30040 Federal Register / Vol. 61, No. 115 / Thursday, June 13, 1996 / Notices

availability of these stocks for

subsistence uses, and would result in

the least practicable impact on the

stocks, NMFS has determined that the

requirements of section 101(a)(5)(D)

have been met and the authorization can

be issued.

Authorization

For the above reasons, NMFS has

issued an incidental harassment

authorization for approximately 30 days

between June 10 and July 5, 1996 for the

above described experiment provided

the above mentioned mitigation,

monitoring and reporting requirements

are undertaken.

Dated: June 7, 1996.

Patricia A. Montanio,

Deputy Director, Office of Protected

Resources, National Marine Fisheries Service.

[FR Doc. 96–15060 Filed 6–12–96; 8:45 am]

BILLING CODE 3510–22–F

[I.D. 060796C]

Endangered Species; Permits

AGENCY: National Marine Fisheries

Service (NMFS), National Oceanic and

Atmospheric Administration (NOAA),

Commerce.

ACTION: Issuance of modification 3 to

permit 900 (P770#66), modification 2 to

permit 946 (P770#68), and modification

1 to permit 905 (P45L).

SUMMARY: Notice is hereby given that

NMFS has issued modifications to

permits that authorize takes of

Endangered Species Act-listed species

for the purpose of scientific research,

subject to certain conditions set forth

therein, to the Coastal Zone and

Estuarine Studies Division of the

Northwest Fisheries Science Center,

NMFS at Seattle, WA (CZESD) and the

National Biological Service at Cook, WA

(NBS).

ADDRESSES: The applications and

related documents are available for

review in the following offices, by

appointment:

Office of Protected Resources, F/PR8,

NMFS, 1315 East-West Highway, Silver

Spring, MD 20910–3226 (301-713-1401);

and

Environmental and Technical

Services Division, 525 NE Oregon

Street, Suite 500, Portland, OR 97232–

4169 (503–230–5400).

SUPPLEMENTARY INFORMATION: The

modifications to permits were issued

under the authority of section 10 of the

Endangered Species Act of 1973 (ESA)

(16 U.S.C. 1531–1543) and the NMFS

regulations governing ESA-listed fish

and wildlife permits (50 CFR parts 217–

222).

Notice was published on February 27,

1996 (61 FR 7241) that an application

had been filed by CZESD (P770#66) for

modification 3 to scientific research

permit 900. Modification 3 to permit

900 was issued on June 5, 1996. Permit

900 authorizes CZESD a direct take of

juvenile, threatened, naturally-produced

and artificially-propagated, Snake River

spring/summer chinook salmon

(Oncorhynchus tshawytscha) and an

incidental take of juvenile, threatened,

Snake River fall chinook salmon

(Oncorhynchus tshawytscha) and

juvenile, endangered, Snake River

sockeye salmon (Oncorhynchus nerka)

associated with three scientific research

studies. For modification 3, CZESD is

authorized to supplement their annual

take of ESA-listed fish associated with

Study 1, a dam and reservoir passage

survival study, with juvenile, ESAlisted, Snake River spring/summer

chinook salmon captured as an indirect

take by NBS under the authority of

scientific research permit 817. Permit

817 authorizes NBS takes of ESA-listed

juvenile fish associated with a fall

chinook salmon study. In addition,

CZESD is authorized a take of ESAlisted juvenile fish associated with an

additional project designed to evaluate

the new surface collector at Lower

Granite Dam on the Snake River in WA

and to release the ESA-listed juvenile

fish to be captured and handled for

Study 1 in the free-flowing Snake River

upstream of Lower Granite Reservoir.

Modification 3 is valid for the duration

of Study 1 of the permit. Study 1 of

permit 900 expires on December 31,

1998.

Notice was published on February 27,

1996 (61 FR 7241) that an application

had been filed by CZESD (P770#68) for

modification 2 to scientific research

permit 946. Modification 2 to permit

946 was issued on June 4, 1996. Permit

946 authorizes CZESD takes of juvenile,

threatened, naturally-produced and

artificially-propagated, Snake River

spring/summer chinook salmon

(Oncorhynchus tshawytscha); juvenile,

threatened, Snake River fall chinook

salmon (Oncorhynchus tshawytscha);

and juvenile, endangered, Snake River

sockeye salmon (Oncorhynchus nerka)

associated with two survival studies

related to barge transportation. For

modification 2, CZESD is authorized an

increase in their takes of juvenile,

endangered, Snake River sockeye

salmon to adjust for an increase in the

anticipated annual juvenile sockeye

salmon outmigration numbers. Annual

sockeye salmon outmigration numbers

are expected to be higher due to greater

numbers of smolt releases in and near

Redfish Lake from the Idaho Department

of Fish and Game’s captive broodstock

program. Modification 2 is valid for the

duration of the permit. Permit 946

expires on December 31, 1999.

Notice was published on February 29,

1996 (61 FR 7776) that an application

had been filed by NBS (P45L) for

modification 1 to scientific research

permit 905. Modification 1 to permit

905 was issued on June 6, 1996. Permit

905 authorizes a direct take of juvenile,

threatened, Snake River fall chinook

salmon (Oncorhynchus tshawytscha)

and an indirect take of juvenile,

threatened, Snake River spring/summer

chinook salmon (Oncorhynchus

tshawytscha) associated with four dam

and reservoir passage survival studies

on the Snake River. For modification 1,

NBS is authorized to expand their

sampling locations to include all of the

Snake River dams and McNary Dam on

the Columbia River. The sampling

location expansion is needed to acquire

the desired sample size of juvenile ESAlisted fish currently authorized to be

taken for electrophoretic genetic

research. NBS is also authorized to

capture, handle, and release a greater

number of ESA-listed juvenile fish: 1) to

obtain non-lethal tissue samples from

run-at-large juvenile spring chinook

salmon and fall chinook salmon

yearlings for genetic analysis, and 2) to

acquire non-lethal gill samples from

juvenile fall chinook salmon for a new

study designed to relate passage

survival to physiological development.

Modification 1 is valid for the duration

of the permit. Permit 905 expires on

December 31, 1996.

Issuance of the modifications, as

required by the ESA, was based on a

finding that such actions: (1) Were

requested in good faith, (2) will not

operate to the disadvantage of the ESAlisted species that are the subject of the

permits, and (3) is consistent with the

purposes and policies set forth in

section 2 of the ESA and the NMFS

regulations governing ESA-listed

species permits.

Dated: June 7, 1996.

Robert C. Ziobro,

Acting Chief, Endangered Species Division,

Office of Protected Resources, National

Marine Fisheries Service.

[FR Doc. 96–15059 Filed 6–12–96; 8:45 am]

BILLING CODE 3510–22–F
Federal Register / Vol. 61, No. 115 / Thursday, June 13, 1996 / Notices 30041

Patent and Trademark Office

[Docket No. 951019254–6136–02]

RIN 0651–XX05

Change in Procedure Relating to an

Application Filing Date

AGENCY: Patent and Trademark Office,

Commerce.

ACTION: Notice of change in procedure.

SUMMARY: The Patent and Trademark

Office (PTO) is implementing a change

in procedure relating to the treatment of

applications filed without all the pages

of the specification or without all of the

figures of the drawings. Under this new

procedure, the PTO will accord a filing

date to any application that contains

something that can be construed as a

written description, any necessary

drawing, and, in a nonprovisional

application, at least one claim,

regardless of whether the application is

filed without all the pages of the

specification or without all of the

figures of the drawings. Applications

filed without all the pages of the

specification or without all of the

figures of the drawings will be treated

by mailing a notice indicating that the

application has been accorded a filing

date, but is missing pages of the

specification of figures of drawings.

The notice will indicate that failure to

timely (37 CFR 1.181(f)) file a petition

under 37 CFR 1.53(c) of 1.182 in

response to such notice will result in

the PTO treating the original application

papers (the original disclosure of the

intention) as including only those

application papers present in the PTO

on the date of deposit.

EFFECTIVE DATE: July 22, 1996.

FOR FURTHER INFORMATION CONTACT:

Robert W. Bahr by telephone at (703)

305–9285, by facsimile at (703) 308–

6916, or Jeffrey V. Nase by telephone at

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

Box Comments—Patents, Assistant

Commissioner for Patents, Washington,

D.C. 20231.

SUPPLEMENTARY INFORMATION: The PTO

is implementing a change in procedure

relating to the treatment of applications

filed without all the pages of the

specification (Section 608.01 of the

Manual of Patent Examining Procedure

(MPEP)) (e.g., with page numbering

revealing that page(s) are missing), or

without all of the figures of the

drawings (MPEP 608.02) (e.g., without

drawing figures that are mentioned in

the specification). The procedure set

forth in this notice will be incorporated

into the next revision of the MPEP.

The current treatment of applications

that fail to identify the names of the

actual inventor(s) (e.g., an application

naming the inventorship only as ‘‘Jane

Doe et al.’’) as required by 37 CFR

1.41(a) and 1.53(b) is not affected by the

adoption of the procedure set forth in

this notice.

In a Notice entitled ‘‘Proposed

Changes in Procedures Relating to an

Application Filing Date’’ (Filing Date

Notice), published in the Federal

Register at 60 FR 56982–84 (November

13, 1995), and in the PTO Official

Gazette at 1181 Off. Gaz. Pat. Office 12–

13 (December 5, 1995), the PTO

proposed a change in procedure relating

to the treatment of applications filed

without all the pages of the specification

or without all of the figures of the

drawings. In view of the comments

received in response to the Filing Date

Notice, the PTO is adopting the

proposed change.

The adopted procedure for the

treatment of applications filed without

all the pages of the specification or

without all of the figures of the

drawings is set forth below.

Applications Filed Without All Pages of

Specification

The Initial Application Examination

Division reviews application papers to

determine whether all of the pages of

the specification are present in the

application. If the application is filed

without all of the page(s) of the

specification, but containing something

that can be construed as a written

description, at least one drawing figure,

if necessary under 35 U.S.C. 113, the

names of all the inventors, and, in a

nonprovisional application, at least one

claim, the Initial Application

Examination Division will mail a

‘‘Notice of Omitted Items’’ indicating

that the application papers so deposited

have been accorded a filing date, but are

lacking some page(s) of the

specification.

The mailing of a ‘‘Notice of Omitted

Items’’ will permit the applicant to

either: (1) Promptly establish prior

receipt in the PTO of the page(s) at issue

(generally by way of a date-stamped

postcard receipt (MPEP 503)), or (2)

promptly submit the omitted page(s) in

a nonprovisonal application and accept

the date of such submission as the

application filing date. An applicant

asserting that the page(s) was in fact

deposited in the PTO with the

application papers must file a petition

under 37 CFR 1.53(c) (and the petition

fee under 37 CFR 1.17(i) (37 CFR 1.17(q)

in a provisional application), which will

be refunded if it is determined that the

page(s) was in fact received by the PTO

with the application papers deposited

on filing) with evidence of such deposit

within two months of the date of the

‘‘Notice of Omitted Items’’ (37 CFR

1.181(f)). An applicant desiring to

submit the omitted page(s) in a

nonprovisional application and accept

the date of such submission as the

application filing date must file any

omitted page(s) with an oath or

declaration in compliance with 37 CFR

1.63 and 1.64 referring to such page(s)

and a petition under 37 CFR 1.182 (with

the petition fee under 37 CFR 1.17(h))

requesting the later filing date within

two months of the date of the ‘‘Notice

of Omitted Items’’ (37 CFR 1.181(f)).

An applicant willing to accept the

application as deposited in the PTO

need not respond to the ‘‘Notice of

Omitted Items,’’ and the failure to file a

petition under 37 CFR 1.53(c) or 1.182

(and the requisite petition fee) as

discussed above within two months of

the date of the ‘‘Notice of Omitted

Items’’ (37 CFR 1.181(f)) will be treated

as constructive acceptance by the

applicant of the application as

deposited in the PTO. Amendment of

the specification is required in a

nonprovisional application to renumber

the pages consecutively and cancel any

incomplete sentences caused by the

absence of the omitted pages. Such

amendment should be by way of

preliminary amendment submitted prior

to the first Office action to avoid delays

in the prosecution of the application.

If the application does not contain

anything that can be construed as a

written description, the Initial

Application Examination Division will

mail a Notice of Incomplete Application

(PTO–1123) indicating that the

application lacks the specification

required by 35 U.S.C. 112. The

applicant may file a petition under 37

CFR 1.53(c) (and the petition fee under

37 CFR 1.17(i) (37 CFR 1.17(q) in a

provisional application)) asserting that:

(1) the missing specification was

submitted, or (2) the application papers

as deposited contain an adequate

written description under 35 U.S.C. 112.

The petition under 37 CFR 1.53(c) must

be accompanied by sufficient evidence

(37 CFR 1.181(b)) to establish the

applicant’s entitlement to the requested

filing date (e.g., a date-stamped postcard

receipt (MPEP 503) to establish prior

receipt in the PTO of the missing

specification). Alternatively, the

applicant may submit the omitted

specification, including at least one

claim in a nonprovisional application,

accompanied by an oath or declaration

in compliance with 37 CFR 1.63 and

1.64 referring to the specification being

submitted and accept the date of such

submission as the application filing

date.
30042 Federal Register / Vol. 61, No. 115 / Thursday, June 13, 1996 / Notices

Original claims form part of the

original disclosure and provide their

own written description See In re

Anderson, 471 F.2d 1237, 176 USPQ

331 (CCPA 1973). As such, an

application that contains at least one

claim, but dues not contain anything

which can be construed as a written

description of such claim(s), would be

unusual.

Nonprovisional Applications Filed

Without at Least One Claim

35 U.S.C. 111(a)(2) requires that an

application for patent include, inter

alia, ‘‘a specification as prescribed by

section 112 of this title,’’ and 35 U.S.C.

111(a)(4) provides that the ‘‘filing date

of an application shall be the date on

which the specification and any

required drawing are received in the

Patent and Trademark Office.’’ 35 U.S.C.

112, first paragraph, provides, in part,

that ‘‘[t]he specification shall contain a

written description of the invention,’’

and 35 U.S.C. 112, second paragraph,

provides that ‘‘[t]he specification shall

conclude with one or more claims

particularly pointing out and distinctly

claiming the subject matter which the

applicant regards as his invention.’’

Also, the Court of Appeals for the

Federal Circuit stated in Litton Systems,

Inc. v. whirlpool Corp.:

Both statute, 35 U.S.C. 111[(a)], and federal

regulations, 37 CFR 1.151[(a)(1)], make clear

the requirement that an application for a

patent must include * * * a specification

and claims. * * * The omission of any one

of these component parts makes a patent

application incomplete and thus not entitled

to a filing date.

728 F.2d 1423, 1437, 221 USPQ 97, 105

(Fed. Cir. 1984) (citing Gearon v. United

States, 121 F.Supp 652, 654, 101 USPQ

460, 461 (Ct. Cl. 1954), cert. denied, 348

U.S. 942, 104 USPQ 409 (1955))

(emphasis in the original).

Therefore, in an application filed

under 35 U.S.C. 111(a), a claim is a

statutory requirement for according a

filing date to the application. 35 U.S.C.

162 and 171 make 35 U.S.C. 112

applicable to plant and design

applications, and 35 U.S.C. 162

specifically requires the specification in

a plant patent application to contain a

claim. 35 U.S.C. 111(b)(2), however,

provides that ‘‘[a] claim, as required by

the second through fifth paragraphs of

section 112, shall not be required in a

provisional application.’’ Thus, with the

exception of provisional applications

filed under 35 U.S.C. 111(b), any

application filed without at least one

claim is incomplete and not entitled to

a filing date.

If a nonprovisional application does

not contain at least one claim, a ‘‘Notice

of Incomplete Application’’ will be

mailed to the applicant(s) indicating

that no filing date has been granted and

setting a period for submitting a claim.

The filing date will be the date of

receipt of at least one claim. See In re

Mattson, 208 USPQ 168 (Comm’r Pats.

1980).

As 37 CFR 1.53(b)(2)(ii) permits the

conversion of an application filed under

35 U.S.C. 111(a) to an application under

35 U.S.C. 111(b), an applicant in an

application, other than for a design

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

or after June 8, 1995, without at least

one claim has the alternative of filing a

petition under 37 CFR 1.53(b)(2)(ii) to

convert such application into an

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

which does not require a claim to be

entitled to its date of deposit as a filing

date. Such a petition, however, must be

filed prior to the expiration of twelve

months after the date of deposit of the

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

comply with the other requirements of

37 CFR 1.53(b)(20(ii).

Applications Filed Without Any

Drawings

35 U.S.C. 111(a)(2)(B) and 111(b)(2)(B)

each provide, in part, that an

‘‘application shall include * * * a

drawing as prescribed by section 113 of

this title’’ and 35 U.S.C. 111(a)(4) and

111(b)(4) each provide, in part, that the

‘‘filing date * * * shall be the date on

which * * * any required drawing are

received in the Patent and Trademark

Office.’’ 35 U.S.C. 113 in turn provides

that an ‘‘applicant shall furnish a

drawing where necessary for the

understanding of the subject matter

sought to be patented.’’

Applications filed without drawings

are initially inspected to determine

whether a drawing is referred to in the

specification, and if not, whether a

drawing is necessary for an

understanding of the invention. 35

U.S.C. 113.

In general, it has been PTO practice to

treat an application that contains at least

one process or method claim as an

application for which a drawing is not

necessary for an understanding of the

invention under 35 U.S.C. 113. The

same practice has been followed in

composition applications. Other

situations in drawings are usually not

considered necessary for an

understanding of the invention under 35

U.S.C. 113 are:

I. Coated articles or products: where

the invention resides solely in coating

or impregnating a conventional sheet

(e.g., paper or cloth, or an article of

known and conventional character with

a particular composition), unless

significant details of structure or

arrangement are involved in the article

claims;

II. Articles made from a particular

material or composition: where the

invention consists in making an article

of a particular material or composition,

unless significant details of structure or

arrangement are involved in the article

claims;

III. Laminated Structures: where the

claimed invention involves only

laminations of sheets (and coatings) of

specified material unless significant

details of structure or arrangement

(other than the mere order of the layers)

are involved in the article claims; or

IV. Articles, apparatus or systems

where sole distinguishing feature is

presence of a particular material: where

the invention resides solely in the use

of a particular material in an otherwise

old article, apparatus or system recited

broadly in the claims, for example:

a. A hydraulic system distinguished

solely by the use therein of a particular

hydraulic fluid;

b. Packaged sutures wherein the

structure and arrangement of the

package are conventional and the only

distinguishing feature is the use of a

particular material.

A nonprovisional application having

at least one claim, or a provisional

application having at least some

disclosure, directed to the subject matter

discussed above for which a drawing is

usually not considered essential for a

filing date, not describing drawing

figures in the specification, and filed

without drawings will usually be

processed for examination, so long as

the application contains something that

can be construed as a written

description and the names of all the

inventors. A nonprovisional application

having at least one claim, or a

provisional application having at least

some disclosure, directed to the subject

matter discussed above for which a

drawing is usually not considered

essential for a filing date, describing

drawing figure(s) in the specification,

but filed without drawings will be

treated as an application filed without

all of the drawing figures referred to in

the specification as discussed below, so

long as the application contains

something that can be construed as a

written description and the names of all

the inventors. In a situation in which

the appropriate examining group

determines that drawings are necessary

under 35 U.S.C. 113 the filing date issue

will be reconsidered on reference from

the examining group.

If a nonprovisional application does

not have at least one claim, or a

provisional application does not have at
Federal Register / Vol. 61, No. 115 / Thursday, June 13, 1996 / Notices 30043

least some disclosure, directed to the

subject matter discussed above for

which a drawing is usually not

considered essential for a filing date,

and is filed without drawings, the Initial

Application Examination Division will

mail a ‘‘Notice of Incomplete

Application’’ indicating that the

application lacks drawings and that 35

U.S.C. 113 requires a drawing where

necessary for the understanding of the

subject matter sought to be patented.

The application may file a petition

under 37 CFR 1.53(c) (and the petition

fee under 37 CFR 1.17(i) (37 CFR 1.17(q)

in a provisional application) asserting

that (1) the drawing(s) at issue was

submitted, or (2) the drawing(s) is not

necessary under 35 U.S.C. 113 for a

filing date. The petition must be

accompanied by sufficient evidence to

establish the applicant’s entitlement to

the requested filing date (e.g., a datestamped postcard receipt (MPEP 503) to

establish prior receipt in the PTO of the

drawing(s) at issue). Alternatively, the

applicant may submit drawing(s)

accompanied by an oath or declaration

in compliance with 37 CFR 1.63 and

1.64 referring to the drawing(s) being

submitted and accept the date of such

submission as the application filing

date.

In design applications, the Initial

Application Examination Division will

mail a ‘‘Notice of Incomplete

Application’’ indicating that the

application lacks the drawings required

under 35 U.S.C. 113. The applicant may:

(1) Promptly file a petition under 37

CFR 1.53(c) (and the petition fee under

37 CFR 1.17(i)) asserting that the

missing drawing(s) was submitted, or (2)

promptly submit drawing(s)

accompanied by an oath or declaration

in compliance with 37 CFR 1.63 and

1.64 and accept the date of such

submission as the application filing

date. 37 CFR 1.154(a) provides that the

claim in a design application ‘‘shall be

in formal terms to the ornamental

design for the article (specifying name)

as shown, or as shown and described.’’

As such, petitions under 37 CFR 1.53(c)

asserting that drawings are unnecessary

under 35 U.S.C. 113 for a filing date in

a design application will not be found

persuasive.

Applications Filed Without All Figures

of Drawings

The Initial Application Examination

Division reviews application papers to

determine whether all mentioned

drawing figures in the specification are

present in the application. If the

application is filed without all of the

drawing figure(s) referred to in the

specification, and the application

contains something that can be

construed as a written description, at

least one drawing, if necessary under 35

U.S.C. 113, the names of all the

inventors, and, in a nonprovisional

application, at least one claim, the

Initial Application Examination

Division will mail a ‘‘Notice of Omitted

Items’’ indicating that the application

papers so deposited have been accorded

a filing date, but are lacking some of the

drawings described in the specification.

The mailing of a ‘‘Notice of Omitted

Items’’ will permit the applicant to

either: (1) Promptly establish prior

receipt in the PTO of the drawing(s) at

issue (generally by way of a datestamped postcard receipt (MPEP 503)),

or (2) promptly submit the omitted

drawing(s) in a nonprovisional

application and accept the date of such

submission as the application filing

date. An applicant asserting that the

drawing(s) was in fact deposited in the

PTO with the application papers must

file a petition under 37 CFR 1.53(c) (and

the petition fee under 37 CFR 1.17(i) (37

CFR 1.17(q) in a provisional

application), which will be refunded if

it is determined that the drawing(s) was

in fact received by the PTO with the

application papers deposited on filing)

with evidence of such deposit within

two months of the date of the ‘‘Notice

of Omitted Items’’ (37 CFR 1.181(f)). An

applicant desiring to submit the omitted

drawings in a nonprovisional

application and accept the date of such

submission as the application filing date

must file any omitted drawing(s) with

an oath or declaration in compliance

with 37 CFR 1.63 and 1.64 referring to

such drawing(s) and a petition under 37

CFR 1.182 (with the petition fee under

37 CFR 1.17(h)) requesting the later

filing date within two months of the

date of the ‘‘Notice of Omitted Items’’

(37 CFR 1.181(f)).

An applicant willing to accept the

application as deposited in the PTO

need not respond to the ‘‘Notice of

Omitted Items,’’ and the failure to file a

petition under 37 CFR 1.53(c) or 1.182

(and the requisite petition fee) as

discussed above within two months of

the date of the ‘‘Notice of Omitted

Items’’ (37 CFR 1.181(f)) will be treated

as constructive acceptance by the

applicant of the application as

deposited in the PTO. Amendment of

the specification is required in a

nonprovisional application to cancel all

references to the omitted drawing, both

in the brief and detailed descriptions of

the drawings and including any

reference numerals shown only in the

omitted drawings. In addition, a

separate letter is required in

nonprovisional application to renumber

the drawing figures consecutively

(showing the proposed changes in red

ink), if necessary, and amendment of the

specification is required to correct the

references to the drawing figures to

correspond with any relabelled drawing

figures, both in the brief and detailed

descriptions of the drawings. Such

amendment and correction to the

drawing figures, if necessary, should be

by way of preliminary amendment

submitted prior to the first office action

to avoid delays in the prosecution of the

application.

Subsequent Treatment of Application

In instances in which a ‘‘Notice of

Incomplete Application’’ has been

mailed, further action by the applicant

is necessary for the application to be

accorded a filing date. As such, the

application will be retained in the

Initial Application Examination

Division to await such action. Unless

the applicant either completes the

application or files a petition under 27

CFR 1.53(c) (and the petition fee under

37 CFR 1.17(i) or 1.17(q)) within the

period set in the ‘‘Notice of Incomplete

Application,’’ the application will be

processed as an incomplete application

under 37 CFR 1.53(c).

In instances in which a ‘‘Notice of

Omitted Items’’ has been mailed, the

application will be retained in the

Initial Application Examination

Division for a period of two months

from the mailing date of ‘‘Notice of

Omitted Items’’ to permit the applicant

to either: (1) Establish prior receipt in

the PTO of the page(s) or drawing(s) at

issue, or (2) promptly submit the

omitted page(s) or drawing(s) in a

nonprovisional application and accept

the date of such submission as the

application filing date. Extensions of

time under 37 CFR 1.136 will not be

applicable to this two-month time

period.

The grant of a petition under 37 CFR

1.182 to accept the omitted page(s) or

drawing(s) in a nonprovisional

application and accord the date of such

submission as the application filing date

will be indicated by the issuance of a

new filing receipt indicating the filing

date accorded the application.

Unless the applicant timely files a

petition under 37 CFR 1.53(c) or 1.182

(and the requisite petition fee), the

application will maintain the filing date

as of the date of deposit of the

application papers in the PTO, and the

original application papers (i.e., the

original disclosure of the invention) will

include only those application papers

present in the PTO on the date of

deposit. Nonprovisional applications

that are complete under 35 CFR
30044 Federal Register / Vol. 61, No. 115 / Thursday, June 13, 1996 / Notices

1.51(a)(1) will then be forwarded to the

appropriate examining group for

examination of the application.

Provisional applications that are

complete under 35 CFR 1.51(a)(2) will

then be forwarded to Files Repository.

The current practice for treating

applications that are not complete under

37 CFR 1.51(a) will remain unchanged

(37 CFR 1.53(d)).

Any petition under 37 CFR 1.53(c) or

1.182 not filed within this two-month

period may be dismissed as untimely.

37 CFR 1.181(f). Under the adopted

procedure, the PTO may strictly adhere

to the two-month period set forth in 37

CFR 1.181(f), and dismiss as untimely

any petition not filed within this twomonth period. This strict adherence to

the two-month period set forth in 37

CFR 1.181(f) is justified as such

applications will now be forwarded for

examination at the end of this twomonth period. It is further justified in

instances in which the applicant seeks

to submit the omitted page(s) or

drawing(s) in a nonprovisional

application and request the date of such

submission as the application filing date

since: (1) According the application a

filing date later than the date of deposit

may affect the date of expiration of any

patent issuing on the application due to

the changes to 35 U.S.C. 154 contained

in Public Law 103–465, § 532, 108 Stat.

4809 (1994), and (2) the filing of a

continuation-in-part application is a

sufficiently equivalent mechanism for

adding additional subject matter to

avoid the loss of patent rights.

The submission of omitted page(s) or

drawing(s) in a nonprovisional

application and acceptance of the date

of such submission as the application

filing date is tantamount to simply filing

a new application. Thus, applicants

should consider filing a new application

as an alternative to submitting a petition

under 37 CFR 1.182 (with the petition

fee under 37 CFR 1.17(h)) with any

omitted page(s) or drawing(s), which is

a cost-effective alternative in instances

in which an nonprovisional application

is deposited without filing fees.

Likewise, in view of the relatively low

filing fee for provisional applications,

and the PTO’s desire to minimize the

processing of provisional applications,

the PTO will not grant petitions under

37 CFR 1.182 to accept omitted page(s)

or drawing(s) and accord an application

filing date as of the date of such

submission. Instead, the applicant

should simply refile the complete

provisional application.

Response to Comments

Thirteen comments were received in

response to the Filing Date Notice. Nine

comments expressly supported the

proposed change, while the remaining

four comments simply made additional

comments or suggested additional

changes, but did not oppose the

proposed change. The written

comments have been analyzed, and

responses to the comments follow.

Comment (1): One comment suggested

that the PTO should, by rulemaking,

permit the addition of subject matter in

a foreign application for which priority

is claimed.

Response: Where an application

includes in the papers deposited on

filing with the application a certified

copy of a foreign application for which

priority is claimed, the PTO will grant

a timely petition under 37 CFR 1.182

requesting that: (1) the corresponding

sheets of drawings in the foreign

priority application be accepted for any

omitted sheets of drawings in the

application, or (2) the foreign priority

application be accepted as the

application as filed, which may result in

the treatment of the foreign priority

application as an application filed in a

non-English language (37 CFR 1.52(d)).

In instances in which the foreign

priority application was not present

among the papers deposited on filing

with the application, any addition of

subject matter from the foreign priority

application into the application must be

considered as new matter under 35

U.S.C. 132 (and, as such, will not be

permitted by petition), unless the

application-as-filed specifically

incorporates the foreign priority

application by reference.

Drawing figures do not require

translation of the subject matter shown

therein and individual drawing figures

are sufficiently segregated that it is

considered appropriate to permit, by

petition under 37 CFR 1.182, the

acceptance of the corresponding sheets

of drawings in the foreign priority

application for any omitted sheets of

drawings in the application. The

specification of a foreign priority

application, however, is generally

subject to translation and revision prior

to its filing in the PTO as the

specification of an application. As such,

it is considered appropriate to permit,

by petition under 37 CFR 1.182, the

acceptance of a foreign priority

application as the application as filed,

but it is not considered acceptable to

permit the acceptance of a translation of

portions of the foreign priority

application for omitted pages of the

specification.

Finally, the occurrence of situations

in which it is necessary for an applicant

to request that the corresponding sheets

of drawings in the foreign priority

application be accepted for any omitted

sheets of drawings in the application, or

the foreign priority application be

accepted as the application as filed is

relatively rare. In addition, the

treatment of these few applications on

an ad hoc basis pursuant to 37 CFR

1.182 and 1.183 has proven acceptable.

Comment (2): One comment suggested

that the PTO should consider requiring

a declaration from the attorney averring

that the omitted matter was

inadvertently omitted.

Response: First, in view of a

registered practitioner’s responsibilities

as set forth in 37 CFR Part 10, the PTO

does not generally require verification of

statements by registered practitioners.

See, e.g., 37 CFR 1.125 and 1.137.

Second, as there is no apparent benefit

to omitting material from an application

as deposited in the PTO, there appears

to be little justification for requiring

even a statement that the omitted matter

was inadvertently omitted.

Comment (3): One comment

questioned whether the change would

be applicable to applications filed under

37 CFR 1.60 or 1.62.

Response: The adopted procedure

applies to applications filed under 37

CFR 1.53.

37 CFR 1.60 requires, inter alia, that

the application be a true copy of the

prior application (37 CFR 1.60(b)(2)),

and a copy that omits pages of

specification or sheets of drawings from

the prior application is not a true copy

of the prior application. As such, a copy

that omits pages of specification or

sheets of drawings from the prior

application is an improper application

under 37 CFR 1.60, and cannot be

accorded a filing date as an application

under 37 CFR 1.60 until the filing error

is corrected.

The PTO considers 37 CFR 1.60 to be

unnecessary in view of changes to 37

CFR 1.4(d), and a trap for the unwary.

The PTO has previously proposed to

eliminate 37 CFR 1.60 (See notice of

proposed rulemaking entitled ‘‘Changes

to Implement 20-Year Patent Term and

Provisional Application’’ (20-Year Term

Notice of Proposed Rulemaking)

published in the Federal Register at 59

FR 63951 (December 12, 1994), and in

the Patent and Trademark Office Official

Gazette at 1170 Off. Gaz. Pat. Office 377

(January 3, 1995)), and will again

propose to eliminate 37 CFR 1.60, as

well as 37 CFR 1.62, in an impending

rulemaking to implement the

Administration’s regulatory reform

initiative.

A continuation or divisional

application may be filed under 35

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

forth in 37 CFR 1.53(b)(1), by providing
Federal Register / Vol. 61, No. 115 / Thursday, June 13, 1996 / Notices 30045

a copy of the prior application,

including a copy of the oath or

declaration in such prior application, as

filed. The patent statutes and rules of

practice do not require that an oath or

declaration include a recent date of

execution, and the Examining Corps has

been directed not to object to an oath or

declaration as lacking either a recent

date of execution or any date of

execution. This change in examining

practice will appear in the next revision

of the MPEP. As is currently the

situation under 37 CFR 1.60 and 1.62,

the applicant’s duty of candor and good

faith including compliance with the

duty of disclosure requirements of

§ 1.56 is continuous and applies to the

continuation or divisional application,

notwithstanding the lack of a newly

executed oath or declaration.

37 CFR 1.60(b)(4) and 1.62(a)

currently permit the filing of a

continuation or divisional application

by less than all of the inventors named

in a prior application without a newly

executed oath or declaration. The oath

or declaration in an application filed

under 37 CFR 1.53(b), however, must

identify the inventorship of such

application. Thus, unless it is necessary

to file a continuation or divisional

application under 37 CFR 1.60 to name

less than all of the inventors named in

a prior application, applicants are

encouraged to file continuing

applications under 37 CFR 1.53(b) (i.e.,

omit any reference to 37 CFR 1.60 in the

application papers) to avoid an

inadvertent failure to comply with all of

the requirements of 37 CFR 1.60.

An application under 37 CFR 1.62

uses the content of the prior application,

and is itself only a request for an

application under 37 CFR 1.62. As such,

there is no concern that an application

under 37 CFR 1.62 will be filed without

all the pages of the specification or

without all of the figures of the

drawings.

Comment (4): One comment

questioned whether a filing date would

be accorded if the name of an inventor

were omitted.

Response: 37 CFR 1.41 and 1.53

currently require that an application be

filed in the name of the actual inventor

or inventors, and this notice does not

involve changes to the rules of practice.

The PTO will propose to eliminate this

requirement in 37 CFR 1.41 and 1.53 in

the rulemaking to implement the

Administration’s regulatory reform

initiative.

Comment (5): One comment suggested

that the notices be mailed out as soon

as possible to avoid a loss of rights for

those applicants who require

completion or refiling of the

application. Another comment

suggested that the decision as to

whether an application is ‘‘incomplete’’

should be made by the Examining

Corps, rather than on a formalistic basis

by the Initial Application Examination

Division.

Response: The efficient preexamination processing of applications

is in the mutual interest of the PTO and

applicants. The PTO is currently in the

process of modifying its preexamination processing procedures to

avoid any unnecessary delay. This new

procedure will not impact the preexamination processing of applications,

in that the Initial Application

Examination Division will mail a

‘‘Notice of Incomplete Application,’’

‘‘Notice of Omitted Items,’’ and ‘‘Notice

to File Missing Parts’’ under this new

procedure at the time the ‘‘Notice of

Incomplete Application’’ and ‘‘Notice to

File Missing Parts’’ are currently mailed.

The adopted procedure replaces

formalistic procedures with procedures

based upon the requirements for a filing

date as set forth in 35 U.S.C. 111, 112,

and 113. Filing date issues are

ultimately decided by the Office of

Petitions in the Office of the Deputy

Assistant Commissioner for Patent

Policy and Projects (MPEP 1002.02(b)

(35)) on the basis of whether and when

the application meets the requirements

for a filing date as set forth in 35 U.S.C.

111, 112, and 113, and not on the basis

of who made the initial decision not to

accord a filing date to the application.

It should be recognized that there is

tension between the comments objecting

to any review of the entitlement of an

application to a filing date by the Initial

Application Examination Division

(arguing that this issue should be

considered only the Examining Corps)

and the desire for speedy notification to

the applicant that a portion of the

application appears to have been

omitted. To defer all review of the

entitlement of an application to a filing

date until the application is picked-up

for examination would cause a

significant delay in any such

notification to the applicant.

Comment (6): One comment noted

that 35 U.S.C. 111(b) does not require a

claim for a provisional application.

Several comments suggested that the

PTO automatically treat any

nonprovisional application filed

without at least one claim as a

provisional application, if such

application is otherwise entitled to a

filing date as a provisional application.

Response: A provisional application

does not require a claim to be entitled

to a filing date. As discussed supra, an

applicant in an application, other than

for a design patent, filed under 35

U.S.C. 111(a) on or after June 8, 1995,

without at least one claim has the

alternative of filing a petition under 37

CFR 1.53(b)(2)(ii) to convert such

application into an application under 35

U.S.C. 111(b). The PTO does not

consider it appropriate to

‘‘automatically’’ consider an application

filed under 35 U.S.C. 111(a) without a

claim to be an application under 35

U.S.C. 111(b) (a provisional

application), since the applicant may

not desire an application under 35

U.S.C. 111(b), and may desire to file a

claim to obtain an application filing

date as of the date of submission of such

claim.

Comment (7): One comment suggested

that the MPEP should clearly indicate

that applications filed without all the

pages of specification or all the figures

of drawings described in the

specification cannot automatically be

treated as defective under 35 U.S.C. 112,

but must be considered for compliance

with 35 U.S.C. 112 by the subject matter

that is present in the application papers.

Response: In an effort to improve the

examination of applications, chapter

2100 of the MPEP has been revised to

set forth specific guidelines for

rejections under 35 U.S.C. 101, 102, 103,

and 112. MPEP 2161 et seq. set forth the

guidelines for rejections under 35 U.S.C.

112, first and second paragraphs, and do

not authorize a rejection under 35

U.S.C. 112 based merely upon the fact

that pages of specification or figures of

drawing were omitted.

Comment (8): One comment

questioned whether the proposed

procedure for the treatment of

applications filed without all the pages

of specification or all the figures of

drawings described in the specification

is applicable to provisional

applications, noting that 35 U.S.C.

111(b) provides that a claim is not

required in a provisional application.

Response: The adopted procedure

applies to applications (both provisional

and nonprovisional) filed under 37 CFR

1.53. The procedure recognizes that 35

U.S.C. 111(b) does not require a claim

in a provisional application.

Comment (9): One comment suggested

that the two-month period for taking

action would be unfair in instances in

which the PTO prepares and enters the

notice into the Patent Application

Locating and Monitoring (PALM)

system but fails to mail the notice or

mails the notice to an incorrect

correspondence address.

Response: The ‘‘Notice of Omitted

Items’’ is not an action within the

meaning of 35 U.S.C. 113 to which a

response is required to avoid
30046 Federal Register / Vol. 61, No. 115 / Thursday, June 13, 1996 / Notices

abandonment. An applicant simply has

the opportunity to file a petition, but

need not take action, in response to a

‘‘Notice of Omitted Items.’’ Thus, the

timeliness of any such petition is

governed by 37 CFR 1.181(f). 37 CFR

1.181(f) provides that any petition not

filed within two months from the action

complained of may be dismissed as

untimely.

Establishing prior receipt in the PTO

of the page(s) or drawing(s) at issue or

submitting the omitted page(s) or

drawings(s) and accepting the date of

such submission as the application

filing date would result in an addition

to the papers constituting the original

disclosure of the application, and

submitting the omitted page(s) or

drawings(s) and accepting the date of

such submission as the application

filing date would result in a change in

application filing date. As a change in

either the original disclosure or filing

date of an application would interfere

with the examination of the application

for compliance with 35 U.S.C. 102, 103,

and 112, the PTO will not forward an

application in which a ‘‘Notice of

Omitted Items’’ has been mailed for

examination until it is apparent that the

applicant has not responded to the

‘‘Notice of Omitted Items.’’ Thus, a

nonprovisional application will not be

processed for examination, and the

examination of the application will be

delayed, until the expiration of two

months from the mailing date of ‘‘Notice

of Omitted Items.’’ The two-month

period set forth in 37 CFR 1.181(f) is

considered an appropriate balance

between providing an applicant

sufficient time to take action in response

to a ‘‘Notice of Omitted Items’’ and

avoiding unnecessary delays in the

examination of the application, which

would be undesirable in view of 35

U.S.C. 154 as amended by Public Law

103–465. While an applicant willing to

accept a nonprovisional application as

deposited in the PTO need not respond

to the ‘‘Notice of Omitted Items,’’ the

filing of an express communication to

that effect would permit the PTO to

proceed with the processing of the

application for examination, and, as

such, may reduce the delay in the

examination of the application.

While a ‘‘Notice of Omitted Items’’ is

not an action within the meaning of 35

U.S.C. 133, the principles regarding

nonreceipt or delayed receipt of a

‘‘Notice of Omitted Items,’’ due either to

a failure on the part of the PTO to

properly mail such notice or a failure on

the part of the U.S. Postal Service to

deliver such notice to the

correspondence address in a timely

manner, are applicable to the nonreceipt

or delayed receipt of a ‘‘Notice of

Omitted Items.’’ Applicants are directed

to the Notice entitled ‘‘Withdrawing the

Holding of Abandonment when Office

Actions Are Not Received,’’ published

in the PTO Official Gazette at 1156, Off.

Gaz. Pat. Office 53 (November 16, 1993),

for the evidence necessary to establish

nonreceipt of a ‘‘Notice of Omitted

Items,’’ and the Notice entitled

‘‘Procedures For Restarting Response

Periods,’’ published in the PTO Official

Gazette at 1160 Off. Gaz. Pat. Office 14

(March 1, 1994), for the evidence

necessary to establish delayed receipt of

a ‘‘Notice of Omitted Items.’’

Comment (10): One comment

suggested that while the proposed

procedure is an improvement, it still

conflicts with 35 U.S.C. 112 and 113.

The comment specifically argues that

the sufficiency of an application is a

matter for determination by an examiner

skilled in the subject matter of the

application, in that Congress did not

intend that the sufficiency of an

application be determined by the Initial

Patent Examination Division.

Response: The adopted procedure

will accord a filing date to any

application that contains something that

can be construed as a written

description, any necessary drawing,

and, in a nonprovisional application, at

least one claim. This procedure is

consistent with the requirements for a

filing date as set forth in 35 U.S.C. 111,

112, and 113. 35 U.S.C. 113, second

sentence, contemplates that drawings

may be filed after the filing date of an

application. 35 U.S.C. 113, however,

provides that an ‘‘application shall

furnish a drawing where necessary for

the understanding of the subject matter

sought to be patented,’’ and 35 U.S.C.

111(a)(4) and 111(b)(4) each provide, in

part, that the ‘‘filing date * * * shall

be the date on which * * * any

required drawing are received in the

Patent and Trademark Office.’’ As such,

the PTO has the statutory authority, and

responsibility, to determine whether a

drawing is necessary under 35 U.S.C.

113 in an application filed without

drawings prior to according a filing date

to that application.

There is nothing in 35 U.S.C. 111,

112, or 113 that limits the authority of

the Commissioner to delegate the

determination of whether or when any

application meets the requirements for a

filing date as set forth in 35 U.S.C. 111,

112, and 113. In any event, filing date

issues are, as discussed supra,

ultimately decided by Office of the

Deputy Assistant Commissioner for

Patent Policy and Projects on the basis

of whether and when the application

meets the requirements for a filing date

as set forth in 35 U.S.C. 111, 112, and

113, and not on the basis of who made

the initial decision not to accord a filing

date to the application.

Comment (11): One comment

suggested that the proposed procedure

be adopted by rulemaking. Another

comment suggested that the proposed

procedure either be adopted by

rulemaking or clearly set forth in the

MPEP.

Response: 37 CFR 1.53(b)(1) provides

that the ‘‘filing date of an application for

patent filed under this section, except

for a provisional application, is the date

on which a specification containing a

description pursuant to § 1.71 and at

least one claim pursuant to § 1.75; and

any drawing required by § 1.81(a), are

filed in the Patent and Trademark Office

in the name of the actual inventor or

inventors as required by § 1.41.’’ 37 CFR

1.53(b)(2) provides that the ‘‘filing date

of a provisional application is the date

on which: a specification as prescribed

by 35 U.S.C. 112, first paragraph; and

any drawing required by § 1.81(a), are

filed in the Patent and Trademark Office

in the name of the actual inventor or

inventors as required by § 1.41.’’ Thus,

no change to the rules of practice is

necessary to adopt the procedure set

forth in this notice.

It should be noted that the MPEP

608.01 sets forth the former procedure

for treating an application filed without

all of the pages of specification or filed

under 35 U.S.C. 111(a) without at least

one claim. Likewise, MPEP 608.02 sets

forth the former procedure for treating

an application filed without drawings or

all of the figures of drawings.

The next revision of the MPEP will

incorporate the change in procedure set

forth in this notice.

Dated: June 5, 1996.

Bruce A. Lehman,

Assistant Secretary of Commerce and

Commissioner of Patents and Trademarks.

[FR Doc. 96–15049 Filed 6–12–96; 8:45 am]

BILLING CODE 3510–16–M

COMMITTEE FOR THE

IMPLEMENTATION OF TEXTILE

AGREEMENTS

Adjustment of a Guaranteed Access

Levels for Certain Cotton Textile

Products Produced or Manufactured in

Guatemala

June 6, 1996.

AGENCY: Committee for the

Implementation of Textile Agreements

(CITA).