Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20195

Arizona SHPO agreed with OSM’s

determination that no aspects of the

proposed amendment pertain to cultural

or historic resources (administrative

record No. NA–239). As such, the

Arizona SHPO determined that the

amendment would have no effect on

cultural resources under the National

Historic Preservation Act of 1966 and 36

CFR part 800.

(b) Navajo Nation Historic

Preservation Department.

By letter dated February 21, 1995, the

Department agreed with OSM’s

determination that the proposed

changes to the Navajo Nation AMLR

Code of 1987 do not pertain to cultural

resources. Therefore, ti stated that the

amendment will have no effect on

cultural resources (administrative

record No. NA–237).

(c) U.S. Bureau of Indian Affairs. The

Bureau of Indian Affairs stated in a

memorandum dated March 13, 1995,

that a technical review had been

completed by its Area Real Estate

Services, Rights Protection Section, and

that it had no comments (administrative

record No. NA–238).

VI. Director’s Decision

Based on the above findings, the

Director approves the Navajo Nation’s

proposed plan amendment as submitted

on January 12, 1995, and as revised on

February 23, 1995.

As discussed in finding No. 1, the

Director approves nonsubstantive

revisions to the Navajo Nation AMLR

Code of 1987 at sections 404(a) and (c),

eligible lands and water.

As discussed in finding No. 2, the

Director approves substantive revisions

to the Navajo Nation AMLR Code of

1987 at section 404(b), reclamation of

interim program coal sites.

The Director approves the proposed

revisions of the Navajo Nation AMLR

Code of 1987 with the provision that

they be fully promulgated in identical

form to the code submitted to and

reviewed by OSM and the public.

The Federal regulations at 30 CFR

part 756, codifying decisions concerning

the Navajo plan, are being amended to

implement this decision. This final rule

is being made effective immediately to

expedite the Tribal plan amendment

process and to encourage Tribes to bring

their plans into conformity with the

Federal standards without undue delay.

Consistency of Tribal and Federal

standards is required by SMCRA.

VII. Procedural Determinations

1. Executive Order 12866

This rule is exempted from review by

the Office of Management and Budget

(OMB) under Executive Order 12866

(Regulatory Planning and Review).

2. Executive Order 12778

The Department of the Interior has

conducted the reviews required by

section 2 of Executive Order 12778

(Civil Justice Reform) and has

determined that this rule meets the

applicable standards of subsections (a)

and (b) of that section. However, these

standards are not applicable to the

actual language of State or Tribal AMLR

plans and revisions thereof since each

such plan is drafted and promulgated by

a specific State or Tribe, not by OSM.

Decisions on proposed State or Tribal

AMLR plans and revisions thereof

submitted by a State or Tribe are based

on a determination of whether the

submittal meets the requirements of

Title IV of SMCRA (30 U.S.C. 1231–

1243) and the applicable Federal

regulations at 30 CFR parts 884 and 888.

3. National Environmental Policy Act

No environmental impact statement is

required for this rule since agency

decisions on proposed State or Tribal

AMLR plans and revisions thereof are

categorically excluded from compliance

with the National Environmental Policy

Act (42 U.S.C. 4332) by the Manual of

the Department of the Interior (516 DM

6, appendix 8, paragraph 8.4B(29)).

4. Paperwork Reduction Act

This rule does not contain

information collection requirements that

require approval by OMB under the

Paperwork Reduction Act (44 U.S.C.

3507 et seq.).

5. Regulatory Flexibility Act

The Department of the Interior has

determined that this rule will not have

a significant economic impact on a

substantial number of small entities

under the Regulatory Flexibility Act (5

U.S.C. 601 et seq.). The Tribal submittal

which is the subject of this rule is based

upon Federal regulations for which an

economic analysis was prepared and

certification made that such regulations

would not have a significant economic

effect upon a substantial number of

small entities. Accordingly, this rule

will ensure that existing requirements

established by SMCRA or previously

promulgated by OSM will be

implemented by the Tribe. In making

the determination as to whether this

rule would have a significant economic

impact, the Department relied upon the

data and assumptions in the analyses for

the corresponding Federal regulations.

List of Subjects in 30 CFR Part 756

Abandoned mine land reclamation

program, Indian lands.

Dated: April 19, 1995.

Charles E. Sandberg,

Acting Assistant Director, Western Support

Center.

For the reasons set out in the

preamble, Title 30, Chapter VII,

Subchapter E of the Code of Federal

Regulations is amended as set forth

below:

PART 756—INDIAN TRIBE

ABANDONED MINE LAND

RECLAMATION PROGRAMS

1. The authority citation for part 756

continues to read as follows:

Authority: 30 U.S.C. 1201 et seq. and Pub.

L. 100–71.

2. Section 756.14 is amended by

adding paragraph (c) to read as follows:

§ 756.14 Approval of amendments to the

Navajo Nation’s Abandoned Mine Land

Plan.

* * * * *

(c) Revisions to sections 404 (a), (b),

and (c) of the Navajo Nation Abandoned

Mine Land Reclamation (AMLR) Code

of 1987, pertaining to eligible lands and

water, as submitted to OSM on January

12, 1995, and as subsequently revised

on February 23 1995, are approved

effective April 25, 1995.

[FR Doc. 95–10169 Filed 4–24–95; 8:45 am]

BILLING CODE 4310–05–M

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 3

[Docket No. 950404087–5087–01]

RIN 0651–AA76

Changes To Implement 20-Year Patent

Term and Provisional Applications

AGENCY: Patent and Trademark Office,

Commerce.

ACTION: Final rule.

SUMMARY: The Patent and Trademark

Office (PTO) is amending the rules of

practice in patent cases to establish

procedures for: filing and processing

provisional application papers;

calculating the length of any patent term

extension to which an applicant is

entitled where the issuance of a patent

on an application filed on or after June

8, 1995 (the implementation date of the

20-year patent term provisions of the

Uruguay Round Agreements Act), other
20196 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

than for designs, was delayed due to

interference proceedings, the imposition

of a secrecy order and/or appellate

review; and implementing certain

transitional provisions contained in the

Uruguay Round Agreements Act.

EFFECTIVE DATE: June 8, 1995.

FOR FURTHER INFORMATION CONTACT:

Magdalen Y. Greenlief or John F.

Gonzales, Senior Legal Advisors, Office

of the Deputy Assistant Commissioner

for Patent Policy and Projects, by

telephone at (703) 305–9285, by fax at

(703) 308–6916 or by mail marked to

their attention and addressed to the

Commissioner of Patents and

Trademarks, Box DAC, Washington,

D.C. 20231.

SUPPLEMENTARY INFORMATION: The

Uruguay Round Agreements Act (Public

Law 103–465) was enacted on December

8, 1994. Public Law 103–465 amends 35

U.S.C. 154 to provide that the term of

patent protection begins on the date of

grant and ends 20 years from the filing

date of the application. The amendment

applies to all utility and plant patents

issued on applications having an actual

United States application filing date on

or after June 8, 1995. Specifically, 35

U.S.C. 154(a)(2), as contained in Public

Law 103–465, provides that the patent

term will begin on the date on which

the patent issues and will end twenty

years from the date on which the

application was filed in the United

States. If the application contains a

specific reference to an earlier

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

365(c), the patent term will end twenty

years from the date on which the

earliest application referred to was filed.

As amended by Public Law 103–465, 35

U.S.C. 154 does not take into account

for determination of the patent term any

application on which priority is claimed

under 35 U.S.C. 119, 365(a) or 365(b).

Under 35 U.S.C. 154(b)(1), as

contained in Public Law 103–465, if the

issuance of an original patent is delayed

due to interference proceedings under

35 U.S.C. 135(a) or because the

application is placed under a secrecy

order under 35 U.S.C. 181, the term of

the patent shall be extended for the

period of delay, but in no case more

than five (5) years.

Under 35 U.S.C. 154(b)(2), as

contained in Public Law 103–465, if the

issuance of a patent is delayed due to

appellate review by the Board of Patent

Appeals and Interferences or by a

Federal court and the patent is issued

pursuant to a decision in the review

reversing an adverse determination of

patentability, the term of the patent

shall be extended for a period of time

but in no case more than five (5) years.

However, a patent shall not be eligible

for extension under 35 U.S.C. 154(b)(2)

if the patent is subject to a terminal

disclaimer due to the issuance of

another patent claiming subject matter

that is not patentably distinct from that

under appellate review.

Under 35 U.S.C. 154(b)(3)(B) and

154(b)(3)(C), as contained in Public Law

103–465, the period of extension under

35 U.S.C. 154(b)(2) shall be reduced by

any time attributable to appellate review

before the expiration of three (3) years

from the filing date of the application

and for any period of time during which

the applicant for patent did not act with

due diligence, as determined by the

Commissioner.

Under 35 U.S.C. 154(b)(4), as

contained in Public Law 103–465, the

total duration of all extensions of a

patent under 35 U.S.C. 154(b) shall not

exceed five (5) years.

The provisions for patent term

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

separate from and in addition to the

patent term extension provisions of 35

U.S.C. 156. The patent term extension

provisions of 35 U.S.C. 154(b) are

designed to compensate the patent

owner for delays in issuing a patent,

whereas the patent term extension

provisions of 35 U.S.C. 156 are designed

to restore term lost to premarket

regulatory review after the grant of a

patent. In order to prevent a term

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

precluding a term extension under 35

U.S.C. 156, Public Law 103–465 amends

35 U.S.C. 156(a)(2) to specify that the

term has never been extended under 35

U.S.C. 156(e)(1).

The 20-year patent term provision is

contained in 35 U.S.C. 154, as amended

by Public Law 103–465. Section 154 of

title 35, United States Code, applies to

utility and plant patents, but not to

design patents. The term of a design

patent is defined in 35 U.S.C. 173 as

fourteen (14) years from the date of

grant. Therefore, the patent term and

patent term extension provisions set

forth in 35 U.S.C. 154, as amended by

Public Law 103–465, do not apply to

patents for designs.

In addition, Public Law 103–465

establishes a domestic priority system.

In accordance with the provisions of the

Paris Convention for the Protection of

Industrial Property, the term of a patent

cannot include the Paris Convention

priority period. Public Law 103–465

provides a mechanism to enable

applicants to quickly and inexpensively

file provisional applications. Applicants

will be entitled to claim the benefit of

priority in a given application based

upon a previously filed provisional

application in the United States. The

domestic priority period will not count

in the measurement of the term.

Section 111 of title 35, United States

Code, was amended by Public Law 103–

465 to provide for the filing of a

provisional application on or after June

8, 1995. Section 41(a)(1) of title 35,

United States Code, was amended by

Public Law 103–465 to provide a

$150.00 filing fee for each provisional

application, subject to a fifty (50)

percent reduction for a small entity. The

requirements for obtaining a filing date

for a provisional application are the

same as those which previously existed

for an application filed under 35 U.S.C.

111, except that no claim or claims as

set forth in 35 U.S.C. 112, second

paragraph, is required. Moreover, no

oath/declaration as set forth in 35 U.S.C.

115 is required. The provisional

application is also not subject to the

provisions of 35 U.S.C. 131, 135 and

157, i.e., a provisional application will

not be examined for patentability,

placed in interference or made the

subject of a statutory invention

registration. Further, the provisional

application will automatically be

abandoned no later than twelve (12)

months after its filing date and will not

be subject to revival to restore it to

pending status beyond a date which is

after twelve (12) months from its filing

date. A provisional application will not

be entitled to claim priority benefits

based on any other application under 35

U.S.C. 119, 120, 121 or 365.

Also, Public Law 103–465 amended

35 U.S.C. 119 to allow an applicant to

claim the benefit of the filing date of one

or more copending provisional

applications in a later filed application

for patent under 35 U.S.C. 111(a) or 363.

The later filed application for patent

under 35 U.S.C. 111(a) or 363 must be

filed by an inventor or inventors named

in the copending provisional

application not later than 12 months

after the date on which the provisional

application was filed and must contain

or be amended to contain a specific

reference to the provisional application.

The provisional application must

disclose an invention which is claimed

in the application for patent under 35

U.S.C. 111(a) or 363 in the manner

provided by the first paragraph of 35

U.S.C. 112. In addition, the provisional

application must be pending on the

filing date of the application for patent

under 35 U.S.C. 111(a) or 363 and the

filing fee set forth in subparagaph (A) or

(C) of 35 U.S.C. 41(a)(1) must be paid.

Since 35 U.S.C. 154(a)(3), as

contained in Public Law 103–465,

excludes from the determination of the

patent term any application on which

priority is claimed under 35 U.S.C. 119,
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20197

365(a) or 365(b), the filing date of a

provisional application is not

considered in determining the term of

any patent.

Section 119(e)(1) of title 35, United

States Code, provides that if all of the

conditions of 35 U.S.C. 119 (e)(1) and

(e)(2) are met, an application for patent

filed under 35 U.S.C. 111(a) or 363 shall

have the same effect as though filed on

the date of the provisional application.

Thus, the effective United States filing

date of an application for patent filed

under 35 U.S.C. 111(a), and entitled to

benefits under 35 U.S.C. 119(e), is the

filing date of the provisional

application. Any patent granted on such

an application, is prior art under 35

U.S.C. 102(e) as of the filing date of the

provisional application.

Likewise, the effective United States

filing date of a patent issued on an

international application filed under 35

U.S.C. 363, and entitled to benefits

under 35 U.S.C. 119(e), is the filing date

of the provisional application, except

for the purpose of applying that patent

as prior art under 35 U.S.C. 102(e). For

that purpose only, 35 U.S.C. 102(e)

defines the filing date of the

international application as the date the

requirements of 35 U.S.C. 371 (c)(1),

(c)(2) and (c)(4) were fulfilled.

Public Law 103–465 further includes

transitional provisions for limited

reexamination in certain applications

pending for two (2) years or longer as of

June 8, 1995, taking into account any

reference to any earlier application

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

transitional provisions also permit

examination of more than one

independent and distinct invention in

certain applications pending for three

(3) years or longer as of June 8, 1995,

taking into account any reference to any

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

121 or 365(c). These transitional

provisions are not applicable to any

application which is filed after June 8,

1995, regardless of whether the

application is a continuing application.

The amendments to title 35 relating to

20-year patent term, patent term

extension, provisional applications and

the transitional provisions are effective

on the date which is six (6) months after

the date of enactment, i.e., on June 8,

1995.

A Notice of Proposed Rulemaking was

published in the Federal Register at 59

FR 63951 (December 12, 1994) and in

the Patent and Trademark Office Gazette

at 1170 Off. Gaz. Pat. Office 377–390

(January 3, 1995).

Forty-nine written comments were

received in response to the Notice of

Proposed Rulemaking. A public hearing

was held at 9:30 a.m. on February 16,

1995. Fourteen individuals offered oral

comments at the hearing. The forty-nine

written comments and a transcript of

the hearing are available for public

inspection in the Special Program Law

Office, Office of the Deputy Assistant

Commissioner for Patent Policy and

Projects, Room 520, Crystal Park I, 2011

Crystal Drive, Arlington, Virginia, and

are available on the Internet through

anonymous file transfer protocol (ftp),

address: ftp.uspto.gov.

The following includes a discussion

of the rules being added or amended,

the reasons for those additions and

amendments and an analysis of the

comments received in response to the

Notice of Proposed Rulemaking.

Changes in text: The final rules

contain numerous changes to the text of

the rules as proposed for comment.

Those changes are discussed below.

Familiarity with the Notice of Proposed

Rulemaking is assumed.

Section 1.9(a)(1) is being changed for

clarity to define a national application

as a U.S. application for patent which

was either filed in the Office under 35

U.S.C. 111, or which entered the

national stage from an international

application after compliance with 35

U.S.C. 371. Also, a new paragraph (a)(3)

is being added to define the term

‘‘nonprovisional application’’ as a U.S.

national application for patent which

was either filed in the Office under 35

U.S.C. 111(a), or which entered the

national stage from an international

application after compliance with 35

U.S.C. 371.

The proposed deletion of § 1.60 is

being withdrawn. Therefore, § 1.17(i) is

being changed to retain the reference to

§ 1.60.

Section 1.17(q) is being changed to

delete the fifty (50) percent reduction

for small entities in the $50.00 fee

established for filing a petition under

§ 1.48 in a provisional application and

a petition to accord a provisional

application a filing date or to convert an

application filed under § 1.53(b)(1) to a

provisional application.

Sections 1.17(r) and (s) are being

changed to include a fifty (50) percent

reduction for small entities in the fees

established for entry of a submission

after final rejection under § 1.129(a) and

for each additional invention requested

to be examined under § 1.129(b). In the

final rule, the fee required by §§ 1.17(r)

and 1.17(s) from a small entity is

$365.00. The fee required from other

than a small entity is $730.00.

The elimination of the small entity

reduction in § 1.17(q) and the addition

of the small entity reduction in §§ 1.17

(r) and (s) are the result of additional

review, which resulted in the

conclusion that the fees established for

the transitional procedures in §§ 1.129

(a) and (b) may be reduced by fifty (50)

percent for small entities. However, the

petition fees required by § 1.17(q) are

not subject to the fifty (50) percent

reduction for small entities.

The proposed deletion of the

retention fee practice set forth in former

§ 1.53(d), now redesignated § 1.53(d)(1),

is being withdrawn. Therefore, § 1.21(1)

is being retained and amended to refer

to § 1.53(d)(1). Also, the proposed

change in the text to § 1.17(n) is being

withdrawn, since § 1.60 is being

retained.

Section 1.28(a) is being changed to

clarify the procedure for establishing

status as a small entity in a

nonprovisional application claiming

benefit under 35 U.S.C. 119(e), 120, 121,

or 365(c) of a prior application. In such

cases, applicants may file a new verified

statement or they may rely on a verified

statement filed in the prior application,

if status as a small entity is still proper

and desired. If applicants intend to rely

on a verified statement filed in the prior

application, applicants must include in

the nonprovisional application either a

reference to the verified statement filed

in the prior application or a copy of the

verified statement filed in the prior

application. A verified statement in

compliance with existing § 1.27 is

required to be filed in each provisional

application in which it is desired to pay

reduced fees.

Section 1.45(c), first sentence, is being

changed for clarity to refer to a

‘‘nonprovisional’’ application.

Section 1.48 is being changed to

include a new paragraph (e) setting forth

the procedure for deleting the name of

a person who was erroneously named as

an inventor in a provisional application.

The procedure requires an amendment

deleting the name of the person who

was erroneously named accompanied

by: a petition including a statement of

facts verified by the person whose name

is being deleted establishing that the

error occurred without deceptive

intention; the fee set forth in § 1.17(q);

and the written consent of any assignee.

The first sentences of §§ 1.48 (a)–(c) are

also being changed for clarity to refer to

a ‘‘nonprovisional’’ application.

Section 1.51(a)(2)(i) is being changed

to require that the provisional

application cover sheet include the

residence of each named inventor and,

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, the name of the U.S.

Government agency and Government

contract number. The residence of each

named inventor is information which is
20198 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

necessary to identify those provisional

applications which must be reviewed by

the PTO for foreign filing licenses. If the

invention disclosed in the provisional

application was made by an agency of

the U.S. Government or under a contract

with an agency of the U.S. Government,

the security review for that application

should already have been done by that

agency of the U.S. Government.

Therefore, identification of those

particular provisional applications on

the cover sheet will reduce the number

of applications which the PTO must

forward to other agencies of the U.S.

Government for security review.

Section 1.53(b)(1) is being changed to

retain the reference to § 1.60.

Section 1.53(b)(2)(ii) is being changed

to require that any petition and petition

fee to convert a § 1.53(b)(1) application

to a provisional application be filed in

the § 1.53(b)(1) application prior to the

earlier of the abandonment of the

§ 1.53(b)(1) application, the payment of

the issue fee, the expiration of twelve

(12) months after the filing date of the

§ 1.53(b)(1) application, or the filing of

a request for a statutory invention

registration under § 1.293. Where the

§ 1.53(b)(1) application was abandoned

before the expiration of twelve (12)

months after the filing date of the

application, a petition to convert the

application to a provisional application

may be filed in the § 1.53(b)(1)

application if the petition to convert is

filed prior to the expiration of twelve

(12) months after the filing date of the

§ 1.53(b)(1) application and is

accompanied by an appropriate petition

to revive an abandoned application

under § 1.137.

Section 1.53(b)(2)(iii) is being

changed to indicate that the

requirements of §§ 1.821–1.825

regarding application disclosures

containing nucleotide and/or amino

acid sequences are not mandatory for

provisional applications.

Section 1.53(d)(1) is being changed to

retain the retention fee practice. The

proposal to delete the retention fee

practice set forth in § 1.53(d) is being

withdrawn.

The first sentences of §§ 1.55 (a) and

(b) are being changed for clarity to refer

to a ‘‘nonprovisional’’ application.

Also, §§ 1.55 (a) and (b) are being

changed to clarify that the

nonprovisional application may claim

the benefit of one or more prior foreign

applications or one or more applications

for inventor’s certificate.

Section 1.59 is being changed to

retain the reference to the retention fee

set forth in § 1.21(l) and to clarify that

the retention fee practice applies only to

applications filed under § 1.53(b)(1).

The proposal to delete § 1.60 is being

withdrawn. Therefore, § 1.60 is being

retained and amended to clarify in the

title of the section and in paragraph

(b)(1) that the procedure set forth in the

section is only available for filing a

continuation or divisional application if

the prior application was a

nonprovisional application and

complete as set forth in § 1.51(a)(1).

Also, paragraph (b)(4) is being amended

to delete the requirement that the

statement which must accompany the

copy of the prior application include the

language that ‘‘no amendments referred

to in the oath or declaration filed to

complete the prior application

introduced new matter therein.’’ The

requirement is unnecessary because any

amendment filed to complete the prior

application would be considered a part

of the original disclosure of the prior

application and, by definition, could not

contain new matter. Also, paragraph

(b)(4) is being amended to refer to

§ 1.17(i).

Section 1.62(a) is being changed to

refer to a prior complete

‘‘nonprovisional’’ application and to

clarify that a continuing application

may be filed under § 1.62 after payment

of the issue fee if a petition under

§ 1.313(b)(5) is granted in the prior

application. Section 1.62(a) is also being

changed to clarify the existing practice

that the request for a § 1.62 application

must include identification of the

inventors named in the prior

application.

Section 1.63(a) is being changed for

clarity to refer to an oath or declaration

filed as a part of a ‘‘nonprovisional’’

application.

Section 1.67(b) is being changed for

clarity to refer to a ‘‘nonprovisional’’

application.

Section 1.78 (a)(1) and (a)(2) are being

changed to refer to a ‘‘nonprovisional’’

application and to clarify that the

nonprovisional application may claim

the benefit of one or more prior

copending nonprovisional applications

or international applications designating

the United States of America. Section

1.78(a)(1)(ii) is being changed to retain

the reference to § 1.60. Section

1.78(a)(1)(iii) is being retained and

amended to refer to §§ 1.53(b)(1) and

1.53(d)(1).

Sections 1.78 (a)(3) and (a)(4) are

being changed to refer to a

‘‘nonprovisional’’ application and to

clarify that the nonprovisional

application may claim the benefit of one

or more prior copending provisional

applications.

Section 1.78(a)(3) is also being

changed to remind applicants and

practitioners that when the last day of

pendency of a provisional application

falls on a Saturday, Sunday, or Federal

holiday within the District of Columbia,

any nonprovisional application

claiming benefit of the provisional

application must be filed prior to the

Saturday, Sunday, or Federal holiday

within the District of Columbia. Section

111(b)(5) of title 35, United States Code,

states that a provisional application is

abandoned twelve months after its filing

date. Sections 119 (e)(1) and (e)(2) of

title 35, United States Code, require that

a nonprovisional application claiming

benefit of a prior provisional application

be filed not later than twelve months

after the date on which the provisional

application was filed and that the

provisional application be pending on

the filing date of the nonprovisional

application. Under § § 1.6 and 1.10, no

filing dates are accorded to applications

on a Saturday, Sunday, or Federal

holiday within the District of Columbia.

Thus, if a provisional application is

abandoned by operation of 35 U.S.C.

111(b)(5) on a Saturday, Sunday, or

Federal holiday within the District of

Columbia, a nonprovisional application

claiming benefit of the provisional

application under 35 U.S.C. 119(e) must

be filed no later than the preceding day

which is not a Saturday, Sunday, or

Federal holiday within the District of

Columbia.

Section 1.78(a)(4) is also being

changed to delete the requirement that

the reference in the nonprovisional

application to the provisional

application indicate the relationship of

the applications. As a result of the

change, § 1.78(a)(4) provides that a

nonprovisional application claiming

benefit of one or more provisional

applications must contain a reference to

each provisional application,

identifying it as a provisional

application and including the

provisional application number

(consisting of series code and serial

number). However, the section does not

require the nonprovisional application

to identify the nonprovisional

application as a continuation, divisional

or continuation-in-part application of

the provisional application.

Section 1.83(a) is being changed to

delete the proposed redesignation of

paragraph (a) and to delete proposed

paragraph (a)(2). Also, §§ 1.83 (a) and (c)

are being changed for clarity to refer to

a ‘‘nonprovisional’’ application. Further,

§ 1.83(c) is being changed to remove the

reference to paragraph (a)(1).

Section 1.101 is being changed for

clarity to refer to a ‘‘nonprovisional’’

application.
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20199

Sections 1.129 (a) and (b) are being

changed to identify the effective date of

35 U.S.C. 154(a)(2) as June 8, 1995.

Further, § 1.129(a) is being changed to

provide that the first and second

submissions and fees set forth in

§ 1.17(r) must be filed prior to the filing

of an Appeal Brief, rather than prior to

the filing of the Notice of Appeal, and

prior to abandonment of the application.

The requirement that the fee set forth in

§ 1.17(r) be filed within one month of

the notice refusing entry is being

deleted. Section 1.129(a) is also being

changed to provide that the finality of

the final rejection is automatically

withdrawn upon the timely filing of the

submission and payment of the fee set

forth in § 1.17(r). The language

indicating that the submission would be

entered and considered after timely

payment of the fee set forth in § 1.17(r)

‘‘to the extent that it would have been

entered and considered if made prior to

final rejection’’ is being deleted. In view

of the magnitude of the fee set forth in

§ 1.17(r), the next PTO action following

timely payment of the fee set forth in

§ 1.17(r) will be equivalent to a first

action in a continuing application.

Under existing PTO practice, it would

not be proper to make final a first Office

action in a continuing application

where the continuing application

contains material which was presented

in the earlier application after final

rejection or closing of prosecution but

was denied entry because (1) new issues

were raised that required further

consideration and/or search, or (2) the

issue of new matter was raised. The

identical procedure will apply to

examination of a submission considered

as a result of the procedure under

§ 1.129(a). Thus, under § 1.129(a), if the

first submission after final rejection was

initially denied entry in the application

because (1) new issues were raised that

required further consideration and/or

search, or (2) the issue of new matter

was raised, then the next action in the

application will not be made final.

Likewise, if the second submission after

final rejection was initially denied entry

in the application because (1) new

issues were raised that required further

consideration and/or search, or (2) the

issue of new matter was raised, then the

next action in the application will not

be made final. In view of 35 U.S.C. 132,

no amendment considered as a result of

the payment of the fee set forth in

§ 1.17(r) may introduce new matter into

the disclosure of the application.

Section 1.129(b)(1) is being changed

to identify the date which is two months

prior to the effective date of 35 U.S.C.

154(a)(2) as April 8, 1995. Section

1.129(b)(1) is also being changed to

clarify in subsection (ii) that the

examiner has not made a requirement

for restriction in the present or parent

application prior to April 8, 1995, due

to actions by the applicant.

Section 1.129(b)(2) is being changed

to delete the identification of the period

provided for applicants to respond to a

notification under § 1.129(b) as one

month. The time period for response

will be identified in any written

notification under § 1.129(b) and will

usually be one month, but in no case

will it be less than thirty days. The

period may be extended under

§ 1.136(a). The language is also being

changed to provide that applicant may

respond to the notification by (i)

electing the invention or inventions to

be searched and examined, if no

election has been made prior to the

notice, and paying the fee set forth in

§ 1.17(s) for each independent and

distinct invention claimed in the

application in excess of one which

applicant elects, (ii) confirming an

election made prior to the notice and

paying the fee set forth in § 1.17(s) for

each independent and distinct

invention claimed in the application in

addition to the one invention which

applicant previously elected, or (iii)

filing a petition under § 1.129(b)(2)

traversing the requirement without

regard to whether the requirement has

been made final. No petition fee is

required. The section is also being

changed to provide that if the petition

under § 1.129(b)(2) is filed in a timely

manner, the original time period for

electing and paying the fee set forth in

§ 1.17(s) will be deferred and any

decision on the petition affirming or

modifying the requirement will set a

new time period to elect the invention

or inventions to be searched and

examined and to pay the fee set forth in

§ 1.17(s) for each independent and

distinct invention claimed in the

application in excess of one which

applicant elects.

Section 1.129(c) is being changed to

clarify that the provisions of §§ 1.129 (a)

and (b) are not applicable to any

application filed after June 8, 1995.

However, any application filed on June

8, 1995 would be subject to a 20-year

patent term.

Section 1.137 is being amended by

revising paragraph (c) to eliminate, in

all applications filed on or after June 8,

1995, except design applications, the

requirement that a terminal disclaimer

accompany any petition under

§ 1.137(a) not filed within six (6)

months of the date of the abandonment

of the application. The language ‘‘filed

before June 8, 1995’’ and ‘‘filed on or

after June 8, 1995’’ as used in the

amended rule, refer to the actual United

States filing date, without reference to

any claim for benefit under 35 U.S.C.

120, 121, or 365. No change to § 1.137

was proposed in the Notice of Proposed

Rulemaking. However, in all

applications filed on or after June 8,

1995, except design applications, any

delay in filing a petition under

§ 1.137(a) will automatically result in

the loss of patent term. The loss of

patent term will be the incentive for

applicants to promptly file any petition

to revive. Therefore, no need is seen for

requiring a terminal disclaimer in such

applications. It would amount to a

penalty if a terminal disclaimer was

required.

Section 1.136 is being amended by

revising paragraph (d) to eliminate, in

all applications filed on or after June 8,

1995, except design applications, the

requirement that a terminal disclaimer

accompany any petition under

§ 1.316(b) not filed within six (6)

months of the date of the abandonment

of the application. Acceptance of a late

payment of an issue fee in a design

application is specifically provided for

in § 1.155. Therefore, § 1.316 does not

apply to design applications. The

language ‘‘filed before June 8, 1995’’ as

used in the amended rule, refers to the

actual United States filing date, without

reference to any claim for benefit under

35 U.S.C. 120, 121, or 365. No change

to § 1.316 was proposed in the Notice of

Proposed Rulemaking. However, in all

applications filed on or after June 8,

1995, except design applications, any

delay in filing a petition under

§ 1.316(b) will automatically result in

the loss of patent term. The loss of

patent term will be the incentive for

applicants to promptly file any petition

under § 1.316(b). Therefore, no need is

seen for requiring a terminal disclaimer

in such applications. It would amount

to a penalty if a terminal disclaimer was

required.

Section 1.317 is being amended by

removing and reserving paragraph (d) to

eliminate the requirement that a

terminal disclaimer accompany any

petition under § 1.317(b) not filed

within six (6) months of the date of

lapse of the patent. No change to § 1.317

was proposed in the Notice of Proposed

Rulemaking. However, the delay in

filing a petition under § 1.317(b) does

not result in any gain of patent term.

Therefore, no reason is seen for

requiring a terminal disclaimer in such

cases.

Section 1.701(a) is being changed to

identify the implementation date as

June 8, 1995, and to clarify that a

proceeding under 35 U.S.C. 135(a) is an

interference proceeding.
20200 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

Section 1.701(b) is being changed to

provide that the term of a patent entitled

to an extension under § 1.701 shall be

extended for the sum of the periods of

delay calculated under paragraphs

(c)(1), (c)(2), (c)(3) and (d) of § 1.701 and

the extension will run from the

expiration date of the patent. The

reference to a terminal disclaimer is

being deleted to be consistent with

§ 1.701(a)(3) and to avoid any confusion.

Section 1.701(c)(1)(i) is being changed

for clarity by deleting the phrase ‘‘if

any’’ after the first occurrence of

‘‘interference’’ and by inserting the same

phrase after the phrase ‘‘the number of

days.’’

Section 1.701(c)(1)(ii) is being

changed to clarify that the period

referred to ends on the ‘‘date of the

termination of the suspension’’ rather

than on the date of the next PTO

communication reopening prosecution.

Section 1.701(d)(1) is being amended

to clarify that the ‘‘time’’ referred to is

time ‘‘during the period of appellate

review’’.

Section 1.701(d)(2) is being amended

to clarify that the Commissioner, under

the broad discretion granted by 35

U.S.C. 154(b)(3)(C), has decided to limit

consideration of applicant’s due

diligence only to acts occurring during

the period of appellate review. The

supplementary information published

in the Notice of Proposed Rulemaking

contained examples of what might be

considered a lack of due diligence for

purposes of § 1.701(d)(2) as proposed.

Specifically, the supplementary

information identified requests for

extensions of time to respond to Office

communications, submission of a

response which is not fully responsive

to an Office communication, and filing

of informal applications as examples. In

view of the comments received and the

language adopted in the final rules,

those examples are withdrawn. Acts

which the Commissioner considers to

constitute prima facie evidence of lack

of due diligence under § 1.701(d)(2) are

suspensions at applicant’s request under

§ 1.103(a) during the period of appellate

review and abandonments during the

period of appellate review.

Discussion of Specific Rules

Title 37 of the Code of Federal

Regulations, Parts 1 and 3, are being

amended as indicated below:

Section 1.1 is being amended to add

a paragraph (i) to provide a special ‘‘Box

Provisional Patent Application’’ address

to assist the Mail Room in separating

and processing provisional applications

and mail relating thereto.

Section 1.9 is being amended to

redesignate paragraph (a) as paragraph

(a)(1) and to define a national

application as a U.S. application for

patent which was either filed in the

Office under 35 U.S.C. 111, or which

entered the national stage from an

international application after

compliance with 35 U.S.C. 371. A new

paragraph (a)(2) is being added to define

the term ‘‘provisional application’’ as a

U.S. national application filed under 35

U.S.C. 111(b). Also, a new paragraph

(a)(3) is being added to define the term

‘‘nonprovisional application’’ as a U.S.

national application for patent which

was either filed in the Office under 35

U.S.C. 111(a), or which entered the

national stage from an international

application after compliance with 35

U.S.C. 371.

Sections 1.12 and 1.14 are being

amended to replace the references to

§ 1.17(i)(1) with references to § 1.17(i).

Sections 1.16(a)–(e) and (g) are being

amended to clarify that those sections

do not apply to provisional

applications. A complete provisional

application does not require claims.

However, provisional applications may

be filed with one or more claims as part

of the application. Nevertheless, no

additional claim fee or multiple

dependent claim fee will be required in

a provisional application. Section

1.16(f) is being amended to insert the

words ‘‘basic fee’’. Section 1.16(e) refers

to ‘‘the basic filing fee’’. Current Office

practice allows a design application to

be filed without the design filing fee or

the oath/declaration as set forth in

§ 1.53(d)(1). The change to § 1.16(f) is

merely for clarification. In addition,

§ 1.16(a) is being amended to replace the

word ‘‘cases’’ with the word

‘‘applications’’, since the word

‘‘applications’’ is used elsewhere in the

rule.

Section 1.16 is also being amended to

add a new paragraph (k) which lists the

basic filing fee for a provisional

application as $75.00 for a small entity

(see §§ 1.9(c)–(f)) or $150.00 for other

than a small entity as contained in

Public Law 103–465. Since the filing fee

for a provisional application is

established by Public Law 103–465 as a

35 U.S.C. 41(a) fee, the filing fee for a

provisional application will be subject

to the fifty (50) percent reduction

provided for in 35 U.S.C. 41(h).

Further, § 1.16 is being amended to

add a new paragraph (1) which

establishes the surcharge required by

new § 1.53(d)(2) for filing the basic

filing fee or the cover sheet required by

new § 1.51(a)(2) for a provisional

application at a time later than the

provisional application filing date as

$25.00 for a small entity or $50.00 for

other than a small entity.

Section 1.17(h) is being amended to

clarify that the $130.00 petition fee for

filing a petition for correction of

inventorship under § 1.48 applies to all

patent applications, except provisional

applications. Paragraph (i)(1) is being

redesignated as paragraph (i) and

paragraph (i)(2) is being removed. The

fee for a petition under § 1.102 to make

an application special has been placed

in paragraph (i). The words ‘‘of this

part’’, in § 1.17, paragraphs (h) and (i),

are being deleted, since the paragraphs

currently refer to sections in parts other

than Part 1. Section 1.17(i) is also being

amended to clarify that the fee set forth

in paragraph (i) for filing a petition to

accord a filing date under § 1.53 applies

to all patent applications, except

provisional applications.

A new § 1.17(q) is being added to

establish a petition fee of $50.00 for

filing a petition for correction of

inventorship under § 1.48 in a

provisional application and for filing a

petition to accord a provisional

application a filing date or to convert an

application filed under § 1.53(b)(1) to a

provisional application. The petition fee

set forth in § 1.17(q) is not reduced for

a small entity.

New §§ 1.17 (r) and (s) are being

added to establish the fees for entry of

a submission after final rejection under

§ 1.129(a) and for each additional

invention requested to be examined

under § 1.129(b), respectively. These

fees have been set at $365.00 for a small

entity and $730.00 for other than a small

entity.

Section 1.21(l) is being amended to

refer to § 1.53(d)(1).

Section 1.28(a) is being amended to

clarify the procedure for establishing

status as a small entity in a

nonprovisional application claiming

benefit under 35 U.S.C. 119(e), 120, 121,

or 365(c) of a prior application. In such

cases, applicants may file a new verified

statement or rely on a verified statement

filed in the prior application, if status as

a small entity is still proper and desired.

If applicants intend to rely on a verified

statement filed in the prior application,

applicants must include in the

nonprovisional application either a

reference to the verified statement filed

in the prior application or a copy of the

verified statement filed in the prior

application. Status as a small entity may

be established in a provisional

application by complying with existing

§ 1.27.

Section 1.45(c) is being amended to

clarify that the first sentence applies to

a ‘‘nonprovisional’’ application. Section

1.45 (c) is also being amended to add a

second sentence relating to joint

inventors named in a provisional
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20201

application. The second sentence states

that each inventor named in a

provisional application must have made

a contribution to the subject matter

disclosed in the provisional application.

All that § 1.45(c), second sentence,

requires is that if a person is named as

an inventor in a provisional application,

that person must have made a

contribution to the subject matter

disclosed in the provisional application.

Sections 1.48 (a)–(c) are being

amended to specify that the procedures

for correcting an error in inventorship

set forth in those sections apply to

nonprovisional applications. New

paragraph (d) is being added to establish

a procedure for adding the name of an

inventor in a provisional application,

where the name was originally omitted

without deceptive intent. Paragraph (d)

does not require the verified statement

of facts by the original inventor or

inventors, the oath or declaration by

each actual inventor in compliance with

§ 1.63 or the consent of any assignee as

required in paragraph (a). Instead, the

procedure requires the filing of a

petition identifying the name or names

of the inventors to be added and

including a statement that the name or

names of the inventors were omitted

through error without deceptive

intention on the part of the actual

inventor(s). The statement would be

required to be verified if made by a

person not registered to practice before

the PTO. The statement could be signed

by a registered practitioner of record in

the application or acting in a

representative capacity under § 1.34(a).

The $50.00 petition fee set forth in

§ 1.17(q) would also be required. New

paragraph (e) is also being added setting

forth the procedure for deleting the

name of a person who was erroneously

named as an inventor in a provisional

application. The procedure requires an

amendment deleting the name of the

person who was erroneously named

accompanied by: a petition including a

statement of facts verified by the person

whose name is being deleted

establishing that the error occurred

without deceptive intention; the fee set

forth in § 1.17(q); and the written

consent of any assignee.

Section 1.51 is being amended to

redesignate § 1.51(a) as § 1.51(a)(1) and

to include a new paragraph (a)(2)

identifying the required parts of a

complete provisional application. As set

forth in § 1.51(a)(2), a complete

provisional application includes a cover

sheet, a specification as prescribed in 35

U.S.C. 112, first paragraph, any

necessary drawings and the provisional

application filing fee. A suggested cover

sheet format for a provisional

application is included as an Appendix

A to this Notice of Final Rulemaking

and is available from the PTO free of

charge to the public. However, the rule

does not require the applicant to use the

PTO suggested cover sheet. Any paper

containing the information required in

§ 1.51(a)(2)(i) will be acceptable. The

cover sheet is required to identify the

paper as a provisional application and

to provide the information which is

necessary for the PTO to prepare the

provisional application filing receipt.

Also, the residence of each named

inventor and, if the invention disclosed

in the provisional application was made

by an agency of the U.S. Government or

under a contract with an agency of the

U.S. Government, the name of the U.S.

Government agency and Government

contract number must be identified on

the cover sheet.

Section 1.51(b) is being amended to

indicate that an information disclosure

statement is not required and may not

be filed in a provisional application.

Any information disclosure statements

filed in a provisional application will

either be returned or disposed of at the

convenience of the Office. An

information disclosure statement filed

in a § 1.53(b)(1) application which has

been converted to a provisional

application will be retained in the

application after the conversion, if the

information disclosure statement was

filed before the petition required by

§ 1.53(b)(2)(ii) was filed.

The title of § 1.53 and paragraph (a)

are being amended to refer to

application number, rather than

application serial number. The term

‘‘application number’’ is found in

current § 1.53(a).

Section 1.53(b) is being redesignated

as § 1.53(b)(1) and is being amended to

refer to § 1.17(i) rather than § 1.17(i)(1)

to conform to the change therein.

A new § 1.53(b)(2) is being added to

set forth the requirements for obtaining

a filing date for a provisional

application. Section 1.53(b)(2) states

that a filing date will be accorded to a

provisional application as of the date

the specification as prescribed by 35

U.S.C. 112, first paragraph, any

necessary drawings, and the name of

each inventor of the subject matter

disclosed are filed in the PTO. The

filing date requirements for a

provisional application set forth in new

paragraph (b)(2) parallel the existing

requirements set forth in former

paragraph (b), now redesignated

paragraph (b)(1), except that no claim is

required. In order to minimize the cost

of processing provisional applications

and to reduce the handling of

provisional applications, amendments,

other than those required to make the

provisional application comply with

applicable regulations, are not permitted

after the filing date of the provisional

application.

Section 1.53(b)(2)(i) is being added

requiring all provisional applications to

be filed with a cover sheet identifying

the application as a provisional

application. The section also indicates

that the PTO will treat an application as

having been filed under § 1.53(b)(1),

unless the application is identified as a

provisional application on filing. A

provisional application, which is

identified as such on filing, but which

does not include all of the information

required by § 1.51(a)(2)(i) would still be

treated as a provisional application.

However, the omitted information and a

surcharge would be required to be

submitted at a later date under new

§ 1.53(d)(2).

Section 1.53(b)(2)(ii) is being added to

establish a procedure for converting an

application filed under § 1.53(b)(1) to a

provisional application. The section

requires that a petition requesting the

conversion and a petition fee be filed in

the § 1.53(b)(1) application prior to the

earlier of the abandonment of the

§ 1.53(b)(1) application, the payment of

the issue fee, the expiration of twelve

(12) months after the filing date of the

§ 1.53(b)(1) application, or the filing of

a request for a statutory invention

registration under § 1.293. The grant of

any such petition would not entitle

applicant to a refund of the fees

properly paid in the application filed

under § 1.53(b)(1).

Section 1.53(b)(2)(iii) is being added

to call attention to the provisions of

Public Law 103–465 which prohibit any

provisional application from claiming a

right of priority under 35 U.S.C. 120,

121 or 365(c) of any other application.

The section also calls attention to the

provisions of Public Law 103–465

which provide that no claim for benefit

of an earlier filing date may be made in

a design application based on a

provisional application and that no

request for a statutory invention

registration may be filed in a provisional

application. Section 1.53(b)(2)(iii)

further specifies that the requirements

of §§ 1.821–1.825 are not mandatory for

provisional applications. However,

applicants are reminded that an

invention being claimed in an

application filed under 35 U.S.C. 111(a)

or 365 which claims benefit under 35

U.S.C. 119(e) of a provisional

application must be disclosed in the

provisional application in the manner

provided by the first paragraph of 35

U.S.C. 112. Voluntary compliance with

the requirements of §§ 1.821–1.825 in
20202 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

the provisional application is

recommended, in order to ensure that

support for the invention claimed in the

35 U.S.C. 111(a) application can be

readily ascertained in the provisional

application.

Section 1.53(c) is being amended to

require that any request for review of a

refusal to accord an application a filing

date be made by way of a petition

accompanied by the fee set forth in

§ 1.17(i), if the application was filed

under § 1.53(b)(1), or by the fee set forth

in § 1.17(q), if the application was filed

under § 1.53(b)(2). This reflects the

current practice set forth in the Manual

of Patent Examining Procedure (MPEP),

section 506.02 (Sixth Edition, Jan. 1995)

with regard to any request for review of

a refusal to accord a filing date for an

application. The PTO will continue its

current practice of refunding the

petition fee, if the refusal to accord the

requested filing date is found to have

been a PTO error.

Section 1.53(d) is being redesignated

as § 1.53(d)(1).

Section 1.53(d)(2) is being added to

provide that a provisional application

may be filed without the basic filing fee

and without the complete cover sheet

required by § 1.51(a)(2). In such a case,

the applicant will be notified and given

a period of time in which to file the

missing fee, and/or cover sheet and to

pay the surcharge set forth in § 1.16(l).

Section 1.53(e) is being redesignated

as § 1.53(e)(1) and amended to refer to

§ 1.53(b)(1). Also, a new § 1.53(e)(2) is

being added to indicate that a

provisional application will not be

given a substantive examination and

will be abandoned no later than twelve

(12) months after its filing date.

Sections 1.55(a) and (b) are being

amended to clarify that the sections

apply to nonprovisional applications

and to clarify that a nonprovisional

application may claim the benefit of one

or more prior foreign applications or

one or more applications for inventor’s

certificate. Also, § 1.55(a) is being

amended to replace the reference to 35

U.S.C. 119 with a reference to 35 U.S.C.

119(a)–(d). In addition, the reference to

§ 1.17(i)(1) in § 1.55(a) is being replaced

by a reference to § 1.17(i) to be

consistent with the change to § 1.17.

Section 1.55(b) is also being amended to

refer to 35 U.S.C. 119(d) to conform to

the paragraph designations contained in

Public Law 103–465.

Section 1.59 is being amended to

clarify that the retention fee practice set

forth in § 1.53(d)(1) applies only to

applications filed under § 1.53(b)(1).

Section 1.60 is being amended to

clarify in the title of the section and in

paragraph (b)(1) that the procedure set

forth in the section is only available for

filing a continuation or divisional

application if the prior application was

a nonprovisional application and

complete as set forth in § 1.51(a)(1).

Paragraph (b)(4) is being amended to

delete the requirement that the

statement which must accompany the

copy of the prior application include the

language that ‘‘no amendments referred

to in the oath or declaration filed to

complete the prior application

introduced new matter therein.’’ The

requirement is unnecessary because any

amendment filed to complete the prior

application would be considered a part

of the original disclosure of the prior

application and, by definition, could not

contain new matter. Also, paragraph

(b)(4) is being amended to refer to

§ 1.17(i).

Section 1.62(a) is being amended to

clarify that the procedure set forth in the

section is only available for filing a

continuation, continuation-in-part, or

divisional application of a prior

nonprovisional application which is

complete as defined in § 1.51(a)(1).

Section 1.62(a) is also being amended to

clarify that a continuing application

may be filed under § 1.62 after payment

of the issue fee if a petition under

§ 1.313(b)(5) is granted in the prior

application and that the request for a

§ 1.62 application must include

identification of the inventors named in

the prior application. The phrase ‘‘Serial

number, filing date’’ in § 1.62(a) is being

changed to ‘‘application number.’’

Section 1.62(e) is being amended to

replace the reference to § 1.17(i)(1) with

a reference to § 1.17(i) to be consistent

with the change to § 1.17. Also, the term

‘‘application serial number’’ in § 1.62(e)

is being changed to ‘‘application

number.’’

Section 1.63(a) is being amended to

replace the reference to § 1.51(a)(2) with

a reference to § 1.51(a)(1)(ii) in order to

conform with the changes in § 1.51 and

to refer to an oath or declaration filed

as a part of a nonprovisional

application.

Section 1.67(b) is being amended to

replace the reference to § 1.53(d) with a

reference to § 1.53(d)(1) in order to

conform with the changes in § 1.53.

Furthermore, the references to §§ 1.53(b)

and 1.118 are being deleted to make

clear that the new matter exclusion

applies to all applications including

those filed under §§ 1.60 and 1.62. Also,

the section is being amended to refer to

a nonprovisional application.

Sections 1.78 (a)(1) and (a)(2) are

being amended to clarify that the

sections apply to nonprovisional

applications claiming the benefit of one

or more copending nonprovisional

applications or international

applications designating the United

States of America. Section 1.78(a)(1)(iii)

is being amended to refer to

§§ 1.53(b)(1) and 1.53(d)(1). Section

1.78(a)(2) is also being amended to

eliminate the use of serial number and

filing date as an identifier for a prior

application. The section will require

that the prior application be identified

by application number (consisting of the

series code and serial number) or

international application number and

international filing date.

Sections 1.78 (a)(3) and (a)(4) are

being added to set forth the conditions

under which a nonprovisional

application may claim the benefit of one

or more prior copending provisional

applications. The later filed

nonprovisional application must be an

application other than for a design

patent and must be copending with each

provisional application. There must be

a common inventor named in the prior

provisional application and the later

filed nonprovisional application. Each

prior provisional application must be

complete as set forth in § 1.51(a)(2), or

entitled to a filing date as set forth in

§ 1.53(b)(2) and include the basic filing

fee. Section 1.78(a)(3) also includes the

warning that when the last day of

pendency of a provisional application

falls on a Saturday, Sunday, or Federal

holiday within the District of Columbia,

any nonprovisional application

claiming benefit of the provisional

application must be filed prior to the

Saturday, Sunday, or Federal holiday

within the District of Columbia. A

provisional application may be

abandoned by operation of 35 U.S.C.

111(b)(5) on a Saturday, Sunday, or

Federal holiday within the District of

Columbia, in which case, a

nonprovisional application claiming

benefit of the provisional application

under 35 U.S.C. 119(e) must be filed no

later than the preceding day which is

not a Saturday, Sunday, or Federal

holiday within the District of Columbia.

Section 1.78(a)(4) is also being added

to provide that a nonprovisional

application claiming benefit of one or

more provisional applications must

contain a reference to each provisional

application, identifying it as a

provisional application and including

the provisional application number

(consisting of series code and serial

number). The section does not require

the nonprovisional application to

identify the nonprovisional application

as a continuation, divisional or

continuation-in-part application of the

provisional application.
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20203

Sections 1.83 (a) and (c) are being

amended to clarify that the sections

apply to nonprovisional applications.

Section 1.97(d) is being amended to

replace the reference to § 1.17(i)(1) with

a reference to § 1.17(i) to be consistent

with the change to § 1.17.

Section 1.101(a) is being amended to

indicate that the section applies to

nonprovisional applications.

Section 1.102(d) is being amended to

replace the reference to § 1.17(i)(2) with

a reference to § 1.17(i) to be consistent

with the change to § 1.17.

Section 1.103(a) is amended to

replace the reference to § 1.17(i)(1) with

a reference to § 1.17(i) to be consistent

with the change to § 1.17.

Section 1.129 is being added to set

forth the procedure for implementing

certain transitional provisions contained

in Public Law 103–465. Section 1.129(a)

provides for limited reexamination of

applications pending for 2 years or

longer as of June 8, 1995, taking into

account any reference to any earlier

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

365(c). An applicant will be entitled to

have a first submission entered and

considered on the merits after final

rejection if the submission and the fee

set forth in § 1.17(r) are filed prior to the

filing of an Appeal Brief and prior to

abandonment of the application. Section

1.129(a) also provides that the finality of

the final rejection is automatically

withdrawn upon the timely filing of the

submission and payment of the fee set

forth in § 1.17(r). After submission and

payment of the fee set forth in § 1.17(r),

the next PTO action on the merits may

be made final only under the conditions

currently followed by the PTO for

making a first action in a continuing

application final. If a subsequent final

rejection is made in the application,

applicant would be entitled to have a

second submission entered and

considered on the merits under the

same conditions set forth for

consideration of the first submission.

Section 1.129(a) defines the term

‘‘submission’’ as including, but not

limited to, an information disclosure

statement, an amendment to the written

description, claims or drawings, and a

new substantive argument or new

evidence in support of patentability. For

example, the submission may include

an amendment, a new substantive

argument and an information disclosure

statement. In view of the fee set forth in

§ 1.17(r), any information disclosure

statement previously refused

consideration in the application because

of applicant’s failure to comply with

§ 1.97 (c) or (d) or which is filed as part

of either the first or second submission

will be treated as though it had been

filed within one of the time periods set

forth in § 1.97(b) and will be considered

without the petition and petition fee

required in § 1.97(d), if it complies with

the requirements of § 1.98. In view of 35

U.S.C. 132, no amendment considered

as a result of the payment of the fee set

forth in § 1.17(r) may introduce new

matter into the disclosure of the

application.

Section 1.129(b)(1) is being added to

provide for examination of more than

one independent and distinct invention

in certain applications pending for 3

years or longer as of June 8, 1995, taking

into account any reference to any earlier

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

365(c). Under § 1.129(b)(1), a

requirement for restriction or for the

filing of divisional applications would

only be made or maintained in the

application after June 8, 1995, if: (1) The

requirement was made in the

application or in an earlier application

relied on under 35 U.S.C. 120, 121 or

365(c) prior to April 8, 1995; (2) the

examiner has not made a requirement

for restriction in the present or parent

application prior to April 8, 1995, due

to actions by the applicant; or (3) the

required fee for examination of each

additional invention was not paid.

Under § 1.129(b)(2), if the application

contains claims to more than one

independent and distinct invention, and

no requirement for restriction or for the

filing of divisional applications can be

made or maintained, applicant will be

notified and given a time period to (i)

elect the invention or inventions to be

searched and examined, if no election

has been made prior to the notice, and

pay the fee set forth in § 1.17(s) for each

independent and distinct invention

claimed in the application in excess of

one which applicant elects, (ii) in

situations where an election was made

in response to a requirement for

restriction that cannot be maintained,

confirm the election made prior to the

notice and pay the fee set forth in

§ 1.17(s) for each independent and

distinct invention claimed in the

application in addition to the one

invention which applicant previously

elected, or (iii) file a petition under

§ 1.129(b)(2) traversing the requirement

without regard to whether the

requirement has been made final. No

petition fee is required. Section

1.129(b)(2) also provides that if the

petition is filed in a timely manner, the

original time period for electing and

paying the fee set forth in § 1.17(s) will

be deferred and any decision on the

petition affirming or modifying the

requirement will set a new time period

to elect the invention or inventions to be

searched and examined and to pay the

fee set forth in § 1.17(s) for each

independent and distinct invention

claimed in the application in excess of

one which applicant elects. Under

§ 1.129(b)(3), each additional invention

for which the required fee set forth in

§ 1.17(s) has not been paid will be

withdrawn from consideration under

§ 1.142(b). An applicant who desires

examination of an invention so

withdrawn from consideration can file a

divisional application under 35 U.S.C.

121.

Section 1.129(c) is being added to

clarify that the provisions of §§ 1.129 (a)

and (b) are not applicable to any

application filed after June 8, 1995.

However, any application filed on June

8, 1995, would be subject to a 20-year

patent term.

Section 1.137 is being amended by

revising paragraph (c) to eliminate, in

all applications filed on or after June 8,

1995, except design applications, the

requirement that a terminal disclaimer

accompany any petition under

§ 1.137(a) not filed within six (6)

months of the date of the abandonment

of the application. The language ‘‘filed

before June 8, 1995’’ and ‘‘filed on or

after June 8, 1995’’ as used in the

amended rule, refer to the actual United

States filing date, without reference to

any claim for benefit under 35 U.S.C.

120, 121 or 365.

Section 1.139 is being added to set

forth the procedure for reviving a

provisional application where the delay

was unavoidable or unintentional.

Section 1.139(a) addresses the revival of

a provisional application where the

delay was unavoidable and § 1.139(b)

addresses the revival of a provisional

application where the delay was

unintentional. Applicant may petition

to have an abandoned provisional

application revived as a pending

provisional application for a period of

no longer than twelve months from the

filing date of the provisional application

where the delay was unavoidable or

unintentional. It would be permissible

to file a petition for revival later than

twelve months from the filing date of

the provisional application but only to

revive the application for the twelvemonth period following the filing of the

provisional application. Thus, even if

the petition were granted to reestablish

the pendency up to the end of the

twelve-month period, the provisional

application would not be considered

pending after twelve months from its

filing date. The requirements for

reviving an abandoned provisional

application set forth in § 1.139 parallel

the existing requirements set forth in

§ 1.137.
20204 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

Sections 1.177, 1.312(b), 1.313(a), and

1.314 are being amended to replace the

references to § 1.17(i)(1) with references

to § 1.17(i) to be consistent with the

change to § 1.17.

Section 1.316(d) is being amended to

eliminate, in all applications filed on or

after June 8, 1995, except design

applications, the requirement that a

terminal disclaimer accompany any

petition under § 1.316(b) not filed

within six (6) months of the date of the

abandonment of the application.

Acceptance of a late payment of an issue

fee in a design application is

specifically provided for in § 1.155.

Therefore, § 1.316 does not apply to

design applications. The language ‘‘filed

before June 8, 1955’’ as used in the

amended rule, refers to the actual

United States filing date, without

reference to any claim for benefit under

35 U.S.C. 120, 121 or 365.

Section 1.317(d) is being removed and

reserved to eliminate the requirement

that a terminal disclaimer accompany

any petition under § 1.317(b) not filed

within six (6) months of the date of

lapse of the patent.

Section 1.666 is being amended to

replace the reference to § 1.17(i)(1) with

a reference to § 1.17(i) to be consistent

with the change to § 1.17.

Section 1.701 is being added to set

forth the procedure the PTO will follow

in calculating the length of any

extension of patent term to which an

applicant is entitled under 35 U.S.C.

154(b) where the issuance of a patent on

an application, other than for designs,

filed on or after June 8, 1995, was

delayed due to certain causes of

prosecution delay. Applicants need not

file a request for the extension of patent

term under § 1.701. The extension of

patent term is automatic by operation of

law. It is currently anticipated that

applicant will be advised as to the

length of any patent term extension at

the time of receiving the Notice of

Allowance and Issue Fee Due. Review of

the length of a patent term extension

calculated by the PTO under § 1.701

prior to the issuance of the patent would

be by way of petition under § 1.181. If

an error is noted after the patent issues,

patentee and any third party may seek

correction of the period of patent term

granted by filing a request for Certificate

of Correction pursuant to § 1.322. The

PTO intends to identify the length of

any patent term extension calculated

under § 1.701 on the printed patent.

Section 1.701(a) is being added to

identify those patents which are entitled

to an extension of patent term under 35

U.S.C. 154(b).

Section 1.701(b) is being added to

provide that the term of a patent entitled

to extension under § 1.701(a) shall be

extended for the sum of the periods of

delay calculated under §§ 1.701 (c)(1),

(c)(2), (c)(3) and (d), to the extent that

those periods are not overlapping, up to

a maximum of five years. The section

also provides that the extension will run

from the expiration date of the patent.

Section 1.701(c)(1) is being added to

set forth the method for calculating the

period of delay where the delay was a

result of an interference proceeding

under 35 U.S.C. 135(a). The period of

delay with respect to each interference

in which the application was involved

is calculated under § 1.701(c)(1)(i) to

include the number of days in the

period beginning on the date the

interference was declared or redeclared

to involve the application in the

interference and ending on the date that

the interference was terminated with

respect to the application. An

interference is considered terminated as

of the date the time for filing an appeal

under 35 U.S.C. 141 or civil action

under 35 U.S.C. 146 expired. If an

appeal under 35 U.S.C. 141 is taken to

the Court of Appeals for the Federal

Circuit, the interference terminates on

the date of receipt of the court’s

mandate by the PTO. If a civil action is

filed under 35 U.S.C. 146, and the

decision of the district court is not

appealed, the interference terminates on

the date the time for filing an appeal

from the court’s decision expires. See

section 2361 of the MPEP. The period of

delay with respect to an application

suspended by the PTO due to

interference proceedings under 35

U.S.C. 135(a) not involving the

application is calculated under

§ 1.701(c)(1)(ii) to include the number of

days in the period beginning on the date

prosecution in the application is

suspended due to interference

proceedings not involving the

application and ending on the date of

the termination of the suspension. The

period of delay under § 1.701(a)(1) is the

sum of the periods calculated under

§§ 1.701 (c)(1)(i) and (c)(1)(ii), to the

extent that the periods are not

overlapping.

Section 1.701(c)(2) is being added to

set forth the method for calculating the

period of delay where the delay was a

result of the application being placed

under a secrecy order.

Section 1.701(c)(3) is being added to

set forth the method for calculating the

period of delay where the delay was a

result of appellate review. The period of

delay is calculated under § 1.701(c)(3) to

include the number of days in the

period beginning on the date on which

an appeal to the Board of Patent

Appeals and Interferences was filed

under 35 U.S.C. 134 and ending on the

date of a final decision in favor of the

applicant by the Board of Patent

Appeals and Interferences or by a

Federal court in an appeal under 35

U.S.C. 141 or a civil action under 35

U.S.C. 145.

Section 1.701(d) is being added to set

forth the method for calculating any

reduction in the period calculated under

§ 1.701(c)(3). As required by 35 U.S.C.

154(b)(3)(B), § 1.701(d)(1) provides that

the period of delay calculated under

§ 1.701(c)(3) shall be reduced by any

time during the period of appellate

review that occurred before three years

from the filing date of the first national

application for patent presented for

examination. The ‘‘filing date’’ for the

purpose of § 1.701(d)(1) would be the

earliest effective U.S. filing date, but not

including the filing date of a provisional

application or the international filing

date of a PCT application. For PCT

applications entering the national stage,

the PTO will consider the ‘‘filing date’’

for the purpose of § 1.701(d)(1) to be the

date on which applicant has complied

with the requirements of § 1.494(b), or

§ 1.495(b), if applicable.

As contained in Public Law 103–465,

35 U.S.C. 154(b)(3)(C) states that the

period of extension referred to in 35

U.S.C. 154(b)(2) ‘‘shall be reduced for

the period of time during which the

applicant for patent did not act with due

diligence, as determined by the

Commissioner.’’ Section 1.701(d)(2) is

being added to provide that the period

of delay calculated under § 1.701(c)(3)

shall be reduced by any time during the

period of appellate review, as

determined by the Commissioner,

during which the applicant for patent

did not act with due diligence. Section

1.701(d)(2) also provide that in

determining the due diligence of an

applicant, the Commissioner may

examine the facts and circumstances of

the applicant’s actions during the period

of appellate review to determine

whether the applicant exhibited that

degree of timeliness as may reasonably

be expected from, and which is

ordinarily exercised by, a person during

a period of appellate review. Acts which

the Commissioner considers to

constitute prima facie evidence of lack

of due diligence under § 1.701(d)(2) are

suspension at applicant’s request under

§ 1.103(a) during the period of appellate

review and abandonment during the

period of appellate review.

Section 3.21 is being amended to

provide that 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,
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20205

e.g., 07/123,456) and to eliminate the

use of serial number and filing date as

an identifier for national patent

applications in assignment documents.

This change is intended to eliminate

any confusion as to whether an

application identified by its serial

number and filing date in an assignment

document is an application filed under

§ 1.53(b)(1), 1.60 or 1.62 or a design

application or a provisional application

since there is a different series code

assigned to each of these types of

applications.

Section 3.21 is also being amended to

provide that if an assignment of a patent

application filed under § 1.53(b)(1) or

§ 1.62 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.

Further, § 3.21 is being amended to

provide that if an assignment of a

provisional application 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.

Section 3.81 is being amended to

replace the reference to § 1.17(i)(1) with

a reference to § 1.17(i) to be consistent

with the change to § 1.17.

Responses to and Analysis of

Comments: Forty-nine written

comments were received in response to

the Notice of Proposed Rulemaking.

These comments, along with those made

at the public hearing, have been

analyzed. Some suggestions made in the

comments have been adopted and

others have not been adopted.

Responses to the comments follow.

General Comments

1. Comment: One comment

questioned the use of the word

‘‘proposed’’ in the notice of proposed

rulemaking in describing the statutory

amendments contained in Public Law

103–465.

Response: The statutory changes

contained in Public Law 103–465 were

described as ‘‘proposed’’ changes in the

Notice of Proposed Rulemaking because

the President had not signed the

legislation at the time the notice was

prepared for publication. In fact, the

legislation was signed by the President

on December 8, 1994, which is the date

of enactment.

2. Comment: Several comments urged

the PTO to favorably consider the 17/20

patent term specified in H.R. 359 since

this proposed legislation would

overcome the existing impact of

extended PTO prosecution and

eliminate patent term extensions for

prosecution delays. Furthermore, the

proposed legislation is consistent with

the Uruguay Round Agreements Act,

Public Law 103–465.

Response: The administration and the

PTO strongly believe that the 20-year

patent term as enacted in Public Law

103–465 is the appropriate way to

implement the 20-year patent term

required by the GATT Uruguay Round

Agreements Act. The PTO will take

steps to ensure that processing and

examination of applications are handled

expeditiously.

3. Comment: One comment stated that

the proposed rules are premature in

view of the Rohrabacher bill, H.R. 359.

Response: The proposed rules are not

premature. Public Law 103–465 was

signed into law on December 8, 1994,

with an effective date of June 8, 1995,

for the implementation of the 20-year

patent term and provisional

applications. The Commissioner must

promulgate regulations to implement

the changes required by Public Law

103–465.

4. Comment: One comment stated that

there is nothing in the TRIPs agreement

that requires the term to be measured

from filing, nor that provisional

applications be provided for, nor that

new fees of $730 as set forth in §§ 1.17

(r) and (s) be established. It is suggested

that 35 U.S.C. 154 be amended to

provide that ‘‘every patent (other than a

design patent) shall be granted a term of

twenty years from the patent issue date,

subject to the payment of maintenance

fees.’’ It was also suggested that the

section regarding maintenance fees be

amended to add a new fee payable at

16.5 years of $5000 (for large entity)/

$2500 (for small entity) for maintenance

of patent between 17 and 20 years.

Response: The suggestion has not

been adopted. The administration and

the PTO strongly believe that the 20-

year patent term as enacted in Public

Law 103–465 is the appropriate way to

implement the 20-year patent term

required by the GATT Uruguay Round

Agreements Act. The establishment of a

provisional application is not required

by GATT. The provisional application

has been adopted as a mechanism to

provide easy and inexpensive entry into

the patent system. The filing of

provisional applications is optional.

Provisional applications will place

domestic applicants on an equal footing

with foreign applicants as far as the

measurement of term is concerned

because the domestic priority period,

like the foreign priority period, is not

counted in determining the endpoint of

the patent term. As to the §§ 1.17 (r) and

(s) fees, the statute authorizes the

Commissioner to establish appropriate

fees for further limited reexamination of

applications and for examination of

more than one independent and distinct

inventions in an application.

5. Comment: One comment suggested

that the 20-year patent term of claims

drawn to new matter in continuation-inpart (CIP) applications be measured

from the filing date of the CIP

application, irrespective of any

reference to a parent application under

35 U.S.C. 120.

Response: The suggestion has not

been adopted. The term of a patent is

not based on a claim-by-claim approach.

Under 35 U.S.C. 154(a)(2), if an

application claims the benefit of the

filing date of an earlier filed application

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

20-year term of that application will be

based upon the filing date of the earliest

U.S. application that the application

makes reference to under 35 U.S.C. 120,

121 or 365(a). For a CIP application,

applicant should review whether any

claim in the patent that will issue is

supported in an earlier application. If

not, applicant should consider

canceling the reference to the earlier

filed application.

6. Comment: One comment objected

to the 20-year term provisions of Public

Law 103–465 because it was believed

that payment of maintenance fees would

be required earlier under 20-year term

than under 17-year term.

Response: The payment of

maintenance fees are not due earlier

under 20-year term than under 17-year

term. Maintenance fees continue to be

due at 3.5, 7.5 and 11.5 years from the

issue date of the patent.

7. Comment: Several comments

suggested that the expiration date be

printed on the face of the patent.

Response: The suggestion has not

been adopted. The expiration date will

not be printed on the face of the patent.

The PTO will publish any patent term

extension that is granted as a result of

administrative delay pursuant to § 1.701

on the face of the patent. The term of a

patent will be readily discernible from

the face of the patent. Furthermore, it is

noted that the term of a patent is

dependent on the timely payment of

maintenance fees which is not printed

on the face of the patent.

8. Comment: One comment suggested

that in order to aid the bar in advising

clients as to whether a provisional

application has had its priority claimed

in a patent, the PTO should somehow

link the provisional application number
20206 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

with the complete application number

and/or the patent number.

Response: It is contemplated by the

PTO that all provisional applications

will be given application numbers,

starting with a series code ‘‘60’’

followed by a six digit number, e.g.,

‘‘60/123,456.’’ If a subsequent 35 U.S.C.

111(a) application claims the benefit of

the filing date of the provisional

application pursuant to 35 U.S.C. 119(e)

and the 35 U.S.C. 111(a) application

results in a patent, the provisional

application would be listed by its

application number and filing date on

the face of the patent under the heading

‘‘Related U.S. Application Data.’’ The

public will be able to identify an

application under the above-noted

heading as a provisional application by

checking to see if it has a series code of

‘‘60.’’

9. Comment: Several comments

suggested that the PTO consider

modifying the rules to permit the filing

of all applications by assignees. This

would promote harmonization with

other patent laws throughout the world

and would eliminate one of the

difficulties which will occur for the

PTO in considering claims for priority

based on the filing of a provisional

application.

Response: Assignee filing was

recommended in the 1992 Advisory

Commission Report on Patent Law

Reform. The PTO is currently

undertaking a project to reengineer the

entire patent process. The suggestion

will be taken under advisement in that

project.

10. Comment: Several comments

stated that a complete provisional

application should not be forwarded to

a central repository for storage.

Response: In view of the relatively

small filing fee for a provisional

application and the fact that the

provisional application will not be

examined, PTO handling must be kept

to a minimum and these provisional

applications, once complete, will be

sent to the Files Repository for storage

rather than being kept in the

examination area of the PTO.

11. Comment: One comment

suggested that the provisional

application be maintained with the 35

U.S.C. 111(a) application because the

examiner may need it to determine

whether the 35 U.S.C. 111(a) application

is entitled to the benefit of the prior

provisional application and in the event

of 18-month publication, there will be a

demand for accessibility by the public

to the provisional and 35 U.S.C. 111(a)

applications upon publication.

Response: The suggestion has not

been adopted. Benefit of the same

provisional application may be claimed

in a number of 35 U.S.C. 111(a)

applications. If the PTO is to maintain

the provisional application file with one

of several 35 U.S.C. 111(a) applications

claiming benefit of the provisional

application and the 35 U.S.C. 111(a)

application containing the provisional

application file were to go abandoned

while one of the other 35 U.S.C. 111(a)

application issues, the public would be

entitled to inspect the provisional

application file but not the abandoned

35 U.S.C. 111(a) application file

containing the provisional application

file. This would create access problems.

12. Comment: One comment

suggested that provisional applications

be available in full to the public if the

benefit of priority is being claimed.

Response: Section 1.14 relating to

access applies to all applications

including provisional applications. If

the benefit of a provisional application

is claimed in a later filed 35 U.S.C.

111(a) application which resulted in a

patent, then access to the provisional

application will be available to the

public pursuant to § 1.14. The mere fact

that a provisional application is claimed

in a later filed 35 U.S.C. 111(a)

application does not give the public

access to the provisional application

unless the 35 U.S.C. 111(a) application

issues as a patent.

13. Comment: Several comments

requested that the PTO clarify whether

a 35 U.S.C. 111(a) application will be

accorded an effective date as a reference

under 35 U.S.C. 102(e) as of the filing

date of the provisional application for

which benefit under 35 U.S.C. 119(e) is

claimed. If so, the comment questioned

whether pending applications will be

rejected under 35 U.S.C. 102(e) on the

basis that an invention was described in

a patent granted on a provisional

application by another filed in the U.S.

before the invention thereof by the

applicant for patent.

Response: If a patent is granted on a

35 U.S.C. 111(a) application claiming

the benefit of the filing date of a

provisional application, the filing date

of the provisional application will be

the 35 U.S.C. 102(e) prior art date. A

pending application will be rejected

under 35 U.S.C. 102(e) on the basis that

an invention was described in a patent

granted on a 35 U.S.C. 111(a)

application which claimed the benefit of

the filing date of a provisional

application by another filed in the U.S.

before the invention thereof by the

applicant for patent.

14. Comment: One comment

suggested that the PTO issue a final rule

stating that if a 35 U.S.C. 111(a)

application claims the benefit of the

filing date of a provisional application,

the ‘‘inventive entity’’ for the purposes

of 35 U.S.C. 102(e) will be the inventors

listed on the issued patent, and the list

of inventors in the provisional

application shall have no effect on the

identity of an ‘‘inventive entity’’ for the

purposes of 35 U.S.C. 102(e).

Response: The suggestion has not

been adopted. The ‘‘inventive entity’’

for the purpose of 35 U.S.C. 102(e) is

determined by the patent and not by the

inventors named in the provisional

application. As long as the requirements

of 35 U.S.C. 119(e) are satisfied, a patent

granted on a 35 U.S.C. 111(a)

application which claimed the benefit of

the filing date of a provisional

application has a 35 U.S.C. 102(e) prior

art effect as of the filing date of the

provisional application based on the

inventive entity of the patent. It is clear

from 35 U.S.C. 102(e) that the inventive

entity is determined by the patent and

a rule to this effect is not necessary.

15. Comment: One comment

requested the PTO to express its

position as to whether the filing of a

provisional application with the

subsequent filing of a 35 U.S.C. 111(a)

application claiming benefit of the

provisional application under 35 U.S.C.

119(e) creates a prior art date against

other patent applicants under 35 U.S.C.

102(g).

Response: As to 35 U.S.C. 102(g), the

filing of a provisional application with

the subsequent filing of a 35 U.S.C.

111(a) application claiming benefit of

the provisional application under 35

U.S.C. 119(e) creates a prior art date

under 35 U.S.C. 102(g) as of the filing

date of the provisional application.

16. Comment: One comment

suggested that in view of the 20-year

patent term measured from filing,

§ 1.103(a) should be deleted. The PTO

should not have the right to suspend

action on any application, thereby

reducing applicant’s term of protection.

Response: Section 1.103(a) refers to

suspension of action as a result of a

request by applicant. If applicant wishes

to suspend prosecution and thereby

reduce his/her term of protection,

applicant should be permitted to do so.

17. Comment: One comment

suggested that in order to avoid delays

resulting from consideration of petitions

to withdraw premature notices of

abandonment, examiners should be

required to contact an attorney of record

prior to abandoning the application to

find out if a response to an Office

communication has been filed.

Response: The suggestion has not

been adopted. However, in order to

avoid loss of patent term, applicants are

encouraged to check on the status in
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20207

cases where applicants have not

received a return postcard from the PTO

within two (2) weeks of the filing of any

response to a PTO action.

18. Comment: One comment asked

whether there is a ‘‘cut-off’’ date after

which patentees may lose the

opportunity to choose 17- vs. 20-year

patent term.

Response: The ‘‘cut-off’’ date is June

8, 1995. A patent that is in force on June

8, 1995, or a patent that issues after June

8, 1995, on an application filed before

June 8, 1995, is automatically entitled to

the longer of the 20-year patent term

measured from the earliest U.S. effective

filing date or 17 years from grant. This

is automatic by operation of law.

Patentees need not make any election to

be entitled to the longer term. A patent

that issues on an application filed on or

after June 8, 1995 is entitled to a 20-year

patent term measured from the earliest

U.S. effective filing date.

19. Comment: One comment stated

that there is no clear guidance as to a

patentee’s ‘‘bonus rights’’ that may arise

because of the difference in a 17-year

term vs. a 20-year term. Will parties that

were previously in a licensing

arrangement have to renegotiate terms

for the bonus patent term?

Response: Section 154(c) of title 35,

United States Code, states that the

remedies of sections 283 (injunction),

284 (damages) and 285 (attorney fees)

shall not apply to acts which were

commenced or for which substantial

investment was made before June 8,

1995, and became infringing by reason

of the 17/20 year term and that these

acts may be continued only upon the

payment of an equitable remuneration

to the patentee that is determined in an

action brought under chapters 28 and 29

of Title 35. There is no guidance

provided in the statute as to the

meaning of ‘‘substantial investment’’

and ‘‘equitable remuneration.’’

Licensing arrangements are between the

parties to the agreement and are

determined by the terms of the

agreement and state law and are outside

the jurisdiction of the PTO.

20. Comment: One comment

questioned whether an international

application designating the U.S. filed

before June 8, 1995, with entry into the

U.S. national stage on or after June 8,

1995, preserves the 17-year patent term

measured from grant.

Response: An international

application designating the U.S. that is

filed before June 8, 1995, with entry into

the U.S. national stage under 35 U.S.C.

371 on or after June 8, 1995, preserves

the option for a 17-year patent term

measured from date of grant.

21. Comment: One comment

suggested that 35 U.S.C. 371(c) be

amended because a declaration should

not be required to obtain a filing date

and a prior art date under 35 U.S.C.

102(e).

Response: The suggestion has not

been adopted. This issue was not

addressed in the Notice of Proposed

Rulemaking. However, the suggestion

will be taken under advisement as part

of a comprehensive effort being

conducted by the PTO to re-engineer the

entire patent process.

22. Comment: One comment

suggested that §§ 1.604, 1.605 and 1.607

be amended to state that provisional

applications are not subject to

interference.

Response: The suggestion has not

been adopted because it is unnecessary.

By statute, 35 U.S.C. 111(b)(8),

provisional applications are not subject

to 35 U.S.C. 135, i.e., a provisional

application will not be placed in

interference.

23. Comment: One comment

suggested that §§ 1.821–1.825 be

amended so that (1) only unbranched

sequences of ten or more amino acids

and twenty or more nucleotides which

are claimed have to be included in

Sequence Listings, (2) previously

published sequences can be omitted,

and (3) the sequences of primers and

oligonucleotide probes should not be

included in a Sequence Listing if

encompassed by another disclosed

sequence.

Response: The suggestion has not

been adopted. There was no change

proposed to §§ 1.821–1.825 in the

Notice of Proposed Rulemaking.

However, the suggestion will be taken

under advisement as part of a

comprehensive effort being conducted

by the PTO to reengineer the entire

patent process.

24. Comment: One comment

suggested that §§ 5.11 to 5.15 be

amended to provide for the grant of a

foreign license for a provisional

application.

Response: The suggestion has not

been adopted. The present language of

§§ 5.11 to 5.15 already provides for the

grant of a foreign license for a

provisional application.

25. Comment: One comment

suggested that in order to assist defense

agencies in reviewing application for

secrecy orders, PTO should (1)

automatically impose a secrecy order on

any application filed under 35 U.S.C.

111(a) if a secrecy order was previously

imposed on corresponding provisional

application, and (2) require applications

filed under 35 U.S.C. 111(a) based on a

previous provisional application to

indicate changes made to the

provisional application in the 35 U.S.C.

111(a) application by means of

underlining and bracketing.

Response: The suggestions have not

been adopted. The PTO cannot

automatically impose a secrecy order on

any 35 U.S.C. 111(a) applications even

if a secrecy order was previously

imposed on a provisional application,

for which benefit under 35 U.S.C. 119(e)

is claimed, unless the agency which

imposed the secrecy order on the

provisional application specifically

requests the PTO to do so since the 35

U.S.C. 111(a) application could disclose

subject matter which is different from

that which is disclosed in the

provisional application.

As to item (2), the PTO will not

require applicants to identify the

differences in subject matter disclosed

in the 35 U.S.C. 111(a) application and

the provisional application.

26. Comment: One comment

suggested that in order to relieve

defense agencies from possible liability

for secrecy orders imposed for more

than 5 years, the PTO should seek

legislation setting patent term at 20

years from the earliest filing date or 17

years from the issue date, whichever is

longer, for any patent application placed

under secrecy order.

Response: The suggestion has not

been adopted. The PTO strongly

believes that the 20-year patent term as

enacted in Public Law 103–465 is the

appropriate way to implement the 20-

year patent term required by the GATT

Uruguay Round Agreements Act. The

35-year limit for patent term extension

set forth in § 1.701(b) is required by

statute, 35 U.S.C. 154(b).

Comments Directed to Specific Rules

27. Comment: One comment

suggested that in order to eliminate the

need for the expression ‘‘other than a

provisional application’’ in other parts

of the regulations, § 1.9 should be

amended to identify a 35 U.S.C. 111(a)

application by some term that can be

used in the rules to distinguish that type

of application from a provisional

application.

Response: The suggestion has been

adopted. The rules are being amended

to include a definition of the term

‘‘nonprovisional application’’ in § 1.9(a)

to describe an application filed under 35

U.S.C. 111(a) or 371. Further, the term

‘‘nonprovisional application’’ is being

used in the final rules where the rule

applies only to applications filed under

35 U.S.C. 111(a) or 371 and not to

provisional applications.

28. Comment: One comment

suggested that the rules be simplified if
20208 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

a ‘‘national application’’ could be

defined in § 1.9 to exclude a provisional

application.

Response: The suggestion has not

been adopted. Section 1.9(a), prior to

this rulemaking, defined a national

application to include any application

filed under 35 U.S.C. 111. A provisional

application is an application filed under

35 U.S.C. 111. It is appropriate to define

a provisional application as a special

type of national application.

29. Comment: One comment

requested an explanation of the showing

required in a petition under §§ 1.12 and

1.14 for access to pending applications

and to assignment records for pending

applications.

Response: There was no substantive

change proposed to either § 1.12 or 1.14

in the Notice of Proposed Rulemaking.

Thus, the showing required in a petition

under § 1.12 or 1.14 remains the same

after this final rulemaking as before. A

discussion of such a petition can be

found in section 103 of the MPEP.

30. Comment: Several comments

objected to the definition in § 1.45(c) of

joint inventors in provisional

applications as being those having made

a contribution to ‘‘the subject matter

disclosed’’ in the provisional

application. Various language, such as,

‘‘the subject matter which constitutes

the invention,’’ ‘‘subject matter

disclosed and regarded to be the

invention,’’ ‘‘disclosed invention,’’ ‘‘the

inventive subject matter disclosed’’ was

suggested. Another comment requested

guidance as to the determination of

inventorship in a provisional

application.

Response: The suggestion has not

been adopted. The term ‘‘invention’’ is

typically used to refer to subject matter

which applicant is claiming in his/her

application. Since claims are not

required in a provisional application, it

would not be appropriate to reference

joint inventors as those who have made

a contribution to the ‘‘invention’’

disclosed in the provisional application.

If the ‘‘invention’’ has not been

determined in the provisional

application because no claims have

been presented, then the name(s) of

those person(s) who have made a

contribution to the subject matter

disclosed in the provisional application

should be submitted. Section 1.45(c)

states that ‘‘if multiple inventors are

named in a provisional application,

each named inventor must have made a

contribution, individually or jointly, to

the subject matter disclosed in the

provisional application.’’ All that

§ 1.45(c) requires is that if someone is

named as an inventor, that person must

have made a contribution to the subject

matter disclosed in the provisional

application. When applicant has

determined what the invention is by the

filing of the 35 U.S.C. 111(a)

application, that is the time when the

correct inventors must be named. The

35 U.S.C. 111(a) application must have

an inventor in common with the

provisional application in order for the

35 U.S.C. 111(a) application to be

entitled to claim the benefit of the

provisional application under 35 U.S.C.

119(e).

31. Comment: Several comments

suggested that it might be desirable to

correct inventorship in a provisional

application where an individual was

erroneously named as an inventor and

that the procedure for doing so should

be set forth in § 1.48.

Response: Under 35 U.S.C. 119(e), as

contained in Public Law 103–465, a

later filed application under 35 U.S.C.

111(a) may claim priority benefits based

on a copending provisional application

so long as the applications have at least

one inventor in common. An error in

naming a person as an inventor in a

provisional application would not

require correction by deleting the

erroneously named inventor from the

provisional application since this would

have no effect upon the ability of the

provisional application to serve as a

basis for a priority claim under 35

U.S.C. 119(e). However, in response to

the comments, § 1.48 is being amended

to include a new paragraph (e) which

sets forth the requirements for deleting

the names of the inventors incorrectly

named as joint inventors in a

provisional application, namely, a

petition including a verified statement

by the inventor(s) whose name(s) are

being deleted stating that the error arose

without deceptive intent, the fee set

forth in § 1.17(q) and the written

consent of all assignees.

32. Comment: One comment

suggested that in order to make the

procedures for provisional applications

as simple as possible, there is no need

to provide any rules to add inventor(s)

or change inventorship in a provisional

application since the whole concept of

inventorship is meaningless without a

claim. Error in inventorship can be

corrected by the filing of and 35 U.S.C.

111(a) application within 12 months

after the filing of a provisional

application.

Response: The suggestion has not

been adopted. One of the requirements

of 35 U.S.C. 119(e) is that a 35 U.S.C.

111(a) application must have at least

one inventor in common with a

provisional application in order for the

35 U.S.C. 111(a) application to be

entitled to claim the benefit of the filing

date of the provisional application. In

situations where there is no inventor in

common between the 35 U.S.C. 111(a)

application and the provisional

application due to error in naming the

inventors in the provisional application,

procedures must be established to

permit applicant to correct the

inventorship in the provisional

application.

33. Comment: One comment

suggested that an individual who is the

inventor of subject matter disclosed in

a provisional application, but who is not

named as an inventor in the provisional

application because that subject matter

was not intended to be claimed in a

later filed 35 U.S.C. 111(a) application,

could be added as an inventor pursuant

to § 1.48(d) in the provisional

application if the subject matter was

claimed in 35 U.S.C. 111(a) application.

Response: The individual could be

added as an inventor pursuant to

§ 1.48(d) in the provisional application

so long as the individual was originally

omitted without deceptive intent.

34. Comment: One comment

questioned whether it would be proper

for a registered practitioner who did not

file the provisional application to sign

the statement required by § 1.48(d) that

the error occurred without deceptive

intention on the part of the inventors.

Response: It would be proper for a

registered practitioner who did not file

the provisional application to sign the

statement required by § 1.48(d), if the

registered practitioner has a reasonable

basis to believe the truth of the

statement being signed.

35. Comment: One comment

suggested that there should be no

diligence requirement to correct

inventorship in a provisional

application.

Response: Diligence is not a

requirement to correct inventorship in a

provisional application in either

§ 1.48(d) or 1.48(e).

36. Comment: One comment

suggested that § 1.48(a) be amended by

deleting the requirements for ‘‘a

statement of facts verified by the

original named inventor or inventors

establishing when the error without

deceptive intention was discovered and

how it occurred’’ and for the written

consent of any assignee.

Response: The suggestion has not

been adopted. There was no substantive

change proposed to § 1.48(a) in the

Notice of Proposed Rulemaking. Since

the correction of inventorship affects

ownership rights, the existing rules are

designed to provide assurances that all

parties including the original named

inventors and all assignees agree to the

change of inventorship. If the
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20209

requirements for verified statements of

facts from the original named inventors

and written consent of the assignees are

to be deleted, the PTO would no longer

have the assurances that all parties agree

to the change.

37. Comment: One comment

expressed concern that a provisional

application filed without a claim will

leave subsequent readers with little or

no clue as to what the inventors in the

provisional application considered to be

their invention at the time the

provisional application was filed and

doubted that a provisional application

filed without a claim defining the

invention could ever provide a

sufficient disclosure to support a claim

for a foreign or U.S. priority date.

Response: Claims are not required by

the statute to provide a specification in

compliance with the requirements of 35

U.S.C. 112, first paragraph. However, if

an applicant desires, one or more claims

may be included in a provisional

application. Any claim field with a

provisional application will, of course,

be considered part of the original

provisional application disclosure.

38. Comment: One comment

suggested that the PTO issue a

specification format or guideline for a

provisional application to enable an

inventor to comply with 35 U.S.C. 112,

first paragraph.

Response: The format of a provisional

application is the same as for other

applications and is set forth in existing

§ 1.77 which is applicable to provisional

applications except no claims are

required for provisional applications.

39. Comment: Several comments

suggested that the PTO revise its rules

to clarify that strict adherence to the

enablement, description and best mode

requirements of 35 U.S.C. 112, first

paragraph, is not required in provisional

applications.

Response: The suggestion has not

been adopted. The substantive

requirements of a specification

necessary to comply with 35 U.S.C. 112,

first paragraph, are established by court

cases interpreting that section of the

statute, not by rule. The case law

applies to provisional applications as

well as to applications filed under 35

U.S.C. 111(a).

40. Comment: Several comments

suggested that the rules or comments

published with the Final Rule indicate

whether there is any requirement to

update the best mode disclosed in the

provisional application when filing the

35 U.S.C. 111(a) application.

Response: No rule was proposed to

address the issue when going from a

provisional application to a 35 U.S.C.

111(a) application because no current

rule exists when going from one 35

U.S.C. 111(a) application to another 35

U.S.C. 111(a) application. The question

of whether the best mode has to be

updated is the same when going from

one 35 U.S.C. 111(a) application to

another 35 U.S.C. 111(a) application or

from a provisional application to a 35

U.S.C. 111(a) application. Accordingly,

the rationale of Transco Products, Inc. v.

Performance Contracting Inc., 38 F.3d

551, 32 U.S.P.Q.2d 1077 (Fed. Cir.

1994), would appear to be applicable.

Clearly, if the substantive content of the

application does not change when filing

the 35 U.S.C. 111(a) application, there is

no requirement to update the best mode.

However, if subject matter is added to

the 35 U.S.C. 111(a) application, there

may be a requirement to update the best

mode.

41. Comment: One comment

suggested that § 1.51(c) be amended to

permit a provisional application to be

filed with an authorization to charge

fees to a deposit account.

Response: Section 1.51(c) permits an

application to be filed with an

authorization to charge fees to a deposit

account. Section 1.51(c) applies to

provisional applications. Therefore, no

change to § 1.51(c) is necessary.

42. Comment: One comment

suggested that the PTO confirm that

there will be no procedural examination

of a provisional application other than

to determine whether the provisional

application complies with § 1.51(a)(2).

Response: The PTO intends to require

compliance with the formal

requirements of §§ 1.52(a)–(c) only to

the extent necessary to permit the PTO

to properly microfilm and store the

application papers.

43. Comment: Several comments

suggested that an English translation of

a foreign language provisional

application should not be required

unless necessary in prosecution of the

35 U.S.C. 111(a) application to establish

benefit. If an English translation is

required, there is no useful purpose to

require the translation at any time

earlier than the filing of 35 U.S.C. 111(a)

application claiming the benefit of the

provisional application.

Response: Provisional applications

may be filed in a language other than

English as set forth in existing § 1.52(d).

However, an English language

translation is necessary for security

screening purposes. Therefore, the PTO

will require the English language

translation and payment of the fee

required in § 1.52(d) in the provisional

application. Failure to timely submit the

translation in response to a PTO

requirement will result in the

abandonment of the provisional

application. If a 35 U.S.C. 111(a)

application is filed without providing

the English language translation in the

provisional application, the English

language translation will be required to

be supplied in every 35 U.S.C. 111(a)

application claiming priority of the nonEnglish language provisional

application.

44. Comment: One comment

suggested that a new model oath or

declaration form for use in claiming 35

U.S.C. 119(e) priority and a ‘‘cover

sheet’’ for use in filing provisional

applications be published as an

addendum to the final rules.

Response: The suggestion has been

adopted. See Appendix A for the sample

cover sheet for filing a provisional

application and Appendix B for the

sample declaration for use in claiming

35 U.S.C. 119(e) priority.

45. Comment: One comment

suggested that the statement in

§ 1.53(b)(2) that the provisional

application will not be given a filing

date if all the names of the actual

inventor or inventor(s) are not supplied

be deleted and § 1.41 be amended to

make an exception for provisional

applications. The comment suggested

that 35 U.S.C. 111(b) is satisfied as long

as the name of one person who made an

inventive contribution to the subject

matter of the application is given.

Response: The suggestion has not

been adopted. Section 111(b) of title 35,

United States Code, states that ‘‘a

provisional application shall be made or

authorized to be made by the inventor.’’

This language parallels 35 U.S.C. 111(a).

The naming of inventors for obtaining a

filing date for a provisional application

is the same as for other applications. A

provisional application filed with the

inventors identified as ‘‘Jones et al.’’

will not be accorded a filing date earlier

than the date upon which the name of

each inventor is supplied unless a

petition with the fee set forth in § 1.17(i)

is filed which sets forth the reasons the

delay in supplying the names should be

excused. Administrative oversight is an

acceptable reason. It should be noted

that for a 35 U.S.C. 111(a) application to

be entitled to claim the benefit of the

filing date of a provisional application,

the 35 U.S.C. 111(a), application must

have at least one inventor in common

with the provisional application.

46. Comment: One comment

suggested that a drawing should not be

required to obtain a filing date for a

provisional application. Whatever is

filed should be given a serial number

and filing date in order to establish

status as a provisional application,

regardless of what is in the specification

or drawing. If the provisional
20210 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

application omitted drawings, has pages

missing, or is otherwise incomplete,

then applicant may not be able to rely

on the filing date of the provisional

application in a subsequently filed 35

U.S.C. 111(a) application. It should not

be the job of the Application Branch to

review compliance with § 1.81(a).

Response: Section 111(b) of title 35,

United States Code, states that a

provisional application must include a

specification as prescribed by 35 U.S.C.

112, first paragraph and a drawing as

prescribed by 35 U.S.C. 113. Drawings

are required pursuant to 35 U.S.C. 113

if they are necessary to understand the

subject matter sought to be patented. If

a provisional application as filed

omitted drawings and/or has pages

missing, the provisional application is

prima facie incomplete and no filing

date will be granted. Application

Branch currently reviews all

applications to make sure that no filing

date will be granted to an application

that is prima facie incomplete.

Application Branch will perform the

same type of review with provisional

applications. If a filing date is not

granted to a provisional application

because it is prima facie incomplete,

applicant may petition the PTO under

§ 1.182 to grant a filing date to the

provisional application as of the date of

deposit of the application papers if it

can be shown that the omitted items are

not necessary for the understanding of

the subject matter.

47. Comment: One comment objected

to the requirement in § 1.53(b)(2)(i) for

a cover sheet identifying the application

as a provisional application because it is

unnecessarily rigid and contrary to

Congress’ desire to keep the filing of

provisional application as simple as

possible.

Response: The requirement that a

provisional application be specifically

identified on filing as a provisional

application is not seen to be

burdensome on the applicant and is

necessary for the PTO to properly

process the papers as a provisional

application. All an applicant is required

to do in order to comply with the

requirement of § 1.53(b)(2)(i) is to

include a transmittal sheet identifying

the papers being filed as a

PROVISIONAL application.

48. Comment: Several comments

suggested that in § 1.53(b)(2)(ii), as

proposed, the phrase ‘‘the expiration of

12 months after the filing date of the

provisional application’’ should read

‘‘the expiration of 12 months after the

filing date of the § 1.53(b)(1)

application’’.

Response: The suggestion has been

adopted.

49. Comment: One comment objected

to the requirement in § 1.53(b)(2)(ii) for

a petition to convert an application filed

under § 1.53(b)(1) to a provisional

application and suggested that any

confusion concerning applicant’s

intention could be handled informally

without a petition or petition fee.

Response: The requirement for a

petition and fee is intended to ensure

that the cost of any PTO reprocessing is

borne specifically by the applicant

requesting the action.

50. Comment: Several comments

suggested that the filing fee required in

an application filed under 35 U.S.C.

111(a) claiming benefit of the filing date

of an earlier 35 U.S.C. 111(a) application

which has been converted to a

provisional application under proposed

§ 1.53(b)(2)(ii) be reduced, since the

$730/$365 filing fee was paid in the

earlier application.

Response: The suggestion has not

been adopted. The filing fee required in

an application filed under 35 U.S.C.

111(a) is set by statute. The statute does

not provide for the suggested reduction

in the filing fee.

51. Comment: One comment

suggested that the proposed

§ 1.53(b)(2)(iii) should apply

retroactively to permit applications filed

between June 9, 1994, and June 8, 1995,

to be converted to provisional

applications.

Response: The suggestion has not

been adopted. The statute does not

permit a provisional application to have

a filing date prior to June 8, 1995.

52. Comment: One comment

suggested that § 1.53(b)(2)(ii) be revised

to state that the petition requesting

conversion must also be filed before (1)

the application becomes involved in

interference, or (2) notice by the PTO of

intent to publish the application as a

statutory invention registration. This

suggestion conforms with 35 U.S.C.

11(b)(8).

Response: The suggestion has not

been fully adopted. It is not necessary

to include interference in § 1.53(b)(2)(ii)

because if a 35 U.S.C. 111(a) application

becomes involved in an interference

proceeding and applicant files a petition

requesting conversion of that 35 U.S.C.

111(a) application to a provisional

application, the 35 U.S.C. 111(a) will be

removed from the interference

proceeding upon granting the petition to

convert. When a subsequent 35 U.S.C.

111(a) application is filed based on the

provisional application, the subsequent

35 U.S.C. 111(a) application could be

placed in the interference proceeding if

necessary. As to the reference to

statutory invention registration,

§ 1.53(b)(2)(ii) is being amended to

require the petition and the fee be filed

prior to the earlier of the abandonment

of the 35 U.S.C. 111(a) application, the

payment of the issue fee, the expiration

of 12 months after the filing date of the

35 U.S.C. 111(a) application, or the

filing of a request for a statutory

invention registration under § 1.293.

53. Comment: One comment

suggested that the procedures for

converting a 35 U.S.C. 111(a)

application to a provisional application

be explained in greater detail in

§ 1.53(b)(2)(ii) or in the discussion. If a

35 U.S.C. 111(a) application is

converted to a provisional application

on the last day of the 12-month period,

and a second 35 U.S.C. 111(a)

application is concurrently filed, how

should this be done and how should the

first sentence in the second 35 U.S.C.

111(a) application be worded.

Furthermore, if a 35 U.S.C. 111(a)

application is converted to a provisional

application on the last day of the 12-

month period, will it be necessary to file

a second 35 U.S.C. 111(a) application on

the same day, or else lose the priority

claim.

Response: The suggestion has not

been adopted. The language in

§ 1.53(b)(2)(ii) is clear relating to the

requirements for converting a 35 U.S.C.

111(a) application to a provisional

application. If applicant wishes to

convert a 35 U.S.C. 111(a) application to

a provisional application, applicant

must file a petition requesting the

conversion along with the petition fee

set forth in § 1.17(q). The petition and

the fee must be filed prior to the earlier

of the abandonment of the 35 U.S.C.

111(a) application, the payment of the

issue fee, the expiration of 12 months

after the filing date of the 35 U.S.C.

111(a) application, or the filing of a

request for a statutory invention

registration under § 1.293. In the

example noted in the comment, if a 35

U.S.C. 111(a) application is converted to

a provisional application on the last day

of the 12-month period, a second 35

U.S.C. 111(a) application must be filed

on that same day, otherwise, applicant

will lose the priority pursuant to 35

U.S.C. 119(e). An example of how the

first sentence of the second 35 U.S.C.

111(a) application would read is, ‘‘This

application claims the benefit of U.S.

Provisional Application No. 60/———,

filed ———, which was converted from

Application No.———.’’

54. Comment: One comment

suggested that the PTO consider a rule

mandating that any prior U.S.

application that would have been

eligible for conversion to a provisional

application that is abandoned in favor of

a continuing application within one
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20211

year of the earlier priority date asserted

be deemed constructively converted to a

provisional application.

Response: The suggestion has not

been adopted. Conversion of a 35 U.S.C.

111(a) application to a provisional will

be permitted only by way of a petition

and under the conditions set forth in

§ 1.53(b)(2)(ii). One reason for this is

that the PTO plans to provide sufficient

information on the printed patent to

determine the end date of the 20-year

patent term by identifying provisional

applications using a unique series code,

i.e., ‘‘60’’. Thus, a 35 U.S.C. 111(a)

application converted to a provisional

application will need to be reprocessed

by the PTO with a new application

number. The petition fee is intended to

reimburse the PTO for the extra

processing necessitated by the

conversion.

55. Comment: One comment stated

that § 1.53(b)(2)(ii) permits the

conversion of a 35 U.S.C. 111(a)

application to a provisional application.

However, it is silent as to whether such

a conversion would kill any benefit the

35 U.S.C. 111(a) application had of

domestic and/or foreign priority.

Response: Section 111(b)(7) of title 35,

United States Code, specifically states

that a provisional application shall not

be entitled to the right of priority of any

other application under 35 U.S.C. 119 or

365(a) or to the benefit of an earlier

filing date in the United States under 35

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

111(a) application is converted to a

provisional application, the granting of

the conversion will automatically

eliminate any claim of priority which

could have been made in the 35 U.S.C.

111(a) application.

56. Comment: Several comments

suggested that it was inconsistent with

the purpose of the provisional

application to require any compliance

with the Sequence Disclosure Rules

§§ 1.821–1.823 and 1.825, since the

provisional applications are not

examined and there is no comparison of

the sequences with the prior art.

Response: The Office agrees with the

comments that a provisional application

need not comply with the requirements

of §§ 1.821 through 1.825. Section

1.53(b)(2)(iii) is being amended to

indicate that the requirements of

§§ 1.821 through 1.825 regarding

sequence listings are not mandatory for

a provisional application. However,

applicants are cautioned that in order

for a 35 U.S.C. 111(a) application to

obtain the benefit of the filing date of an

earlier filed provisional application, the

claimed subject matter of the 35 U.S.C.

111(a) application must have been

disclosed in the provisional application

in a manner provided by 35 U.S.C. 112,

first paragraph. Applicants are

encouraged to follow the sequence rules

to ensure that support for the invention

claimed in the 35 U.S.C. 111(a)

application can be readily ascertained in

the provisional application.

57. Comment: One comment

suggested that the language in

§ 1.53(e)(2) that a provisional

application will become abandoned no

later than twelve months after its filing

date was misleading and that the words

‘‘no later than’’ should be deleted

because it was believed that a

provisional application could not be

abandoned prior to twelve months after

its filing date.

Response: The statute does not state

that a provisional application can never

be abandoned prior to twelve months

after its filing date. In fact, a provisional

application may be abandoned as a

result of applicant’s failure to timely

respond to a PTO requirement. For

example, if a provisional application

which has been accorded a filing date

does not include the appropriate filing

fee or the cover sheet required by

§ 1.51(a)(2), 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 to pay the surcharge as set forth in

§ 1.16(l). Failure to timely respond will

result in the abandonment of the

application. This may occur prior to

twelve months after its filing date.

Furthermore, a provisional application

may also be expressly abandoned prior

to twelve months from its filing date.

58. Comment: One comment objected

to the deletion of the ‘‘retention fee’’

practice in § 1.53(d) since it permits an

applicant in a first application claiming

benefits under 35 U.S.C. 119 (a)–(d) or

120 to correct inventorship by filing a

second application without having to

pay the full filing fee in the first

application.

Response: Since the comment

indicated that there is a benefit to retain

the retention fee practice, the proposal

to eliminate the practice is withdrawn.

59. Comment: One comment stated

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

(d)(2) indicates an intent by the PTO to

mail the ‘‘Notice Of Missing Parts’’ to

applicant’s post office address and

argues that the ‘‘Notice’’ should be

mailed to the registered practitioner

who filed the application on behalf of

the applicant.

Response: The language in §§ 1.53

(d)(1) and (d)(2) states that the applicant

will be notified of the missing part, if a

correspondence address is provided.

This means that the ‘‘Notice’’ to

applicant will be mailed to the

correspondence address provided in the

application papers. Under current PTO

practice, if no specific correspondence

address is identified in the application,

the address of the registered practitioner

who filed the application on behalf of

the applicant is used as the

correspondence address. If no specific

correspondence address or registered

practitioner is identified in the

application, the post office address of

the first named inventor is used as the

correspondence address. No change in

current PTO practice in this regard is

required as a result of § 1.53(d)(2) nor is

any change planned.

60. Comment: Several comments

objected to the proposed deletion of

§ 1.60. One comment suggested that the

deletion of § 1.60 was a major rule

change and should have been proposed

separate from the proposed rules

dealing with the changes in practice

required by Public Law 103–465.

Response: In view of the comments

received, the proposal to delete § 1.60 is

withdrawn. However, the proposal will

be considered as part of a

comprehensive effort being conducted

by the PTO to reengineer the entire

patent process.

61. Comment: One comment

suggested that in view of the deletion of

§ 1.60, language should be incorporated

in § 1.53(a)(1) to state that a copy of the

prior application along with a copy of

the declaration may be filed to obtain a

filing date. Furthermore, full details and

guidelines of the procedure should

accompany the rule.

Response: The suggestion has not

been adopted. The proposal to delete

§ 1.60 is withdrawn in view of several

comments received objecting to the

deletion.

62. Comment: One comment

suggested that the removal of the stale

oath practice be codified.

Response: The suggestion has not

been adopted. Neither the statute nor

the rules require a recent date of

execution to appear on the oath or

declaration. The PTO practice of

objecting to an oath or declaration

where the time elapsed between the

date of execution and the filing date of

the application is more than three

months is found in section 602.05 of the

MPEP. Therefore, the removal of the

stale oath practice will be accomplished

by amending the MPEP.

63. Comment: One comment

questioned whether a copy of an

application faxed to an attorney could

be filed in the PTO as the application

papers.

Response: Yes. While a patent

application may not be faxed directly to

the PTO, an application faxed to an
20212 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

attorney may be forwarded to the PTO

by mail or courier as the application

papers provided the papers meet the

formal requirements of § 1.52. Effective

November 22, 1993, § 1.4 was amended

to include a new paragraph (d) to

specify that most correspondence filed

in the PTO, which requires a person’s

signature, may be an original, a copy of

an original or a copy of a copy. Only

correspondence identified in §§ 1.4(e)

and (f) require the original to be filed in

the PTO. Thus, an oath or declaration

required by § 1.63, 1.153, 1.162 or 1.175

may be an original, a copy of an original

or a copy of a copy. See 1156 Off. Gaz.

Pat. Office 61 (November 16, 1993).

64. Comment: One comment

suggested that applicant be permitted to

use § 1.62 procedure to file the 35 U.S.C.

111(a) application which claims the

benefit of a provisional application, at

least in those situations where the 35

U.S.C. 111(a) application has been

converted to a provisional application

which is followed by the filing of a

second 35 U.S.C. 111(a) application.

Response: The suggestion has not

been adopted. Section 1.62 will not be

amended to permit the filing of a 35

U.S.C. 111(a) application based on a

provisional application because the PTO

sees this situation as a trap for

applicants. The filing procedures would

be made more complicated if an

exception is provided to address

situations where a 35 U.S.C. 111(a)

application is converted to a provisional

application and a second 35 U.S.C.

111(a) application is later filed.

However, the suggestion will be taken

under advisement when greater

familiarity with provisional applications

is developed.

65. Comment: One comment

suggested that § 1.62 procedure be

replaced with a simple petition

procedure to reopen prosecution.

Response: The suggestion is not being

adopted. However, the suggestion will

be taken under advisement as part of a

comprehensive effort being conducted

by the PTO to reengineer the entire

patent process.

66. Comment: One comment

suggested that the language in § 1.62(a)

that requires an identification of the

‘‘applicant’s name of the prior complete

application’’ is confusing and should be

clarified.

Response: The suggestion has been

adopted. Section 1.62 is being amended

to require the identification of the

‘‘applicants named in the prior

complete application.’’

67. Comment: One comment

suggested that § 1.62 be amended to

state that the refiling procedures set

forth in § 1.62 may be used after the

issue fee is paid when a petition under

§ 1.313(b)(5) is granted. This practice is

permitted pursuant to the notice

published in 1138 Off. Gaz. Pat. Office

40 (May 19, 1992).

Response: The suggestion has been

adopted.

68. Comment: One comment

suggested that § 1.62 be amended to

clarify whether applicant needs to relist, in the § 1.62 application, all the

references cited by the examiner and

applicant in the parent application in

order to get those references printed on

the eventual patent.

Response: The suggestion has not

been adopted. Section 609 of the MPEP

(Sixth Edition, Jan. 1995) has been

amended to clarify that in a § 1.62

application, references submitted and

cited in the parent application need not

be resubmitted. These references will be

printed on the patent. However, in any

continuing application filed under

§ 1.53(b)(1) or 1.60, a list of the

references must be resubmitted if

applicant wishes to have the references

printed in the eventual patent.

69. Comment: One comment

suggested that § 1.67 should go into

more detail on when supplemental

oaths are required in § 1.53 filings of

continuation and divisional

applications.

Response: The suggestion has been

adopted because it is seen to be

unnecessary and no substantive change

was proposed to § 1.67 in the Notice of

Proposed Rulemaking.

70. Comment: One comment

suggested that ‘‘not but’’ in § 1.67(b)

should read ‘‘but not’’.

Response: The suggestion has been

adopted.

71. Comment: Several comments

suggested that a rule be provided to

state that an application for patent is

permitted to claim the benefit of the

filing date of more than one prior

provisional application so long as the

applicant complies with all statutory

provisions.

Response: The suggestion has been

adopted. Section 1.78(a)(3) is being

amended to indicate that applicants are

permitted to separately claim the benefit

of the filing date of more than one prior

provisional application in a later filed

35 U.S.C. 111(a) application provided

all statutory requirements of 35 U.S.C.

119(e) are complied with. It is noted

that current practice permits an

application to claim the benefits of the

filing date of more than one prior

foreign application under 35 U.S.C.

119(a)–(d) and of more than one prior

copending U.S. application under 35

U.S.C. 120, without an explicit

statement to that effect in the rules.

Since the final rules are being amended

to specifically permit applications filed

under 35 U.S.C. 111(a) to claim the

benefits of the filing date of more than

one prior copending provisional

application, corresponding changes are

also being made to §§ 1.55 and 1.78(a)(1)

relating to claims for the benefits

available under 35 U.S.C. 119(a)–(d) and

120 to be consistent with § 1.78(a)(3).

72. Comment: Several comments

requested that the PTO specify language

to use in the first sentence of an

application when priority is based on

more than one provisional application.

Response: Section 1.78(a)(4) requires

that ‘‘any application claiming the

benefit of a prior filed copending

provisional application must contain or

be amended to contain in the first

sentence of the specification following

the title a reference to such prior

provisional application, identifying it as

a provisional application, and including

the provisional application number.’’

Where a 35 U.S.C. 111(a) application

claims the benefit of more than one

provisional application, a suitable

reference would read, ‘‘This application

claims the benefit of U.S. Provisional

Application No. 60/——, filed —— and

U.S. Provisional Application No. 60/

——, filed ——.’’ In addition, for an

application which is claiming the

benefit under 35 U.S.C. 120 of a prior

application, which in turn claims the

benefit of a provisional application

under 35 U.S.C. 119(e), a suitable

reference would read, ‘‘This application

is a continuation of U.S. application No.

08/——, filed ——, now abandoned,

which claims the benefit of U.S.

Provisional Application No. 60/——,

filed ——.’’

73. Comment: One comment

suggested that the rules address the

effect on patent term where an applicant

in a continuing application deletes the

reference to the prior filed application

before the patent issues.

Response: an applicant has full

control over claims to the benefit of an

earlier filing date under 35 U.S.C. 120,

121 or 365(c). The 20-year patent term

will be based upon the filing date of the

earliest U.S. application that the

applicant makes reference to under 35

U.S.C. 120, 121 and 365(c). Whether an

applicant is entitled to the benefit of the

filing date of an earlier application is

something that an applicant should

examine before the patent is issued. The

PTO is not, unless it comes up as an

issue in the examination process, going

to determine whether any of the claims

are entitled to the earlier filing date.

Applicant however, should determine

whether the claims are entitled to or

require the benefit of the earlier filing
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20213

date. If not, the applicant should

consider canceling the reference to the

earlier filed application to avoid having

the 20-year patent term measured from

that earlier filing date. An amendment

adding or deleting a reference to an

earlier filed application presented prior

to a final action will be entered,

however, the claims may be subject to

possible intervening prior art.

74. Comment: One comment stated

that in view of the fact that a provisional

application is not entitled to claim the

benefit of a prior filed copending

national or international application as

stated in § 1.53(b)(2)(iii), the phrase

‘‘other than a provisional application’’

in § 1.78(a)(2) is unnecessary.

Response: Section 1.78(a)(2) is being

amended to state that ‘‘any

nonprovisional application claiming the

benefit of a prior copending

nonprovisional or international

application must contain * * *.’’

Section 1.78(a)(2) addresses a 35 U.S.C.

111(a) application which claims the

benefit of a prior copending 35 U.S.C.

111(a) application or international

application.

75. Comment: Several comments

objected to the content requirements for

drawings filed in a provisional

application as originally set forth in

proposed § 1.83(a)(2). One comment

suggested that no rule was necessary to

set forth the required content of

drawings in a provisional application.

Response: In view of the comments

received, the proposed amendment to

§ 1.83 is withdrawn. Under 35 U.S.C.

113, first sentence, applicant must

furnish drawings in a provisional

application ‘‘where necessary for the

understanding of the subject matter

sought to be patented.’’ This

requirement is also stated in existing

§ 1.81(a). Therefore, no further

elaboration on the content of the

drawings in a provisional application is

believed necessary in the rules.

76. Comment: One comment

suggested that the rules specify that

formal drawings are not required in a

provisional application.

Response: The suggestion has not

been adopted. However, the PTO

intends to examine provisional

applications for requirements of form

only to the extent that is necessary to

permit normal storage and microfilming

of the application papers. Formal

drawings are usually not required for

those purposes.

77. Comment: Several comments

suggested that § 1.97(d) be amended to

require the PTO to consider any

information disclosure statement

submitted after a final rejection or

notice of allowance if an appropriate fee

is paid.

Response: The suggestion has not

been adopted because no substantive

change to this rule was proposed in the

Notice of Proposed Rulemaking. The

existing rules are designed to encourage

prompt submission of information to the

PTO. To permit applicant to merely pay

a fee to have any information disclosure

statement submitted after a final

rejection or Notice of Allowance would

be contrary to the effort to encourage

prompt submissions.

78. Comment: One comment

suggested that § 1.97 be changed so that

an office action which uses a newly

cited reference as a ground for rejection

under 35 U.S.C. 102 or 103 cannot be

made final.

Response: The suggestion has not

been adopted because no substantive

change to this rule was proposed in the

Notice of Proposed Rulemaking.

79. Comment: One comment

suggested that the words ‘‘which are not

examined’’ in § 1.101 as proposed are

unnecessary and could create a negative

implication that some provisional

applications are examined.

Response: The suggestion has not

been adopted. By statute, provisional

applications are not subject to 35 U.S.C.

131, i.e., the Commissioner is not

permitted to examine a provisional

application for patentability.

80. Comment: Several comments

stated that it is unfair to require small

entities to pay the full $730.00 fee set

forth in proposed § 1.129. It is suggested

that the fee be changed to $365.00 or

less.

Response: Pursuant to Public Law

103–465, the Commissioner has the

authority to establish appropriate fees

for the further limited reexamination of

applications and for the examination of

more than one independent and distinct

invention in an application. As a result

of additional review, it was concluded

that these fees may be reduced by 50%

for small entities. Sections 1.17 (r) and

(s) are being amended to indicate that

the fees are reduced by 50% for small

entities, that is, $365.00 for small

entities.

81. Comment: Several comments

suggested that the transitional

procedure set forth in § 1.129(a) as

proposed is equivalent to filing one

application, i.e., it provides for an extra

examination and reexamination after the

original final rejection, and, therefore,

the requirement for two $730.00 fees,

which is equivalent to two filing fees, is

unwarranted. Another comment

suggested that if the proposed $730.00

fee is adopted, the examiner should be

instructed to treat the after-final

amendment as any other initial filing,

i.e., a new application, not as an

amendment submitted after a non-final

office action.

Response: Under existing PTO

practice, it would not be proper to make

final a first Office action in a continuing

or substitute application where the

continuing or substitute application

contains material which was presented

in the earlier application after final

rejection or closing of prosecution but

was denied entry because (1) new issues

were raised that required further

consideration and/or search, or (2) the

issue of new matter was raised. The

identical procedure will apply to

examination of a submission

consideration as a result of the

procedure under § 1.129(a). Thus, under

§ 1.129(a), if the first submission after

final rejection was initially denied entry

in the application because (1) new

issues were raised that required further

consideration and/or search, or (2) the

issue of new matter was raised, then the

next action in the application will not

be made final. Likewise, if the second

submission after final rejection was

initially denied entry in the application

because (1) new issues were raised that

required further consideration and/or

search, or (2) the issue of new matter

was raised, then the next action in the

application will not be made final.

Thus, the fee required by § 1.129(a) has

been set at the amount required for

filing an application because the

procedure provided by the rule is

equivalent to the filing of two

applications. No new matter can be

entered by payment of the fee set forth

in § 1.17(r).

82. Comment: Several comments

suggested that the fees required for

filing a provisional application and

those fees required by §§ 1.129(a) and

(b) for the transitional procedures

should not be greater than the average

cost of processing such matters by the

PTO. Two comments stated that the fee

required by § 1.129(a) is excessive

relative to PTO costs.

Response: The fee required for filing

a provisional application is set by

Public Law 103–465 and the PTO has no

discretion with respect to the amount of

that particular fee. As to the fee required

by § 1.129(a), the procedures relating to

the first submission provided by

§ 1.129(a) is equivalent to the filing of a

file wrapper continuation application

under § 1.62, and therefore, the fee

required with the first submission is

appropriately set at the same amount as

a filing fee, which is $730.00. The

$730.00 fee is subject to a 50%

reduction for small entities. The second

submission is equivalent to the filing of
20214 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

a second file wrapper continuation

application and the fee for the second

submission is appropriately set at the

same amount as a filing fee. As to the

fee required by § 1.129(b), the

procedures set forth in § 1.129(b) permit

applicants to retain multiple inventions

in a single application rather than

having to file multiple divisional

applications. The fee for each

independent and distinct invention in

excess of one is appropriately set at the

same amount as the filing fee for a

divisional application, which is

$730.00. The $730.00 fee is subject to a

50% reduction for small entities.

83. Comment: One comment

suggested that the time period for the

payment of the $730.00 fee for the

transitional after-final practice by

extended if applicant files a petition

seeking reversal of the examiner’s

refusal to enter the amendment after

final without fee, until one month after

an unfavorable decision on the petition.

Response: If an earlier filed petition

seeking reversal of the examiner’s

refusal to enter the amendment after

final is granted by the Director finding

that the final rejection was premature,

but the petition had not been decided by

the time the § 1.129(a) fee was due,

applicant must submit the § 1.129(a) fee

so as to toll the time period for response

to the final rejection. Otherwise, the

application would be abandoned. Upon

granting of such a petition by the

Director, the § 1.129(a) fee paid will be

refundable to applicant on request.

Applications that fall under § 1.129(a)

are under final rejection and there is a

time period running against the

applicant. Applicant must toll that time

period by paying the transitional afterfinal fee set forth in § 1.129(a) and any

necessary extension of time fees and

Notice of Appeal fee. Section 1.129(a) is

being amended to indicate that the

submission and the fee set forth in

§ 1.17(r) may be submitted before the

filing of the Appeal Brief and prior to

abandonment of the application.

84. Comment: One comment

suggested that if it is decided that the

transitional after-final practice is made

permanent, the PTO should seek

legislative authorization to provide

reduced fees for small entities.

Response: If it is decided that the

transitional after-final practice be made

permanent, the PTO will propose

legislation to accomplish this change.

85. Comment: Several comments

suggested that §§ 1.129 (a) and (b)

should apply to all applications

regardless of whether they were filed

before or after June 8, 1995.

Several comments suggested that the

practices set forth in §§ 1.129 (a) and (b)

should be made permanent.

Several comments suggested that an

applicant should be permitted to have a

submission entered and considered after

any final rejection upon payment of a

fee as set forth in § 1.17(r), not just the

first and second final rejections.

Response: The suggestions have not

been adopted at this time. However, the

PTO is undertaking a project to

reengineer the entire patent process.

These suggestions will be taken under

advisement in that project.

86. Comment: One comment

suggested that the PTO make an effort

to treat applications in which a

submission under § 1.129(a) has been

filed on an expedited basis.

Response: Once the submission is

filed and the fee set forth in § 1.17(r) is

paid the finality of the last PTO action

is withdrawn. The filing of the

submission and the fee under § 1.129(a)

is equivalent to the filing of a

continuing application and will be

treated in the same fashion and under

the same turnaround time frame as a

continuing application.

87. Comment: One comment

suggested that PTO practice be changed

so that a first Office action in a

continuing application cannot be made

final.

One comment suggested that PTO

practice regarding second action final be

relaxed.

Response: The suggestions have not

been adopted at this time. However, the

PTO is undertaking a project to

reengineer the entire patent process.

These suggestions will be taken under

advisement in that project.

88. Comment: One comment stated

that in proposed § 1.129, there is no

express provision for the finality of the

previous rejection to be withdrawn if

applicant complies with the proposed

rule. It is suggested that the proposed

rule state that the finality of the

previous action would be withdrawn if

applicant complied with the rule when

making a first or second submission

after a final action.

Response: The suggestion has been

adopted.

89. Comment: One comment

requested that the PTO clarify whether

§ 1.129(a) required the first final

rejection to be specifically withdrawn

and a different final (i.e., one containing

a new ground of rejection) rejection

made before applicant is entitled to

make a second submission.

Response: The final rule provides that

the finality of the previous final office

action is automatically withdrawn upon

the timely filing of the first § 1.129(a)

submission and the fee set forth in

§ 1.17(r). If the first PTO action

following the payment of the § 1.17(r)

fee is a non-final office action, a further

response from applicant will be entered

and considered as a matter of right

without payment of the fee set forth in

§ 1.17(r). If the next office action or any

subsequent action is made final, the

finality of that office action will be

automatically withdrawn upon the

timely filing of a second § 1.129(a)

submission and the fee set forth in

§ 1.17(r).

90. Comment: One comment

suggested that the PTO not permit the

first PTO action following the payment

of the § 1.17(r) fee to be made final

under any circumstances.

Response: The suggestion has not

been adopted. The first PTO action

following the payment of the § 1.17(r)

fee may be made final under the same

conditions that a first office action may

be made final in a continuing

application (see section 706.07(b) of the

MPEP). However, it would not be proper

to make final a first Office action in a

continuing or substitute application

where the continuing or substitute

application contains material which was

presented in the earlier application after

final rejection or closing of prosecution

but was denied entry because (1) new

issues were raised that required further

consideration and/or search, or (2) the

issue of new matter was raised. The

procedure set forth in section 706.07(b)

of the MPEP will apply to examination

of a submission considered as a result

of the procedure under § 1.129(a).

91. Comment: Several comments

suggested that the filing of the first

submission under § 1.129(a) within the

statutory period for response set in final

rejection should toll the running of the

six-month statutory period.

Response: The filing of a submission,

e.g., an information disclosure statement

or an amendment, after a final rejection

without payment of the fee set forth in

§ 1.17(r) will not toll the period for

response set in the final rejection.

However, § 1.129(a) is being amended to

provide in the rule that the finality of

the previous Office action is

automatically withdrawn upon the

filing of the submission and the

payment of the fee set forth in § 1.17(r).

Thus, the filing of a submission and the

payment of the fee set forth in § 1.17(r)

and any extension of time fees and

Notice of Appeal fee, if they are

necessary to avoid abandonment of the

application, will automatically toll the

period for response set in the final

rejection. It must be kept in mind that

the provisions of § 1.129 apply only to

an application, other than for reissue or
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20215

a design patent, that has been pending

for at least two years as of June 8, 1995,

taking into account any reference made

in such application to any earlier filed

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

and 365(c).

92. Comment: One comment asked (1)

whether it would be necessary to file a

Notice of Appeal and appeal fee with or

after the first submission and fee if the

examiner acts on the first submission

and before the end of the six months

from the date of the final rejection

issues (a) a notice of allowance, (b) a

non-final action, or (c) a second final

rejection; (2) would the Notice of

Appeal and fee be due only at the end

of the six months from the date of the

final rejection regardless of whether the

examiner has acted on the submission

by then; and (3) if the Notice of Appeal

and fee have once been paid following

a first final rejection, would a second

notice and fee need to be paid if a

second final rejection were issued and

applicant desired to file a second

submission under § 1.129(a).

Another comment suggested that the

appeal fee set forth in § 1.17(e) should

not be required where the Notice of

Appeal is filed with a § 1.129(a)

submission and the fee set forth in

§ 1.17(r).

Response: As to questions (1) and (2)

and the second comment, if the first

submission and the proper fee set forth

in § 1.17(r) are timely filed in response

to the final rejection, the finality of the

previous rejection will be automatically

withdrawn and applicant need not file

the Notice of Appeal or the appeal fee.

For example, if the first submission and

the proper fee set forth in § 1.17(r) were

filed on the last day of the six-month

period for response to the final

rejection, applicant must also file a

petition for three months extension of

time with the appropriate fee in order to

avoid abandonment of the application.

In such case, applicant need not file the

Notice of Appeal or the appeal fee if the

proper fee set forth in § 1.17(r) was

timely paid. However, under the same

fact situation, if applicant failed to

submit the proper fee set forth in

§ 1.17(r), the finality of the previous

rejection would not be withdrawn and

the time period for response would still

be running against applicant. In such

case, a Notice of Appeal and appeal fee

must also accompany the papers filed at

the six-month period in order to avoid

abandonment of the application. The

proper fee set forth in § 1.17(r) must be

filed prior to the filing of the Appeal

Brief and prior to the abandonment of

the application.

As to question (3), if the Notice of

Appeal and fee have once been paid

following a first final rejection and

applicant timely files a first submission

and the proper fee set forth in § 1.17(r),

the finality of the previous final

rejection will be withdrawn and the

appeal fee paid could be applied against

any subsequent appeal. If the examiner

issues a non-final rejection in response

to applicant’s first submission, a further

response from applicant will be entered

and considered as a matter of right. If

any subsequent Office action is made

final, applicant may file a second

submission along with the proper fee

pursuant to § 1.129(a). If the second

submission and the proper fee set forth

in § 1.17(r) are timely filed in response

to the subsequent final rejection, the

finality of the previous final rejection

will be withdrawn. Any submission

filed after a final rejection made in the

application subsequent to the fee under

§ 1.129(a) having been paid twice will

be treated as set forth in § 1.116.

Applicant may, upon payment of the

appeal fee, appeal a final rejection

within the time allowed for response

pursuant to § 1.191.

93. Comment: One comment

questioned whether the ‘‘first

submission’’ under § 1.129(a) has to be

the first response filed after a final

rejection or could it include subsequent

responses to the same final rejection.

Response: The ‘‘first submission’’

under § 1.129(a) would include all

responses filed prior to and with the

payment of the fee required by

§ 1.129(a) provided the submission and

fee are filed prior to the filing of the

Appeal Brief and prior to abandonment

of the application.

94. Comment: One comment

suggested that § 1.129(a) be changed to

permit the procedure to be available up

until the filing of an Appeal Brief since

it is not uncommon to file an

amendment after a Notice of Appeal is

filed but before the filing of an Appeal

Brief.

Response: The suggestion has been

adopted. Section 1.129(a) is being

amended to indicate that the submission

and the fee set forth in § 1.17(r) must be

submitted before the filing of the Appeal

Brief and prior to abandonment of the

application.

95. Comment: One comment

suggested that the transitional after-final

practice be available at any time after

final, including after the resolution of an

appeal unfavorable to applicant in

whole or in part.

Response: The suggestion has not

been adopted. Section 1.129(a) is being

amended to indicate that the submission

and the fee set forth in § 1.17(r) must be

submitted before the filing of the Appeal

Brief and prior to abandonment of the

application. The suggestion to extend

the period to after the resolution of an

appeal unfavorable to applicant in

whole or in part has not been adopted

because the suggestion would further

unduly extend prosecution of the

application.

96. Comment: One comment stated

that if an examiner must withdraw the

finality of the rejection as a result of the

transitional provision, the examiner

should be credited with two counts in

order to be compensated for the

additional work.

Response: The examiner credit system

is not part of this rulemaking package.

However, as part of the Public Law 103–

465 implementation plan, some

accommodation will be made for the

extra work performed.

97. Comment: One comment stated

that regarding the transitional after-final

practice, the fee should not be required

if the only reason is to have the PTO

consider recently obtained art.

Response: Under current practice, if

applicant submits prior art after final

rejection but before the payment of issue

fee, the art will be considered if

applicant makes the required

certification and submits a petition with

the required petition fee of $130.00 (see

section 609 of the MPEP). If applicant

can make the certification, applicant

would not have to rely on the

transitional after-final procedure to have

the prior art considered. In the event

that applicant cannot make the

certification, then the procedure under

§ 1.129(a) is available if applicant

wishes the PTO to consider the prior art

without refiling the application.

98. Comment: One comment

suggested that the PTO modify existing

restriction practice to make it more

difficult for examiners to require

restriction, for example, by requiring

every restriction requirement to show

two-way distinctness and separate

status in the art established by means

other than reference to the PTO’s

classification system.

Response: The suggestion has not

been adopted. However, the PTO is

undertaking a project to reengineer the

entire patent process. This suggestion

will be taken under advisement in that

project.

99. Comment: One comment

suggested that the pendency periods

required by §§ 1.129(a) and (b) should

be 18 months rather than 2-year and 3-

year, respectively.

Response: The pendency periods set

forth in the rule which establish

eligibility for the transitional procedures

are set forth in Public Law 103–465.

100. Comment: One comment

suggested that § 1.129(a) be amended to
20216 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

permit prosecution to be reopened after

a Notice of Allowance or final rejection

upon the filing of a form requesting that

prosecution be reopened and payment

of the necessary fee.

Response: The procedures set forth in

§ 1.129(a) are not applicable to

amendments filed after a Notice of

Allowance. Amendments filed after the

mailing of a Notice of Allowance are

governed by § 1.312. The procedures set

forth in § 1.129(a) are applicable to

amendments filed after a final rejection.

If applicant submits an amendment after

final and the examiner notifies the

applicant in writing that the amendment

is not entered, § 1.129(a) permits

applicant to submit a letter prior to

abandonment of the application and

prior to the filing of the Appeal Brief,

requesting entry of the prior filed

amendment along with the payment of

the appropriate fee set forth in § 1.17(r).

The letter requesting entry of the prior

filed amendment would be equivalent to

‘‘a form’’ as suggested in the comment.

101. Comment: One comment

suggested that the PTO liberalize its

current practice under § 1.116 to make

it easier for amendments or evidence to

be entered and considered after a final

rejection.

Response: The suggestion has not

been adopted since no change was

proposed to § 1.116 in the Notice of

Proposed Rulemaking. However, the

suggestion will be taken under

advisement as part of a comprehensive

effort being conducted by the PTO to

reengineer the entire patent process. It

should be noted that any change to

liberalize the current practice under

§ 1.116 would necessitate increasing

fees.

102. Comment: Several comments

suggested that the transitional

restriction provision be modified to

state that no restriction requirement

shall be made or maintained in any

application pending for three years on

the effective date of the legislation. The

comment stated that if restriction

requirements made prior to April 8,

1995, are permitted to be maintained

then applicants will be forced to file

divisional applications resulting in the

automatic loss of term after June 8,

1995. A heavy penalty will be placed on

the chemical, pharmaceutical and

biotechnology industries, who have less

than 4 months to search through the

ancestors of all pending applications

and to identify all restriction

requirements and to file divisional

applications before June 8, 1995. The

comment further suggested that the

current restriction practice be changed

in view of the implementation of the 20-

year term.

Response: The suggestion has not

been adopted. The two-month date set

forth in § 1.129(b)(1)(i) is from the

Statement of Administrative Action,

which is part of Public Law 103–465.

Under section 102 of Public Law 103–

465, ‘‘the statement of administrative

action approved by the Congress 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 Commissioner does

not have any authority to establish rules

which are inconsistent with the Act. It

is noted that in cases where a restriction

requirement was made prior to April 8,

1995, applicant will have sufficient time

to file divisional applications prior to

June 8, 1995, so as to retain the benefit

of the 17-year patent term for those

divisional applications.

The PTO is currently reviewing the

restriction practice in view of the

implementation of the 20-year patent

term. It is noted that a change in

restriction practice without changes to

other fees would have a negative impact

on funding needed to operate the PTO.

103. Comment: Several comments

suggested that proposed exceptions (1)

and (2) in § 1.129(b) ignore the

mandatory language of section 532(2)(B)

of Public Law 103–465 and should be

deleted.

Response: The suggestion has not

been adopted. The exceptions referred

to are contained in the Statement of

Administrative Action, which is part of

Public Law 103–465. Under section 102

of Public Law 103–465, ‘‘the statement

of administrative action approved by the

Congress 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.’’

104. Comment: One comment asked

whether ‘‘restriction’’ under § 1.129(b)

apply to election of species under

§ 1.146.

Response: ‘‘Restriction’’ under

§ 1.129(b) applies to both requirements

under § 1.142 and elections under

§ 1.146.

105. Comment: Several comments

requested that clarification be made as

to what constitutes ‘‘actions by the

applicant’’ in § 1.129(b)(1) and

specifically, whether a request for

extension of time under § 1.136(a)

constitutes such ‘‘actions’’ by the

applicant.

Response: Examples of what

constitute ‘‘actions by the applicant’’ in

§ 1.129(b)(1) are: (1) applicant abandons

the application and continues to refile

the application such that no Office

action can be issued in the application,

and (2) applicant requests suspension of

prosecution under § 1.103(a) such that

no Office action can be issued in the

application. Extension of time under

§ 1.136(a) would not constitute such

‘‘actions by the applicant’’ under

§ 1.129(b)(1).

106. Comment: One comment

suggested that the one-month period set

forth in § 1.129(b) is insufficient to give

an applicant time to file a petition under

§ 1.144 from a restriction requirement.

Several comments suggested that

§ 1.129(b) be amended to permit

applicant to challenge the restriction

requirement by way of a petition before

being required to pay the fees set forth

in § 1.17(s).

Response: Section 1.129(b)(2) is being

amended in the final rule package to

indicate that applicant will be given ‘‘a

time period’’ to (1) make an election, if

no election has been previously made,

and pay the fee set forth in § 1.17(s), (2)

confirm an earlier election and pay the

fee set forth in § 1.17(s), or (3) file a

petition under § 1.129(b)(2) traversing

the restriction requirement. If applicant

chooses not to pay the fee set forth in

§ 1.17(s), applicant may file a petition

under § 1.129(b)(2) requesting

immediate review by the Group Director

of the restriction requirement. No

petition fee is required. A petition under

§ 1.129(b)(2) rather than under § 1.144

would be more appropriate under the

circumstances since a petition under

§ 1.144 requires the examiner to make

the restriction final before the petition

can be considered.

107. Comment: One comment

suggested that if applicant elects not to

pay the fee set forth in § 1.17(s),

applicant should be allowed to elect the

invention to be examined.

Response: The suggestion has been

adopted. Section 1.129(b) is being

amended to indicate that if applicant

chooses not to pay the fees for the

additional inventions, applicant must

elect the invention to be examined and

the claims directed to the non-elected

inventions for which no fee has been

paid will be withdrawn from

consideration.

108. Comment: One comment

suggested that the PTO amend the rules

to permit all, or at least several,

inventions to be examined in a single

application upon payment of an

appropriate fee.

Response: The suggestion has not

been adopted at this time. However, the
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20217

PTO is currently undertaking a project

to reengineer the entire patent process.

The suggestion will be taken in

advisement in this project.

109. Comment: One comment

suggested that PTO follow the wording

of 35 U.S.C. 121 and only require

restriction where an application claims

two or more independent and distinct

inventions rather than two or more

independent or distinct inventions.

Response: In making restriction

requirements, the PTO has always

followed the wording of 35 U.S.C. 121

to require restriction if two or more

independent and distinct inventions are

claimed in an application rather than

independent or distinct as suggested by

the comment. The term ‘‘independent’’

includes species and related inventions

such as combination/subcombination

and process and product. Restriction is

proper if these independent inventions

are patentably distinct (see section

802.01 of the MPEP).

110. Comment: One comment

suggested that the standard for

determining whether an application

contains independent and distinct

inventions should only be the ‘‘unity of

invention’’ standard used for PCT

applications.

Response: The suggestion has not

been adopted. The current restriction

practice for 35 U.S.C. 111(a)

applications is governed by 35 U.S.C.

121 and §§ 1.141, 1.142 and 1.146. The

PCT ‘‘unity of invention’’ standard only

applies to PCT applications and

applications filed under 35 U.S.C. 371.

The PTO is currently reviewing the

restriction practice in view of the

implementation of the 20-year patent

term. It is noted that a change in

restriction practice without changes to

other fees would have a negative impact

on funding needed to operate the PTO.

111. Comment: One comment

suggested that the PTO apply the PCT

unity of invention standard as

interpreted by the EPO and that

§ 1.475(b) be amended to permit a broad

range of claims in a single application.

Response: The PTO is currently

undertaking a project to reengineer the

entire patent process. The suggestion

will be taken under advisement in this

project.

112. Comment: One comment

suggested that the PTO examiner should

not be permitted to issue a restriction

requirement or an election of species

requirement if the ISA and the IPEA

have found that an application complies

with the unity of invention requirement.

Another comment suggested that the

PTO consider allowing applicants to

retain all claims in a single application

when the claims are related, e.g.,

method and apparatus claims.

Another comment suggested that all

species be searched before the first

Office action regardless of whether one

species is found to be unpatentable.

Another comment suggested that

election of species requirements be

prohibited.

Response: The suggestions have not

been adopted. These issues were not

addressed in the Notice of Proposed

Rulemaking. However, the PTO is

currently undertaking a project to

reeingineer the entire patent process.

The suggestions will be taken under

advisement in that project.

113. Comment: One comment

suggested that decisions on whether to

issue a restriction requirement be made

within two-three months of the

application filing date, and, if the

requirement is traversed, the examiner

should determine within four-five

months of the filing date whether to

maintain the requirement. Decisions on

petitions to withdraw a restriction

requirement should be decided within

one month.

Response: The suggestion has not

been adopted. Current practice dictates

that restriction requirements be made at

the earliest appropriate time in the

pendency of a given application, e.g., in

the first Office action. It would be

difficult to issue a restriction

requirement within two-three months of

the application filing date as suggested

since a large number of applications are

filed with missing parts and applicants

are given a time period to submit the

missing parts. Furthermore, applications

must be processed by the Application

Branch and must be screened by

Licensing and Review for national

security. Petitions to withdraw a

restriction requirement should be acted

on by the Group Director expeditiously.

114. Comment: One comment argued

that the phrases, ‘‘so as to be pending

for a period of no longer than 12

months’’ and ‘‘under no circumstances

will the provisional application be

pending after 12 months’’, in § 1.139

were repetitious and suggested that one

or both of the phrases be deleted.

Response: The suggestion has not

been adopted. The statements are

included for emphasis.

115. Comment: One comment

suggested that § 1.139 clearly state that

if the revival petition is filed later than

12 months after filing of the provisional

application, then the revival is for the

sole purpose of providing copendency

for a 35 U.S.C. 111(a) application filed

during that 12-month period.

Response: The suggestion has not

been adopted. The proposed language is

not necessary.

116. Comment: One comment stated

that 35 U.S.C. 154(b) as contained in

Public Law 103–465 does not give the

Commissioner any authority to decide

the period of extension. Therefore,

proposed § 1.701 is without statutory

basis.

Response: 35 U.S.C. 6(a) gives the

Commissioner authority to establish

regulations not inconsistent with law.

Section 1.701 is consistent with 35

U.S.C. 154(b) and furthermore, the

Commissioner has the authority under

35 U.S.C. 154(b)(3)(C) to establish

regulations to address the standards for

determining due diligence.

117. Comment: One comment

questioned whether patent term

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

available for patents issuing: (1) Before

June 8, 1995, with a 17-year patent term

or a 17/20 year patent term; (2) on or

after June 8, 1995, on applications filed

before June 8, 1995, with a 17-year

patent term or a 17/20 year patent term.

Response: None of the patents set

forth in the examples are eligible for

patent term extension. Under the terms

of the statute, patent term extension is

only available for patents issued on

applications filed on or after June 8,

1995.

118. Comment: Several comments

questioned whether a patent issued on

a continuing application is entitled to a

patent term extension under 35 U.S.C.

154(b) due to interference, secrecy

order, or appellate review delays

occurring in the examination of the

parent application.

Response: If the delay in the parent

application contributed to a delay in the

issuance of a patent in the continuing

application, the patent granted on the

continuing application may be eligible

for an extension under 35 U.S.C. 154(b).

119. Comment: One comment

suggested that the patent term be

extended for a period of time equal to

the time necessary to revive an

application improperly abandoned due

to PTO error. Another comment

suggested that patent time extension be

available for other PTO delays.

Response: The suggestions have not

been adopted. Section 154(b) of title 35,

United States Code, only permits patent

term extension for delays due to

interferences, secrecy orders, and/or

successful appeals.

120. Comment: One comment

suggested that the period of an

extension granted under § 1.701 be

printed on the face of the patent.

Response: The PTO will publish on

the face of the patent any patent term
20218 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

extension that is granted pursuant to

§ 1.701.

121. Comment: One comment

suggested that the word ‘‘interference’’

be inserted before the word

‘‘proceedings’’ in § 1.701(a)(1).

Response: The suggestion has been

adopted.

122. Comment: One comment stated

that the last sentence of § 1.701(b) is

confusing because it suggests that patent

term extension will be available in cases

of terminal disclaimer and that the

extension begins on the terminal

disclaimer date rather than the original

expiration date. This statement is

contrary to 35 U.S.C. 154(b)(2) which

does not permit any patent term

extension for appellate delay if the

patent is subject to a terminal

disclaimer.

Response: In order to reduce

confusion, the last sentence of § 1.701(b)

is being amended to state that the

extension will run from the expiration

date of the patent. The reference to

‘‘terminal disclaimer’’ is being deleted.

123. Comment: Two comments stated

that if an application involved in an

interference proceeding contains

uninvolved claims, those uninvolved

claims should not be entitled to

extension of patent term under

proposed § 1.701 because applicant

could cancel those uninvolved claims

from the application and refile those

claims in a continuation application. It

is suggested that if an applicant leaves

conclusively uninvolved claims (where

no § 1.633(c)(4) motion is filed) in the

application in interference, applicant

does not get the benefit of the extension

for any claim.

Response: The suggestion has not

been adopted. The statute, 35 U.S.C.

154(b), grants patent term extension to

a patent if the issuance of the patent was

delayed due to interference proceeding

under 35 U.S.C. 135(a). The statute does

not exclude applications containing

uninvolved claims. The Commissioner

does not have the authority to establish

regulations which are inconsistent with

the law. Therefore, an application

involved in an interference which

contains uninvolved claims will be

entitled to patent term extension if the

issuance of the patent was delayed due

to interference proceeding under 35

U.S.C. 135(a).

124. Comment: One comment asked

whether applicant is entitled to patent

term extension regardless of whether an

interference involving applicant’s

application is ultimately declared.

One comment asked if the PTO ends

the suspension without declaring an

interference, and continued prosecution

results in filing of a continuation or

divisional application, are such

subsequent cases entitled to the

extension.

Response: An application will not be

suspended unless it is decided that an

interference can be declared involving

that application. If prosecution of

applicant’s application is suspended

due to an interference not involving

applicant’s application and an

interference involving applicant’s

application is later declared, applicant

will be entitled to patent term extension

under § 1.701(c)(1)(ii) for the suspension

period and under § 1.701(c)(1)(ii) for the

interference period. However, if

prosecution of applicant’s application is

suspended due to an interference not

involving applicant’s application and if

the PTO ends the suspension of the

application without declaring an

interference involving applicant’s

application, that application will be

entitled to patent term extension under

§ 1.701(c)(1)(ii). If prosecution results in

filing of a continuing application and if

the delay in the parent application

contributed to a delay in the issuance of

a patent on the continuing application,

the patent granted on the continuing

application may be eligible for an

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

125. Comment: One comment stated

that delays in the issuance of a patent

can exceed the five-year limit provided

for in proposed § 1.701(b). Where the

delay was not the fault of the applicant,

why should there be this maximum?

Another comment stated that in a

biotechnology application, if suspension

of the application results in a declared

interference, the period of delay

calculated under § 1.701(c)(1)(i) will

likely consume most of the five-year

maximum extension. This renders the

value of any time period measured

under § 1.701(c)(1)(ii) negligible, thus

diminishing the rights of applicant due

to the unregulated suspension powers of

the PTO.

Response: The five-year limit for

patent term extension set forth in

§ 1.701(b) is required by statute, 35

U.S.C. 154(b).

126. Comment: One comment

suggested that § 1.701(c)(1)(i) be

amended to state that an application

added after an interference is declared

is entitled to an extension measured

only from the date of redeclaration.

Response: The suggestion has not

been adopted. The language in

§ 1.701(c)(1)(i) is clear that for an

application that is added to an

interference, that application is entitled

to an extension measured from the date

of redeclaration of the interference.

127. Comment: One comment stated

that § 1.701(c)(1)(ii) does not address the

case where a suspended application is

added to the interference without the

suspension being lifted.

Response: Section 1.701(c)(1)(ii) is

being amended to reference the

endpoint for the suspension period to

the date of termination of the

suspension. Where prosecution of an

application is suspended due to

interference proceedings not involving

the application, the suspension is made

pursuant to § 1.103(b). When that

application is added to an interference,

the suspension pursuant to § 1.103(b)

will be automatically lifted. The

application is entitled to patent term

extension for the period of suspension

pursuant to § 1.701(c)(1)(ii) and for the

period of interference pursuant to

§ 1.701(c)(1)(i). Under § 1.701(c)(1)(ii),

the period of suspension begins on the

date the application is suspended and

ends on the date the suspension under

§ 1.103(b) is terminated, which in this

case would be the same date as the date

of redeclaration of the interference.

128. Comment: One comment

suggested that the phrase ‘‘, if any,’’ in

§ 1.701(c)(1)(i) and (ii) is unnecessary.

Response: The suggestion has not

been adopted. However, § 1.701(c)(1)(i)

is being amended for clarity by deleting

the phrase ‘‘if any’’ after the first

occurrence of ‘‘interference’’ and by

inserting the same phrase after the

phrase ‘‘the number of days.’’

129. Comment: Several comments

suggested that the phrase ‘‘was declared

or redeclared’’ in § 1.701(c)(1)(i) be

changed to—was first declared—.

Response: The suggestion has not

been adopted. The language of the rule

reads ‘‘with respect to each interference

in which the application was involved,

the number of days in the period

beginning on the date the interference

was declared or redeclared to involve

the application in the

interference.* * *’’ An interference

may be declared as A vs. B and later

redeclared as A vs. B vs. C. Under the

rule, the period of extension would be

counted, with respect to applications A

and B, from the date the interference

was declared to involve the applications

A and B. With respect to application C,

the period of extension would be

counted from the date the interference

was redeclared to involve the

application C. No ambiguity is seen in

the language as originally proposed.

130. Comment: One comment

suggested that the use of the phrase

‘‘appellate review’’ in reference to an

action under 35 U.S.C. 145 or 146 is

incorrect, since an action under 35

U.S.C. 145 or 146 is not considered as

an ‘‘appellate review’’ and suggests that

§ 1.701(a)(3) be amended so that the
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20219

introductory phrase reads ‘‘Appellate

review by the Board of Patent Appeals

and Interferences or review by a Federal

court under 35 U.S.C. 141 or

145,* * *.’’

Response: The suggestion has not

been adopted. The use of the phrase

‘‘appellate review’’ in reference to an

action under 35 U.S.C. 145 or 146 is

technically incorrect. However, Public

Law 103–465 provides for extension of

patent term for ‘‘delay due to appellate

review by the Board of Patent Appeals

and Interferences or by a Federal court’’.

The introductory phrase referred to in

the comment uses the exact language

found in the statute.

131. Comment: One comment

suggested that § 1.701(a) be amended to

specify whether extensions for appellate

delays are available for reissue

applications.

Response: The suggestion has not

been adopted. Under 35 U.S.C. 251, the

term of a reissue patent is ‘‘for the

unexpired part of the term of the

original patent.’’ Therefore, patent term

extension for appellate delays is not

available for reissue applications.

132. Comment: One comment

suggested that § 1.701(d) be deleted.

Response: The suggestion has not

been adopted. Section 1.701(d) sets

forth the language found in the statute,

35 U.S.C. 154(b)(3) and further provides

a standard for determining due

diligence.

133. Comment: Several comments

suggested that the lack of due diligence

set forth in § 1.701(d)(2) be limited to

the acts which occurred during the

appellate period (after the filing of a

Notice of Appeal) and not during

prosecution.

Response: The suggestion has been

adopted. Section 1.701(d) is being

amended accordingly.

134. Comment: One comment

suggested that the rules be made clear

that a suspension under § 1.103 does not

constitute a lack of due diligence under

§ 1.701(d)(2).

Response: The suggestion has not

been adopted. A request for suspension

pursuant to § 1.103(a) during the

appellate review period will be

considered to be prima facie evidence of

lack of due diligence.

135. Comment: Several comments

stated that the rules permit extensions

of time and the filing of informal

applications. These acts should not

constitute lack of due diligence since

the proposed rule defined the standard

for determining due diligence is

whether the applicant exhibited that

degree of timeliness as may reasonably

be expected from, and which is

ordinarily exercised by, a person. One

comment suggested that the Office

adopt a gross negligence standard.

Response: The examples of acts that

may constitute lack of due diligence set

forth in the Notice of Proposed

Rulemaking (extensions of time, filing of

nonresponsive submissions, and filing

of informal applications) are being

withdrawn. The suggestion regarding

the adoptions of a gross negligence

standard has not been adopted. As set

forth in § 1.701(d)(2), the standard for

determining due diligence is whether

applicant exhibited that degree of

timeliness as may reasonably be

expected from, and which is ordinarily

exercised by, a person during the

appellate review period.

136. Comment: One comment stated

that the PTO list in the rule all

circumstances in which an applicant

will be considered not to have acted

with due diligence.

Another comment suggested that

objective criteria for ‘‘diligence’’ be set

forth in § 1.701(d)(2).

Response: The suggestion has not

been adopted. Whether an action by the

applicant constitutes lack of due

diligence will be determined by the

facts and circumstances of each case.

Since lack of due diligence is

determined on a case-by-case basis, it

would not be possible to list all

circumstances in the rule. Examples of

acts which will constitute prima facie

evidence of lack of due diligence are: (1)

abandonment of the application during

appellate review; and (2) suspension of

action under § 1.103(a) during appellate

review.

137. Comment: One comment

suggested that guidance be provided in

the comments to the Notice of Final

Rules identifying in what circumstances

is a patent issued ‘‘pursuant to an

appellate decision reversing an adverse

determination of patentability.’’

Several comments questioned

whether the reversal of all rejections on

one of several appealed claims would

entitle applicant to an extension under

§ 1.701(a)(3). Two comments suggested

that the rule be redrafted to allow

appropriate extension of term where the

Board or a court reverses at least ‘‘in

part.’’

Response: Extension of patent term

under § 1.701(a)(3) is applicable if all

the rejections of any one claim are

ultimately reversed. The rule is clear

and no clarification is needed.

138. Comment: One comment stated

that § 1.701 does not address the

situation where applicant appeals with

both allowed and rejected claims. In

such case, patent term extension should

be available for any claims that were

allowed prior to appellate review, if the

allowed claims were in the same

application, whether or not the decision

of the examiner on the rejected claims

is ultimately reversed. Applicant should

not have to refile the allowed claims

and rejected claims in separate cases in

order to take advantage of the patent

term extension.

Response: If applicant chooses to keep

the allowed claims with the rejected

claims in the application on appeal,

patent term extension pursuant to 35

U.S.C. 154(b)(2) is only available if a

patent was issued pursuant to a decision

reversing an adverse determination of

patentability and if the patent is not

subject to a terminal disclaimer due to

the issuance of another patent claiming

subject matter that is not patentably

distinct from that under appellate

review. If the appellate review is not

successful, applicant will not be entitled

to patent term extension.

139. Comment: One comment

questioned whether the phrase ‘‘if the

patent is not subject to a terminal

disclaimer’’ in § 1.701(a)(3) is intended

to be limited to those applications in

which a terminal disclaimer has

actually been filed or encompass those

applications in which a double

patenting rejection has been made and

a terminal disclaimer suggested by an

examiner.

Response: The calculation of any

applicable extension under § 1.701 will

be made prior to the mailing of the

Notice of Allowance and Issue Fee Due.

At that time, any double patenting

rejection would have been resolved and

a terminal disclaimer would have been

filed if one was required.

140. Comment: One comment stated

that § 1.701(d)(1) is inconsistent with 35

U.S.C. 154(b)(2) and (b)(3), because the

period of extension for appellate review

would be calculated under § 1.701(d)(1)

by first subtracting the period of

appellate review occurring within three

years of the filing date before the fiveyear limit is imposed. It is suggested

that § 1.701 be modified to be consistent

with 35 U.S.C. 154(b)(2) which requires

the five-year limit to be imposed before

the subtraction for appellate review

occurring within three years of the filing

date.

Response: The suggestion has not

been adopted. Section 1.701 is not

inconsistent with 35 U.S.C. 154(b)(2)

and (b)(3). The period of extension

referred to in 35 U.S.C. 154(b)(2) is

defined in 35 U.S.C. 154(b)(3).

Therefore, one must determine the

period of extension in 35 U.S.C.

154(b)(3)(A), then reduce that period by

the time determined in 35 U.S.C.

154(b)(3)(B) and (b)(3)(C). Then,

according to 35 U.S.C. 154(b)(2), the
20220 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

resulting time period may not be more

than five years.

141. Comment: One comment

suggested that the Commissioner

identify a senior person who is charged

with approving all reductions in

extension of patent term rather than

leaving the decision to the examiner or

the SPE.

One comment questioned who will

make the calculation of the period of

patent term extension under § 1.701 and

whether that calculation can be

challenged and by whom.

Response: It is contemplated that the

period of patent term extension

calculated and any reduction in the

extension of patent term will not be

made by an examiner. It is noted that

the period of patent term extension will

be identified in the Notice of Allowance

and Issue Fee Due and if applicant

disagrees with the period, applicant

may request further review by way of a

petition under § 1.181. If an error is

noted after the patent issues, patentee or

any third party may seek correction of

the period of patent term extension

granted by filing a request for a

Certificate of Correction pursuant to

§ 1.322.

142. Comment: One comment

questioned whether a challenge to the

period of patent term extension

calculated by the PTO under § 1.701

would be required to be made within a

fixed period.

Response: No. However, the longer

applicant delays filing a petition under

§ 1.181 challenging the period of

extension calculated by the PTO, the

less likely any error will be corrected

before the patent is issued with the error

printed on the patent. If the patent

issues with an incorrect period of

extension, applicant should file a

request for a Certificate of Correction

pursuant to § 1.322 instead of a petition

under § 1.181.

143. Comment: One comment

suggested that § 1.701(d)(2) be amended

to require PTO to notify applicant in

writing of any intent to reduce the term

extension for lack of due diligence,

stating the specific basis, and provide

applicant with a reasonable opportunity

to respond.

Response: The suggestion has not

been adopted. The period of patent term

extension will be identified in the

Notice of Allowance and Issue Fee Due

and if applicant disagrees with the

period, applicant may request further

review by way of a petition under

§ 1.181.

144. Comment: One comment

suggested that a cover sheet for use in

recording assignments be included in

the final rules package as an addendum.

Response: The suggestion has not

been adopted. A sample cover sheet for

use in recording assignments was

published as Appendix B in the Federal

Register on July 6, 1992, at 57 FR 29634

and in the Official Gazette on July 28,

1992, at 1140 Off. Gaz. Pat. Office 63

and may be obtained from Assignment

Branch.

Other Considerations

This final rule change is in conformity

with the requirements of the Regulatory

Flexibility Act, 5 U.S.C. 601 et seq.,

Executive Order 12612, and the

Paperwork Reduction Act of 1980, 44

U.S.C. 3501 et seq. This final rule has

been determined not to be significant for

the purposes of E.O. 12866.

The Assistant General Counsel for

Legislation and Regulation of the

Department of Commerce has certified

to the Chief Counsel for Advocacy,

Small Business Administration, that

these final rule changes will not have a

significant economic impact on a

substantial number of small entities

(Regulatory Flexibility Act, 5 U.S.C.

605(b)). The principal impact of these

changes is to provide a procedure for

domestic applicants to quickly and

inexpensively file a provisional

application. The filing date of the

provisional application will not be used

to measure the term of a patent granted

on an application which claims the

earlier filing date of the provisional

application.

The Patent and Trademark Office has

also determined that this notice has no

Federalism implications affecting the

relationship between the National

Government and the States as outlined

in E.O. 12612.

These final rules contain collections

of information subject to the

requirements of the Paperwork

Reduction Act (Act). The provisional

application has been approved by the

Office of Management and Budget under

control numbers 0651–0031 and 0651–

0032. The cover sheet is approved under

OMB control number 0651–0037. The

cover sheet is necessary to expedite the

processing of a provisional application

and improve quality. Public reporting

burden for the collection of information

on the cover sheet is estimated to

average 12 minutes per response,

including the time for reviewing

instructions, searching existing data

sources, gathering and maintaining the

data needed, and completing and

reviewing the collection of information.

Send comments regarding this burden

estimate or any other aspect of this

collection of information, including

suggestions for reducing the burden to

the Office of Assistance Quality and

Enhancement Division, Patent and

Trademark Office, Washington, D.C.

20231, and to the Office of Information

and Regulatory Affairs, Office of

Management and Budget, Washington,

D.C. 20503 (ATTN: Paperwork

Reduction Act Projects 0651–0031,

0651–0032, and 0651–0037).

List of Subjects

37 CFR Part 1

Administrative practice and

procedure, Courts, Freedom of

Information, Inventions and patents,

Reporting and record keeping

requirements, Small businesses.

37 CFR Part 3

Administrative practice and

procedure, Inventions and patents,

Reporting and record keeping

requirements.

For the reasons set forth in the

preamble, 37 CFR Parts 1 and 3 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 1.1 is amended by adding

new paragraph (i) to read as follows:

§ 1.1 All communications to be addressed

to Commissioner of Patents and

Trademarks.

* * * * *

(i) The filing of all provisional

applications and any communications

relating thereto should be additionally

marked ‘‘Box Provisional Patent

Application.’’

* * * * *

3. Section 1.9 is amended by revising

paragraph (a) to read as follows:

§ 1.9 Definitions.

(a)(1) A national application as used

in this chapter means a U.S. application

for patent which was either filed in the

Office under 35 U.S.C. 111, or which

entered the national stage from an

international application after

compliance with 35 U.S.C. 371.

(2) A provisional application as used

in this chapter means a U.S. national

application for patent filed in the Office

under 35 U.S.C. 111(b).

(3) A nonprovisional application as

used in this chapter means a U.S.

national application for patent which

was either filed in the Office under 35

U.S.C. 111(a), or which entered the

national stage from an international
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20221

application after compliance with 35

U.S.C. 371.

* * * * *

4. Section 1.12 is amended by revising

paragraph (c) to read as follows:

§ 1.12 Assignment records open to public

inspection.

* * * * *

(c) Any request by a member of the

public seeking copies of any assignment

records of any pending or abandoned

patent application preserved in secrecy

under § 1.14, or any information with

respect thereto, must

(1) Be in the form of a petition

accompanied by the petition fee set

forth in § 1.17(i), or

(2) Include written authority granting

access to the member of the public to

the particular assignment records from

the applicant or applicant’s assignee or

attorney or agent of record.

* * * * *

5. Section 1.14 is amended by revising

paragraph (e) to read as follows:

§ 1.14 Patent applications preserved in

secrecy.

* * * * *

(e) Any request by a member of the

public seeking access to, or copies of,

any pending or abandoned application

preserved in secrecy pursuant to

paragraphs (a) and (b) of this section, or

any papers relating thereto, must

(1) Be in the form of a petition and be

accompanied by the petition fee set

forth in § 1.17(i), or

(2) Include written authority granting

access to the member of the public in

that particular application from the

applicant or the applicant’s assignee or

attorney or agent of record.

* * * * *

6. Section 1.16 is amended by revising

paragraphs (a) through (g) and by adding

new paragraphs (k) and (l) to read as

follows:

§ 1.16 National application filing fees.

(a) Basic fee for filing each application

for an original patent, except

provisional, design or plant

applications:

By a small entity (§ 1.9(f))....................$365.00

By other than a small entity ..................730.00

(b) In addition to the basic filing fee

in an original application, except

provisional applications, for filing or

later presentation of each independent

claim in excess of 3:

By a small entity (§ 1.9(f))........................38.00

By other than a small entity ....................76.00

(c) In addition to the basic filing fee

in an original application, except

provisional applications, for filing or

later presentation of each claim

(whether independent or dependent) in

excess of 20 (Note that § 1.75(c)

indicates how multiple dependent

claims are considered for fee calculation

purposes.):

By a small entity (§ 1.9(f))........................11.00

By other than a small entity ....................22.00

(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))......................120.00

By other than a small entity ..................240.00

(If the additional fees required by

paragraphs (b), (c), and (d) of this

section are not paid on filing or on later

presentation of the claims for which the

additional fees are due, they must be

paid or the claims canceled by

amendment, prior to the expiration of

the time period set for response by the

Office in any notice of fee deficiency.)

(e) Surcharge for filing the basic filing

fee or oath or declaration on a date later

than the filing date of the application,

except provisional applications:

By a small entity (§ 1.9(f))........................65.00

By other than a small entity ..................130.00

(f) Basic fee for filing each design

application:

By a small entity (§ 1.9(f))......................150.00

By other than a small entity ..................300.00

(g) Basic fee for filing each plant

application, except provisional

applications:

By a small entity (§ 1.9(f))......................245.00

By other than a small entity ..................490.00

* * * * *

(k) Basic fee for filing each

provisional application:

By a small entity (§ 1.9(f))........................75.00

By other than a small entity ..................150.00

(1) Surcharge for filing the basic filing

fee or cover sheet (§ 1.51(a)(2)(i)) 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

* * * * *

7. Section 1.17 is amended by revising

paragraphs (h) and (i), and by adding

new paragraphs (q), (r) and (s) to read

as follows:

§ 1.17 Patent application processing fees.

* * * * *

(h) For filing a petition to the

Commissioner under a section

listed below which refers to this

paragraph .........................................130.00

§ 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

§ 1.84—for accepting color drawings or

photographs

§ 1.182—for decision on questions 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 patent

§ 1.378(e)—for reconsideration of

decision on petition refusing to

accept delayed payment of

maintenance fee in 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, 5.13 and 5.14—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

§ 1.53—to accord a filing date, except in

provisional applications

§ 1.55—for entry of late priority papers

§ 1.60—to accord a filing date

§ 1.62—to accord a filing date

§ 1.97(d)—to consider an information

disclosure statement

§ 1.102—to make 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 interference

settlement agreement

§ 3.81—for 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

§ 1.48—for correction of inventorship in

a provisional application

§ 1.53—to accord a provisional

application a filing date or to

convert an application filed under
20222 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

§ 1.53(b)(1) to a provisional

application

(r) For entry of a submission after

final rejection under § 1.129(a):

By a small entity (§ 1.9(f))......................365.00

By other than a small entity ..................730.00

(s) For each additional invention

requested to be examined under

§ 1.129(b):

By a small entity (§ 1.9(f))......................365.00

By other than a small entity ..................730.00

8. Section 1.21 is amended by revising

paragraph (l) to read as follows:

§ 1.21 Miscellaneous fees and charges.

* * * * *

(l) For processing and retaining any

application abandoned pursuant to

§ 1.53(d)(1) unless the required

basic filing fee has been paid ........$130.00

* * * * *

9. Section 1.28 is amended by revising

paragraph (a) to read as follows:

§ 1.28 Effect on fees of failure to establish

status, or change status, as a small entity.

(a) The failure to establish status as a

small entity (§§ 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

verified 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 two-month time period is

not extendable under § 1.136. Status as

a small entity is waived for any fee by

the failure to establish the status prior

to paying, at the time of paying, or

within two months of the date of

payment of, the fee. Status as a small

entity must be specifically established

in each application or patent in which

the status is available and desired.

Status as a small entity in one

application or patent does not affect any

other application or patent, including

applications or patents which are

directly or indirectly dependent upon

the application or patent in which the

status has been established. A

nonprovisional application claiming

benefit under 35 U.S.C. 119(e), 120, 121,

or 365(c) of a prior application may rely

on a verified statement filed in the prior

application if the nonprovisional

application includes a reference to the

verified statement in the prior

application or includes a copy of the

verified statement in the prior

application and status as a small entity

is still proper and desired. Once status

as a small entity has been established in

an application or patent, the status

remains in the application or patent

without the filing of a further verified

statement pursuant to § 1.27 of this part

unless the Office is notified of a change

in status.

* * * * *

10. Section 1.45 paragraph (c) is

revised to read as follows:

§ 1.45 Joint inventors.

* * * * *

(c) If multiple inventors are named in

a nonprovisional application, each

named inventor must have made a

contribution, individually or jointly, to

the subject matter of at least one claim

of the application and the application

will be considered to be a joint

application under 35 U.S.C. 116. If

multiple inventors are named in a

provisional application, each named

inventor must have made a

contribution, individually or jointly, to

the subject matter disclosed in the

provisional application and the

provisional application will be

considered to be a joint application

under 35 U.S.C. 116.

11. Section 1.48 is revised to read as

follows:

§ 1.48 Correction of inventorship.

(a) If the correct inventor or inventors

are not named in a nonprovisional

application through error without any

deceptive intention on the part of the

actual inventor or inventors, the

application may be amended to name

only the actual inventor or inventors.

Such amendment must be diligently

made and must be accompanied by:

(1) A petition including a statement of

facts verified by the original named

inventor or inventors establishing when

the error without deceptive intention

was discovered and how it occurred;

(2) An oath or declaration by each

actual inventor or inventors as required

by § 1.63;

(3) The fee set forth in § 1.17(h); and

(4) The written consent of any

assignee. When the application is

involved in an interference, the petition

shall comply with the requirements of

this section and shall be accompanied

by a motion under § 1.634.

(b) If the correct inventors are named

in the nonprovisional application when

filed and the prosecution of the

application results in the amendment or

cancellation of claims so that less than

all of the originally named inventors are

the actual inventors of the invention

being claimed in the application, an

amendment shall be filed deleting the

names of the person or persons who are

not inventors of the invention being

claimed. The amendment must be

diligently made and shall be

accompanied by:

(1) A petition including a statement

identifying each named inventor who is

being deleted and acknowledging that

the inventor’s invention is no longer

being claimed in the application; and

(2) The fee set forth in § 1.17(h).

(c) If a nonprovisional application

discloses unclaimed subject matter by

an inventor or inventors not named in

the application, the application may be

amended pursuant to paragraph (a) of

this section to add claims to the subject

matter and name the correct inventors

for the application.

(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 actual inventor or inventors,

the provisional application may be

amended to add the name or names of

the actual inventor or inventors. Such

amendment must be accompanied by:

(1) A petition including a statement

that the error occurred without

deceptive intention on the part of the

actual inventor or inventors, which

statement must be a verified statement

if made by a person not registered to

practice before the Patent and

Trademark Office; and

(2) The fee set forth in § 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, an

amendment may be filed in the

provisional application deleting the

name or names of the person or persons

who were erroneously named. Such

amendment must be accompanied by:

(1) A petition including a statement of

facts verified by the person or persons

whose name or names are being deleted

establishing that the error occurred

without deceptive intention;

(2) The fee set forth in § 1.17(q); and

(3) The written consent of any

assignee.

12. Section 1.51 is amended by

revising paragraphs (a) and (b) 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.

(1) A complete application filed under

§ 1.53(b)(1) comprises:

(i) A specification, including a claim

or claims, see §§ 1.71 to 1.77;

(ii) An oath or declaration, see §§ 1.63

and 1.68;

(iii) Drawings, when necessary, see

§§ 1.81 to 1.85; and
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20223

(iv) The prescribed filing fee, see

§ 1.16.

(2) A complete provisional

application filed under § 1.53(b)(2)

comprises:

(i) A cover sheet identifying:

(A) The application as a provisional

application,

(B) The name or names of the inventor

or inventors, (see § 1.41),

(C) The residence of each named

inventor,

(D) The title of the invention,

(E) The name and registration number

of the attorney or agent (if applicable),

(F) The docket number used by the

person filing the application to identify

the application (if applicable),

(G) The correspondence address, and

(H) 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);

(ii) A specification as prescribed by 35

U.S.C. 112, first paragraph, see § 1.71;

(iii) Drawings, when necessary, see

§§ 1.81 to 1.85; and

(iv) The prescribed filing fee, see

§ 1.16.

(b) 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.

* * * * *

13. Section 1.53 heading and

paragraphs (a) through (e) are revised to

read as follows:

§ 1.53 Application number, filing date, and

completion of application.

(a) Any application for a patent

received in the Patent and Trademark

Office will be assigned an application

number for identification purposes.

(b)(1) The filing date of an application

for patent filed under this section,

except for a provisional application, is

the date on which: a specification

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 in the name of the

actual inventor or inventors as required

by § 1.41. No new matter may be

introduced into an application after its

filing date (§ 1.118). If all the names of

the actual inventor or inventors are not

supplied when the specification and

any required drawing are filed, the

application will not be given a filing

date earlier than the date upon which

the names are supplied unless a petition

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

which sets forth the reasons the delay in

supplying the names should be excused.

A continuation or divisional application

(filed under the conditions specified in

35 U.S.C. 120 or 121 and § 1.78(a)) may

be filed under this section, § 1.60 or

§ 1.62. A continuation-in-part

application may be filed under this

section or § 1.62.

(2) The filing date of a provisional

application is the date on which: a

specification as prescribed by 35 U.S.C.

112, first paragraph; and any drawing

required by § 1.81(a), are filed in the

Patent and Trademark Office in the

name of the actual inventor or inventors

as required by § 1.41. No amendment,

other than to make the provisional

application comply with all applicable

regulations, may be made to the

provisional application after the filing

date of the provisional application. If all

the names of the actual inventor or

inventors are not supplied when the

specification and any required drawing

are filed, the provisional application

will not be given a filing date earlier

than the date upon which the names are

supplied unless a petition with the fee

set forth in § 1.17(q) is filed which sets

forth the reasons the delay in supplying

the names should be excused.

(i) A provisional application must

also include a cover sheet identifying

the application as a provisional

application. Otherwise, the application

will be treated as an application filed

under § 1.53(b)(1).

(ii) An application for patent filed

under § 1.53(b)(1) may be treated as a

provisional application and be accorded

the original filing date provided that a

petition requesting the conversion, with

the fee set forth in § 1.17(q), is filed

prior to the earlier of the abandonment

of the § 1.53(b)(1) application, the

payment of the issue fee, the expiration

of 12 months after the filing date of the

§ 1.53(b)(1) application, or the filing of

a request for a statutory invention

registration under § 1.293. The grant of

any such petition will not entitle

applicant to a refund of the fees which

were properly paid in the application

filed under § 1.53(b)(1).

(iii) A provisional application shall

not be entitled to the right of priority

under § 1.55 or 35 U.S.C. 119 or 365(a)

or to the benefit of an earlier filing date

under § 1.78 or 35 U.S.C. 120, 121 or

365(c) 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.

(c) If any application is filed without

the specification, drawing or name, or

names, of the actual inventor or

inventors required by paragraph (b)(1)

or (b)(2) of this section, applicant will

be so notified and given a time period

within which to submit the omitted

specification, drawing, name, or names,

of the actual inventor, or inventors, in

order to obtain a filing date as of the

date of filing of such submission. A

copy of the ‘‘Notice of Incomplete

Application’’ form notifying the

applicant should accompany any

response thereto submitted to the Office.

If the omission is not corrected within

the time period set, the application will

be returned or otherwise disposed of;

the fee, if submitted, will be refunded

less the handling fee set forth in

§ 1.21(n). Any request for review of a

refusal to accord an application a filing

date must be by way of a petition

accompanied by the fee set forth in

§ 1.17(i), if the application was filed

under § 1.53(b)(1), or by the fee set forth

in § 1.17(q), if the application was filed

under § 1.53(b)(2).

(d)(1) If an application which has

been accorded a filing date pursuant to

paragraph (b)(1) of this section does not

include the appropriate filing fee or an

oath or declaration by the applicant,

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 to pay the surcharge as

set forth in § 1.16(e) in order to prevent

abandonment of the application. A copy

of the ‘‘Notice to File Missing Parts’’

form mailed to applicant should

accompany any response thereto

submitted to the Office. If the required

filing fee is not timely paid, or if the

processing and retention fee set forth in

§ 1.21(l) is not paid within one year of

the date of mailing of the notification

required by this paragraph, the

application will be disposed of. No

copies will be provided or certified by

the Office of an application which has

been disposed of or in which neither the

required basic filing fee nor the

processing and retention fee has been

paid. The notification pursuant to this

paragraph may be made simultaneously

with any notification pursuant to

paragraph (c) of this section. If no

correspondence address is included in

the application, applicant has two

months from the filing date to file the

basic filing fee, oath or declaration and

to pay the surcharge as set forth in

§ 1.16(e) in order to prevent

abandonment of the application; or, if

no basic filing fee has been paid, one
20224 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

year from the filing date to pay the

processing and retention fee set forth in

§ 1.21(l) to prevent disposal of the

application.

(2) If a provisional application which

has been accorded a filing date pursuant

to paragraph (b)(2) of this section does

not include the appropriate filing fee or

the cover sheet required by § 1.51(a)(2),

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 to pay the surcharge as set forth in

§ 1.16(l) in order to prevent

abandonment of the application. A copy

of the ‘‘Notice to File Missing Parts’’

form mailed to applicant should

accompany any response thereto

submitted to the Office. If the required

filing fee is not timely paid, the

application will be disposed of. No

copies will be provided or certified by

the Office of an application which has

been disposed of or in which the

required basic filing fee has not been

paid. The notification pursuant to this

paragraph may be made simultaneously

with any notification pursuant to

paragraph (c) of this section. If no

correspondence address is included in

the application, applicant has two

months from the filing date to file the

basic filing fee, cover sheet and to pay

the surcharge as set forth in § 1.16(l) in

order to prevent abandonment of the

application.

(e)(1) An application for a patent filed

under paragraph (b)(1) of this section

will not be placed upon 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.

(2) A provisional application for a

patent filed under paragraph (b)(2) of

this section will not be placed upon 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).

* * * * *

14. Section 1.55 is revised 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)–(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 cases, 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 filed 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. The statement

must be a verified statement if made by

a person not registered to practice before

the Patent and Trademark Office.

(b) An applicant in a nonprovisional

application may under certain

circumstances claim priority on the

basis of one or more applications for an

inventor’s certificate in a country

granting both inventor’s certificates and

patents. To claim the right of priority on

the basis of an application for an

inventor’s certificate in such a country

under 35 U.S.C. 119(d), the applicant

when submitting a claim for such right

as specified in paragraph (a) of this

section, shall include an affidavit or

declaration. The affidavit or declaration

must include a specific statement that,

upon an investigation, he or she is

satisfied that to the best of his or her

knowledge, the applicant, when filing

the application for the inventor’s

certificate, had the option to file an

application for either a patent or an

inventor’s certificate as to the subject

matter of the identified claim or claims

forming the basis for the claim of

priority.

15. Section 1.59 is revised to read as

follows:

§ 1.59 Papers of application with filing

date not to be returned.

Papers in an application which has

received a filing date pursuant to § 1.53

will not be returned for any purpose

whatever. If applicants have not

preserved copies of the papers, the

Office will furnish copies at the usual

cost of any application in which either

the required basic filing fee (§ 1.16) or,

if the application was filed under

§ 1.53(b)(1), the processing and

retention fee (§ 1.21(1)) has been paid.

See § 1.618 for return of unauthorized

and improper papers in interferences.

16. Section 1.60 is amended by

revising the heading and paragraph (b)

to read as follows:

§ 1.60 Continuation or divisional

application for invention disclosed in a

prior nonprovisional application.

* * * * *

(b) An applicant may omit signing of

the oath or declaration in a continuation

or divisional application (filed under

the conditions specified in 35 U.S.C.

120 or 121 and § 1.78(a)) if:

(1) The prior application was a

nonprovisional application and a

complete application as set forth in

§ 1.51(a)(1);

(2) Applicant indicates that the

application is being filed pursuant to

this section and files a true copy of the

prior complete application as filed

including the specification (with

claims), drawings, oath or declaration

showing the signature or an indication

it was signed, and any amendments

referred to in the oath or declaration

filed to complete the prior application;

(3) The inventors named in the

continuation or divisional application

are the same or less than all the

inventors named in the prior

application; and

(4) The application is filed before the

patenting, or abandonment of, or

termination of proceedings on the prior

application. The copy of the prior

application must be accompanied by a

statement that the application papers

filed are a true copy of the prior

complete application. Such statement

must be by the applicant or applicant’s

attorney or agent and must be a verified

statement if made by a person not

registered to practice before the Patent

and Trademark Office. Only

amendments reducing the number of

claims or adding a reference to the prior

application (§ 1.78(a)) will be entered

before calculating the filing fee and

granting the filing date. If the

continuation or divisional application is

filed by less than all the inventors

named in the prior application, a

statement must accompany the

application when filed requesting

deletion of the names of the person or

persons who are not inventors of the

invention being claimed in the

continuation or divisional application.

Except as provided in paragraph (d) of

this section, if a true copy of the prior

application as filed is not filed with the

application or if the statement that the

application papers are a true copy is

omitted, the application will not be

given a filing date earlier than the date

upon which the copy and statement are
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20225

filed, unless a petition with the fee set

forth in § 1.17(i) is filed which

satisfactorily explains the delay in filing

these items.

* * * * *

17. Section 1.62 is amended by

revising paragraphs (a) and (e) to read as

follows:

§ 1.62 File wrapper continuing procedure.

(a) A continuation, continuation-inpart, or divisional application, which

uses the specification, drawings and

oath or declaration from a prior

nonprovisional application which is

complete as defined by § 1.51(a)(1), and

which is to be abandoned, may be filed

under this section before the payment of

the issue fee, abandonment of, or

termination of proceedings on the prior

application, or after payment of the

issue fee if a petition under § 1.313(b)(5)

is granted in the prior application. The

filing date of an application filed under

this section is the date on which a

request is filed for an application under

this section including identification of

the application number and the names

of the inventors named in the prior

complete application. If the

continuation, continuation-in-part, or

divisional application is filed by less

than all the inventors named in the

prior application a statement must

accompany the application when filed

requesting deletion of the names of the

person or persons who are not inventors

of the invention being claimed in the

continuation, continuation-in-part, or

divisional application.

* * * * *

(e) An application filed under this

section will utilize the file wrapper and

contents of the prior application to

constitute the new continuation,

continuation-in-part, or divisional

application but will be assigned a new

application number. Changes to the

prior application must be made in the

form of an amendment to the prior

application as it exists at the time of

filing the application under this section.

No copy of the prior application or new

specification is required. The filing of

such a copy or specification will be

considered improper, and a filing date

as of the date of deposit of the request

for an application under this section

will not be granted to the application

unless a petition with the fee set forth

in § 1.17(i) is filed with instructions to

cancel the copy or specification.

* * * * *

18. Section 1.63 is amended by

revising paragraph (a) to read as follows:

§ 1.63 Oath or declaration.

(a) An oath or declaration filed under

§ 1.51(a)(1)(ii) as a part of a

nonprovisional 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 and the

residence and country of citizenship of

each inventor; and

(4) State whether the inventor is a sole

or joint inventor of the invention

claimed.

* * * * *

19. 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(d)(1) 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 cases,

the oath or declaration here required

may be made on information and belief

by an applicant other than the inventor.

* * * * *

20. Section 1.78 is amended by

revising paragraphs (a)(1) and (a)(2) and

by adding new paragraphs (a)(3) and

(a)(4) 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

international applications designating

the United States of America. In order

for a nonprovisional application to

claim the benefit of a prior filed

copending nonprovisional application

or international application designating

the United States of America, each prior

application must name as an inventor at

least one inventor named in the later

filed nonprovisional application and

disclose the named inventor’s invention

claimed in at least one claim of the later

filed nonprovisional application in the

manner provided by the first paragraph

of 35 U.S.C. 112. In addition, each prior

application must be:

(i) Complete as set forth in

§ 1.51(a)(1); or

(ii) Entitled to a filing date as set forth

in § 1.53(b)(1), § 1.60 or § 1.62 and

include the basic filing fee set forth in

§ 1.16; or

(iii) Entitled to a filing date as set

forth in § 1.53(b)(1) and have paid

therein the processing and retention fee

set forth in § 1.21(l) within the time

period set forth in § 1.53(d)(1).

(2) 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. Cross-references to other

related applications may be made when

appropriate. (See § 1.14(b)).

(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,

Sunday, or Federal holiday within the

District of Columbia which for

copendency would require the

nonprovisional application to be filed

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(a)(2); or

(ii) Entitled to a filing date as set forth

in § 1.53(b)(2) 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
20226 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

provisional application number

(consisting of series code and serial

number).

* * * * *

21. Section 1.83 is amended by

revising paragraphs (a) and (c) to read as

follows:

§ 1.83 Content of drawing.

(a) The drawing in a nonprovisional

application must show every feature of

the invention specified in the claims.

However, conventional features

disclosed in the description and claims,

where their detailed illustration is not

essential for a proper understanding of

the invention, should be illustrated in

the drawing in the form of a graphical

drawing symbol or a labeled

representation (e.g., a labeled

rectangular box).

* * * * *

(c) Where the drawings in a

nonprovisional application do not

comply with the requirements of

paragraphs (a) and (b) of this section,

the examiner shall require such

additional illustration within a time

period of not less than two months from

the date of the sending of a notice

thereof. Such corrections are subject to

the requirements of § 1.81(d).

22. Section 1.97 is amended by

revising paragraph (d) to read as

follows:

§ 1.97 Filing of information disclosure

statement.

* * * * *

(d) An information disclosure

statement shall be considered by the

Office if filed after the mailing date of

either a final action under § 1.113 or a

notice of allowance under § 1.311,

whichever occurs first, but before

payment of the issue fee, provided the

statement is accompanied by:

(1) A certification 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).

* * * * *

23. Section 1.101 is amended by

revising paragraph (a) to read as follows:

§ 1.101 Order of examination.

(a) Nonprovisional applications filed

in the Patent and Trademark Office and

accepted as complete applications are

assigned for examination to the

respective examining groups having the

classes of inventions to which the

applications relate. Nonprovisional

applications shall be taken up for

examination by the examiner to whom

they have been assigned in the order in

which they have been filed except for

those applications in which

examination has been advanced

pursuant to § 1.102. See § 1.496 for

order of examination of international

applications in the national stage.

* * * * *

24. Section 1.102 is amended by

revising paragraph (d) to read as

follows:

§ 1.102 Advancement of examination.

* * * * *

(d) A petition to make an application

special on grounds other than those

referred to in paragraph (c) of this

section must be accompanied by the

petition fee set forth in § 1.17(i).

25. 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 response by the

applicant to an Office action is required.

* * * * *

26. A new, undesignated center

heading and new section 1.129 are

added to Subpart B—National

Processing Provisions to read as follows:

Transitional Provisions

§ 1.129 Transitional procedures for limited

examination after final rejection and

restriction practice.

(a) An applicant in an application,

other than for reissue or a design patent,

that has been pending for at least two

years as of June 8, 1995, taking into

account any reference made in such

application to any earlier filed

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

and 365(c), is entitled to have a first

submission entered and considered on

the merits after final rejection under the

following circumstances: The Office

will consider such a submission, if the

first submission and the fee set forth in

§ 1.17(r) are filed prior to the filing of an

appeal brief and prior to abandonment

of the application. The finality of the

final rejection is automatically

withdrawn upon the timely filing of the

submission and payment of the fee set

forth in § 1.17(r). If a subsequent final

rejection is made in the application,

applicant is entitled to have a second

submission entered and considered on

the merits after the subsequent final

rejection under the following

circumstances: The Office will consider

such a submission, if the second

submission and a second fee set forth in

§ 1.17(r) are filed prior to the filing of an

appeal brief and prior to abandonment

of the application. The finality of the

subsequent final rejection is

automatically withdrawn upon the

timely filing of the submission and

payment of the second fee set forth in

§ 1.17(r). Any submission filed after a

final rejection made in an application

subsequent to the fee set forth in

§ 1.17(r) having been twice paid will be

treated as set forth in § 1.116. A

submission as used in this paragraph

includes, but is not limited to, an

information disclosure statement, an

amendment to the written description,

claims or drawings and a new

substantive argument or new evidence

in support of patentability.

(b)(1) In an application, other than for

reissue or a design patent, that has been

pending for at least three years as of

June 8, 1995; taking into account any

reference made in the application to any

earlier filed application under 35 U.S.C.

120, 121, and 365(c), no requirement for

restriction or for the filing of divisional

applications shall be made or

maintained in the application after June

8, 1995, except where:

(i) The requirement was first made in

the application or any earlier filed

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

and 365(c) prior to April 8, 1995;

(ii) The examiner has not made a

requirement for restriction in the

present or parent application prior to

April 8, 1995, due to actions by the

applicant; or

(iii) The required fee for examination

of each additional invention was not

paid.

(2) If the application contains more

than one independent and distinct

invention and a requirement for

restriction or for the filing of divisional

applications cannot be made or

maintained pursuant to this paragraph,

applicant will be so notified and given

a time period to:

(i) Elect the invention or inventions to

be searched and examined, if no

election has been made prior to the

notice, and pay the fee set forth in

§ 1.17(s) for each independent and

distinct invention claimed in the

application in excess of one which

applicant elects;

(ii) Confirm an election made prior to

the notice and pay the fee set forth in

§ 1.17(s) for each independent and

distinct invention claimed in the

application in addition to the one

invention which applicant previously

elected; or

(iii) File a petition under this section

traversing the requirement. If the

required petition is filed in a timely

manner, the original time period for
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20227

electing and paying the fee set forth in

§ 1.17(s) will be deferred and any

decision on the petition affirming or

modifying the requirement will set a

new time period to elect the invention

or inventions to be searched and

examined and to pay the fee set forth in

§ 1.17(s) for each independent and

distinct invention claimed in the

application in excess of one which

applicant elects.

(3) The additional inventions for

which the required fee has not been

paid will be withdrawn from

consideration under § 1.142(b). An

applicant who desires examination of an

invention so withdrawn from

consideration can file a divisional

application under 35 U.S.C. 121.

(c) The provisions of this section shall

not be applicable to any application

filed after June 8, 1995.

27. Section 1.137 is amended by

revising paragraph (c) to read as follows:

§ 1.137 Revival of abandoned application.

* * * * *

(c) In all applications filed before June

8, 1995, and in all design applications

filed on or after June 8, 1995, any

petition pursuant to paragraph (a) of this

section not filed within six months of

the date of abandonment of the

application, must be accompanied by a

terminal disclaimer with fee under

§ 1.321 dedicating to the public a

terminal part of the term of any patent

granted thereon equivalent to the period

of abandonment of the application. The

terminal disclaimer must also apply to

any patent granted on any continuing

application entitled under 35 U.S.C. 120

to the benefit of the filing date of the

application for which revival is sought.

* * * * *

28. Section 1.139 is added to read as

follows:

§ 1.139 Revival of provisional application.

(a) A provisional application which

has been accorded a filing date and

abandoned for failure to timely respond

to an Office requirement may be revived

so as to be pending for a period of no

longer than twelve months from its

filing date if it is shown to the

satisfaction of the Commissioner that

the delay was unavoidable. Under no

circumstances will the provisional

application be pending after twelve

months from its filing date. A petition

to revive an abandoned provisional

application must be promptly filed after

the applicant is notified of, or otherwise

becomes aware of, the abandonment,

and must be accompanied by:

(1) The required response unless it

has been previously filed;

(2) The petition fee as set forth in

§ 1.17(l); and

(3) A showing that the delay was

unavoidable. The showing must be a

verified showing if made by a person

not registered to practice before the

Patent and Trademark Office.

(b) A provisional application which

has been accorded a filing date and

abandoned for failure to timely respond

to an Office requirement may be revived

so as to be pending for a period of no

longer than twelve months from its

filing date if the delay was

unintentional. Under no circumstances

will the provisional application be

pending after twelve months from its

filing date. A petition to revive an

abandoned provisional application must

be:

(1) Accompanied by the required

response unless it has been previously

filed;

(2) Accompanied by the petition fee

as set forth in § 1.17(m);

(3) Accompanied by a statement that

the delay was unintentional. The

statement must be a verified statement

if made by a person not registered to

practice before the Patent and

Trademark Office. The Commissioner

may require additional information

where there is a question whether the

delay was unintentional; and

(4) Filed either:

(i) Within one year of the date on

which the provisional application

became abandoned; or

(ii) Within three months of the date of

the first decision on a petition to revive

under paragraph (a) of this section

which was filed within one year of the

date on which the provisional

application became abandoned.

(c) Any request for reconsideration or

review of a decision refusing to revive

a provisional application upon petition

filed pursuant to paragraphs (a) or (b) of

this section, to be considered timely,

must be filed within two months of the

decision refusing to revive or within

such time as set in the decision.

(d) The time periods set forth in this

section cannot be extended, except that

the three-month period set forth in

paragraph (b)(4)(ii) of this section and

the time period set forth in paragraph (c)

of this section may be extended under

the provisions of § 1.136.

29. Section 1.177 is revised to read as

follows:

§ 1.177 Reissue in divisions.

The Commissioner may, in his or her

discretion, cause several patents to be

issued for distinct and separate parts of

the thing patented, upon demand of the

applicant, and upon payment of the

required fee for each division. Each

division of a reissue constitutes the

subject of a separate specification

descriptive of the part or parts of the

invention claimed in such division; and

the drawing may represent only such

part or parts, subject to the provisions

of §§ 1.83 and 1.84. On filing divisional

reissue applications, they shall be

referred to the Commissioner. Unless

otherwise ordered by the Commissioner

upon petition and payment of the fee set

forth in § 1.17(i), all the divisions of a

reissue will issue simultaneously; if

there is any controversy as to one

division, the others will be withheld

from issue until the controversy is

ended, unless the Commissioner orders

otherwise.

30. 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.

31. Section 1.313 is amended by

revising paragraph (a) to read as follows:

§ 1.313 Withdrawal from issue.

(a) Applications may be withdrawn

from issue for further action at the

initiative of the Office or upon petition

by the applicant. Any such petition by

the applicant must include a showing of

good and sufficient reasons why

withdrawal of the application is

necessary and, if the reason for the

withdrawal is not the fault of the Office,

must be accompanied by the fee set

forth in § 1.17(i). If the application is

withdrawn from issue, a new notice of

allowance will be sent if the application

is again allowed. Any amendment

accompanying a petition to withdraw an

application from issue must comply

with the requirements of § 1.312.

* * * * *

32. Section 1.314 is revised to read as

follows:

§ 1.314 Issuance of patent.

If payment of the issue fee is timely

made, the patent will issue in regular

course unless the application is

withdrawn from issue (§ 1.313), or

issuance of the patent is deferred. Any

petition by the applicant requesting a

deferral of the issuance of a patent must

be accompanied by the fee set forth in

§ 1.17(i) and must include a showing of

good and sufficient reasons why it is

necessary to defer issuance of the

patent.
20228 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

33. Section 1.316 is amended by

revising paragraph (d) to read as

follows:

§ 1.316 Application abandoned for failure

to pay issue fee.

* * * * *

(d) In all applications filed before

June 8, 1995, any petition pursuant to

paragraph (b) of this section not filed

within six months of the date of

abandonment of the application, must

be accompanied by a terminal

disclaimer with fee under § 1.321

dedicating to the public a terminal part

of the term of any patent granted

thereon equivalent to the period of

abandonment of the application. The

terminal disclaimer must also apply to

any patent granted on any continuing

application entitled under 35 U.S.C. 120

to the benefit of the filing date of the

application for which revival is sought.

* * * * *

34. Section 1.317 is amended by

removing and reserving paragraph (d).

§ 1.317 [Amended]

35. Section 1.666 is amended by

revising paragraph (b) to read as follows:

§ 1.666 Filing of interference settlement

agreements.

* * * * *

(b) If any party filing the agreement or

understanding under paragraph (a) of

this section so requests, the copy will be

kept separate from the file of the

interference, and made available only to

Government agencies on written

request, or to any person upon petition

accompanied by the fee set forth in

§ 1.17(i) and on a showing of good

cause.

* * * * *

36. Section 1.701 is added to Subpart

F to read as follows:

§ 1.701 Extension of patent term due to

prosecution delay.

(a) A patent, other than for designs,

issued on an application filed on or after

June 8, 1995, is entitled to extension of

the patent term if the issuance of the

patent was delayed due to:

(1) Interference proceedings under 35

U.S.C. 135(a); and/or

(2) The application being placed

under a secrecy order under 35 U.S.C.

181; and/or

(3) Appellate review by the Board of

Patent Appeals and Interferences or by

a Federal court under 35 U.S.C. 141 or

145, if the patent was issued pursuant

to a decision reversing an adverse

determination of patentability and if the

patent is not subject to a terminal

disclaimer due to the issuance of

another patent claiming subject matter

that is not patentably distinct from that

under appellate review.

(b) The term of a patent entitled to

extension under paragraph (a) of this

section shall be extended for the sum of

the periods of delay calculated under

paragraphs (c)(1), (c)(2), (c)(3) and (d) of

this section, to the extent that these

periods are not overlapping, up to a

maximum of five years. The extension

will run from the expiration date of the

patent.

(c)(1) The period of delay under

paragraph (a)(1) of this section for an

application is the sum of the following

periods, to the extent that the periods

are not overlapping:

(i) With respect to each interference in

which the application was involved, the

number of days, if any, in the period

beginning on the date the interference

was declared or redeclared to involve

the application in the interference and

ending on the date that the interference

was terminated with respect to the

application; and

(ii) The number of days, if any, in the

period beginning on the date

prosecution in the application was

suspended by the Patent and Trademark

Office due to interference proceedings

under 35 U.S.C. 135(a) not involving the

application and ending on the date of

the termination of the suspension.

(2) The period of delay under

paragraph (a)(2) of this section for an

application is the sum of the following

periods, to the extent that the periods

are not overlapping:

(i) The number of days, if any, the

application was maintained in a sealed

condition under 35 U.S.C. 181;

(ii) The number of days, if any, in the

period beginning on the date of mailing

of an examiner’s answer under § 1.193

in the application under secrecy order

and ending on the date the secrecy order

and any renewal thereof was removed;

(iii) The number of days, if any, in the

period beginning on the date applicant

was notified that an interference would

be declared but for the secrecy order

and ending on the date the secrecy order

and any renewal thereof was removed;

and

(iv) The number of days, if any, in the

period beginning on the date of

notification under § 5.3(c) and ending

on the date of mailing of the notice of

allowance under § 1.311.

(3) The period of delay under

paragraph (a)(3) of this section is the

sum of the number of days, if any, in the

period beginning on the date on which

an appeal to the Board of Patent

Appeals and Interferences was filed

under 35 U.S.C. 134 and ending on the

date of a final decision in favor of the

applicant by the Board of Patent

Appeals and Interferences or by a

Federal court in an appeal under 35

U.S.C. 141 or a civil action under 35

U.S.C. 145.

(d) The period of delay set forth in

paragraph (c)(3) shall be reduced by:

(1) Any time during the period of

appellate review that occurred before

three years from the filing date of the

first national application for patent

presented for examination; and

(2) Any time during the period of

appellate review, as determined by the

Commissioner, during which the

applicant for patent did not act with due

diligence. In determining the due

diligence of an applicant, the

Commissioner may examine the facts

and circumstances of the applicant’s

actions during the period of appellate

review to determine whether the

applicant exhibited that degree of

timeliness as may reasonably be

expected from, and which is ordinarily

exercised by, a person during a period

of appellate review.

PART 3—ASSIGNMENT, RECORDING,

AND RIGHTS OF ASSIGNEE

37. The authority citation for 37 CFR

Part 3 continues to read as follows:

Authority: 15 U.S.C. 1123; 35 U.S.C. 6.

38. 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 number (e.g., PCT/US90/

01234). If an assignment of a patent

application filed under § 1.53(b)(1) or

§ 1.62 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 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.
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20229

39. Section 3.81 is amended by

revising paragraph (b) to read as follows:

§ 3.81 Issue of patent to assignee.

* * * * *

(b) If the assignment is submitted for

recording after the date of payment of

the issue fee, but prior to issuance of the

patent, the assignee may petition that

the patent issue to the assignee. Any

such petition must be accompanied by

the fee set forth in § 1.17(i) of this

chapter.

Dated: April 14, 1995.

Bruce A. Lehman,

Assistant Secretary of Commerce and

Commissioner of Patents and Trademarks.

Note—The following appendix will not

appear in the Code of Federal Regulations.

BILLING CODE 3510–16–M
20230 Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations

Appendix
Federal Register / Vol. 60, No. 79 / Tuesday, April 25, 1995 / Rules and Regulations 20231

[FR Doc. 95–9838 Filed 4–24–95; 8:45 am]

BILLING CODE 3510–16–C