[Federal Register Volume 60, Number 79 (Tuesday, April 25, 1995)]
[Rules and Regulations]
[Pages 20195-20231]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-9838]



=======================================================================
-----------------------------------------------------------------------

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 [[Page 20196]] 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, [[Page 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 Sec. 1.60 is being withdrawn. Therefore, 
Sec. 1.17(i) is being changed to retain the reference to Sec. 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 Sec. 1.48 in a provisional application and a petition to 
accord a provisional application a filing date or to convert an 
application filed under Sec. 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 Sec. 1.129(a) and for each 
additional invention requested to be examined under Sec. 1.129(b). In 
the final rule, the fee required by Secs. 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 Sec. 1.17(q) and 
the addition of the small entity reduction in Secs. 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 
Secs. 1.129 (a) and (b) may be reduced by fifty (50) percent for small 
entities. However, the petition fees required by Sec. 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 Sec. 1.53(d), now redesignated Sec. 1.53(d)(1), is being 
withdrawn. Therefore, Sec. 1.21(1) is being retained and amended to 
refer to Sec. 1.53(d)(1). Also, the proposed change in the text to 
Sec. 1.17(n) is being withdrawn, since Sec. 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 Sec. 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 Sec. 1.17(q); and the written consent of any assignee. The first 
sentences of Secs. 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 
[[Page 20198]] 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 
Sec. 1.60.
    Section 1.53(b)(2)(ii) is being changed to require that any 
petition and petition fee to convert a Sec. 1.53(b)(1) application to a 
provisional application be filed in the Sec. 1.53(b)(1) application 
prior to the earlier of the abandonment of the Sec. 1.53(b)(1) 
application, the payment of the issue fee, the expiration of twelve 
(12) months after the filing date of the Sec. 1.53(b)(1) application, 
or the filing of a request for a statutory invention registration under 
Sec. 1.293. Where the Sec. 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 Sec. 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 Sec. 1.53(b)(1) application and is 
accompanied by an appropriate petition to revive an abandoned 
application under Sec. 1.137.
    Section 1.53(b)(2)(iii) is being changed to indicate that the 
requirements of Secs. 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 Sec. 1.53(d) is being withdrawn.
    The first sentences of Secs. 1.55 (a) and (b) are being changed for 
clarity to refer to a ``nonprovisional'' application.
    Also, Secs. 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 Sec. 1.21(l) and to clarify that the 
retention fee practice applies only to applications filed under 
Sec. 1.53(b)(1).
    The proposal to delete Sec. 1.60 is being withdrawn. Therefore, 
Sec. 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 Sec. 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 
Sec. 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 Sec. 1.62 after payment of the issue fee 
if a petition under Sec. 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 Sec. 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 Sec. 1.60. Section 1.78(a)(1)(iii) is being 
retained and amended to refer to Secs. 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 Sec. Sec. 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, Sec. 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, Secs. 1.83 (a) and (c) are being changed for clarity to refer to 
a ``nonprovisional'' application. Further, Sec. 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. [[Page 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, Sec. 1.129(a) is being changed to provide that the first 
and second submissions and fees set forth in Sec. 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 Sec. 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 Sec. 1.17(r). The 
language indicating that the submission would be entered and considered 
after timely payment of the fee set forth in Sec. 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 Sec. 1.17(r), the next PTO action following timely payment 
of the fee set forth in Sec. 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 Sec. 1.129(a). Thus, under Sec. 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 Sec. 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 Sec. 1.129(b) as one month. The time period for response will be 
identified in any written notification under Sec. 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 Sec. 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 Sec. 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 Sec. 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 
Sec. 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 
Sec. 1.129(b)(2) is filed in a timely manner, the original time period 
for electing and paying the fee set forth in Sec. 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 
Sec. 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 
Secs. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 1.155. Therefore, Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 1.317(b) not filed within six (6) months of the 
date of lapse of the patent. No change to Sec. 1.317 was proposed in 
the Notice of Proposed Rulemaking. However, the delay in filing a 
petition under Sec. 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.
[[Page 20200]]

    Section 1.701(b) is being changed to provide that the term of a 
patent entitled to an extension under Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 1.701(d)(2) are 
suspensions at applicant's request under Sec. 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 Sec. 1.17(i)(1) with references to Sec. 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 Sec. 1.53(d)(1). The 
change to Sec. 1.16(f) is merely for clarification. In addition, 
Sec. 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 Secs. 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, Sec. 1.16 is being amended to add a new paragraph (1) 
which establishes the surcharge required by new Sec. 1.53(d)(2) for 
filing the basic filing fee or the cover sheet required by new 
Sec. 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 
Sec. 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 
Sec. 1.102 to make an application special has been placed in paragraph 
(i). The words ``of this part'', in Sec. 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 Sec. 1.53 applies to all patent 
applications, except provisional applications.
    A new Sec. 1.17(q) is being added to establish a petition fee of 
$50.00 for filing a petition for correction of inventorship under 
Sec. 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 Sec. 1.53(b)(1) to a provisional application. 
The petition fee set forth in Sec. 1.17(q) is not reduced for a small 
entity.
    New Secs. 1.17 (r) and (s) are being added to establish the fees 
for entry of a submission after final rejection under Sec. 1.129(a) and 
for each additional invention requested to be examined under 
Sec. 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 Sec. 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 Sec. 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 [[Page 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 Sec. 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 Sec. 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 Sec. 1.34(a). The $50.00 petition fee set 
forth in Sec. 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 Sec. 1.17(q); and the written consent 
of any assignee.
    Section 1.51 is being amended to redesignate Sec. 1.51(a) as 
Sec. 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 
Sec. 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 Sec. 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 Sec. 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 Sec. 1.53(b)(2)(ii) was filed.
    The title of Sec. 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 Sec. 1.53(a).
    Section 1.53(b) is being redesignated as Sec. 1.53(b)(1) and is 
being amended to refer to Sec. 1.17(i) rather than Sec. 1.17(i)(1) to 
conform to the change therein.
    A new Sec. 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 Sec. 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 
Sec. 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 Sec. 1.53(d)(2).
    Section 1.53(b)(2)(ii) is being added to establish a procedure for 
converting an application filed under Sec. 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 Sec. 1.53(b)(1) 
application prior to the earlier of the abandonment of the 
Sec. 1.53(b)(1) application, the payment of the issue fee, the 
expiration of twelve (12) months after the filing date of the 
Sec. 1.53(b)(1) application, or the filing of a request for a statutory 
invention registration under Sec. 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 Sec. 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 
Secs. 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 Secs. 1.821-1.825 in [[Page 20202]] 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 Sec. 1.17(i), if 
the application was filed under Sec. 1.53(b)(1), or by the fee set 
forth in Sec. 1.17(q), if the application was filed under 
Sec. 1.53(b)(2). 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 Sec. 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 Sec. 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 Sec. 1.16(l).
    Section 1.53(e) is being redesignated as Sec. 1.53(e)(1) and 
amended to refer to Sec. 1.53(b)(1). Also, a new Sec. 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, Sec. 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 Sec. 1.17(i)(1) in Sec. 1.55(a) is being 
replaced by a reference to Sec. 1.17(i) to be consistent with the 
change to Sec. 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 Sec. 1.53(d)(1) applies only to applications 
filed under Sec. 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 Sec. 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 
Sec. 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 
Sec. 1.51(a)(1). Section 1.62(a) is also being amended to clarify that 
a continuing application may be filed under Sec. 1.62 after payment of 
the issue fee if a petition under Sec. 1.313(b)(5) is granted in the 
prior application and that the request for a Sec. 1.62 application must 
include identification of the inventors named in the prior application. 
The phrase ``Serial number, filing date'' in Sec. 1.62(a) is being 
changed to ``application number.''
    Section 1.62(e) is being amended to replace the reference to 
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with 
the change to Sec. 1.17. Also, the term ``application serial number'' 
in Sec. 1.62(e) is being changed to ``application number.''
    Section 1.63(a) is being amended to replace the reference to 
Sec. 1.51(a)(2) with a reference to Sec. 1.51(a)(1)(ii) in order to 
conform with the changes in Sec. 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 
Sec. 1.53(d) with a reference to Sec. 1.53(d)(1) in order to conform 
with the changes in Sec. 1.53. Furthermore, the references to 
Secs. 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 Secs. 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 Secs. 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 
Sec. 1.51(a)(2), or entitled to a filing date as set forth in 
Sec. 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. [[Page 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 
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with 
the change to Sec. 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 
Sec. 1.17(i)(2) with a reference to Sec. 1.17(i) to be consistent with 
the change to Sec. 1.17.
    Section 1.103(a) is amended to replace the reference to 
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with 
the change to Sec. 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 Sec. 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 Sec. 1.17(r). After 
submission and payment of the fee set forth in Sec. 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 Sec. 1.17(r), any 
information disclosure statement previously refused consideration in 
the application because of applicant's failure to comply with Sec. 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 Sec. 1.97(b) and will be considered 
without the petition and petition fee required in Sec. 1.97(d), if it 
complies with the requirements of Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 1.17(s) for each independent and 
distinct invention claimed in the application in excess of one which 
applicant elects. Under Sec. 1.129(b)(3), each additional invention for 
which the required fee set forth in Sec. 1.17(s) has not been paid will 
be withdrawn from consideration under Sec. 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 
Secs. 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 Sec. 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 Sec. 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 twelve-month 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 Sec. 1.139 parallel the existing 
requirements set forth in Sec. 1.137. [[Page 20204]] 
    Sections 1.177, 1.312(b), 1.313(a), and 1.314 are being amended to 
replace the references to Sec. 1.17(i)(1) with references to 
Sec. 1.17(i) to be consistent with the change to Sec. 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 
Sec. 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 
Sec. 1.155. Therefore, Sec. 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 
Sec. 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 
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with 
the change to Sec. 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 Sec. 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 Sec. 1.701 prior to the issuance of the patent would be by way of 
petition under Sec. 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 Sec. 1.322. The PTO intends to identify the 
length of any patent term extension calculated under Sec. 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 Sec. 1.701(a) shall be extended for 
the sum of the periods of delay calculated under Secs. 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 Sec. 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 
Sec. 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 Sec. 1.701(a)(1) is the sum of the periods calculated under 
Secs. 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 
Sec. 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 
Sec. 1.701(c)(3). As required by 35 U.S.C. 154(b)(3)(B), 
Sec. 1.701(d)(1) provides that the period of delay calculated under 
Sec. 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 Sec. 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 Sec. 1.701(d)(1) 
to be the date on which applicant has complied with the requirements of 
Sec. 1.494(b), or Sec. 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 Sec. 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 Sec. 1.701(d)(2) are suspension at applicant's 
request under Sec. 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, [[Page 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 Sec. 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 Sec. 1.53(b)(1) or Sec. 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, Sec. 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 
Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with 
the change to Sec. 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 Secs. 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 Secs. 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-in-part (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 Sec. 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 [[Page 20206]] 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 Sec. 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, Sec. 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 [[Page 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 Secs. 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 Secs. 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 Secs. 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 Secs. 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 Secs. 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 Sec. 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, Sec. 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 Sec. 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 
[[Page 20208]] a ``national application'' could be defined in Sec. 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 Secs. 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 
Sec. 1.12 or 1.14 in the Notice of Proposed Rulemaking. Thus, the 
showing required in a petition under Sec. 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 
Sec. 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 Sec. 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 Sec. 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, Sec. 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 Sec. 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 
Sec. 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 
Sec. 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 Sec. 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 
Sec. 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 Sec. 1.48(d) or 1.48(e).
    36. Comment: One comment suggested that Sec. 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 Sec. 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 [[Page 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 Sec. 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 Sec. 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 
Sec. 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 
Sec. 1.51(a)(2).
    Response: The PTO intends to require compliance with the formal 
requirements of Secs. 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 Sec. 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 Sec. 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 
non-English 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 
Sec. 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 Sec. 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 Sec. 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 
[[Page 20210]] 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 Sec. 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 Sec. 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 
Sec. 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 
Sec. 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 
Sec. 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 
Sec. 1.53(b)(1) application''.
    Response: The suggestion has been adopted.
    49. Comment: One comment objected to the requirement in 
Sec. 1.53(b)(2)(ii) for a petition to convert an application filed 
under Sec. 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 
Sec. 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 
Sec. 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 Sec. 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 Sec. 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, Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 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 [[Page 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 
Sec. 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 Sec. 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 Secs. 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 Secs. 1.821 
through 1.825. Section 1.53(b)(2)(iii) is being amended to indicate 
that the requirements of Secs. 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 
Sec. 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 Sec. 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 Sec. 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 Sec. 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 Secs. 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 Secs. 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 Sec. 1.53(d)(2) nor is any change 
planned.
    60. Comment: Several comments objected to the proposed deletion of 
Sec. 1.60. One comment suggested that the deletion of Sec. 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 
Sec. 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 
Sec. 1.60, language should be incorporated in Sec. 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 Sec. 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 [[Page 20212]] attorney may be 
forwarded to the PTO by mail or courier as the application papers 
provided the papers meet the formal requirements of Sec. 1.52. 
Effective November 22, 1993, Sec. 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 
Secs. 1.4(e) and (f) require the original to be filed in the PTO. Thus, 
an oath or declaration required by Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 1.62 be amended to 
state that the refiling procedures set forth in Sec. 1.62 may be used 
after the issue fee is paid when a petition under Sec. 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 Sec. 1.62 be amended to 
clarify whether applicant needs to re-list, in the Sec. 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 
Sec. 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 
Sec. 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 Sec. 1.67 should go into 
more detail on when supplemental oaths are required in Sec. 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 Sec. 1.67 in the 
Notice of Proposed Rulemaking.
    70. Comment: One comment suggested that ``not but'' in Sec. 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 
Secs. 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 
Sec. 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 
[[Page 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 
Sec. 1.53(b)(2)(iii), the phrase ``other than a provisional 
application'' in Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 1.129(a). Thus, under Sec. 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 
Sec. 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 Sec. 1.17(r).
    82. Comment: Several comments suggested that the fees required for 
filing a provisional application and those fees required by 
Secs. 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 Sec. 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 
Sec. 1.129(a), the procedures relating to the first submission provided 
by Sec. 1.129(a) is equivalent to the filing of a file wrapper 
continuation application under Sec. 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 [[Page 20214]] 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 
Sec. 1.129(b), the procedures set forth in Sec. 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 Sec. 1.129(a) fee was 
due, applicant must submit the Sec. 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 Sec. 1.129(a) fee paid will be refundable to applicant on request. 
Applications that fall under Sec. 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 after-final fee 
set forth in Sec. 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 Sec. 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 Secs. 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 
Secs. 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 Sec. 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 Sec. 1.129(a) has been 
filed on an expedited basis.
    Response: Once the submission is filed and the fee set forth in 
Sec. 1.17(r) is paid the finality of the last PTO action is withdrawn. 
The filing of the submission and the fee under Sec. 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 Sec. 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 
Sec. 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 Sec. 1.129(a) submission and the fee set forth in 
Sec. 1.17(r). If the first PTO action following the payment of the 
Sec. 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 Sec. 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 Sec. 1.129(a) submission and the fee set forth in Sec. 1.17(r).
    90. Comment: One comment suggested that the PTO not permit the 
first PTO action following the payment of the Sec. 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 Sec. 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 Sec. 1.129(a).
    91. Comment: Several comments suggested that the filing of the 
first submission under Sec. 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 Sec. 1.17(r) will not toll the period 
for response set in the final rejection. However, Sec. 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 Sec. 1.17(r). Thus, 
the filing of a submission and the payment of the fee set forth in 
Sec. 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 Sec. 1.129 apply only to 
an application, other than for reissue or [[Page 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 Sec. 1.129(a).
    Another comment suggested that the appeal fee set forth in 
Sec. 1.17(e) should not be required where the Notice of Appeal is filed 
with a Sec. 1.129(a) submission and the fee set forth in Sec. 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 Sec. 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 Sec. 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 
Sec. 1.17(r) was timely paid. However, under the same fact situation, 
if applicant failed to submit the proper fee set forth in Sec. 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 Sec. 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 Sec. 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 Sec. 1.129(a). If the second submission and the 
proper fee set forth in Sec. 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 
Sec. 1.129(a) having been paid twice will be treated as set forth in 
Sec. 1.116. Applicant may, upon payment of the appeal fee, appeal a 
final rejection within the time allowed for response pursuant to 
Sec. 1.191.
    93. Comment: One comment questioned whether the ``first 
submission'' under Sec. 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 Sec. 1.129(a) would 
include all responses filed prior to and with the payment of the fee 
required by Sec. 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 Sec. 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 
Sec. 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 
Sec. 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 Sec. 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 Secs. 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 Sec. 1.129(a) be amended 
to [[Page 20216]] 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 Sec. 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 
Sec. 1.312. The procedures set forth in Sec. 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, Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 
Sec. 1.129(b) apply to election of species under Sec. 1.146.
    Response: ``Restriction'' under Sec. 1.129(b) applies to both 
requirements under Sec. 1.142 and elections under Sec. 1.146.
    105. Comment: Several comments requested that clarification be made 
as to what constitutes ``actions by the applicant'' in Sec. 1.129(b)(1) 
and specifically, whether a request for extension of time under 
Sec. 1.136(a) constitutes such ``actions'' by the applicant.
    Response: Examples of what constitute ``actions by the applicant'' 
in Sec. 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 Sec. 1.103(a) such that no Office action can be 
issued in the application. Extension of time under Sec. 1.136(a) would 
not constitute such ``actions by the applicant'' under 
Sec. 1.129(b)(1).
    106. Comment: One comment suggested that the one-month period set 
forth in Sec. 1.129(b) is insufficient to give an applicant time to 
file a petition under Sec. 1.144 from a restriction requirement. 
Several comments suggested that Sec. 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 Sec. 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 Sec. 1.17(s), (2) confirm an earlier election and 
pay the fee set forth in Sec. 1.17(s), or (3) file a petition under 
Sec. 1.129(b)(2) traversing the restriction requirement. If applicant 
chooses not to pay the fee set forth in Sec. 1.17(s), applicant may 
file a petition under Sec. 1.129(b)(2) requesting immediate review by 
the Group Director of the restriction requirement. No petition fee is 
required. A petition under Sec. 1.129(b)(2) rather than under 
Sec. 1.144 would be more appropriate under the circumstances since a 
petition under Sec. 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 Sec. 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 [[Page 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 Secs. 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 
Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 1.701 be printed on the face of the patent.
    Response: The PTO will publish on the face of the patent any patent 
term [[Page 20218]] extension that is granted pursuant to Sec. 1.701.
    121. Comment: One comment suggested that the word ``interference'' 
be inserted before the word ``proceedings'' in Sec. 1.701(a)(1).
    Response: The suggestion has been adopted.
    122. Comment: One comment stated that the last sentence of 
Sec. 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 
Sec. 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 Sec. 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 Sec. 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 Sec. 1.701(c)(1)(ii) for the 
suspension period and under Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 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 Sec. 1.701(b) is required by statute, 35 U.S.C. 154(b).
    126. Comment: One comment suggested that Sec. 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 
Sec. 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 Sec. 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 Sec. 1.103(b). When that application is added to an 
interference, the suspension pursuant to Sec. 1.103(b) will be 
automatically lifted. The application is entitled to patent term 
extension for the period of suspension pursuant to Sec. 1.701(c)(1)(ii) 
and for the period of interference pursuant to Sec. 1.701(c)(1)(i). 
Under Sec. 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 
Sec. 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 Sec. 1.701(c)(1)(i) and (ii) is unnecessary.
    Response: The suggestion has not been adopted. However, 
Sec. 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 Sec. 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 
Sec. 1.701(a)(3) be amended so that the [[Page 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 Sec. 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 Sec. 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 Sec. 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 Sec. 1.103 does not constitute a lack of due 
diligence under Sec. 1.701(d)(2).
    Response: The suggestion has not been adopted. A request for 
suspension pursuant to Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 Sec. 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 
Sec. 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 Sec. 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 
Sec. 1.701(d)(1) by first subtracting the period of appellate review 
occurring within three years of the filing date before the five-year 
limit is imposed. It is suggested that Sec. 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 [[Page 20220]] 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 Sec. 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 Sec. 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 
Sec. 1.322.
    142. Comment: One comment questioned whether a challenge to the 
period of patent term extension calculated by the PTO under Sec. 1.701 
would be required to be made within a fixed period.
    Response: No. However, the longer applicant delays filing a 
petition under Sec. 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 
Sec. 1.322 instead of a petition under Sec. 1.181.
    143. Comment: One comment suggested that Sec. 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 Sec. 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:


Sec. 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:


Sec. 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 [[Page 20221]] application after compliance with 35 
U.S.C. 371.
* * * * *
    4. Section 1.12 is amended by revising paragraph (c) to read as 
follows:


Sec. 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 Sec. 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 Sec. 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:


Sec. 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 Sec. 1.17(i), or
    (2) Include written authority granting access to the member of the 
public in that particular application from the applicant or the 
applicant's assignee or attorney or agent of record.
* * * * *
    6. Section 1.16 is amended by revising paragraphs (a) through (g) 
and by adding new paragraphs (k) and (l) to read as follows:


Sec. 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 (Sec. 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 (Sec. 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 Sec. 1.75(c) indicates how multiple dependent claims are 
considered for fee calculation purposes.):

By a small entity (Sec. 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 (Sec. 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 (Sec. 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 (Sec. 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 (Sec. 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 (Sec. 1.9(f))
75.00
By other than a small entity
150.00

    (1) Surcharge for filing the basic filing fee or cover sheet 
(Sec. 1.51(a)(2)(i)) on a date later than the filing date of the 
provisional application:

By a small entity (Sec. 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:


Sec. 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
Sec. 1.47--for filing by other than all the inventors or a person not 
the inventor
Sec. 1.48--for correction of inventorship, except in provisional 
applications
Sec. 1.84--for accepting color drawings or photographs
Sec. 1.182--for decision on questions not specifically provided for
Sec. 1.183--to suspend the rules
Sec. 1.295--for review of refusal to publish a statutory invention 
registration
Sec. 1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of patent
Sec. 1.378(e)--for reconsideration of decision on petition refusing to 
accept delayed payment of maintenance fee in expired patent
Sec. 1.644(e)--for petition in an interference
Sec. 1.644(f)--for request for reconsideration of a decision on 
petition in an interference
Sec. 1.666(c)--for late filing of interference settlement agreement
Secs. 5.12, 5.13 and 5.14--for expedited handling of a foreign filing 
license
Sec. 5.15--for changing the scope of a license
Sec. 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

Sec. 1.12--for access to an assignment record
Sec. 1.14--for access to an application
Sec. 1.53--to accord a filing date, except in provisional applications
Sec. 1.55--for entry of late priority papers
Sec. 1.60--to accord a filing date
Sec. 1.62--to accord a filing date
Sec. 1.97(d)--to consider an information disclosure statement
Sec. 1.102--to make application special
Sec. 1.103--to suspend action in application
Sec. 1.177--for divisional reissues to issue separately
Sec. 1.312--for amendment after payment of issue fee
Sec. 1.313--to withdraw an application from issue
Sec. 1.314--to defer issuance of a patent
Sec. 1.666(b)--for access to interference settlement agreement
Sec. 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

Sec. 1.48--for correction of inventorship in a provisional application
Sec. 1.53--to accord a provisional application a filing date or to 
convert an application filed under [[Page 20222]] Sec. 1.53(b)(1) to a 
provisional application

    (r) For entry of a submission after final rejection under 
Sec. 1.129(a):

By a small entity (Sec. 1.9(f))
365.00
By other than a small entity
730.00

    (s) For each additional invention requested to be examined under 
Sec. 1.129(b):

By a small entity (Sec. 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:


Sec. 1.21  Miscellaneous fees and charges.

* * * * *
(l) For processing and retaining any application abandoned pursuant to 
Sec. 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:


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

    (a) The failure to establish status as a small entity (Secs. 1.9(f) 
and 1.27 of this part) in any application or patent prior to paying, or 
at the time of paying, any fee precludes payment of the fee in the 
amount established for small entities. A refund pursuant to Sec. 1.26 
of this part, based on establishment of small entity status, of a 
portion of fees timely paid in full prior to establishing status as a 
small entity may only be obtained if a verified statement under 
Sec. 1.27 and a request for a refund of the excess amount are filed 
within two months of the date of the timely payment of the full fee. 
The two-month time period is not extendable under Sec. 1.136. Status as 
a small entity is waived for any fee by the failure to establish the 
status prior to paying, at the time of paying, or within two months of 
the date of payment of, the fee. Status as a small entity must be 
specifically established in each application or patent in which the 
status is available and desired. Status as a small entity in one 
application or patent does not affect any other application or patent, 
including applications or patents which are directly or indirectly 
dependent upon the application or patent in which the status has been 
established. 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 Sec. 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:


Sec. 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:


Sec. 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 Sec. 1.63;
    (3) The fee set forth in Sec. 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 
Sec. 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 Sec. 1.17(h).
    (c) If a nonprovisional application discloses unclaimed subject 
matter by an inventor or inventors not named in the application, the 
application may be amended pursuant to paragraph (a) of this section to 
add claims to the subject matter and name the correct inventors for the 
application.
    (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 Sec. 1.17(q).
    (e) If a person or persons were named as an inventor or inventors 
in a provisional application through error without any deceptive 
intention, 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 Sec. 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:


Sec. 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 Sec. 1.53(b)(1) comprises:
    (i) A specification, including a claim or claims, see Secs. 1.71 to 
1.77;
    (ii) An oath or declaration, see Secs. 1.63 and 1.68;
    (iii) Drawings, when necessary, see Secs. 1.81 to 1.85; and 
[[Page 20223]] 
    (iv) The prescribed filing fee, see Sec. 1.16.
    (2) A complete provisional application filed under Sec. 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 
Sec. 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 Sec. 1.71;
    (iii) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (iv) The prescribed filing fee, see Sec. 1.16.
    (b) Applicants are encouraged to file an information disclosure 
statement in nonprovisional applications. See Secs. 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:


Sec. 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 Sec. 1.71 
and at least one claim pursuant to Sec. 1.75; and any drawing required 
by Sec. 1.81(a), are filed in the Patent and Trademark Office in the 
name of the actual inventor or inventors as required by Sec. 1.41. No 
new matter may be introduced into an application after its filing date 
(Sec. 1.118). If all the names of the actual inventor or inventors are 
not supplied when the specification and any required drawing are filed, 
the application will not be given a filing date earlier than the date 
upon which the names are supplied unless a petition with the fee set 
forth in Sec. 1.17(i) is filed which sets forth the reasons the delay 
in supplying the names should be excused. A continuation or divisional 
application (filed under the conditions specified in 35 U.S.C. 120 or 
121 and Sec. 1.78(a)) may be filed under this section, Sec. 1.60 or 
Sec. 1.62. A continuation-in-part application may be filed under this 
section or Sec. 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 Sec. 1.81(a), are filed in the Patent and 
Trademark Office in the name of the actual inventor or inventors as 
required by Sec. 1.41. No amendment, other than to make the provisional 
application comply with all applicable regulations, may be made to the 
provisional application after the filing date of the provisional 
application. If all the names of the actual inventor or inventors are 
not supplied when the specification and any required drawing are filed, 
the provisional application will not be given a filing date earlier 
than the date upon which the names are supplied unless a petition with 
the fee set forth in Sec. 1.17(q) is filed which sets forth the reasons 
the delay in supplying the names should be excused.
    (i) A provisional application must also include a cover sheet 
identifying the application as a provisional application. Otherwise, 
the application will be treated as an application filed under 
Sec. 1.53(b)(1).
    (ii) An application for patent filed under Sec. 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 Sec. 1.17(q), is filed prior to the earlier of the 
abandonment of the Sec. 1.53(b)(1) application, the payment of the 
issue fee, the expiration of 12 months after the filing date of the 
Sec. 1.53(b)(1) application, or the filing of a request for a statutory 
invention registration under Sec. 1.293. The grant of any such petition 
will not entitle applicant to a refund of the fees which were properly 
paid in the application filed under Sec. 1.53(b)(1).
    (iii) A provisional application shall not be entitled to the right 
of priority under Sec. 1.55 or 35 U.S.C. 119 or 365(a) or to the 
benefit of an earlier filing date under Sec. 1.78 or 35 U.S.C. 120, 121 
or 365(c) of any other application. No claim for priority under 
Sec. 1.78(a)(3) may be made in a design application based on a 
provisional application. No request under Sec. 1.293 for a statutory 
invention registration may be filed in a provisional application. The 
requirements of Secs. 1.821 through 1.825 regarding application 
disclosures containing nucleotide and/or amino acid sequences are not 
mandatory for provisional applications.
    (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 Sec. 1.21(n). Any request for review of a refusal to accord an 
application a filing date must be by way of a petition accompanied by 
the fee set forth in Sec. 1.17(i), if the application was filed under 
Sec. 1.53(b)(1), or by the fee set forth in Sec. 1.17(q), if the 
application was filed under Sec. 1.53(b)(2).
    (d)(1) If an application which has been accorded a filing date 
pursuant to paragraph (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 Sec. 1.16(e) in 
order to prevent abandonment of the application. A copy of the ``Notice 
to File Missing Parts'' form mailed to applicant should accompany any 
response thereto submitted to the Office. If the required filing fee is 
not timely paid, or if the processing and retention fee set forth in 
Sec. 1.21(l) is not paid within one year of the date of mailing of the 
notification required by this paragraph, the application will be 
disposed of. No copies will be provided or certified by the Office of 
an application which has been disposed of or in which neither the 
required basic filing fee nor the processing and retention fee has been 
paid. The notification pursuant to this paragraph may be made 
simultaneously with any notification pursuant to paragraph (c) of this 
section. If no correspondence address is included in the application, 
applicant has two months from the filing date to file the basic filing 
fee, oath or declaration and to pay the surcharge as set forth in 
Sec. 1.16(e) in order to prevent abandonment of the application; or, if 
no basic filing fee has been paid, one [[Page 20224]] year from the 
filing date to pay the processing and retention fee set forth in 
Sec. 1.21(l) to prevent disposal of the application.
    (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 Sec. 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 Sec. 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 Sec. 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:


Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119(a)-(d) and 172. The 
claim to priority need be in no special form and may be made by the 
attorney or agent if the foreign application is referred to in the oath 
or declaration as required by Sec. 1.63. The claim for priority and the 
certified copy of the foreign application specified in 35 U.S.C. 119(b) 
must be filed in the case of an interference (Sec. 1.630), when 
necessary to overcome the date of a reference relied upon by the 
examiner, when specifically required by the examiner, and in all other 
cases, before the patent is granted. If the 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 Sec. 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:


Sec. 1.59  Papers of application with filing date not to be returned.

    Papers in an application which has received a filing date pursuant 
to Sec. 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 (Sec. 1.16) or, if the application was filed 
under Sec. 1.53(b)(1), the processing and retention fee (Sec. 1.21(1)) 
has been paid. See Sec. 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:


Sec. 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 Sec. 1.78(a)) if:
    (1) The prior application was a nonprovisional application and a 
complete application as set forth in Sec. 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 (Sec. 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 
[[Page 20225]] filed, unless a petition with the fee set forth in 
Sec. 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:


Sec. 1.62  File wrapper continuing procedure.

    (a) A continuation, continuation-in-part, or divisional 
application, which uses the specification, drawings and oath or 
declaration from a prior nonprovisional application which is complete 
as defined by Sec. 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 Sec. 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 Sec. 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:


Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(a)(1)(ii) as a 
part of a nonprovisional application must:
    (1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;
    (2) Identify the specification to which it is directed;
    (3) Identify each inventor 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:


Sec. 1.67  Supplemental oath or declaration.

* * * * *
    (b) A supplemental oath or declaration meeting the requirements of 
Sec. 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 Sec. 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:


Sec. 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 Sec. 1.51(a)(1); or
    (ii) Entitled to a filing date as set forth in Sec. 1.53(b)(1), 
Sec. 1.60 or Sec. 1.62 and include the basic filing fee set forth in 
Sec. 1.16; or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b)(1) and 
have paid therein the processing and retention fee set forth in 
Sec. 1.21(l) within the time period set forth in Sec. 1.53(d)(1).
    (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 Sec. 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 Sec. 1.51(a)(2); or
    (ii) Entitled to a filing date as set forth in Sec. 1.53(b)(2) and 
include the basic filing fee set forth in Sec. 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 
[[Page 20226]] 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:


Sec. 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 
Sec. 1.81(d).
    22. Section 1.97 is amended by revising paragraph (d) to read as 
follows:


Sec. 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 
Sec. 1.113 or a notice of allowance under Sec. 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 Sec. 1.17(i).
* * * * *
    23. Section 1.101 is amended by revising paragraph (a) to read as 
follows:


Sec. 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 Sec. 1.102. See Sec. 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:


Sec. 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 Sec. 1.17(i).
    25. Section 1.103 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.103  Suspension of action.

    (a) Suspension of action by the Office will be granted for good and 
sufficient cause and for a reasonable time specified upon petition by 
the applicant and, if such cause is not the fault of the Office, the 
payment of the fee set forth in Sec. 1.17(i). 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


Sec. 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 Sec. 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 
Sec. 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 
Sec. 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 Sec. 1.17(r). Any 
submission filed after a final rejection made in an application 
subsequent to the fee set forth in Sec. 1.17(r) having been twice paid 
will be treated as set forth in Sec. 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 Sec. 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 Sec. 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 [[Page 20227]] electing and paying the fee set 
forth in Sec. 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 Sec. 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 Sec. 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:


Sec. 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 Sec. 1.321 dedicating to the public 
a terminal part of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. The terminal disclaimer 
must also apply to any patent granted on any continuing application 
entitled under 35 U.S.C. 120 to the benefit of the filing date of the 
application for which revival is sought.
* * * * *
    28. Section 1.139 is added to read as follows:


Sec. 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 Sec. 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 Sec. 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 Sec. 1.136.
    29. Section 1.177 is revised to read as follows:


Sec. 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 
Secs. 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 
Sec. 1.17(i), all the divisions of a reissue will issue simultaneously; 
if there is any controversy as to one division, the others will be 
withheld from issue until the controversy is ended, unless the 
Commissioner orders otherwise.
    30. Section 1.312 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.312  Amendments after allowance.

* * * * *
    (b) Any amendment pursuant to paragraph (a) of this section filed 
after the date the issue fee is paid must be accompanied by a petition 
including the fee set forth in Sec. 1.17(i) and a showing of good and 
sufficient reasons why the amendment is necessary and was not earlier 
presented.
    31. Section 1.313 is amended by revising paragraph (a) to read as 
follows:


Sec. 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 Sec. 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 
Sec. 1.312.
* * * * *
    32. Section 1.314 is revised to read as follows:


Sec. 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 
(Sec. 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 Sec. 1.17(i) and must include a 
showing of good and sufficient reasons why it is necessary to defer 
issuance of the patent. [[Page 20228]] 
    33. Section 1.316 is amended by revising paragraph (d) to read as 
follows:


Sec. 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 Sec. 1.321 dedicating to the public 
a terminal part of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. The terminal disclaimer 
must also apply to any patent granted on any continuing application 
entitled under 35 U.S.C. 120 to the benefit of the filing date of the 
application for which revival is sought.
* * * * *
    34. Section 1.317 is amended by removing and reserving paragraph 
(d).


Sec. 1.317  [Amended]

    35. Section 1.666 is amended by revising paragraph (b) to read as 
follows:


Sec. 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 Sec. 1.17(i) and on a showing of 
good cause.
* * * * *
    36. Section 1.701 is added to Subpart F to read as follows:


Sec. 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 Sec. 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 Sec. 5.3(c) and ending on the date of 
mailing of the notice of allowance under Sec. 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:


Sec. 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 
Sec. 1.53(b)(1) or Sec. 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. [[Page 20229]] 
    39. Section 3.81 is amended by revising paragraph (b) to read as 
follows:


Sec. 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 Sec. 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
      
    [[Page 20230]]
    
Appendix

[GRAPHIC][TIFF OMITTED]TR25AP95.000


[[Page 20231]]

[GRAPHIC][TIFF OMITTED]TR25AP95.001



[FR Doc. 95-9838 Filed 4-24-95; 8:45 am]
BILLING CODE 3510-16-C