with the amendment to § 1.53 and the

deletion of § 1.62.

Section 3.26

Section 3.26 is amended to remove

the requirement that an English

language translation be verified in

accordance with the change to

§§ 1.4(d)(2) and 10.18.

Section 3.27

The current subject matter of § 3.27 is

designated as paragraph (a), and a

paragraph (b) is added to cite Executive

Order 9424 and a mailing address

therefor.

Section 3.31

Section 3.31(c) is added to require

that: (1) The cover sheet must indicate
53174 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

that the document is to be recorded on

the Governmental Register; (2) the

document is to be recorded on the

Secret Register (if applicable); and (3)

the document does not affect title (if

applicable).

Section 3.41

The current subject matter of § 3.41 is

designated as paragraph (a), and a

paragraph (b) is added to specify when

no recording fee is required for

documents required to be filed pursuant

to Executive Order 9424.

Section 3.51

Section 3.51 is amended by removing

the term ‘‘certification’’ as unnecessary

in accordance with the change to

§§ 1.4(d)(2) and 10.18.

Section 3.58

Section 3.58 is added to provide for

the maintaining of a Department

Register to record Government interests

required by Executive Order 9424 in

§ 3.58(a). New § 3.58(b) provides that

the Office maintain a Secret Register to

record Government interests also

required by the Executive Order.

Section 3.73

Section 3.73(b) is amended to remove

the sentence requiring an assignee to

specifically state that the evidentiary

documents have been reviewed and to

certify that title is in the assignee

seeking to take action. The sentence is

deemed to be unnecessary in view of the

amendment to §§ 1.4(d) and 10.18.

Section 3.73 paragraph (b) has also

been amended to replace the language

‘‘assignee of the entire right, title and

interest’’ with ‘‘assignee.’’ This change

provides for the applicability of the

paragraph to assignees with a partial

interest, such as is often encountered in

reissue applications.

Section 3.73(b) is clarified by addition

of a reference to an example of

documentary evidence that can be

submitted.

Part 5

No comments were received regarding

the proposed change to Part 5.

Section 5.1

Section 5.1 is amended by removing

the current subject matter as being

duplicative of material in the other

sections of this part and is replaced by

subject matter deleted from § 5.33.

Section 5.2

Section 5.2(b) is amended by

removing the subject matter as being

duplicative of material in the other

sections of this part and is replaced with

subject matter of the first sentence from

§ 5.7. Section 5.2 paragraphs (c) and (d)

are removed as repetitive of material in

the other sections of this part.

Section 5.3

Section 5.3 is amended by

replacement of ‘‘response’’ with ‘‘reply’’

in accordance with the change to

§ 1.111.

Section 5.4

Section 5.4 is amended by removing

unnecessary subject matter from

paragraph (a), eliminating, in paragraph

(d), the requirement that the petition be

verified in accordance with the

amendment to §§ 1.4(d)(2) and 10.18,

and by adding the first and second

sentences of § 5.8 to § 5.4(d).

Section 5.5

Section 5.5 is amended by removing

unnecessary subject matter from

paragraph (b) and by replacing current

§ 5.5(e) with subject matter removed

from § 5.6(a).

Section 5.6

Section 5.6 is removed and reserved

with the subject matter of § 5.6(a) being

placed in § 5.5(e).

Section 5.7

Section 5.7 is removed and reserved

with the first sentence thereof being

placed in § 5.2(b).

Section 5.8

Section 5.8 is removed and reserved

with the subject matter from the first

and second sentences thereof being

placed in § 5.4(d).

Sections 5.11

Section 5.11, paragraphs (b), (c) and

(e), are amended to update the

references to other parts of the Code of

Federal Regulations.

Section 5.12

Section 5.12(b) is amended to clarify

that the petition fee (§ 1.17(h)) is

required only when expedited handling

is sought for the petition.

Section 5.13

Section 5.13 is amended by removing

the last two sentences which are

considered to be unnecessary. Section

5.13 is also amended to remove the

language concerning the requirement for

the petition fee (§ 1.17(h)) for expedited

handling of a petition under § 5.12(b),

which is duplicative of the provisions of

§ 5.12(b). This amendment does not

change current practice.

Section 5.14

Section 5.14(a) is amended by

removing unnecessary subject matter

and replacing ‘‘serial number’’ with the

more appropriate designation

‘‘application number.’’ Section 5.14(a) is

also amended to remove the language

concerning the requirement for the

petition fee (§ 1.17(h)) for expedited

handling of a petition under § 5.12(b),

which is duplicative of the provisions of

§ 5.12(b). This amendment does not

change current practice.

Section 5.15

Section 5.15, paragraphs (a), (b), (c),

and (e), are amended by removing

unnecessary subject matter and to

update the references to other parts of

the Code of Federal Regulations.

Section 5.16

Section 5.16 is removed and reserved

as unnecessary.

Section 5.17

Section 5.17 is removed and reserved

as unnecessary.

Section 5.18

Section 5.18 is amended to update the

references to other parts of the Code of

Federal Regulations.

Sections 5.19

Sections 5.19 (a) and (b) are amended

to update the references to other parts

of the Code of Federal Regulations.

Section 5.19(c) is removed as

unnecessary.

Section 5.20

Section 5.20 is amended to include

only the language of former § 5.20(a).

Section 5.25

Section 5.25(c) is removed as

unnecessary.

Section 5.31

Section 5.31 is removed and reserved

as unnecessary.

Section 5.32

Section 5.32 is removed and reserved

as unnecessary.

Section 5.33

Section 5.33 is removed and reserved

and its subject matter added to § 5.1.

Part 7

Part 7 is removed and reserved as the

substance thereof is incorporated into

part 3.

No comments were received regarding

the proposed change to Part 7.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53175

Part 10

Section 10.18

The heading of § 10.18 is amended to

read ‘‘[s]ignature and certificate for

correspondence filed in the Patent and

Trademark Office’’ to reflect that it, as

amended, applies to correspondence

filed by non-practitioners as well as

practitioners.

Section 10.18(a) is amended to

provide that for all documents filed in

the Office in patent, trademark, and

other non-patent matters, except for

correspondence that is required to be

signed by the applicant or party, each

piece of correspondence filed by a

practitioner in the Patent and

Trademark Office must bear a signature,

personally signed by such practitioner,

in compliance with § 1.4(d)(1). This

amendment is simply a clarification of

the requirements of former § 10.18(a).

Section 10.18 is further amended (in

§ 10.18 paragraphs (b) and (c)) to

include the changes proposed to § 1.4

paragraphs (d)(2) and (d)(3). These

changes to 37 CFR Part 10 are to avoid

a dual standard between 37 CFR Parts

1 and 10 as to practitioners. In addition,

by operation of § 1.4(d)(2), the

provisions of § 10.18 paragraphs (b) and

(c) are applicable to any party (whether

a practitioner or non-practitioner)

presenting any paper to the Office. As

any party (whether a practitioner or

non-practitioner) presenting any paper

to the Office is subject to the provisions

of § 10.18 paragraphs (b) and (c), this

change also avoids a dual standard

between practitioners and nonpractitioners as to the certification

provisions of § 10.18(b) and the

sanctions provisions of § 10.18(c). The

only difference between a practitioner

and a non-practitioner as to § 10.18

paragraphs (b) and (c) is that a

practitioner may also be subject to

disciplinary action for violations of

§ 10.18(b) in addition to or in lieu of

sanctions under § 10.18(c).

Section 10.18(b)(1) is specifically

amended to provide that, by presenting

to the Office (whether by signing, filing,

submitting, or later advocating) any

paper, the party presenting such paper

(whether a practitioner or nonpractitioner) is certifying that all

statements made therein of the party’s

own knowledge are true, all statements

made therein on information and belief

are believed to be true, and all

statements made therein are made with

the knowledge that whoever, in any

matter within the jurisdiction of the

Patent and Trademark Office, knowingly

and willfully falsifies, conceals, or

covers up by any trick, scheme, or

device a material fact, or makes any

false, fictitious or fraudulent statements

or representations, or makes or uses any

false writing or document knowing the

same to contain any false, fictitious or

fraudulent statement or entry, shall be

subject to the penalties set forth under

18 U.S.C. 1001, and that violations of

this paragraph may jeopardize the

validity of the application or document,

or the validity or enforceability of any

patent, trademark registration, or

certificate resulting therefrom.

Section 10.18(b)(2) is specifically

amended to provide that, by presenting

to the Office any paper, the party

presenting such paper (whether a

practitioner or non-practitioner) is

certifying that to the best of the party’s

knowledge, information and belief,

formed after an inquiry reasonable

under the circumstances, that: (1) the

paper is not being presented for any

improper purpose, such as to harass

someone or to cause unnecessary delay

or needless increase in the cost of

prosecution before the Office; (2) the

claims and other legal contentions

therein are warranted by existing law or

by a nonfrivolous argument for the

extension, modification, or reversal of

existing law or the establishment of new

law; (3) the allegations and other factual

contentions have evidentiary support or,

if specifically so identified, are likely to

have evidentiary support after a

reasonable opportunity for further

investigation or discovery; and (4) the

denials of factual contentions are

warranted on the evidence, or if

specifically so identified, are reasonably

based on a lack of information or belief.

As discussed supra, the amendments

to § 10.18, in combination with the

amendment to § 1.4(d), will permit the

Office to eliminate the verification

requirement for a number of the rules of

practice.

Section 10.18(c) specifically provides

that violations of § 10.18(b)(1) may

jeopardize the validity of the

application or document, or the validity

or enforceability of any patent,

trademark registration, or certificate

resulting therefrom, and that violations

of any of § 10.18 paragraphs (b)(2)(i)

through (iv) are, after notice and

reasonable opportunity to respond,

subject to such sanctions as deemed

appropriate by the Commissioner, or the

Commissioner’s designee, which may

include, but are not limited to, any

combination of: (1) holding certain facts

to have been established; (2) returning

papers; (3) precluding a party from

filing a paper, or presenting or

contesting an issue; (4) imposing a

monetary sanction; (5) requiring a

terminal disclaimer for the period of the

delay; or (6) terminating the proceedings

in the Patent and Trademark Office.

With regard to the sanctions

enumerated in § 10.18(c), 35 U.S.C. 6(a)

provides that ‘‘[t]he Commissioner

* * * may, subject to the approval of

the Secretary of Commerce, establish

regulations, not inconsistent with law,

for the conduct of proceedings in the

Patent and Trademark Office.’’ The

issue of whether the Office is authorized

to impose monetary sanctions was

addressed in the rulemaking entitled

‘‘Patent Appeal and Interference

Practice,’’ published in the Federal

Register at 60 FR 14488 (March 17,

1995), and in the Official Gazette at

1173 Off. Gaz. Pat. Office 36 (April 11,

1995).

The Commissioner’s authority under

35 U.S.C. 6(a) to impose monetary

sanctions is limited to sanctions which

are remedial, and does not extend to

sanctions that are punitive. Id. at

14494–96, 1173 Off. Gaz. Pat. Office at

41–43. An enabling statute (35 U.S.C.

6(a)) alone is not the express statutory

authorization required for an agency to

impose penal monetary sanctions. See,

e.g., Commissioner v. Acker, 361 U.S.

87, 91 (1959); Gold Kist, Inc. v.

Department of Agriculture, 741 F.2d

344, 348 (11th Cir. 1984). Thus, the line

of demarcation between permissible and

impermissible monetary sanctions

under 35 U.S.C. 6(a) is that: (1) the

imposition of a monetary sanction to

cover the costs incurred by the Office

due to the violation of § 10.18(b)(2) is a

remedial (and thus permissible)

sanction; and (2) the imposition of a

monetary sanction that has no

relationship to the costs incurred by the

Office due to the violation of

§ 10.18(b)(2) (e.g., a pre-established or

arbitrary fine or penalty) is a punitive

(and thus impermissible) sanction. See

United States v. Frame, 885 F.2d 1119,

1142–43 (3rd Cir. 1989)(late payment

charge no higher than reasonable to

cover lost interest and administrative

costs incurred in the collection effort is

a remedial sanction, and not a penalty,

and, as such, is authorized by

rulemaking enabling statute), cert.

denied, 493 U.S. 1094 (1990); see also

Griffin & Dickson v. United States, 16

Cl. Ct. 347, 356–57 (1989)(agency has

the inherent authority to manage its

caseload by imposing sanctions

including precluding party from

presenting further evidence,

disciplining of representative, or

imposing costs against the

representative or the party in interest).

As the Office is an entirely fee-funded

entity, it is reasonable to impose a

monetary sanction on a party causing an

unnecessary and inordinate expenditure
53176 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

of Office resources to cover the costs

incurred by the Office due to such

action, rather than impose these costs

on the Office’s customers in general.

Nevertheless, the Office has amended

§§ 1.4(d)(2) and 10.18 with the objective

of discouraging the filing of frivolous or

patently unwarranted correspondence

in the Office, not to routinely review

correspondence for compliance with

§ 10.18(b)(2) and impose sanctions

under § 10.18(c). Thus, the amendment

to §§ 1.4(d)(2) and 10.18 should cause

no concern to practitioners and pro se

applicants engaging in the ordinary

course of business before the Office. The

Office anticipates that sanctions under

§ 10.18(c) will be imposed only in rare

situations in which such action is

necessary for the Office to halt a clear

abuse that is resulting in a needless and

inordinate expenditure of Office

resources.

Where the circumstances of an

application or other proceeding warrant

a determination of whether there has

been a violation of § 10.18(b), the file or

the application or other proceeding will

be forwarded to the Office of Enrollment

and Discipline (OED) for a

determination of whether there has been

a violation of § 10.18(b). In the event

that OED determines that a provision of

§ 10.18(b) has been violated, the

Commissioner, or the Commissioner’s

designee, will determine what (if any)

sanction(s) under § 10.18(c) is to be

imposed in the application or other

proceeding. In addition, if OED

determines that a provision of § 10.18(b)

has been violated by a practitioner, OED

will determine whether such

practitioner is to be subject to

disciplinary action (see §§ 1.4(d)(2) and

10.18(d)). That is, OED will provide a

determination of whether there has been

a violation of § 10.18(b), and if such

violation is by a practitioner, whether

such practitioner is to be subject to

disciplinary action; however, OED will

not be responsible for imposing

sanctions under § 10.18(c) in an

application or other proceeding.

Section 10.18(d) provides that any

practitioner violating the provisions of

this section may also be subject to

disciplinary action. This paragraph (and

the corresponding provision of

§ 1.4(d)(2)) clarifies that a practitioner

may be subject to disciplinary action in

lieu of, or in addition to, the sanctions

set forth in § 10.18(c) for violations of

§ 10.18.

Comment 102: A number of

comments supported the changes to

§ 1.4(d) to make its certification

applicable to all papers signed and

submitted to the Office.

Response: The Office will adopt the

changes to make such a certification

applicable to all papers filed in the

Office, but will do so by placing the

certification requirement in § 10.18, and

providing in § 1.4(d) that the

presentation of any paper to the Office,

whether by a practitioner or nonpractitioner, constitutes a certification

under § 10.18. Thus, the presentation of

a paper to the Office by any person

(even a non-practitioner) constitutes a

certification under § 10.18.

Comment 103: A number of

comments opposed the change to

§ 1.4(d) as increasing the burden on

persons presenting papers to the Office,

and, as such, inconsistent with the

stated goal of reducing the burden on

the public. One comment indicated that

new burdens in § 1.4(d) on signers of

papers submitted to the Office include:

(1) conducting a reasonable inquiry

concerning the document to be

submitted to the Office; (2) not

submitting the document to harass or

seek a needless increase in the cost of

prosecution; and (3) submitting only

documents likely to have evidentiary

support after a reasonable opportunity

for further investigation or discovery.

Response: The change to §§ 1.4(d) and

10.18 should discourage the filing of

frivolous papers in the Office, and thus

reduce the cost to the Office of treating

such papers, which cost is ultimately

borne by the Office’s customers. Thus,

this change to §§ 1.4(d) and 10.18 will

reduce the burden on the public and to

the Office’s customers in general. There

is no reasonable argument as to why a

person filing a document in the Office

should be permitted to avoid the

‘‘burden’’ of conducting a reasonable

inquiry concerning the document to be

submitted to the Office, not submitting

the document to harass or seek a

needless increase in the cost of

prosecution, or submitting only

documents likely to have evidentiary

support after a reasonable opportunity

for further investigation or discovery.

Comment 104: Several comments

opposed the addition of § 1.4(d)(2) (now

§ 10.18(b)(2)) on the basis that the

phrase ‘‘formed after an inquiry

reasonable under the circumstances’’

was too vague or was unclear as to how

much of an inquiry must be made to

meet the ‘‘reasonable inquiry’’

requirement.

Response: The phrase ‘‘formed after

an inquiry reasonable under the

circumstances’’ is taken from Rule 11(b)

of the Federal Rules of Civil Procedure

(Fed. R. Civ. P. 11(b)), which provides

that:

Representations to Court. By presenting to

the court (whether by signing, filing,

submitting, or later advocating) a pleading,

written motion, or other paper, an attorney or

unrepresented party is certifying that to the

best of the person’s knowledge, information

and belief, formed after an inquiry reasonable

under the circumstances—

(1) it is not being presented for any

improper purpose, such as to harass or to

cause unnecessary delay or needless increase

in the cost of litigation;

(2) the claims, defenses, and other legal

contentions therein are warranted by existing

law or by a nonfrivolous argument for the

extension, modification, or reversal of

existing law or the establishment of new law;

(3) the allegations and other factual

contentions have evidentiary support or, if

specifically so identified, are likely to have

evidentiary support after a reasonable

opportunity for further investigation or

discovery; and

(4) the denials of factual contentions are

warranted on the evidence or, if specifically

so identified, are reasonably based on a lack

of information or belief.

See Fed. R. Civ. P. 11(b)(1993).

Section 10.18(b)(2) tracks the

language of Fed. R. Civ. P. 11(b)(1993)

to avoid confusion as to what

certifications a signature entails. The

advisory committee notes to Fed. R. Civ.

P. 11(b) provide further information on

the ‘‘inquiry reasonable under the

circumstances’’ requirement. See

Amendments to the Federal Rules of

Civil Procedure at 50–53 (1993),

reprinted in 146 F.R.D. 401, 584–87. The

‘‘inquiry reasonable under the

circumstances’’ requirement of

§ 10.18(b)(2) is identical to that in Fed.

R. Civ. P. 11(b). The Federal courts have

stated in regard to the ‘‘reasonable

inquiry’’ requirement of Fed. R. Civ. P.

11:

In requiring reasonable inquiry before the

filing of any pleading in a civil case in

federal district court, Rule 11 demands ‘‘an

objective determination of whether a

sanctioned party’s conduct was reasonable

under the circumstances.’’ In effect it

imposes a negligence standard, for negligence

is a failure to use reasonable care. The

equation between negligence and the failure

to conduct a reasonable precomplaint inquiry

is . . . that ‘‘the amount of investigation

required by Rule 11 depends on both the

time available to investigate and on the

probability that more investigation will turn

up important evidence; the Rule does not

require steps that are not cost-justified.’’

Hays v. Sony Electronics, 847 F.2d 412,

418, 7 USPQ2d 1043, 1048 (7th. Cir.

1988)(citations omitted)(decided prior

to the 1993 amendment to Fed. R. Civ.

P. 11, but discussing a ‘‘reasonable

under the circumstances’’ standard).

Comment 105: One comment opposed

the change in § 1.4(d) to import the

verification requirement into any papers

signed and submitted to the Office, on
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53177

the basis that the presence of a

verification actually on the paper signed

and submitted to the Office would cause

the signer to carefully consider what is

being signed and submitted to the

Office.

Response: A separate verification

requirement for certain papers results in

delays during the examination of an

application when such verification is

omitted. The Office is convinced that

people are inclined to either not make

false, misleading or inaccurate

statements in documents they sign, or

are not deterred from making such

statements by the presence of a

verification clause in the document. The

benefit obtained in the rare instance in

which a person otherwise inclined to

make a false, misleading or inaccurate

statement is persuaded not to do so by

a verification clause simply does not

outweigh the benefit obtained by the

elimination of the delay that results

from the requirement for such a

verification clause.

Comment 106: One comment opposed

the change to § 1.4(d) (now § 10.18(b)(2))

on the basis that ‘‘reasonable inquiry’’

requirement therein will expose a

practitioner to malpractice liability.

Response: Legal malpractice is not an

issue of Federal patent (or trademark)

law, but of common law sounding in

tort. See Voight v. Kraft, 342 F. Supp

821, 822, 174 USPQ 294, 295 (D. Idaho

1972). Section 10.18(b)(2) does not

affect the duty (or create a new duty) on

the part of a practitioner to his or her

client vis-a`-vis the submission of papers

to the Office.

The party’s duties under § 10.18 are

not to one’s own clients; it is to the

public in general, other parties before

the Office (the examination of whose

applications are delayed while the

Office is, and whose fees must be

applied to the cost of, responding to

frivolous papers), and to the Office. Cf.

Mars Steel Corp. v. Continental Bank,

880 F.2d 928, 932 (7th. Cir. 1989)(just as

tort law creates duties to one’s client,

Fed. R. Civ. P. 11 creates a duty to one’s

adversary, other litigants in the courts’s

queue, and the court itself); Hays, 847

F.2d at 418, 7 USPQ2d at 1049 (same).

Comment 107: One comment

indicated that the requirements in

§ 1.4(d)(2) (now § 10.18(b)(2)) may be

onerous as to persons not registered to

practice before the Office. Another

comment opposed this change on the

basis that it would create new issues

during litigation, in that few nonlawyers have enough legal knowledge to

accurately verify that the documents

they sign are consistent with the law.

The comment suggested that § 1.4(d)(2)

simply be amended to include the

verification statement from § 1.68.

Response: There is no reasonable

argument as to why the certification for

papers submitted to the Office should be

any less than the certification required

under Fed. R. Civ. P. 11(b) for papers

filed in the Federal courts. The Federal

Rules of Civil Procedure do not permit

a pro se litigant to avoid the

requirements of Fed. R. Civ. P. 11(b)

(‘‘By presenting * * * an attorney or

unrepresented party is certifying * * *

.’’ (emphasis added)). It is, however,

appropriate to take account of the

special circumstances of pro se

applicants in determining whether

sanctions under § 10.18(c) are

appropriate. See advisory committee

notes to Fed. R. Civ. P. 11 (1983),

reprinted in 97 F.R.D. 165, 198–99

(1983) (‘‘Although the standard is the

same for unrepresented parties, who are

obligated themselves to sign the

[papers], the court has sufficient

discretion to take account of the special

circumstances that often arise in pro se

situations’’).

The Office expects that pro se

applicants will often submit arguments

that evidence little, if any, appreciation

of the applicable law or procedure. The

Office is not adopting §§ 1.4(d)(2) and

10.18 (b) and (c) for the purpose of

imposing, and does not intend to

impose, sanctions on pro se applicants

in situations in which they simply

submit arguments lacking an

appreciation of the applicable law or

procedure. See Finch v. Hughes Aircraft

Co., 926 F.2d 1574, 1582, 17 USPQ2d

1914, 1921 (Fed. Cir. 1991) (‘‘courts are

particularly cautious about imposing

sanctions on a pro se litigant, whose

improper conduct may be attributed to

ignorance of the law and proper

procedures’’); see also Hornback v. U.S.,

40 USPQ2d 1694, 1697 (Cl. Ct. 1996)

(pro se without legal training is not held

to the same standard as trained

counsel).

Where, however, a pro se applicant

engages in a course of conduct that any

reasonable person should have known

was improper, and which causes a

needless and inordinate expenditure of

Office resources, such conduct may

result in the imposition of sanctions on

the pro se applicant. The Federal courts

have subjected pro se litigants to

sanctions for: (1) Taking or persisting in

actions that even a non-lawyer should

have known were frivolous; (2) taking or

persisting in actions that, after engaging

in a sufficient course of litigation, the

pro se litigant should have known were

frivolous; or (3) taking or persisting in

actions after having been warned by the

court that such actions were frivolous.

See Constant v. U.S., 929 F.2d 654, 658,

18 USPQ2d 1298, 1301 (Fed. Cir.), cert.

denied, 501 U.S. 1206 (1991); Finch, 926

F.2d at 1582–83, 17 USPQ2d at 1921;

U.S. ex rel. Taylor v. Times Herald

Record, 22 USPQ2d 1716, 1718

(S.D.N.Y. 1992), aff’d, 990 F.3d 623 (2d

Cir. 1993)(table).

Comment 108: One comment argued

that the change to § 1.4(d) would be

particularly difficult to apply in the

context of provisional applications.

Response: The patent statute and

rules of practice do not require any

papers other than a disclosure (with or

without claims) and a cover sheet for a

provisional application (e.g., an

applicant need and should not submit

legal arguments or other contentions

with a provisional application). Thus, it

is highly unlikely that the filing of a

provisional application will result in a

violation of § 10.18(b).

Comment 109: One comment opposed

the change to § 1.4(d) on the basis that

it was not clear whether a practitioner

has an obligation in the case of a

submission of a statement of facts to

inform the party making the statement

(or the client) of this certification effect,

and the sanctions applicable to

noncompliance. Another comment

indicated that practitioners will now be

placed under the obligation of

questioning their clients each time they

are given information or instructions.

Response: The submission by an

applicant of misleading or inaccurate

statements of facts during the

prosecution of applications for patent

has resulted in the patents issuing on

such applications being held

unenforceable. See, e.g., Refac

International Ltd. v. Lotus Development

Corp., 81 F.3d 1576, 38 USPQ2d 1665

(Fed. Cir. 1996); Paragon Podiatry

Laboratory, Inc. v. KLM Laboratories,

Inc., 984 F.2d 1182, 25 USPQ2d 1561

(Fed. Cir 1993); Rohm and Haas Corp.

v. Crystal Chemical Co., 722 F.2d 1556,

200 USPQ 289 (Fed. Cir. 1983), cert.

denied, 469 U.S. 851 (1984); Ott v.

Goodpasture, 40 USPQ2d 1831 (D.N.

Tex. 1996); Herman v. William Brooks

Shoe Co., 39 USPQ2d 1773 (S.D.N.Y.

1996); Golden Valley Microwave Food

Inc. v. Weaver Popcorn Co., 837 F.

Supp. 1444, 24 USPQ2d 1801 (N.D. Ind.

1992), aff’d, 11 F.3d 1072 (Fed. Cir.

1993)(table), cert. denied, 511 U.S. 1128

(1994). Likewise, false statements by a

practitioner in a paper submitted to the

Office during the prosecution of an

application for patent has resulted in

the patent issuing on such application

also being held unenforceable. See

General Electro Music Corp. v. Samick

Music Corp., 19 F.3d 1405, 30 USPQ2d

1149 (Fed. Cir. 1994)(false statement in
53178 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

a petition to make an application special

constitutes inequitable conduct, and

renders the patent issuing on such

application unenforceable). In addition,

the failure to exercise due care in

ascertaining the accuracy of the

statements in a certification submitted

to the Office has also resulted in a

patent being held invalid. See DH

Technology, 937 F. Supp. at 910; 40

USPQ2d at 1761.

For the above-stated reasons, it is

highly advisable for a practitioner to

advise a client or third party that any

information so provided must be

reliable and not misleading, regardless

of this amendment to §§ 1.4(d)(2) and

10.18. Nevertheless, §§ 1.4(d)(2) and

10.18 as adopted do not require a

practitioner to advise the client (or third

party) providing information of this

certification effect (or the sanctions

applicable to noncompliance), or

question the client (or third party) when

such information or instructions are

provided. When a practitioner is

submitting information (e.g., a statement

of fact) from the applicant or a third

party, or relying in arguments upon

information from the applicant or a

third party, the Office will consider a

practitioner’s ‘‘inquiry reasonable under

the circumstances’’ duty under § 10.18

met so long as the practitioner has no

knowledge of information that is

contrary to the information provided by

the applicant or third party or would

otherwise indicate that the information

provided by the applicant or third party

was so provided for the purpose of a

violation of § 10.18 (e.g., was submitted

to cause unnecessary delay).

An applicant has no duty to conduct

a prior art search as a prerequisite to

filing an application for patent. See

Nordberg, Inc. v. Telsmith, Inc., 82 F.3d

394, 397, 38 USPQ2d 1593, 1595–96

(Fed. Cir. 1996); FMC Corp. v. Hennessy

Indus., Inc., 836 F.2d 521, 526 n.6, 5

USPQ2d 1272, 1275–76 n.6 (Fed. Cir.

1987); FMC Corp. v. Manitowoc Co.,

Inc., 835 F.2d 1411, 1415, 5 USPQ2d

1112, 1115 (Fed. Cir. 1987); American

Hoist & Derrick Co. v. Sowa & Sons,

Inc., 725 F.2d 1350, 1362, 220 USPQ

763, 772 (Fed. Cir.), cert. denied, 469

U.S. 821, 224 USPQ 520 (1984). The

‘‘inquiry reasonable under the

circumstances’’ requirement of § 10.18

does not create any new duty on the

part of an applicant for patent to

conduct a prior art search. See MPEP

609; cf. Judin v. United States, 110 F.3d

780, 42 USPQ2d 1300 (Fed. Cir

1997)(the failure to obtain and examine

the accused infringing device prior to

bringing a civil action for infringement

violates the 1983 version of Fed. R. Civ.

P. 11). The ‘‘inquiry reasonable under

the circumstances’’ requirement of

§ 10.18, however, will require an

inquiry into the underlying facts and

circumstances when a practitioner

provides conclusive statements to the

Office (e.g., 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

§ 1.137(b) was unintentional).

Section 10.23

Section 10.23 is amended to change

the phrase ‘‘knowingly signing’’ to

‘‘signing.’’ This amendment to § 10.23 is

for consistency with § 10.18, which

contains no ‘‘knowingly’’ provision or

requirement.

Review Under the Paperwork

Reduction Act of 1995

This final rule contains information

collection requirements which are

subject to review by the Office of

Management and Budget (OMB) under

the Paperwork Reduction Act of 1995

(44 U.S.C. 3501 et seq.). The principal

impact of this Final Rule is: (1)

elimination of unnecessary rules of

practice; (2) simplification or

elimination of certain requirements of

the rules of practice; (3) rearrangement

of certain rules to improve their context;

and (4) clarification of the requirements

of the rules of practice.

The title, description and respondent

description of each of the information

collections are shown below with an

estimate of each of the annual reporting

burdens. The collections of information

in this Final Rule have been reviewed

and approved by OMB under the

following control numbers: 0651–0016,

0651–0021, 0651–0022, 0651–0027,

0651–0031, 0651–0032, 0651–0033,

0651–0034, 0651–0035, and 0651–0037.

Included in each estimate is the time for

reviewing instructions, gathering and

maintaining the data needed, and

completing and reviewing the collection

of information.

Notwithstanding any other provision

of law, no person is required to respond

to nor shall a person be subject to a

penalty for failure to comply with a

collection of information subject to the

requirements of the Paperwork

Reduction Act unless that collection of

information displays a currently valid

OMB control number.

OMB Number: 0651–0016.

Title: Rules for Patent Maintenance

Fees.

Form Numbers: PTO/SB/45/46/47/65/

66.

Type of Review: Approved through

July of 1999.

Affected Public: Individuals or

Households, Business or Other ForProfit, Not-for-Profit Institutions and

Federal Government.

Estimated Number of Respondents:

273,800.

Estimated Time Per Response: 0.08

hour.

Estimated Total Annual Burden

Hours: 22,640 hours.

Needs and Uses: Maintenance fees are

required to maintain a patent, except for

design or plant patents, in force under

35 U.S.C. 41(b). Payment of

maintenance fees are required at 31⁄2,

71⁄2 and 111⁄2 years after the grant of the

patent. A patent number and

application number of the patent on

which maintenance fees are paid are

required in order to ensure proper

crediting of such payments.

OMB Number: 0651–0021.

Title: Patent Cooperation Treaty.

Form Numbers: PCT/RO/101,ANNEX/

134/144, PTO–1382, PCT/IPEA/401,

PCT/IB/328.

Type of Review: Approved through

May of 2000.

Affected Public: Individuals or

Households, Business or Other ForProfit, Federal Agencies or Employees,

Not-for-Profit Institutions, Small

Businesses or Organizations.

Estimated Number of Respondents:

102,950.

Estimated Time Per Response: 0.9538

hour.

Estimated Total Annual Burden

Hours: 98,195 hours.

Needs and Uses: The information

collected is required by the Patent

Cooperation Treaty (PCT). The general

purpose of the PCT is to simplify the

filing of patent applications on the same

invention in different countries. It

provides for a centralized filing

procedure and a standardized

application format.

OMB Number: 0651–0022.

Title: Deposit of Biological Materials

for Patent Purposes.

Form Numbers: None.

Type of Review: Approved through

December of 1997.

Affected Public: Individuals or

Households, State or Local

Governments, Farms, Business or Other

For-Profit, Federal Agencies or

Employees, Not-for-Profit Institutions,

Small Businesses or Organizations.

Estimated Number of Respondents:

3,325.

Estimated Time Per Response: 1.0

hour.

Estimated Total Annual Burden

Hours: 3,325 hours.

Needs and Uses: Information on

depositing of biological materials in

depositories is required for (1) Office

determination of compliance with the
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53179

patent statute where the invention

sought to be patented relies on

biological material subject to deposit

requirement, which includes notifying

interested members of the public where

to obtain samples of deposits, and (2)

depositories desiring to be recognized as

suitable by the Office.

OMB Number: 0651–0027.

Title: Changes in Patent and

Trademark Assignment Practices.

Form Numbers: PTO–1618 and PTO–

1619, PTO/SB/15/41.

Type of Review: Approved through

September of 1998.

Affected Public: Individuals or

Households and Businesses or Other

For-Profit.

Estimated Number of Respondents:

170,000.

Estimated Time Per Response: 0.57

hour.

Estimated Total Annual Burden

Hours: 97,000 hours.

Needs and Uses: The Office records

about 170,000 assignments or

documents related to ownership of

patent and trademark cases each year.

The Office requires a cover sheet to

expedite the processing of these

documents and to ensure that they are

properly recorded.

OMB Number: 0651–0031.

Title: Patent Processing (Updating).

Form Numbers: PTO/SB/08–12/21–

26/31/32/42/43/61–64/67–69/91–93/96/

97.

Type of Review: Approved through

October of 1999.

Affected Public: Individuals or

Households, Business or Other ForProfit Institutions, Not-for-Profit

Institutions and Federal Government.

Estimated Number of Respondents:

1,690,690.

Estimated Time Per Response: 0.361

hours.

Estimated Total Annual Burden

Hours: 644,844 hours.

Needs and Uses: During the

processing for an application for a

patent, the applicant/agent may be

required or desire to submit additional

information to the Office concerning the

examination of a specific application.

The specific information required or

which may be submitted includes:

Information Disclosure Statements;

Terminal Disclaimers; Petitions to

Revive; Express Abandonments; Appeal

Notices; Small Entity; Petitions for

Access; Powers to Inspect; Certificates

of Mailing; Certificates under § 3.73(b);

Amendments, Petitions and their

Transmittal Letters; and Deposit

Account Order Forms.

OMB Number: 0651–0032.

Title: Initial Patent Application.

Form Number: PTO/SB/01–07/17–20/

101–109.

Type of Review: Approved through

September of 1998.

Affected Public: Individuals or

Households, Business or Other ForProfit, Not-for-Profit Institutions and

Federal Government.

Estimated Number of Respondents:

243,100.

Estimated Time Per Response: 7.88

hours.

Estimated Total Annual Burden

Hours: 1,915,500 hours.

Needs and Uses: The purpose of this

information collection is to permit the

Office to determine whether an

application meets the criteria set forth

in the patent statute and regulations.

The standard Fee Transmittal form, New

Utility Patent Application Transmittal

form, New Design Patent Application

Transmittal form, New Plant Patent

Application Transmittal form, Plant

Color Coding Sheet, Declaration, and

Plant Patent Application Declaration

will assist applicants in complying with

the requirements of the patent statute

and regulations, and will further assist

the Office in processing and

examination of the application.

OMB Number: 0651–0033.

Title: Post Allowance and Refiling.

Form Numbers: PTO/SB/13/14/44/

50–57; PTOL–85b.

Type of Review: Approved through

June of 1999.

Affected Public: Individuals or

Households, Business or Other ForProfit, Not-for-Profit Institutions and

Federal Government.

Estimated Number of Respondents:

135,190.

Estimated Time Per Response: 0.325

hour.

Estimated Total Annual Burden

Hours: 43,893 hours.

Needs and Uses: This collection of

information is required to administer

the patent laws pursuant to title 35,

U.S.C., concerning the issuance of

patents and related actions including

correcting errors in printed patents,

refiling of patent applications,

requesting reexamination of a patent,

and requesting a reissue patent to

correct an error in a patent. The affected

public includes any individual or

institution whose application for a

patent has been allowed or who takes

action as covered by the applicable

rules.

OMB Number: 0651–0034.

Title: Secrecy/License to Export.

Form Numbers: None.

Type of Review: Approved through

January of 1998.

Affected Public: Individuals or

Households, Business or Other ForProfit, Not-for-Profit Institutions and

Federal Government.

Estimated Number of Respondents:

2,156.

Estimated Time Per Response: 0.5

hour.

Estimated Total Annual Burden

Hours: 1,129 hours.

Needs and Uses: In the interest of

national security, patent laws and

regulations place certain limitations on

the disclosure of information contained

in patents and patent applications and

on the filing of applications for patent

in foreign countries.

OMB Number: 0651–0035.

Title: Address-Affecting Provisions.

Form Numbers: PTO/SB/82/83.

Type of Review: Approved through

June of 1999.

Affected Public: Individuals or

Households, Business or Other ForProfit, Not-for-Profit Institutions and

Federal Government.

Estimated Number of Respondents:

44,850.

Estimated Time Per Response: 0.2

hour.

Estimated Total Annual Burden

Hours: 8,970 hours.

Needs and Uses: Under existing law,

a patent applicant or assignee may

appoint, revoke or change a

representative to act in a representative

capacity. Also, an appointed

representative may withdraw from

acting in a representative capacity. This

collection includes the information

needed to ensure that Office

correspondence reaches the appropriate

individual.

OMB Number: 0651–0037.

Title: Provisional Applications.

Form Numbers: PTO/SB/16.

Type of Review: Approved through

January of 1998.

Affected Public: Individuals or

Households, Business or Other ForProfit, Not-for-Profit Institutions and

Federal Government.

Estimated Number of Respondents:

6,000.

Estimated Time Per Response: 0.2

hour.

Estimated Total Annual Burden

Hours: 1,200 hours.

Needs and Uses: The information

included on the provisional application

cover sheet is needed by the Office to

identify the submission as a provisional

application and not some other kind of

submission, to promptly and properly

process the provisional application, to

prepare the provisional application

filing receipt which is sent to the

applicant, and to identify those

provisional applications which must be

reviewed by the Office for foreign filing

licenses.
53180 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

As required by the Paperwork

Reduction Act of 1995 (44 U.S.C.

3507(d)), the Office has submitted a

copy of this Final Rule to OMB for its

review of these information collections.

Interested persons are requested to send

comments regarding these information

collections, including suggestions for

reducing this burden, to the Office of

Information and Regulatory Affairs of

OMB, New Executive Office Bldg., 725

17th St. NW, rm. 10235, Washington,

DC 20503, Attn: Desk Officer for the

Patent and Trademark Office.

Other Considerations

This Final Rule is in conformity with

the requirements of the Regulatory

Flexibility Act (5 U.S.C. 601 et seq.),

Executive Order 12612 (October 26,

1987), and the Paperwork Reduction Act

of 1995 (44 U.S.C. 3501 et seq.). It has

been determined that this rulemaking is

not significant for the purposes of

Executive Order 12866 (September 30,

1993).

The Assistant General Counsel for

Legislation and Regulation of the

Department of Commerce has certified

to the Chief Counsel for Advocacy,

Small Business Administration that this

Final Rule would not have a significant

impact on a substantial number of small

entities (Regulatory Flexibility Act, 5

U.S.C. 605(b)). The principal impact of

this Final Rule is: (1) elimination of

unnecessary rules of practice; (2)

simplification or elimination of certain

requirements of the rules of practice; (3)

rearrangement of certain rules to

improve their context; and (4)

clarification of the requirements of the

rules of practice.

The Office has determined that this

Final Rule has no Federalism

implications affecting the relationship

between the National Government and

the States as outlined in Executive

Order 12612.

List of Subjects

37 CFR Part 1

Administrative practice and

procedure, Courts, Freedom of

information, Inventions and patents,

Reporting and recordkeeping

requirements, Small businesses.

37 CFR Part 3

Administrative practice and

procedure, Inventions and patents,

Reporting and recordkeeping

requirements.

37 CFR Part 5

Classified information, Foreign

relations, Inventions and patents.

37 CFR Part 7

Administrative practice and

procedure, Inventions and patents,

Reporting and recordkeeping

requirements.

37 CFR Part 10

Administrative practice and

procedure, Inventions and patents,

Lawyers, Reporting and recordkeeping

requirements.

For the reasons set forth in the

preamble, 37 CFR parts 1, 3, 5, 7 and 10

are amended as follows:

PART 1—RULES OF PRACTICE IN

PATENT CASES

1. The authority citation for 37 CFR

part 1 continues to read as follows:

Authority: 35 U.S.C. 6, unless otherwise

noted.

2. Section 1.4 is amended by revising

paragraph (d) and by adding paragraph

(g) to read as follows:

§ 1.4 Nature of correspondence and

signature requirements.

* * * * *

(d)(1) Each piece of correspondence,

except as provided in paragraphs (e) and

(f) of this section, filed in a patent or

trademark application, reexamination

proceeding, patent or trademark

interference proceeding, patent file or

trademark registration file, trademark

opposition proceeding, trademark

cancellation proceeding, or trademark

concurrent use proceeding, which

requires a person’s signature, must

either:

(i) Be an original, that is, have an

original signature personally signed in

permanent ink by that person; or

(ii) Be a direct or indirect copy, such

as a photocopy or facsimile

transmission (§ 1.6(d)), of an original. In

the event that a copy of the original is

filed, the original should be retained as

evidence of authenticity. If a question of

authenticity arises, the Patent and

Trademark Office may require

submission of the original.

(2) The presentation to the Office

(whether by signing, filing, submitting,

or later advocating) of any paper by a

party, whether a practitioner or nonpractitioner, constitutes a certification

under § 10.18(b) of this chapter.

Violations of § 10.18(b)(2) of this

chapter by a party, whether a

practitioner or non-practitioner, may

result in the imposition of sanctions

under § 10.18(c) of this chapter. Any

practitioner violating § 10.18(b) may

also be subject to disciplinary action.

See §§ 10.18(d) and 10.23(c)(15).

* * * * *

(g) An applicant who has not made of

record a registered attorney or agent

may be required to state whether

assistance was received in the

preparation or prosecution of the patent

application, for which any

compensation or consideration was

given or charged, and if so, to disclose

the name or names of the person or

persons providing such assistance.

Assistance includes the preparation for

the applicant of the specification and

amendments or other papers to be filed

in the Patent and Trademark Office, as

well as other assistance in such matters,

but does not include merely making

drawings by draftsmen or stenographic

services in typing papers.

3. Section 1.6 is amended by revising

paragraphs (d)(3), (d)(6), and (e) and

adding paragraph (f) to read as follows:

§ 1.6 Receipt of correspondence.

* * * * *

(d) * * *

(3) Correspondence which cannot

receive the benefit of the certificate of

mailing or transmission as specified in

§ 1.8(a)(2)(i) (A) through (D) and (F),

§ 1.8(a)(2)(ii)(A), and § 1.8(a)(2)(iii)(A),

except that a continued prosecution

application under § 1.53(d) may be

transmitted to the Office by facsimile;

* * * * *

(6) Correspondence to be filed in a

patent application subject to a secrecy

order under §§ 5.1 through 5.5 of this

chapter and directly related to the

secrecy order content of the application;

* * * * *

(e) Interruptions in U.S. Postal

Service. If interruptions or emergencies

in the United States Postal Service

which have been so designated by the

Commissioner occur, the Patent and

Trademark Office will consider as filed

on a particular date in the Office any

correspondence which is:

(1) Promptly filed after the ending of

the designated interruption or

emergency; and

(2) Accompanied by a statement

indicating that such correspondence

would have been filed on that particular

date if it were not for the designated

interruption or emergency in the United

States Postal Service.

(f) Facsimile transmission of a patent

application under § 1.53(d). In the event

that the Office has no evidence of

receipt of an application under § 1.53(d)

(a continued prosecution application)

transmitted to the Office by facsimile

transmission, the party who transmitted

the application under § 1.53(d) may

petition the Commissioner to accord the

application under § 1.53(d) a filing date

as of the date the application under
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53181

§ 1.53(d) is shown to have been

transmitted to and received in the

Office,

(1) Provided that the party who

transmitted such application under

§ 1.53(d):

(i) Informs the Office of the previous

transmission of the application under

§ 1.53(d) promptly after becoming aware

that the Office has no evidence of

receipt of the application under

§ 1.53(d);

(ii) Supplies an additional copy of the

previously transmitted application

under § 1.53(d); and

(iii) Includes a statement which

attests on a personal knowledge basis or

to the satisfaction of the Commissioner

to the previous transmission of the

application under § 1.53(d) and is

accompanied by a copy of the sending

unit’s report confirming transmission of

the application under § 1.53(d) or

evidence that came into being after the

complete transmission and within one

business day of the complete

transmission of the application under

§ 1.53(d).

(2) The Office may require additional

evidence to determine if the application

under § 1.53(d) was transmitted to and

received in the Office on the date in

question.

4. Section 1.8 is amended by revising

paragraphs (a)(2)(i)(A) and (b) to read as

follows:

§ 1.8 Certificate of mailing or

transmission.

(a) * * *

(2) * * *

(i) * * *

(A) The filing of a national patent

application specification and drawing or

other correspondence for the purpose of

obtaining an application filing date,

including a request for a continued

prosecution application under § 1.53(d);

* * * * *

(b) In the event that correspondence is

considered timely filed by being mailed

or transmitted in accordance with

paragraph (a) of this section, but not

received in the Patent and Trademark

Office, and the application is held to be

abandoned or the proceeding is

dismissed, terminated, or decided with

prejudice, the correspondence will be

considered timely if the party who

forwarded such correspondence:

(1) Informs the Office of the previous

mailing or transmission of the

correspondence promptly after

becoming aware that the Office has no

evidence of receipt of the

correspondence;

(2) Supplies an additional copy of the

previously mailed or transmitted

correspondence and certificate; and

(3) Includes a statement which attests

on a personal knowledge basis or to the

satisfaction of the Commissioner to the

previous timely mailing or transmission.

If the correspondence was sent by

facsimile transmission, a copy of the

sending unit’s report confirming

transmission may be used to support

this statement.

* * * * *

5. Section 1.9 is amended by revising

paragraphs (d) and (f) to read as follows:

§ 1.9 Definitions.

* * * * *

(d) A small business concern as used

in this chapter means any business

concern meeting the size standards set

forth in 13 CFR Part 121 to be eligible

for reduced patent fees. Questions

related to size standards for a small

business concern may be directed to:

Small Business Administration, Size

Standards Staff, 409 Third Street, SW,

Washington, DC 20416.

* * * * *

(f) A small entity as used in this

chapter means an independent inventor,

a small business concern, or a non-profit

organization eligible for reduced patent

fees.

* * * * *

6. Section 1.10 is amended by revising

paragraphs (d) and (e) to read as follows:

§ 1.10 Filing of correspondence by

‘‘Express Mail.’’

* * * * *

(d) Any person filing correspondence

under this section that was received by

the Office and delivered by the ‘‘Express

Mail Post Office to Addressee’’ service

of the USPS, who can show that the

‘‘date-in’’ on the ‘‘Express Mail’’ mailing

label or other official notation entered

by the USPS was incorrectly entered or

omitted by the USPS, may petition the

Commissioner to accord the

correspondence a filing date as of the

date the correspondence is shown to

have been deposited with the USPS,

provided that:

(1) The petition is filed promptly after

the person becomes aware that the

Office has accorded, or will accord, a

filing date based upon an incorrect entry

by the USPS;

(2) The number of the ‘‘Express Mail’’

mailing label was placed on the paper(s)

or fee(s) that constitute the

correspondence prior to the original

mailing by ‘‘Express Mail’’; and

(3) The petition includes a showing

which establishes, to the satisfaction of

the Commissioner, that the requested

filing date was the date the

correspondence was deposited in the

‘‘Express Mail Post Office to Addressee’’

service prior to the last scheduled

pickup for that day. Any showing

pursuant to this paragraph must be

corroborated by evidence from the USPS

or that came into being after deposit and

within one business day of the deposit

of the correspondence in the ‘‘Express

Mail Post Office to Addressee’’ service

of the USPS.

(e) Any person mailing

correspondence addressed as set out in

§ 1.1(a) to the Office with sufficient

postage utilizing the ‘‘Express Mail Post

Office to Addressee’’ service of the

USPS but not received by the Office,

may petition the Commissioner to

consider such correspondence filed in

the Office on the USPS deposit date,

provided that:

(1) The petition is filed promptly after

the person becomes aware that the

Office has no evidence of receipt of the

correspondence;

(2) The number of the ‘‘Express Mail’’

mailing label was placed on the paper(s)

or fee(s) that constitute the

correspondence prior to the original

mailing by ‘‘Express Mail’’;

(3) The petition includes a copy of the

originally deposited paper(s) or fee(s)

that constitute the correspondence

showing the number of the ‘‘Express

Mail’’ mailing label thereon, a copy of

any returned postcard receipt, a copy of

the ‘‘Express Mail’’ mailing label

showing the ‘‘date-in,’’ a copy of any

other official notation by the USPS

relied upon to show the date of deposit,

and, if the requested filing date is a date

other than the ‘‘date-in’’ on the ‘‘Express

Mail’’ mailing label or other official

notation entered by the USPS, a

showing pursuant to paragraph (d)(3) of

this section that the requested filing

date was the date the correspondence

was deposited in the ‘‘Express Mail Post

Office to Addressee’’ service prior to the

last scheduled pickup for that day; and

(4) The petition includes a statement

which establishes, to the satisfaction of

the Commissioner, the original deposit

of the correspondence and that the

copies of the correspondence, the copy

of the ‘‘Express Mail’’ mailing label, the

copy of any returned postcard receipt,

and any official notation entered by the

USPS are true copies of the originally

mailed correspondence, original

‘‘Express Mail’’ mailing label, returned

postcard receipt, and official notation

entered by the USPS.

* * * * *

7. Section 1.11 is amended by revising

paragraph (b) to read as follows:

§ 1.11 Files open to the public.

* * * * *

(b) All reissue applications, all

applications in which the Office has

accepted a request to open the complete
53182 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

application to inspection by the public,

and related papers in the application

file, are open to inspection by the

public, and copies may be furnished

upon paying the fee therefor. The filing

of reissue applications, other than

continued prosecution applications

under § 1.53(d) of reissue applications,

will be announced in the Official

Gazette. The announcement shall

include at least the filing date, reissue

application and original patent

numbers, title, class and subclass, name

of the inventor, name of the owner of

record, name of the attorney or agent of

record, and examining group to which

the reissue application is assigned.

* * * * *

8. Section 1.14 is amended by revising

paragraph (a) and adding a new

paragraph (f) to read as follows:

§ 1.14 Patent applications preserved in

confidence.

(a) Patent applications are generally

preserved in confidence pursuant to 35

U.S.C. 122. No information will be given

concerning the filing, pendency, or

subject matter of any application for

patent, and no access will be given to,

or copies furnished of, any application

or papers relating thereto, except as set

forth in this section.

(1) Status information includes

information such as whether the

application is pending, abandoned, or

patented, as well as the application

number and filing date (or international

filing date or date of entry into the

national stage).

(i) Status information concerning an

application may be supplied:

(A) When copies of, or access to, the

application may be provided pursuant

to paragraph (a)(3) of this section;

(B) When the application is identified

by application number or serial number

and filing date in a published patent

document or in a U.S. application open

to public inspection; or

(C) When the application is the

national stage of an international

application in which the United States

of America has been indicated as a

Designated State.

(ii) Status information concerning an

application may also be supplied when

the application claims the benefit of the

filing date of an application for which

status information may be provided

pursuant to paragraph (a)(1)(i) of this

section.

(2) Copies of an application-as-filed

may be provided to any person, upon

written request accompanied by the fee

set forth in § 1.19(b)(1), without notice

to the applicant, if the application is

incorporated by reference in a U.S.

patent.

(3) Copies of (upon payment of the fee

set forth in § 1.19(b)(2)), and access to,

an application file wrapper and contents

may be provided to any person, upon

written request, without notice to the

applicant, when the application file is

available and:

(i) It has been determined by the

Commissioner to be necessary for the

proper conduct of business before the

Office or warranted by other special

circumstances;

(ii) The application is open to the

public as provided in § 1.11(b);

(iii) Written authority in that

application from the applicant, the

assignee of the application, or the

attorney or agent of record has been

granted; or

(iv) The application is abandoned, but

not if the application is in the file jacket

of a pending application under

§ 1.53(d), and is:

(A) Referred to in a U.S. patent;

(B) Referred to in a U.S. application

open to public inspection;

(C) An application which claims the

benefit of the filing date of a U.S.

application open to public inspection;

or

(D) An application in which the

applicant has filed an authorization to

lay open the complete application to the

public.

* * * * *

(f) Information as to the filing of an

application will be published in the

Official Gazette in accordance with

§ 1.47(a) and (b).

9. Section 1.16 is amended by revising

paragraphs (d) and (l) to read as follows:

§ 1.16 National application filing fees.

* * * * *

(d) In addition to the basic filing fee in an

original application, except provisional

applications, if the application contains, or is

amended to contain, a multiple dependent

claim(s), per application:

By a small entity (§ 1.9(f))......................135.00

By other than a small entity ..................270.00

* * * * *

(l) Surcharge for filing the basic filing fee

or cover sheet (§ 1.51(c)(1)) on a date later

than the filing date of the provisional

application:

By a small entity (§ 1.9(f))........................25.00

By other than a small entity ....................50.00

* * * * *

10. Section 1.17 is amended by

removing and reserving paragraphs (e)

through (g) and revising paragraphs (a)

through (d), (h), (i) and (q) to read as

follows:

§ 1.17 Patent application processing fees.

(a) Extension fees pursuant to § 1.136(a):

(1) For reply within first month:

By a small entity (§ 1.9(f))......................$55.00

By other than a small entity ..................110.00

(2) For reply within second month:

By a small entity (§ 1.9(f))......................200.00

By other than a small entity ..................400.00

(3) For reply within third month:

By a small entity (§ 1.9(f))......................475.00

By other than a small entity ..................950.00

(4) For reply within fourth month:

By a small entity (§ 1.9(f))......................755.00

By other than a small entity ...............1,510.00

(5) For reply within fifth month:

By a small entity (§ 1.9(f))...................1,030.00

By other than a small entity ...............2,060.00

(b) For filing a notice of appeal from the

examiner to the Board of Patent Appeals and

Interferences:

By a small entity (§ 1.9(f))......................155.00

By other than a small entity ..................310.00

(c) In addition to the fee for filing a notice

of appeal, for filing a brief in support of an

appeal:

By a small entity (§ 1.9(f))......................155.00

By other than a small entity ..................310.00

(d) For filing a request for an oral hearing

before the Board of Patent Appeals and

Interferences in an appeal under 35 U.S.C.

134:

By a small entity (§ 1.9(f))......................135.00

By other than a small entity ..................270.00

(e) [Reserved]

(f) [Reserved]

(g) [Reserved]

(h) For filing a petition to the

Commissioner under a section listed below

which refers to

this paragraph ........................................130.00

§ 1.182—for decision on a question not

specifically provided for.

§ 1.183—to suspend the rules.

§ 1.295—for review of refusal to publish a

statutory invention registration.

§ 1.377—for review of decision refusing to

accept and record payment of a maintenance

fee filed prior to expiration of a patent.

§ 1.378(e)—for reconsideration of decision

on petition refusing to accept delayed

payment of maintenance fee in an expired

patent.

§ 1.644(e)—for petition in an interference.

§ 1.644(f)—for request for reconsideration

of a decision on petition in an interference.

§ 1.666(c)—for late filing of interference

settlement agreement.

§ 5.12—for expedited handling of a foreign

filing license.

§ 5.15—for changing the scope of a license.

§ 5.25—for retroactive license.

(i) For filing a petition to the Commissioner

under a section listed below which refers to

this paragraph ........................................130.00

§ 1.12—for access to an assignment record.

§ 1.14—for access to an application.

§ 1.41—to supply the name or names of the

inventor or inventors after the filing date

without an oath or declaration as prescribed

by § 1.63, except in provisional applications.

§ 1.47—for filing by other than all the

inventors or a person not the inventor.

§ 1.48—for correction of inventorship,

except in provisional applications.

§ 1.53—to accord a filing date, except in

provisional applications.

§ 1.55—for entry of late priority papers.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53183

§ 1.59—for expungement and return of

information.

§ 1.84—for accepting color drawings or

photographs.

§ 1.91—for entry of a model or exhibit.

§ 1.97(d)—to consider an information

disclosure statement.

§ 1.102—to make an application special.

§ 1.103—to suspend action in application.

§ 1.177—for divisional reissues to issue

separately.

§ 1.312—for amendment after payment of

issue fee.

§ 1.313—to withdraw an application from

issue.

§ 1.314—to defer issuance of a patent.

§ 1.666(b)—for access to an interference

settlement agreement.

§ 3.81—for a patent to issue to assignee,

assignment submitted after payment of the

issue fee.

* * * * *

(q) For filing a petition to the

Commissioner under a section listed below

which refers to this paragraph.................50.00

§ 1.41—to supply the names or names of

the inventor or inventors after the filing date

without a cover sheet as prescribed by

§ 1.51(c)(1) in a provisional application.

§ 1.48—for correction of inventorship in a

provisional application.

§ 1.53—to accord a provisional application

a filing date or to convert a nonprovisional

application filed under § 1.53(b) to a

provisional application under § 1.53(c).

* * * * *

11. Section 1.21 is amended by

revising paragraphs (l) and (n) to read as

follows:

§ 1.21 Miscellaneous fees and charges.

* * * * *

(l) For processing and retaining any

application abandoned pursuant to § 1.53(f),

unless the required basic filing fee (§ 1.16)

has been paid .........................................130.00

* * * * *

(n) For handling an application in which

proceedings are terminated pursuant to

§ 1.53(e) ..................................................130.00

* * * * *

12. Section 1.26 is amended by

revising paragraph (a) to read as follows:

§ 1.26 Refunds.

(a) Any fee paid by actual mistake or

in excess of that required will be

refunded, but a mere change of purpose

after the payment of money, as when a

party desires to withdraw an

application, an appeal, or a request for

oral hearing, will not entitle a party to

demand such a return. Amounts of

twenty-five dollars or less will not be

returned unless specifically requested

within a reasonable time, nor will the

payer be notified of such amounts;

amounts over twenty-five dollars may

be returned by check or, if requested, by

credit to a deposit account.

* * * * *

13. Section 1.27 is revised to read as

follows:

§ 1.27 Statement of status as small entity.

(a) Any person seeking to establish

status as a small entity (§ 1.9(f) of this

part) for purposes of paying fees in an

application or a patent must file a

statement in the application or patent

prior to or with the first fee paid as a

small entity. Such a statement need only

be filed once in an application or patent

and remains in effect until changed.

(b) When establishing status as a

small entity pursuant to paragraph (a) of

this section, any statement filed on

behalf of an independent inventor must

be signed by the independent inventor

except as provided in § 1.42, § 1.43, or

§ 1.47 of this part and must state that the

inventor qualifies as an independent

inventor in accordance with § 1.9(c) of

this part. Where there are joint inventors

in an application, each inventor must

file a statement establishing status as an

independent inventor in order to qualify

as a small entity. Where any rights have

been assigned, granted, conveyed, or

licensed, or there is an obligation to

assign, grant, convey, or license, any

rights to a small business concern, a

nonprofit organization, or any other

individual, a statement must be filed by

the individual, the owner of the small

business concern, or an official of the

small business concern or nonprofit

organization empowered to act on

behalf of the small business concern or

nonprofit organization identifying their

status. For purposes of a statement

under this paragraph, a license to a

Federal agency resulting from a funding

agreement with that agency pursuant to

35 U.S.C. 202(c)(4) does not constitute

a license as set forth in § 1.9 of this part.

(c)(1) Any statement filed pursuant to

paragraph (a) of this section on behalf of

a small business concern must:

(i) Be signed by the owner or an

official of the small business concern

empowered to act on behalf of the

concern;

(ii) State that the concern qualifies as

a small business concern as defined in

§ 1.9(d); and

(iii) State that the exclusive rights to

the invention have been conveyed to

and remain with the small business

concern or, if the rights are not

exclusive, that all other rights belong to

small entities as defined in § 1.9.

(2) Where the rights of the small

business concern as a small entity are

not exclusive, a statement must also be

filed by the other small entities having

rights stating their status as such. For

purposes of a statement under this

paragraph, a license to a Federal agency

resulting from a funding agreement with

that agency pursuant to 35 U.S.C.

202(c)(4) does not constitute a license as

set forth in § 1.9 of this part.

(d)(1) Any statement filed pursuant to

paragraph (a) of this section on behalf of

a nonprofit organization must:

(i) Be signed by an official of the

nonprofit organization empowered to

act on behalf of the organization;

(ii) State that the organization

qualifies as a nonprofit organization as

defined in § 1.9(e) of this part specifying

under which one of § 1.9(e) (1), (2), (3),

or (4) of this part the organization

qualifies; and

(iii) State that exclusive rights to the

invention have been conveyed to and

remain with the organization or if the

rights are not exclusive that all other

rights belong to small entities as defined

in § 1.9 of this part.

(2) Where the rights of the nonprofit

organization as a small entity are not

exclusive, a statement must also be filed

by the other small entities having rights

stating their status as such. For purposes

of a statement under this paragraph, a

license to a Federal agency pursuant to

35 U.S.C. 202(c)(4) does not constitute

a conveyance of rights as set forth in

this paragraph.

14. Section 1.28 is amended by

revising paragraphs (a) and (c) to read as

follows:

§ 1.28 Effect on fees of failure to establish

status, or change status, as a small entity.

(a)(1) The failure to establish status as

a small entity (§§ 1.9(f) and 1.27 of this

part) in any application or patent prior

to paying, or at the time of paying, any

fee precludes payment of the fee in the

amount established for small entities. A

refund pursuant to § 1.26 of this part,

based on establishment of small entity

status, of a portion of fees timely paid

in full prior to establishing status as a

small entity may only be obtained if a

statement under § 1.27 and a request for

a refund of the excess amount are filed

within two months of the date of the

timely payment of the full fee. The twomonth time period is not extendable

under § 1.136. Status as a small entity is

waived for any fee by the failure to

establish the status prior to paying, at

the time of paying, or within two

months of the date of payment of, the

fee.

(2) Status as a small entity must be

specifically established in each

application or patent in which the status

is available and desired. Status as a

small entity in one application or patent

does not affect any other application or

patent, including applications or patents

which are directly or indirectly

dependent upon the application or

patent in which the status has been
53184 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

established. The refiling of an

application under § 1.53 as a

continuation, division, or continuationin-part (including a continued

prosecution application under

§ 1.53(d)), or the filing of a reissue

application requires a new

determination as to continued

entitlement to small entity status for the

continuing or reissue application. A

nonprovisional application claiming

benefit under 35 U.S.C. 119(e), 120, 121,

or 365(c) of a prior application, or a

reissue application may rely on a

statement filed in the prior application

or in the patent if the nonprovisional

application or the reissue application

includes a reference to the statement in

the prior application or in the patent or

includes a copy of the statement in the

prior application or in the patent and

status as a small entity is still proper

and desired. The payment of the small

entity basic statutory filing fee will be

treated as such a reference for purposes

of this section.

(3) Once status as a small entity has

been established in an application or

patent, the status remains in that

application or patent without the filing

of a further statement pursuant to § 1.27

of this part unless the Office is notified

of a change in status.

* * * * *

(c) If status as a small entity is

established in good faith, and fees as a

small entity are paid in good faith, in

any application or patent, and it is later

discovered that such status as a small

entity was established in error or that

through error the Office was not notified

of a change in status as required by

paragraph (b) of this section, the error

will be excused upon payment of the

deficiency between the amount paid

and the amount due. The deficiency is

based on the amount of the fee, for other

than a small entity, in effect at the time

the deficiency is paid in full.

* * * * *

15. Section 1.33 is amended by

revising paragraphs (a) and (b) to read

as follows:

§ 1.33 Correspondence respecting patent

applications, reexamination proceedings,

and other proceedings.

(a) The applicant, the assignee(s) of

the entire interest (see §§ 3.71 and 3.73)

or an attorney or agent of record (see

§ 1.34(b)) may specify a correspondence

address to which communications about

the application are to be directed. All

notices, official letters, and other

communications in the application will

be directed to the correspondence

address or, if no such correspondence

address is specified, to an attorney or

agent of record (see § 1.34(b)), or, if no

attorney or agent is of record, to the

applicant, so long as a post office

address has been furnished in the

application. Double correspondence

with an applicant and an attorney or

agent, or with more than one attorney or

agent, will not be undertaken. If more

than one attorney or agent is made of

record and a correspondence address

has not been specified, correspondence

will be held with the one last made of

record.

(b) Amendments and other papers

filed in the application must be signed

by:

(1) An attorney or agent of record

appointed in compliance with § 1.34(b);

(2) A registered attorney or agent not

of record who acts in a representative

capacity under the provisions of

§ 1.34(a);

(3) The assignee of record of the entire

interest, if there is an assignee of record

of the entire interest;

(4) An assignee of record of an

undivided part interest, and any

assignee(s) of the remaining interest and

any applicant retaining an interest, if

there is an assignee of record of an

undivided part interest; or

(5) All of the applicants (§§ 1.42, 1.43

and 1.47) for patent, unless there is an

assignee of record of the entire interest

and such assignee has taken action in

the application in accordance with

§§ 3.71 and 3.73.

* * * * *

16. Section 1.41 is amended by

revising paragraph (a) to read as follows:

§ 1.41 Applicant for patent.

(a) A patent is applied for in the name

or names of the actual inventor or

inventors.

(1) The inventorship of a

nonprovisional application is that

inventorship set forth in the oath or

declaration as prescribed by § 1.63,

except as provided for in § 1.53(d)(4)

and § 1.63(d). If an oath or declaration

as prescribed by § 1.63 is not filed

during the pendency of a

nonprovisional application, the

inventorship is that inventorship set

forth in the application papers filed

pursuant to § 1.53(b), unless a petition

under this paragraph accompanied by

the fee set forth in § 1.17(i) is filed

supplying or changing the name or

names of the inventor or inventors.

(2) The inventorship of a provisional

application is that inventorship set forth

in the cover sheet as prescribed by

§ 1.51(c)(1). If a cover sheet as

prescribed by § 1.51(c)(1) is not filed

during the pendency of a provisional

application, the inventorship is that

inventorship set forth in the application

papers filed pursuant to § 1.53(c), unless

a petition under this paragraph

accompanied by the fee set forth in

§ 1.17(q) is filed supplying or changing

the name or names of the inventor or

inventors.

(3) In a nonprovisional application

filed without an oath or declaration as

prescribed by § 1.63 or a provisional

application filed without a cover sheet

as prescribed by § 1.51(c)(1), the name

or names of person or persons believed

to be the actual inventor or inventors

should be provided for identification

purposes when the application papers

pursuant to § 1.53(b) or (c) are filed. If

no name of a person believed to be an

actual inventor is so provided, the

application should include an applicant

identifier consisting of alphanumeric

characters.

* * * * *

17. Section 1.47 is revised to read as

follows:

§ 1.47 Filing when an inventor refuses to

sign or cannot be reached.

(a) If a joint inventor refuses to join

in an application for patent or cannot be

found or reached after diligent effort,

the application may be made by the

other inventor on behalf of himself or

herself and the nonsigning inventor.

The oath or declaration in such an

application must be accompanied by a

petition including proof of the pertinent

facts, the fee set forth in § 1.17(i) and the

last known address of the nonsigning

inventor. The Patent and Trademark

Office shall, except in a continued

prosecution application under § 1.53(d),

forward notice of the filing of the

application to the nonsigning inventor

at said address and publish notice of the

filing of the application in the Official

Gazette. The nonsigning inventor may

subsequently join in the application on

filing an oath or declaration complying

with § 1.63.

(b) Whenever all of the inventors

refuse to execute an application for

patent, or cannot be found or reached

after diligent effort, a person to whom

an inventor has assigned or agreed in

writing to assign the invention or who

otherwise shows sufficient proprietary

interest in the matter justifying such

action may make application for patent

on behalf of and as agent for all the

inventors. The oath or declaration in

such an application must be

accompanied by a petition including

proof of the pertinent facts, a showing

that such action is necessary to preserve

the rights of the parties or to prevent

irreparable damage, the fee set forth in

§ 1.17(i), and the last known address of

all of the inventors. The Office shall,

except in a continued prosecution

application under § 1.53(d), forward
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53185

notice of the filing of the application to

all of the inventors at the addresses

stated in the application and publish

notice of the filing of the application in

the Official Gazette. An inventor may

subsequently join in the application on

filing an oath or declaration complying

with § 1.63.

18. Section 1.48 is revised to read as

follows:

§ 1.48 Correction of inventorship in a

patent application, other than a reissue

application.

(a) If the inventive entity is set forth

in error in an executed § 1.63 oath or

declaration in an application, other than

a reissue application, and such error

arose without any deceptive intention

on the part of the person named as an

inventor in error or on the part of the

person who through error was not

named as an inventor, the application

may be amended to name only the

actual inventor or inventors. When the

application is involved in an

interference, the amendment must

comply with the requirements of this

section and must be accompanied by a

motion under § 1.634. Such amendment

must be accompanied by:

(1) A petition including a statement

from each person being added as an

inventor and from each person being

deleted as an inventor that the error in

inventorship occurred without

deceptive intention on his or her part;

(2) An oath or declaration by the

actual inventor or inventors as required

by § 1.63 or as permitted by §§ 1.42, 1.43

or 1.47;

(3) The fee set forth in § 1.17(i); and

(4) If an assignment has been executed

by any of the original named inventors,

the written consent of the assignee (see

§ 3.73(b)).

(b) If the correct inventors are named

in a nonprovisional application, other

than a reissue application, and the

prosecution of the application results in

the amendment or cancellation of

claims so that fewer than all of the

currently named inventors are the actual

inventors of the invention being claimed

in the application, an amendment must

be filed deleting the name or names of

the person or persons who are not

inventors of the invention being

claimed. When the application is

involved in an interference, the

amendment must comply with the

requirements of this section and must be

accompanied by a motion under § 1.634.

Such amendment must be accompanied

by:

(1) A petition including a statement

identifying each named inventor who is

being deleted and acknowledging that

the inventor’s invention is no longer

being claimed in the application; and

(2) The fee set forth in § 1.17(i).

(c) If a nonprovisional application,

other than a reissue application,

discloses unclaimed subject matter by

an inventor or inventors not named in

the application, the application may be

amended to add claims to the subject

matter and name the correct inventors

for the application. When the

application is involved in an

interference, the amendment must

comply with the requirements of this

section and must be accompanied by a

motion under § 1.634. Such amendment

must be accompanied by:

(1) A petition including a statement

from each person being added as an

inventor that the amendment is

necessitated by amendment of the

claims and that the inventorship error

occurred without deceptive intention on

his or her part;

(2) An oath or declaration by the

actual inventor or inventors as required

by § 1.63 or as permitted by §§ 1.42, 1.43

or 1.47;

(3) The fee set forth in § 1.17(i); and

(4) If an assignment has been executed

by any of the original named inventors,

the written consent of the assignee (see

§ 3.73(b)).

(d) If the name or names of an

inventor or inventors were omitted in a

provisional application through error

without any deceptive intention on the

part of the omitted inventor or

inventors, the provisional application

may be amended to add the name or

names of the omitted inventor or

inventors. Such amendment must be

accompanied by:

(1) A petition including a statement

that the inventorship error occurred

without deceptive intention on the part

of the omitted inventor or inventors;

and

(2) The fee set forth in § 1.17(q).

(e) If a person or persons were named

as an inventor or inventors in a

provisional application through error

without any deceptive intention on the

part of such person or persons, an

amendment may be filed in the

provisional application deleting the

name or names of the person or persons

who were erroneously named. Such

amendment must be accompanied by:

(1) A petition including a statement

by the person or persons whose name or

names are being deleted that the

inventorship error occurred without

deceptive intention on the part of such

person or persons;

(2) The fee set forth in § 1.17(q); and

(3) If an assignment has been executed

by any of the original named inventors,

the written consent of the assignee (see

§ 3.73(b)).

(f)(1) If the correct inventor or

inventors are not named on filing a

nonprovisional application under

§ 1.53(b) without an executed oath or

declaration under § 1.63, the later

submission of an executed oath or

declaration under § 1.63 during the

pendency of the application will act to

correct the earlier identification of

inventorship.

(2) If the correct inventor or inventors

are not named on filing a provisional

application without a cover sheet under

§ 1.51(c)(1), the later submission of a

cover sheet under § 1.51(c)(1) during the

pendency of the application will act to

correct the earlier identification of

inventorship.

(g) The Office may require such other

information as may be deemed

appropriate under the particular

circumstances surrounding the

correction of inventorship.

19. Section 1.51 is revised to read as

follows:

§ 1.51 General requisites of an application.

(a) Applications for patents must be

made to the Commissioner of Patents

and Trademarks.

(b) A complete application filed under

§ 1.53(b) comprises:

(1) A specification as prescribed by 35

U.S.C. 112, including a claim or claims,

see §§ 1.71 to 1.77;

(2) An oath or declaration, see § 1.63

and § 1.68;

(3) Drawings, when necessary, see

§§ 1.81 to 1.85; and

(4) The prescribed filing fee, see

§ 1.16.

(c) A complete provisional

application filed under § 1.53(c)

comprises:

(1) A cover sheet identifying:

(i) The application as a provisional

application,

(ii) The name or names of the inventor

or inventors, (see § 1.41(a)(2)),

(iii) The residence of each named

inventor,

(iv) The title of the invention,

(v) The name and registration number

of the attorney or agent (if applicable),

(vi) The docket number used by the

person filing the application to identify

the application (if applicable),

(vii) The correspondence address, and

(viii) The name of the U.S.

Government agency and Government

contract number (if the invention was

made by an agency of the U.S.

Government or under a contract with an

agency of the U.S. Government);

(2) A specification as prescribed by

the first paragraph of 35 U.S.C. 112, see

§ 1.71;
53186 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

(3) Drawings, when necessary, see

§§ 1.81 to 1.85; and

(4) The prescribed filing fee, see

§ 1.16.

(d) Applicants are encouraged to file

an information disclosure statement in

nonprovisional applications. See § 1.97

and § 1.98. No information disclosure

statement may be filed in a provisional

application.

20. Section 1.52 is amended by

revising paragraphs (a), (c) and (d) to

read as follows:

§ 1.52 Language, paper, writing, margins.

(a) The application, any amendments

or corrections thereto, and the oath or

declaration must be in the English

language except as provided for in

§ 1.69 and paragraph (d) of this section,

or be accompanied by a translation of

the application and a translation of any

corrections or amendments into the

English language together with a

statement that the translation is

accurate. All papers which are to

become a part of the permanent records

of the Patent and Trademark Office must

be legibly written either by a typewriter

or mechanical printer in permanent

dark ink or its equivalent in portrait

orientation on flexible, strong, smooth,

non-shiny, durable, and white paper.

All of the application papers must be

presented in a form having sufficient

clarity and contrast between the paper

and the writing thereon to permit the

direct reproduction of readily legible

copies in any number by use of

photographic, electrostatic, photo-offset,

and microfilming processes and

electronic reproduction by use of digital

imaging and optical character

recognition. If the papers are not of the

required quality, substitute typewritten

or mechanically printed papers of

suitable quality will be required. See

§ 1.125 for filing substitute typewritten

or mechanically printed papers

constituting a substitute specification

when required by the Office.

* * * * *

(c) Any interlineation, erasure,

cancellation or other alteration of the

application papers filed should be made

on or before the signing of any

accompanying oath or declaration

pursuant to § 1.63 referring to those

application papers and should be dated

and initialed or signed by the applicant

on the same sheet of paper. Application

papers containing alterations made after

the signing of an oath or declaration

referring to those application papers

must be supported by a supplemental

oath or declaration under § 1.67(c). After

the signing of the oath or declaration

referring to the application papers,

amendments may only be made in the

manner provided by § 1.121.

(d) An application may be filed in a

language other than English. An English

translation of the non-English-language

application, a statement that the

translation is accurate, and the fee set

forth in § 1.17(k) are required to be filed

with the application or within such time

as may be set by the Office.

21. Section 1.53 is revised to read as

follows:

§ 1.53 Application number, filing date, and

completion of application.

(a) Application number. Any papers

received in the Patent and Trademark

Office which purport to be an

application for a patent will be assigned

an application number for identification

purposes.

(b) Application filing requirements—

Nonprovisional application. The filing

date of an application for patent filed

under this section, except for a

provisional application under paragraph

(c) of this section or a continued

prosecution application under

paragraph (d) of this section, is the date

on which a specification as prescribed

by 35 U.S.C. 112 containing a

description pursuant to § 1.71 and at

least one claim pursuant to § 1.75, and

any drawing required by § 1.81(a) are

filed in the Patent and Trademark

Office. No new matter may be

introduced into an application after its

filing date. A continuing application,

which may be a continuation,

divisional, or continuation-in-part

application, may be filed under the

conditions specified in 35 U.S.C. 120,

121 or 365(c) and § 1.78(a).

(1) A continuation or divisional

application that names as inventors the

same or fewer than all of the inventors

named in the prior application may be

filed under this paragraph or paragraph

(d) of this section.

(2) A continuation-in-part application

(which may disclose and claim subject

matter not disclosed in the prior

application) or a continuation or

divisional application naming an

inventor not named in the prior

application must be filed under this

paragraph.

(c) Application filing requirements—

Provisional application. The filing date

of a provisional application is the date

on which a specification as prescribed

by the first paragraph of 35 U.S.C. 112,

and any drawing required by § 1.81(a)

are filed in the Patent and Trademark

Office. No amendment, other than to

make the provisional application

comply with the patent statute and all

applicable regulations, may be made to

the provisional application after the

filing date of the provisional

application.

(1) A provisional application must

also include the cover sheet required by

§ 1.51(c)(1) or a cover letter identifying

the application as a provisional

application. Otherwise, the application

will be treated as an application filed

under paragraph (b) of this section.

(2) An application for patent filed

under paragraph (b) of this section may

be converted to a provisional

application and be accorded the original

filing date of the application filed under

paragraph (b) of this section,

(i) Provided that a petition requesting

the conversion, with the fee set forth in

§ 1.17(q), is filed prior to the earliest of:

(A) Abandonment of the application

filed under paragraph (b) of this section;

(B) Payment of the issue fee on the

application filed under paragraph (b) of

this section;

(C) Expiration of twelve months after

the filing date of the application filed

under paragraph (b) of this section; or

(D) The filing of a request for a

statutory invention registration under

§ 1.293 in the application filed under

paragraph (b) of this section.

(ii) The grant of any such petition will

not entitle applicant to a refund of the

fees which were properly paid in the

application filed under paragraph (b) of

this section.

(3) A provisional application is not

entitled to the right of priority under 35

U.S.C. 119 or 365(a) or § 1.55, or to the

benefit of an earlier filing date under 35

U.S.C. 120, 121 or 365(c) or § 1.78 of any

other application. No claim for priority

under § 1.78(a)(3) may be made in a

design application based on a

provisional application. No request

under § 1.293 for a statutory invention

registration may be filed in a provisional

application. The requirements of

§§ 1.821 through 1.825 regarding

application disclosures containing

nucleotide and/or amino acid sequences

are not mandatory for provisional

applications.

(d) Application filing requirements—

Continued prosecution (nonprovisional)

application. (1) A continuation or

divisional application (but not a

continuation-in-part) of a prior

nonprovisional application may be filed

as a continued prosecution application

under this paragraph, provided that:

(i) The prior nonprovisional

application is either:

(A) Complete as defined by § 1.51(b)

and filed on or after June 8, 1995; or

(B) The national stage of an

international application in compliance

with 35 U.S.C. 371 and filed on or after

June 8, 1995; and
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53187

(ii) 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(b)(5) is granted in the

prior application;

(B) Abandonment of the prior

application; or

(C) Termination of proceedings on the

prior application.

(2) The filing date of a continued

prosecution application is the date on

which a request on a separate paper for

an application under this paragraph is

filed. An application filed under this

paragraph:

(i) Must identify the prior application;

(ii) Discloses and claims only subject

matter disclosed in the prior

application;

(iii) Names as inventors the same

inventors named in the prior

application on the date the application

under this paragraph was filed, except

as provided in paragraph (d)(4) of this

section;

(iv) Includes the request for an

application under this paragraph, will

utilize the file jacket and contents of the

prior application, including the

specification, drawings and oath or

declaration from the prior application,

to constitute the new application, and

will be assigned the application number

of the prior application for

identification purposes; and

(v) Is a request to expressly abandon

the prior application as of the filing date

of the request for an application under

this paragraph.

(3) The filing fee for a continued

prosecution application filed under this

paragraph is:

(i) The basic filing fee as set forth in

§ 1.16; and

(ii) Any additional § 1.16 fee due

based on the number of claims

remaining in the application after entry

of any amendment accompanying the

request for an application under this

paragraph and entry of any amendments

under § 1.116 unentered in the prior

application which applicant has

requested to be entered in the continued

prosecution application.

(4) An application filed under this

paragraph may be filed by fewer than all

the inventors named in the prior

application, provided that the request

for an application under this paragraph

when filed is accompanied by a

statement requesting deletion of the

name or names of the person or persons

who are not inventors of the invention

being claimed in the new application.

No person may be named as an inventor

in an application filed under this

paragraph who was not named as an

inventor in the prior application on the

date the application under this

paragraph was filed, except by way of a

petition under § 1.48.

(5) Any new change must be made in

the form of an amendment to the prior

application as it existed prior to the

filing of an application under this

paragraph. No amendment in an

application under this paragraph (a

continued prosecution application) may

introduce new matter or matter that

would have been new matter in the

prior application. Any new specification

filed with the request for an application

under this paragraph will not be

considered part of the original

application papers, but will be treated

as a substitute specification in

accordance with § 1.125.

(6) The filing of a continued

prosecution application under this

paragraph will be construed to include

a waiver of confidentiality by the

applicant under 35 U.S.C. 122 to the

extent that any member of the public,

who is entitled under the provisions of

§ 1.14 to access to, copies of, or

information concerning either the prior

application or any continuing

application filed under the provisions of

this paragraph, may be given similar

access to, copies of, or similar

information concerning the other

application or applications in the file

jacket.

(7) A request for an application under

this paragraph is the specific reference

required by 35 U.S.C. 120 to every

application assigned the application

number identified in such request. No

amendment in an application under this

paragraph may delete this specific

reference to any prior application.

(8) In addition to identifying the

application number of the prior

application, applicant should furnish in

the request for an application under this

paragraph the following information

relating to the prior application to the

best of his or her ability:

(i) Title of invention;

(ii) Name of applicant(s); and

(iii) Correspondence address.

(9) Envelopes containing only

requests and fees for filing an

application under this paragraph should

be marked ‘‘Box CPA.’’ Requests for an

application under this paragraph filed

by facsimile transmission should be

clearly marked ‘‘Box CPA.’’

(e) Failure to meet filing date

requirements. (1) If an application

deposited under paragraph (b), (c), or (d)

of this section does not meet the

requirements of such paragraph to be

entitled to a filing date, applicant will

be so notified, if a correspondence

address has been provided, and given a

time period within which to correct the

filing error.

(2) Any request for review of a

notification pursuant to paragraph (e)(1)

of this section, or a notification that the

original application papers lack a

portion of the specification or

drawing(s), must be by way of a petition

pursuant to this paragraph. Any petition

under this paragraph must be

accompanied by the fee set forth in

§ 1.17(i) in an application filed under

paragraphs (b) or (d) of this section, and

the fee set forth in § 1.17(q) in an

application filed under paragraph (c) of

this section. In the absence of a timely

(§ 1.181(f)) petition pursuant to this

paragraph, the filing date of an

application in which the applicant was

notified of a filing error pursuant to

paragraph (e)(1) of this section will be

the date the filing error is corrected.

(3) If an applicant is notified of a

filing error pursuant to paragraph (e)(1)

of this section, but fails to correct the

filing error within the given time period

or otherwise timely (§ 1.181(f)) take

action pursuant to this paragraph,

proceedings in the application will be

considered terminated. Where

proceedings in an application are

terminated pursuant to this paragraph,

the application may be disposed of, and

any filing fees, less the handling fee set

forth in § 1.21(n), will be refunded.

(f) Completion of application

subsequent to filing—Nonprovisional

(including continued prosecution)

application. If an application which has

been accorded a filing date pursuant to

paragraph (b) of this section, including

a continuation, divisional, or

continuation-in-part application, does

not include the appropriate filing fee or

an oath or declaration by the applicant

pursuant to § 1.63 or § 1.175, or, if an

application which has been accorded a

filing date pursuant to paragraph (d) of

this section does not include the

appropriate filing fee, applicant will be

so notified, if a correspondence address

has been provided, and given a period

of time within which to file the fee, oath

or declaration, and the surcharge as set

forth in § 1.16(e) in order to prevent

abandonment of the application. See

§ 1.63(d) concerning the submission of a

copy of the oath or declaration from the

prior application for a continuation or

divisional application. If the required

filing fee is not timely paid, or if the

processing and retention fee set forth in

§ 1.21(l) is not paid within one year of

the date of mailing of the notification

required by this paragraph, the

application may be disposed of. The

notification pursuant to this paragraph

may be made simultaneously with any

notification pursuant to paragraph (e) of
53188 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

this section. If no correspondence

address is included in the application,

applicant has two months from the

filing date to file the basic filing fee, the

oath or declaration in an application

under paragraph (b) of this section, and

the surcharge as set forth in § 1.16(e) in

order to prevent abandonment of the

application; or, if no basic filing fee has

been paid, one year from the filing date

to pay the processing and retention fee

set forth in § 1.21(l) to prevent disposal

of the application.

(g) Completion of application

subsequent to filing—Provisional

application. If a provisional application

which has been accorded a filing date

pursuant to paragraph (c) of this section

does not include the appropriate filing

fee or the cover sheet required by

§ 1.51(c)(1), applicant will be so

notified, if a correspondence address

has been provided, and given a period

of time within which to file the fee,

cover sheet, and the surcharge as set

forth in § 1.16(l) in order to prevent

abandonment of the application. If the

required filing fee is not timely paid, the

application may be disposed of. The

notification pursuant to this paragraph

may be made simultaneously with any

notification pursuant to paragraph (e) of

this section. If no correspondence

address is included in the application,

applicant has two months from the

filing date to file the basic filing fee,

cover sheet, and the surcharge as set

forth in § 1.16(l) in order to prevent

abandonment of the application.

(h) Subsequent treatment of

application—Nonprovisional (including

continued prosecution) application. An

application for a patent filed under

paragraphs (b) or (d) of this section will

not be placed on the files for

examination until all its required parts,

complying with the rules relating

thereto, are received, except that certain

minor informalities may be waived

subject to subsequent correction

whenever required.

(i) Subsequent treatment of

application—Provisional application. A

provisional application for a patent filed

under paragraph (c) of this section will

not be placed on the files for

examination and will become

abandoned no later than twelve months

after its filing date pursuant to 35 U.S.C.

111(b)(1).

(j) Filing date of international

application. The filing date of an

international application designating

the United States of America is treated

as the filing date in the United States of

America under PCT Article 11(3),

except as provided in 35 U.S.C. 102(e).

22. Section 1.54 is revised to read as

follows:

§ 1.54 Parts of application to be filed

together; filing receipt.

(a) It is desirable that all parts of the

complete application be deposited in

the Office together; otherwise, a letter

must accompany each part, accurately

and clearly connecting it with the other

parts of the application. See § 1.53 (f)

and (g) with regard to completion of an

application.

(b) Applicant will be informed of the

application number and filing date by a

filing receipt, unless the application is

an application filed under § 1.53(d).

23. Section 1.55 is amended by

revising paragraph (a) to read as follows:

§ 1.55 Claim for foreign priority.

(a) An applicant in a nonprovisional

application may claim the benefit of the

filing date of one or more prior foreign

applications under the conditions

specified in 35 U.S.C. 119 (a) through

(d) and 172. The claim to priority need

be in no special form and may be made

by the attorney or agent if the foreign

application is referred to in the oath or

declaration as required by § 1.63. The

claim for priority and the certified copy

of the foreign application specified in 35

U.S.C. 119(b) must be filed in the case

of an interference (§ 1.630), when

necessary to overcome the date of a

reference relied upon by the examiner,

when specifically required by the

examiner, and in all other situations,

before the patent is granted. If the claim

for priority or the certified copy of the

foreign application is filed after the date

the issue fee is paid, it must be

accompanied by a petition requesting

entry and by the fee set forth in § 1.17(i).

If the certified copy is not in the English

language, a translation need not be filed

except in the case of interference; or

when necessary to overcome the date of

a reference relied upon by the examiner;

or when specifically required by the

examiner, in which event an English

language translation must be filed

together with a statement that the

translation of the certified copy is

accurate.

* * * * *

24. Section 1.59 is revised to read as

follows:

§ 1.59 Expungement of information or

copy of papers in application file.

(a) (1) Information in an application

will not be expunged and returned,

except as provided in paragraph (b) of

this section. See § 1.618 for return of

unauthorized and improper papers in

interferences.

(2) Information forming part of the

original disclosure (i.e., written

specification including the claims,

drawings, and any preliminary

amendment specifically incorporated

into an executed oath or declaration

under §§ 1.63 and 1.175) will not be

expunged from the application file.

(b) Information, other than what is

excluded by paragraph (a)(2) of this

section, may be requested to be

expunged and returned to applicant

upon petition under this paragraph and

payment of the petition fee set forth in

§ 1.17(i). Any petition to expunge and

return information from an application

must establish to the satisfaction of the

Commissioner that the return of the

information is appropriate.

(c) Upon request by an applicant and

payment of the fee specified in § 1.19(b),

the Office will furnish copies of an

application, unless the application has

been disposed of (see § 1.53 (e), (f) and

(g)). The Office cannot provide or certify

copies of an application that has been

disposed of.

§ 1.60 [Removed and reserved]

25. Section 1.60 is removed and

reserved.

§ 1.62 [Removed and reserved]

26. Section 1.62 is removed and

reserved.

27. Section 1.63 is amended by

revising paragraphs (a) and (d) and

adding a paragraph (e) to read as

follows:

§ 1.63 Oath or declaration.

(a) An oath or declaration filed under

§ 1.51(b)(2) as a part of an application

must:

(1) Be executed in accordance with

either § 1.66 or § 1.68;

(2) Identify the specification to which

it is directed;

(3) Identify each inventor by: full

name, including the family name, and at

least one given name without

abbreviation together with any other

given name or initial, and the residence,

post office address and country of

citizenship of each inventor; and

(4) State whether the inventor is a sole

or joint inventor of the invention

claimed.

* * * * *

(d)(1) A newly executed oath or

declaration is not required under

§ 1.51(b)(2) and § 1.53(f) in a

continuation or divisional application,

provided that:

(i) The prior nonprovisional

application contained an oath or

declaration as prescribed by paragraphs

(a) through (c) of this section;

(ii) The continuation or divisional

application was filed by all or by fewer

than all of the inventors named in the

prior application;

(iii) The specification and drawings

filed in the continuation or divisional
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53189

application contain no matter that

would have been new matter in the

prior application; and

(iv) A copy of the executed oath or

declaration filed in the prior

application, showing the signature or an

indication thereon that it was signed, is

submitted for the continuation or

divisional application.

(2) The copy of the executed oath or

declaration submitted under this

paragraph for a continuation or

divisional application must be

accompanied by a statement requesting

the deletion of the name or names of the

person or persons who are not inventors

in the continuation or divisional

application.

(3) Where the executed oath or

declaration of which a copy is

submitted for a continuation or

divisional application was originally

filed in a prior application accorded

status under § 1.47, the copy of the

executed oath or declaration for such

prior application must be accompanied

by:

(i) A copy of the decision granting a

petition to accord § 1.47 status to the

prior application, unless all inventors or

legal representatives have filed an oath

or declaration to join in an application

accorded status under § 1.47 of which

the continuation or divisional

application claims a benefit under 35

U.S.C. 120, 121, or 365(c); and

(ii) If one or more inventor(s) or legal

representative(s) who refused to join in

the prior application or could not be

found or reached has subsequently

joined in the prior application or

another application of which the

continuation or divisional application

claims a benefit under 35 U.S.C. 120,

121, or 365(c), a copy of the

subsequently executed oath(s) or

declaration(s) filed by the inventor or

legal representative to join in the

application.

(4) Where the power of attorney (or

authorization of agent) or

correspondence address was changed

during the prosecution of the prior

application, the change in power of

attorney (or authorization of agent) or

correspondence address must be

identified in the continuation or

divisional application. Otherwise, the

Office may not recognize in the

continuation or divisional application

the change of power of attorney (or

authorization of agent) or

correspondence address during the

prosecution of the prior application.

(5) A newly executed oath or

declaration must be filed in a

continuation or divisional application

naming an inventor not named in the

prior application.

(e) A newly executed oath or

declaration must be filed in any

continuation-in-part application, which

application may name all, more, or

fewer than all of the inventors named in

the prior application. The oath or

declaration in any continuation-in-part

application must also state that the

person making the oath or declaration

acknowledges the duty to disclose to the

Office all information known to the

person to be material to patentability as

defined in § 1.56 which became

available between the filing date of the

prior application and the national or

PCT international filing date of the

continuation-in-part application.

28. Section 1.67 is amended by

revising paragraph (b) to read as follows:

§ 1.67 Supplemental oath or declaration.

* * * * *

(b) A supplemental oath or

declaration meeting the requirements of

§ 1.63 must be filed when a claim is

presented for matter originally shown or

described but not substantially

embraced in the statement of invention

or claims originally presented or when

an oath or declaration submitted in

accordance with § 1.53(f) after the filing

of the specification and any required

drawings specifically and improperly

refers to an amendment which includes

new matter. No new matter may be

introduced into a nonprovisional

application after its filing date even if a

supplemental oath or declaration is

filed. In proper situations, the oath or

declaration here required may be made

on information and belief by an

applicant other than the inventor.

* * * * *

29. Section 1.69 is amended by

revising paragraph (b) to read as follows:

§ 1.69 Foreign language oaths and

declarations.

* * * * *

(b) Unless the text of any oath or

declaration in a language other than

English is a form provided or approved

by the Patent and Trademark Office, it

must be accompanied by an English

translation together with a statement

that the translation is accurate, except

that in the case of an oath or declaration

filed under § 1.63, the translation may

be filed in the Office no later than two

months from the date applicant is

notified to file the translation.

30. Section 1.78 is amended by

revising paragraph (a) to read as follows:

§ 1.78 Claiming benefit of earlier filing date

and cross-references to other applications.

(a)(1) A nonprovisional application

may claim an invention disclosed in one

or more prior filed copending

nonprovisional applications or

copending international applications

designating the United States of

America. In order for a nonprovisional

application to claim the benefit of a

prior filed copending nonprovisional

application or copending international

application designating the United

States of America, each prior

application must name as an inventor at

least one inventor named in the later

filed nonprovisional application and

disclose the named inventor’s invention

claimed in at least one claim of the later

filed nonprovisional application in the

manner provided by the first paragraph

of 35 U.S.C. 112. In addition, each prior

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) Complete as set forth in § 1.51(b);

or

(iii) Entitled to a filing date as set

forth in § 1.53(b) or § 1.53(d) and

include the basic filing fee set forth in

§ 1.16; or

(iv) Entitled to a filing date as set forth

in § 1.53(b) and have paid therein the

processing and retention fee set forth in

§ 1.21(l) within the time period set forth

in § 1.53(f).

(2) Except for a continued prosecution

application filed under § 1.53(d), any

nonprovisional application claiming the

benefit of one or more prior filed

copending nonprovisional applications

or international applications designating

the United States of America must

contain or be amended to contain in the

first sentence of the specification

following the title a reference to each

such prior application, identifying it by

application number (consisting of the

series code and serial number) or

international application number and

international filing date and indicating

the relationship of the applications. The

request for a continued prosecution

application under § 1.53(d) is the

specific reference required by 35 U.S.C.

120 to the prior application. The

identification of an application by

application number under this section is

the specific reference required by 35

U.S.C. 120 to every application assigned

that application number. Crossreferences to other related applications

may be made when appropriate (see

§ 1.14(a)).

(3) A nonprovisional application

other than for a design patent may claim

an invention disclosed in one or more

prior filed copending provisional

applications. Since a provisional

application can be pending for no more

than twelve months, the last day of

pendency may occur on a Saturday,
53190 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

Sunday, or Federal holiday within the

District of Columbia which for

copendency would require the

nonprovisional application to be filed

on or prior to the Saturday, Sunday, or

Federal holiday. In order for a

nonprovisional application to claim the

benefit of one or more prior filed

copending provisional applications,

each prior provisional application must

name as an inventor at least one

inventor named in the later filed

nonprovisional application and disclose

the named inventor’s invention claimed

in at least one claim of the later filed

nonprovisional application in the

manner provided by the first paragraph

of 35 U.S.C. 112. In addition, each prior

provisional application must be:

(i) Complete as set forth in § 1.51(c);

or

(ii) Entitled to a filing date as set forth

in § 1.53(c) and include the basic filing

fee set forth in § 1.16(k).

(4) Any nonprovisional application

claiming the benefit of one or more prior

filed copending provisional applications

must contain or be amended to contain

in the first sentence of the specification

following the title a reference to each

such prior provisional application,

identifying it as a provisional

application, and including the

provisional application number

(consisting of series code and serial

number).

* * * * *

31. Section 1.84 is amended by

revising paragraphs (a)(2)(i), (b), (c) and

(g) to read as follows:

§ 1.84 Standards for drawings.

(a) * * *

(2) * * *

(i) The fee set forth in § 1.17(i);

* * * * *

(b) Photographs—(1) Black and white.

Photographs are not ordinarily

permitted in utility patent applications.

However, the Office will accept

photographs in utility patent

applications only after the granting of a

petition filed under this paragraph

which requests that photographs be

accepted. Any such petition must

include the following:

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

(ii) Three (3) sets of photographs.

Photographs must either be developed

on double weight photographic paper or

be permanently mounted on bristol

board. The photographs must be of

sufficient quality so that all details in

the drawings are reproducible in the

printed patent.

(2) Color. Color photographs will be

accepted in utility patent applications if

the conditions for accepting color

drawings have been satisfied. See

paragraph (a)(2) of this section.

(c) Identification of drawings.

Identifying indicia, if provided, should

include the application number or the

title of the invention, inventor’s name,

docket number (if any), and the name

and telephone number of a person to

call if the Office is unable to match the

drawings to the proper application. This

information should be placed on the

back of each sheet of drawings a

minimum distance of 1.5 cm. (5⁄8 inch)

down from the top of the page. In

addition, a reference to the application

number, or, if an application number

has not been assigned, the inventor’s

name, may be included in the left-hand

corner, provided that the reference

appears within 1.5 cm. (5⁄8 inch) from

the top of the sheet.

* * * * *

(g) Margins. The sheets must not

contain frames around the sight (i.e., the

usable surface), but should have scan

target points (i.e., cross-hairs) printed on

two catercorner margin corners. Each

sheet must include a top margin of at

least 2.5 cm. (1 inch), a left side margin

of at least 2.5 cm. (1 inch), a right side

margin of at least 1.5 cm. (5⁄8 inch), and

a bottom margin of at least 1.0 cm. (3⁄8

inch), thereby leaving a sight no greater

than 17.0 cm. by 26.2 cm. on 21.0 cm.

by 29.7 cm. (DIN size A4) drawing

sheets, and a sight no greater than 17.6

cm. by 24.4 cm. (615⁄16 by 95⁄8 inches) on

21.6 cm. by 27.9 cm. (81⁄2 by 11 inch)

drawing sheets.

* * * * *

32. Section 1.91 is revised to read as

follows:

§ 1.91 Models or exhibits not generally

admitted as part of application or patent.

(a) A model or exhibit will not be

admitted as part of the record of an

application unless it:

(1) Substantially conforms to the

requirements of § 1.52 or § 1.84;

(2) Is specifically required by the

Office; or

(3) Is filed with a petition under this

section including:

(i) The petition fee as set forth in

§ 1.17(i); and

(ii) An explanation of why entry of

the model or exhibit in the file record

is necessary to demonstrate

patentability.

(b) Notwithstanding the provisions of

paragraph (a) of this section, a model,

working model, or other physical

exhibit may be required by the Office if

deemed necessary for any purpose in

examination of the application.

§ 1.92 [Removed and reserved]

33. Section 1.92 is removed and

reserved.

34. Section 1.97 is amended by

revising paragraphs (c) through (e) to

read as follows:

§ 1.97 Filing of information disclosure

statement.

* * * * *

(c) An information disclosure

statement shall be considered by the

Office if filed by the applicant after the

period specified in paragraph (b) of this

section, provided that the information

disclosure statement is filed before the

mailing date of either a final action

under § 1.113, or a notice of allowance

under § 1.311, whichever occurs first,

and is accompanied by either:

(1) A statement as specified in

paragraph (e) of this section; or

(2) The fee set forth in § 1.17(p).

(d) An information disclosure

statement shall be considered by the

Office if filed by the applicant after the

period specified in paragraph (c) of this

section, provided that the information

disclosure statement is filed on or before

payment of the issue fee and is

accompanied by:

(1) A statement as specified in

paragraph (e) of this section;

(2) A petition requesting

consideration of the information

disclosure statement; and

(3) The petition fee set forth in

§ 1.17(i).

(e) A statement under this section

must state either:

(1) That each item of information

contained in the information disclosure

statement was cited in a communication

from a foreign patent office in a

counterpart foreign application not

more than three months prior to the

filing of the information disclosure

statement; or

(2) That no item of information

contained in the information disclosure

statement was cited in a communication

from a foreign patent office in a

counterpart foreign application, and, to

the knowledge of the person signing the

statement after making reasonable

inquiry, no item of information

contained in the information disclosure

statement was known to any individual

designated in § 1.56(c) more than three

months prior to the filing of the

information disclosure statement.

* * * * *

§ 1.101 [Removed and reserved]

35. Section 1.101 is removed and

reserved.

36. Section 1.102 is amended by

revising paragraph (a) to read as follows:
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53191

§ 1.102 Advancement of examination.

(a) Applications will not be advanced

out of turn for examination or for further

action except as provided by this part,

or upon order of the Commissioner to

expedite the business of the Office, or

upon filing of a request under paragraph

(b) of this section or upon filing a

petition under paragraphs (c) or (d) of

this section with a showing which, in

the opinion of the Commissioner, will

justify so advancing it.

* * * * *

37. Section 1.103 is amended by

revising paragraph (a) to read as follows:

§ 1.103 Suspension of action.

(a) Suspension of action by the Office

will be granted for good and sufficient

cause and for a reasonable time

specified upon petition by the applicant

and, if such cause is not the fault of the

Office, the payment of the fee set forth

in § 1.17(i). Action will not be

suspended when a reply by the

applicant to an Office action is required.

* * * * *

38. Section 1.104 is revised to read as

follows:

§ 1.104 Nature of examination.

(a) Examiner’s action. (1) On taking

up an application for examination or a

patent in a reexamination proceeding,

the examiner shall make a thorough

study thereof and shall make a thorough

investigation of the available prior art

relating to the subject matter of the

claimed invention. The examination

shall be complete with respect both to

compliance of the application or patent

under reexamination with the

applicable statutes and rules and to the

patentability of the invention as

claimed, as well as with respect to

matters of form, unless otherwise

indicated.

(2) The applicant, or in the case of a

reexamination proceeding, both the

patent owner and the requester, will be

notified of the examiner’s action. The

reasons for any adverse action or any

objection or requirement will be stated

and such information or references will

be given as may be useful in aiding the

applicant, or in the case of a

reexamination proceeding the patent

owner, to judge the propriety of

continuing the prosecution.

(3) An international-type search will

be made in all national applications

filed on and after June 1, 1978.

(4) Any national application may also

have an international-type search report

prepared thereon at the time of the

national examination on the merits,

upon specific written request therefor

and payment of the international-type

search report fee set forth in § 1.21(e).

The Patent and Trademark Office does

not require that a formal report of an

international-type search be prepared in

order to obtain a search fee refund in a

later filed international application.

(5) Copending applications will be

considered by the examiner to be owned

by, or subject to an obligation of

assignment to, the same person if:

(i) The application files refer to

assignments recorded in the Patent and

Trademark Office in accordance with

part 3 of this chapter which convey the

entire rights in the applications to the

same person or organization; or

(ii) Copies of unrecorded assignments

which convey the entire rights in the

applications to the same person or

organization are filed in each of the

applications; or

(iii) An affidavit or declaration by the

common owner is filed which states that

there is common ownership and states

facts which explain why the affiant or

declarant believes there is common

ownership, which affidavit or

declaration may be signed by an official

of the corporation or organization

empowered to act on behalf of the

corporation or organization when the

common owner is a corporation or other

organization; or

(iv) Other evidence is submitted

which establishes common ownership

of the applications.

(b) Completeness of examiner’s

action. The examiner’s action will be

complete as to all matters, except that in

appropriate circumstances, such as

misjoinder of invention, fundamental

defects in the application, and the like,

the action of the examiner may be

limited to such matters before further

action is made. However, matters of

form need not be raised by the examiner

until a claim is found allowable.

(c) Rejection of claims. (1) If the

invention is not considered patentable,

or not considered patentable as claimed,

the claims, or those considered

unpatentable will be rejected.

(2) In rejecting claims for want of

novelty or for obviousness, the examiner

must cite the best references at his or

her command. When a reference is

complex or shows or describes

inventions other than that claimed by

the applicant, the particular part relied

on must be designated as nearly as

practicable. The pertinence of each

reference, if not apparent, must be

clearly explained and each rejected

claim specified.

(3) In rejecting claims the examiner

may rely upon admissions by the

applicant, or the patent owner in a

reexamination proceeding, as to any

matter affecting patentability and,

insofar as rejections in applications are

concerned, may also rely upon facts

within his or her knowledge pursuant to

paragraph (d)(2) of this section.

(4) Subject matter which is developed

by another person which qualifies as

prior art only under 35 U.S.C. 102(f) or

(g) may be used as prior art under 35

U.S.C. 103 against a claimed invention

unless the entire rights to the subject

matter and the claimed invention were

commonly owned by the same person or

organization or subject to an obligation

of assignment to the same person or

organization at the time the claimed

invention was made.

(5) The claims in any original

application naming an inventor will be

rejected as being precluded by a waiver

in a published statutory invention

registration naming that inventor if the

same subject matter is claimed in the

application and the statutory invention

registration. The claims in any reissue

application naming an inventor will be

rejected as being precluded by a waiver

in a published statutory invention

registration naming that inventor if the

reissue application seeks to claim

subject matter:

(i) Which was not covered by claims

issued in the patent prior to the date of

publication of the statutory invention

registration; and

(ii) Which was the same subject

matter waived in the statutory invention

registration.

(d) Citation of references. (1) If

domestic patents are cited by the

examiner, their numbers and dates, and

the names of the patentees must be

stated. If foreign published applications

or patents are cited, their nationality or

country, numbers and dates, and the

names of the patentees must be stated,

and such other data must be furnished

as may be necessary to enable the

applicant, or in the case of a

reexamination proceeding, the patent

owner, to identify the published

applications or patents cited. In citing

foreign published applications or

patents, in case only a part of the

document is involved, the particular

pages and sheets containing the parts

relied upon must be identified. If

printed publications are cited, the

author (if any), title, date, pages or

plates, and place of publication, or place

where a copy can be found, shall be

given.

(2) When a rejection in an application

is based on facts within the personal

knowledge of an employee of the Office,

the data shall be as specific as possible,

and the reference must be supported,

when called for by the applicant, by the

affidavit of such employee, and such

affidavit shall be subject to

contradiction or explanation by the
53192 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

affidavits of the applicant and other

persons.

(e) Reasons for allowance. If the

examiner believes that the record of the

prosecution as a whole does not make

clear his or her reasons for allowing a

claim or claims, the examiner may set

forth such reasoning. The reasons shall

be incorporated into an Office action

rejecting other claims of the application

or patent under reexamination or be the

subject of a separate communication to

the applicant or patent owner. The

applicant or patent owner may file a

statement commenting on the reasons

for allowance within such time as may

be specified by the examiner. Failure to

file such a statement does not give rise

to any implication that the applicant or

patent owner agrees with or acquiesces

in the reasoning of the examiner.

§ 1.105 [Removed and reserved]

39. Section 1.105 is removed and

reserved.

§ 1.106 [Removed and reserved]

40. Section 1.106 is removed and

reserved.

§ 1.107 [Removed and reserved]

41. Section 1.107 is removed and

reserved.

§ 1.108 [Removed and reserved]

42. Section 1.108 is removed and

reserved.

§ 1.109 [Removed and reserved]

43. Section 1.109 is removed and

reserved.

44. Section 1.111 is amended by

revising paragraph (b) to read as follows:

§ 1.111 Reply by applicant or patent

owner.

* * * * *

(b) In order to be entitled to

reconsideration or further examination,

the applicant or patent owner must

reply to the Office action. The reply by

the applicant or patent owner must be

reduced to a writing which distinctly

and specifically points out the supposed

errors in the examiner’s action and must

reply to every ground of objection and

rejection in the prior Office action. The

reply must present arguments pointing

out the specific distinctions believed to

render the claims, including any newly

presented claims, patentable over any

applied references. If the reply is with

respect to an application, a request may

be made that objections or requirements

as to form not necessary to further

consideration of the claims be held in

abeyance until allowable subject matter

is indicated. The applicant’s or patent

owner’s reply must appear throughout

to be a bona fide attempt to advance the

application or the reexamination

proceeding to final action. A general

allegation that the claims define a

patentable invention without

specifically pointing out how the

language of the claims patentably

distinguishes them from the references

does not comply with the requirements

of this section.

* * * * *

45. Section 1.112 is revised to read as

follows:

§ 1.112 Reconsideration before final

action.

After reply by applicant or patent

owner (§ 1.111) to a non-final action, the

application or patent under

reexamination will be reconsidered and

again examined. The applicant or patent

owner will be notified if claims are

rejected, or objections or requirements

made, in the same manner as after the

first examination. Applicant or patent

owner may reply to such Office action

in the same manner provided in § 1.111,

with or without amendment, unless

such Office action indicates that it is

made final (§ 1.113).

46. Section 1.113 is revised to read as

follows:

§ 1.113 Final rejection or action.

(a) On the second or any subsequent

examination or consideration by the

examiner the rejection or other action

may be made final, whereupon

applicant’s or patent owner’s reply is

limited to appeal in the case of rejection

of any claim (§ 1.191), or to amendment

as specified in § 1.116. Petition may be

taken to the Commissioner in the case

of objections or requirements not

involved in the rejection of any claim

(§ 1.181). Reply to a final rejection or

action must include cancellation of, or

appeal from the rejection of, each

rejected claim. If any claim stands

allowed, the reply to a final rejection or

action must comply with any

requirements or objections as to form.

(b) In making such final rejection, the

examiner shall repeat or state all

grounds of rejection then considered

applicable to the claims in the

application, clearly stating the reasons

in support thereof.

§ 1.115 [Removed and Reserved]

47. Section 1.115 is removed and

reserved.

48. Section 1.116 is amended by

revising its heading and paragraph (a) to

read as follows:

§ 1.116 Amendments after final action or

appeal.

(a) After a final rejection or other final

action (§ 1.113), amendments may be

made cancelling claims or complying

with any requirement of form expressly

set forth in a previous Office action.

Amendments presenting rejected claims

in better form for consideration on

appeal may be admitted. The admission

of, or refusal to admit, any amendment

after final rejection, and any related

proceedings, will not operate to relieve

the application or patent under

reexamination from its condition as

subject to appeal or to save the

application from abandonment under

§ 1.135.

* * * * *

§ 1.117 [Removed and reserved]

49. Section 1.117 is removed and

reserved.

§ 1.118 [Removed and reserved]

50. Section 1.118 is removed and

reserved.

§ 1.119 [Removed and reserved]

51. Section 1.119 is removed and

reserved.

52. Section 1.121 is revised to read as

follows:

§ 1.121 Manner of making amendments.

(a) Amendments in nonprovisional

applications, other than reissue

applications: Amendments in

nonprovisional applications, excluding

reissue applications, are made by filing

a paper, in compliance with § 1.52,

directing that specified amendments be

made.

(1) Specification other than the

claims. Except as provided in § 1.125,

amendments to add matter to, or delete

matter from, the specification, other

than to the claims, may only be made

as follows:

(i) Instructions for insertions: The

precise point in the specification must

be indicated where an insertion is to be

made, and the matter to be inserted

must be set forth.

(ii) Instructions for deletions: The

precise point in the specification must

be indicated where a deletion is to be

made, and the matter to be deleted must

be set forth or otherwise indicated.

(iii) Matter deleted by amendment can

be reinstated only by a subsequent

amendment presenting the previously

deleted matter as a new insertion.

(2) Claims. Amendments to the claims

may only be made as follows:

(i) Instructions for insertions and

deletions: A claim may be amended by

specifying only the exact matter to be

deleted or inserted by an amendment

and the precise point where the deletion

or insertion is to be made, where the

changes are limited to:

(A) Deletions and/or
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53193

(B) The addition of no more than five

(5) words in any one claim; or

(ii) Claim cancellation or rewriting: A

claim may be amended by directions to

cancel the claim or by rewriting such

claim with underlining below the matter

added and brackets around the matter

deleted. The rewriting of a claim in this

form will be construed as directing the

deletion of the previous version of that

claim. If a previously rewritten claim is

again rewritten, underlining and

bracketing will be applied relative to the

previous version of the claim, with the

parenthetical expression ‘‘twice

amended,’’ ‘‘three times amended,’’ etc.,

following the original claim number.

The original claim number followed by

that parenthetical expression must be

used for the rewritten claim. No

interlineations or deletions of any prior

amendment may appear in the currently

submitted version of the claim. A claim

canceled by amendment (not deleted

and rewritten) can be reinstated only by

a subsequent amendment presenting the

claim as a new claim with a new claim

number.

(3) Drawings. (i) Amendments to the

original application drawings are not

permitted. Any change to the

application drawings must be by way of

a substitute sheet of drawings for each

sheet changed submitted in compliance

with § 1.84.

(ii) Where a change to the drawings is

desired, a sketch in permanent ink

showing proposed changes in red, to

become part of the record, must be filed

for approval by the examiner and

should be in a separate paper.

(4) Any amendment to an application

that is present in a substitute

specification submitted pursuant to

§ 1.125 must be presented under the

provisions of this paragraph either prior

to or concurrent with submission of the

substitute specification.

(5) The disclosure must be amended,

when required by the Office, to correct

inaccuracies of description and

definition, and to secure substantial

correspondence between the claims, the

remainder of the specification, and the

drawings.

(6) No amendment may introduce

new matter into the disclosure of an

application.

(b) Amendments in reissue

applications: Amendments in reissue

applications are made by filing a paper,

in compliance with § 1.52, directing that

specified amendments be made.

(1) Specification other than the

claims. Amendments to the

specification, other than to the claims,

may only be made as follows:

(i) Amendments must be made by

submission of the entire text of a newly

added or rewritten paragraph(s) with

markings pursuant to paragraph

(b)(1)(iii) of this section, except that an

entire paragraph may be deleted by a

statement deleting the paragraph

without presentation of the text of the

paragraph.

(ii) The precise point in the

specification must be indicated where

the paragraph to be amended is located.

(iii) Underlining below the subject

matter added to the patent and brackets

around the subject matter deleted from

the patent are to be used to mark the

amendments being made.

(2) Claims. Amendments to the claims

may only be made as follows:

(i)(A) The amendment must be made

relative to the patent claims in

accordance with paragraph (b)(6) of this

section and must include the entire text

of each claim which is being amended

by the current amendment and of each

claim being added by the current

amendment with markings pursuant to

paragraph (b)(2)(i)(C) of this section,

except that a patent claim or added

claim should be cancelled by a

statement cancelling the patent claim or

added claim without presentation of the

text of the patent claim or added claim.

(B) Patent claims must not be

renumbered and the numbering of any

claims added to the patent must follow

the number of the highest numbered

patent claim.

(C) Underlining below the subject

matter added to the patent and brackets

around the subject matter deleted from

the patent are to be used to mark the

amendments being made. If a claim is

amended pursuant to paragraph

(b)(2)(i)(A) of this section, a

parenthetical expression ‘‘amended,’’

‘‘twice amended,’’ etc., should follow

the original claim number.

(ii) Each amendment submission must

set forth the status (i.e., pending or

cancelled) as of the date of the

amendment, of all patent claims and of

all added claims.

(iii) Each amendment when originally

submitted must be accompanied by an

explanation of the support in the

disclosure of the patent for the

amendment along with any additional

comments on page(s) separate from the

page(s) containing the amendment.

(3) Drawings. (i) Amendments to the

original patent drawings are not

permitted. Any change to the patent

drawings must be by way of a new sheet

of drawings with the amended figures

identified as ‘‘amended’’ and with

added figures identified as ‘‘new’’ for

each sheet changed submitted in

compliance with § 1.84.

(ii) Where a change to the drawings is

desired, a sketch in permanent ink

showing proposed changes in red, to

become part of the record, must be filed

for approval by the examiner and

should be in a separate paper.

(4) The disclosure must be amended,

when required by the Office, to correct

inaccuracies of description and

definition, and to secure substantial

correspondence between the claims, the

remainder of the specification, and the

drawings.

(5) No reissue patent shall be granted

enlarging the scope of the claims of the

original patent unless applied for within

two years from the grant of the original

patent, pursuant to 35 U.S.C. 251. No

amendment to the patent may introduce

new matter or be made in an expired

patent.

(6) All amendments must be made

relative to the patent specification,

including the claims, and drawings,

which is in effect as of the date of filing

of the reissue application.

(c) Amendments in reexamination

proceedings: Any proposed amendment

to the description and claims in patents

involved in reexamination proceedings

must be made in accordance with

§ 1.530(d).

§ 1.122 [Removed and reserved]

53. Section 1.122 is removed and

reserved.

§ 1.123 [Removed and reserved]

54. Section 1.123 is removed and

reserved.

§ 1.124 [Removed and reserved]

55. Section 1.124 is removed and

reserved.

56. Section 1.125 is revised to read as

follows:

§ 1.125 Substitute specification.

(a) If the number or nature of the

amendments or the legibility of the

application papers renders it difficult to

consider the application, or to arrange

the papers for printing or copying, the

Office may require the entire

specification, including the claims, or

any part thereof, be rewritten.

(b) A substitute specification,

excluding the claims, may be filed at

any point up to payment of the issue fee

if it is accompanied by:

(1) A statement that the substitute

specification includes no new matter;

and

(2) A marked-up copy of the

substitute specification showing the

matter being added to and the matter

being deleted from the specification of

record.

(c) A substitute specification

submitted under this section must be

submitted in clean form without

markings as to amended material.
53194 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

(d) A substitute specification under

this section is not permitted in a reissue

application or in a reexamination

proceeding.

57. Section 1.126 is revised to read as

follows:

§ 1.126 Numbering of claims.

The original numbering of the claims

must be preserved throughout the

prosecution. When claims are canceled

the remaining claims must not be

renumbered. When claims are added,

they must be numbered by the applicant

consecutively beginning with the

number next following the highest

numbered claim previously presented

(whether entered or not). When the

application is ready for allowance, the

examiner, if necessary, will renumber

the claims consecutively in the order in

which they appear or in such order as

may have been requested by applicant.

58. Section 1.133 is amended by

revising paragraph (b) to read as follows:

§ 1.133 Interviews.

* * * * *

(b) In every instance where

reconsideration is requested in view of

an interview with an examiner, a

complete written statement of the

reasons presented at the interview as

warranting favorable action must be

filed by the applicant. An interview

does not remove the necessity for reply

to Office actions as specified in §§ 1.111

and 1.135.

Subpart B—[Amended]

59. The undesignated center heading

in Subpart B—National Processing

Provisions, following § 1.133 is revised

to read as follows:

Time for Reply by Applicant;

Abandonment of Application

60. Section 1.134 is revised to read as

follows:

§ 1.134 Time period for reply to an Office

action.

An Office action will notify the

applicant of any non-statutory or

shortened statutory time period set for

reply to an Office action. Unless the

applicant is notified in writing that a

reply is required in less than six

months, a maximum period of six

months is allowed.

61. Section 1.135 is revised to read as

follows:

§ 1.135 Abandonment for failure to reply

within time period.

(a) If an applicant of a patent

application fails to reply within the time

period provided under § 1.134 and

§ 1.136, the application will become

abandoned unless an Office action

indicates otherwise.

(b) Prosecution of an application to

save it from abandonment pursuant to

paragraph (a) of this section must

include such complete and proper reply

as the condition of the application may

require. The admission of, or refusal to

admit, any amendment after final

rejection or any amendment not

responsive to the last action, or any

related proceedings, will not operate to

save the application from abandonment.

(c) When reply by the applicant is a

bona fide attempt to advance the

application to final action, and is

substantially a complete reply to the

non-final Office action, but

consideration of some matter or

compliance with some requirement has

been inadvertently omitted, applicant

may be given a new time period for

reply under § 1.134 to supply the

omission.

62. Section 1.136 is revised to read as

follows:

§ 1.136 Extensions of time

(a)(1) If an applicant is required to

reply within a nonstatutory or shortened

statutory time period, applicant may

extend the time period for reply up to

the earlier of the expiration of any

maximum period set by statute or five

months after the time period set for

reply, if a petition for an extension of

time and the fee set in § 1.17(a) are filed,

unless:

(i) Applicant is notified otherwise in

an Office action;

(ii) The reply is a reply brief

submitted pursuant to § 1.193(b);

(iii) The reply is a request for an oral

hearing submitted pursuant to

§ 1.194(b);

(iv) The reply is to a decision by the

Board of Patent Appeals and

Interferences pursuant to § 1.196,

§ 1.197 or § 1.304; or

(v) The application is involved in an

interference declared pursuant to

§ 1.611.

(2) The date on which the petition

and the fee have been filed is the date

for purposes of determining the period

of extension and the corresponding

amount of the fee. The expiration of the

time period is determined by the

amount of the fee paid. A reply must be

filed prior to the expiration of the

period of extension to avoid

abandonment of the application

(§ 1.135), but in no situation may an

applicant reply later than the maximum

time period set by statute, or be granted

an extension of time under paragraph

(b) of this section when the provisions

of this paragraph are available. See

§ 1.136(b) for extensions of time relating

to proceedings pursuant to §§ 1.193(b),

1.194, 1.196 or 1.197; § 1.304 for

extension of time to appeal to the U.S.

Court of Appeals for the Federal Circuit

or to commence a civil action; § 1.550(c)

for extension of time in reexamination

proceedings; and § 1.645 for extension

of time in interference proceedings.

(3) A written request may be

submitted in an application that is an

authorization to treat any concurrent or

future reply, requiring a petition for an

extension of time under this paragraph

for its timely submission, as

incorporating a petition for extension of

time for the appropriate length of time.

An authorization to charge all required

fees, fees under § 1.17, or all required

extension of time fees will be treated as

a constructive petition for an extension

of time in any concurrent or future reply

requiring a petition for an extension of

time under this paragraph for its timely

submission. Submission of the fee set

forth in § 1.17(a) will also be treated as

a constructive petition for an extension

of time in any concurrent reply

requiring a petition for an extension of

time under this paragraph for its timely

submission.

(b) When a reply cannot be filed

within the time period set for such reply

and the provisions of paragraph (a) of

this section are not available, the period

for reply will be extended only for

sufficient cause and for a reasonable

time specified. Any request for an

extension of time under this paragraph

must be filed on or before the day on

which such reply is due, but the mere

filing of such a request will not effect

any extension under this paragraph. In

no situation can any extension carry the

date on which reply is due beyond the

maximum time period set by statute.

See § 1.304 for extension of time to

appeal to the U.S. Court of Appeals for

the Federal Circuit or to commence a

civil action; § 1.645 for extension of

time in interference proceedings; and

§ 1.550(c) for extension of time in

reexamination proceedings.

63. Section 1.137 is revised to read as

follows:

§ 1.137 Revival of abandoned application

or lapsed patent.

(a) Unavoidable. Where the delay in

reply was unavoidable, a petition may

be filed to revive an abandoned

application or a lapsed patent pursuant

to this paragraph. A grantable petition

pursuant to this paragraph must be

accompanied by:

(1) The required reply, unless

previously filed. In a nonprovisional

application abandoned for failure to

prosecute, the required reply may be

met by the filing of a continuing
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53195

application. In an application or patent,

abandoned or lapsed for failure to pay

the issue fee or any portion thereof, the

required reply must be the payment of

the issue fee or any outstanding balance

thereof;

(2) The petition fee as set forth in

§ 1.17(l);

(3) A showing to the satisfaction of

the Commissioner that the entire delay

in filing the required reply from the due

date for the reply until the filing of a

grantable petition pursuant to this

paragraph was unavoidable; and

(4) Any terminal disclaimer (and fee

as set forth in § 1.20(d)) required

pursuant to paragraph (c) of this section.

(b) Unintentional. Where the delay in

reply was unintentional, a petition may

be filed to revive an abandoned

application or a lapsed patent pursuant

to this paragraph. A grantable petition

pursuant to this paragraph must be

accompanied by:

(1) The required reply, unless

previously filed. In a nonprovisional

application abandoned for failure to

prosecute, the required reply may be

met by the filing of a continuing

application. In an application or patent,

abandoned or lapsed for failure to pay

the issue fee or any portion thereof, the

required reply must be the payment of

the issue fee or any outstanding balance

thereof;

(2) The petition fee as set forth in

§ 1.17(m);

(3) A statement that the entire delay

in filing the required reply from the due

date for the reply until the filing of a

grantable petition pursuant to this

paragraph was unintentional. The

Commissioner may require additional

information where there is a question

whether the delay was unintentional;

and

(4) Any terminal disclaimer (and fee

as set forth in § 1.20(d)) required

pursuant to paragraph (c) of this section.

(c) In a design application, a utility

application filed before June 8, 1995, or

a plant application filed before June 8,

1995, any petition to revive pursuant to

this section must be accompanied by a

terminal disclaimer and fee as set forth

in § 1.321 dedicating to the public a

terminal part of the term of any patent

granted thereon equivalent to the period

of abandonment of the application. Any

terminal disclaimer pursuant to this

paragraph must also apply to any patent

granted on any continuing application

that contains a specific reference under

35 U.S.C. 120, 121, or 365(c) to the

application for which revival is sought.

The provisions of this paragraph do not

apply to lapsed patents.

(d) Any request for reconsideration or

review of a decision refusing to revive

an abandoned application or lapsed

patent upon petition filed pursuant to

this section, to be considered timely,

must be filed within two months of the

decision refusing to revive or within

such time as set in the decision. Unless

a decision indicates otherwise, this time

period may be extended under the

provisions of § 1.136.

(e) A provisional application,

abandoned for failure to timely respond

to an Office requirement, may be

revived pursuant to this section so as to

be pending for a period of no longer

than twelve months from its filing date.

Under no circumstances will a

provisional application be regarded as

pending after twelve months from its

filing date.

§ 1.139 [Removed and reserved]

64. Section 1.139 is removed and

reserved.

65. Section 1.142 is amended by

revising paragraph (a) to read as follows:

§ 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 action will require the applicant

in the reply to that action to elect an

invention to which the claims will be

restricted, this official action being

called a requirement for restriction (also

known as a requirement for division).

Such requirement will normally be

made before any action on the merits;

however, it may be made at any time

before final action.

* * * * *

66. Section 1.144 is revised to read as

follows:

§ 1.144 Petition from requirement for

restriction.

After a final requirement for

restriction, the applicant, in addition to

making any reply due on the remainder

of the action, may petition the

Commissioner to review the

requirement. Petition may be deferred

until after final action on or allowance

of claims to the invention elected, but

must be filed not later than appeal. A

petition will not be considered if

reconsideration of the requirement was

not requested (see § 1.181).

67. Section 1.146 is revised to read as

follows:

§ 1.146 Election of species.

In the first action on an application

containing a generic claim to a generic

invention (genus) and claims to more

than one patentably distinct species

embraced thereby, the examiner may

require the applicant in the reply to that

action to elect a species of his or her

invention to which his or her claim will

be restricted if no claim to the genus is

found to be allowable. However, if such

application contains claims directed to

more than a reasonable number of

species, the examiner may require

restriction of the claims to not more

than a reasonable number of species

before taking further action in the

application.

68. Section 1.152 is revised to read as

follows:

§ 1.152 Design drawings.

(a) The design must be represented by

a drawing that complies with the

requirements of § 1.84, and must

contain a sufficient number of views to

constitute a complete disclosure of the

appearance of the design.

(1) Appropriate and adequate surface

shading should be used to show the

character or contour of the surfaces

represented. Solid black surface shading

is not permitted except when used to

represent the color black as well as color

contrast. Broken lines may be used to

show visible environmental structure,

but may not be used to show hidden

planes and surfaces which cannot be

seen through opaque materials.

Alternate positions of a design

component, illustrated by full and

broken lines in the same view are not

permitted in a design drawing.

(2) Color photographs and color

drawings are not permitted in design

applications in the absence of a

grantable petition pursuant to

§ 1.84(a)(2). Photographs and ink

drawings are not permitted to be

combined as formal drawings in one

application. Photographs submitted in

lieu of ink drawings in design patent

applications must comply with § 1.84(b)

and must not disclose environmental

structure but must be limited to the

design for the article claimed.

(b) Any detail shown in the ink or

color drawings or photographs (formal

or informal) deposited with the original

application papers constitutes an

integral part of the disclosed and

claimed design, except as otherwise

provided in this paragraph. This detail

may include, but is not limited to, color

or contrast, graphic or written indicia,

including identifying indicia of a

proprietary nature, surface

ornamentation on an article, or any

combination thereof.

(1) When any detail shown in

informal drawings or photographs does

not constitute an integral part of the

disclosed and claimed design, a specific

disclaimer must appear in the original

application papers either in the

specification or directly on the drawings

or photographs. This specific disclaimer
53196 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

in the original application papers will

provide antecedent basis for the

omission of the disclaimed detail(s) in

later-filed drawings or photographs.

(2) When informal color drawings or

photographs are deposited with the

original application papers without a

disclaimer pursuant to paragraph (b)(1)

of this section, formal color drawings or

photographs, or a black and white

drawing lined to represent color, will be

required.

69. Section 1.154 is amended by

revising its heading and paragraph (a)(3)

as to read follows:

§ 1.154 Arrangement of application

elements.

(a) * * *

(3) Preamble, stating name of the

applicant, title of the design, and a brief

description of the nature and intended

use of the article in which the design is

embodied.

* * * * *

70. Section 1.155 is revised to read as

follows:

§ 1.155 Issue of design patents.

If, on examination, it appears that the

applicant is entitled to a design patent

under the law, a notice of allowance

will be sent to the applicant, or

applicant’s attorney or agent, calling for

the payment of the issue fee (§ 1.18(b)).

If this issue fee is not paid within three

months of the date of the notice of

allowance, the application shall be

regarded as abandoned.

71. Section 1.163 is amended by

revising its heading and paragraph (b) to

read as follows:

§ 1.163 Specification and arrangement of

application elements.

* * * * *

(b) Two copies of the specification

(including the claim) must be

submitted, but only one signed oath or

declaration is required.

* * * * *

72. Section 1.167 is revised to read as

follows:

§ 1.167 Examination.

Applications may be submitted by the

Patent and Trademark Office to the

Department of Agriculture for study and

report.

73. Section 1.171 is revised to read as

follows:

§ 1.171 Application for reissue.

An application for reissue must

contain the same parts required for an

application for an original patent,

complying with all the rules relating

thereto except as otherwise provided,

and in addition, must comply with the

requirements of the rules relating to

reissue applications.

74. Section 1.172 is amended by

revising paragraph (a) to read as follows:

§ 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 accompanied by the

written consent of all assignees, if any,

owning an undivided interest in the

patent, but a reissue oath may be made

and sworn to or declaration made by the

assignee of the entire interest if the

application does not seek to enlarge the

scope of the claims of the original

patent. All assignees consenting to the

reissue must establish their ownership

interest in the patent by filing in the

reissue application a submission in

accordance with the provisions of

§ 3.73(b) of this chapter.

* * * * *

75. Section 1.175 is revised to read as

follows:

§ 1.175 Reissue oath or declaration.

(a) The reissue oath or declaration in

addition to complying with the

requirements of § 1.63, must also state

that:

(1) The applicant believes the original

patent to be wholly or partly inoperative

or invalid by reason of a defective

specification or drawing, or by reason of

the patentee claiming more or less than

the patentee had the right to claim in

the patent, stating at least one error

being relied upon as the basis for

reissue; and

(2) All errors being corrected in the

reissue application up to the time of

filing of the oath or declaration under

this paragraph arose without any

deceptive intention on the part of the

applicant.

(b)(1) For any error corrected, which

is not covered by the oath or declaration

submitted under paragraph (a) of this

section, applicant must submit a

supplemental oath or declaration stating

that every such error arose without any

deceptive intention on the part of the

applicant. Any supplemental oath or

declaration required by this paragraph

must be submitted before allowance and

may be submitted:

(i) With any amendment prior to

allowance; or

(ii) In order to overcome a rejection

under 35 U.S.C. 251 made by the

examiner where it is indicated that the

submission of a supplemental oath or

declaration as required by this

paragraph will overcome the rejection.

(2) For any error sought to be

corrected after allowance, a

supplemental oath or declaration must

accompany the requested correction

stating that the error(s) to be corrected

arose without any deceptive intention

on the part of the applicant.

(c) Having once stated an error upon

which the reissue is based, as set forth

in paragraph (a)(1), unless all errors

previously stated in the oath or

declaration are no longer being

corrected, a subsequent oath or

declaration under paragraph (b) of this

section need not specifically identify

any other error or errors being corrected.

(d) The oath or declaration required

by paragraph (a) of this section may be

submitted under the provisions of

§ 1.53(f).

76. Section 1.182 is revised to read as

follows:

§ 1.182 Questions not specifically

provided for.

All situations not specifically

provided for in the regulations of this

part will be decided in accordance with

the merits of each situation by or under

the authority of the Commissioner,

subject to such other requirements as

may be imposed, and such decision will

be communicated to the interested

parties in writing. Any petition seeking

a decision under this section must be

accompanied by the petition fee set

forth in § 1.17(h).

77. Section 1.184 is removed and

reserved.

§ 1.184 [Removed and reserved]

78. Section 1.191 is amended by

revising paragraphs (a) and (b) to read

as follows:

§ 1.191 Appeal to Board of Patent Appeals

and Interferences.

(a) Every applicant for a patent or for

reissue of a patent, and every owner of

a patent under reexamination, any of

whose claims has been twice or finally

(§ 1.113) rejected, may appeal from the

decision of the examiner to the Board of

Patent Appeals and Interferences by

filing a notice of appeal and the fee set

forth in § 1.17(b) within the time period

provided under §§ 1.134 and 1.136 for

reply.

(b) The signature requirement of

§ 1.33 does not apply to a notice of

appeal filed under this section.

* * * * *

79. Section 1.192 is amended by

revising paragraph (a) to read as follows:

§ 1.192 Appellant’s brief.

(a) Appellant must, within two

months from the date of the notice of

appeal under § 1.191 or within the time

allowed for reply to the action from

which the appeal was taken, if such
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53197

time is later, file a brief in triplicate. The

brief must be accompanied by the fee set

forth in § 1.17(c) and must set forth the

authorities and arguments on which

appellant will rely to maintain the

appeal. Any arguments or authorities

not included in the brief will be refused

consideration by the Board of Patent

Appeals and Interferences, unless good

cause is shown.

* * * * *

80. Section 1.193 is revised to read as

follows:

§ 1.193 Examiner’s answer and reply brief.

(a) (1) The primary examiner may,

within such time as may be directed by

the Commissioner, furnish a written

statement in answer to appellant’s brief

including such explanation of the

invention claimed and of the references

and grounds of rejection as may be

necessary, supplying a copy to

appellant. If the primary examiner finds

that the appeal is not regular in form or

does not relate to an appealable action,

the primary examiner shall so state.

(2) An examiner’s answer must not

include a new ground of rejection, but

if an amendment under § 1.116 proposes

to add or amend one or more claims and

appellant was advised that the

amendment under § 1.116 would be

entered for purposes of appeal and

which individual rejection(s) set forth in

the action from which the appeal was

taken would be used to reject the added

or amended claim(s), then the appeal

brief must address the rejection(s) of the

claim(s) added or amended by the

amendment under § 1.116 as appellant

was so advised and the examiner’s

answer may include the rejection(s) of

the claim(s) added or amended by the

amendment under § 1.116 as appellant

was so advised. The filing of an

amendment under § 1.116 which is

entered for purposes of appeal

represents appellant’s consent that

when so advised any appeal proceed on

those claim(s) added or amended by the

amendment under § 1.116 subject to any

rejection set forth in the action from

which the appeal was taken.

(b) (1) Appellant may file a reply brief

to an examiner’s answer within two

months from the date of such

examiner’s answer. See § 1.136(b) for

extensions of time for filing a reply brief

in a patent application and § 1.550(c) for

extensions of time for filing a reply brief

in a reexamination proceeding. The

primary examiner must either

acknowledge receipt and entry of the

reply brief or withdraw the final

rejection and reopen prosecution to

respond to the reply brief. A

supplemental examiner’s answer is not

permitted, unless the application has

been remanded by the Board of Patent

Appeals and Interferences for such

purpose.

(2) Where prosecution is reopened by

the primary examiner after an appeal or

reply brief has been filed, appellant

must exercise one of the following two

options to avoid abandonment of the

application:

(i) File a reply under § 1.111, if the

Office action is not final, or a reply

under § 1.113, if the Office action is

final; or

(ii) Request reinstatement of the

appeal. If reinstatement of the appeal is

requested, such request must be

accompanied by a supplemental appeal

brief, but no new amendments,

affidavits (§§ 1.130, 1.131 or 1.132) or

other evidence are permitted.

81. Section 1.194 is revised to read as

follows:

§ 1.194 Oral hearing.

(a) An oral hearing should be

requested only in those circumstances

in which appellant considers such a

hearing necessary or desirable for a

proper presentation of the appeal. An

appeal decided without an oral hearing

will receive the same consideration by

the Board of Patent Appeals and

Interferences as appeals decided after

oral hearing.

(b) If appellant desires an oral

hearing, appellant must file, in a

separate paper, a written request for

such hearing accompanied by the fee set

forth in § 1.17(d) within two months

from the date of the examiner’s answer.

If appellant requests an oral hearing and

submits therewith the fee set forth in

§ 1.17(d), an oral argument may be

presented by, or on behalf of, the

primary examiner if considered

desirable by either the primary

examiner or the Board. See § 1.136(b) for

extensions of time for requesting an oral

hearing in a patent application and

§ 1.550(c) for extensions of time for

requesting an oral hearing in a

reexamination proceeding.

(c) If no request and fee for oral

hearing have been timely filed by

appellant, the appeal will be assigned

for consideration and decision. If

appellant has requested an oral hearing

and has submitted the fee set forth in

§ 1.17(d), a day of hearing will be set,

and due notice thereof given to

appellant and to the primary examiner.

A hearing will be held as stated in the

notice, and oral argument will be

limited to twenty minutes for appellant

and fifteen minutes for the primary

examiner unless otherwise ordered

before the hearing begins. If the Board

decides that a hearing is not necessary,

the Board will so notify appellant.

82. Section 1.196 is amended by

revising paragraphs (b) and (d) to read

as follows:

§ 1.196 Decision by the Board of Patent

Appeals and Interferences.

* * * * *

(b) Should the Board of Patent

Appeals and Interferences have

knowledge of any grounds not involved

in the appeal for rejecting any pending

claim, it may include in the decision a

statement to that effect with its reasons

for so holding, which statement

constitutes a new ground of rejection of

the claim. A new ground of rejection

shall not be considered final for

purposes of judicial review. When the

Board of Patent Appeals and

Interferences makes a new ground of

rejection, the appellant, within two

months from the date of the decision,

must exercise one of the following two

options with respect to the new ground

of rejection to avoid termination of

proceedings (§ 1.197(c)) as to the

rejected claims:

(1) Submit an appropriate amendment

of the claims so rejected or a showing

of facts relating to the claims so rejected,

or both, and have the matter

reconsidered by the examiner, in which

event the application will be remanded

to the examiner. The new ground of

rejection is binding upon the examiner

unless an amendment or showing of

facts not previously of record be made

which, in the opinion of the examiner,

overcomes the new ground of rejection

stated in the decision. Should the

examiner reject the claims, appellant

may again appeal pursuant to §§ 1.191

through 1.195 to the Board of Patent

Appeals and Interferences.

(2) Request that the application be

reheard under § 1.197(b) by the Board of

Patent Appeals and Interferences upon

the same record. The request for

rehearing must address the new ground

of rejection and state with particularity

the points believed to have been

misapprehended or overlooked in

rendering the decision and also state all

other grounds upon which rehearing is

sought. Where request for such

rehearing is made, the Board of Patent

Appeals and Interferences shall rehear

the new ground of rejection and, if

necessary, render a new decision which

shall include all grounds of rejection

upon which a patent is refused. The

decision on rehearing is deemed to

incorporate the earlier decision for

purposes of appeal, except for those

portions specifically withdrawn on

rehearing, and is final for the purpose of

judicial review, except when noted

otherwise in the decision.

* * * * *
53198 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

(d) The Board of Patent Appeals and

Interferences may require appellant to

address any matter that is deemed

appropriate for a reasoned decision on

the pending appeal. Appellant will be

given a non-extendable time period

within which to respond to such a

requirement.

* * * * *

83. Section 1.197 is amended by

revising paragraphs (a) and (b) to read

as follows:

§ 1.197 Action following decision.

(a) After decision by the Board of

Patent Appeals and Interferences, the

application will be returned to the

examiner, subject to appellant’s right of

appeal or other review, for such further

action by appellant or by the examiner,

as the condition of the application may

require, to carry into effect the decision.

(b) Appellant may file a single request

for rehearing within two months from

the date of the original decision, unless

the original decision is so modified by

the decision on rehearing as to become,

in effect, a new decision, and the Board

of Patent Appeals and Interferences so

states. The request for rehearing must

state with particularity the points

believed to have been misapprehended

or overlooked in rendering the decision

and also state all other grounds upon

which rehearing is sought. See

§ 1.136(b) for extensions of time for

seeking rehearing in a patent

application and § 1.550(c) for extensions

of time for seeking rehearing in a

reexamination proceeding.

* * * * *

84. Section 1.291 is amended by

revising paragraph (c) to read as follows:

§ 1.291 Protests by the public against

pending applications.

* * * * *

(c) A member of the public filing a

protest in an application under

paragraph (a) of this section will not

receive any communications from the

Office relating to the protest, other than

the return of a self-addressed postcard

which the member of the public may

include with the protest in order to

receive an acknowledgment by the

Office that the protest has been

received. In the absence of a request by

the Office, an applicant has no duty to,

and need not, reply to a protest. The

limited involvement of the member of

the public filing a protest pursuant to

paragraph (a) of this section ends with

the filing of the protest, and no further

submission on behalf of the protestor

will be considered, except for additional

prior art, or unless such submission

raises new issues which could not have

been earlier presented.

85. Section 1.293 is amended by

revising paragraph (c) to read as follows:

§ 1.293 Statutory invention registration.

* * * * *

(c) A waiver filed with a request for

a statutory invention registration will be

effective, upon publication of the

statutory invention registration, to

waive the inventor’s right to receive a

patent on the invention claimed in the

statutory invention registration, in any

application for an original patent which

is pending on, or filed after, the date of

publication of the statutory invention

registration. A waiver filed with a

request for a statutory invention

registration will not affect the rights of

any other inventor even if the subject

matter of the statutory invention

registration and an application of

another inventor are commonly owned.

A waiver filed with a request for a

statutory invention registration will not

affect any rights in a patent to the

inventor which issued prior to the date

of publication of the statutory invention

registration unless a reissue application

is filed seeking to enlarge the scope of

the claims of the patent. See also

§ 1.104(c)(5).

86. Section 1.294 is amended by

revising paragraph (b) to read as follows:

§ 1.294 Examination of request for

publication of a statutory invention

registration and patent application to which

the request is directed.

* * * * *

(b) Applicant will be notified of the

results of the examination set forth in

paragraph (a) of this section. If the

requirements of § 1.293 and this section

are not met by the request filed, the

notification to applicant will set a

period of time within which to comply

with the requirements in order to avoid

abandonment of the application. If the

application does not meet the

requirements of 35 U.S.C. 112, the

notification to applicant will include a

rejection under the appropriate

provisions of 35 U.S.C. 112. The periods

for reply established pursuant to this

section are subject to 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.

112 will be made final.

* * * * *

87. Section 1.304 is amended by

revising paragraph (a)(1) to read as

follows:

§ 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 § 1.197(b) or § 1.658(b),

the time for filing an appeal or

commencing a civil action shall expire

two months after action on the request.

In interferences, the time for filing a

cross-appeal or cross-action expires:

(i) 14 days after service of the notice

of appeal or the summons and

complaint; or

(ii) Two months after the date of

decision of the Board of Patent Appeals

and Interferences, whichever is later.

* * * * *

88. Section 1.312 is amended by

revising paragraph (b) to read as follows:

§ 1.312 Amendments after allowance.

* * * * *

(b) Any amendment pursuant to

paragraph (a) of this section filed after

the date the issue fee is paid must be

accompanied by a petition including the

fee set forth in § 1.17(i) and a showing

of good and sufficient reasons why the

amendment is necessary and was not

earlier presented. For reissue

applications, see § 1.175(b), which

requires a supplemental oath or

declaration to accompany the

amendment.

89. Section 1.316 is revised to read as

follows:

§ 1.316 Application abandoned for failure

to pay issue fee.

If the issue fee is not paid within

three months from the date of the notice

of allowance, the application will be

regarded as abandoned. Such an

abandoned application will not be

considered as pending before the Patent

and Trademark Office.

90. Section 1.317 is revised to read as

follows:

§ 1.317 Lapsed patents; delayed payment

of balance of issue fee.

If the issue fee paid is the amount

specified in the notice of allowance, but

a higher amount is required at the time

the issue fee is paid, any remaining

balance of the issue fee is to be paid

within three months from the date of

notice thereof and, if not paid, the

patent will lapse at the termination of

the three-month period.

§ 1.318 [Removed and reserved]

91. Section 1.318 is removed and

reserved.
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53199

92. Section 1.324 is revised to read as

follows:

§ 1.324 Correction of inventorship in

patent.

(a) Whenever through error a person

is named in an issued patent as the

inventor, or through error an inventor is

not named in an issued patent and such

error arose without any deceptive

intention on his or her part, the

Commissioner may, on petition, or on

order of a court before which such

matter is called in question, issue a

certificate naming only the actual

inventor or inventors. A petition to

correct inventorship of a patent

involved in an interference must

comply with the requirements of this

section and must be accompanied by a

motion under § 1.634.

(b) Any petition pursuant to

paragraph (a) of this section must be

accompanied by:

(1) A statement from each person who

is being added as an inventor and from

each person who is being deleted as an

inventor that the inventorship error

occurred without any deceptive

intention on his or her part;

(2) A statement from the current

named inventors who have not

submitted a statement under paragraph

(b)(1) of this section either agreeing to

the change of inventorship or stating

that they have no disagreement in

regard to the requested change;

(3) A statement from all assignees of

the parties submitting a statement under

paragraphs (b)(1) and (b)(2) of this

section agreeing to the change of

inventorship in the patent, which

statement must comply with the

requirements of § 3.73(b) of this chapter;

and

(4) The fee set forth in § 1.20(b).

§ 1.352 [Removed and reserved]

93. Section 1.352 is removed and

reserved.

94. Section 1.366 is amended by

revising paragraphs (b) through (d) to

read as follows:

§ 1.366 Submission of maintenance fees.

* * * * *

(b) A maintenance fee and any

necessary surcharge submitted for a

patent must be submitted in the amount

due on the date the maintenance fee and

any necessary surcharge are paid. A

maintenance fee or surcharge may be

paid in the manner set forth in § 1.23 or

by an authorization to charge a deposit

account established pursuant to § 1.25.

Payment of a maintenance fee and any

necessary surcharge or the authorization

to charge a deposit account must be

submitted within the periods set forth in

§ 1.362 (d), (e), or (f). Any payment or

authorization of maintenance fees and

surcharges filed at any other time will

not be accepted and will not serve as a

payment of the maintenance fee except

insofar as a delayed payment of the

maintenance fee is accepted by the

Commissioner in an expired patent

pursuant to a petition filed under

§ 1.378. Any authorization to charge a

deposit account must authorize the

immediate charging of the maintenance

fee and any necessary surcharge to the

deposit account. Payment of less than

the required amount, payment in a

manner other than that set forth § 1.23,

or in the filing of an authorization to

charge a deposit account having

insufficient funds will not constitute

payment of a maintenance fee or

surcharge on a patent. The procedures

set forth in § 1.8 or § 1.10 may be

utilized in paying maintenance fees and

any necessary surcharges.

(c) In submitting maintenance fees

and any necessary surcharges,

identification of the patents for which

maintenance fees are being paid must

include the following:

(1) The patent number; and

(2) The application number of the

United States application for the patent

on which the maintenance fee is being

paid.

(d) Payment of maintenance fees and

any surcharges should identify the fee

being paid for each patent as to whether

it is the 31⁄2-, 71⁄2-, or 111⁄2-year fee,

whether small entity status is being

changed or claimed, the amount of the

maintenance fee and any surcharge

being paid, and any assigned customer

number. If the maintenance fee and any

necessary surcharge is being paid on a

reissue patent, the payment must

identify the reissue patent by reissue

patent number and reissue application

number as required by paragraph (c) of

this section and should also include the

original patent number.

* * * * *

95. Section 1.377 is amended by

revising paragraph (c) to read as follows:

§ 1.377 Review of decision refusing to

accept and record payment of a

maintenance fee filed prior to expiration of

patent.

* * * * *

(c) Any petition filed under this

section must comply with the

requirements of § 1.181(b) and must be

signed by an attorney or agent registered

to practice before the Patent and

Trademark Office, or by the patentee,

the assignee, or other party in interest.

96. Section 1.378 is amended by

revising paragraph (d) to read as

follows:

§ 1.378 Acceptance of delayed payment of

maintenance fee in expired patent to

reinstate patent.

* * * * *

(d) Any petition under this section

must be signed by an attorney or agent

registered to practice before the Patent

and Trademark Office, or by the

patentee, the assignee, or other party in

interest.

* * * * *

97. Section 1.425 is revised to read as

follows:

§ 1.425 Filing by other than inventor.

Where an international application

which designates the United States of

America is filed and where one or more

inventors refuse to sign the Request for

the international application or cannot

be found or reached after diligent effort,

the Request need not be signed by such

inventor if it is signed by another

applicant. Such international

application must be accompanied by a

statement explaining to the satisfaction

of the Commissioner the lack of the

signature concerned.

98. Section 1.484 is amended by

revising paragraphs (d) through (f) to

read as follows:

§ 1.484 Conduct of international

preliminary examination.

* * * * *

(d) The International Preliminary

Examining Authority will establish a

written opinion if any defect exists or if

the claimed invention lacks novelty,

inventive step or industrial applicability

and will set a non-extendable time limit

in the written opinion for the applicant

to reply.

(e) If no written opinion under

paragraph (d) of this section is

necessary, or after any written opinion

and the reply thereto or the expiration

of the time limit for reply to such

written opinion, an international

preliminary examination report will be

established by the International

Preliminary Examining Authority. One

copy will be submitted to the

International Bureau and one copy will

be submitted to the applicant.

(f) An applicant will be permitted a

personal or telephone interview with

the examiner, which must be conducted

during the non-extendable time limit for

reply by the applicant to a written

opinion. Additional interviews may be

conducted where the examiner

determines that such additional

interviews may be helpful to advancing

the international preliminary

examination procedure. A summary of

any such personal or telephone

interview must be filed by the applicant

as a part of the reply to the written
53200 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

opinion or, if applicant files no reply, be

made of record in the file by the

examiner.

99. Section 1.485 is amended by

revising paragraph (a) to read as follows:

§ 1.485 Amendments by applicant during

international preliminary examination.

(a) The applicant may make

amendments at the time of filing of the

Demand and within the time limit set by

the International Preliminary Examining

Authority for reply to any notification

under § 1.484(b) or to any written

opinion. Any such amendments must:

(1) Be made by submitting a

replacement sheet for every sheet of the

application which differs from the sheet

it replaces unless an entire sheet is

cancelled; and

(2) Include a description of how the

replacement sheet differs from the

replaced sheet.

* * * * *

100. Section 1.488 is amended by

revising paragraph (b)(3) to read as

follows:

§ 1.488 Determination of unity of invention

before the International Preliminary

Examining Authority.

* * * * *

(b) * * *

(3) If applicant fails to restrict the

claims or pay additional fees within the

time limit set for reply, the International

Preliminary Examining Authority will

issue a written opinion and/or establish

an international preliminary

examination report on the main

invention and shall indicate the relevant

facts in the said report. In case of any

doubt as to which invention is the main

invention, the invention first mentioned

in the claims and previously searched

by an International Searching Authority

shall be considered the main invention.

* * * * *

101. Section 1.492 is amended by

adding a new paragraph (g) to read as

follows:

§ 1.492 National stage fees.

* * * * *

(g) If the additional fees required by

paragraphs (b), (c), and (d) of this

section are not paid on presentation of

the claims for which the additional fees

are due, they must be paid or the claims

cancelled by amendment, prior to the

expiration of the time period set for

reply by the Office in any notice of fee

deficiency.

102. Section 1.494 is amended by

revising paragraph (c) to read as follows:

§ 1.494 Entering the national stage in the

United States of America as a Designated

Office.

* * * * *

(c) If applicant complies with

paragraph (b) of this section before

expiration of 20 months from the

priority date but omits:

(1) A translation of the international

application, as filed, into the English

language, if it was originally filed in

another language (35 U.S.C. 371(c)(2));

and/or

(2) The oath or declaration of the

inventor (35 U.S.C. 371(c)(4); see

§ 1.497), applicant will be so notified

and given a period of time within which

to file the translation and/or oath or

declaration in order to prevent

abandonment of the application. The

payment of the processing fee set forth

in § 1.492(f) is required for acceptance

of an English translation later than the

expiration of 20 months after the

priority date. The payment of the

surcharge set forth in § 1.492(e) is

required for acceptance of the oath or

declaration of the inventor later than the

expiration of 20 months after the

priority date. A copy of the notification

mailed to applicant should accompany

any reply thereto submitted to the

Office.

* * * * *

103. Section 1.495 is amended by

revising paragraph (c) to read as follows:

§ 1.495 Entering the national stage in the

United States of America as an Elected

Office.

* * * * *

(c) If applicant complies with

paragraph (b) of this section before

expiration of 30 months from the

priority date but omits:

(1) A translation of the international

application, as filed, into the English

language, if it was originally filed in

another language (35 U.S.C. 371(c)(2));

and/or

(2) The oath or declaration of the

inventor (35 U.S.C. 371(c)(4); see

§ 1.497), applicant will be so notified

and given a period of time within which

to file the translation and/or oath or

declaration in order to prevent

abandonment of the application. The

payment of the processing fee set forth

in § 1.492(f) is required for acceptance

of an English translation later than the

expiration of 30 months after the

priority date. The payment of the

surcharge set forth in § 1.492(e) is

required for acceptance of the oath or

declaration of the inventor later than the

expiration of 30 months after the

priority date. A copy of the notification

mailed to applicant should accompany

any reply thereto submitted to the

Office.

* * * * *

104. Section 1.510 is amended by

revising paragraph (e) to read as follows:

§ 1.510 Request for reexamination.

* * * * *

(e) A request filed by the patent owner

may include a proposed amendment in

accordance with § 1.530(d).

* * * * *

105. Section 1.530 is amended by

removing paragraph (e) and revising the

section heading and paragraph (d) to

read as follows:

§ 1.530 Statement; amendment by patent

owner.

* * * * *

(d) Amendments in reexamination

proceedings. Amendments in

reexamination proceedings are made by

filing a paper, in compliance with

paragraph (d)(5) of this section,

directing that specified amendments be

made.

(1) Specification other than the

claims. Amendments to the

specification, other than to the claims,

may only be made as follows:

(i) Amendments must be made by

submission of the entire text of a newly

added or rewritten paragraph(s) with

markings pursuant to paragraph

(d)(1)(iii) of this section, except that an

entire paragraph may be deleted by a

statement deleting the paragraph

without presentation of the text of the

paragraph.

(ii) The precise point in the

specification must be indicated where

the paragraph to be amended is located.

(iii) Underlining below the subject

matter added to the patent and brackets

around the subject matter deleted from

the patent are to be used to mark the

amendments being made.

(2) Claims. Amendments to the claims

may only be made as follows:

(i)(A) The amendment must be made

relative to the patent claims in

accordance with paragraph (d)(8) of this

section and must include the entire text

of each claim which is being proposed

to be amended by the current

amendment and each proposed new

claim being added by the current

amendment with markings pursuant to

paragraph (d)(2)(i)(C) of this section,

except that a patent claim or previously

proposed new claim should be

cancelled by a statement cancelling the

patent claim or proposed new claim

without presentation of the text of the

patent claim or proposed new claim.

(B) Patent claims must not be

renumbered and the numbering of any

new claims proposed to be added to the

patent must follow the number of the

highest numbered patent claim.

(C) Underlining below the subject

matter added to the patent and brackets

around the subject matter deleted from

the patent are to be used to mark the
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53201

amendments being made. If a claim is

amended pursuant to paragraph

(d)(2)(i)(A) of this section, a

parenthetical expression ‘‘amended,’’

‘‘twice amended,’’ etc., should follow

the original claim number.

(ii) Each amendment submission must

set forth the status (i.e., pending or

cancelled) as of the date of the

amendment, of all patent claims and of

all new claims currently or previously

proposed.

(iii) Each amendment, when

submitted for the first time, must be

accompanied by an explanation of the

support in the disclosure of the patent

for the amendment along with any

additional comments on page(s)

separate from the page(s) containing the

amendment.

(3) No amendment may enlarge the

scope of the claims of the patent or

introduce new matter. No amendment

may be proposed for entry in an expired

patent. Moreover, no amendment will

be incorporated into the patent by

certificate issued after the expiration of

the patent.

(4) Although the Office actions will

treat proposed amendments as though

they have been entered, the proposed

amendments will not be effective until

the reexamination certificate is issued.

(5) The form of amendments other

than to the patent drawings must be in

accordance with the following

requirements. All amendments must be

in the English language and must be

legibly written either by a typewriter or

mechanical printer in at least 11 point

type in permanent dark ink or its

equivalent in portrait orientation on

flexible, strong, smooth, non-shiny,

durable, white paper. All amendments

must be presented in a form having

sufficient clarity and contrast between

the paper and the writing thereon to

permit the direct reproduction of readily

legible copies in any number by use of

photographic, electrostatic, photo-offset,

and microfilming processes and

electronic reproduction by use of digital

imaging or optical character recognition.

If the amendments are not of the

required quality, substitute typewritten

or mechanically printed papers of

suitable quality will be required. The

papers, including the drawings, must

have each page plainly written on only

one side of a sheet of paper. The sheets

of paper must be the same size and

either 21.0 cm. by 29.7 cm. (DIN size

A4) or 21.6 cm. by 27.9 cm. (81⁄2 by 11

inches). Each sheet must include a top

margin of at least 2.0 cm. (3⁄4 inch), a left

side margin of at least 2.5 cm. (1 inch),

a right side margin of at least 2.0 cm. (3⁄4

inch), and a bottom margin of at least

2.0 cm. (3⁄4 inch), and no holes should

be made in the sheets as submitted. The

lines must be double spaced, or one and

one-half spaced. The pages must be

numbered consecutively, starting with

1, the numbers being centrally located,

preferably below the text, or above the

text.

(6) Drawings. (i) The original patent

drawing sheets may not be altered. Any

proposed change to the patent drawings

must be by way of a new sheet of

drawings with the amended figures

identified as ‘‘amended’’ and with

added figures identified as ‘‘new’’ for

each sheet change submitted in

compliance with § 1.84.

(ii) Where a change to the drawings is

desired, a sketch in permanent ink

showing proposed changes in red, to

become part of the record, must be filed

for approval by the examiner and

should be in a separate paper.

(7) The disclosure must be amended,

when required by the Office, to correct

inaccuracies of description and

definition and to secure substantial

correspondence between the claims, the

remainder of the specification, and the

drawings.

(8) All amendments to the patent

must be made relative to the patent

specification, including the claims, and

drawings, which is in effect as of the

date of filing of the request for

reexamination.

106. Section 1.550 is amended by

revising paragraphs (a), (b) and (e) to

read as follows:

§ 1.550 Conduct of reexamination

proceedings.

(a) All reexamination proceedings,

including any appeals to the Board of

Patent Appeals and Interferences, will

be conducted with special dispatch

within the Office. After issuance of the

reexamination order and expiration of

the time for submitting any responses

thereto, the examination will be

conducted in accordance with §§ 1.104,

1.110 through 1.113 and 1.116, and will

result in the issuance of a reexamination

certificate under § 1.570.

(b) The patent owner will be given at

least thirty days to respond to any Office

action. Such response may include

further statements in response to any

rejections or proposed amendments or

new claims to place the patent in a

condition where all claims, if amended

as proposed, would be patentable.

* * * * *

(e) The reexamination requester will

be sent copies of Office actions issued

during the reexamination proceeding.

After filing of a request for

reexamination by a third party

requester, any document filed by either

the patent owner or the third party

requester must be served on the other

party in the reexamination proceeding

in the manner provided by § 1.248. The

document must reflect service or the

document may be refused consideration

by the Office.

(1) The active participation of the

reexamination requester ends with the

reply pursuant to § 1.535, and no further

submissions on behalf of the

reexamination requester will be

acknowledged or considered. Further,

no submissions on behalf of any third

parties will be acknowledged or

considered unless such submissions are:

(i) In accordance with § 1.510; or

(ii) Entered in the patent file prior to

the date of the order to reexamine

pursuant to § 1.525.

(2) Submissions by third parties, filed

after the date of the order to reexamine

pursuant to § 1.525, must meet the

requirements of and will be treated in

accordance with § 1.501(a).

107. Section 1.770 is revised to read

as follows:

§ 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

duplicate, a written declaration of

withdrawal signed by the owner of

record of the patent or its agent. An

application may not be expressly

withdrawn after the date permitted for

reply to the final determination on the

application. An express withdrawal

pursuant to this section is effective

when acknowledged in writing by the

Office. The filing of an express

withdrawal pursuant to this section and

its acceptance by the Office does not

entitle applicant to a refund of the filing

fee (§ 1.20(j)) or any portion thereof.

108. Section 1.785 is amended by

revising paragraph (d) to read as

follows:

§ 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.

* * * * *

(d) An application for extension shall

be considered complete and formal

regardless of whether it contains the

identification of the holder of the

regulatory approval granted with respect

to the regulatory review period. When

an application contains such

information, or is amended to contain

such information, it will be considered

in determining whether an application

is eligible for an extension under this

section. A request may be made of any

applicant to supply such information
53202 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

within a non-extendable period of not

less than one month whenever multiple

applications for extension of more than

one patent are received and rely upon

the same regulatory review period.

Failure to provide such information

within the period for reply set shall be

regarded as conclusively establishing

that the applicant is not the holder of

the regulatory approval.

* * * * *

109. Section 1.804 is amended by

revising paragraph (b) to read as follows:

§ 1.804 Time of making an original deposit.

* * * * *

(b) When the original deposit is made

after the effective filing date of an

application for patent, the applicant

must promptly submit a statement from

a person in a position to corroborate the

fact, stating that the biological material

which is deposited is a biological

material specifically identified in the

application as filed.

110. Section 1.805 is amended by

revising paragraph (c) to read as follows:

§ 1.805 Replacement or supplement of

deposit.

* * * * *

(c) A request for a certificate of

correction under this section shall not

be granted unless the request is made

promptly after the replacement or

supplemental deposit has been made

and the request:

(1) Includes a statement of the reason

for making the replacement or

supplemental deposit;

(2) Includes a statement from a person

in a position to corroborate the fact, and

stating that the replacement or

supplemental deposit is of a biological

material which is identical to that

originally deposited;

(3) Includes a showing that the patent

owner acted diligently—

(i) In the case of a replacement

deposit, in making the deposit after

receiving notice that samples could no

longer be furnished from an earlier

deposit; or

(ii) In the case of a supplemental

deposit, in making the deposit after

receiving notice that the earlier deposit

had become contaminated or had lost its

capability to function as described in

the specification;

(4) Includes a statement that the term

of the replacement or supplemental

deposit expires no earlier than the term

of the deposit being replaced or

supplemented; and

(5) Otherwise establishes compliance

with these regulations.

* * * * *

PART 3—ASSIGNMENT, RECORDING

AND RIGHTS OF ASSIGNEE

111. The authority citation for 37 CFR

part 3 continues to read as follows:

Authority: 15 U.S.C. 1123; 35 U.S.C. 6.

112. Section 3.11 is revised to read as

follows:

§ 3.11 Documents which will be recorded.

(a) Assignments of applications,

patents, and registrations, accompanied

by completed cover sheets as specified

in §§ 3.28 and 3.31, will be recorded in

the Office. Other documents,

accompanied by completed cover sheets

as specified in §§ 3.28 and 3.31,

affecting title to applications, patents, or

registrations, will be recorded as

provided in this part or at the discretion

of the Commissioner.

(b) Executive Order 9424 of February

18, 1944 (9 FR 1959, 3 CFR 1943–1948

Comp., p. 303) requires the several

departments and other executive

agencies of the Government, including

Government-owned or Governmentcontrolled corporations, to forward

promptly to the Commissioner of

Patents and Trademarks for recording

all licenses, assignments, or other

interests of the Government in or under

patents or patent applications.

Assignments and other documents

affecting title to patents or patent

applications and documents not

affecting title to patents or patent

applications required by Executive

Order 9424 to be filed will be recorded

as provided in this part.

113. Section 3.21 is revised to read as

follows:

§ 3.21 Identification of patents and patent

applications.

An assignment relating to a patent

must identify the patent by the patent

number. An assignment relating to a

national patent application must

identify the national patent application

by the application number (consisting of

the series code and the serial number,

e.g., 07/123,456). An assignment

relating to an international patent

application which designates the United

States of America must identify the

international application by the

international application number (e.g.,

PCT/US90/01234). If an assignment of a

patent application filed under § 1.53(b)

is executed concurrently with, or

subsequent to, the execution of the

patent application, but before the patent

application is filed, it must identify the

patent application by its date of

execution, name of each inventor, and

title of the invention so that there can

be no mistake as to the patent

application intended. If an assignment

of a provisional application under

§ 1.53(c) is executed before the

provisional application is filed, it must

identify the provisional application by

name of each inventor and title of the

invention so that there can be no

mistake as to the provisional application

intended.

114. Section 3.26 is revised to read as

follows:

§ 3.26 English language requirement.

The Office will accept and record

non-English language documents only if

accompanied by an English translation

signed by the individual making the

translation.

115. Section 3.27 is revised to read as

follows:

§ 3.27 Mailing address for submitting

documents to be recorded.

(a) Except as provided in paragraph

(b) of this section, documents and cover

sheets to be recorded should be

addressed to the Commissioner of

Patents and Trademarks, Box

Assignment, Washington, D.C. 20231,

unless they are filed together with new

applications or with a petition under

§ 3.81(b).

(b) A document required by Executive

Order 9424 to be filed which does not

affect title and is so identified in the

cover sheet (see § 3.31(c)(2)) must be

addressed and mailed to the

Commissioner of Patents and

Trademarks, Box Government Interest,

Washington, D.C. 20231.

116. Section 3.31 is amended by

adding paragraph (c) to read as follows:

§ 3.31 Cover sheet content.

* * * * *

(c) Each patent cover sheet required

by § 3.28 seeking to record a

governmental interest as provided by

§ 3.11(b) must:

(1) Indicate that the document is to be

recorded on the Governmental Register,

and, if applicable, that the document is

to be recorded on the Secret Register

(see § 3.58); and

(2) Indicate, if applicable, that the

document to be recorded is not a

document affecting title (see § 3.41(b)).

117. Section 3.41 is revised to read as

follows:

§ 3.41 Recording fees.

(a) All requests to record documents

must be accompanied by the

appropriate fee. Except as provided in

paragraph (b) of this section, a fee is

required for each application, patent

and registration against which the

document is recorded as identified in

the cover sheet. The recording fee is set

in § 1.21(h) of this chapter for patents
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53203

and in § 2.6(q) of this chapter for

trademarks.

(b) No fee is required for each patent

application and patent against which a

document required by Executive Order

9424 is to be filed if:

(1) The document does not affect title

and is so identified in the cover sheet

(see § 3.31(c)(2)); and

(2) The document and cover sheet are

mailed to the Office in compliance with

§ 3.27(b).

118. Section 3.51 is revised to read as

follows:

§ 3.51 Recording date.

The date of recording of a document

is the date the document meeting the

requirements for recording set forth in

this part is filed in the Office. A

document which does not comply with

the identification requirements of § 3.21

will not be recorded. Documents not

meeting the other requirements for

recording, for example, a document

submitted without a completed cover

sheet or without the required fee, will

be returned for correction to the sender

where a correspondence address is

available. The returned papers, stamped

with the original date of receipt by the

Office, will be accompanied by a letter

which will indicate that if the returned

papers are corrected and resubmitted to

the Office within the time specified in

the letter, the Office will consider the

original date of filing of the papers as

the date of recording of the document.

The procedure set forth in § 1.8 or § 1.10

of this chapter may be used for

resubmissions of returned papers to

have the benefit of the date of deposit

in the United States Postal Service. If

the returned papers are not corrected

and resubmitted within the specified

period, the date of filing of the corrected

papers will be considered to be the date

of recording of the document. The

specified period to resubmit the

returned papers will not be extended.

119. Section 3.58 is added to read as

follows:

§ 3.58 Governmental registers.

(a) The Office will maintain a

Departmental Register to record

governmental interests required to be

recorded by Executive Order 9424. This

Departmental Register will not be open

to public inspection but will be

available for examination and

inspection by duly authorized

representatives of the Government.

Governmental interests recorded on the

Departmental Register will be available

for public inspection as provided in

§ 1.12.

(b) The Office will maintain a Secret

Register to record governmental

interests required to be recorded by

Executive Order 9424. Any instrument

to be recorded will be placed on this

Secret Register at the request of the

department or agency submitting the

same. No information will be given

concerning any instrument in such

record or register, and no examination

or inspection thereof or of the index

thereto will be permitted, except on the

written authority of the head of the

department or agency which submitted

the instrument and requested secrecy,

and the approval of such authority by

the Commissioner of Patents and

Trademarks. No instrument or record

other than the one specified may be

examined, and the examination must

take place in the presence of a

designated official of the Patent and

Trademark Office. When the department

or agency which submitted an

instrument no longer requires secrecy

with respect to that instrument, it must

be recorded anew in the Departmental

Register.

§ 3.61 [Amended]

120. The undesignated center heading

in Part 3—Assignment, Recording and

Rights of Assignee, following § 3.61 is

revised to read as follows:

Action Taken by Assignee

121. Section 3.73 is amended by

revising its heading and paragraph (b) to

read as follows:

§ 3.73 Establishing right of assignee to

take action.

* * * * *

(b) When an assignee seeks to take

action in a matter before the Office with

respect to a patent application,

trademark application, patent,

registration, or reexamination

proceeding, the assignee must establish

its ownership of the property to the

satisfaction of the Commissioner.

Ownership is established by submitting

to the Office, in the Office file related to

the matter in which action is sought to

be taken, documentary evidence of a

chain of title from the original owner to

the assignee (e.g., copy of an executed

assignment submitted for recording) or

by specifying (e.g., reel and frame

number) where such evidence is

recorded in the Office. The submission

establishing ownership must be signed

by a party authorized to act on behalf of

the assignee. Documents submitted to

establish ownership may be required to

be recorded as a condition to permitting

the assignee to take action in a matter

pending before the Office.

PART 5—SECRECY OF CERTAIN

INVENTIONS AND LICENSES TO

EXPORT AND FILE APPLICATIONS IN

FOREIGN COUNTRIES

122. The authority citation for 37 CFR

Part 5 continues to read as follows:

Authority: 35 U.S.C. 6, 41, 181–188, as

amended by the Patent Law Foreign Filing

Amendments Act of 1988, Pub. L. 100–418,

102 Stat. 1567; the Arms Export Control Act,

as amended, 22 U.S.C. 2751 et seq.; the

Atomic Energy Act of 1954, as amended, 42

U.S.C. 2011 et seq.; and the Nuclear NonProliferation Act of 1978, 22 U.S.C. 3201 et

seq.; and the delegations in the regulations

under these Acts to the Commissioner (15

CFR 370.10(j), 22 CFR 125.04, and 10 CFR

810.7).

123. Section 5.1 is revised to read as

follows:

§ 5.1 Correspondence.

All correspondence in connection

with this part, including petitions, must

be addressed to ‘‘Assistant

Commissioner for Patents (Attention

Licensing and Review), Washington, DC

20231.’’

124. Section 5.2 is amended by

removing paragraphs (c) and (d) and

revising paragraph (b) to read as follows:

§ 5.2 Secrecy order.

* * * * *

(b) Any request for compensation as

provided in 35 U.S.C. 183 must not be

made to the Patent and Trademark

Office, but directly to the department or

agency which caused the secrecy order

to be issued.

125. Section 5.3 is amended by

revising paragraph (c) to read as follows:

§ 5.3 Prosecution of application under

secrecy orders; withholding patent.

* * * * *

(c) When the national application is

found to be in condition for allowance

except for the secrecy order the

applicant and the agency which caused

the secrecy order to be issued will be

notified. This notice (which is not a

notice of allowance under § 1.311 of this

chapter) does not require reply by the

applicant and places the national

application in a condition of suspension

until the secrecy order is removed.

When the secrecy order is removed the

Patent and Trademark Office will issue

a notice of allowance under § 1.311 of

this chapter, or take such other action as

may then be warranted.

* * * * *

126. Section 5.4 is amended by

revising paragraphs (a) and (d) to read

as follows:
53204 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

§ 5.4 Petition for rescission of secrecy

order.

(a) A petition for rescission or

removal of a secrecy order may be filed

by, or on behalf of, any principal

affected thereby. Such petition may be

in letter form, and it must be in

duplicate.

* * * * *

(d) Appeal to the Secretary of

Commerce, as provided by 35 U.S.C.

181, from a secrecy order cannot be

taken until after a petition for rescission

of the secrecy order has been made and

denied. Appeal must be taken within

sixty days from the date of the denial,

and the party appealing, as well as the

department or agency which caused the

order to be issued, will be notified of the

time and place of hearing.

127. Section 5.5 is amended by

revising paragraphs (b) and (e) to read

as follows:

§ 5.5 Permit to disclose or modification of

secrecy order.

* * * * *

(b) Petitions for a permit or

modification must fully recite the

reason or purpose for the proposed

disclosure. Where any proposed

disclosee is known to be cleared by a

defense agency to receive classified

information, adequate explanation of

such clearance should be made in the

petition including the name of the

agency or department granting the

clearance and the date and degree

thereof. The petition must be filed in

duplicate.

* * * * *

(e) Organizations requiring consent

for disclosure of applications under

secrecy order to persons or

organizations in connection with

repeated routine operation may petition

for such consent in the form of a general

permit. To be successful such petitions

must ordinarily recite the security

clearance status of the disclosees as

sufficient for the highest classification

of material that may be involved.

§ 5.6 [Removed and reserved]

128. Section 5.6 is removed and

reserved.

§ 5.7 [Removed and reserved]

129. Section 5.7 is removed and

reserved.

§ 5.8 [Removed and reserved]

130. Section 5.8 is removed and

reserved.

131. Section 5.11 is amended by

revising paragraphs (b), (c) and (e)(3) to

read as follows:

§ 5.11 License for filing in a foreign

country an application on an invention

made in the United States or for

transmitting international application.

* * * * *

(b) The license from the

Commissioner of Patents and

Trademarks referred to in paragraph (a)

would also authorize the export of

technical data abroad for purposes

relating to the preparation, filing or

possible filing and prosecution of a

foreign patent application without

separately complying with the

regulations contained in 22 CFR parts

121 through 130 (International Traffic in

Arms Regulations of the Department of

State), 15 CFR part 779 (Regulations of

the Office of Export Administration,

International Trade Administration,

Department of Commerce) and 10 CFR

part 810 (Foreign Atomic Energy

Programs of the Department of Energy).

(c) Where technical data in the form

of a patent application, or in any form,

is being exported for purposes related to

the preparation, filing or possible filing

and prosecution of a foreign patent

application, without the license from

the Commissioner of Patents and

Trademarks referred to in paragraphs (a)

or (b) of this section, or on an invention

not made in the United States, the

export regulations contained in 22 CFR

parts 120 through 130 (International

Traffic in Arms Regulations of the

Department of State), 15 CFR parts 768–

799 (Export Administration Regulations

of the Department of Commerce) and 10

CFR part 810 (Assistance to Foreign

Atomic Energy Activities Regulations of

the Department of Energy) must be

complied with unless a license is not

required because a United States

application was on file at the time of

export for at least six months without a

secrecy order under § 5.2 being placed

thereon. The term ‘‘exported’’ means

export as it is defined in 22 CFR part

120, 15 CFR part 779 and activities

covered by 10 CFR part 810.

* * * * *

(e) * * *

(3) For subsequent modifications,

amendments and supplements

containing additional subject matter to,

or divisions of, a foreign patent

application if:

(i) A license is not, or was not,

required under paragraph (e)(2) of this

section for the foreign patent

application;

(ii) The corresponding United States

application was not required to be made

available for inspection under 35 U.S.C.

181; and

(iii) Such modifications, amendments,

and supplements do not, or did not,

change the general nature of the

invention in a manner which would

require any corresponding United States

application to be or have been available

for inspection under 35 U.S.C. 181.

* * * * *

132. Section 5.12 is amended by

revising paragraph (b) to read as follows:

§ 5.12 Petition for license.

* * * * *

(b) Petitions for license should be

presented in letter form, and must

include the petitioner’s address and full

instructions for delivery of the

requested license when it is to be

delivered to other than the petitioner. If

expedited handling of the petition

under this paragraph is sought, the

petition must also include the fee set

forth in § 1.17(h).

133. Section 5.13 is revised to read as

follows:

§ 5.13 Petition for license; no

corresponding application.

If no corresponding national or

international application has been filed

in the United States, the petition for

license under § 5.12(b) must also be

accompanied by a legible copy of the

material upon which a license is

desired. This copy will be retained as a

measure of the license granted.

134. Section 5.14 is amended by

revising paragraph (a) to read as follows:

§ 5.14 Petition for license; corresponding

U.S. application.

(a) When there is a corresponding

United States application on file, a

petition for license under § 5.12(b) must

also identify this application by

application number, filing date,

inventor, and title, but a copy of the

material upon which the license is

desired is not required. The subject

matter licensed will be measured by the

disclosure of the United States

application.

* * * * *

135. Section 5.15 is amended by

revising paragraphs (a), (b), (c) and (e)

to read as follows:

§ 5.15 Scope of license.

(a) Applications or other materials

reviewed pursuant to §§ 5.12 through

5.14, which were not required to be

made available for inspection by

defense agencies under 35 U.S.C. 181,

will be eligible for a license of the scope

provided in this paragraph. This license

permits subsequent modifications,

amendments, and supplements

containing additional subject matter to,

or divisions of, a foreign patent

application, if such changes to the

application do not alter the general

nature of the invention in a manner
Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations 53205

which would require the United States

application to have been made available

for inspection under 35 U.S.C. 181.

Grant of this license authorizing the

export and filing of an application in a

foreign country or the transmitting of an

international application to any foreign

patent agency or international patent

agency when the subject matter of the

foreign or international application

corresponds to that of the domestic

application. This license includes

authority:

(1) To export and file all duplicate

and formal application papers in foreign

countries or with international agencies;

(2) To make amendments,

modifications, and supplements,

including divisions, changes or

supporting matter consisting of the

illustration, exemplification,

comparison, or explanation of subject

matter disclosed in the application; and

(3) To take any action in the

prosecution of the foreign or

international application provided that

the adding of subject matter or taking of

any action under paragraphs (a)(1) or (2)

of this section does not change the

general nature of the invention

disclosed in the application in a manner

which would require such application

to have been made available for

inspection under 35 U.S.C. 181 by

including technical data pertaining to:

(i) Defense services or articles

designated in the United States

Munitions List applicable at the time of

foreign filing, the unlicensed

exportation of which is prohibited

pursuant to the Arms Export Control

Act, as amended, and 22 CFR parts 121

through 130; or

(ii) Restricted Data, sensitive nuclear

technology or technology useful in the

production or utilization of special

nuclear material or atomic energy,

dissemination of which is subject to

restrictions of the Atomic Energy Act of

1954, as amended, and the Nuclear NonProliferation Act of 1978, as

implemented by the regulations for

Unclassified Activities in Foreign

Atomic Energy Programs, 10 CFR part

810, in effect at the time of foreign

filing.

* * * * *

(b) Applications or other materials

which were required to be made

available for inspection under 35 U.S.C.

181 will be eligible for a license of the

scope provided in this paragraph. Grant

of this license authorizes the export and

filing of an application in a foreign

country or the transmitting of an

international application to any foreign

patent agency or international patent

agency. Further, this license includes

authority to export and file all duplicate

and formal papers in foreign countries

or with foreign and international patent

agencies and to make amendments,

modifications, and supplements to, file

divisions of, and take any action in the

prosecution of the foreign or

international application, provided

subject matter additional to that covered

by the license is not involved.

(c) A license granted under § 5.12(b)

pursuant to § 5.13 or § 5.14 shall have

the scope indicated in paragraph (a) of

this section, if it is so specified in the

license. A petition, accompanied by the

required fee (§ 1.17(h)), may also be

filed to change a license having the

scope indicated in paragraph (b) of this

section to a license having the scope

indicated in paragraph (a) of this

section. No such petition will be granted

if the copy of the material filed pursuant

to § 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.

* * * * *

(e) Any paper filed abroad or

transmitted to an international patent

agency following the filing of a foreign

or international application which

changes the general nature of the subject

matter disclosed at the time of filing in

a manner which would require such

application to have been made available

for inspection under 35 U.S.C. 181 or

which involves the disclosure of subject

matter listed in paragraphs (a)(3)(i) or

(ii) of this section must be separately

licensed in the same manner as a foreign

or international application. Further, if

no license has been granted under

§ 5.12(a) on filing the corresponding

United States application, any paper

filed abroad or with an international

patent agency which involves the

disclosure of additional subject matter

must be licensed in the same manner as

a foreign or international application.

* * * * *

§ 5.16 [Removed and reserved]

136. Section 5.16 is removed and

reserved.

§ 5.17 [Removed and reserved]

137. Section 5.17 is removed and

reserved.

138. Section 5.18 is revised to read as

follows:

§ 5.18 Arms, ammunition, and implements

of war.

(a) The exportation of technical data

relating to arms, ammunition, and

implements of war generally is subject

to the International Traffic in Arms

Regulations of the Department of State

(22 CFR parts 120 through 130); the

articles designated as arms,

ammunitions, and implements of war

are enumerated in the U.S. Munitions

List (22 CFR part 121). However, if a

patent applicant complies with

regulations issued by the Commissioner

of Patents and Trademarks under 35

U.S.C. 184, no separate approval from

the Department of State is required

unless the applicant seeks to export

technical data exceeding that used to

support a patent application in a foreign

country. This exemption from

Department of State regulations is

applicable regardless of whether a

license from the Commissioner is

required by the provisions of §§ 5.11

and 5.12 (22 CFR part 125).

(b) When a patent application

containing subject matter on the

Munitions List (22 CFR part 121) is

subject to a secrecy order under § 5.2

and a petition is made under § 5.5 for

a modification of the secrecy order to

permit filing abroad, a separate request

to the Department of State for authority

to export classified information is not

required (22 CFR part 125).

139. Section 5.19 is revised to read as

follows:

§ 5.19 Export of technical data.

(a) Under regulations (15 CFR

770.10(j)) established by the Department

of Commerce, a license is not required

in any case to file a patent application

or part thereof in a foreign country if the

foreign filing is in accordance with the

regulations (§§ 5.11 through 5.25) of the

Patent and Trademark Office.

(b) An export license is not required

for data contained in a patent

application prepared wholly from

foreign-origin technical data where such

application is being sent to the foreign

inventor to be executed and returned to

the United States for subsequent filing

in the U.S. Patent and Trademark Office

(15 CFR 779A.3(e)).

140. Section 5.20 is revised to read as

follows:

§ 5.20 Export of technical data relating to

sensitive nuclear technology.

Under regulations (10 CFR 810.7)

established by the United States

Department of Energy, an application

filed in accordance with the regulations

(§§ 5.11 through 5.25) of the Patent and

Trademark Office and eligible for

foreign filing under 35 U.S.C. 184, is

considered to be information available

to the public in published form and a

generally authorized activity for the

purposes of the Department of Energy

regulations.
53206 Federal Register / Vol. 62, No. 197 / Friday, October 10, 1997 / Rules and Regulations

§ 5.25 [Amended]

141. Section 5.25 is amended by

removing paragraph (c).

§ 5.31 [Removed and reserved]

142. Section 5.31 is removed and

reserved.

§ 5.32 [Removed and reserved]

143. Section 5.32 is removed and

reserved.

§ 5.33 [Removed and reserved]

144. Section 5.33 is removed and

reserved.

PART 7—REGISTER OF

GOVERNMENT INTERESTS IN

PATENTS [REMOVED AND

RESERVED]

145. Part 7 is removed and reserved.

PART 10—REPRESENTATION OF

OTHERS BEFORE THE PATENT AND

TRADEMARK OFFICE

146. The authority citation for 37 CFR

part 10 continues to read as follows:

Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35

U.S.C. 6, 31, 32, 41.

147. Section 10.18 is revised to read

as follows:

§ 10.18 Signature and certificate for

correspondence filed in the Patent and

Trademark Office.

(a) For all documents filed in the

Office in patent, trademark, and other

non-patent matters, except for

correspondence that is required to be

signed by the applicant or party, each

piece of correspondence filed by a

practitioner in the Patent and

Trademark Office must bear a signature,

personally signed by such practitioner,

in compliance with § 1.4(d)(1) of this

chapter.

(b) By presenting to the Office

(whether by signing, filing, submitting,

or later advocating) any paper, the party

presenting such paper, whether a

practitioner or non-practitioner, is

certifying that—

(1) All statements made therein of the

party’s own knowledge are true, all

statements made therein on information

and belief are believed to be true, and

all statements made therein are made

with the knowledge that whoever, in

any matter within the jurisdiction of the

Patent and Trademark Office, knowingly

and willfully falsifies, conceals, or

covers up by any trick, scheme, or

device a material fact, or makes any

false, fictitious or fraudulent statements

or representations, or makes or uses any

false writing or document knowing the

same to contain any false, fictitious or

fraudulent statement or entry, shall be

subject to the penalties set forth under

18 U.S.C. 1001, and that violations of

this paragraph may jeopardize the

validity of the application or document,

or the validity or enforceability of any

patent, trademark registration, or

certificate resulting therefrom; and

(2) To the best of the party’s

knowledge, information and belief,

formed after an inquiry reasonable

under the circumstances, that—

(i) The paper is not being presented

for any improper purpose, such as to

harass someone or to cause unnecessary

delay or needless increase in the cost of

prosecution before the Office;

(ii) The claims and other legal

contentions therein are warranted by

existing law or by a nonfrivolous

argument for the extension,

modification, or reversal of existing law

or the establishment of new law;

(iii) The allegations and other factual

contentions have evidentiary support or,

if specifically so identified, are likely to

have evidentiary support after a

reasonable opportunity for further

investigation or discovery; and

(iv) The denials of factual contentions

are warranted on the evidence, or if

specifically so identified, are reasonably

based on a lack of information or belief.

(c) Violations of paragraph (b)(1) of

this section by a practitioner or nonpractitioner may jeopardize the validity

of the application or document, or the

validity or enforceability of any patent,

trademark registration, or certificate

resulting therefrom. Violations of any of

paragraphs (b)(2) (i) through (iv) of this

section are, after notice and reasonable

opportunity to respond, subject to such

sanctions as deemed appropriate by the

Commissioner, or the Commissioner’s

designee, which may include, but are

not limited to, any combination of—

(1) Holding certain facts to have been

established;

(2) Returning papers;

(3) Precluding a party from filing a

paper, or presenting or contesting an

issue;

(4) Imposing a monetary sanction;

(5) Requiring a terminal disclaimer for

the period of the delay; or

(6) Terminating the proceedings in the

Patent and Trademark Office.

(d) Any practitioner violating the

provisions of this section may also be

subject to disciplinary action. See

§ 10.23(c)(15).

148. Section 10.23 is amended by

revising paragraph (c)(15) to read as

follows:

§ 10.23 Misconduct.

* * * * *

(c) * * *

(15) Signing a paper filed in the Office

in violation of the provisions of § 10.18

or making a scandalous or indecent

statement in a paper filed in the Office.

* * * * *

Dated: September 26, 1997.

Bruce A. Lehman,

Assistant Secretary of Commerce and

Commissioner of Patents and Trademarks.

[FR Doc. 97–26339 Filed 10–9–97; 8:45 am]

BILLING CODE 3510–16–P