justicedao/patent-legal-corpus huggingface dataset:
37 CFR 1.477 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Protest to lack of unity of invention before the International Searching Authority.

§ 1.477 Protest to lack of unity of invention before the International Searching Authority. (a) If the applicant disagrees with the holding of lack of unity of invention by the International Searching Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both (PCT Rule 40.2(c)). (b) Protest under paragraph (a) of this section will be examined by the Director or the Director's designee. In the event that the applicant's protest is determined to be justified, the additional fees or a portion thereof will be refunded. (c) An applicant who desires that a copy of the protest and the decision thereon accompany the international search report when forwarded to the Designated Offices, may notify the International Searching Authority to that effect any time prior to the issuance of the international search report. Thereafter, such notification should be directed to the International Bureau (PCT Rule 40.2(c)). [43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 28, 1987]
37 CFR 1.480 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Demand for international preliminary examination.

§ 1.480 Demand for international preliminary examination. (a) On the filing of a proper Demand in an application for which the United States International Preliminary Examining Authority is competent and for which the fees have been paid, the international application shall be the subject of an international preliminary examination. The preliminary examination fee (§ 1.482(a)(1)) and the handling fee (§ 1.482(b)) shall be due within the applicable time limit set forth in PCT Rule 57.3. (b) The Demand shall be made on a standardized form (PCT Rule 53). Copies of the printed Demand forms are available from the United States Patent and Trademark Office. Letters requesting printed Demand forms should be marked “Mail Stop PCT.” (c) Withdrawal of a proper Demand prior to the start of the international preliminary examination will entitle applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee set forth in § 1.445(a)(1). (d) The filing of a Demand shall constitute the election of all Contracting States which are designated and are bound by Chapter II of the Treaty on the international filing date (PCT Rule 53.7). (e) Any Demand filed after the expiration of the applicable time limit set forth in PCT Rule 54 bis. 1(a) shall be considered as if it had not been submitted (PCT Rule 54 bis. 1(b)). [52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58 FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 67 FR 523, Jan. 4, 2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888, Oct. 20, 2003]
37 CFR 1.481 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Payment of international preliminary examination fees.

§ 1.481 Payment of international preliminary examination fees. (a) The handling and preliminary examination fees shall be paid within the time period set in PCT Rule 57.3. The handling fee or preliminary examination fee payable is the handling fee or preliminary examination fee in effect on the date of payment. (1) If the handling and preliminary examination fees are not paid within the time period set in PCT Rule 57.3, applicant will be notified and given one month within which to pay the deficient fees plus a late payment fee equal to the greater of: (i) Fifty percent of the amount of the deficient fees, but not exceeding an amount equal to double the handling fee; or (ii) An amount equal to the handling fee (PCT Rule 58 bis. 2). (2) The one-month time limit set in this paragraph to pay deficient fees may not be extended. (b) If the payment needed to cover the handling and preliminary examination fees, pursuant to paragraph (a) of this section, is not timely made in accordance with PCT Rule 58bis.1(d), the United States International Preliminary Examination Authority will declare the Demand to be considered as if it had not been submitted. [63 FR 29619, June 1, 1998, as amended at 68 FR 59888, Oct. 20, 2003]
37 CFR 1.482 — Rules of Practice in Patent Cases
Current through: 2024-07-01

International preliminary examination and processing fees.

§ 1.482 International preliminary examination and processing fees. (a) The following fees and charges for international preliminary examination are established by the director under the authority of 35 U.S.C. 376: (1) The following preliminary examination fee is due on filing the demand: (i) If an international search fee as set forth in § 1.445(a)(2) has been paid on the international application to the United States Patent and Trademark Office as an International Searching Authority: Table 1 to Paragraph ( a )(1)( i ) By a micro entity (§ 1.29) $128.00 By a small entity (§ 1.27(a)) 256.00 By other than a small or micro entity 640.00 (ii) If the International Searching Authority for the international application was an authority other than the United States Patent and Trademark Office: Table 2 to Paragraph ( a )(1)( ii ) By a micro entity (§ 1.29) $160.00 By a small entity (§ 1.27(a)) 320.00 By other than a small or micro entity 800.00 (2) An additional preliminary examination fee when required, per additional invention: Table 3 to Paragraph ( a )(2) By a micro entity (§ 1.29) $128.00 By a small entity (§ 1.27(a)) 256.00 By other than a small or micro entity 640.00 (b) The handling fee is due on filing the demand and shall be as prescribed in PCT Rule 57. (c) Late furnishing fee for providing a sequence listing in response to an invitation under PCT Rule 13 ter: Table 4 to Paragraph ( c ) By a micro entity (§ 1.29) $64.00 By a small entity (§ 1.27(a)) 128.00 By other than a small or micro entity 320.00 [85 FR 46991, Aug. 3, 2020, as amended at 88 FR 17157, Mar. 22, 2023]
37 CFR 1.485 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Amendments by applicant during international preliminary examination.

§ 1.485 Amendments by applicant during international preliminary examination. The applicant may make amendments at the time of filing the Demand. The applicant may also make amendments within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must be made in accordance with PCT Rule 66.8. [74 FR 31373, July 1, 2009]
37 CFR 1.488 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Determination of unity of invention before the International Preliminary Examining Authority.

§ 1.488 Determination of unity of invention before the International Preliminary Examining Authority. (a) Before establishing any written opinion or the international preliminary examination report, the International Preliminary Examining Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475. (b) If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention, it may: (1) Issue a written opinion and/or an international preliminary examination report, in respect of the entire international application and indicate that unity of invention is lacking and specify the reasons therefor without extending an invitation to restrict or pay additional fees. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority. (2) Invite the applicant to restrict the claims or pay additional fees, pointing out the categories of invention found, within a set time limit which will not be extended. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority, or (3) If applicant fails to restrict the claims or pay additional fees within the time limit set for reply, the International Preliminary Examining Authority will issue a written opinion and/or establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said report. In case of any doubt as to which invention is the main invention, the invention first mentioned in the claims and previously searched by an International Searching Authority shall be considered the main invention. (c) Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Preliminary Examining Authority may raise the objection of lack of unity of invention. [52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 FR 53200, Oct. 10, 1997]
37 CFR 1.489 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Protest to lack of unity of invention before the International Preliminary Examining Authority.

§ 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority. (a) If the applicant disagrees with the holding of lack of unity of invention by the International Preliminary Examining Authority, additional fees may be paid under protest, accompanied by a request for refund and a statement setting forth reasons for disagreement or why the required additional fees are considered excessive, or both. (b) Protest under paragraph (a) of this section will be examined by the Director or the Director's designee. In the event that the applicant's protest is determined to be justified, the additional fees or a portion thereof will be refunded. (c) An applicant who desires that a copy of the protest and the decision thereon accompany the international preliminary examination report when forwarded to the Elected Offices, may notify the International Preliminary Examining Authority to that effect any time prior to the issuance of the international preliminary examination report. Thereafter, such notification should be directed to the International Bureau. [52 FR 20050, May 28, 1987]
37 CFR 1.491 — Rules of Practice in Patent Cases
Current through: 2024-07-01

National stage commencement, entry, and fulfillment.

§ 1.491 National stage commencement, entry, and fulfillment. (a) Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22 (1) or (2), or under PCT Article 39(1)(a). (b) An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c)(1) and (c)(2) within the period set in § 1.495. (c) An international application fulfills the requirements of 35 U.S.C. 371 when the national stage has commenced under 35 U.S.C. 371(b) or (f) and all applicable requirements of 35 U.S.C. 371 have been satisfied. [67 FR 523, Jan. 4, 2002, as amended at 77 FR 48823, Aug. 14, 2012]
37 CFR 1.496 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Examination of international applications in the national stage.

§ 1.496 Examination of international applications in the national stage. National stage applications having paid therein the search fee as set forth in § 1.492(b)(1) and examination fee as set forth in § 1.492(c)(1) may be amended subsequent to the date of commencement of national stage processing only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications will be advanced out of turn for examination. [77 FR 48824, Aug. 14, 2012]
37 CFR 1.497 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Inventor's oath or declaration under 35 U.S.C. 371(c)(4).

§ 1.497 Inventor's oath or declaration under 35 U.S.C. 371(c)(4). (a) When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to § 1.495, and a declaration in compliance with § 1.63 has not been previously submitted in the international application under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 26 ter. 1, the applicant must file the inventor's oath or declaration. The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration in accordance with the conditions and requirements of § 1.63, except as provided for in § 1.64. (b) An oath or declaration under § 1.63 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.63(a), (c) and (g). A substitute statement under § 1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it complies with the requirements of §§ 1.64(b)(1), (c) and (e) and identifies the person executing the substitute statement. If a newly executed inventor's oath or declaration under § 1.63 or substitute statement under § 1.64 is not required pursuant to § 1.63(d), submission of the copy of the previously executed oath, declaration, or substitute statement under § 1.63(d)(1) is required to comply with 35 U.S.C. 371(c)(4). (c) If an oath or declaration under § 1.63, or substitute statement under § 1.64, meeting the requirements of § 1.497(b) does not also meet the requirements of § 1.63 or § 1.64, an oath, declaration, substitute statement, or application data sheet in accordance with § 1.76 to comply with § 1.63 or § 1.64 will be required. [77 FR 48824, Aug. 14, 2012]
37 CFR 1.499 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Unity of invention during the national stage.

§ 1.499 Unity of invention during the national stage. If the examiner finds that a national stage application lacks unity of invention under § 1.475, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Review of any such requirement is provided under §§ 1.143 and 1.144. [58 FR 4347, Jan. 14, 1993]
37 CFR 1.502 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Processing of prior art citations during an ex parte reexamination proceeding.

§ 1.502 Processing of prior art citations during an ex parte reexamination proceeding. Citations by the patent owner under § 1.555 and by an ex parte reexamination requester under either § 1.510 or § 1.535 will be entered in the reexamination file during a reexamination proceeding. The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or an ex parte reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.902 for processing of prior art citations in patent and reexamination files during an inter partes reexamination proceeding filed under § 1.913. [72 FR 18905, Apr. 16, 2007]
37 CFR 1.515 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Determination of the request for ex parte reexamination.

§ 1.515 Determination of the request for ex parte reexamination. (a) Within three months following the filing date of a request for an ex parte reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications. A statement and any accompanying information submitted pursuant to § 1.501(a)(2) will not be considered by the examiner when making a determination on the request. The examiner's determination will be based on the claims in effect at the time of the determination, will become a part of the official file of the patent, and will be given or mailed to the patent owner at the address provided for in § 1.33(c) and to the person requesting reexamination. (b) Where no substantial new question of patentability has been found, a refund of a portion of the fee for requesting ex parte reexamination will be made to the requester in accordance with § 1.26(c). (c) The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner's determination refusing ex parte reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable. [65 FR 76775, Dec. 7, 2000, as amended at 77 FR 46626, Aug. 6, 2012]
37 CFR 1.51 — Rules of Practice in Patent Cases
Current through: 2024-07-01

General requisites of an application.

§ 1.51 General requisites of an application. (a) Applications for patents must be made to the Director of the United States Patent and Trademark Office. An application transmittal letter limited to the transmittal of the documents and fees comprising a patent application under this section may be signed by a juristic applicant or patent owner. (b) A complete application filed under § 1.53(b) or § 1.53(d) comprises: (1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77; (2) The inventor's oath or declaration, see §§ 1.63 and 1.64; (3) Drawings, when necessary, see §§ 1.81 to 1.85; and (4) The prescribed filing fee, search fee, examination fee, and application size fee, see § 1.16. (c) A complete provisional application filed under § 1.53(c) comprises: (1) A cover sheet identifying: (i) The application as a provisional application, (ii) The name or names of the inventor or inventors, (see § 1.41(a)(2)), (iii) The residence of each named inventor, (iv) The title of the invention, (v) The name and registration number of the attorney or agent (if applicable), (vi) The docket number used by the person filing the application to identify the application (if applicable), (vii) The correspondence address, and (viii) The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government); (2) A specification as prescribed by 35 U.S.C. 112(a), see § 1.71; (3) Drawings, when necessary, see §§ 1.81 to 1.85; and (4) The prescribed filing fee and application size fee, see § 1.16. (d) Applicants are encouraged to file an information disclosure statement in nonprovisional applications. See § 1.97 and § 1.98. No information disclosure statement may be filed in a provisional application. [62 FR 53185, Oct. 10, 1997, as amended at 65 FR 54664, Sept. 8, 2000; 68 FR 14336, Mar. 25, 2003; 70 FR 3889, Jan. 27, 2005; 77 FR 46624, Aug. 6, 2012; 77 FR 48816, Aug. 14, 2012; 78 FR 62396, Oct. 21, 2013]
37 CFR 1.520 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Ex parte reexamination at the initiative of the Director.

§ 1.520 Ex parte reexamination at the initiative of the Director. The Director, at any time during the period of enforceability of a patent, may determine whether or not a substantial new question of patentability is raised by patents or printed publications which have been discovered by the Director or which have been brought to the Director's attention, even though no request for reexamination has been filed in accordance with § 1.510 or § 1.913. The Director may initiate ex parte reexamination without a request for reexamination pursuant to § 1.510 or § 1.913. Normally requests from outside the Office that the Director undertake reexamination on his own initiative will not be considered. Any determination to initiate ex parte reexamination under this section will become a part of the official file of the patent and will be mailed to the patent owner at the address as provided for in § 1.33(c). [65 FR 76775, Dec. 7, 2000]
37 CFR 1.525 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Order for ex parte reexamination.

§ 1.525 Order for ex parte reexamination. (a) If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination will include an order for ex parte reexamination of the patent for resolution of the question. If the order for ex parte reexamination resulted from a petition pursuant to § 1.515(c), the ex parte reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.515(a). (b) The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice and ex parte reexamination will proceed. [65 FR 76775, Dec. 7, 2000]
37 CFR 1.535 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Reply by third party requester in ex parte reexamination.

§ 1.535 Reply by third party requester in ex parte reexamination. A reply to the patent owner's statement under § 1.530 may be filed by the ex parte reexamination requester within two months from the date of service of the patent owner's statement. Any reply by the ex parte requester must be served upon the patent owner in accordance with § 1.248. If the patent owner does not file a statement under § 1.530, no reply or other submission from the ex parte reexamination requester will be considered. [65 FR 76776, Dec. 7, 2000]
37 CFR 1.540 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Consideration of responses in ex parte reexamination.

§ 1.540 Consideration of responses in ex parte reexamination. The failure to timely file or serve the documents set forth in § 1.530 or in § 1.535 may result in their being refused consideration. No submissions other than the statement pursuant to § 1.530 and the reply by the ex parte reexamination requester pursuant to § 1.535 will be considered prior to examination. [65 FR 76776, Dec. 7, 2000]
37 CFR 1.54 — Rules of Practice in Patent Cases
Current through: 2024-07-01

Parts of application to be filed together; filing receipt.

§ 1.54 Parts of application to be filed together; filing receipt. (a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53 (f) and (g) with regard to completion of an application. (b) Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under § 1.53(d). A letter limited to a request for a filing receipt may be signed by a juristic applicant or patent owner. [62 FR 53188, Oct. 10, 1997, as amended at 78 FR 62399, Oct. 21, 2013]