justicedao/patent-legal-corpus huggingface dataset:
37 CFR 1.12 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Assignment records open to public inspection.

§ 1.12 Assignment records open to public inspection. (a)(1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications, are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records. (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA. (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part. (c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must: (1) Be in the form of a petition including the fee set forth in § 1.17(g); or (2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record. (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment. (35 U.S.C. 6; 15 U.S.C. 1113, 1123) [47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989; 56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641, July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996; 65 FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 48288, Aug. 13, 2003; 69 FR 29877, May 26, 2004; 69 FR 56536, Sept. 21, 2004; 77 FR 48812, Aug. 14, 2012]
37 CFR 1.132 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Affidavits or declarations traversing rejections or objections.

§ 1.132 Affidavits or declarations traversing rejections or objections. When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. [65 FR 57057, Sept. 20, 2000]
37 CFR 1.133 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Interviews.

§ 1.133 Interviews. (a)(1) Interviews with examiners concerning applications and other matters pending before the Office must be conducted on Office premises and within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director. (2) An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application. (3) The examiner may require that an interview be scheduled in advance. (b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135. (35 U.S.C. 132) [24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53194, Oct. 10, 1997; 65 FR 54674, Sept. 8, 2000; 70 FR 56128, Sept. 26, 2005]
37 CFR 1.134 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Time period for reply to an Office action.

§ 1.134 Time period for reply to an Office action. An Office action will notify the applicant of any non-statutory or shortened statutory time period set for reply to an Office action. Unless the applicant is notified in writing that a reply is required in less than six months, a maximum period of six months is allowed. [62 FR 53194, Oct. 10, 1997]
37 CFR 1.135 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Abandonment for failure to reply within time period.

§ 1.135 Abandonment for failure to reply within time period. (a) If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise. (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment. (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission. [62 FR 53194, Oct. 10, 1997]
37 CFR 1.138 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Express abandonment.

§ 1.138 Express abandonment. (a) An application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act. (b) A written declaration of abandonment must be signed by a party authorized under § 1.33(b)(1) or (b)(3) to sign a paper in the application, except as otherwise provided in this paragraph. A registered attorney or agent, not of record, who acts in a representative capacity under the provisions of § 1.34 when filing a continuing application, may expressly abandon the prior application as of the filing date granted to the continuing application. (c) An applicant seeking to abandon an application to avoid publication of the application (see § 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this paragraph including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicants should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication. (d) An applicant seeking to abandon an application filed under 35 U.S.C. 111(a) and § 1.53(b) on or after December 8, 2004, to obtain a refund of the search fee and excess claims fee paid in the application, must submit a declaration of express abandonment by way of a petition under this paragraph before an examination has been made of the application. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether a petition under § 1.138(d) was filed before an examination has been made of the application. If a request for refund of the search fee and excess claims fee paid in the application is not filed with the declaration of express abandonment under this paragraph or within two months from the date on which the declaration of express abandonment under this paragraph was filed, the Office may retain the entire search fee and excess claims fee paid in the application. This two-month period is not extendable. If a petition and declaration of express abandonment under this paragraph are not filed before an examination has been made of the application, the Office will not refund any part of the search fee and excess claims fee paid in the application except as provided in § 1.26. [65 FR 54674, Sept. 8, 2000, as amended at 65 FR 57058, Sept. 20, 2000; 71 FR 12284, Mar. 10, 2006; 78 FR 62406, Oct. 21, 2013]
37 CFR 1.13 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Copies and certified copies.

§ 1.13 Copies and certified copies. (a) Non-certified copies of patents, and patent application publications and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public, will be furnished by the United States Patent and Trademark Office to any person, and copies of other records or papers will be furnished to persons entitled thereto, upon payment of the appropriate fee. See § 2.201 of this chapter regarding copies of trademark records. (b) Certified copies of patents, patent application publications, and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the United States Patent and Trademark Office and certified by the Director, or in his or her name, upon payment of the fee for the certified copy. [68 FR 48288, Aug. 13, 2003, as amended at 68 FR 71006, Dec. 22, 2003]
37 CFR 1.141 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Different inventions in one national application.

§ 1.141 Different inventions in one national application. (a) Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim. (b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made. [52 FR 20046, May 28, 1987]
37 CFR 1.142 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Requirement for restriction.

§ 1.142 Requirement for restriction. (a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action. (b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled. [24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997; 72 FR 46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009]
37 CFR 1.143 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Reconsideration of requirement.

§ 1.143 Reconsideration of requirement. If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. (See § 1.111.) In requesting reconsideration the applicant must indicate a provisional election of one invention for prosecution, which invention shall be the one elected in the event the requirement becomes final The requirement for restriction will be reconsidered on such a request. If the requirement is repeated and made final the examiner will at the same time act on the claims to the invention elected.
37 CFR 1.144 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Petition from requirement for restriction.

§ 1.144 Petition from requirement for restriction. After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181). [62 FR 53195, Oct. 10, 1997]
37 CFR 1.145 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Subsequent presentation of claims for different invention.

§ 1.145 Subsequent presentation of claims for different invention. If, after an Office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144. [74 FR 52691, Oct. 14, 2009]
37 CFR 1.146 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Election of species.

§ 1.146 Election of species. In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable. However, if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application. [62 FR 53195, Oct. 10, 1997]
37 CFR 1.152 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Design drawings.

§ 1.152 Design drawings. The design must be represented by a drawing that complies with the requirements of § 1.84 and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design. Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces that cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing. Photographs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must not disclose environmental structure but must be limited to the design claimed for the article. [65 FR 54674, Sept. 8, 2000]
37 CFR 1.153 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Title, description and claim, oath or declaration.

§ 1.153 Title, description and claim, oath or declaration. (a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted. (b) The inventor's oath or declaration must comply with the requirements of § 1.63, or comply with the requirements of § 1.64 for a substitute statement. (35 U.S.C. 6, Pub. L. 97-247) [24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964; 48 FR 2712, Jan. 20, 1983; 77 FR 48821, Aug. 14, 2012]
37 CFR 1.154 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Arrangement of application elements in a design application.

§ 1.154 Arrangement of application elements in a design application. (a) The elements of the design application, if applicable, should appear in the following order: (1) Design application transmittal form. (2) Fee transmittal form. (3) Application data sheet (see § 1.76). (4) Specification. (5) Drawings or photographs. (6) The inventor's oath or declaration ( see § 1.153(b)). (b) The specification should include the following sections in order: (1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied. (2) Cross-reference to related applications (unless included in the application data sheet). (3) Statement regarding federally sponsored research or development. (4) Description of the figure or figures of the drawing. (5) Feature description. (6) A single claim. (c) The text of the specification sections defined in paragraph (b) of this section, if applicable, should be preceded by a section heading in uppercase letters without underlining or bold type. [65 FR 54674, Sept. 8, 2000, as amended at 77 FR 48821, Aug. 14, 2012]
37 CFR 1.155 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Expedited examination of design applications.

§ 1.155 Expedited examination of design applications. (a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination: (1) The application must include drawings in compliance with § 1.84, or for an international design application that designates the United States, must have been published pursuant to Hague Agreement Article 10(3); (2) The applicant must have conducted a preexamination search; and (3) The applicant must file a request for expedited examination including: (i) The fee set forth in § 1.17(k); and (ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98. (b) The Office will not examine an application that is not in condition for examination ( e.g., missing basic filing fee) even if the applicant files a request for expedited examination under this section. [65 FR 54674, Sept. 8, 2000, as amended at 80 FR 17963, Apr. 2, 2015]
37 CFR 1.162 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Applicant, oath or declaration.

§ 1.162 Applicant, oath or declaration. The inventor named for a plant patent application must be the person who has invented or discovered and asexually reproduced the new and distinct variety of plant for which a patent is sought. The inventor's oath or declaration, in addition to the averments required by § 1.63 or § 1.64, must state that the inventor has asexually reproduced the plant. Where the plant is a newly found plant, the inventor's oath or declaration must also state that it was found in a cultivated area. [77 FR 48821, Aug. 14, 2012]
37 CFR 1.163 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Specification and arrangement of application elements in a plant application.

§ 1.163 Specification and arrangement of application elements in a plant application. (a) The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered. (b) The elements of the plant application, if applicable, should appear in the following order: (1) Plant application transmittal form. (2) Fee transmittal form. (3) Application data sheet (see § 1.76). (4) Specification. (5) Drawings (in duplicate). (6) The inventor's oath or declaration (§ 1.162). (c) The specification should include the following sections in order: (1) Title of the invention, which may include an introductory portion stating the name, citizenship, and residence of the applicant. (2) Cross-reference to related applications (unless included in the application data sheet). (3) Statement regarding federally sponsored research or development. (4) Latin name of the genus and species of the plant claimed. (5) Variety denomination. (6) Background of the invention. (7) Brief summary of the invention. (8) Brief description of the drawing. (9) Detailed botanical description. (10) A single claim. (11) Abstract of the disclosure. (d) The text of the specification or sections defined in paragraph (c) of this section, if applicable, should be preceded by a section heading in upper case, without underlining or bold type. [65 FR 54675, Sept. 8, 2000, as amended at 77 FR 48821, Aug. 14, 2012]
37 CFR 1.165 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Plant drawings.

§ 1.165 Plant drawings. (a) Plant patent drawings should be artistically and competently executed and must comply with the requirements of § 1.84. View numbers and reference characters need not be employed unless required by the examiner. The drawing must disclose all the distinctive characteristics of the plant capable of visual representation. (b) The drawings may be in color. The drawing must be in color if color is a distinguishing characteristic of the new variety. Two copies of color drawings or photographs must be submitted. [58 FR 38726, July 20, 1993, as amended at 65 FR 57058, Sept. 20, 2000; 69 FR 56543, Sept. 21, 2004]
37 CFR 1.166 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Specimens.

§ 1.166 Specimens. The applicant may be required to furnish specimens of the plant, or its flower or fruit, in a quantity and at a time in its stage of growth as may be designated, for study and inspection. Such specimens, properly packed, must be forwarded in conformity with instructions furnished to the applicant. When it is not possible to forward such specimens, plants must be made available for official inspection where grown. (35 U.S.C. 114, 161)