  June 29, 2020

      Title 37
      Patents, Trademarks, and Copyrights
      Revised as of July 1, 2020
      Containing a codification of documents of general applicability and future effect
      As of July 1, 2020

        Published by the Office of the Federal Register National Archives and Records Administration as a Special Edition of the Federal Register

        U.S. GOVERNMENT OFFICIAL EDITION NOTICE
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      Table of Contents
      Page

        Explanation
        v

        Title 37:

          Chapter I—United States Patent and Trademark Office, Department of Commerce
          3

          Chapter II—U.S. Copyright Office, Library of Congress
          553

          Chapter III—Copyright Royalty Board, Library of Congress
          757

          Chapter IV—National Institute of Standards and Technology, Department of Commerce
          867

          Chapter V [Reserved]

        Finding Aids:
        Table of CFR Titles and Chapters
        899
        Alphabetical List of Agencies Appearing in the CFR
        919
        List of CFR Sections Affected
        929

      Cite this Code: CFR

      To cite the regulations in this volume use title, part and section number. Thus, 37 CFR 1.1 refers to title 37, part 1, section 1.

      Explanation
      The Code of Federal Regulations is a codification of the general and permanent rules published in the Federal Register by the Executive departments and agencies of the Federal Government. The Code is divided into 50 titles which represent broad areas subject to Federal regulation. Each title is divided into chapters which usually bear the name of the issuing agency. Each chapter is further subdivided into parts covering specific regulatory areas.
      Each volume of the Code is revised at least once each calendar year and issued on a quarterly basis approximately as follows:

        Title 1 through Title 16
        as of January 1
        Title 17 through Title 27
        as of April 1
        Title 28 through Title 41
        as of July 1
        Title 42 through Title 50
        as of October 1

      The appropriate revision date is printed on the cover of each volume.

        LEGAL STATUS
        The contents of the Federal Register are required to be judicially noticed (44 U.S.C. 1507). The Code of Federal Regulations is prima facie evidence of the text of the original documents (44 U.S.C. 1510).

        HOW TO USE THE CODE OF FEDERAL REGULATIONS
        The Code of Federal Regulations is kept up to date by the individual issues of the Federal Register. These two publications must be used together to determine the latest version of any given rule.
        To determine whether a Code volume has been amended since its revision date (in this case, July 1, 2020), consult the “List of CFR Sections Affected (LSA),” which is issued monthly, and the “Cumulative List of Parts Affected,” which appears in the Reader Aids section of the daily Federal Register. These two lists will identify the Federal Register page number of the latest amendment of any given rule.

        EFFECTIVE AND EXPIRATION DATES
        Each volume of the Code contains amendments published in the Federal Register since the last revision of that volume of the Code. Source citations for the regulations are referred to by volume number and page number of the Federal Register and date of publication. Publication dates and effective dates are usually not the same and care must be exercised by the user in determining the actual effective date. In instances where the effective date is beyond the cut-off date for the Code a note has been inserted to reflect the future effective date. In those instances where a regulation published in the Federal Register states a date certain for expiration, an appropriate note will be inserted following the text.

        OMB CONTROL NUMBERS

        The Paperwork Reduction Act of 1980 (Pub. L. 96-511) requires Federal agencies to display an OMB control number with their information collection request. Many agencies have begun publishing numerous OMB control numbers as amendments to existing regulations in the CFR. These OMB numbers are placed as close as possible to the applicable recordkeeping or reporting requirements.

        PAST PROVISIONS OF THE CODE
        Provisions of the Code that are no longer in force and effect as of the revision date stated on the cover of each volume are not carried. Code users may find the text of provisions in effect on any given date in the past by using the appropriate List of CFR Sections Affected (LSA). For the convenience of the reader, a “List of CFR Sections Affected” is published at the end of each CFR volume. For changes to the Code prior to the LSA listings at the end of the volume, consult previous annual editions of the LSA. For changes to the Code prior to 2001, consult the List of CFR Sections Affected compilations, published for 1949-1963, 1964-1972, 1973-1985, and 1986-2000.

        “[RESERVED]” TERMINOLOGY
        The term “[Reserved]” is used as a place holder within the Code of Federal Regulations. An agency may add regulatory information at a “[Reserved]” location at any time. Occasionally “[Reserved]” is used editorially to indicate that a portion of the CFR was left vacant and not dropped in error.

        INCORPORATION BY REFERENCE

          What is incorporation by reference? Incorporation by reference was established by statute and allows Federal agencies to meet the requirement to publish regulations in the Federal Register by referring to materials already published elsewhere. For an incorporation to be valid, the Director of the Federal Register must approve it. The legal effect of incorporation by reference is that the material is treated as if it were published in full in the Federal Register (5 U.S.C. 552(a)). This material, like any other properly issued regulation, has the force of law.

          What is a proper incorporation by reference? The Director of the Federal Register will approve an incorporation by reference only when the requirements of 1 CFR part 51 are met. Some of the elements on which approval is based are:
        (a) The incorporation will substantially reduce the volume of material published in the Federal Register.
        (b) The matter incorporated is in fact available to the extent necessary to afford fairness and uniformity in the administrative process.
        (c) The incorporating document is drafted and submitted for publication in accordance with 1 CFR part 51.

          What if the material incorporated by reference cannot be found? If you have any problem locating or obtaining a copy of material listed as an approved incorporation by reference, please contact the agency that issued the regulation containing that incorporation. If, after contacting the agency, you find the material is not available, please notify the Director of the Federal Register, National Archives and Records Administration, 8601 Adelphi Road, College Park, MD 20740-6001, or call 202-741-6010.

        CFR INDEXES AND TABULAR GUIDES

        A subject index to the Code of Federal Regulations is contained in a separate volume, revised annually as of January 1, entitled CFR Index and Finding Aids. This volume contains the Parallel Table of Authorities and Rules. A list of CFR titles, chapters, subchapters, and parts and an alphabetical list of agencies publishing in the CFR are also included in this volume.

        An index to the text of “Title 3—The President” is carried within that volume.

        The Federal Register Index is issued monthly in cumulative form. This index is based on a consolidation of the “Contents” entries in the daily Federal Register.
        A List of CFR Sections Affected (LSA) is published monthly, keyed to the revision dates of the 50 CFR titles.

        REPUBLICATION OF MATERIAL
        There are no restrictions on the republication of material appearing in the Code of Federal Regulations.

        INQUIRIES
        For a legal interpretation or explanation of any regulation in this volume, contact the issuing agency. The issuing agency's name appears at the top of odd-numbered pages.

        For inquiries concerning CFR reference assistance, call 202-741-6000 or write to the Director, Office of the Federal Register, National Archives and Records Administration, 8601 Adelphi Road, College Park, MD 20740-6001 or e-mail fedreg.info@nara.gov.

        SALES
        The Government Publishing Office (GPO) processes all sales and distribution of the CFR. For payment by credit card, call toll-free, 866-512-1800, or DC area, 202-512-1800, M-F 8 a.m. to 4 p.m. e.s.t. or fax your order to 202-512-2104, 24 hours a day. For payment by check, write to: US Government Publishing Office - New Orders, P.O. Box 979050, St. Louis, MO 63197-9000.

        ELECTRONIC SERVICES

        The full text of the Code of Federal Regulations, the LSA (List of CFR Sections Affected), The United States Government Manual, the Federal Register, Public Laws, Public Papers of the Presidents of the United States, Compilation of Presidential Documents and the Privacy Act Compilation are available in electronic format via www.govinfo.gov. For more information, contact the GPO Customer Contact Center, U.S. Government Publishing Office. Phone 202-512-1800, or 866-512-1800 (toll-free). E-mail, ContactCenter@gpo.gov.

        The Office of the Federal Register also offers a free service on the National Archives and Records Administration's (NARA) website for public law numbers, Federal Register finding aids, and related information. Connect to NARA's website at www.archives.gov/federal-register.

        The e-CFR is a regularly updated, unofficial editorial compilation of CFR material and Federal Register amendments, produced by the Office of the Federal Register and the Government Publishing Office. It is available at www.ecfr.gov.

          Oliver A. Potts,

          Director,

          Office of the Federal Register

          July 1, 2020.

      THIS TITLE
      Title 37—Patents, Trademarks and Copyrights is composed of one volume. The contents of this volume represent all current regulations codified under this title of the CFR as of July 1, 2020.
      The parts in chapter I, subchapter A, are regrouped according to subject matter. All parts pertaining to patents—parts 1, 3, 4, and 5—appear sequentially. All parts pertaining to trademarks—parts 2, 6, and 7—follow, also in sequence. Part 3, which pertains to both patents and trademarks, follows the first part.
      Indexes appear after parts 5, 7 and 41, within chapter I. An index to chapter II appears at the end of the chapter.
      For this volume, Susannah C. Hurley was Chief Editor. The Code of Federal Regulations publication program is under the direction of John Hyrum Martinez, assisted by Stephen J. Frattini.

    37 CFR Ch. I (7-1-20 Edition)
    U.S. Patent and Trademark Office, Commerce

        Title 37—Patents, Trademarks, and Copyrights

        Part

            chapter i—United States Patent and Trademark Office, Department of Commerce
          1

            chapter ii—U.S. Copyright Office, Library of Congress
          201

            chapter iii—Copyright Royalty Board, Library of Congress
          301

            chapter iv—National Institute of Standards and Technology, Department of Commerce
          401

            chapter v—[Reserved]

          CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

          Editorial Note:
          Chapter I—United States Patent and Trademark Office, Department of Commerce, Subchapter A—General, contains patent and trademark regulations. Subchapter A has been restructured to allow parts pertaining to patent regulations and trademark regulations to be grouped separately. For further explanation see This Title, page ix.

          SUBCHAPTER A—GENERAL

        PATENTS
        Part
        Page

          1
          Rules of practice in patent cases
          5
          3
          Assignment, recording and rights of assignee
          217
          4
          Complaints regarding invention promoters
          225
          5
          Secrecy of certain inventions and licenses to export and file applications in foreign countries
          227

          Index I—Rules relating to patents
          235

        TRADEMARKS

          2
          Rules of practice in trademark cases
          261
          6
          Classification of goods and services under the Trademark Act
          352
          7
          Rules of practice in filings pursuant to the protocol relating to the Madrid agreement concerning the international registration of marks
          355

          Index II—Rules relating to trademarks
          367

        PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

          10
          [Reserved]
          11
          Representation of others before the United States Patent and Trademark Office
          389
          15-15a
          [Reserved]
          41
          Practice before the Patent Trial and Appeal Board
          454
          42
          Trial practice before the Patent Trial and Appeal Board
          486
          90
          Judicial review of Patent Trial and Appeal Board decisions
          513

          Index III—Rules relating to practice before the Patent and Trademark Office
          515

          SUBCHAPTER B—ADMINISTRATION

          100-101
          [Reserved]
          102
          Disclosure of government information
          521
          104
          Legal processes
          545

          SUBCHAPTER C—PROTECTION OF FOREIGN MASK WORKS

          150
          Requests for Presidential proclamations pursuant to 17 U.S.C. 902(a)(2)
          550
          151-199
          [Reserved]

        SUBCHAPTER A—GENERAL

            PATENTS

          Pt. 1
          PART 1—RULES OF PRACTICE IN PATENT CASES

              Subpart A—General Provisions

                General Information and Correspondence
                Sec.
                1.1
                Addresses for non-trademark correspondence with the United States Patent and Trademark Office.
                1.2
                Business to be transacted in writing.
                1.3
                Business to be conducted with decorum and courtesy.
                1.4
                Nature of correspondence and signature requirements.
                1.5
                Identification of patent, patent application, or patent-related proceeding.
                1.6
                Receipt of correspondence.
                1.7
                Times for taking action; Expiration on Saturday, Sunday or Federal holiday.
                1.8
                Certificate of mailing or transmission.
                1.9
                Definitions.
                1.10
                Filing of correspondence by Priority Mail Express®.

                Records and Files of the Patent and Trademark Office
                1.11
                Files open to the public.
                1.12
                Assignment records open to public inspection.
                1.13
                Copies and certified copies.
                1.14
                Patent applications preserved in confidence.
                1.15
                Requests for identifiable records.

                Fees and Payment of Money
                1.16
                National application filing, search, and examination fees.
                1.17
                Patent application and reexamination processing fees.
                1.18
                Patent post allowance (including issue) fees.
                1.19
                Document supply fees.
                1.20
                Post issuance fees.
                1.21
                Miscellaneous fees and charges.
                1.22
                Fees payable in advance.
                1.23
                Methods of payment.
                1.24
                [Reserved]
                1.25
                Deposit accounts.
                1.26
                Refunds.
                1.27
                Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
                1.28
                Refunds when small entity status is later established; how errors in small entity status are excused.
                1.29
                Micro entity status.

              Subpart B—National Processing Provisions

                Prosecution of Application and Appointment of Attorney or Agent
                1.31
                Applicant may be represented by one or more patent practitioners or joint inventors.
                1.32
                Power of attorney.
                1.33
                Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
                1.34
                Acting in a representative capacity.
                1.36
                Revocation of power of attorney; withdrawal of patent attorney or agent.

                Who May Apply for a Patent
                1.41
                Inventorship.
                1.42
                Applicant for patent.
                1.43
                Application for patent by a legal representative of a deceased or legally incapacitated inventor.
                1.44
                [Reserved]
                1.45
                Application for patent by joint inventors.
                1.46
                Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
                1.47
                [Reserved]
                1.48
                Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.

                The Application
                1.51
                General requisites of an application.
                1.52
                Language, paper, writing, margins, compact disc specifications.
                1.53
                Application number, filing date, and completion of application.
                1.54
                Parts of application to be filed together; filing receipt.
                1.55
                Claim for foreign priority.
                1.56
                Duty to disclose information material to patentability.
                1.57
                Incorporation by reference.
                1.58
                Chemical and mathematical formulae and tables.
                1.59
                Expungement of information or copy of papers in application file.
                1.60-162
                [Reserved]

                Oath or Declaration
                1.63
                Inventor's oath or declaration.
                1.64
                Substitute statement in lieu of an oath or declaration.
                1.66
                Statements under oath.

                1.67
                Supplemental oath or declaration.
                1.68
                Declaration in lieu of oath.
                1.69
                Foreign language oaths and declarations.
                1.70
                [Reserved]

                Specification
                1.71
                Detailed description and specification of the invention.
                1.72
                Title and abstract.
                1.73
                Summary of the invention.
                1.74
                Reference to drawings.
                1.75
                Claim(s).
                1.76
                Application data sheet.
                1.77
                Arrangement of application elements.
                1.78
                Claiming benefit of earlier filing date and cross-references to other applications.
                1.79
                [Reserved]

                The Drawings
                1.81
                Drawings required in patent application.
                1.83
                Content of drawing.
                1.84
                Standards for drawings.
                1.85
                Corrections to drawings.
                1.88
                [Reserved]

                Models, Exhibits, Specimens
                1.91
                Models or exhibits not generally admitted as part of application or patent.
                1.92
                [Reserved]
                1.93
                Specimens.
                1.94
                Return of models, exhibits or specimens.
                1.95
                Copies of exhibits.
                1.96
                Submission of computer program listings.

                Information Disclosure Statement
                1.97
                Filing information disclosure statement.
                1.98
                Content of information disclosure statement.
                1.99
                [Reserved]

                Examination of Applications
                1.101
                [Reserved]
                1.102
                Advancement of examination.
                1.103
                Suspension of action by the Office.
                1.104
                Nature of examination.
                1.105
                Requirements for information.
                1.106-1.109
                [Reserved]
                1.109
                Effective filing date of a claimed invention under the Leahy-Smith America Invents Act.
                1.110
                Inventorship and ownership of the subject matter of individual claims.

                Action by Applicant and Further Consideration
                1.111
                Reply by applicant or patent owner to a non-final Office action.
                1.112
                Reconsideration before final action.
                1.113
                Final rejection or action.
                1.114
                Request for continued examination.

                Amendments
                1.115
                Preliminary amendments.
                1.116
                Amendments and affidavits or other evidence after final action and prior to appeal.
                1.117-1.119
                [Reserved]
                1.121
                Manner of making amendments in applications.
                1.122-1.124
                [Reserved]
                1.125
                Substitute specification.
                1.126
                Numbering of claims.
                1.127
                [Reserved]

                Transitional Provisions
                1.129
                Transitional procedures for limited examination after final rejection and restriction practice.

                Affidavits Overcoming Rejections
                1.130
                Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
                1.131
                Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.
                1.132
                Affidavits or declarations traversing rejections or objections.

                Interviews
                1.133
                Interviews.

                Time for Reply by Applicant; Abandonment of Application
                1.134
                Time period for reply to an Office action.
                1.135
                Abandonment for failure to reply within time period.
                1.136
                Extensions of time.
                1.137
                Revival of abandoned application, or terminated or limited reexamination prosecution.
                1.138
                Express abandonment.
                1.139
                [Reserved]

                Joinder of Inventions in One Application; Restriction
                1.141
                Different inventions in one national application.
                1.142
                Requirement for restriction.
                1.143
                Reconsideration of requirement.
                1.144
                Petition from requirement for restriction.
                1.145
                Subsequent presentation of claims for different invention.
                1.146
                Election of species.

                Design Patents
                1.151
                Rules applicable.
                1.152
                Design drawings.
                1.153

                Title, description and claim, oath or declaration.

                1.154
                Arrangement of application elements in a design application.
                1.155
                Expedited examination of design applications.

                Plant Patents
                1.161
                Rules applicable.
                1.162
                Applicant, oath or declaration.
                1.163
                Specification and arrangement of application elements in a plant application.
                1.164
                Claim.
                1.165
                Plant drawings.
                1.166
                Specimens.
                1.167
                Examination.

                Reissues
                1.171
                Application for reissue.
                1.172
                Reissue applicant.
                1.173
                Reissue specification, drawings, and amendments.
                1.174
                [Reserved]
                1.175
                Inventor's oath or declaration for a reissue application.
                1.176
                Examination of reissue.
                1.177
                Issuance of multiple reissue patents.
                1.178
                Original patent; continuing duty of applicant.
                1.179
                [Reserved]

                Petitions and Action by the Director
                1.181
                Petition to the Director.
                1.182
                Questions not specifically provided for.
                1.183
                Suspension of rules.
                1.184
                [Reserved]

                Appeal to the Patent Trial and Appeal Board
                1.191
                Appeal to Patent Trial and Appeal Board.
                1.192-1.196
                [Reserved]
                1.197
                Termination of proceedings.
                1.198
                Reopening after a final decision of the Patent Trial and Appeal Board.

                Publication of Applications.
                1.211
                Publication of applications.
                1.213
                Nonpublication request.
                1.215
                Patent application publication.
                1.217
                Publication of a redacted copy of an application.
                1.219
                Early publication.
                1.221
                Voluntary publication or republication of patent application publication.

                Miscellaneous Provisions
                1.248
                Service of papers; manner of service; proof of service in cases other than interferences and trials.
                1.251
                Unlocatable file.

                Preissuance Submissions and Protests by Third Parties
                1.290
                Submissions by third parties in applications.
                1.291
                Protests by the public against pending applications.
                1.292
                [Reserved]
                1.293-1.297
                [Reserved]

                Review of Patent and Trademark Office Decisions by Court
                1.301-1.304
                [Reserved]

                Allowance and Issue of Patent
                1.311
                Notice of allowance.
                1.312
                Amendments after allowance.
                1.313
                Withdrawal from issue.
                1.314
                Issuance of patent.
                1.315
                Delivery of patent.
                1.316
                Application abandoned for failure to pay issue fee.
                1.317-1.318
                [Reserved]

                Disclaimer
                1.321
                Statutory disclaimers, including terminal disclaimers.

                Correction of Errors in Patent
                1.322
                Certificate of correction of Office mistake.
                1.323
                Certificate of correction of applicant's mistake.
                1.324
                Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
                1.325
                Other mistakes not corrected.

                Arbitration Awards
                1.331-1.334
                [Reserved]
                1.335
                Filing of notice of arbitration awards.
                1.351-352
                [Reserved]

                Maintenance Fees
                1.362
                Time for payment of maintenance fees.
                1.363
                Fee address for maintenance fee purposes.
                1.366
                Submission of maintenance fees.
                1.377
                Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
                1.378
                Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

              Subpart C—International Processing Provisions

                General Information
                1.401
                Definitions of terms under the Patent Cooperation Treaty.
                1.412
                The United States Receiving Office.
                1.413
                The United States International Searching Authority.
                1.414
                The United States Patent and Trademark Office as a Designated Office or Elected Office.
                1.415
                The International Bureau.
                1.416

                The United States International Preliminary Examining Authority.

                1.417
                Submission of translation of international publication.
                1.419
                Display of currently valid control number under the Paperwork Reduction Act.

                Who May File an International Application
                1.421
                Applicant for international application.
                1.422
                Legal representative as applicant in an international application.
                1.423
                [Reserved]
                1.424
                Assignee, obligated assignee, or person having sufficient proprietary interest as applicant in an international application.

                The International Application
                1.431
                International application requirements.
                1.432
                Designation of States by filing an international application.
                1.433
                Physical requirements of international application.
                1.434
                The request.
                1.435
                The description.
                1.436
                The claims.
                1.437
                The drawings.
                1.438
                The abstract.

                Fees
                1.445
                International application filing, processing and search fees.
                1.446
                Refund of international application filing and processing fees.

                Priority
                1.451
                The priority claim and priority document in an international application.
                1.452
                Restoration of right of priority.
                1.453
                Transmittal of documents relating to earlier search or classification.

                Representation
                1.455
                Representation in international applications.

                Transmittal of Record Copy
                1.461
                Procedures for transmittal of record copy to the International Bureau.

                Timing
                1.465
                Timing of application processing based on the priority date.
                1.468
                Delays in meeting time limits.

                Amendments
                1.471
                Corrections and amendments during international processing.
                1.472
                Changes in person, name, or address of applicants and inventors.

                Unity of Invention
                1.475
                Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
                1.476
                Determination of unity of invention before the International Searching Authority.
                1.477
                Protest to lack of unity of invention before the International Searching Authority.

                International Preliminary Examination
                1.480
                Demand for international preliminary examination.
                1.481
                Payment of international preliminary examination fees.
                1.482
                International preliminary examination and processing fees.
                1.484
                Conduct of international preliminary examination.
                1.485
                Amendments by applicant during international preliminary examination.
                1.488
                Determination 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.

                National Stage
                1.491
                National stage commencement, entry, and fulfillment.
                1.492
                National stage fees.
                1.494
                Entering the national stage in the United States of America as a Designated Office.
                1.495
                Entering the national stage in the United States of America.
                1.496
                Examination of international applications in the national stage.
                1.497
                Inventor's oath or declaration under 35 U.S.C. 371(c)(4).
                1.499
                Unity of invention during the national stage.

              Subpart D—Ex Parte Reexamination of Patents

                Citation of Prior Art and Written Statements
                1.501
                Citation of prior art and written statements in patent files.
                1.502
                Processing of prior art citations during an ex parte reexamination proceeding.

                Request for Ex Parte Reexamination
                1.510
                Request for ex parte reexamination.
                1.515
                Determination of the request for ex parte

                1.520

                  Ex parte reexamination at the initiative of the Director.

                  Ex Parte Reexamination
                1.525
                Order for ex parte reexamination.

                1.530
                Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.
                1.535
                Reply by third party requester in ex parte reexamination.
                1.540
                Consideration of responses in ex parte reexamination.
                1.550
                Conduct of ex parte reexamination proceedings.
                1.552
                Scope of reexamination in ex parte reexamination proceedings.
                1.555
                Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.
                1.560
                Interviews in ex parte reexamination proceedings.
                1.565

                Concurrent office proceedings which include an ex parte reexamination proceeding.

                  Ex Parte Reexamination Certificate
                1.570
                Issuance of ex parte reexamination certificate after ex parte reexamination proceedings.

              Subpart E—Supplemental Examination of Patents
              1.601
              Filing of papers in supplemental examination.
              1.605
              Items of information.
              1.610
              Content of request for supplemental examination.
              1.615
              Format of papers filed in a supplemental examination proceeding.
              1.620
              Conduct of supplemental examination proceeding.
              1.625
              Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.

              Subpart F—Adjustment and Extension of Patent Term

                Adjustment of Patent Term Due to Examination Delay
                1.701
                Extension of patent term due to examination delay under the Uruguay Round Agreements Act of 1999 (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).
                1.702
                Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).
                1.703
                Period of adjustment of patent term due to examination delay.
                1.704
                Reduction of period of adjustment of patent term.
                1.705
                Patent term adjustment determination.

                Extension of Patent Term Due to Regulatory Review
                1.710
                Patents subject to extension of the patent term.
                1.720
                Conditions for extension of patent term.
                1.730
                Applicant for extension of patent term; signature requirements.
                1.740
                Formal requirements for application for extension of patent term; correction of informalities.
                1.741
                Complete application given a filing date; petition procedure.
                1.750
                Determination of eligibility for extension of patent term.
                1.760
                Interim extension of patent term under 35 U.S.C. 156(e)(2).
                1.765
                Duty of disclosure in patent term extension proceedings.
                1.770
                Express withdrawal of application for extension of patent term.
                1.775
                Calculation of patent term extension for a human drug, antibiotic drug or human biological product.
                1.776
                Calculation of patent term extension for a food additive or color additive.
                1.777
                Calculation of patent term extension for a medical device.
                1.778
                Calculation of patent term extension for an animal drug product.
                1.779
                Calculation of patent term extension for a veterinary biological product.
                1.780
                Certificate or order of extension of patent term.
                1.785
                Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
                1.790
                Interim extension of patent term under 35 U.S.C. 156(d)(5).
                1.791
                Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.

              Subpart G—Biotechnology Invention Disclosures

                Deposit of Biological Material
                1.801
                Biological material.
                1.802
                Need or Opportunity to make a deposit.
                1.803
                Acceptable depository.
                1.804
                Time of making an original deposit.
                1.805
                Replacement or supplement of deposit.
                1.806
                Term of deposit.
                1.807
                Viability of deposit.
                1.808
                Furnishing of samples.
                1.809
                Examination procedures.

                Application Disclosures Containing Nucleotide and/or Amino Acid Sequences
                1.821

                Nucleotide and/or amino acid sequence disclosures in patent applications.

                1.822
                Symbols and format to be used for nucleotide and/or amino acid sequence data.
                1.823
                Requirements for nucleotide and/or amino acid sequences as part of the application.
                1.824
                Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
                1.825
                Amendments to or replacement of sequence listing and computer readable copy thereof.
                Appendix A to Subpart G of Part 1—Sample Sequence Listing

              Subpart H—Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or After November 29, 1999

                Prior Art Citations
                1.902
                Processing of prior art citations during an inter partes reexamination proceeding.

                Requirements for Inter Partes Reexamination Proceedings
                1.903
                Service of papers on parties in inter partes reexamination.
                1.904
                Notice of inter partes reexamination in Official Gazette.

                1.905
                Submission of papers by the public in inter partes reexamination.
                1.906
                Scope of reexamination in inter partes reexamination proceeding.
                1.907

                  Inter partes reexamination prohibited.
                1.913

                Persons eligible to file, and time for filing, a request for inter partes reexamination.
                1.915
                Content of request for inter partes reexamination.
                1.919
                Filing date of request for inter partes reexamination.
                1.923
                Examiner's determination on the request for inter partes reexamination.
                1.925
                Partial refund if request for inter partes reexamination is not ordered.
                1.927
                Petition to review refusal to order inter partes reexamination.

                  Inter Partes Reexamination of Patents
                1.931
                Order for inter partes reexamination.

                Information Disclosure in Inter Partes Reexamination
                1.933
                Patent owner duty of disclosure in inter partes reexamination proceedings.

                Office Actions and Responses (Before the Examiner) in Inter Partes Reexamination
                1.935

                Initial Office action usually accompanies order for inter partes reexamination.
                1.937
                Conduct of inter partes reexamination.
                1.939
                Unauthorized papers in inter partes reexamination.
                1.941
                Amendments by patent owner in inter partes reexamination.
                1.943

                Requirements of responses, written comments, and briefs in inter partes reexamination.
                1.945
                Response to Office action by patent owner in inter partes reexamination.
                1.947

                Comments by third party requester to patent owner's response in inter partes reexamination.
                1.948

                Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
                1.949

                Examiner's Office action closing prosecution in inter partes reexamination.
                1.951

                Options after Office action closing prosecution in inter partes reexamination.
                1.953
                Examiner's Right of Appeal Notice in inter partes reexamination.

                Interviews Prohibited in Inter Partes Reexamination
                1.955
                Interviews prohibited in inter partes reexamination proceedings.

                Extensions of Time, Terminating of Reexamination Prosecution, and Petitions To Revive in Inter Partes Reexamination
                1.956
                Patent owner extensions of time in inter partes reexamination.
                1.957

                Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.
                1.958
                Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.

                Appeal to the Patent Trial and Appeal Board in Inter Partes Reexamination
                1.959
                Appeal in inter partes reexamination.
                1.961-1.977
                [Reserved]
                1.979
                Return of Jurisdiction from the Patent Trial and Appeal Board; termination of appeal proceedings.
                1.981
                Reopening after a final decision of the Patent Trial and Appeal Board.

                Appeal to the United States Court of Appeals for the Federal Circuit in Inter Partes Reexamination
                1.983

                Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.

                Concurrent Proceedings Involving Same Patent in Inter Partes Reexamination
                1.985

                Notification of prior or concurrent proceedings in inter partes reexamination.
                1.987
                Suspension of inter partes reexamination proceeding due to litigation.
                1.989

                Merger of concurrent reexamination proceedings.

                1.991
                Merger of concurrent reissue application and inter partes reexamination proceeding.
                1.993
                Suspension of concurrent interference and inter partes reexamination proceeding.
                1.995
                Third party requester's participation rights preserved in merged proceeding.

                Reexamination Certificate in Inter Partes Reexamination
                1.997
                Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.

              Subpart I—International Design Application

                General Information
                1.1001
                Definitions related to international design applications.
                1.1002
                The United States Patent and Trademark Office as an office of indirect filing.
                1.1003
                The United States Patent and Trademark Office as a designated office.
                1.1004
                The International Bureau.
                1.1005
                Display of currently valid control number under the Paperwork Reduction Act.

                Who May File an International Design Application
                1.1011
                Applicant for international design application.
                1.1012
                Applicant's Contracting Party.

                The International Design Application
                1.1021
                Contents of the international design application.
                1.1022
                Form and signature.
                1.1023
                Filing date of an international design application in the United States.
                1.1024
                The description.
                1.1025
                The claim.
                1.1026
                Reproductions.
                1.1027
                Specimens.
                1.1028
                Deferment of publication.

                Fees
                1.1031
                International design application fees.

                Representation
                1.1041
                Representation in an international design application.
                1.1042
                Correspondence respecting international design applications filed with the Office as an office of indirect filing.

                Transmittal of the International Design Application to the International Bureau
                1.1045
                Procedures for transmittal of international design application to the International Bureau.

                Relief From Prescribed Time Limits; Conversion to a Design Application Under 35 U.S.C. Chapter 16
                1.1051
                Relief from prescribed time limits.
                1.1052
                Conversion to a design application under 35 U.S.C. chapter 16.

                National Processing of International Design Applications
                1.1061
                Rules applicable.
                1.1062
                Examination.
                1.1063
                Notification of Refusal.
                1.1064
                One independent and distinct design.
                1.1065
                Corrections and other changes in the International Register.
                1.1066
                Correspondence address for a nonprovisional international design application.
                1.1067
                Title, description, and the inventor's oath or declaration.
                1.1068
                Statement of grant of protection.
                1.1070
                Notification of Invalidation.
                1.1071
                Grant of protection for an industrial design only upon issuance of a patent.

            Authority:
            35 U.S.C. 2(b)(2), unless otherwise noted.

            Source:
            24 FR 10332, Dec. 22, 1959, unless otherwise noted.

            Editorial Notes:
            1. In Patent and Trademark Office publications and usage the part number is omitted from the numbers of §§ 1.1 to 1.352 and the numbers to the right of the decimal point correspond with the respective rule numbers.
            2. For nomenclature changes to part 1, see 68 FR 14335, Mar. 25, 2003.

            Subpart A—General Provisions

              General Information and Correspondence

                § 1.1
                Addresses for non-trademark correspondence with the United States Patent and Trademark Office.
                (a) In general. Except as provided in paragraphs (a)(3)(i), (a)(3)(ii), and (d)(1) of this section, all correspondence intended for the United States Patent and Trademark Office must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450” or to specific areas within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
                (1) Patent correspondence—(i) In general. All correspondence concerning patent matters processed by organizations reporting to the Commissioner for Patents should be addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
                (ii) Patent Trial and Appeal Board. See § 41.10 or § 42.6 of this title. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in paragraph (a)(1)(i) of this section.
                (2) [Reserved]
                (3) Office of General Counsel correspondence—(i) Litigation and service. Correspondence relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as provided in § 104.2.
                (ii) Disciplinary proceedings. Correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director shall be mailed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
                (iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
                (iv) General Counsel. Correspondence to the Office of the General Counsel not otherwise provided for, including correspondence to the General Counsel relating to disciplinary proceedings, shall be addressed to: General Counsel, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
                (v) Improper correspondence. Correspondence improperly addressed to a Post Office Box specified in paragraphs (a)(3)(i) and(a)(3)(ii) of this section will not be filed elsewhere in the United States Patent and Trademark Office, and may be returned.
                (4) Office of Public Records correspondence. (i) Assignments. All patent-related documents submitted by mail to be recorded by Assignment Services Division, except for documents filed together with a new application, should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27.
                (5) Office of Enrollment and Discipline correspondence. All correspondence directed to the Office of Enrollment and Discipline concerning enrollment, registration, and investigation matters should be addressed to Mail Stop OED, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
                (ii) Documents. All requests for certified or uncertified copies of patent documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
                (b) Patent Cooperation Treaty. Letters and other communications relating to international applications during the international stage and prior to the assignment of a national serial number should be additionally marked “Mail Stop PCT.”
                (c) For reexamination or supplemental examination proceedings. (1) All correspondence concerning ex parte reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter, should be additionally marked “Mail Stop Ex Parte Reexam.”
                (2) All correspondence concerning inter partes reexamination, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter, should be additionally marked “Mail Stop Inter Partes Reexam.”
                (3) Requests for supplemental examination (original and corrected request papers) and any other paper filed in a supplemental examination proceeding, should be additionally marked “Mail Stop Supplemental Examination.”

                (4) All correspondence concerning a reexamination proceeding ordered as a result of a supplemental reexamination proceeding, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 102.4 of this chapter should be additionally marked “Mail Stop Ex Parte Reexam.”

                (d) Payments of maintenance fees in patents not submitted electronically over the Internet, and correspondence related to maintenance fees may be addressed to: Director of the United States Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
                (e) Patent term extension. All applications for extension of patent term under 35 U.S.C. 156 and any communications relating thereto intended for the United States Patent and Trademark Office should be additionally marked “Mail Stop Hatch-Waxman PTE.” When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.
                (f) [Reserved]
                [68 FR 14335, Mar. 25, 2003; 68 FR 19371, Apr. 21, 2003, as amended at 68 FR 48287, Aug. 13, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 29877, May 26, 2004; 69 FR 35451, June 24, 2004; 69 FR 49997, Aug. 12, 2004; 72 FR 18904, Apr. 16, 2007; 73 FR 47540, Aug. 14, 2008; 75 FR 36295, June 25, 2010; 77 FR 46624, Aug. 6, 2012; 77 FR 48811, Aug. 14, 2012; 78 FR 62393, Oct. 21, 2013]

                § 1.2
                Business to be transacted in writing.
                All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt.

                § 1.3
                Business to be conducted with decorum and courtesy.
                Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.
                [68 FR 38624, June 30, 2003]

                § 1.4
                Nature of correspondence and signature requirements.
                (a) Correspondence with the Patent and Trademark Office comprises:
                (1) Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents, orders for copies of records, transmission of assignments for recording, and the like, and
                (2) Correspondence in and relating to a particular application or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B of this part; of international applications in subpart C of this part; of ex parte reexaminations of patents in subpart D of this part; of supplemental examination of patents in subpart E of this part; of extension of patent term in subpart F of this part; of inter partes reexaminations of patents in subpart H of this part; of international design applications in subpart I of this part; and of the Patent Trial and Appeal Board in parts 41 and 42 of this chapter.
                (b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent application, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.

                (c) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry, or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects. Subjects provided for on a single Office or World Intellectual Property Organization form may be contained in a single paper.
                (d)(1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e), and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person's signature, must:
                (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or
                (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.
                (2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in paragraph (d)(1) of this section. Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4), for a patent application, patent, or a reexamination or supplemental examination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.

                (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g.,/Dr. James T. Jones, Jr./); and
                (ii) A patent practitioner (§ 1.32(a)(1)), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner's registration number; otherwise the number character may not be used in an S-signature.
                (iii) The signer's name must be:
                (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
                (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
                (3) Electronically submitted correspondence. Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
                (4) Certifications—(i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
                (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person's own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
                (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
                (e) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent:
                (1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
                (2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
                (f) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
                (g) An applicant who has not made of record a registered attorney or agent may be required to state whether assistance was received in the preparation or prosecution of the patent application, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. Assistance includes the preparation for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.
                (h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes submission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signature, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.
                (Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
                [24 FR 10332, Dec. 22, 1959]

                  Editorial Note:
                  For Federal Register citations affecting § 1.4, see the List of CFR Sections Affected, which appears in the Finding Aids section of the printed volume and at www.govinfo.gov.

                § 1.5
                Identification of patent, patent application, or patent-related proceeding.

                (a) No correspondence relating to an application should be filed prior to receipt of the assigned application number (i.e., U.S. application number, international application number, or international registration number as appropriate). When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application. Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter, which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing or Transmission procedure under § 1.8 or the Priority Mail Express® procedure under § 1.10 for resubmissions of returned correspondence if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the application number, all correspondence directed to the Patent and Trademark Office concerning applications for patent should also state the name of the first listed inventor, the title of the invention, the date of filing the same, and if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the correspondence and the name of the examiner or other person to which it has been assigned.
                (b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366(c).
                (c) Correspondence relating to a trial proceeding before the Patent Trial and Appeal Board (part 42 of this title) are governed by § 42.6 of this title.
                (d) A letter relating to a reexamination or supplemental examination proceeding should identify it as such by the number of the patent undergoing reexamination or supplemental examination, the request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.
                (e) [Reserved]
                (f) When a paper concerns a provisional application, it should identify the application as such and include the application number.
                (Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
                [24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49 FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 1988; 58 FR 54501, Oct. 22, 1993; 61 FR 42802, Aug. 19, 1996; 61 FR 56446, Nov. 1, 1996; 64 FR 48917, Sept. 8, 1999; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 77 FR 46624, Aug. 6, 2012; 77 FR 48812, Aug. 14, 2012; 78 FR 62394, Oct. 21, 2013; 79 FR 63039, Oct. 22, 2014; 80 FR 17952, Apr. 2, 2015]

                § 1.6
                Receipt of correspondence.
                (a) Date of receipt and Priority Mail Express® date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
                (1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
                (2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.

                (3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.

                (4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
                (b) [Reserved]
                (c) Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
                (d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See paragraph (a)(3) of this section. To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination or supplemental examination proceeding, the interference number of an interference proceeding, the trial number of a trial proceeding before the Board, or the patent number of a patent should be entered as a part of the sender's identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
                (1) Correspondence as specified in § 1.4(e), requiring an original signature;
                (2) Certified documents as specified in § 1.4(f);
                (3) Correspondence that cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D), (F), (I), and (K) and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
                (4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
                (5) A request for reexamination under § 1.510 or § 1.913, or a request for supplemental examination under § 1.610;
                (6) Correspondence to be filed in an application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
                (7) In contested cases and trials before the Patent Trial and Appeal Board, except as the Board may expressly authorize.
                (e) [Reserved]
                (f) Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Director to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,
                (1) Provided that the party who transmitted such application under § 1.53(d):
                (i) Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);
                (ii) Supplies an additional copy of the previously transmitted application under § 1.53(d); and
                (iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous transmission of the application under § 1.53(d) and is accompanied by a copy of the sending unit's report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).

                (2) The Office may require additional evidence to determine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.
                (g) Submission of the national stage correspondence required by § 1.495 via the Office electronic filing system. In the event that the Office has no evidence of receipt of the national stage correspondence required by § 1.495, which was submitted to the Office by the Office electronic filing system, the party who submitted the correspondence may petition the Director to accord the national stage correspondence a receipt date as of the date the correspondence is shown to have been officially submitted to the Office.
                (1) The petition of this paragraph (g) requires that the party who submitted such national stage correspondence:
                (i) Informs the Office of the previous submission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence under § 1.495;
                (ii) Supplies an additional copy of the previously submitted correspondence;
                (iii) Includes a statement that attests on a personal knowledge basis, or to the satisfaction of the Director, that the correspondence was previously officially submitted; and
                (iv) Supplies a copy of an acknowledgment receipt generated by the Office electronic filing system, or equivalent evidence, confirming the submission to support the statement of paragraph (g)(1)(iii) of this section.
                (2) The Office may require additional evidence to determine if the national stage correspondence was submitted to the Office on the date in question.
                [58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56447, Nov. 1, 1996; 62 FR 53180, Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999; 65 FR 54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000; 68 FR 14336, Mar. 25, 2003; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 77 FR 42173, July 17, 2012; 77 FR 46624, Aug. 6, 2012; 78 FR 62394, Oct. 21, 2013; 79 FR 63039, Oct. 22, 2014; 80 FR 17952, Apr. 2, 2015]

                § 1.7
                Times for taking action; Expiration on Saturday, Sunday or Federal holiday.
                (a) Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See § 90.3 of this chapter for time for appeal or for commencing civil action.
                (b) If the day that is twelve months after the filing date of a provisional application under 35 U.S.C. 111(b) and § 1.53(c) falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the period of pendency shall be extended to the next succeeding secular or business day which is not a Saturday, Sunday, or a Federal holiday.
                [65 FR 14871, Mar. 20, 2000, as amended at 78 FR 62395, Oct. 21, 2013]

                § 1.8
                Certificate of mailing or transmission.
                (a) Except in the situations enumerated in paragraph (a)(2) of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
                (1) Correspondence will be considered as being timely filed if:
                (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
                (A) Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail;
                (B) Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d); or
                (C) Transmitted via the Office electronic filing system in accordance with § 1.6(a)(4); and

                (ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.

                (2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on the following:
                (i) Relative to Patents and Patent Applications—
                (A) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under § 1.53(d);
                (B) Papers filed in trials before the Patent Trial and Appeal Board, which are governed by § 42.6(b) of this title;
                (C) Papers filed in contested cases before the Patent Trial and Appeal Board, which are governed by § 41.106 (f) of this title;
                (D) The filing of an international application for patent;
                (E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
                (F) The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.495(b).
                (G) The filing of a written declaration of abandonment under § 1.138;
                (H) The filing of a submission under § 1.217 for publication of a redacted copy of an application;
                (I) The filing of a third-party submission under § 1.290;
                (J) The calculation of any period of adjustment, as specified in § 1.703(f); and
                (K) The filing of an international design application.
                (ii) [Reserved]
                (iii) Relative to Disciplinary Proceedings—
                (A) Correspondence filed in connection with a disciplinary proceeding under part 11 of this chapter.
                (B) [Reserved]
                (b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence, or after the application is held to be abandoned, or after the proceeding is dismissed or decided with prejudice, or the prosecution of a reexamination proceeding is terminated pursuant to § 1.550(d) or § 1.957(b) or limited pursuant to § 1.957(c), or a requester paper is refused consideration pursuant to § 1.957(a), the correspondence will be considered timely if the party who forwarded such correspondence:
                (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
                (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
                (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission. If the correspondence was sent by facsimile transmission, a copy of the sending unit's report confirming transmission may be used to support this statement. If the correspondence was transmitted via the Office electronic filing system, a copy of an acknowledgment receipt generated by the Office electronic filing system confirming submission may be used to support this statement.
                (c) The Office may require additional evidence to determine if the correspondence was timely filed.
                [58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993, as amended at 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 67 FR 523, Jan. 4, 2002; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007; 73 FR 47684, Aug. 14, 2008; 77 FR 42173, July 17, 2012; 80 FR 17953, Apr. 2, 2015]

                § 1.9
                Definitions.

                (a)(1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
                (2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
                (3) A nonprovisional application as used in this chapter means either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
                (b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
                (c) A published application as used in this chapter means an application for patent which has been published under 35 U.S.C. 122(b).
                (d)(1) The term inventor or inventorship as used in this chapter means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
                (2) The term joint inventor or coinventor as used in this chapter means any one of the individuals who invented or discovered the subject matter of a joint invention.
                (e) The term joint research agreement as used in this chapter means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
                (f) The term claimed invention as used in this chapter means the subject matter defined by a claim in a patent or an application for a patent.
                (g) For definitions in Patent Trial and Appeal Board proceedings, see parts 41 and 42 of this title.
                (h) A Federal holiday within the District of Columbia as used in this chapter means any day, except Saturdays and Sundays, when the Patent and Trademark Office is officially closed for business for the entire day.
                (i) National security classified as used in this chapter means specifically authorized under criteria established by an Act of Congress or Executive Order to be kept secret in the interest of national defense or foreign policy and, in fact, properly classified pursuant to such Act of Congress or Executive Order.
                (j) Director as used in this chapter, except for part 11 of this chapter, means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
                (k) Paper as used in this chapter means a document that may exist in electronic form, or in physical form, and therefore does not necessarily imply physical sheets of paper.
                (l) Hague Agreement as used in this chapter means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and Hague Agreement Article as used in this chapter means an Article under the Hague Agreement.
                (m) Hague Agreement Regulations as used in this chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter means one of the Hague Agreement Regulations.

                (n) An international design application as used in this chapter means an application for international registration of a design filed under the Hague Agreement. Unless otherwise clear from the wording, reference to “design application” or “application for a design patent” in this chapter includes an international design application that designates the United States.
                (Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)
                [43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982; 47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 65 FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 14336, Mar. 25, 2003; 68 FR 38624, June 30, 2003; 69 FR 49997, Aug. 12, 2004; 73 FR 47685, Aug. 14, 2008; 77 FR 46624, Aug. 6, 2012; 77 FR 48812, Aug. 14, 2012; 78 FR 11052, Feb. 14, 2013; 80 FR 17953, Apr. 2, 2015]

                § 1.10
                Filing of correspondence by Priority Mail Express®.
                (a)(1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.
                (2) The date of deposit with USPS is shown by the “date accepted” on the Priority Mail Express® label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).
                (b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail Express® mailing label with the “date accepted” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in a Priority Mail Express® drop box) do so at the risk of not receiving a copy of the Priority Mail Express® mailing label with the desired “date accepted” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the Priority Mail Express® mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
                (c) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date accepted” on the Priority Mail Express® mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date accepted” on the Priority Mail Express® mailing label or other official USPS notation, provided that:
                (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
                (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®; and
                (3) The petition includes a true copy of the Priority Mail Express® mailing label showing the “date accepted,” and of any other official notation by the USPS relied upon to show the date of deposit.
                (d) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that the “date accepted” on the Priority Mail Express® mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
                (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
                (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®; and

                (3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the Priority Mail Express® Post Office to Addressee service of the USPS.
                (e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
                (1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
                (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®;
                (3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the Priority Mail Express® mailing label thereon, a copy of any returned postcard receipt, a copy of the Priority Mail Express® mailing label showing the “date accepted,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date accepted” on the Priority Mail Express® mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup for that day; and
                (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the Priority Mail Express® mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original Priority Mail Express® mailing label, returned postcard receipt, and official notation entered by the USPS.
                (f) The Office may require additional evidence to determine if the correspondence was deposited as Priority Mail Express® with the USPS on the date in question.
                (g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in Priority Mail Express® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
                (1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
                (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®;
                (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express® mailing label thereon and a copy of the Priority Mail Express® mailing label showing the “date accepted”; and
                (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in Priority Mail Express® service.

                (h) Any person who attempts to mail correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
                (1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
                (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by Priority Mail Express®;
                (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express® mailing label thereon; and
                (4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express® service.
                (i) Any person attempting to file correspondence under this section that was unable to be deposited with the USPS due to an interruption or emergency in Priority Mail Express® service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
                (1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in Priority Mail Express® service;
                (2) The petition includes the original correspondence or a copy of the original correspondence; and
                (3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in Priority Mail Express® service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.
                [79 FR 63039, Oct. 22, 2014]

              Records and Files of the Patent and Trademark Office

                § 1.11
                Files open to the public.
                (a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.

                (b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.

                (c) All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
                (d) All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
                (e) Except as prohibited in § 41.6(b), § 42.14 or § 42.410(b), the file of any interference or trial before the Patent Trial and Appeal Board is open to public inspection and copies of the file may be obtained upon payment of the fee therefor.
                (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
                [46 FR 29181, May 29, 1981, as amended at 47 FR 41272, Sept. 17, 1982; 50 FR 9378, Mar. 7, 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, Oct. 10, 1997; 65 FR 57051, Sept. 20, 2000; 69 FR 49997, Aug. 12, 2004; 70 FR 56126, Sept. 26, 2005; 71 FR 44223, Aug. 4, 2006; 77 FR 46624, Aug. 6, 2012]

                § 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]

                § 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]

                § 1.14
                Patent applications preserved in confidence.
                (a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
                (1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
                (i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in § 1.11(a). A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).
                (ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b).
                (iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
                (iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)).
                (v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
                (vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
                (vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.

                (2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public (i.e., status information) includes:
                (i) Whether the application is pending, abandoned, or patented;
                (ii) Whether the application has been published under 35 U.S.C. 122(b);
                (iii) The application “numerical identifier” which may be:
                (A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
                (B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and

                (iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
                (b) Electronic access to an application. Where a copy of the application file or access to the application may be made available pursuant to this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application.
                (c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority (e.g., a power to inspect) granting access to such person. The written authority must be signed by:
                (1) The applicant;
                (2) A patent practitioner of record;
                (3) The assignee or an assignee of an undivided part interest;
                (4) The inventor or a joint inventor; or
                (5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if a power of attorney has not been appointed under § 1.32.
                (d) Applications reported to Department of Energy. Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
                (e) Decisions by the Director. Any decision by the Director that would not otherwise be open to public inspection may be published or made available for public inspection if:
                (1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
                (2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection.
                (f) Notice to inventor of the filing of an application. The Office may publish notice in the Official Gazette as to the filing of an application on behalf of an inventor by a person who otherwise shows sufficient proprietary interest in the matter.
                (g) International applications. (1) Copies of international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b)), if:
                (i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1)), the international application was filed with the U.S. Receiving Office;

                (ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1)), the U.S. acted as the International Searching Authority, except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or

                (iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary Examining Authority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.
                (2) A copy of an English language translation of a publication of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4)).

                (3) Access to international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated.
                (4) In accordance with PCT Article 30, copies of an international application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2).
                (5) Access to international application files under paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38.
                (h) Access by a Foreign Intellectual Property Office. (1) Access to an application-as-filed may be provided to any foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), if the application contains written authority granting such access. Written authority provided under this paragraph (h)(1) will be treated as authorizing the Office to provide the following to all participating foreign intellectual property offices in accordance with their respective agreements with the Office:
                (i) A copy of the application-as-filed and its related bibliographic data;
                (ii) A copy of the application-as-filed of any application the filing date of which is claimed by the application in which written authority under this paragraph (h)(1) is filed and its related bibliographic data; and
                (iii) The date of filing of the written authorization under this paragraph (h)(1).
                (2) Access to the file contents of an application may be provided to a foreign intellectual property office that has imposed a requirement for information on a counterpart application filed with the foreign intellectual property office where the foreign intellectual property office is a party to a bilateral or multilateral agreement with the Office to provide the required information from the application filed with the Office and the application contains written authority granting such access. Written authority provided under this paragraph (h)(2) will be treated as authorizing the Office to provide the following to all foreign intellectual property offices in accordance with their respective agreements with the Office:
                (i) Bibliographic data related to the application; and
                (ii) Any content of the application file necessary to satisfy the foreign intellectual property office requirement for information imposed on the counterpart application as indicated in the respective agreement.
                (3) Written authority provided under paragraphs (h)(1) and (h)(2) of this section must include the title of the invention (§ 1.72(a)), comply with the requirements of paragraph (c) of this section, and be submitted on an application data sheet (§ 1.76) or on a separate document (§ 1.4(c)). The written authority provided under these paragraphs should be submitted before filing any subsequent foreign application in which priority is claimed to the application.
                (i) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
                (1) The fee set forth in § 1.17(g); and
                (2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.
                (j) International design applications. (1) With respect to an international design application maintained by the Office in its capacity as a designated office (§ 1.1003) for national processing, the records associated with the international design application may be made available as provided under paragraphs (a) through (i) of this section.
                (2) With respect to an international design application maintained by the Office in its capacity as an office of indirect filing (§ 1.1002), the records of the international design application may be made available under paragraph (j)(1) of this section where contained in the file of the international design application maintained by the Office for national processing. Also, if benefit of the international design application is claimed under 35 U.S.C. 386(c) in a U.S. patent or published application, the file contents of the application may be made available to the public, or the file contents of the application, a copy of the application-as-filed, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b)).
                [68 FR 38624, June 30, 2003, as amended at 68 FR 59886, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR 1667, Jan. 16, 2007; 77 FR 48812, Aug. 14, 2012; 78 FR 11052, Feb. 14, 2013; 80 FR 17953, Apr. 2, 2015; 80 FR 65655, Oct. 27, 2015]

                § 1.15
                [Reserved]

              Fees and Payment of Money

                Authority:
                Sections 1.16 through 1.22 also issued under 35 U.S.C. 41, 111, 119, 120, 132(b), 156, 157, 255, 302, and 311, Public Laws 103-465, 106-113, and 112-29.

                § 1.16
                National application filing, search, and examination fees.
                (a) Basic fee for filing each application under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:

                    By a micro entity (§ 1.29)
                    $75.00

                    By a small entity (§ 1.27(a))
                    150.00

                    By a small entity (§ 1.27(a)) if the application is submitted in compliance with the Office electronic filing system (§ 1.27(b)(2))
                    75.00

                    By other than a small or micro entity
                    300.00

                (b) Basic fee for filing each application under 35 U.S.C. 111 for an original design patent:

                    By a micro entity (§ 1.29)
                    $50.00

                    By a small entity (§ 1.27(a))
                    100.00

                    By other than a small or micro entity
                    200.00

                (c) Basic fee for filing each application for an original plant patent:

                    By a micro entity (§ 1.29)
                    $50.00

                    By a small entity (§ 1.27(a))
                    100.00

                    By other than a small or micro entity
                    200.00

                (d) Basic fee for filing each provisional application:

                    By a micro entity (§ 1.29)
                    $70.00

                    By a small entity (§ 1.27(a))
                    140.00

                    By other than a small or micro entity
                    280.00

                (e) Basic fee for filing each application for the reissue of a patent:

                    By a micro entity (§ 1.29)
                    $75.00

                    By a small entity (§ 1.27(a))
                    150.00

                    By other than a small or micro entity
                    300.00

                (f) Surcharge for filing the basic filing fee, search fee, examination fee, or the inventor's oath or declaration on a date later than the filing date of the application, an application that does not contain at least one claim on the filing date of the application, or an application filed by reference to a previously filed application under § 1.57(a), except provisional applications:

                    By a micro entity (§ 1.29)
                    $40.00

                    By a small entity (§ 1.27(a))
                    80.00

                    By other than a small or micro entity
                    160.00

                (g) Surcharge for filing the basic filing fee or cover sheet (§ 1.51(c)(1)) on a date later than the filing date of the provisional application:

                    By a micro entity (§ 1.29)
                    $15.00

                    By a small entity (§ 1.27(a))
                    30.00

                    By other than a small or micro entity
                    60.00

                (h) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim in independent form in excess of 3:

                    By a micro entity (§ 1.29)
                    $115.00

                    By a small entity (§ 1.27(a))
                    230.00

                    By other than a small or micro entity
                    460.00

                (i) In addition to the basic filing fee in an application, other than a provisional application, for filing or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):

                    By a micro entity (§ 1.29)
                    $25.00

                    By a small entity (§ 1.27(a))
                    50.00

                    By other than a small or micro entity
                    100.00

                (j) In addition to the basic filing fee in an application, other than a provisional application, that contains, or is amended to contain, a multiple dependent claim, per application:

                    By a micro entity (§ 1.29)
                    $205.00

                    By a small entity (§ 1.27(a))
                    410.00

                    By other than a small or micro entity
                    820.00

                (k) Search fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:

                    By a micro entity (§ 1.29)
                    $165.00

                    By a small entity (§ 1.27(a))
                    330.00

                    By other than a small or micro entity
                    660.00

                (l) Search fee for each application under 35 U.S.C. 111 for an original design patent:

                    By a micro entity (§ 1.29)
                    $40.00

                    By a small entity (§ 1.27(a))
                    80.00

                    By other than a small or micro entity
                    160.00

                (m) Search fee for each application for an original plant patent:

                    By a micro entity (§ 1.29)
                    $105.00

                    By a small entity (§ 1.27(a))
                    210.00

                    By other than a small or micro entity
                    420.00

                (n) Search fee for each application for the reissue of a patent:

                    By a micro entity (§ 1.29)
                    $165.00

                    By a small entity (§ 1.27(a))
                    330.00

                    By other than a small or micro entity
                    660.00

                (o) Examination fee for each application filed under 35 U.S.C. 111 for an original patent, except design, plant, or provisional applications:

                    By a micro entity (§ 1.29)
                    $190.00

                    By a small entity (§ 1.27(a))
                    380.00

                    By other than a small or micro entity
                    760.00

                (p) Examination fee for each application under 35 U.S.C. 111 for an original design patent:

                    By a micro entity (§ 1.29)
                    $150.00

                    By a small entity (§ 1.27(a))
                    300.00

                    By other than a small or micro entity
                    600.00

                (q) Examination fee for each application for an original plant patent:

                    By a micro entity (§ 1.29)
                    $155.00

                    By a small entity (§ 1.27(a))
                    310.00

                    By other than a small or micro entity
                    620.00

                (r) Examination fee for each application for the reissue of a patent:

                    By a micro entity (§ 1.29)
                    $550.00

                    By a small entity (§ 1.27(a))
                    1,100.00

                    By other than a small or micro entity
                    2,200.00

                (s) Application size fee for any application filed under 35 U.S.C. 111 for the specification and drawings which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof:

                    By a micro entity (§ 1.29)
                    $100.00

                    By a small entity (§ 1.27(a))
                    200.00

                    By other than a small or micro entity
                    400.00

                (t) Non-electronic filing fee for any application under 35 U.S.C. 111(a) that is filed on or after November 15, 2011, other than by the Office electronic filing system, except for a reissue, design, or plant application:

                    By a small entity (§ 1.27(a))
                    $200.00

                    By other than a small entity
                    $400.00

                  Note to § 1.16:
                  See §§ 1.445, 1.482 and 1.492 for international application filing and processing fees.

                [70 FR 3887, Jan. 27, 2005, as amended at 70 FR 30365, May 26, 2005; 72 FR 46901, Aug. 22, 2007; 73 FR 47540, Aug. 14, 2008; 76 FR 70653, Nov. 15, 2011; 77 FR 48812, Aug. 14, 2012; 77 FR 54365, Sept. 5, 2012; 78 FR 4284, Jan. 18, 2013; 78 FR 62395, Oct. 21, 2013; 80 FR 17954, Apr. 2, 2015; 82 FR 52813, Nov. 14, 2017]

                § 1.17
                Patent application and reexamination processing fees.
                (a) Extension fees pursuant to § 1.136(a):
                (1) For reply within first month:

                    By a micro entity (§ 1.29)
                    $50.00

                    By a small entity (§ 1.27(a))
                    $100.00

                    By other than a small or micro entity
                    $200.00

                (2) For reply within second month:

                    By a micro entity (§ 1.29)
                    $150.00

                    By a small entity (§ 1.27(a))
                    $300.00

                    By other than a small or micro entity
                    $600.00

                (3) For reply within third month:

                    By a micro entity (§ 1.29)
                    $350.00

                    By a small entity (§ 1.27(a))
                    $700.00

                    By other than a small or micro entity
                    $1,400.00

                (4) For reply within fourth month:

                    By a micro entity (§ 1.29)
                    $550.00

                    By a small entity (§ 1.27(a))
                    $1,100.00

                    By other than a small or micro entity
                    $2,200.00

                (5) For reply within fifth month:

                    By a micro entity (§ 1.29)
                    $750.00

                    By a small entity (§ 1.27(a))
                    $1,500.00

                    By other than a small or micro entity
                    $3,000.00

                (b) For fees in proceedings before the Patent Trial and Appeal Board, see § 41.20 and § 42.15 of this title.
                (c) For filing a request for prioritized examination under § 1.102(e):

                    By a micro entity (§ 1.29)
                    $1,000.00

                    By a small entity (§ 1.27(a))
                    $2,000.00

                    By other than a small or micro entity
                    $4,000.00

                (d) For correction of inventorship in an application after the first action on the merits:

                    By a micro entity (§ 1.29)
                    $150.00

                    By a small entity (§ 1.27(a))
                    $300.00

                    By other than a small or micro entity
                    $600.00

                (e) To request continued examination pursuant to § 1.114:
                (1) For filing a first request for continued examination pursuant to § 1.114 in an application:

                    By a micro entity (§ 1.29)
                    $325.00

                    By a small entity (§ 1.27(a))
                    650.00

                    By other than a small or micro entity
                    1,300.00

                (2) For filing a second or subsequent request for continued examination pursuant to § 1.114 in an application:

                    By a micro entity (§ 1.29)
                    $475.00

                    By a small entity (§ 1.27(a))
                    950.00

                    By other than a small or micro entity
                    1,900.00

                (f) For filing a petition under one of the following sections which refers to this paragraph:

                    By a micro entity (§ 1.29)
                    $100.00

                    By a small entity (§ 1.27(a))
                    200.00

                    By other than a small or micro entity
                    400.00

                  § 1.36(a)—for revocation of a power of attorney by fewer than all of the applicants.
                  § 1.53(e)—to accord a filing date.
                  § 1.182—for decision on a question not specifically provided for in an application for patent.
                  § 1.183—to suspend the rules in an application for patent.
                  § 1.741(b)—to accord a filing date to an application under § 1.740 for extension of a patent term.
                  § 1.1023—to review the filing date of an international design application.

                (g) For filing a petition under one of the following sections which refers to this paragraph:

                    By a micro entity (§ 1.29)
                    $50.00

                    By a small entity (§ 1.27(a))
                    100.00

                    By other than a small or micro entity
                    200.00

                  § 1.12—for access to an assignment record.
                  § 1.14—for access to an application.
                  § 1.46—for filing an application on behalf of an inventor by a person who otherwise shows sufficient proprietary interest in the matter.
                  § 1.55(f)—for filing a belated certified copy of a foreign application.
                  § 1.55(g)—for filing a belated certified copy of a foreign application.
                  § 1.57(a)—for filing a belated certified copy of a foreign application.
                  § 1.59—for expungement of information.
                  § 1.103(a)—to suspend action in an application.
                  § 1.136(b)—for review of a request for extension of time when the provisions of § 1.136(a) are not available.
                  § 1.377—for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent.

                  § 1.550(c)—for patent owner requests for extension of time in ex parte reexamination proceedings.

                  § 1.956—for patent owner requests for extension of time in inter partes reexamination proceedings.
                  § 5.12—for expedited handling of a foreign filing license.
                  § 5.15—for changing the scope of a license.
                  § 5.25—for retroactive license.

                (h) For filing a petition under one of the following sections which refers to this paragraph (h):

                    By a micro entity (§ 1.29)
                    $35.00

                    By a small entity (§ 1.27(a))
                    70.00

                    By other than a small or micro entity
                    140.00

                  § 1.84—for accepting color drawings or photographs.
                  § 1.91—for entry of a model or exhibit.
                  § 1.102(d)—to make an application special.
                  § 1.138(c)—to expressly abandon an application to avoid publication.
                  § 1.313—to withdraw an application from issue.
                  § 1.314—to defer issuance of a patent.

                (i) Processing fees. (1) For taking action under one of the following sections which refers to this paragraph:

                    By a micro entity (§ 1.29)
                    $35.00

                    By a small entity (§ 1.27(a))
                    70.00

                    By other than a small or micro entity
                    140.00

                  § 1.28(c)(3)—for processing a non-itemized fee deficiency based on an error in small entity status.
                  § 1.29(k)(3)—for processing a non-itemized fee deficiency based on an error in micro entity status.
                  § 1.41(b)—for supplying the name or names of the inventor or joint inventors in an application without either an application data sheet or the inventor's oath or declaration, except in provisional applications.
                  § 1.48—for correcting inventorship, except in provisional applications.
                  § 1.52(d)—for processing a nonprovisional application filed with a specification in a language other than English.
                  § 1.53(c)(3)—t convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b).
                  § 1.71(g)(2)—for processing a belated amendment under § 1.71(g).
                  § 1.102(e)—for requesting prioritized examination of an application.
                  § 1.103(b)—for requesting limited suspension of action, continued prosecution application for a design patent (§ 1.53(d)).
                  § 1.103(c)—for requesting limited suspension of action, request for continued examination (§ 1.114).
                  § 1.103(d)—for requesting deferred examination of an application.
                  § 1.291(c)(5)—for processing a second or subsequent protest by the same real party in interest.
                  § 3.81—for a patent to issue to assignee, assignment submitted after payment of the issue fee.

                    (2) For taking action under one of the following sections which refers to this paragraph
                    $130.00

                  § 1.217—for processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication.
                  § 1.221—for requesting voluntary publication or republication of an application.

                (j) [Reserved]
                (k) For filing a request for expedited examination under § 1.155(a):

                    By a micro entity (§ 1.29)
                    $225.00

                    By a small entity (§ 1.27(a))
                    $450.00

                    By other than a small or micro entity.
                    $900.00

                (l) [Reserved]

                (m) For filing a petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, for the extension of the twelve-month (six-month for designs) period for filing a subsequent application (§§ 1.55(c) and (e), 1.78(b), (c), and (e), 1.137, 1.378, and 1.452), or for filing a petition to excuse applicant's failure to act within prescribed time limits in an international design application (§ 1.1051):

                    By a micro entity (§ 1.29)
                    $500.00

                    By a small entity (§ 1.27(a))
                    1,000.00

                    By other than a small or micro entity
                    2,000.00

                (n) [Reserved]
                (o) For every ten items or fraction thereof in a third-party submission under § 1.290:

                    By a small entity (§ 1.27(a)) or micro entity (§ 1.29)
                    $90.00

                    By other than a small entity
                    $180.00

                (p) For an information disclosure statement under § 1.97(c) or (d):

                    By a micro entity (§ 1.29)
                    $60.00

                    By a small entity (§ 1.27(a))
                    120.00

                    By other than a small or micro entity
                    240.00

                    (q) Processing fee for taking action under one of the following sections which refers to this paragraph
                    $50.00

                  § 1.41—to supply the name or names of the inventor or inventors after the filing date without a cover sheet as prescribed by § 1.51(c)(1) in a provisional application.
                  § 1.48—for correction of inventorship in a provisional application.
                  § 1.53(c)(2)—to convert a nonprovisional application filed under § 1.53(b) to a provisional application under § 1.53(c).

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

                    By a micro entity (§ 1.29)
                    $210.00

                    By a small entity (§ 1.27(a))
                    $420.00

                    By other than a small or micro entity
                    $840.00

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

                    By a micro entity (§ 1.29)
                    $210.00

                    By a small entity (§ 1.27(a))
                    $420.00

                    By other than a small or micro entity
                    $840.00

                (t) For filing a petition to convert an international design application to a design application under 35 U.S.C. chapter 16 (§ 1.1052):

                    By a micro entity (§ 1.29)
                    $45.00

                    By a small entity (§ 1.27(a))
                    90.00

                    By other than a small or micro entity
                    180.00

                [78 FR 17105, Mar. 20, 2013, as amended at 78 FR 62395, Oct. 21, 2013; 78 FR 75252, Dec. 11, 2013; 80 FR 17954, Apr. 2, 2015; 82 FR 52814, Nov. 14, 2017]

                § 1.18
                Patent post allowance (including issue) fees.
                (a)(1) Issue fee for issuing each original patent, except a design or plant patent, or for issuing each reissue patent:

                    By a micro entity (§ 1.29)
                    $250.00

                    By a small entity (§ 1.27(a))
                    500.00

                    By other than a small or micro entity
                    1,000.00

                (2) [Reserved]
                (b)(1) Issue fee for issuing an original design patent:

                    By a micro entity (§ 1.29)
                    $175.00

                    By a small entity (§ 1.27(a))
                    350.00

                    By other than a small or micro entity
                    700.00

                (2) [Reserved]
                (3) Issue fee for issuing an international design application designating the United States, where the issue fee is paid through the International Bureau (Hague Agreement Rule 12(3)(c)) as an alternative to paying the issue fee under paragraph (b)(1) of this section: The amount established in Swiss currency pursuant to Hague Agreement Rule 28 as of the date of mailing of the notice of allowance (§ 1.311).
                (c)(1) Issue fee for issuing an original plant patent:

                    By a micro entity (§ 1.29)
                    $200.00

                    By a small entity (§ 1.27(a))
                    400.00

                    By other than a small or micro entity
                    800.00

                (2) [Reserved]

                    (d)(1) Publication fee on or after January 1, 2014
                    $0.00

                    (2) Publication fee before January 1, 2014
                    300.00

                    (3) Republication fee (§ 1.221(a))
                    300.00

                    (e) For filing an application for patent term adjustment under § 1.705:
                    $200.00.

                    (f) For filing a request for reinstatement of all or part of the term reduced pursuant to § 1.704(b) in an application for patent term adjustment under§ 1.705:
                    $400.00.

                [78 FR 4286, Jan. 18, 2013, as amended at 80 FR 17955, Apr. 2, 2015; 82 FR 52814, Nov. 14, 2017]

                § 1.19
                Document supply fees.

                The United States Patent and Trademark Office will supply copies of the following patent-related documents upon payment of the fees indicated. Paper copies will be in black and white unless the original document is in color, a color copy is requested and the fee for a color copy is paid.
                (a) Uncertified copies of patent application publications and patents:
                (1) Printed copy of the paper portion of a patent application publication or patent including a design patent, statutory invention registration, or defensive publication document. Service includes preparation of copies by the Office within two to three business days and delivery by United States Postal Service; and preparation of copies by the Office within one business day of receipt and delivery to an Office Box or by electronic means (e.g., facsimile, electronic mail): $3.00.
                (2) Printed copy of a plant patent in color: $15.00.
                (3) Color copy of a patent (other than a plant patent) or statutory invention registration containing a color drawing: $25.00.

                (b) Copies of Office documents to be provided in paper, or in electronic form, as determined by the Director (for other patent-related materials see § 1.21(k)):
                (1) Copy of a patent application as filed, or a patent-related file wrapper and contents, stored in paper in a paper file wrapper, in an image format in an image file wrapper, or if color documents, stored in paper in an Artifact Folder:
                (i) If provided on paper:
                (A) Application as filed: $35.00.
                (B) File wrapper and contents: $280.00.
                (C) [Reserved]
                (D) Individual application documents, other than application as filed, per document: $25.00.

                (ii) If provided on compact disc or other physical electronic medium in single order or if provided electronically (e.g., by electronic transmission) other than on a physical electronic medium:
                (A) Application as filed: $35.00.
                (B) File wrapper and contents: $55.00.
                (C) [Reserved]
                (iii) [Reserved]

                (iv) If provided to a foreign intellectual property office pursuant to a bilateral or multilateral agreement (see § 1.14(h)): $0.00.
                (2) [Reserved]
                (3) Copy of Office records, except copies available under paragraph (b)(1) or (2) of this section: $25.00.
                (4) For assignment records, abstract of title and certification, per patent: $35.00.
                (c) Library service (35 U.S.C. 13): For providing to libraries copies of all patents issued annually, per annum: $50.00.
                (d)-(e) [Reserved}
                (f) Uncertified copy of a non-United States patent document, per document: $25.00.
                (g) [Reserved]
                (h) Copy of Patent Grant Single-Page TIFF Images (52 week subscription): $10,400.00.
                (i) Copy of Patent Grant Full-Text W/Embedded Images, Patent Application Publication Single-Page TIFF Images, or Patent Application Publication Full-Text W/Embedded Images (52 week subscription): $5,200.00.
                (j) Copy of Patent Technology Monitoring Team (PTMT) Patent Bibliographic Extract and Other DVD (Optical Disc) Products: $50.00.
                (k) Copy of U.S. Patent Custom Data Extracts: $100.00.
                (l) Copy of Selected Technology Reports, Miscellaneous Technology Areas: $30.00.
                [78 FR 4287, Jan. 18, 2013, as amended at 80 FR 65655, Oct. 27, 2015; 82 FR 52814, Nov. 14, 2017]

                § 1.20
                Post issuance fees.

                    (a) For providing a certificate of correction for applicant's mistake (§ 1.323)
                    $150.00

                    (b) Processing fee for correcting inventorship in a patent (§ 1.324)
                    150.00

                (c) In reexamination proceedings:
                (1)(i) For filing a request for ex parte reexamination (§ 1.510(a)) having:
                (A) Forty (40) or fewer pages;
                (B) Lines that are double-spaced or one-and-a-half spaced;
                (C) Text written in a non-script type font such as Arial, Times New Roman, or Courier;
                (D) A font size no smaller than 12 point;

                (E) Margins which conform to the requirements of § 1.52(a)(1)(ii); and

                (F) Sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition.

                    By a micro entity (§ 1.29)
                    $1,500.00

                    By a small entity (§ 1.27(a))
                    3,000.00

                    By other than a small or micro entity
                    6,000.00

                (ii) The following parts of an ex parte reexamination request are excluded from paragraphs (c)(1)(i)(A) through (F) of this section:
                (A) The copies of every patent or printed publication relied upon in the request pursuant to § 1.510(b)(3);
                (B) The copy of the entire patent for which reexamination is requested pursuant to § 1.510(b)(4); and
                (C) The certifications required pursuant to § 1.510(b)(5) and (6).
                (2) For filing a request for ex parte reexamination (§ 1.510(b)) which has sufficient clarity and contrast to permit direct reproduction and electronic capture by use of digital imaging and optical character recognition, and which otherwise does not comply with the provisions of paragraph (c)(1) of this section:

                    By a micro entity (§ 1.29)
                    $3,000.00

                    By a small entity (§ 1.27(a))
                    6,000.00

                    By other than a small or micro entity
                    12,000.00

                (3) For filing with a request for reexamination or later presentation at any other time of each claim in independent form in excess of three and also in excess of the number of claims in independent form in the patent under reexamination:

                    By a micro entity (§ 1.29)
                    $115.00

                    By a small entity (§ 1.27(a))
                    230.00

                    By other than a small or micro entity
                    460.00

                (4) For filing with a request for reexamination or later presentation at any other time of each claim (whether dependent or independent) in excess of 20 and also in excess of the number of claims in the patent under reexamination (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):

                    By a micro entity (§ 1.29)
                    $25.00

                    By a small entity (§ 1.27(a))
                    50.00

                    By other than a small or micro entity
                    100.00

                    (d) For filing each statutory disclaimer (§ 1.321)
                    $160.00

                (e) For maintaining an original or any reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond four years, the fee being due by three years and six months after the original grant:

                    By a micro entity (§ 1.29)
                    $400.00

                    By a small entity (§ 1.27(a))
                    800.00

                    By other than a small or micro entity
                    1,600.00

                (f) For maintaining an original or any reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond eight years, the fee being due by seven years and six months after the original grant:

                    By a micro entity (§ 1.29)
                    $900.00

                    By a small entity (§ 1.27(a))
                    1,800.00

                    By other than a small or micro entity
                    3,600.00

                (g) For maintaining an original or any reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond twelve years, the fee being due by eleven years and six months after the original grant:

                    By a micro entity (§ 1.29)
                    $1,850.00

                    By a small entity (§ 1.27(a))
                    3,700.00

                    By other than a small or micro entity
                    7,400.00

                (h) Surcharge for paying a maintenance fee during the six-month grace period following the expiration of three years and six months, seven years and six months, and eleven years and six months after the date of the original grant of a patent based on an application filed on or after December 12, 1980:

                    By a micro entity (§ 1.29)
                    $40.00

                    By a small entity (§ 1.27(a))
                    $80.00

                    By other than a small or micro entity
                    $160.00

                (i) [Reserved]
                (j) For filing an application for extension of the term of a patent

                    Application for extension under § 1.740
                    $1,120.00

                    Initial application for interim extension under § 1.790
                    $420.00

                    Subsequent application for interim extension under § 1.790
                    $220.00

                (k) In supplemental examination proceedings:
                (1) For processing and treating a request for supplemental examination:

                    By a micro entity (§ 1.29)
                    $1,100.00

                    By a small entity (§ 1.27(a))
                    $2,200.00

                    By other than a small or micro entity
                    $4,400.00

                (2) For ex parte reexamination ordered as a result of a supplemental examination proceeding:

                    By a micro entity (§ 1.29)
                    $3,025.00

                    By a small entity (§ 1.27(a))
                    $6,050.00

                    By other than a small or micro entity
                    $12,100.00

                (3) For processing and treating, in a supplemental examination proceeding, a non-patent document over 20 sheets in length, per document:
                (i) Between 21 and 50 sheets:

                    By a micro entity (§ 1.29)
                    $45.00

                    By a small entity (§ 1.27(a))
                    $90.00

                    By other than a small or micro entity.
                    $180.00

                (ii) For each additional 50 sheets or a fraction thereof:

                    By a micro entity (§ 1.29)
                    $70.00

                    By a small entity (§ 1.27(a))
                    $140.00

                    By other than a small or micro entity
                    $280.00

                [78 FR 17106, Mar. 20, 2013, as amended at 78 FR 62395, Oct. 21, 2013; 82 FR 52815, Nov. 14, 2017]

                § 1.21
                Miscellaneous fees and charges.
                The Patent and Trademark Office has established the following fees for the services indicated:
                (a) Registration of attorneys and agents:
                (l) For admission to examination for registration to practice:
                (i) Application Fee (non-refundable): $100.00.
                (ii) Registration examination fee.
                (A) For test administration by commercial entity: $200.00.
                (B) For test administration by the USPTO: $450.00.
                (iii) For USPTO-administered review of registration examination: $450.00.
                (2) On registration to practice or grant of limited recognition:
                (i) On registration to practice under § 11.6 of this chapter: $200.00.
                (ii) On grant of limited recognition under § 11.9(b) of this chapter: $200.00.
                (iii) On change of registration from agent to attorney: $100.00.
                (3) [Reserved]
                (4) For certificate of good standing as an attorney or agent:
                (i) Standard: $40.00.
                (ii) Suitable for framing: $50.00.
                (5) For review of decision:
                (i) By the Director of Enrollment and Discipline under § 11.2(c) of this chapter: $400.00.
                (ii) Of the Director of Enrollment and Discipline under § 11.2(d) of this chapter: $400.00.
                (6) Recovery/Retrieval of OED Information System Customer Interface account by USPTO:
                (i) For USPTO-assisted recovery of ID or reset of password: $70.00.
                (ii) For USPTO-assisted change of address: $70.00.
                (7)-(8) [Reserved]
                (9)(i) Delinquency fee: $50.00.
                (ii) Administrative reinstatement fee: $200.00.
                (10) On application by a person for recognition or registration after disbarment or suspension on ethical grounds, or resignation pending disciplinary proceedings in any other jurisdiction; on application by a person for recognition or registration who is asserting rehabilitation from prior conduct that resulted in an adverse decision in the Office regarding the person's moral character; and on application by a person for recognition or registration after being convicted of a felony or crime involving moral turpitude or breach of fiduciary duty; on petition for reinstatement by a person excluded or suspended on ethical grounds, or excluded on consent from practice before the Office: $1,600.00.
                (b) Deposit accounts:
                (1) [Reserved]
                (2) Service charge for each month when the balance at the end of the month is below $1,000: $25.00.

                (3) Service charge for each month when the balance at the end of the month is below $300 for restricted subscription deposit accounts used exclusively for subscription order of patent copies as issued: $25.00.
                (c)-(d) [Reserved]
                (e) International type search reports: For preparing an international type search report of an international type search made at the time of the first action on the merits in a national patent application: $40.00.
                (f)-(g) [Reserved]
                (h) For recording each assignment, agreement, or other paper relating to the property in a patent or application, per property:
                (1) If submitted electronically, on or after January 1, 2014: $0.00.
                (2) If not submitted electronically: $50.00.
                (i) Publication in Official Gazette: For publication in the Official Gazette of a notice of the availability of an application or a patent for licensing or sale: Each application or patent: $25.00.
                (j)-(l) [Reserved]
                (m) For processing each payment refused (including a check returned “unpaid”) or charged back by a financial institution: $50.00.
                (n) For handling an application in which proceedings are terminated pursuant to § 1.53(e): $130.00.
                (o) The submission of very lengthy sequence listings (mega-sequence listings) are subject to the following fees:
                (1) Submission of sequence listings in electronic form ranging in size from 300 MB to 800 MB:

                    By a micro entity (§ 1.29)
                    $250.00

                    By a small entity (§ 1.27(a))
                    500.00

                    By other than a small or micro entity
                    1,000.00

                (2) Submission of sequence listings in electronic form exceeding 800 MB in size:

                    By a micro entity (§ 1.29)
                    $2,500.00

                    By a small entity (§ 1.27(a))
                    5,000.00

                    By other than a small or micro entity
                    10,000.00

                (p) Additional Fee for Overnight Delivery: $40.00.
                (q) Additional Fee for Expedited Service: $160.00.
                [82 FR 52815, Nov. 14, 2017]

                § 1.22
                Fees payable in advance.
                (a) Patent fees and charges payable to the United States Patent and Trademark Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable, with the exception that under § 1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
                (b) All fees paid to the United States Patent and Trademark Office must be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid. The Office may return fees that are not itemized as required by this paragraph. The provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to this paragraph.
                [68 FR 48288, Aug. 13, 2003]

                § 1.23
                Methods of payment.
                (a) All payments of money required for United States Patent and Trademark Office fees, including fees for the processing of international applications (§ 1.445), shall be made in U.S. dollars and in the form of a cashier's or certified check, Treasury note, national bank notes, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.

                (b) Payments of money required for United States Patent and Trademark Office fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
                (c) A fee transmittal letter may be signed by a juristic applicant or patent owner.
                [65 FR 33455, May 24, 2000, as amended at 69 FR 43752, July 22, 2004; 78 FR 62395, Oct. 21, 2013]

                § 1.24
                [Reserved]

                § 1.25
                Deposit accounts.
                (a) For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account (§ 1.21(b)(1)). A minimum deposit of $1,000 is required for paying any fees due or in ordering any services offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 1.21(b)(2)) will be assessed for each month that the balance at the end of the month is below $1,000. For restricted subscription deposit accounts, a service charge (§ 1.21(b)(3)) will be assessed for each month that the balance at the end of the month is below $300.
                (b) Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 through 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with a particular paper filed. A general authorization to charge fees in an international design application set forth in § 1.1031 will only be effective for the transmittal fee (§ 1.1031(a)). An authorization to charge fees under § 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under § 1.492. An authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b). An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or 1.913 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination, and an authorization to charge to a deposit account the fee for a request for supplemental examination pursuant to § 1.610 and any other fees required in a supplemental examination proceeding in a patent may also be filed with the request for supplemental examination. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective unless sufficient funds are present in the account to cover the fee.
                (c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
                (1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder's bank or financial institution:

                (i) Name of the Bank, which is Treas NYC (Treasury New York City);

                (ii) Bank Routing Code, which is 021030004;
                (iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
                (iv) The deposit account holder's company name and deposit account number.

                (2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office's Internet Web site (www.uspto.gov).
                (3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
                (35 U.S.C. 6, Pub. L. 97-247)
                [49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985; 65 FR 76772, Dec. 7, 2000; 67 FR 523, Jan. 4, 2002; 68 FR 14336, Mar. 25, 2003; 69 FR 43752, July 22, 2004; 70 FR 56127, Sept. 26, 2005; 73 FR 47541, Aug. 14, 2008; 78 FR 62395, Oct. 21, 2013; 80 FR 17955, Apr. 2, 2015]

                § 1.26
                Refunds.
                (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
                (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.

                (c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made (e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
                (1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the reexamination requester, less the fee set forth in § 1.20(c)(7), will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
                (2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
                (3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.
                (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
                [47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985; 54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 21, 1992; 62 FR 53183, Oct. 10, 1997; 65 FR 54659, Sept. 8, 2000; 65 FR 76773, Dec. 7, 2000; 68 FR 48289, Aug. 13, 2003; 72 FR 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48851, Aug. 14, 2012]

                § 1.27
                Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.
                (a) Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
                (1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
                (2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:
                (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
                (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
                (3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
                (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
                (ii) Is either:
                (A) A university or other institution of higher education located in any country;
                (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
                (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or
                (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
                (4) License to a Federal agency. (i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
                (ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
                (5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
                (b) Establishment of small entity status permits payment of reduced fees. (1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).
                (2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).
                (c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
                (1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
                (i) Be clearly identifiable;
                (ii) Be signed (see paragraph (c)(2) of this section); and
                (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
                (2) Parties who can sign the written assertion. The written assertion can be signed by:
                (i) The applicant (§ 1.42 or § 1.421);
                (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34;
                (iii) The inventor or a joint inventor, if the inventor is the applicant; or
                (iv) The assignee.
                (3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, international search fee, or individual designation fee in an international design application. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in § 1.16(a), (b), (c), (d), or (e), the small entity transmittal fee set forth in § 1.445(a)(1), the small entity international search fee set forth in § 1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16, or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error. The payment, by any party, of the small entity first part of the individual designation fee for the United States to the International Bureau (§ 1.1031) will be treated as a written assertion of entitlement to small entity status.
                (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
                (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
                (4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
                (d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by § 1.28(a).
                (e) Only one assertion required. (1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
                (2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
                (f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
                (g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
                (2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
                (h) Fraud attempted or practiced on the Office. (1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
                (2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
                [65 FR 54659, Sept. 8, 2000, as amended at 69 FR 56538, Sept. 21, 2004; 70 FR 3889, Jan. 27, 2005; 77 FR 48813, Aug. 14, 2012; 78 FR 4289, Jan. 18, 2013; 80 FR 17955, Apr. 2, 2015]

                § 1.28
                Refunds when small entity status is later established; how errors in small entity status are excused.
                (a) Refunds based on later establishment of small entity status. A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.
                (b) Date of payment. (1) The three-month period for requesting a refund, pursuant to paragraph (a) of this section, starts on the date that a full fee has been paid;
                (2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to paragraph (c) of this section.
                (c) How errors in small entity status are excused. If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section:
                (1) Separate submission required for each application or patent. Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemizations are required for each application or patent. See § 1.4(b).
                (2) Payment of deficiency owed. The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.
                (i) Calculation of the deficiency owed. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously erroneously paid as a small entity. Where a fee paid in error as a small entity was subject to a fee decrease between the time the fee was paid in error and the time the deficiency is paid in full, the deficiency owed is equal to the amount (previously) paid in error;
                (ii) Itemization of the deficiency payment. An itemization of the total deficiency payment is required. The itemization must include the following information:
                (A) Each particular type of fee that was erroneously paid as a small entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a non-small entity;
                (B) The small entity fee actually paid, and when. This will permit the Office to differentiate, for example, between two one-month extension of time fees erroneously paid as a small entity but on different dates;
                (C) The deficiency owed amount (for each fee erroneously paid); and
                (D) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts set forth in paragraph (c)(2)(ii)(C) of this section.
                (3) Failure to comply with requirements. If the requirements of paragraphs (c)(1) and (c)(2) of this section are not complied with, such failure will either: be treated as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month non-extendable time period under § 1.136(a) to avoid the return of the fee deficiency paper, at the option of the Office.
                (d) Payment of deficiency operates as notification of loss of status. Any deficiency payment (based on a previous erroneous payment of a small entity fee) submitted under paragraph (c) of this section will be treated under § 1.27(g)(2) as a notification of a loss of entitlement to small entity status.
                [65 FR 54661, Sept. 8, 2000]

                § 1.29
                Micro entity status.
                (a) To establish micro entity status under this paragraph, the applicant must certify that:
                (1) The applicant qualifies as a small entity as defined in § 1.27;

                (2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;
                (3) Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
                (4) Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
                (b) An applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of paragraph (a)(2) of this section if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant's, inventor's, or joint inventor's previous employment.
                (c) If an applicant's, inventor's, joint inventor's, or entity's gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant's, inventor's, joint inventor's, or entity's gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.
                (d) To establish micro entity status under this paragraph, the applicant must certify that:
                (1) The applicant qualifies as a small entity as defined in § 1.27; and
                (2)(i) The applicant's employer, from which the applicant obtains the majority of the applicant's income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
                (ii) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.
                (e) Micro entity status is established in an application by filing a micro entity certification in writing complying with the requirements of either paragraph (a) or (d) of this section and signed either in compliance with § 1.33(b), in an international application filed in a Receiving Office other than the United States Receiving Office by a person authorized to represent the applicant under § 1.455, or in an international design application by a person authorized to represent the applicant under § 1.1041 before the International Bureau where the micro entity certification is filed with the International Bureau. Status as a micro entity must be specifically established in each related, continuing and reissue application in which status is appropriate and desired. Status as a micro entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new certification of entitlement to micro entity status for the continuing or reissue application.
                (f) A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.

                (g) A certification of entitlement to micro entity status need only be filed once in an application or patent. Micro entity status, once established, remains in effect until changed pursuant to paragraph (i) of this section. However, a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid. Where an assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.
                (h) Prior to submitting a certification of entitlement to micro entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of this section. It should be determined that each applicant qualifies for micro entity status under paragraph (a) or (d) of this section, and that any other party holding rights in the invention qualifies for small entity status under § 1.27. The Office will generally not question certification of entitlement to micro entity status that is made in accordance with the requirements of this section.
                (i) Notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in paragraph (a) or (d) of this section is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2). Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
                (j) Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.
                (k) If status as a micro entity is established in good faith in an application or patent, and fees as a micro entity are paid in good faith in the application or patent, and it is later discovered that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by paragraph (i) of this section through error, the error will be excused upon compliance with the separate submission and itemization requirements of paragraph (k)(1) of this section and the deficiency payment requirement of paragraph (k)(2) of this section.
                (1) Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)). The paper must contain an itemization of the total deficiency payment for the single application or patent and include the following information:

                (i) Each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity, as applicable;
                (ii) The micro entity fee actually paid, and the date on which it was paid;
                (iii) The deficiency owed amount (for each fee erroneously paid); and
                (iv) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in paragraph (k)(2) of this section.

                (2) The deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity.
                (3) If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
                (4) Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.
                [77 FR 75033, Dec. 19, 2012, as amended at 78 FR 62396, Oct. 21, 2013; 80 FR 17955, Apr. 2, 2015]

            Subpart B—National Processing Provisions

              Prosecution of Application and Appointment of Attorney or Agent

                § 1.31
                Applicant may be represented by one or more patent practitioners or joint inventors.

                An applicant for patent may file and prosecute the applicant's own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner even if the juristic entity is the applicant. The Office cannot aid in the selection of a patent practitioner.
                [77 FR 48813, Aug. 14, 2012]

                § 1.32
                Power of attorney.
                (a) Definitions. (1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6.
                (2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on the principal's behalf.
                (3) Principal means the applicant (§ 1.42) for an application for patent and the patent owner for a patent, including a patent in a supplemental examination or reexamination proceeding. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on the principal's behalf.
                (4) Revocation means the cancellation by the principal of the authority previously given to a patent practitioner or joint inventor to act on the principal's behalf.
                (5) Customer Number means a number that may be used to:
                (i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;
                (ii) Designate the fee address (§ 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
                (iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.
                (6) Patent practitioner of record means a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section. The phrases practitioner of record and attorney or agent of record also mean a patent practitioner who has been granted a power of attorney in an application, patent, or other proceeding in compliance with paragraph (b) of this section.
                (b) A power of attorney must:
                (1) Be in writing;

                (2) Name one or more representatives in compliance with paragraph (c) of this section;

                (3) Give the representative power to act on behalf of the principal; and
                (4) Be signed by the applicant for patent (§ 1.42) or the patent owner. A patent owner who was not the applicant under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and 3.73 of this chapter.
                (c) A power of attorney may only name as representative:
                (1) One or more joint inventors (§ 1.45);
                (2) Those registered patent practitioners associated with a Customer Number;
                (3) Ten or fewer patent practitioners, stating the name and registration number of each patent practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.
                (d) A power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
                (1) The power of attorney was granted by the inventor; and
                (2) The continuing application names an inventor who was not named as an inventor in the prior application.
                (e) If the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to § 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the § 1.48 request. This provision does not preclude a practitioner from acting pursuant to § 1.34, if applicable.
                [69 FR 29877, May 26, 2004, as amended at 70 FR 56127, Sept. 26, 2005; 77 FR 48813, Aug. 14, 2012; 80 FR 17956, Apr. 2, 2015]

                § 1.33
                Correspondence respecting patent applications, patent reexamination proceedings, and other proceedings.
                (a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(b)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office's electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.

                (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
                (1) A patent practitioner of record;
                (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
                (3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
                (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner's attorney or agent, or with more than one attorney or agent, will not be undertaken.
                (d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
                (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
                (f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
                (g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
                [36 FR 12617, July 2, 1971, as amended at 46 FR 29181, May 29, 1981; 49 FR 34724, Aug. 31, 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10, 1997; 65 FR 54661, Sept. 8, 2000; 69 FR 29877, May 26, 2004; 69 FR 35452, June 24, 2004; 70 FR 3889, Jan. 27, 2005; 70 FR 56127, Sept. 26, 2005; 72 FR 2776, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007; 77 FR 48814, Aug. 14, 2012; 78 FR 62396, Oct. 21, 2013]

                § 1.34
                Acting in a representative capacity.
                When a patent practitioner acting in a representative capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Further proof of authority to act in a representative capacity may be required.
                [70 FR 56127, Sept. 26, 2005]

                § 1.36
                Revocation of power of attorney; withdrawal of patent attorney or agent.

                (a) A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by the applicant or patent owner. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attorney previously given. Fewer than all of the applicants (or fewer than all patent owners in a supplemental examination or reexamination proceeding) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee may become the applicant under § 1.46(c) and revoke any previous power of attorney and grant a power of attorney as provided in § 1.32(b).
                (b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners associated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Patent Trial and Appeal Board.
                [69 FR 49997, Aug. 12, 2004, as amended at 70 FR 56128, Sept. 26, 2005; 77 FR 46624, Aug. 6, 2012; 77 FR 48814, Aug. 14, 2012]

              Who May Apply for a Patent

                § 1.41
                Inventorship.
                (a) An application must include, or be amended to include, the name of the inventor for any invention claimed in the application.
                (b) The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed before or concurrently with the inventor's oath or declaration. If an application data sheet is not filed before or concurrently with the inventor's oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor's oath or declaration, except as provided for in §§ 1.53(d)(4) and 1.63(d). Once an application data sheet or the inventor's oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to § 1.48. If neither an application data sheet nor the inventor's oath or declaration is filed during the pendency of a nonprovisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(b), unless the applicant files a paper, including the processing fee set forth in § 1.17(i), supplying the name or names of the inventor or joint inventors.
                (c) The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet as prescribed by § 1.51(c)(1). Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any correction of inventorship must be pursuant to § 1.48. If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed pursuant to § 1.53(c), unless applicant files a paper including the processing fee set forth in § 1.17(q), supplying the name or names of the inventor or joint inventors.

                (d) In a nonprovisional application under 35 U.S.C. 111(a) filed without an application data sheet or the inventor's oath or declaration, or in a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name and residence of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.

                (e) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is the inventor or joint inventors set forth in the application data sheet in accordance with § 1.76 filed with the initial submission under 35 U.S.C. 371. Unless the initial submission under 35 U.S.C. 371 is accompanied by an application data sheet in accordance with § 1.76 setting forth the inventor or joint inventors, the inventorship is the inventor or joint inventors set forth in the international application, which includes any change effected under PCT Rule 92 bis.

                (f) The inventorship of an international design application designating the United States is the creator or creators set forth in the publication of the international registration under Hague Agreement Article 10(3). Any correction of inventorship must be pursuant to § 1.48.
                [77 FR 48814, Aug. 14, 2012, as amended at 80 FR 17956, Apr. 2, 2015]

                § 1.42
                Applicant for patent.
                (a) The word “applicant” when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.
                (b) If a person is applying for a patent as provided in § 1.46, the word “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
                (c) If fewer than all joint inventors are applying for a patent as provided in § 1.45, the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).
                (d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64, a correspondence address may be provided only in accordance with § 1.33(a), and amendments and other papers must be signed in accordance with § 1.33(b).
                (e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.
                [77 FR 48815, Aug. 14, 2012]

                § 1.43
                Application for patent by a legal representative of a deceased or legally incapacitated inventor.

                If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.
                [77 FR 48815, Aug. 14, 2012]

                § 1.44
                [Reserved]

                § 1.45
                Application for patent by joint inventors.

                (a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63, except as provided for in § 1.64. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
                (b) Inventors may apply for a patent jointly even though:
                (1) They did not physically work together or at the same time;
                (2) Each inventor did not make the same type or amount of contribution; or
                (3) Each inventor did not make a contribution to the subject matter of every claim of the application.

                (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.
                [77 FR 48815, Aug. 14, 2012]

                § 1.46
                Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
                (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
                (b) If an application under 35 U.S.C. 111 is made by a person other than the inventor under paragraph (a) of this section, the application must contain an application data sheet under § 1.76 specifying in the applicant information section (§ 1.76(b)(7)) the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter. If an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under paragraph (a) of this section, the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter must have been identified as the applicant for the United States in the international stage of the international application or as the applicant in the publication of the international registration under Hague Agreement Article 10(3).

                (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
                (2) If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including:
                (i) The fee set forth in § 1.17(g);
                (ii) A showing that such person has sufficient proprietary interest in the matter; and
                (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
                (c)(1) Correction or update in the name of the applicant. Any request to correct or update the name of the applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7)) in accordance with § 1.76(c)(2). A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
                (2) Change in the applicant. Any request to change the applicant under this section after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7)) in accordance with § 1.76(c)(2) and comply with §§ 3.71 and 3.73 of this title.

                (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64. See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
                (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.

                (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.

                [77 FR 48815, Aug. 14, 2012, as amended at 80 FR 17956, Apr. 2, 2015]

                § 1.47
                [Reserved]

                § 1.48
                Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application.
                (a) Nonprovisional application: Any request to correct or change the inventorship once the inventorship has been established under § 1.41 must include:
                (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name; and
                (2) The processing fee set forth in § 1.17(i).
                (b) Inventor's oath or declaration for added inventor: An oath or declaration as required by § 1.63, or a substitute statement in compliance with § 1.64, will be required for any actual inventor who has not yet executed such an oath or declaration.
                (c) Any request to correct or change the inventorship under paragraph (a) of this section filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in § 1.17(d), unless the request is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.
                (d) Provisional application. Once a cover sheet as prescribed by § 1.51(c)(1) is filed in a provisional application, any request to correct or change the inventorship must include:
                (1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
                (2) The processing fee set forth in § 1.17(q).
                (e) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
                (f) Correcting or updating the name of an inventor: Any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:
                (1) An application data sheet in accordance with § 1.76 that identifies each inventor by his or her legal name in the desired order; and
                (2) The processing fee set forth in § 1.17(i).
                (g) Reissue applications not covered. The provisions of this section do not apply to reissue applications. See §§ 1.171 and 1.175 for correction of inventorship in a patent via a reissue application.
                (h) Correction of inventorship in patent. See § 1.324 for correction of inventorship in a patent.
                (i) Correction of inventorship in an interference or contested case before the Patent Trial and Appeal Board. In an interference under part 41, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in an application must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or 42.22 of this title must comply with the requirements of paragraph (a) of this section.
                [77 FR 48816, Aug. 14, 2012, as amended at 78 FR 4289, Jan. 18, 2013]

              The 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]

                § 1.52
                Language, paper, writing, margins, compact disc specifications.
                (a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding. (1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
                (i) Flexible, strong, smooth, non-shiny, durable, and white;
                (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (81/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
                (iii) Written on only one side in portrait orientation;
                (iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
                (v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.
                (2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.

                (3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
                (4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
                (5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office's electronic filing system requirements.
                (b) The application (specification, including the claims, drawings, and the inventor's oath or declaration) or reexamination or supplemental examination proceeding, any amendments to the application or reexamination proceeding, or any corrections to the application, or reexamination or supplemental examination proceeding. (1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
                (i) Comply with the requirements of paragraph (a) of this section; and
                (ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.
                (2) The specification (including the abstract and claims) for other than reissue applications and reexamination or supplemental examination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
                (i) Lines that are 11/2 or double spaced;
                (ii) Text written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6); and
                (iii) Only a single column of text.
                (3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h)).
                (4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination or supplemental examination proceeding (§ 1.72(b)).
                (5) Other than in a reissue application or a reexamination or supplemental examination proceeding, the pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably, below, the text.

                (6) Other than in a reissue application or reexamination or supplemental examination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros (e.g., [0001]). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to approximately four spaces, should follow the number. Nontext elements (e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements, and should not be independently numbered. If a nontext element extends to the left margin, it should not be numbered as a separate and independent paragraph. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Paragraph or section headers (titles), whether abutting the left margin or centered on the page, are not considered paragraphs and should not be numbered.

                (c) Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125) may be required if the application papers do not comply with paragraphs (a) and (b) of this section.
                (d) A nonprovisional or provisional application under 35 U.S.C. 111 may be in a language other than English.
                (1) Nonprovisional application. If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English language translation of the non-English language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, the applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
                (2) Provisional application. If a provisional application under 35 U.S.C. 111(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
                (e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application, or reexamination or supplemental examination proceeding. (1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
                (i) A computer program listing (see § 1.96);
                (ii) A “Sequence Listing” (submitted under § 1.821(c)); or
                (iii) Any individual table (see § 1.58) if the table is more than 50 pages in length, or if the total number of pages of all the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and § 1.58(c).
                (2) A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a “read-only” medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a “write once” medium on which once the data is recorded, it is permanent and cannot be changed or erased.
                (3)(i) Each compact disc must conform to the International Organization for Standardization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII).

                (ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format (e.g., IBM-PC, Macintosh), the operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret (e.g., tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.

                (4) Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled “Copy 1” for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.
                (5) The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5)), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
                (6) A compact disc must also be labeled with the following information:
                (i) The name of each inventor (if known);
                (ii) Title of the invention;
                (iii) The docket number, or application number if known, used by the person filing the application to identify the application;
                (iv) A creation date of the compact disc;

                (v) If multiple compact discs are submitted, the label shall indicate their order (e.g., “1 of X”); and
                (vi) An indication that the disc is “Copy 1” or “Copy 2” of the submission. See paragraph (b)(4) of this section.
                (7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.
                (f)(1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). For purposes of determining the application size fee required by § 1.16(s) or § 1.492(j), for an application the specification and drawings of which, excluding any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.
                (2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be seventy-five percent of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ASCII text as part of an associated file.
                (Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)
                [43 FR 20462, May 11, 1978]

                  Editorial Note:
                  For Federal Register citations affecting § 1.52, see the List of CFR Sections Affected, which appears in the Finding Aids section of the printed volume and at www.govinfo.gov.

                § 1.53
                Application number, filing date, and completion of application.
                (a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
                (b) Application filing requirements—Nonprovisional application. The filing date of an application for patent filed under this section, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.
                (1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
                (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
                (c) Application filing requirements—Provisional application. The filing date of a provisional application is the date on which a specification, with or without claims, is received in the Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
                (1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
                (2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
                (i) Abandonment of the application filed under paragraph (b) of this section;
                (ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
                (iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.

                (3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
                (i) Abandonment of the provisional application filed under paragraph (c) of this section; or
                (ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
                (4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
                (d) Application filing requirements—Continued prosecution (nonprovisional) application. (1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
                (i) The application is for a design patent;
                (ii) The prior nonprovisional application is a design application, but not an international design application, that is complete as defined by § 1.51(b), except for the inventor's oath or declaration if the application is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i); and
                (iii) The application under this paragraph is filed before the earliest of:
                (A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
                (B) Abandonment of the prior application; or
                (C) Termination of proceedings on the prior application.
                (2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
                (i) Must identify the prior application;
                (ii) Discloses and claims only subject matter disclosed in the prior application;
                (iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
                (iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
                (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
                (3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16(l), and the examination fee as set forth in § 1.16(p).
                (4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.

                (5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
                (6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
                (7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
                (8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
                (i) Title of invention;
                (ii) Name of applicant(s); and
                (iii) Correspondence address.
                (9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
                (e) Failure to meet filing date requirements. (1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.
                (2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
                (3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
                (f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application. (1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor's oath or declaration (§§ 1.63, 1.64, 1.162, or 1.175), and the applicant has provided a correspondence address (§ 1.33(a)), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f), to avoid abandonment.

                (2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, search fee, examination fee, at least one claim, or the inventor's oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has three months from the filing date of the application within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f), to avoid abandonment.
                (3) The inventor's oath or declaration in an application under § 1.53(b) must also be filed within the period specified in paragraph (f)(1) or (f)(2) of this section, except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
                (i) The application must be an original (non-reissue) application that contains an application data sheet in accordance with § 1.76 identifying:
                (A) Each inventor by his or her legal name;
                (B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

                (ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.
                (4) If the excess claims fees required by § 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.16(h), (i), and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
                (5) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the inventor's oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
                (6) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
                (g) Completion of application subsequent to filing—Provisional application. (1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.

                (2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
                (3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
                (4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
                (h) Subsequent treatment of application—Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that the inventor's oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section and minor informalities may be waived subject to subsequent correction whenever required.
                (i) Subsequent treatment of application—Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
                [62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998; 65 FR 14871, Mar. 20, 2000; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, Sept. 8, 2000; 65 FR 78960, Dec. 18, 2000; 68 FR 14336, Mar. 25, 2003; 68 FR 32380, May 30, 2003; 69 FR 29878, May 26, 2004; 69 FR 56539, Sept. 21, 2004; 70 FR 3890, Jan. 27, 2005; 70 FR 30365, May 26, 2005; 72 FR 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48817, Aug. 14, 2012; 78 FR 11053, Feb. 14, 2013; 78 FR 62398, Oct. 21, 2013; 79 FR 12386, Mar. 5, 2014; 80 FR 17956, Apr. 2, 2015]

                § 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]

                § 1.55
                Claim for foreign priority.
                (a) In general. An applicant in a nonprovisional application may claim priority to one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b) and this section.
                (b) Time for filing subsequent application. The nonprovisional application must be:
                (1) Filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, subject to paragraph (c) of this section (a subsequent application); or
                (2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) of a subsequent application that was filed within the period set forth in paragraph (b)(1) of this section.
                (c) Delayed filing of subsequent application. If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. A petition to restore the right of priority under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. Any petition to restore the right of priority under this paragraph must include:
                (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or (b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
                (2) The petition fee as set forth in § 1.17(m); and
                (3) A statement that the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
                (d) Time for filing priority claim—(1) Application under 35 U.S.C. 111(a). The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a), except as provided in paragraph (e) of this section. The claim for priority must be presented in an application data sheet (§ 1.76(b)(6)) and must identify the foreign application to which priority is claimed by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply if the later-filed application is:
                (i) An application for a design patent; or
                (ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000.
                (2) Application under 35 U.S.C. 371. The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.
                (e) Delayed priority claim. Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) not presented in the manner required by paragraph (d) or (m) of this section during pendency and within the time period provided by paragraph (d) of this section (if applicable) is considered to have been waived. If a claim for priority is considered to have been waived under this section, the claim may be accepted if the priority claim was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) must be accompanied by:
                (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
                (2) A certified copy of the foreign application, unless previously submitted or an exception in paragraph (h), (i), or (j) of this section applies;
                (3) The petition fee as set forth in § 1.17(m); and
                (4) A statement that the entire delay between the date the priority claim was due under this section and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
                (f) Time for filing certified copy of foreign application—(1) Application under 35 U.S.C. 111(a). A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, in an original application under 35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in paragraphs (h), (i), and (j) of this section. The time period in this paragraph does not apply in a design application.
                (2) Application under 35 U.S.C. 371. A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371. If a certified copy of the foreign application is not filed during the international stage in an international application in which the national stage commenced on or after December 18, 2013, a certified copy of the foreign application must be filed within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section.
                (3) If a certified copy of the foreign application is not filed within the time period specified paragraph (f)(1) of this section in an application under 35 U.S.C. 111(a) or within the period specified in paragraph (f)(2) of this section in an international application entering the national stage under 35 U.S.C. 371, and an exception in paragraph (h), (i), or (j) of this section is not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
                (g) Requirement for filing priority claim, certified copy of foreign application, and translation in any application. (1) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.
                (2) The Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than otherwise provided in this section:
                (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
                (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
                (iii) When deemed necessary by the examiner.
                (3) An English language translation of a non-English language foreign application is not required except:
                (i) When the application is involved in an interference (see § 41.202 of this chapter) or derivation (see part 42 of this chapter) proceeding;
                (ii) When necessary to overcome the date of a reference relied upon by the examiner; or
                (iii) When specifically required by the examiner.
                (4) If an English language translation of a non-English language foreign application is required, it must be filed together with a statement that the translation of the certified copy is accurate.
                (h) Certified copy in another U.S. patent or application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will be considered satisfied in a reissue application if the patent for which reissue is sought satisfies the requirement of this section for a certified copy of the foreign application and such patent is identified as containing a certified copy of the foreign application. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application will also be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and such prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.
                (i) Foreign intellectual property office participating in a priority document exchange agreement. The requirement in paragraphs (f) and (g) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
                (1) The foreign application was filed in a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), or a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy;
                (2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;
                (3) The copy of the foreign application is received by the Office from the participating foreign intellectual property office, or a certified copy of the foreign application is filed, within the period specified in paragraph (g)(1) of this section; and
                (4) The applicant files in a separate document a request that the Office obtain a copy of the foreign application from a participating intellectual property office that permits the Office to obtain such a copy where, although the foreign application was not filed in a participating foreign intellectual property office, a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the Office to obtain such a copy. The request must identify the participating intellectual property office and the subsequent application by the application number, day, month, and year of its filing in which a copy of the foreign application was filed. The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.
                (j) Interim copy. The requirement in paragraph (f) of this section for a certified copy of the foreign application to be filed within the time limit set forth therein will be considered satisfied if:
                (1) A copy of the original foreign application clearly labeled as “Interim Copy,” including the specification, and any drawings or claims upon which it is based, is filed in the Office together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority);
                (2) The copy of the foreign application and separate cover sheet are filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or with a petition under paragraph (e) or (f) of this section; and
                (3) A certified copy of the foreign application is filed within the period specified in paragraph (g)(1) of this section.
                (k) Requirements for certain applications filed on or after March 16, 2013. If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
                (l) Inventor's certificates. An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant, when submitting a claim for such right as specified in this section, must include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor's certificate, had the option to file an application for either a patent or an inventor's certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
                (m) Time for filing priority claim and certified copy of foreign application in an international design application designating the United States. In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations. In a nonprovisional international design application, the priority claim, unless made in accordance with the Hague Agreement and the Hague Agreement Regulations, must be presented in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.
                (n) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section that any priority claim be presented in an application data sheet (§ 1.76), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section will be satisfied by the presentation of such priority claim in the oath or declaration under § 1.63 in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any priority claim submitted for a petition under paragraph (c) of this section to restore the right of priority to a foreign application.
                (o) Priority under 35 U.S.C. 386(a) or (b). The right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
                (p) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
                [80 FR 17956, Apr. 2, 2015]

                § 1.56
                Duty to disclose information material to patentability.

                (a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is cancelled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
                (1) Prior art cited in search reports of a foreign patent office in a counterpart application, and
                (2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
                (b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
                (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
                (2) It refutes, or is inconsistent with, a position the applicant takes in:
                (i) Opposing an argument of unpatentability relied on by the Office, or
                (ii) Asserting an argument of patentability.
                A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
                (c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
                (1) Each inventor named in the application;
                (2) Each attorney or agent who prepares or prosecutes the application; and
                (3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.
                (d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.
                (e) In any continuation-in-part application, the duty under this section includes the duty to disclose to the Office all information known to the person to be material to patentability, as defined in paragraph (b) of this section, which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.
                [57 FR 2034, Jan. 17, 1992, as amended at 65 FR 54666, Sept. 8, 2000; 77 FR 48818, Aug. 14, 2012]

                § 1.57
                Incorporation by reference.

                (a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b).
                (1) If the applicant has provided a correspondence address (§ 1.33(a)), the applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment. Such a notice may be combined with a notice under § 1.53(f).
                (2) If the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application, and the fee required by § 1.17(i) if it is in a language other than English, and pay the surcharge required by § 1.16(f), to avoid abandonment.
                (3) An application abandoned under paragraph (a)(1) or (a)(2) of this section shall be treated as having never been filed, unless:
                (i) The application is revived under § 1.137; and
                (ii) A copy of the specification and any drawings of the previously filed application are filed in the Office.
                (4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363, or the previously filed application is a foreign priority application and the conditions set forth in § 1.55(i) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g).
                (b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).
                (1) The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. The applicant is also required to:
                (i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;
                (ii) Supply an English language translation of any prior-filed application that is in a language other than English; and
                (iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.

                (2) Any amendment to an international application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application. Any omitted portion of the international application which applicant desires to be effective as to all designated States, subject to PCT Rule 20.8(b), must be submitted in accordance with PCT Rule 20.
                (3) If an application is not otherwise entitled to a filing date under § 1.53(b), the amendment must be by way of a petition pursuant to § 1.53(e) accompanied by the fee set forth in § 1.17(f).
                (4) Any amendment to an international design application pursuant to paragraph (b)(1) of this section shall be effective only as to the United States and shall have no effect on the filing date of the application. In addition, no request under this section to add the inadvertently omitted portion of the specification or drawings in an international design application will be acted upon by the Office prior to the international design application becoming a nonprovisional application.
                (c) Except as provided in paragraph (a) or (b) of this section, an incorporation by reference must be set forth in the specification and must:

                (1) Express a clear intent to incorporate by reference by using the root words “incorporat(e)” and “reference” (e.g., “incorporate by reference”); and
                (2) Clearly identify the referenced patent, application, or publication.
                (d) “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. “Essential material” is material that is necessary to:
                (1) Provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. 112(a);
                (2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b); or
                (3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f).
                (e) Other material (“Nonessential material”) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.
                (f) The examiner may require the applicant to supply a copy of the material incorporated by reference. If the Office requires the applicant to supply a copy of material incorporated by reference, the material must be accompanied by a statement that the copy supplied consists of the same material incorporated by reference in the referencing application.
                (g) Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.
                (h) An incorporation of material by reference that does not comply with paragraphs (c), (d), or (e) of this section is not effective to incorporate such material unless corrected within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. In addition:

                (1) A correction to comply with paragraph (c)(1) of this section is permitted only if the application as filed clearly conveys an intent to incorporate the material by reference. A mere reference to material does not convey an intent to incorporate the material by reference.

                (2) A correction to comply with paragraph (c)(2) of this section is only permitted for material that was sufficiently described to uniquely identify the document.
                (i) An application transmittal letter limited to the transmittal of a copy of the specification and drawings from a previously filed application submitted under paragraph (a) or (b) of this section may be signed by a juristic applicant or patent owner.
                [78 FR 62401, Oct. 21, 2013, as amended at 80 FR 17959, Apr. 2, 2015]

                § 1.58
                Chemical and mathematical formulae and tables.
                (a) The specification, including the claims, may contain chemical and mathematical formulae, but shall not contain drawings or flow diagrams. The description portion of the specification may contain tables, but the same tables should not be included in both the drawings and description portion of the specification. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable.
                (b) Tables that are submitted in electronic form (§§ 1.96(c) and 1.821(c)) must maintain the spatial relationships (e.g., alignment of columns and rows) of the table elements when displayed so as to visually preserve the relational information they convey. Chemical and mathematical formulae must be encoded to maintain the proper positioning of their characters when displayed in order to preserve their intended meaning.
                (c) Chemical and mathematical formulae and tables must be presented in compliance with § 1.52(a) and (b), except that chemical and mathematical formulae or tables may be placed in a landscape orientation if they cannot be presented satisfactorily in a portrait orientation. Typewritten characters used in such formulae and tables must be chosen from a block (nonscript) type font or lettering style having capital letters which should be at least 0.422 cm. (0.166 inch) high (e.g., preferably Arial, Times Roman, or Courier with a font size of 12), but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6). A space at least 0.64 cm. (1/4 inch) high should be provided between complex formulae and tables and the text. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility.
                [69 FR 56540, Sept. 21, 2004, as amended at 78 FR 62401, Oct. 21, 2013]

                § 1.59
                Expungement of information or copy of papers in application file.
                (a) (1) Information in an application will not be expunged, except as provided in paragraph (b) of this section or § 41.7(a) or § 42.7(a) of this title.

                (2) Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment present on the filing date of the application) will not be expunged from the application file.
                (b) An applicant may request that the Office expunge information, other than what is excluded by paragraph (a)(2) of this section, by filing a petition under this paragraph. Any petition to expunge information from an application must include the fee set forth in § 1.17(g) and establish to the satisfaction of the Director that the expungement of the information is appropriate in which case a notice granting the petition for expungement will be provided.

                (c) Upon request by an applicant and payment of the fee specified in § 1.19(b), the Office will furnish copies of an application, unless the application has been disposed of (see §§ 1.53(e), (f) and (g)). The Office cannot provide or certify copies of an application that has been disposed of.
                [68 FR 38628, June 30, 2003, as amended at 69 FR 49999, Aug. 12, 2004; 69 FR 56540, Sept. 21, 2004; 77 FR 46624, Aug. 6, 2012; 77 FR 48818, Aug. 14, 2012]

                §§ 1.60-1.62
                [Reserved]

              Oath or Declaration

                § 1.63
                Inventor's oath or declaration.

                (a) 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 directed to the application, except as provided for in § 1.64. An oath or declaration under this section must:

                (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
                (2) Identify the application to which it is directed;
                (3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
                (4) State that the application was made or was authorized to be made by the person executing the oath or declaration.
                (b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
                (1) Each inventor by his or her legal name; and
                (2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

                (c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.
                (d)(1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
                (2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
                (3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64.
                (e)(1) An assignment may also serve as an oath or declaration required by this section if the assignment as executed:
                (i) Includes the information and statements required under paragraphs (a) and (b) of this section; and
                (ii) A copy of the assignment is recorded as provided for in part 3 of this chapter.
                (2) Any reference to an oath or declaration under this section includes an assignment as provided for in this paragraph.
                (f) With respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under § 1.64. With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.

                (g) An oath or declaration under this section, including the statement provided for in paragraph (e) of this section, must be executed (i.e., signed) in accordance either with § 1.66 or with an acknowledgment that any willful false statement made in such declaration or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than five (5) years, or both.
                (h) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1) will be placed in the file record of the application or patent, but may not necessarily be reviewed by the Office. Any request for correction of the named inventorship must comply with § 1.48 in an application and § 1.324 in a patent.
                [77 FR 48818, Aug. 14, 2012, as amended at 80 FR 17959, Apr. 2, 2015]

                § 1.64
                Substitute statement in lieu of an oath or declaration.
                (a) An applicant under § 1.43, 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63, or cannot be found or reached after diligent effort.
                (b) A substitute statement under this section must:
                (1) Comply with the requirements of § 1.63(a), identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;
                (2) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76, the residence and mailing address of the person signing the substitute statement;
                (3) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63, namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63; and
                (4) Unless the following information is supplied in an application data sheet in accordance with § 1.76, also identify:
                (i) Each inventor by his or her legal name; and
                (ii) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.
                (c) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
                (d) Any reference to an inventor's oath or declaration includes a substitute statement provided for in this section.
                (e) A substitute statement under this section must contain an acknowledgment that any willful false statement made in such statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
                (f) A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under § 1.63. The submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under § 1.43, 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.
                [77 FR 48819, Aug. 14, 2012]

                § 1.66
                Statements under oath.

                An oath or affirmation may be made before any person within the United States authorized by law to administer oaths. An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. The oath shall be attested in all cases in this and other countries, by the proper official seal of the officer before whom the oath or affirmation is made. Such oath or affirmation shall be valid as to execution if it complies with the laws of the State or country where made. When the person before whom the oath or affirmation is made in this country is not provided with a seal, his official character shall be established by competent evidence, as by a certificate from a clerk of a court of record or other proper officer having a seal.
                [77 FR 48819, Aug. 14, 2012]

                § 1.67
                Supplemental oath or declaration.
                (a) The applicant may submit an inventor's oath or declaration meeting the requirements of § 1.63, § 1.64, or § 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor's oath or declaration. Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(b) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76, except that any correction of inventorship must be pursuant to § 1.48.
                (b) A supplemental inventor's oath or declaration under this section must be executed by the person whose inventor's oath or declaration is being withdrawn, replaced, or otherwise corrected.
                (c) The Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and § 1.63 or 1.162 for an application to provide an additional inventor's oath or declaration for the application.
                (d) No new matter may be introduced into a nonprovisional application after its filing date even if an inventor's oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed inventor's oath or declaration.
                [77 FR 48819, Aug. 14, 2012]

                § 1.68
                Declaration in lieu of oath.
                Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant's own knowledge are true and that all statements made on information and belief are believed to be true.
                [49 FR 48452, Dec. 12, 1984]

                § 1.69
                Foreign language oaths and declarations.
                (a) Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
                (b) Unless the text of any oath or declaration in a language other than English is in a form provided by the Patent and Trademark Office or in accordance with PCT Rule 4.17(iv), it must be accompanied by an English translation together with a statement that the translation is accurate, except that in the case of an oath or declaration filed under § 1.63, the translation may be filed in the Office no later than two months from the date applicant is notified to file the translation.
                (35 U.S.C. 6, Pub. L. 97-247)
                [42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62 FR 53189, Oct. 10, 1997; 69 FR 56540, Sept. 21, 2004; 70 FR 3890, Jan. 27, 2005]

                § 1.70
                [Reserved]

              Specification

                Authority:
                Secs. 1.71 to 1.79 also issued under 35 U.S.C. 112.

                § 1.71
                Detailed description and specification of the invention.

                (a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
                (b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
                (c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.

                (d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, “© 1983 John Doe” (17 U.S.C. 401) and “ *M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
                (e) The authorization shall read as follows:

                  A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.

                (f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application.
                (g)(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
                (2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth in § 1.17(i) if not filed within one of the following time periods:
                (i) Within three months of the filing date of a national application;
                (ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
                (iii) Before the mailing of a first Office action on the merits; or
                (iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.
                (3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
                [24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988; 58 FR 38723, July 20, 1993; 68 FR 38628, June 30, 2003; 70 FR 1823, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 78 FR 11055, Feb. 14, 2013]

                § 1.72
                Title and abstract.
                (a) The title of the invention may not exceed 500 characters in length and must be as short and specific as possible. Characters that cannot be captured and recorded in the Office's automated information systems may not be reflected in the Office's records in such systems or in documents created by the Office. Unless the title is supplied in an application data sheet (§ 1.76), the title of the invention should appear as a heading on the first page of the specification.
                (b) A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading “Abstract” or “Abstract of the Disclosure.” The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract must be as concise as the disclosure permits, preferably not exceeding 150 words in length. The purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.
                [65 FR 54667, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000; 68 FR 38628, June 30, 2003; 78 FR 62402, Oct. 21, 2013]

                § 1.73
                Summary of the invention.
                A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description. Such summary should, when set forth, be commensurate with the invention as claimed and any object recited should be that of the invention as claimed.

                § 1.74
                Reference to drawings.
                When there are drawings, there shall be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures and to the different parts by use of reference letters or numerals (preferably the latter).

                § 1.75
                Claim(s).
                (a) The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
                (b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
                (c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
                (d)(1) The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a).)
                (2) See §§ 1.141 to 1.146 as to claiming different inventions in one application.
                (e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:

                (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
                (2) A phrase such as “wherein the improvement comprises,” and
                (3) Those elements, steps and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
                (f) If there are several claims, they shall be numbered consecutively in Arabic numerals.
                (g) The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
                (h) The claim or claims must commence on a separate physical sheet or electronic page. Any sheet including a claim or portion of a claim may not contain any other parts of the application or other material.
                (i) Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
                (35 U.S.C. 6; 15 U.S.C. 1113, 1126)
                [31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 17, 1982; 61 FR 42803, Aug. 19, 1996; 68 FR 38628, June 30, 2003; 70 FR 3891, Jan. 27, 2005; 72 FR 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009]

                § 1.76
                Application data sheet.
                (a) Application data sheet. An application data sheet is a sheet or sheets that may be submitted in a provisional application under 35 U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a nonprovisional international design application, or a national stage application under 35 U.S.C. 371 and must be submitted when required by § 1.55 or 1.78 to claim priority to or the benefit of a prior-filed application under 35 U.S.C. 119, 120, 121, 365, or 386. An application data sheet must be titled “Application Data Sheet.” An application data sheet must contain all of the section headings listed in paragraph (b) of this section, except as provided in paragraph (c)(2) of this section, with any appropriate data for each section heading. If an application data sheet is provided, the application data sheet is part of the application for which it has been submitted.
                (b) Bibliographic data. Bibliographic data as used in paragraph (a) of this section includes:
                (1) Inventor information. This information includes the legal name, residence, and mailing address of the inventor or each joint inventor.
                (2) Correspondence information. This information includes the correspondence address, which may be indicated by reference to a customer number, to which correspondence is to be directed (see § 1.33(a)).
                (3) Application information. This information includes the title of the invention, the total number of drawing sheets, a suggested drawing figure for publication (in a nonprovisional application), any docket number assigned to the application, the type of application (e.g., utility, plant, design, reissue, provisional), whether the application discloses any significant part of the subject matter of an application under a secrecy order pursuant to § 5.2 of this chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus and species of the plant claimed, as well as the variety denomination. When information concerning the previously filed application is required under § 1.57(a), application information also includes the reference to the previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed.
                (4) Representative information. This information includes the registration number of each practitioner having a power of attorney in the application (preferably by reference to a customer number). Providing this information in the application data sheet does not constitute a power of attorney in the application (see § 1.32).
                (5) Domestic benefit information. This information includes the application number, the filing date, the status (including patent number if available), and relationship of each application for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120 and § 1.78.
                (6) Foreign priority information. This information includes the application number, country (or intellectual property authority), and filing date of each foreign application for which priority is claimed. Providing this information in the application data sheet constitutes the claim for priority as required by 35 U.S.C. 119(b) and § 1.55.
                (7) Applicant information: This information includes the name (either natural person or juristic entity) and address of the legal representative, assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter who is the applicant under § 1.43 or § 1.46. Providing assignment information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
                (c) Correcting and updating an application data sheet. (1) Information in a previously submitted application data sheet, inventor's oath or declaration under § 1.63, § 1.64 or § 1.67, or otherwise of record, may be corrected or updated until payment of the issue fee by a new application data sheet providing corrected or updated information, except that inventorship changes must comply with the requirements of § 1.48, foreign priority and domestic benefit information changes must comply with §§ 1.55 and 1.78, and correspondence address changes are governed by § 1.33(a).
                (2) An application data sheet providing corrected or updated information may include all of the sections listed in paragraph (b) of this section or only those sections containing changed or updated information. The application data sheet must include the section headings listed in paragraph (b) of this section for each section included in the application data sheet, and must identify the information that is being changed, with underlining for insertions, and strike-through or brackets for text removed, except that identification of information being changed is not required for an application data sheet included with an initial submission under 35 U.S.C. 371.
                (d) Inconsistencies between application data sheet and other documents. For inconsistencies between information that is supplied by both an application data sheet under this section and other documents:
                (1) The most recent submission will govern with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor's oath or declaration, except that:
                (i) The most recent application data sheet will govern with respect to foreign priority (§ 1.55) or domestic benefit (§ 1.78) claims; and
                (ii) The naming of the inventorship is governed by § 1.41 and changes to inventorship or the names of the inventors is governed by § 1.48.
                (2) The information in the application data sheet will govern when inconsistent with the information supplied at the same time by a designation of correspondence address or the inventor's oath or declaration. The information in the application data sheet will govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form, Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form.

                (3) The Office will capture bibliographic information from the application data sheet. The Office will generally not review the inventor's oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet. Incorrect bibliographic information contained in an application data sheet may be corrected as provided in paragraph (c)(1) of this section.

                (e) Signature requirement. An application data sheet must be signed in compliance with § 1.33(b). An unsigned application data sheet will be treated only as a transmittal letter.
                (f) Patent Law Treaty Model International Forms. The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied by the presentation of such priority or benefit claim in the Patent Law Treaty Model International Request Form, and the requirement in § 1.57(a) for a reference to the previously filed application in an application data sheet will be satisfied by the presentation of such reference to the previously filed application in the Patent Law Treaty Model International Request Form. The requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied by the presentation of the name of the applicant in the Patent Law Treaty Model International Request Form, Patent Law Treaty Model International Request for Recordation of Change in Name or Address Form, or Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, as applicable.
                (g) Patent Cooperation Treaty Request Form. The requirement in § 1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be satisfied in a national stage application under 35 U.S.C. 371 by the presentation of such benefit claim in the Patent Cooperation Treaty Request Form contained in the international application or the presence of such benefit claim on the front page of the publication of the international application under PCT Article 21(2). The requirement in § 1.55 or § 1.78 for the presentation of a priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet and the requirement in § 1.46 for the presentation of the name of the applicant under 35 U.S.C. 118 in an application data sheet will be satisfied in an application under 35 U.S.C. 111 by the presentation of such priority or benefit claim and presentation of the name of the applicant in a Patent Cooperation Treaty Request Form. If a Patent Cooperation Treaty Request Form is submitted in an application under 35 U.S.C. 111, the Patent Cooperation Treaty Request Form must be accompanied by a clear indication that treatment of the application as an application under 35 U.S.C. 111 is desired.
                [65 FR 54668, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000; 69 FR 56540, Sept. 21, 2004; 70 FR 54266, Sept. 14, 2005;; 72 FR 46837, Aug. 21, 2007; 74 FR 52689, Oct. 14, 2009; 77 FR 48820, Aug. 14, 2012; 78 FR 11055, Feb. 14, 2013; 78 FR 62402, Oct. 21, 2013; 80 FR 17959, Apr. 2, 2015]

                § 1.77
                Arrangement of application elements.
                (a) The elements of the application, if applicable, should appear in the following order:
                (1) Utility application transmittal form.
                (2) Fee transmittal form.
                (3) Application data sheet (see § 1.76).
                (4) Specification.
                (5) Drawings.
                (6) The inventor's oath or declaration.
                (b) The specification should include the following sections in order:
                (1) Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet).
                (2) Cross-reference to related applications.
                (3) Statement regarding federally sponsored research or development.
                (4) The names of the parties to a joint research agreement.
                (5) Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc (see § 1.52(e)(5)). The total number of compact discs including duplicates and the files on each compact disc shall be specified.
                (6) Statement regarding prior disclosures by the inventor or a joint inventor.
                (7) Background of the invention.
                (8) Brief summary of the invention.
                (9) Brief description of the several views of the drawing.
                (10) Detailed description of the invention.

                (11) A claim or claims.
                (12) Abstract of the disclosure.
                (13) “Sequence Listing,” if on paper (see §§ 1.821 through 1.825).
                (c) The text of the specification sections defined in paragraphs (b)(1) through (b)(12) of this section, if applicable, should be preceded by a section heading in uppercase and without underlining or bold type.
                [65 FR 54668, Sept. 8, 2000, as amended at 70 FR 1823, Jan. 11, 2005; 77 FR 48820, Aug. 14, 2012; 78 FR 11055, Feb. 14, 2013]

                § 1.78
                Claiming benefit of earlier filing date and cross-references to other applications.
                (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
                (1) The nonprovisional application or international application designating the United States must be:
                (i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
                (ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
                (2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g).
                (3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)).
                (4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (c) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
                (i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
                (ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.

                (5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet (§ 1.76(b)(5)) eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
                (6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
                (b) Delayed filing of the subsequent nonprovisional application or international application designating the United States. If the subsequent nonprovisional application or international application designating the United States has a filing date which is after the expiration of the twelve-month period set forth in paragraph (a)(1)(i) of this section but within two months from the expiration of the period set forth in paragraph (a)(1)(i) of this section, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent nonprovisional application or international application designating the United States within the period set forth in paragraph (a)(1)(i) of this section was unintentional.
                (1) A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
                (i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
                (ii) The petition fee as set forth in § 1.17(m); and
                (iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

                (2) The restoration of the right of priority under PCT Rule 26bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
                (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
                (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
                (2) The petition fee as set forth in § 1.17(m); and
                (3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
                (d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
                (1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
                (i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
                (ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
                (iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
                (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
                (3)(i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.

                (ii) If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
                (A) An application for a design patent;
                (B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
                (C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
                (iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
                (4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
                (5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5)).
                (6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
                (i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k), paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
                (ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
                (7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
                (e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
                (1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;

                (2) The petition fee as set forth in § 1.17(m); and

                (3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
                (f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
                (g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
                (h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
                (i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application.
                (j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
                (k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
                [80 FR 17959, Apr. 2, 2015]

                § 1.79
                [Reserved]

              The Drawings

                Authority:
                Secs. 1.81 to 1.88 also issued under 35 U.S.C. 113.

                § 1.81
                Drawings required in patent application.

                (a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
                (b) Drawings may include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views).
                (c) Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter and the applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.
                (d) Drawings submitted after the filing date of the application may not be used to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.
                [43 FR 4015, Jan. 31, 1978, as amended at 53 FR 47808, Nov. 28, 1988; 77 FR 48821, Aug. 14, 2012; 78 FR 62404, Oct. 21, 2013]

                § 1.83
                Content of drawing.

                (a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
                (b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
                (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).
                [31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60 FR 20226, Apr. 25, 1995; 69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct. 21, 2013]

                § 1.84
                Standards for drawings.
                (a) Drawings. There are two acceptable categories for presenting drawings in utility and design patent applications.
                (1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings; or
                (2) Color. Color drawings are permitted in design applications. Where a design application contains color drawings, the application must include the number of sets of color drawings required by paragraph (a)(2)(ii) of this section and the specification must contain the reference required by paragraph (a)(2)(iii) of this section. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application. The color drawings must be of sufficient quality such that all details in the drawings are reproducible in black and white in the printed patent. Color drawings are not permitted in international applications (see PCT Rule 11.13). The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
                (i) The fee set forth in § 1.17(h);
                (ii) One (1) set of color drawings if submitted via the Office electronic filing system or three (3) sets of color drawings if not submitted via the Office electronic filing system; and

                (iii) An amendment to the specification to insert (unless the specification contains or has been previously amended to contain) the following language as the first paragraph of the brief description of the drawings:

                  The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

                (b) Photographs—(1) Black and white. Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.
                (2) Color photographs. Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied. See paragraphs (a)(2) and (b)(1) of this section.
                (c) Identification of drawings. Identifying indicia should be provided, and if provided, should include the title of the invention, inventor's name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet within the top margin. Each drawing sheet submitted after the filing date of an application must be identified as either “Replacement Sheet” or “New Sheet” pursuant to § 1.121(d). If a marked-up copy of any amended drawing figure including annotations indicating the changes made is filed, such marked-up copy must be clearly labeled as “Annotated Sheet” pursuant to § 1.121(d)(1).
                (d) Graphic forms in drawings. Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings, and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.
                (e) Type of paper. Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non-shiny, and durable. All sheets must be reasonably free from cracks, creases, and folds. Only one side of the sheet may be used for the drawing. Each sheet must be reasonably free from erasures and must be free from alterations, overwritings, and interlineations. Photographs must be developed on paper meeting the sheet-size requirements of paragraph (f) of this section and the margin requirements of paragraph (g) of this section. See paragraph (b) of this section for other requirements for photographs.
                (f) Size of paper. All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
                (1) 21.0 cm. by 29.7 cm. (DIN size A4), or
                (2) 21.6 cm. by 27.9 cm. (81/2 by 11 inches).
                (g) Margins. The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two catercorner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (615/16 by 95/8 inches) on 21.6 cm. by 27.9 cm. (81/2 by 11 inch) drawing sheets.
                (h) Views. The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
                (1) Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
                (2) Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.
                (i) Where views on two or more sheets form, in effect, a single complete view, the views on the several sheets must be so arranged that the complete figure can be assembled without concealing any part of any of the views appearing on the various sheets.
                (ii) A very long view may be divided into several parts placed one above the other on a single sheet. However, the relationship between the different parts must be clear and unambiguous.
                (3) Sectional views. The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight. Hatching must be used to indicate section portions of an object, and must be made by regularly spaced oblique parallel lines spaced sufficiently apart to enable the lines to be distinguished without difficulty. Hatching should not impede the clear reading of the reference characters and lead lines. If it is not possible to place reference characters outside the hatched area, the hatching may be broken off wherever reference characters are inserted. Hatching must be at a substantial angle to the surrounding axes or principal lines, preferably 45°. A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
                (4) Alternate position. A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
                (5) Modified forms. Modified forms of construction must be shown in separate views.

                (i) Arrangement of views. One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin to be used as the heading space, is on the right-hand side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
                (j) Front page view. The drawing must contain as many views as necessary to show the invention. One of the views should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention. Views must not be connected by projection lines and must not contain center lines. Applicant may suggest a single view (by figure number) for inclusion on the front page of the patent application publication and patent.
                (k) Scale. The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. Indications such as “actual size” or “scale 1/2” on the drawings are not permitted since these lose their meaning with reproduction in a different format.
                (l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
                (m) Shading. The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
                (n) Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
                (o) Legends. Suitable descriptive legends may be used subject to approval by the Office, or may be required by the examiner where necessary for understanding of the drawing. They should contain as few words as possible.
                (p) Numbers, letters, and reference characters. (1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
                (2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
                (3) Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
                (4) The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
                (5) Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.
                (q) Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.
                (r) Arrows. Arrows may be used at the ends of the lines, provided that their meaning is clear, as follows:
                (1) On a lead line, a freestanding arrow to indicate the entire section towards which it points;
                (2) On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
                (3) To show the direction of movement.
                (s) Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, “© 1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 1.71(e) is included at the beginning (preferably as the first paragraph) of the specification.
                (t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number, and the second being the total number of sheets of drawings, with no other marking.
                (u) Numbering of views. (1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
                (2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
                (v) Security markings. Authorized security markings may be placed on the drawings provided they are outside the sight, preferably centered in the top margin.
                (w) Corrections. Any corrections on drawings submitted to the Office must be durable and permanent.
                (x) Holes. No holes should be made by applicant in the drawing sheets.
                (y) Types of drawings. See § 1.152 for design drawings, § 1.1026 for international design reproductions, § 1.165 for plant drawings, and § 1.173(a)(2) for reissue drawings.
                [58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR 54669, Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000; 69 FR 56541, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 78 FR 11057, Feb. 14, 2013; 80 FR 17962, Apr. 2, 2015]

                § 1.85
                Corrections to drawings.

                (a) A utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. Except as provided in § 1.215(c), any patent application publication will not include drawings filed after the application has been placed on the files for examination. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c)). If a drawing in a design application meets the requirements of § 1.84(e), (f), and (g) and is suitable for reproduction, but is not otherwise in compliance with § 1.84, the drawing may be admitted for examination.
                (b) The Office will not release drawings for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.
                (c) If a corrected drawing is required or if a drawing does not comply with § 1.84 or an amended drawing submitted under § 1.121(d) in a nonprovisional international design application does not comply with § 1.1026 at the time an application is allowed, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mail date of the notice of allowability within which the applicant must file a corrected drawing in compliance with § 1.84 or 1.1026, as applicable, to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
                [65 FR 54670, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct. 21, 2013; 80 FR 17962, Apr. 2, 2015]

                § 1.88
                [Reserved]

              Models, Exhibits, Specimens

                Authority:
                Secs. 1.91 to 1.95 also issued under 35 U.S.C. 114.

                § 1.91
                Models or exhibits not generally admitted as part of application or patent.
                (a) A model or exhibit will not be admitted as part of the record of an application unless it:
                (1) Substantially conforms to the requirements of § 1.52 or § 1.84;
                (2) Is specifically required by the Office; or
                (3) Is filed with a petition under this section including:
                (i) The fee set forth in § 1.17(h); and
                (ii) An explanation of why entry of the model or exhibit in the file record is necessary to demonstrate patentability.

                (b) Notwithstanding the provisions of paragraph (a) of this section, a model, working model, or other physical exhibit may be required by the Office if deemed necessary for any purpose in examination of the application.
                (c) Unless the model or exhibit substantially conforms to the requirements of § 1.52 or § 1.84 under paragraph (a)(1) of this section, it must be accompanied by photographs that show multiple views of the material features of the model or exhibit and that substantially conform to the requirements of § 1.84.
                [62 FR 53190, Oct. 10, 1997, as amended at 65 FR 54670, Sept. 8, 2000; 69 FR 56541, Sept. 21, 2004]

                § 1.92
                [Reserved]

                § 1.93
                Specimens.
                When the invention relates to a composition of matter, the applicant may be required to furnish specimens of the composition, or of its ingredients or intermediates, for the purpose of inspection or experiment.

                § 1.94
                Return of models, exhibits or specimens.
                (a) Models, exhibits, or specimens may be returned to the applicant if no longer necessary for the conduct of business before the Office. When applicant is notified that a model, exhibit, or specimen is no longer necessary for the conduct of business before the Office and will be returned, applicant must arrange for the return of the model, exhibit, or specimen at the applicant's expense. The Office will dispose of perishables without notice to applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office.
                (b) Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. The provisions of this paragraph do not apply to a model or exhibit that substantially conforms to the requirements of § 1.52 or § 1.84, where the model or exhibit has been described by photographs that substantially conform to § 1.84, or where the model, exhibit or specimen is perishable.
                (c) Where applicant is notified, pursuant to paragraph (a) of this section, of the need to arrange for return of a model, exhibit or specimen, applicant must arrange for the return within the period set in such notice, to avoid disposal of the model, exhibit or specimen by the Office. Extensions of time are available under § 1.136, except in the case of perishables. Failure to establish that the return of the item has been arranged for within the period set or failure to have the item removed from Office storage within a reasonable amount of time notwithstanding any arrangement for return, will permit the Office to dispose of the model, exhibit or specimen.
                [69 FR 56542, Sept. 21, 2004]

                § 1.95
                Copies of exhibits.
                Copies of models or other physical exhibits will not ordinarily be furnished by the Office, and any model or exhibit in an application or patent shall not be taken from the Office except in the custody of an employee of the Office specially authorized by the Director.

                § 1.96
                Submission of computer program listings.
                (a) General. Descriptions of the operation and general content of computer program listings should appear in the description portion of the specification. A computer program listing for the purpose of this section is defined as a printout that lists in appropriate sequence the instructions, routines, and other contents of a program for a computer. The program listing may be either in machine or machine-independent (object or source) language which will cause a computer to perform a desired procedure or task such as solve a problem, regulate the flow of work in a computer, or control or monitor events. Computer program listings may be submitted in patent applications as set forth in paragraphs (b) and (c) of this section.
                (b) Material which will be printed in the patent: If the computer program listing is contained in 300 lines or fewer, with each line of 72 characters or fewer, it may be submitted either as drawings or as part of the specification.

                (1) Drawings. If the listing is submitted as drawings, it must be submitted in the manner and complying with the requirements for drawings as provided in § 1.84. At least one figure numeral is required on each sheet of drawing.
                (2) Specification. (i) If the listing is submitted as part of the specification, it must be submitted in accordance with the provisions of § 1.52.
                (ii) Any listing having more than 60 lines of code that is submitted as part of the specification must be positioned at the end of the description but before the claims. Any amendment must be made by way of submission of a substitute sheet.
                (c) As an appendix which will not be printed: Any computer program listing may, and any computer program listing having over 300 lines (up to 72 characters per line) must, be submitted on a compact disc in compliance with § 1.52(e). A compact disc containing such a computer program listing is to be referred to as a “computer program listing appendix.” The “computer program listing appendix” will not be part of the printed patent. The specification must include a reference to the “computer program listing appendix” at the location indicated in § 1.77(b)(5).
                (1) Multiple computer program listings for a single application may be placed on a single compact disc. Multiple compact discs may be submitted for a single application if necessary. A separate compact disc is required for each application containing a computer program listing that must be submitted on a “computer program listing appendix.”
                (2) The “computer program listing appendix” must be submitted on a compact disc that complies with § 1.52(e) and the following specifications (no other format shall be allowed):
                (i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple Macintosh;
                (ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or Macintosh;
                (iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
                (iv) Control Codes: the data must not be dependent on control characters or codes which are not defined in the ASCII character set; and
                (v) Compression: uncompressed data.
                [61 FR 42804, Aug. 19, 1996, as amended at 65 FR 54670, Sept. 8, 2000; 70 FR 54266, Sept. 14, 2005]

              Information Disclosure Statement

                § 1.97
                Filing of information disclosure statement.
                (a) In order for an applicant for a patent or for a reissue of a patent to have an information disclosure statement in compliance with § 1.98 considered by the Office during the pendency of the application, the information disclosure statement must satisfy one of paragraphs (b), (c), or (d) of this section.
                (b) An information disclosure statement shall be considered by the Office if filed by the applicant within any one of the following time periods:
                (1) Within three months of the filing date of a national application other than a continued prosecution application under § 1.53(d);
                (2) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
                (3) Before the mailing of a first Office action on the merits;
                (4) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114; or
                (5) Within three months of the date of publication of the international registration under Hague Agreement Article 10(3) in an international design application.
                (c) An information disclosure statement shall be considered by the Office if filed after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of any of a final action under § 1.113, a notice of allowance under § 1.311, or an action that otherwise closes prosecution in the application, and it is accompanied by one of:
                (1) The statement specified in paragraph (e) of this section; or
                (2) The fee set forth in § 1.17(p).

                (d) An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
                (1) The statement specified in paragraph (e) of this section; and
                (2) The fee set forth in § 1.17(p).
                (e) A statement under this section must state either:
                (1) That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
                (2) That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
                (f) No extensions of time for filing an information disclosure statement are permitted under § 1.136. If a bona fide attempt is made to comply with § 1.98, but part of the required content is inadvertently omitted, additional time may be given to enable full compliance.
                (g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.
                (h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
                (i) If an information disclosure statement does not comply with either this section or § 1.98, it will be placed in the file but will not be considered by the Office.
                [57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR 54670, Sept. 8, 2000; 80 FR 17963, Apr. 2, 2015]

                § 1.98
                Content of information disclosure statement.
                (a) Any information disclosure statement filed under § 1.97 shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this section.
                (1) A list of all patents, publications, applications, or other information submitted for consideration by the Office. U.S. patents and U.S. patent application publications must be listed in a section separately from citations of other documents. Each page of the list must include:
                (i) The application number of the application in which the information disclosure statement is being submitted;
                (ii) A column that provides a space, next to each document to be considered, for the examiner's initials; and
                (iii) A heading that clearly indicates that the list is an information disclosure statement.
                (2) A legible copy of:
                (i) Each foreign patent;
                (ii) Each publication or that portion which caused it to be listed, other than U.S. patents and U.S. patent application publications unless required by the Office;
                (iii) For each cited pending unpublished U.S. application, the application specification including the claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion; and
                (iv) All other information or that portion which caused it to be listed.
                (3)(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant's specification or incorporated therein.
                (ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).

                (b)(1) Each U.S. patent listed in an information disclosure statement must be identified by inventor, patent number, and issue date.
                (2) Each U.S. patent application publication listed in an information disclosure statement shall be identified by applicant, patent application publication number, and publication date.
                (3) Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.
                (4) Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.
                (5) Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.
                (c) When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of one of the patents or publications as specified in paragraph (a) of this section may be submitted without copies of the other patents or publications, provided that it is stated that these other patents or publications are cumulative.
                (d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
                (1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120; and
                (2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.
                [65 FR 54671, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 68 FR 38628, June 30, 2003; 69 FR 56542, Sept. 21, 2004]

                § 1.99
                [Reserved]

              Examination of Applications

                Authority:
                Secs. 1.101 to 1.108 also issued under 35 U.S.C. 131, 132.

                § 1.101
                [Reserved]

                § 1.102
                Advancement of examination.
                (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Director to expedite the business of the Office, or upon filing of a request under paragraph (b) or (e) of this section or upon filing a petition or request under paragraph (c) or (d) of this section with a showing which, in the opinion of the Director, will justify so advancing it.
                (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
                (c) A petition to make an application special may be filed without a fee if the basis for the petition is:
                (1) The applicant's age or health; or
                (2) That the invention will materially:
                (i) Enhance the quality of the environment;
                (ii) Contribute to the development or conservation of energy resources; or
                (iii) Contribute to countering terrorism.
                (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the fee set forth in § 1.17(h).

                (e) A request for prioritized examination under this paragraph (e) must comply with the requirements of this paragraph (e) and be accompanied by the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and if not already paid, the publication fee set forth in § 1.18(d). An application for which prioritized examination has been requested may not contain or be amended to contain more than four independent claims, more than thirty total claims, or any multiple dependent claim. Prioritized examination under this paragraph (e) will not be accorded to international applications that have not entered the national stage under 35 U.S.C. 371, design applications, reissue applications, provisional applications, or reexamination proceedings. A request for prioritized examination must also comply with the requirements of paragraph (e)(1) or (2) of this section. No more than 12,000 requests for such prioritized examination will be accepted in any fiscal year.
                (1) A request for prioritized examination may be filed with an original utility or plant nonprovisional application under 35 U.S.C. 111(a). The application must include a specification as prescribed by 35 U.S.C. 112 including at least one claim, a drawing when necessary, and the inventor's oath or declaration on filing, except that the filing of an inventor's oath or declaration may be postponed in accordance with § 1.53(f)(3) if an application data sheet meeting the conditions specified in § 1.53(f)(3)(i) is present upon filing. If the application is a utility application, it must be filed via the Office's electronic filing system and include the filing fee under § 1.16(a), search fee under § 1.16(k), and examination fee under § 1.16(o) upon filing. If the application is a plant application, it must include the filing fee under § 1.16(c), search fee under § 1.16(m), and examination fee under § 1.16(q) upon filing. The request for prioritized examination in compliance with this paragraph must be present upon filing of the application, except that the applicant may file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim not later than one month from a first decision on the request for prioritized examination. This one-month time period is not extendable.
                (2) A request for prioritized examination may be filed with or after a request for continued examination in compliance with § 1.114. If the application is a utility application, the request must be filed via the Office's electronic filing system. The request must be filed before the mailing of the first Office action after the filing of the request for continued examination under § 1.114. Only a single such request for prioritized examination under this paragraph may be granted in an application.
                (36 U.S.C. 6; 15 U.S.C. 1113, 1123)
                [24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct. 10, 1997; 65 FR 54671, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 76 FR 59054, Sept. 23, 2011; 76 FR 78569, Dec. 19, 2011; 79 FR 12390, Mar. 5, 2014; 84 FR 45910, Sept. 3, 2019]

                § 1.103
                Suspension of action by the Office.
                (a) Suspension for cause. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph for good and sufficient cause. The Office will not suspend action if a reply by applicant to an Office action is outstanding. Any petition for suspension of action under this paragraph must specify a period of suspension not exceeding six months. Any petition for suspension of action under this paragraph must also include:
                (1) A showing of good and sufficient cause for suspension of action; and
                (2) The fee set forth in § 1.17(g), unless such cause is the fault of the Office.
                (b) Limited suspension of action in a continued prosecution application (CPA) filed under § 1.53(d). On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph in a continued prosecution application filed under § 1.53(d) for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for an application filed under § 1.53(d), specify the period of suspension, and include the processing fee set forth in § 1.17(i).
                (c) Limited suspension of action after a request for continued examination (RCE) under § 1.114. On request of the applicant, the Office may grant a suspension of action by the Office under this paragraph after the filing of a request for continued examination in compliance with § 1.114 for a period not exceeding three months. Any request for suspension of action under this paragraph must be filed with the request for continued examination under § 1.114, specify the period of suspension, and include the processing fee set forth in § 1.17(i).

                (d) Deferral of examination. On request of the applicant, the Office may grant a deferral of examination under the conditions specified in this paragraph for a period not extending beyond three years from the earliest filing date for which a benefit is claimed under title 35, United States Code. A request for deferral of examination under this paragraph must include the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). A request for deferral of examination under this paragraph will not be granted unless:
                (1) The application is an original utility or plant application filed under § 1.53(b) or resulting from entry of an international application into the national stage after compliance with § 1.495;
                (2) The applicant has not filed a nonpublication request under § 1.213(a), or has filed a request under § 1.213(b) to rescind a previously filed nonpublication request;
                (3) The application is in condition for publication as provided in § 1.211(c); and
                (4) The Office has not issued either an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
                (e) Notice of suspension on initiative of the Office. The Office will notify applicant if the Office suspends action by the Office on an application on its own initiative.
                (f) Suspension of action for public safety or defense. The Office may suspend action by the Office by order of the Director if the following conditions are met:
                (1) The application is owned by the United States;
                (2) Publication of the invention may be detrimental to the public safety or defense; and
                (3) The appropriate department or agency requests such suspension.
                [65 FR 50104, Aug. 16, 2000, as amended at 65 FR 57056, Sept. 20, 2000; 67 FR 523, Jan. 4, 2002; 69 FR 49999, Aug. 12, 2004; 69 FR 56542, Sept. 21, 2004; 78 FR 11057, Feb. 14, 2013]

                § 1.104
                Nature of examination.
                (a) Examiner's action. (1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
                (2) The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner's action. The reasons for any adverse action or any objection or requirement will be stated in an Office action and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution.
                (3) An international-type search will be made in all national applications filed on and after June 1, 1978.
                (4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in § 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
                (b) Completeness of examiner's action. The examiner's action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
                (c) Rejection of claims. (1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.

                (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
                (3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
                (4)(i) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
                (ii) Subject matter which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research agreement under 35 U.S.C. 102(c) if:
                (A) The applicant or patent owner provides a statement to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
                (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
                (5)(i) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application filed on or after November 29, 1999, or any patent issuing thereon, in an application filed before November 29, 1999, but pending on December 10, 2004, or any patent issuing thereon, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, if the applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention, at the time the claimed invention was made, were owned by the same person or subject to an obligation of assignment to the same person.
                (ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed invention in an application pending on or after December 10, 2004, or in any patent granted on or after December 10, 2004, will be treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect prior to March 16, 2013, if:
                (A) The applicant or patent owner provides a statement to the effect that the subject matter and the claimed invention were made by or on behalf of the parties to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the claimed invention was made, and that the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
                (B) The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
                (6) Patents issued prior to December 10, 2004, from applications filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on November 28, 1999.
                (d) Citation of references. (1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees will be stated. If domestic patent application publications are cited by the examiner, their publication number, publication date, and the names of the applicants will be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees will be stated, and such other data will be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon will be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, will be given.
                (2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
                (e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure by the examiner to respond to any statement commenting on reasons for allowance does not give rise to any implication.
                [62 FR 53191, Oct. 10, 1997, as amended at 65 FR 14872, Mar. 20, 2000; 65 FR 54671, Sept. 8, 2000; 65 FR 57056, Sept. 20, 2000; 70 FR 1823, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 72 FR 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009; 78 FR 11057, Feb. 14, 2013]

                § 1.105
                Requirements for information.
                (a)(1) In the course of examining or treating a matter in a pending or abandoned application, in a patent, or in a reexamination proceeding, including a reexamination proceeding ordered as a result of a supplemental examination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
                (i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
                (ii) Search: Whether a search of the prior art was made, and if so, what was searched.
                (iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
                (iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
                (v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
                (vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
                (vii) In use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
                (viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such items.
                (2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
                (i) A requirement for factual information;

                (ii) Interrogatories in the form of specific questions seeking applicant's factual knowledge; or
                (iii) Stipulations as to facts with which the applicant may agree or disagree.
                (3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
                (b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
                (c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
                [65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004; 72 FR 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009; 77 FR 48821, Aug. 14, 2012; 80 FR 17963, Apr. 2, 2015]

                §§ 1.106-1.108
                [Reserved]

                § 1.109
                Effective filing date of a claimed invention under the Leahy-Smith America Invents Act.
                (a) The effective filing date for a claimed invention in a patent or application for patent, other than in a reissue application or reissued patent, is the earliest of:
                (1) The actual filing date of the patent or the application for the patent containing a claim to the invention; or
                (2) The filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 365, or 386.
                (b) The effective filing date for a claimed invention in a reissue application or a reissued patent is determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
                [80 FR 17963, Apr. 2, 2015]

                § 1.110
                Inventorship and ownership of the subject matter of individual claims.
                When one or more joint inventors are named in an application or patent, the Office may require an applicant or patentee to identify the inventorship and ownership or obligation to assign ownership, of each claimed invention on its effective filing date (as defined in § 1.109) or on its date of invention, as applicable, when necessary for purposes of an Office proceeding. The Office may also require an applicant or patentee to identify the invention dates of the subject matter of each claim when necessary for purposes of an Office proceeding.
                [78 FR 11058, Feb. 14, 2013]

              Action by Applicant and Further Consideration

                Authority:
                Secs. 1.111 to 1.113 also issued under 35 U.S.C. 132.

                § 1.111
                Reply by applicant or patent owner to a non-final Office action.
                (a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
                (2) Supplemental replies. (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
                (A) Cancellation of a claim(s);
                (B) Adoption of the examiner suggestion(s);
                (C) Placement of the application in condition for allowance;
                (D) Reply to an Office requirement made after the first reply was filed;
                (E) Correction of informalities (e.g., typographical errors); or
                (F) Simplification of issues for appeal.
                (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).

                (b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
                (c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
                [46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997; 65 FR 54672, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005]

                § 1.112
                Reconsideration before final action.

                After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 41.31 of this title) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).
                [69 FR 49999, Aug. 12, 2004]

                § 1.113
                Final rejection or action.

                (a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant's, or for ex parte reexaminations filed under § 1.510, patent owner's reply is limited to appeal in the case of rejection of any claim (§ 41.31 of this title), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must comply with § 1.114 or paragraph (c) of this section. For final actions in an inter partes reexamination filed under § 1.913, see § 1.953.
                (b) In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.
                (c) Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.
                [65 FR 14872, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000; 69 FR 49999, Aug. 12, 2004]

                § 1.114
                Request for continued examination.

                (a) If prosecution in an application is closed, an applicant may request continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:

                (1) Payment of the issue fee, unless a petition under § 1.313 is granted;
                (2) Abandonment of the application; or
                (3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.
                (b) Prosecution in an application is closed as used in this section means that the application is under appeal, or that the last Office action is a final action (§ 1.113), a notice of allowance (§ 1.311), or an action that otherwise closes prosecution in the application.
                (c) A submission as used in this section includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If reply to an Office action under 35 U.S.C. 132 is outstanding, the submission must meet the reply requirements of § 1.111.
                (d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. If an applicant files a request for continued examination under this section after appeal, but prior to a decision on the appeal, it will be treated as a request to withdraw the appeal and to reopen prosecution of the application before the examiner. An appeal brief (§ 41.37 of this title) or a reply brief (§ 41.41 of this title), or related papers, will not be considered a submission under this section.
                (e) The provisions of this section do not apply to:
                (1) A provisional application;
                (2) An application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
                (3) An international application filed under 35 U.S.C. 363 before June 8, 1995, or an international application that does not comply with 35 U.S.C. 371;
                (4) An application for a design patent;
                (5) An international design application; or
                (6) A patent under reexamination.
                [65 FR 50104, Aug. 16, 2000, as amended at 69 FR 49999, Aug. 12, 2004; 72 FR 46841, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 80 FR 17963, Apr. 2, 2015]

              Amendments

                Authority:
                Secs. 1.115 to 1.127 also issued under 35 U.S.C. 132.

                § 1.115
                Preliminary amendments.
                (a) A preliminary amendment is an amendment that is received in the Office (§ 1.6) on or before the mail date of the first Office action under § 1.104. The patent application publication may include preliminary amendments (§ 1.215(a)).
                (1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
                (2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
                (b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
                (1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
                (2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
                (i) The state of preparation of a first Office action as of the date of receipt (§ 1.6) of the preliminary amendment by the Office; and
                (ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
                (3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
                (i) Three months from the filing date of an application under § 1.53(b);

                (ii) The filing date of a continued prosecution application under § 1.53(d); or

                (iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
                (4) The time periods specified in paragraph (b)(3) of this section are not extendable.
                [69 FR 56543, Sept. 21, 2004]

                § 1.116
                Amendments and affidavits or other evidence after final action and prior to appeal.
                (a) An amendment after final action must comply with § 1.114 or this section.

                (b) After a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913, but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title):
                (1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;
                (2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or
                (3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
                (c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135, or the reexamination prosecution from termination under § 1.550(d) or § 1.957(b) or limitation of further prosecution under § 1.957(c).

                (d)(1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.

                (2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113) in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.

                (e) An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.

                (f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
                (g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§ 1.198 and 1.981, or to carry into effect a recommendation under § 41.50(c) of this title.
                [69 FR 49999, Aug. 12, 2004]

                §§ 1.117-1.119
                [Reserved]

                § 1.121
                Manner of making amendments in applications.
                (a) Amendments in applications, other than reissue applications. Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
                (b) Specification. Amendments to the specification, other than the claims, computer listings (§ 1.96) and sequence listings (§ 1.825), must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification, in the manner specified in this section.
                (1) Amendment to delete, replace, or add a paragraph. Amendments to the specification, including amendment to a section heading or the title of the invention which are considered for amendment purposes to be an amendment of a paragraph, must be made by submitting:
                (i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a paragraph with one or more replacement paragraphs, or add one or more paragraphs;
                (ii) The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived;
                (iii) The full text of any added paragraphs without any underlining; and
                (iv) The text of a paragraph to be deleted must not be presented with strike-through or placed within double brackets. The instruction to delete may identify a paragraph by its paragraph number or include a few words from the beginning, and end, of the paragraph, if needed for paragraph identification purposes.
                (2) Amendment by replacement section. If the sections of the specification contain section headings as provided in § 1.77(b), § 1.154(b), or § 1.163(c), amendments to the specification, other than the claims, may be made by submitting:
                (i) A reference to the section heading along with an instruction, which unambiguously identifies the location, to delete that section of the specification and to replace such deleted section with a replacement section; and
                (ii) A replacement section with markings to show all changes relative to the previous version of the section. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.
                (3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
                (i) An instruction to replace the specification; and
                (ii) A substitute specification in compliance with §§ 1.125(b) and (c).
                (4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or section may be reinstated only by a subsequent amendment adding the previously deleted paragraph or section.
                (5) Presentation in subsequent amendment document. Once a paragraph or section is amended in a first amendment document, the paragraph or section shall not be re-presented in a subsequent amendment document unless it is amended again or a substitute specification is provided.
                (c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).

                (1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
                (2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
                (3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
                (4) When claim text shall not be presented; canceling a claim. (i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
                (ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
                (5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
                (d) Drawings. One or more application drawings shall be amended in the following manner: Any changes to an application drawing must be in compliance with § 1.84 or, for a nonprovisional international design application, in compliance with §§ 1.84(c) and 1.1026 and must be submitted on a replacement sheet of drawings which shall be an attachment to the amendment document and, in the top margin, labeled “Replacement Sheet.” Any replacement sheet of drawings shall include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. Any new sheet of drawings containing an additional figure must be labeled in the top margin as “New Sheet.” All changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper.
                (1) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.
                (2) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
                (e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.

                (f) No new matter. No amendment may introduce new matter into the disclosure of an application.
                (g) Exception for examiner's amendments. Changes to the specification, including the claims, of an application made by the Office in an examiner's amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner's amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not required.
                (h) Amendment sections. Each section of an amendment document (e.g., amendment to the claims, amendment to the specification, replacement drawings, and remarks) must begin on a separate sheet.
                (i) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
                (j) Amendments in reexamination proceedings. Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530.
                (k) Amendments in provisional applications. Amendments in provisional applications are not usually made. If an amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered.
                [68 FR 38628, June 30, 2003, as amended at 69 FR 56543, Sept. 21, 2004; 80 FR 17963, Apr. 2, 2015]

                §§ 1.122-1.224
                [Reserved]

                § 1.125
                Substitute specification.
                (a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
                (b) Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.
                (c) A substitute specification submitted under this section must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown pursuant to this paragraph.
                (d) A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.
                [62 FR 53193, Oct. 10, 1997, as amended at 65 FR 54673, Sept. 8, 2000; 68 FR 38630, June 30, 2003]

                § 1.126
                Numbering of claims.
                The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled the remaining claims must not be renumbered. When claims are added, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not). When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.
                [62 FR 53194, Oct. 10, 1997]

                § 1.127
                [Reserved]

              Transitional Provisions

                § 1.129
                Transitional procedures for limited examination after final rejection and restriction practice.
                (a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 1.17(r). If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in § 1.116. A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability.
                (b)(1) In an application, other than for reissue or a design patent, that has been pending for at least three years as of June 8, 1995; taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121, and 365(c), no requirement for restriction or for the filing of divisional applications shall be made or maintained in the application after June 8, 1995, except where:
                (i) The requirement was first made in the application or any earlier filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;
                (ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant; or
                (iii) The required fee for examination of each additional invention was not paid.
                (2) If the application contains more than one independent and distinct invention and a requirement for restriction or for the filing of divisional applications cannot be made or maintained pursuant to this paragraph, applicant will be so notified and given a time period to:
                (i) Elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects;
                (ii) Confirm an election made prior to the notice and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected; or
                (iii) File a petition under this section traversing the requirement. If the required petition is filed in a timely manner, the original time period for electing and paying the fee set forth in § 1.17(s) will be deferred and any decision on the petition affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.

                (3) The additional inventions for which the required fee has not been paid will be withdrawn from consideration under § 1.142(b). An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under 35 U.S.C. 121.
                (c) The provisions of this section shall not be applicable to any application filed after June 8, 1995.
                [60 FR 20226, Apr. 25, 1995]

              Affidavits Overcoming Rejections

                § 1.130
                Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act.
                (a) Affidavit or declaration of attribution. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.
                (b) Affidavit or declaration of prior public disclosure. When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. An affidavit or declaration under this paragraph must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
                (1) If the subject matter publicly disclosed on that date was in a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.
                (2) If the subject matter publicly disclosed on that date was not in a printed publication, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
                (c) When this section is not available. The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention. The provisions of this section may not be available if the rejection is based upon a U.S. patent or U.S. patent application publication of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant's or patent owner's claimed invention, and the affidavit or declaration contends that an inventor named in the U.S. patent or U.S. patent application publication derived the claimed invention from the inventor or a joint inventor named in the application or patent, in which case an applicant or a patent owner may file a petition for a derivation proceeding pursuant to § 42.401 et seq. of this title.
                (d) Applications and patents to which this section is applicable. The provisions of this section apply to any application for patent, and to any patent issuing thereon, that contains, or contained at any time:
                (1) A claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013; or
                (2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013.
                [78 FR 11058, Feb. 14, 2013, as amended at 80 FR 17963, Apr. 2, 2015]

                § 1.131
                Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art.

                (a) When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a U.S. patent, U.S. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Prior invention may not be established under this section if either:
                (1) The rejection is based upon a U.S. patent or U.S. patent application publication of a pending or patented application naming another inventor which claims interfering subject matter as defined in § 41.203(a) of this chapter, in which case an applicant may suggest an interference pursuant to § 41.202(a) of this chapter; or
                (2) The rejection is based upon a statutory bar.
                (b) The showing of facts for an oath or declaration under paragraph (a) of this section shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained.
                (c) When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S. patent or U.S. patent application publication which is not prior art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent or published application are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent or patent application publication as prior art. The patent or patent application publication can be disqualified as prior art by submission of:
                (1) A terminal disclaimer in accordance with § 1.321(c); and
                (2) An oath or declaration stating that the application or patent under reexamination and patent or published application are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104 as in effect on March 15, 2013.
                (d) The provisions of this section apply to any application for patent and to any patent issuing thereon, that contains, or contained at any time:
                (1) A claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013; or
                (2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to any patent or application that contains, or contained at any time, a claim to an invention that has an effective filing date as defined in § 1.109 that is before March 16, 2013.
                (e) In an application for patent to which the provisions of § 1.130 apply, and to any patent issuing thereon, the provisions of this section are applicable only with respect to a rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013.
                [78 FR 11058, Feb. 14, 2013, as amended at 78 FR 62405, Oct. 21, 2013; 80 FR 17963, Apr. 2, 2015]

                § 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]

              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]

              Time for Reply by Applicant; Abandonment of Application

                Authority:
                Secs. 1.135 to 1.138 also issued under 35 U.S.C. 133.

                § 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]

                § 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]

                § 1.136
                Extensions of time.
                (a)(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
                (i) Applicant is notified otherwise in an Office action;
                (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title;
                (iii) The reply is a request for an oral hearing submitted pursuant to § 41.47(a) of this title;
                (iv) The reply is to a decision by the Patent Trial and Appeal Board pursuant to § 41.50 or § 41.52 of this chapter or to § 90.3 of this chapter; or
                (v) The application is involved in a contested case (§ 41.101(a) of this title) or a derivation proceeding (§ 42.4(b) of this title).

                (2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of paragraph (a) of this section are available.
                (3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
                (b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. Any request under this paragraph must be accompanied by the petition fee set forth in § 1.17(g).
                (c) If an applicant is notified in a “Notice of Allowability” that an application is otherwise in condition for allowance, the following time periods are not extendable if set in the “Notice of Allowability” or in an Office action having a mail date on or after the mail date of the “Notice of Allowability”:
                (1) The period for submitting the inventor's oath or declaration;
                (2) The period for submitting formal drawings set under § 1.85(c); and
                (3) The period for making a deposit set under § 1.809(c).
                (d) See § 1.550(c) for extensions of time in ex parte reexamination proceedings, § 1.956 for extensions of time in inter partes reexamination proceedings; §§ 41.4(a) and 41.121(a)(3) of this chapter for extensions of time in contested cases before the Patent Trial and Appeal Board; § 42.5(c) of this chapter for extensions of time in trials before the Patent Trial and Appeal Board; and § 90.3 of this chapter for extensions of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action.
                [62 FR 53194, Oct. 10, 1997, as amended at 65 FR 54674, Sept. 8, 2000; 65 FR 76773, Dec. 7, 2000; 66 FR 21092, Apr. 27, 2001; 69 FR 50000, Aug. 12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 72 FR 46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 77 FR 46625, Aug. 6, 2012; 77 FR 48821, Aug. 14, 2012; 78 FR 62405, Oct. 21, 2013]

                § 1.137
                Revival of abandoned application, or terminated or limited reexamination prosecution.
                (a) Revival on the basis of unintentional delay. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this section to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
                (b) Petition requirements. A grantable petition pursuant to this section must be accompanied by:
                (1) The reply required to the outstanding Office action or notice, unless previously filed;
                (2) The petition fee as set forth in § 1.17(m);
                (3) Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section; and

                (4) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

                (c) Reply. In an application abandoned under § 1.57(a), the reply must include a copy of the specification and any drawings of the previously filed application. In an application or patent abandoned for failure to pay the issue fee or any portion thereof, the required reply must include payment of the issue fee or any outstanding balance. In an application abandoned for failure to pay the publication fee, the required reply must include payment of the publication fee. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In a nonprovisional utility or plant application filed on or after June 8, 1995, abandoned after the close of prosecution as defined in § 1.114(b), the required reply may also be met by the filing of a request for continued examination in compliance with § 1.114.
                (d) Terminal disclaimer. (1) Any petition to revive pursuant to this section in a design application must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any petition to revive pursuant to this section in either a utility or plant application filed before June 8, 1995, must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the lesser of:
                (i) The period of abandonment of the application; or
                (ii) The period extending beyond twenty years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the date on which the earliest such application was filed.
                (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this section must also apply to any patent granted on a continuing utility or plant application filed before June 8, 1995, or a continuing design application, that contains a specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c) to the application for which revival is sought.
                (3) The provisions of paragraph (d)(1) of this section do not apply to applications for which revival is sought solely for purposes of copendency with a utility or plant application filed on or after June 8, 1995, to reissue applications, or to reexamination proceedings.
                (e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to revive an abandoned application, or a terminated or limited reexamination prosecution, upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under:
                (1) The provisions of § 1.136 for an abandoned application;
                (2) The provisions of § 1.550(c) for a terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or
                (3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913.
                (f) Abandonment for failure to notify the Office of a foreign filing. A nonprovisional application abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure to timely notify the Office of the filing of an application in a foreign country or under a multinational treaty that requires publication of applications eighteen months after filing, may be revived pursuant to this section. The reply requirement of paragraph (c) of this section is met by the notification of such filing in a foreign country or under a multinational treaty, but the filing of a petition under this section will not operate to stay any period for reply that may be running against the application.
                (g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and § 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances.
                [78 FR 62405, Oct. 21, 2013, as amended at 80 FR 17963, Apr. 2, 2015]

                § 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]

                § 1.139
                [Reserved]

              Joinder of Inventions in One Application; Restriction

                Authority:
                Secs. 1.141 to 1.147 also issued under 35 U.S.C. 121.

                § 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]

                § 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]

                § 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.

                § 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]

                § 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]

                § 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]

              Design Patents

                § 1.151
                Rules applicable.
                The rules relating to applications for patents for other inventions or discoveries are also applicable to applications for patents for designs except as otherwise provided.
                (35 U.S.C. 171)

                § 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]

                § 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]

                § 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]

                § 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]

              Plant Patents

                § 1.161
                Rules applicable.
                The rules relating to applications for patent for other inventions or discoveries are also applicable to applications for patents for plants except as otherwise provided.

                § 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]

                § 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]

                § 1.164
                Claim.
                The claim shall be in formal terms to the new and distinct variety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics. More than one claim is not permitted.
                (35 U.S.C. 162)

                § 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]

                § 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)

                § 1.167
                Examination.
                Applications may be submitted by the Patent and Trademark Office to the Department of Agriculture for study and report.
                [62 FR 53196, Oct. 10, 1997]

              Reissues

                Authority:
                Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

                § 1.171
                Application for reissue.
                An application for reissue must contain the same parts required for an application for an original patent, complying with all the rules relating thereto except as otherwise provided, and in addition, must comply with the requirements of the rules relating to reissue applications.
                [62 FR 53196, Oct. 10, 1997]

                § 1.172
                Reissue applicant.
                (a) The reissue applicant is the original patentee, or the current patent owner if there has been an assignment. A reissue application must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. All assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(c) of this chapter.
                (b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.
                [77 FR 48821, Aug. 14, 2012]

                § 1.173
                Reissue specification, drawings, and amendments.
                (a) Contents of a reissue application. An application for reissue must contain the entire specification, including the claims, and the drawings of the patent. No new matter shall be introduced into the application. No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251.
                (1) Specification, including claims. The entire specification, including the claims, of the patent for which reissue is requested must be furnished in the form of a copy of the printed patent, in double column format, each page on only one side of a single sheet of paper. If an amendment of the reissue application is to be included, it must be made pursuant to paragraph (b) of this section. The formal requirements for papers making up the reissue application other than those set forth in this section are set out in § 1.52. Additionally, a copy of any disclaimer (§ 1.321), certificate of correction (§§ 1.322 through 1.324), or reexamination certificate (§ 1.570) issued in the patent must be included. (See also § 1.178).
                (2) Drawings. Applicant must submit a clean copy of each drawing sheet of the printed patent at the time the reissue application is filed. If such copy complies with § 1.84, no further drawings will be required. Where a drawing of the reissue application is to include any changes relative to the patent being reissued, the changes to the drawing must be made in accordance with paragraph (b)(3) of this section. The Office will not transfer the drawings from the patent file to the reissue application.
                (b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
                (1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (d) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted under § 1.821(e)).
                (2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
                (3) Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
                (i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Marked-up Drawings” and must be presented in the amendment or remarks section that explains the change to the drawings.
                (ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
                (c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
                (d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
                (1) The matter to be omitted by reissue must be enclosed in brackets; and
                (2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
                (e) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claim added in the reissue application must follow the number of the highest numbered patent claim.
                (f) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
                (g) Amendments made relative to the patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing of the reissue application.
                [65 FR 54675, Sept. 8, 2000, as amended at 68 FR 38630, June 30, 2003; 69 FR 56543, Sept. 21, 2004]

                § 1.174
                [Reserved]

                § 1.175
                Inventor's oath or declaration for a reissue application.
                (a) The inventor's oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
                (b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
                (c) The inventor, or each individual who is a joint inventor of a claimed invention, in a reissue application must execute an oath or declaration for the reissue application, except as provided for in § 1.64, and except that the inventor's oath or declaration for a reissue application may be signed by the assignee of the entire interest if:
                (1) The application does not seek to enlarge the scope of the claims of the original patent; or
                (2) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
                (d) If errors previously identified in the inventor's oath or declaration for a reissue application pursuant to paragraph (a) of this section are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
                (e) The inventor's oath or declaration for a reissue application required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f), except that the provisions of § 1.53(f)(3) do not apply to a reissue application.
                (f)(1) The requirement for the inventor's oath or declaration for a continuing reissue application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed reissue application may be satisfied by a copy of the inventor's oath or declaration from the earlier-filed reissue application, provided that:
                (i) The inventor, or each individual who is a joint inventor of a claimed invention, in the reissue application executed an inventor's oath or declaration for the earlier-filed reissue application, except as provided for in § 1.64;
                (ii) The continuing reissue application does not seek to enlarge the scope of the claims of the original patent; or
                (iii) The application for the original patent was filed under § 1.46 by the assignee of the entire interest.
                (2) If all errors identified in the inventor's oath or declaration from the earlier-filed reissue application are no longer being relied upon as the basis for reissue, the applicant must identify an error being relied upon as the basis for reissue.
                (g) An oath or declaration filed at any time pursuant to 35 U.S.C. 115(h)(1), will be placed in the file record of the reissue application, but may not necessarily be reviewed by the Office.
                [77 FR 48821, Aug. 14, 2012, as amended at 80 FR 17964, Apr. 2, 2015]

                § 1.176
                Examination of reissue.
                (a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.

                (b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
                [65 FR 54676, Sept. 8, 2000]

                § 1.177
                Issuance of multiple reissue patents.
                (a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
                (b) If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.
                (c) If any one of the several reissue applications by itself fails to correct an error in the original patent as required by 35 U.S.C. 251 but is otherwise in condition for allowance, the Office may suspend action in the allowable application until all issues are resolved as to at least one of the remaining reissue applications. The Office may also merge two or more of the multiple reissue applications into a single reissue application. No reissue application containing only unamended patent claims and not correcting an error in the original patent will be passed to issue by itself.
                [65 FR 54676, Sept. 8, 2000]

                § 1.178
                Original patent; continuing duty of applicant.
                (a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
                (b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).
                [65 FR 54676, Sept. 8, 2000, as amended at 69 FR 56544, Sept. 21, 2004; 77 FR 46625, Aug. 6, 2012]

                § 1.179
                [Reserved]

              Petitions and Action by the Director

                Authority:
                35 U.S.C. 6; 15 U.S.C. 1113, 1123.

                § 1.181
                Petition to the Director.
                (a) Petition may be taken to the Director:

                (1) From any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Patent Trial and Appeal Board or to the court;
                (2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Director; and
                (3) To invoke the supervisory authority of the Director in appropriate circumstances. For petitions involving action of the Patent Trial and Appeal Board, see § 41.3 of this title.

                (b) Any such petition must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition; and where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.

                (c) When a petition is taken from an action or requirement of an examiner in the ex parte prosecution of an application, or in the ex parte or inter partes prosecution of a reexamination proceeding, it may be required that there have been a proper request for reconsideration (§ 1.111) and a repeated action by the examiner. The examiner may be directed by the Director to furnish a written statement, within a specified time, setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy to the petitioner.
                (d) Where a fee is required for a petition to the Director the appropriate section of this part will so indicate. If any required fee does not accompany the petition, the petition will be dismissed.
                (e) Oral hearing will not be granted except when considered necessary by the Director.
                (f) The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings. Any petition under this part not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely, except as otherwise provided. This two-month period is not extendable.
                (g) The Director may delegate to appropriate Patent and Trademark Office officials the determination of petitions.
                [24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969; 47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984; 65 FR 54676, Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000; 69 FR 50000, Aug. 12, 2004; 77 FR 46625, Aug. 6, 2012]

                § 1.182
                Questions not specifically provided for.
                All situations not specifically provided for in the regulations of this part will be decided in accordance with the merits of each situation by or under the authority of the Director, subject to such other requirements as may be imposed, and such decision will be communicated to the interested parties in writing. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in § 1.17(f).
                [69 FR 56544, Sept. 21, 2004]

                § 1.183
                Suspension of rules.

                In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a requirement of the statutes may be suspended or waived by the Director or the Director's designee, sua sponte, or on petition of the interested party, subject to such other requirements as may be imposed. Any petition under this section must be accompanied by the petition fee set forth in § 1.17(f).
                [69 FR 56544, Sept. 21, 2004]

                § 1.184
                [Reserved]

              Appeal to the Patent Trial and Appeal Board

                Authority:
                Secs. 1.191 to 1.198 also issued under 35 U.S.C. 134.

                § 1.191
                Appeal to Patent Trial and Appeal Board.
                Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(a) and (b) are conducted according to part 41 of this title.
                [77 FR 46625, Aug. 6, 2012]

                §§ 1.192-1.196
                [Reserved]

                § 1.197
                Termination of proceedings.
                (a) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action except:
                (1) Where claims stand allowed in an application; or
                (2) Where the nature of the decision requires further action by the examiner.

                (b) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 90.3 of this chapter) expires in the absence of further appeal or review. If an appeal to the U.S. Court of Appeals for the Federal Circuit or a civil action has been filed, proceedings on an application are considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court.
                [78 FR 75252, Dec. 11, 2013]

                § 1.198
                Reopening after a final decision of the Patent Trial and Appeal Board.
                When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
                [77 FR 46625, Aug. 6, 2012]

              Publication of Applications

                Source:
                65 FR 57058, Sept. 20, 2000, unless otherwise noted.

                § 1.211
                Publication of applications.
                (a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:
                (1) The application is recognized by the Office as no longer pending;
                (2) The application is national security classified (see § 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
                (3) The application has issued as a patent in sufficient time to be removed from the publication process; or
                (4) The application was filed with a nonpublication request in compliance with § 1.213(a).
                (b) Provisional applications under 35 U.S.C. 111(b) shall not be published, and design applications under 35 U.S.C. chapter 16, international design applications under 35 U.S.C. chapter 38, and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
                (c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or § 1.16(c)) and any English translation required by § 1.52(d). The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and the inventor's oath or declaration or application data sheet containing the information specified in § 1.63(b).
                (d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
                (e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.
                [65 FR 57058, Sept. 20, 2000, as amended at 70 FR 3891, Jan. 27, 2005; 77 FR 48822, Aug. 14, 2012, as amended at 80 FR 17964, Apr. 2, 2015]

                § 1.213
                Nonpublication request.

                (a) If the invention disclosed in an application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the application will not be published under 35 U.S.C. 122(b) and § 1.211 provided:
                (1) A request (nonpublication request) is submitted with the application upon filing;
                (2) The request states in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b);
                (3) The request contains a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing; and
                (4) The request is signed in compliance with § 1.33(b).
                (b) The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request under paragraph (a) of this section must:
                (1) Identify the application to which it is directed;
                (2) State in a conspicuous manner that the request that the application is not to be published under 35 U.S.C. 122(b) is rescinded; and
                (3) Be signed in compliance with § 1.33(b).
                (c) If an applicant who has submitted a nonpublication request under paragraph (a) of this section subsequently files an application directed to the invention disclosed in the application in which the nonpublication request was submitted in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the applicant must notify the Office of such filing within forty-five days after the date of the filing of such foreign or international application. The failure to timely notify the Office of the filing of such foreign or international application shall result in abandonment of the application in which the nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).

                § 1.215
                Patent application publication.

                (a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the specification and drawings deposited on the filing date of the application, as well as the application data sheet and/or the inventor's oath or declaration. The patent application publication may also be based upon amendments to the specification (other than the abstract or the claims) that are reflected in a substitute specification under § 1.125(b), amendments to the abstract under § 1.121(b), amendments to the claims that are reflected in a complete claim listing under § 1.121(c), and amendments to the drawings under § 1.121(d), provided that such substitute specification or amendment is submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage. See paragraph (c) of this section for publication of an application based upon a copy of the application submitted via the Office electronic filing system.

                (b) The patent application publication will include the name of the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter if that information is provided in the application data sheet in an application filed under § 1.46. Assignee information may be included on the patent application publication in other applications if the assignee information is provided in an application data sheet submitted in sufficient time to be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun. Providing assignee information in the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.

                (c) At applicant's option, the patent application publication will be based upon the copy of the application (specification, drawings, and the application data sheet and/or the inventor's oath or declaration) as amended, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the mailing date of the first Office communication that includes a confirmation number for the application, or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
                (d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.
                [65 FR 57058, Sept. 20, 2000, as amended at 69 FR 56544, Sept. 21, 2004; 77 FR 48822, Aug. 14, 2012]

                § 1.217
                Publication of a redacted copy of an application.
                (a) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign-filed applications or the description of the invention in such foreign-filed applications is less extensive than the application or description of the invention in the application filed in the Office, the applicant may submit a redacted copy of the application filed in the Office for publication, eliminating any part or description of the invention that is not also contained in any of the corresponding applications filed in a foreign country. The Office will publish the application as provided in § 1.215(a) unless the applicant files a redacted copy of the application in compliance with this section within sixteen months after the earliest filing date for which a benefit is sought under title 35, United States Code.
                (b) The redacted copy of the application must be submitted in compliance with the Office electronic filing system requirements. The title of the invention in the redacted copy of the application must correspond to the title of the application at the time the redacted copy of the application is submitted to the Office. If the redacted copy of the application does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in § 1.215(a).
                (c) The applicant must also concurrently submit in paper (§ 1.52(a)) to be filed in the application:
                (1) A certified copy of each foreign-filed application that corresponds to the application for which a redacted copy is submitted;
                (2) A translation of each such foreign-filed application that is in a language other than English, and a statement that the translation is accurate;
                (3) A marked-up copy of the application showing the redactions in brackets; and
                (4) A certification that the redacted copy of the application eliminates only the part or description of the invention that is not contained in any application filed in a foreign country, directly or through a multilateral international agreement, that corresponds to the application filed in the Office.
                (d) The Office will provide a copy of the complete file wrapper and contents of an application for which a redacted copy was submitted under this section to any person upon written request pursuant to § 1.14(c)(2), unless applicant complies with the requirements of paragraphs (d)(1), (d)(2), and (d)(3) of this section.
                (1) Applicant must accompany the submission required by paragraph (c) of this section with the following:
                (i) A copy of any Office correspondence previously received by applicant including any desired redactions, and a second copy of all Office correspondence previously received by applicant showing the redacted material in brackets; and

                (ii) A copy of each submission previously filed by the applicant including any desired redactions, and a second copy of each submission previously filed by the applicant showing the redacted material in brackets.
                (2) In addition to providing the submission required by paragraphs (c) and (d)(1) of this section, applicant must:
                (i) Within one month of the date of mailing of any correspondence from the Office, file a copy of such Office correspondence including any desired redactions, and a second copy of such Office correspondence showing the redacted material in brackets; and
                (ii) With each submission by the applicant, include a copy of such submission including any desired redactions, and a second copy of such submission showing the redacted material in brackets.
                (3) Each submission under paragraph (d)(1) or (d)(2) of this paragraph must also be accompanied by the processing fee set forth in § 1.17(i) and a certification that the redactions are limited to the elimination of material that is relevant only to the part or description of the invention that was not contained in the redacted copy of the application submitted for publication.
                (e) The provisions of § 1.8 do not apply to the time periods set forth in this section.

                § 1.219
                Early publication.
                Applications that will be published under § 1.211 may be published earlier than as set forth in § 1.211(a) at the request of the applicant. Any request for early publication must be accompanied by the publication fee set forth in § 1.18(d). If the applicant does not submit a copy of the application in compliance with the Office electronic filing system requirements pursuant to § 1.215(c), the Office will publish the application as provided in § 1.215(a). No consideration will be given to requests for publication on a certain date, and such requests will be treated as a request for publication as soon as possible.

                § 1.221
                Voluntary publication or republication of patent application publication.
                (a) Any request for publication of an application filed before, but pending on, November 29, 2000, and any request for republication of an application previously published under § 1.211, must include a copy of the application in compliance with the Office electronic filing system requirements and be accompanied by the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). If the request does not comply with the requirements of this paragraph or the copy of the application does not comply with the Office electronic filing system requirements, the Office will not publish the application and will refund the publication fee.
                (b) The Office will grant a request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section only when the Office makes a material mistake which is apparent from Office records. Any request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section must be filed within two months from the date of the patent application publication. This period is not extendable.

              Miscellaneous Provisions

                § 1.248
                Service of papers; manner of service; proof of service in cases other than interferences and trials.
                (a) Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in any of the following ways:
                (1) By delivering a copy of the paper to the person served;
                (2) By leaving a copy at the usual place of business of the person served with someone in his employment;
                (3) When the person served has no usual place of business, by leaving a copy at the person's residence, with some person of suitable age and discretion who resides there;
                (4) Transmission by first class mail. When service is by mail the date of mailing will be regarded as the date of service;

                (5) Whenever it shall be satisfactorily shown to the Director that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.

                (b) Papers filed in the Patent and Trademark Office which are required to be served shall contain proof of service. Proof of service may appear on or be affixed to papers filed. Proof of service shall include the date and manner of service. In the case of personal service, proof of service shall also include the name of any person served, certified by the person who made service. Proof of service may be made by:
                (1) An acknowledgement of service by or on behalf of the person served or
                (2) A statement signed by the attorney or agent containing the information required by this section.
                (c) See § 41.106(e) or § 42.6(e) of this title for service of papers in contested cases or trials before the Patent Trial and Appeal Board.
                [46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984; 69 FR 50000, Aug. 12, 2004; 69 FR 58260, Sept. 30, 2004; 77 FR 46626, Aug. 6, 2012]

                § 1.251
                Unlocatable file.
                (a) In the event that the Office cannot locate the file of an application, patent, or other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice in accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section.
                (1) Applicant or patentee may comply with a notice under this section by providing:
                (i) A copy of the applicant's or patentee's record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents);
                (ii) A list of such correspondence; and
                (iii) A statement that the copy is a complete and accurate copy of the applicant's or patentee's record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant's or patentee's records.
                (2) Applicant or patentee may comply with a notice under this section by:
                (i) Producing the applicant's or patentee's record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and
                (ii) Providing a statement that the papers produced by applicant or patentee are applicant's or patentee's complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant's or patentee's records.
                (3) If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
                (b) With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.
                [65 FR 69451, Nov. 17, 2000]

              Preissuance Submissions and Protests by Third Parties

                § 1.290
                Submissions by third parties in applications.

                (a) A third party may submit, for consideration and entry in the record of a patent application, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application if the submission is made in accordance with 35 U.S.C. 122(e) and this section. A third-party submission may not be entered or considered by the Office if any part of the submission is not in compliance with 35 U.S.C. 122(e) and this section.

                (b) Any third-party submission under this section must be filed prior to the earlier of:
                (1) The date a notice of allowance under § 1.311 is given or mailed in the application; or
                (2) The later of:
                (i) Six months after the date on which the application is first published by the Office under 35 U.S.C. 122(b) and § 1.211, or
                (ii) The date the first rejection under § 1.104 of any claim by the examiner is given or mailed during the examination of the application.
                (c) Any third-party submission under this section must be made in writing.
                (d) Any third-party submission under this section must include:
                (1) A document list identifying the documents, or portions of documents, being submitted in accordance with paragraph (e) of this section;
                (2) A concise description of the asserted relevance of each item identified in the document list;
                (3) A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
                (4) An English language translation of any non-English language item identified in the document list; and
                (5) A statement by the party making the submission that:
                (i) The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
                (ii) The submission complies with the requirements of 35 U.S.C. 122(e) and this section.
                (e) The document list required by paragraph (d)(1) of this section must include a heading that identifies the list as a third-party submission under § 1.290, identify on each page of the list the application number of the application in which the submission is being filed, list U.S. patents and U.S. patent application publications in a separate section from other items, and identify each:
                (1) U.S. patent by patent number, first named inventor, and issue date;
                (2) U.S. patent application publication by patent application publication number, first named inventor, and publication date;
                (3) Foreign patent or published foreign patent application by the country or patent office that issued the patent or published the application; the applicant, patentee, or first named inventor; an appropriate document number; and the publication date indicated on the patent or published application; and
                (4) Non-patent publication by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication. If no publication date is known, the third party must provide evidence of publication.
                (f) Any third-party submission under this section must be accompanied by the fee set forth in § 1.17(o) for every ten items or fraction thereof identified in the document list.
                (g) The fee otherwise required by paragraph (f) of this section is not required for a submission listing three or fewer total items that is accompanied by a statement by the party making the submission that, to the knowledge of the person signing the statement after making reasonable inquiry, the submission is the first and only submission under 35 U.S.C. 122(e) filed in the application by the party or a party in privity with the party.
                (h) In the absence of a request by the Office, an applicant need not reply to a submission under this section.
                (i) The provisions of § 1.8 do not apply to the time periods set forth in this section.
                [77 FR 42173, July 17, 2012, as amended at 78 FR 62406, Oct. 21, 2013]

                § 1.291
                Protests by the public against pending applications.

                (a) A protest may be filed by a member of the public against a pending application, and it will be matched with the application file if it adequately identifies the patent application. A protest submitted within the time frame of paragraph (b) of this section, which is not matched, or not matched in a timely manner to permit review by the examiner during prosecution, due to inadequate identification, may not be entered and may be returned to the protestor where practical, or, if return is not practical, discarded.

                (b) The protest will be entered into the record of the application if, in addition to complying with paragraph (c) of this section, the protest has been served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and, except for paragraph (b)(1) of this section, the protest was filed prior to the date the application was published under § 1.211, or the date a notice of allowance under § 1.311 was given or mailed, whichever occurs first:
                (1) If a protest is accompanied by the written consent of the applicant, the protest will be considered if the protest is filed prior to the date a notice of allowance under § 1.311 is given or mailed in the application.
                (2) A statement must accompany a protest that it is the first protest submitted in the application by the real party in interest who is submitting the protest; or the protest must comply with paragraph (c)(5) of this section. This section does not apply to the first protest filed in an application.
                (c) In addition to compliance with paragraphs (a) and (b) of this section, a protest must include:
                (1) An information list of the documents, portions of documents, or other information being submitted, where each:
                (i) U.S. patent is identified by patent number, first named inventor, and issue date;
                (ii) U.S. patent application publication is identified by patent application publication number, first named inventor, and publication date;
                (iii) Foreign patent or published foreign patent application is identified by the country or patent office that issued the patent or published the application; an appropriate document number; the applicant, patentee, or first named inventor; and the publication date indicated on the patent or published application;
                (iv) Non-patent publication is identified by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication; and
                (v) Item of other information is identified by date, if known.
                (2) A concise explanation of the relevance of each item identified in the information list pursuant to paragraph (c)(1) of this section;
                (3) A legible copy of each item identified in the information list, other than U.S. patents and U.S. patent application publications;
                (4) An English language translation of any non-English language item identified in the information list; and
                (5) If it is a second or subsequent protest by the same real party in interest, an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier and why the significantly different issue(s) were not presented earlier, and a processing fee under § 1.17(i) must be submitted.
                (d) A member of the public filing a protest in an application under this section will not receive any communication from the Office relating to the protest, other than the return of a self-addressed postcard which the member of the public may include with the protest in order to receive an acknowledgment by the Office that the protest has been received. The limited involvement of the member of the public filing a protest pursuant to this section ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, unless the submission is made pursuant to paragraph (c)(5) of this section.
                (e) Where a protest raising inequitable conduct issues satisfies the provisions of this section for entry, it will be entered into the application file, generally without comment on the inequitable conduct issues raised in it.
                (f) In the absence of a request by the Office, an applicant need not reply to a protest.
                (g) Protests that fail to comply with paragraphs (b) or (c) of this section may not be entered, and if not entered, will be returned to the protestor, or discarded, at the option of the Office.
                [69 FR 56544, Sept. 21, 2004, as amended at 77 FR 42173, July 17, 2012]

                §§ 1.292-1.297
                [Reserved]

              Review of Patent and Trademark Office Decisions by Court

                §§ 1.301-1.304
                [Reserved]

              Allowance and Issue of Patent

                § 1.311
                Notice of allowance.
                (a) If, on examination, it appears that the applicant is entitled to a patent under the law, a notice of allowance will be sent to the applicant at the correspondence address indicated in § 1.33. The notice of allowance shall specify a sum constituting the issue fee and any required publication fee (§ 1.211(e)), which issue fee and any required publication fee must both be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable.
                (b) An authorization to charge the issue fee or other post-allowance fees set forth in § 1.18 to a deposit account may be filed in an individual application only after mailing of the notice of allowance. The submission of either of the following after the mailing of a notice of allowance will operate as a request to charge the correct issue fee or any publication fee due to any deposit account identified in a previously filed authorization to charge such fees:
                (1) An incorrect issue fee or publication fee; or
                (2) A fee transmittal form (or letter) for payment of issue fee or publication fee.
                [65 FR 57060, Sept. 20, 2000, as amended at 66 FR 67096, Dec. 28, 2001; 69 FR 56545, Sept. 21, 2004; 78 FR 62406, Oct. 21, 2013]

                § 1.312
                Amendments after allowance.
                No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment filed pursuant to this section must be filed before or with the payment of the issue fee, and may be entered on the recommendation of the primary examiner, approved by the Director, without withdrawing the application from issue.
                [65 FR 14873, Mar. 20, 2000]

                § 1.313
                Withdrawal from issue.
                (a) Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. To request that the Office withdraw an application from issue, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why withdrawal of the application from issue is necessary. A petition under this section is not required if a request for continued examination under § 1.114 is filed prior to payment of the issue fee. If the Office withdraws the application from issue, the Office will issue a new notice of allowance if the Office again allows the application.
                (b) Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except:
                (1) A mistake on the part of the Office;
                (2) A violation of § 1.56 or illegality in the application;
                (3) Unpatentability of one or more claims; or
                (4) For an interference or derivation proceeding.
                (c) Once the issue fee has been paid, the application will not be withdrawn from issue upon petition by the applicant for any reason except:
                (1) Unpatentability of one of more claims, which petition must be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable;
                (2) Consideration of a request for continued examination in compliance with § 1.114; or
                (3) Express abandonment of the application. Such express abandonment may be in favor of a continuing application.

                (d) A petition under this section will not be effective to withdraw the application from issue unless it is actually received and granted by the appropriate officials before the date of issue. Withdrawal of an application from issue after payment of the issue fee may not be effective to avoid publication of application information.
                [65 FR 14873, Mar. 20, 2000, as amended at 65 FR 50105, Aug. 16, 2000; 77 FR 46626, Aug. 6, 2012]

                § 1.314
                Issuance of patent.
                If applicant timely pays the issue fee, the Office will issue the patent in regular course unless the application is withdrawn from issue (§ 1.313) or the Office defers issuance of the patent. To request that the Office defer issuance of a patent, applicant must file a petition under this section including the fee set forth in § 1.17(h) and a showing of good and sufficient reasons why it is necessary to defer issuance of the patent.
                [65 FR 54677, Sept. 8, 2000]

                § 1.315
                Delivery of patent.
                The patent will be delivered or mailed upon issuance to the correspondence address of record. See § 1.33(a).
                [61 FR 42807, Aug. 19, 1996]

                § 1.316
                Application abandoned for failure to pay issue fee.
                If the issue fee is not paid within three months from the date of the notice of allowance, the application will be regarded as abandoned. Such an abandoned application will not be considered as pending before the Patent and Trademark Office.
                [62 FR 53198, Oct. 10, 1997]

                §§ 1.317-1.318
                [Reserved]

              Disclaimer

                § 1.321
                Statutory disclaimers, including terminal disclaimers.

                (a) A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
                (1) Be signed by the patentee, or an attorney or agent of record;
                (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;
                (3) State the present extent of patentee's ownership interest in the patent; and
                (4) Be accompanied by the fee set forth in § 1.20(d).
                (b) An applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
                (1) Be signed by the applicant or an attorney or agent of record;
                (2) Specify the portion of the term of the patent being disclaimed;
                (3) State the present extent of applicant's ownership interest in the patent to be granted; and
                (4) Be accompanied by the fee set forth in § 1.20(d).
                (c) A terminal disclaimer, when filed to obviate judicially created double patenting in a patent application or in a reexamination proceeding except as provided for in paragraph (d) of this section, must:
                (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
                (2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
                (3) Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.

                (d) A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement, must:
                (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
                (2) Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or be signed in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
                (3) Include a provision waiving the right to separately enforce any patent granted on that application or any patent subject to the reexamination proceeding and the patent or any patent granted on the application which formed the basis for the double patenting, and that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent and the patent, or any patent granted on the application, which formed the basis for the double patenting are not separately enforced.
                [58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996; 70 FR 1824, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 77 FR 48822, Aug. 14, 2012; 78 FR 11059, Feb. 14, 2013]

              Correction of Errors in Patent

                § 1.322
                Certificate of correction of Office mistake.
                (a)(1) The Director may issue a certificate of correction pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office:
                (i) At the request of the patentee or the patentee's assignee;
                (ii) Acting sua sponte for mistakes that the Office discovers; or
                (iii) Acting on information about a mistake supplied by a third party.
                (2)(i) There is no obligation on the Office to act on or respond to a submission of information or request to issue a certificate of correction by a third party under paragraph (a)(1)(iii) of this section.
                (ii) Papers submitted by a third party under this section will not be made of record in the file that they relate to nor be retained by the Office.
                (3) If the request relates to a patent involved in an interference or trial before the Patent Trial and Appeal Board, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3), or § 42.20 of this title.
                (4) The Office will not issue a certificate of correction under this section without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard.
                (b) If the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, the Director may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee.
                (35 U.S.C. 254)
                [24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984; 65 FR 54677, Sept. 8, 2000; 69 FR 50001, Aug. 12, 2004; 77 FR 46626, Aug. 6, 2012]

                § 1.323
                Certificate of correction of applicant's mistake.
                The Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee's assignee, upon payment of the fee set forth in § 1.20(a). If the request relates to a patent involved in an interference or trial before the Patent Trial and Appeal Board, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3) or § 42.20 of this title.
                [77 FR 46626, Aug. 6, 2012]

                § 1.324
                Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

                (a) Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors.
                (b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
                (1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change;
                (2) A statement from all assignees of the parties submitting a statement under paragraph (b)(1) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(c) of this chapter; and
                (3) The fee set forth in § 1.20(b).

                (c) For correction of inventorship in an application, see § 1.48.
                (d) In an interference under part 41, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or § 42.22 of this title must comply with the requirements of this section.
                [77 FR 48822, Aug. 14, 2012]

                § 1.325
                Other mistakes not corrected.
                Mistakes other than those provided for in §§ 1.322, 1.323, 1.324, and not affording legal grounds for reissue or for reexamination, will not be corrected after the date of the patent.
                (35 U.S.C. 6, Pub. L. 97-247)
                [48 FR 2714, Jan. 20, 1983]

              Arbitration Awards

                §§ 1.331-1.334
                [Reserved]

                § 1.335
                Filing of notice of arbitration awards.
                (a) Written notice of any award by an arbitrator pursuant to 35 U.S.C. 294 must be filed in the Patent and Trademark Office by the patentee, or the patentee's assignee or licensee. If the award involves more than one patent a separate notice must be filed for placement in the file of each patent. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the award.
                (b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is modified by a court, the party requesting the modification must file in the Patent and Trademark Office, a notice of the modification for placement in the file of each patent to which the modification applies. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the court's order modifying the award.
                (c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be unenforceable until any notices required by paragraph (a) or (b) of this section are filed in the Patent and Trademark Office. If any required notice is not filed by the party designated in paragraph (a) or (b) of this section, any party to the arbitration proceeding may file such a notice.
                (35 U.S.C. 6, Pub. L. 97-247)
                [48 FR 2714, Jan. 20, 1983]

                §§ 1.351-1.352
                [Reserved]

              Maintenance Fees

                § 1.362
                Time for payment of maintenance fees.

                (a) Maintenance fees as set forth in §§ 1.20 (e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.
                (b) Maintenance fees are not required for any plant patents or for any design patents.
                (c) The application filing dates for purposes of payment of maintenance fees are as follows:
                (1) For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
                (2) For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.
                (3) For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
                (4) For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, United States filing date of the original non-reissue application on which the patent reissued is based.
                (5) For an international application which has entered the United States as a Designated Office under 35 U.S.C. 371, the international filing date granted under Article 11(1) of the Patent Cooperation Treaty which is considered to be the United States filing date under 35 U.S.C. 363.
                (d) Maintenance fees may be paid in patents without surcharge during the periods extending respectively from:
                (1) 3 years through 3 years and 6 months after grant for the first maintenance fee,
                (2) 7 years through 7 years and 6 months after grant for the second maintenance fee, and
                (3) 11 years through 11 years and 6 months after grant for the third maintenance fee.
                (e) Maintenance fees may be paid with the surcharge set forth in § 1.20(h) during the respective grace periods after:
                (1) 3 years and 6 months and through the day of the 4th anniversary of the grant for the first maintenance fee.
                (2) 7 years and 6 months and through the day of the 8th anniversary of the grant for the second maintenance fee, and
                (3) 11 years and 6 months and through the day of the 12th anniversary of the grant for the third maintenance fee.
                (f) If the last day for paying a maintenance fee without surcharge set forth in paragraph (d) of this section, or the last day for paying a maintenance fee with surcharge set forth in paragraph (e) of this section, falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the maintenance fee and any necessary surcharge may be paid under paragraph (d) or paragraph (e) respectively on the next succeeding day which is not a Saturday, Sunday, or federal holiday.
                (g) Unless the maintenance fee and any applicable surcharge is paid within the time periods set forth in paragraphs (d), (e) or (f) of this section, the patent will expire as of the end of the grace period set forth in paragraph (e) of this section. A patent which expires for the failure to pay the maintenance fee will expire at the end of the same date (anniversary date) the patent was granted in the 4th, 8th, or 12th year after grant.
                (h) The periods specified in §§ 1.362 (d) and (e) with respect to a reissue application, including a continuing reissue application thereof, are counted from the date of grant of the original non-reissue application on which the reissued patent is based.
                [49 FR 34724, Aug. 31, 1984, as amended at 56 FR 65154, Dec. 13, 1991; 58 FR 54511, Oct. 22, 1993; 82 FR 52816, Nov. 14, 2017]

                § 1.363
                Fee address for maintenance fee purposes.
                (a) All notices, receipts, refunds, and other communications relating to payment or refund of maintenance fees will be directed to the correspondence address used during prosecution of the application as indicated in § 1.33(a) unless:
                (1) A fee address for purposes of payment of maintenance fees is set forth when submitting the issue fee, or

                (2) A change in the correspondence address for all purposes is filed after payment of the issue fee, or

                (3) A fee address or a change in the “fee address” is filed for purposes of receiving notices, receipts and other correspondence relating to the payment of maintenance fees after the payment of the issue fee, in which instance, the latest such address will be used.
                (b) An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes.
                (c) A fee address must be an address associated with a Customer Number.
                [49 FR 34725, Aug. 31, 1984, as amended at 69 FR 29878, May 26, 2004]

                § 1.366
                Submission of maintenance fees.
                (a) The patentee may pay maintenance fees and any necessary surcharges, or any person or organization may pay maintenance fees and any necessary surcharges on behalf of a patentee. A maintenance fee transmittal letter may be signed by a juristic applicant or patent owner. A patentee need not file authorization to enable any person or organization to pay maintenance fees and any necessary surcharges on behalf of the patentee.
                (b) A maintenance fee and any necessary surcharge submitted for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. A maintenance fee or surcharge may be paid in the manner set forth in § 1.23 or by an authorization to charge a deposit account established pursuant to § 1.25. Payment of a maintenance fee and any necessary surcharge or the authorization to charge a deposit account must be submitted within the periods set forth in § 1.362 (d), (e), or (f). Any payment or authorization of maintenance fees and surcharges filed at any other time will not be accepted and will not serve as a payment of the maintenance fee except insofar as a delayed payment of the maintenance fee is accepted by the Director in an expired patent pursuant to a petition filed under § 1.378. Any authorization to charge a deposit account must authorize the immediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than the required amount, payment in a manner other than that set forth in § 1.23, or in the filing of an authorization to charge a deposit account having insufficient funds will not constitute payment of a maintenance fee or surcharge on a patent. The procedures set forth in § 1.8 or § 1.10 may be utilized in paying maintenance fees and any necessary surcharges.

                (c) In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the patent number, and the application number of the United States application for the patent on which the maintenance fee is being paid. If the payment includes identification of only the patent number (i.e., does not identify the application number of the United States application for the patent on which the maintenance fee is being paid), the Office may apply the payment to the patent identified by patent number in the payment or may return the payment.
                (d) Payment of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 31/2-, 71/2-, or 111/2-year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, and any assigned customer number. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the payment must identify the reissue patent by reissue patent number and reissue application number as required by paragraph (c) of this section and should also include the original patent number.

                (e) Maintenance fee payments and surcharge payments relating thereto must be submitted separate from any other payments for fees or charges, whether submitted in the manner set forth in § 1.23 or by an authorization to charge a deposit account. If maintenance fee and surcharge payments for more than one patent are submitted together, they should be submitted on as few sheets as possible with the patent numbers listed in increasing patent number order. If the payment submitted is insufficient to cover the maintenance fees and surcharges for all the listed patents, the payment will be applied in the order the patents are listed, beginning at the top of the listing.
                (f) Notification of any change in status resulting in loss of entitlement to small entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small entity is no longer appropriate. See § 1.27(g).
                (g) Maintenance fees and surcharges relating thereto will not be refunded except in accordance with §§ 1.26 and 1.28(a).
                [49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993; 62 FR 53199, Oct. 10, 1997; 65 FR 54677, Sept. 8, 2000; 65 FR 78960, Dec. 18, 2000; 78 FR 62406, Oct. 21, 2013]

                § 1.377
                Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
                (a) Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee which was filed prior to the expiration of the patent may petition the Director to accept and record the maintenance fee.
                (b) Any petition under this section must be filed within two months of the action complained of, or within such other time as may be set in the action complained of, and must be accompanied by the fee set forth in § 1.17(g). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.
                (c) Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.
                [49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997; 69 FR 56545, Sept. 21, 2004]

                § 1.378
                Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
                (a) The Director may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Director to have been unintentional. If the Director accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
                (b) Any petition to accept an unintentionally delayed payment of a maintenance fee must include:
                (1) The required maintenance fee set forth in § 1.20(e) through (g);
                (2) The petition fee as set forth in § 1.17(m); and
                (3) A statement that the delay in payment of the maintenance fee was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
                (c) Any petition under this section must be signed in compliance with § 1.33(b).
                (d) Reconsideration of a decision refusing to accept a delayed maintenance fee may be obtained by filing a petition for reconsideration within two months of the decision, or such other time as set in the decision refusing to accept the delayed payment of the maintenance fee.
                (e) If the delayed payment of the maintenance fee is not accepted, the maintenance fee will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed.
                [78 FR 62407, Oct. 21, 2013]

            Subpart C—International Processing Provisions

              Authority:
              Secs. 1.401 to 1.499 also issued under 35 U.S.C. 41 and 351 through 376.

              Source:
              43 FR 20466, May 11, 1978, unless otherwise noted.

              General Information

                § 1.401
                Definitions of terms under the Patent Cooperation Treaty.
                (a) The abbreviation PCT and the term Treaty mean the Patent Cooperation Treaty.

                (b) International Bureau means the World Intellectual Property Organization located in Geneva, Switzerland.
                (c) Administrative Instructions means that body of instructions for operating under the Patent Cooperation Treaty referred to in PCT Rule 89.
                (d) Request, when capitalized, means that element of the international application described in PCT Rules 3 and 4.
                (e) International application, as used in this subchapter is defined in § 1.9(b).
                (f) Priority date for the purpose of computing time limits under the Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also § 1.465.
                (g) Demand, when capitalized, means that document filed with the International Preliminary Examining Authority which requests an international preliminary examination.
                (h) Annexes means amendments made to the claims, description or the drawings before the International Preliminary Examining Authority.
                (i) Other terms and expressions in this subpart C not defined in this section are to be taken in the sense indicated in PCT Art. 2 and 35 U.S.C. 351.
                [43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987]

                § 1.412
                The United States Receiving Office.
                (a) The United States Patent and Trademark Office is a Receiving Office only for applicants who are residents or nationals of the United States of America.
                (b) The Patent and Trademark Office, when acting as a Receiving Office, will be identified by the full title “United States Receiving Office” or by the abbreviation “RO/US.”
                (c) The major functions of the Receiving Office include:
                (1) According of international filing dates to international applications meeting the requirements of PCT Art. 11(1), and PCT Rule 20;
                (2) Assuring that international applications meet the standards for format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, and portions of PCT Rules 3 through 11;
                (3) Collecting and, when required, transmitting fees due for processing international applications (PCT Rule 14, 15, 16);
                (4) Transmitting the record and search copies to the International Bureau and International Searching Authority, respectively (PCT Rules 22 and 23); and
                (5) Determining compliance with applicable requirements of part 5 of this chapter.
                (6) Reviewing and, unless prescriptions concerning national security prevent the application from being so transmitted (PCT Rule 19.4), transmitting the international application to the International Bureau for processing in its capacity as a Receiving Office:
                (i) Where the United States Receiving Office is not the competent Receiving Office under PCT Rule 19.1 or 19.2 and § 1.421(a); or
                (ii) Where the international application is not in English but is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office; or
                (iii) Where there is agreement and authorization in accordance with PCT Rule 19.4(a)(iii).
                [43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995; 63 FR 29617, June 1, 1998]

                § 1.413
                The United States International Searching Authority.
                (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with the agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
                (b) The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISA/US.”
                (c) The major functions of the International Searching Authority include:

                (1) Approving or establishing the title and abstract;

                (2) Considering the matter of unity of invention;
                (3) Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing declarations that no international search report will be established (PCT Article 17(2)(a));

                (4) Preparing written opinions of the International Searching Authority in accordance with PCT Rule 43bis (when necessary); and
                (5) Transmitting the international search report and the written opinion of the International Searching Authority to the applicant and the International Bureau.
                [43 FR 20466, May 11, 1978, as amended at 68 FR 59886, Oct. 20, 2003]

                § 1.414
                The United States Patent and Trademark Office as a Designated Office or Elected Office.
                (a) The United States Patent and Trademark Office will act as a Designated Office or Elected Office for international applications in which the United States of America has been designated or elected as a State in which patent protection is desired.
                (b) The United States Patent and Trademark Office, when acting as a Designated Office or Elected Office during international processing will be identified by the full title “United States Designated Office” or by the abbreviation “DO/US” or by the full title “United States Elected Office” or by the abbreviation “EO/US”.
                (c) The major functions of the United States Designated Office or Elected Office in respect to international applications in which the United States of America has been designated or elected, include:
                (1) Receiving various notifications throughout the international stage and
                (2) National stage processing for international applications entering the national stage under 35 U.S.C. 371.
                [52 FR 20047, May 28, 1987, as amended at 77 FR 48823, Aug. 14, 2012]

                § 1.415
                The International Bureau.
                (a) The International Bureau is the World Intellectual Property Organization located at Geneva, Switzerland. It is the international intergovernmental organization which acts as the coordinating body under the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)).
                (b) The major functions of the International Bureau include:
                (1) Publishing of international applications and the International Gazette;
                (2) Transmitting copies of international applications to Designated Offices;
                (3) Storing and maintaining record copies; and
                (4) Transmitting information to authorities pertinent to the processing of specific international applications.

                § 1.416
                The United States International Preliminary Examining Authority.
                (a) Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Director, in accordance with agreement between the Patent and Trademark Office and the International Bureau.
                (b) The United States Patent and Trademark Office, when acting as an International Preliminary Examining Authority, will be identified by the full title “United States International Preliminary Examining Authority” or by the abbreviation “IPEA/US.”
                (c) The major functions of the International Preliminary Examining Authority include:
                (1) Receiving and checking for defects in the Demand;
                (2) Forwarding Demands in accordance with PCT Rule 59.3;
                (3) Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority;
                (4) Informing applicant of receipt of the Demand;
                (5) Considering the matter of unity of invention;

                (6) Providing an international preliminary examination report which is a non-binding opinion on the questions of whether the claimed invention appears: to be novel, to involve an inventive step (to be nonobvious), and to be industrially applicable; and
                (7) Transmitting the international preliminary examination report to applicant and the International Bureau.
                [52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998]

                § 1.417
                Submission of translation of international publication.
                The submission of an English language translation of the publication of an international application pursuant to 35 U.S.C. 154(d)(4) must clearly identify the international application to which it pertains (§ 1.5(a)) and be clearly identified as a submission pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a filing under 35 U.S.C. 111(a). Such submissions should be marked “Mail Stop PCT.”
                [68 FR 71007, Dec. 22, 2003]

                § 1.419
                Display of currently valid control number under the Paperwork Reduction Act.

                (a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.), the collection of information in this subpart has been reviewed and approved by the Office of Management and Budget under control number 0651-0021.
                (b) Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid Office of Management and Budget control number. This section constitutes the display required by 44 U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information under Office of Management and Budget control number 0651-0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).
                [63 FR 29617, June 1, 1998]

              Who May File an International Application

                § 1.421
                Applicant for international application.
                (a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
                (1) Has indicated a residence or nationality in a PCT Contracting State, or

                (2) Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).
                (b) Although the United States Receiving Office will accept international applications filed by any applicant who is a resident or national of the United States of America for international processing, for the purposes of the designation of the United States, an international application will be accepted by the Patent and Trademark Office for the national stage only if the applicant is the inventor or other person as provided in § 1.422 or § 1.424. Joint inventors must jointly apply for an international application.
                (c) A registered attorney or agent of the applicant may sign the international application Request and file the international application for the applicant. A separate power of attorney from each applicant may be required.
                (d) Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.

                (e) Requests for changes in the indications concerning the applicant, agent, or common representative of an international application shall be made in accordance with PCT Rule 92bis and may be required to be signed by all applicants.

                (f) Requests for withdrawals of the international application, designations, priority claims, the Demand, or elections shall be made in accordance with PCT Rule 90bis and must be signed by all applicants. A separate power of attorney from the applicants will be required for the purposes of any request for a withdrawal in accordance with PCT Rule 90bis which is not signed by all applicants.
                [77 FR 48823, Aug. 14, 2012]

                § 1.422
                Legal representative as applicant in an international application.
                If an inventor is deceased or under legal incapacity, the legal representative of the inventor may be an applicant in an international application which designates the United States of America.
                [77 FR 48823, Aug. 14, 2012]

                § 1.423
                [Reserved]

                § 1.424
                Assignee, obligated assignee, or person having sufficient proprietary interest as applicant in an international application.
                (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may be an applicant in an international application which designates the United States of America. A person who otherwise shows sufficient proprietary interest in the matter may be an applicant in an international application which designates the United States of America on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
                (b) Neither any showing required under paragraph (a) of this section nor documentary evidence of ownership or proprietary interest will be required or considered by the Office in the international stage, but will be required in the national stage in accordance with the conditions and requirements of § 1.46.
                [77 FR 48823, Aug. 14, 2012]

              The International Application

                § 1.431
                International application requirements.
                (a) An international application shall contain, as specified in the Treaty and the Regulations, a Request, a description, one or more claims, an abstract, and one or more drawings (where required). (PCT Art. 3(2) and section 207 of the Administrative Instructions.)
                (b) An international filing date will be accorded by the United States Receiving Office, at the time to receipt of the international application, provided that:
                (1) At least one applicant (§ 1.421) is a United States resident or national and the papers filed at the time of receipt of the international application so indicate (35 U.S.C. 361(a), PCT Art. 11(1)(i)).
                (2) The international application is in the English language (35 U.S.C. 361(c), PCT Art. 11(1)(ii)).
                (3) The international application contains at least the following elements (PCT Art. 11(1)(iii)):
                (i) An indication that it is intended as an international application (PCT Rule 4.2);
                (ii) The designation of at least one Contracting State of the International Patent Cooperation Union (§ 1.432);
                (iii) The name of the applicant, as prescribed (note §§ 1.421, 1.422, and 1.424);
                (iv) A part which on the face of it appears to be a description; and
                (v) A part which on the face of it appears to be a claim.
                (c) Payment of the international filing fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. The international filing, transmittal, and search fee payable is the international filing, transmittal, and search fee in effect on the receipt date of the international application.

                (1) If the international filing, transmittal and search fees are not paid within one month from the date of receipt of the international application and prior to the sending of a notice of deficiency which imposes a late payment fee, applicant will be notified and given one month within which to pay the deficient fees plus the late payment fee. Subject to paragraph (c)(2) of this section, the late payment fee will be equal to the greater of:
                (i) Fifty percent of the amount of the deficient fees; or
                (ii) An amount equal to the transmittal fee;

                (2) The late payment fee shall not exceed an amount equal to fifty percent of the international filing fee not taking into account any fee for each sheet of the international application in excess of thirty sheets (PCT Rule 16bis).
                (3) The one-month time limit set pursuant to paragraph (c) of this section to pay deficient fees may not be extended.

                (d) If the payment needed to cover the transmittal fee, the international filing fee, the search fee, and the late payment fee pursuant to paragraph (c) of this section is not timely made in accordance with PCT Rule 16bis.1(e), the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).
                [43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52 FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1, 1998; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003; 77 FR 48823, Aug. 14, 2012]

                § 1.432
                Designation of States by filing an international application.
                The filing of an international application request shall constitute:
                (a) The designation of all Contracting States that are bound by the Treaty on the international filing date;
                (b) An indication that the international application is, in respect of each designated State to which PCT Article 43 or 44 applies, for the grant of every kind of protection which is available by way of the designation of that State; and
                (c) An indication that the international application is, in respect of each designated State to which PCT Article 45(1) applies, for the grant of a regional patent and also, unless PCT Article 45(2) applies, a national patent.
                [68 FR 59887, Oct. 20, 2003]

                § 1.433
                Physical requirements of international application.
                (a) The international application and each of the documents that may be referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) shall be filed in one copy only.
                (b) All sheets of the international application must be on A4 size paper (21.0 × 29.7 cm.).
                (c) Other physical requirements for international applications are set forth in PCT Rule 11 and sections 201-207 of the Administrative Instructions.

                § 1.434
                The request.
                (a) The request shall be made on a standardized form (PCT Rules 3 and 4). Copies of printed Request forms are available from the United States Patent and Trademark Office. Letters requesting printed forms should be marked “Mail Stop PCT.”
                (b) The Check List portion of the Request form should indicate each document accompanying the international application on filing.
                (c) All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201.
                (d) For the purposes of the designation of the United States of America, an international application shall include:
                (1) The name of the inventor; and
                (2) A reference to any prior-filed national application or international application designating the United States of America, if the benefit of the filing date for the prior-filed application is to be claimed.
                (e) An international application may also include in the Request a declaration of the inventors as provided for in PCT Rule 4.17(iv).
                [43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66 FR 16006, Mar. 22, 2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, Mar. 25, 2003; 68 FR 59887, Oct. 20, 2003]

                § 1.435
                The description.

                (a) The application must meet the requirements as to the content and form of the description set forth in PCT Rules 5, 9, 10, and 11 and sections 204 and 208 of the Administrative Instructions.

                (b) In international applications designating the United States the description must contain upon filing an indication of the best mode contemplated by the inventor for carrying out the claimed invention.
                [43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]

                § 1.436
                The claims.
                The requirements as to the content and format of claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered to. The number of the claims shall be reasonable, considering the nature of the invention claimed.

                § 1.437
                The drawings.
                (a) Drawings are required when they are necessary for the understanding of the invention (PCT Art. 7).
                (b) The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to.
                [72 FR 51563, Sept. 10, 2007]

                § 1.438
                The abstract.
                (a) Requirements as to the content and form of the abstract are set forth in PCT Rule 8, and shall be adhered to.
                (b) Lack of an abstract upon filing of an international application will not affect the granting of a filing date. However, failure to furnish an abstract within one month from the date of the notification by the Receiving Office will result in the international appplication being declared withdrawn.

              Fees

                § 1.445
                International application filing, processing and search fees.
                (a) The following fees and charges for international applications are established by law or by the Director under the authority of 35 U.S.C. 376:
                (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) consisting of:
                (i) A basic portion:

                    (A) For an international application having a receipt date that is on or after January 1, 2014:

                    By a micro entity (§ 1.29)
                    $60.00

                    By a small entity (§ 1.27(a))
                    $120.00

                    By other than a small or micro entity
                    $240.00

                    (B) For an international application having a receipt date that is before January 1, 2014
                    $240.00

                    (ii) A non-electronic filing fee portion for any international application designating the United States of America that is filed on or after November 15, 2011, other than by the Office electronic filing system, except for a plant application:

                    By a small entity (§ 1.27(a))
                    $200.00

                    By other than a small entity
                    $400.00

                    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):

                    (i) For an international application having a receipt date that is on or after January 1, 2014:

                    By a micro entity (§ 1.29)
                    $520.00

                    By a small entity (§ 1.27(a))
                    $1,040.00

                    By other than a small or micro entity
                    $2,080.00

                    (ii) For an international application having a receipt date that is before January 1, 2014
                    $2,080.00

                    (3) A supplemental search fee when required, per additional invention:

                    (i) For an international application having a receipt date that is on or after January 1, 2014:

                    By a micro entity (§ 1.29)
                    $520.00

                    By a small entity (§ 1.27(a))
                    $1,040.00

                    By other than a small or micro entity
                    $2,080.00

                    (ii) For an international application having a receipt date that is before January 1, 2014
                    $2,080.00

                (4) A fee equivalent to the transmittal fee in paragraph (a)(1) of this section that would apply if the USPTO was the Receiving Office for transmittal of an international application to the International Bureau for processing in its capacity as a Receiving Office (PCT Rule 19.4).

                (5) Late furnishing fee for providing a sequence listing in response to an invitation under PCT Rule 13ter:

                    By a micro entity (§ 1.29)
                    $75.00

                    By a small entity (§ 1.27(a))
                    150.00

                    By other than a small or micro entity
                    300.00

                (b) The international filing fee shall be as prescribed in PCT Rule 15.
                [78 FR 17107, Mar. 20, 2013, as amended at 82 FR 52816, Nov. 14, 2017]

                § 1.446
                Refund of international application filing and processing fees.

                (a) Money paid for international application fees, where paid by actual mistake or in excess, such as a payment not required by law or treaty and its regulations, may be refunded. A mere change of purpose after the payment of a fee will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested and will not notify the payor of such amounts. If the payor or party requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer, the Office may use the banking information provided on the payment instrument to make any refund by electronic funds transfer.
                (b) Any request for refund under paragraph (a) of this section must be filed within two years from the date the fee was paid. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization under § 1.25(b), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
                (c) Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Director or the Director's designee acting under PCT Rule 40.2(c).
                (d) The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau (PCT Rules 15.6 and 16.2). The search fee will be refunded if the application is withdrawn before transmittal of the search copy to the International Searching Authority. The transmittal fee will not be refunded.
                (e) The handling fee (§ 1.482(b)) will be refunded (PCT Rule 57.6) only if:
                (1) The Demand is withdrawn before the Demand has been sent by the International Preliminary Examining Authority to the International Bureau, or
                (2) The Demand is considered not to have been submitted (PCT Rule 54.4(a)).
                (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
                [43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8, 2000]

              Priority

                § 1.451
                The priority claim and priority document in an international application.
                (a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions.
                (b) Whenever the priority of an earlier United States national application or international application filed with the United States Receiving Office is claimed in an international application, the applicant may request in the Request or in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the United States Receiving Office not later than 16 months after the priority date, that the United States Patent and Trademark Office prepare a certified copy of the prior application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is set forth in § 1.19(b)(1).

                (c) If a certified copy of the priority document is not submitted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a).

                (d) The applicant may correct or add a priority claim in accordance with PCT Rule 26bis.1.
                (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
                [43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]

                § 1.452
                Restoration of right of priority.
                (a) If the international application has an international filing date which is later than the expiration of the priority period as defined by PCT Rule 2.4 but within two months from the expiration of the priority period, the right of priority in the international application may be restored upon request if the delay in filing the international application within the priority period was unintentional.
                (b) A request to restore the right of priority in an international application under paragraph (a) of this section must be filed not later than two months from the expiration of the priority period and must include:
                (1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application;
                (2) The petition fee as set forth in § 1.17(m); and
                (3) A statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
                (c) If the applicant makes a request for early publication under PCT Article 21(2)(b), any requirement under paragraph (b) of this section filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.
                [72 FR 51563, Sept. 10, 2007, as amended at 78 FR 62407, Oct. 21, 2013]

                § 1.453
                Transmittal of documents relating to earlier search or classification.

                (a) Subject to paragraph (c) of this section, where an applicant has requested in an international application filed with the United States Receiving Office pursuant to PCT Rule 4.12 that an International Searching Authority take into account the results of an earlier search, the United States Receiving Office shall prepare and transmit to the International Searching Authority, as applicable, a copy of the results of the earlier search and any earlier classification as provided under PCT Rule 23bis.1.

                (b) Subject to paragraph (c) of this section, where an international application filed with the United States Receiving Office claims the priority of an earlier application filed with the USPTO in which the USPTO has carried out an earlier search or has classified such earlier application, the United States Receiving Office shall prepare and transmit to the International Searching Authority a copy of the results of any such earlier search and earlier classification as provided under PCT Rule 23bis.2.
                (c) The United States Receiving Office will not prepare a copy of the results of an earlier search or earlier classification referred to in paragraphs (a) and (b) of this section for transmittal to an International Searching Authority from an application preserved in confidence (§ 1.14) unless the international application contains written authority granting the International Searching Authority access to such results. Written authority provided under this paragraph must be signed by:
                (1) An applicant in the international application who is also an applicant in the application preserved in confidence; or
                (2) A person set forth in § 1.14(c) permitted to grant access to the application preserved in confidence.
                [82 FR 24252, May 26, 2017]

              Representation

                § 1.455
                Representation in international applications.

                (a) Applicants of international applications may be represented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6 (b) and (c)).
                (b) Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by applicant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
                (c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
                (d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.
                [43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58 FR 4345, Jan. 14, 1993; 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June 24, 2004]

              Transmittal of Record Copy

                § 1.461
                Procedures for transmittal of record copy to the International Bureau.
                (a) Transmittal of the record copy of the international application to the International Bureau shall be made by the United States Receiving Office or as provided by PCT Rule 19.4.
                (b) [Reserved]
                (c) No copy of an international application may be transmitted to the International Bureau, a foreign Designated Office, or other foreign authority by the United States Receiving Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.
                [43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63 FR 29619, June 1, 1998]

              Timing

                § 1.465
                Timing of application processing based on the priority date.
                (a) For the purpose of computing time limits under the Treaty, the priority date shall be defined as in PCT Art. 2(xi).

                (b) When a claimed priority date is corrected under PCT Rule 26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a), withdrawn under PCT Rule 90bis.3, or considered not to have been made under PCT Rule 26bis.2, the priority date for the purposes of computing any non-expired time limits will be the filing date of the earliest remaining priority claim under PCT Article 8 of the international application, or if none, the international filing date.
                (c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 20.2(a) (i) or (iii) are timely submitted, and the date of receipt of such corrections falls later than one year from the claimed priority date or dates, the Receiving Office shall proceed under PCT Rule 26bis.2.
                [43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 72 FR 51564, Sept. 10, 2007]

                § 1.468
                Delays in meeting time limits.
                Delays in meeting time limits during international processing of international applications may only be excused as provided in PCT Rule 82. For delays in meeting time limits in a national application, see § 1.137.

              Amendments

                § 1.471
                Corrections and amendments during international processing.
                (a) Except as otherwise provided in this paragraph, all corrections submitted to the United States Receiving Office or United States International Searching Authority must be in English, in the form of replacement sheets in compliance with PCT Rules 10 and 11, and accompanied by a letter that draws attention to the differences between the replaced sheets and the replacement sheets. Replacement sheets are not required for the deletion of lines of text, the correction of simple typographical errors, and one addition or change of not more than five words per sheet. These changes may be stated in a letter and, if appropriate, the United States Receiving Office will make the deletion or transfer the correction to the international application, provided that such corrections do not adversely affect the clarity and direct reproducibility of the application (PCT Rule 26.4). Amendments that do not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
                (b) Amendments of claims submitted to the International Bureau shall be as prescribed by PCT Rule 46.

                (c) Corrections or additions to the Request of any declarations under PCT Rule 4.17 should be submitted to the International Bureau as prescribed by PCT Rule 26ter.

                [43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]

                § 1.472
                Changes in person, name, or address of applicants and inventors.
                All requests for a change in person, name or address of applicants and inventor be sent to the United States Receiving Office until the time of issuance of the international search report. Thereafter requests for such changes should be submitted to the International Bureau.
                [43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]

              Unity of Invention

                § 1.475
                Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
                (a) An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
                (b) An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
                (1) A product and a process specially adapted for the manufacture of said product; or
                (2) A product and a process of use of said product; or
                (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
                (4) A process and an apparatus or means specifically designed for carrying out the said process; or
                (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
                (c) If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present.

                (d) If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and § 1.476(c).
                (e) The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.
                [58 FR 4345, Jan. 14, 1993]

                § 1.476
                Determination of unity of invention before the International Searching Authority.
                (a) Before establishing the international search report, the International Searching 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 Searching Authority considers that the international application does not comply with the requirement of unity of invention, it shall inform the applicant accordingly and invite the payment of additional fees (note § 1.445 and PCT Art. 17(3)(a) and PCT Rule 40). The applicant will be given a time period in accordance with PCT Rule 40.3 to pay the additional fees due.
                (c) In the case of non-compliance with unity of invention and where no additional fees are paid, the international search will be performed on the invention first mentioned (“main invention”) in the claims.
                (d) 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 Searching Authority may raise the objection of lack of unity of invention.
                [43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 28, 1987; 58 FR 4346, Jan. 14, 1993]

                § 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]

              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 54bis.1(a) shall be considered as if it had not been submitted (PCT Rule 54bis.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]

                § 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 58bis.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]

                § 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:

                    (A) For an international preliminary examination fee paid on or after January 1, 2014:

                    By a micro entity (§ 1.29)
                    $150.00

                    By a small entity (§ 1.27(a))
                    $300.00

                    By other than a small or micro entity
                    $600.00

                    (B) For an international preliminary examination fee paid before January 1, 2014
                    $600.00

                    (ii) If the International Searching Authority for the international application was an authority other than the United States Patent and Trademark Office:

                    (A) For an international preliminary examination fee paid on or after January 1, 2014:

                    By a micro entity (§ 1.29)
                    $190.00

                    By a small entity (§ 1.27(a))
                    $380.00

                    By other than a small or micro entity
                    $760.00

                    (B) For an international preliminary examination fee paid before January 1, 2014 $750.00

                    (2) An additional preliminary examination fee when required, per additional invention:

                    (i) If the international preliminary examination fee set forth in paragraph (a)(1) of this section was paid on or after January 1, 2014:

                    By a micro entity (§ 1.29)
                    $150.00

                    By a small entity (§ 1.27(a))
                    $300.00

                    By other than a small or micro entity
                    $600.00

                    (ii) If the international preliminary examination fee set forth in paragraph (a)(1) of this section was paid before January 1, 2014
                    $600.00

                (b) The handling fee is due on filing the Demand and shall be prescribed in PCT Rule 57.

                (c) Late furnishing fee for providing a sequence listing in response to an invitation under PCT Rule 13ter:

                    By a micro entity (§ 1.29)
                    $75.00

                    By a small entity (§ 1.27(a))
                    150.00

                    By other than a small or micro entity
                    300.00

                [78 FR 17107, Mar. 20, 2013, as amended at 82 FR 52816, Nov. 14, 2017]

                § 1.484
                Conduct of international preliminary examination.
                (a) An international preliminary examination will be conducted to formulate a non-binding opinion as to whether the claimed invention has novelty, involves an inventive step (is non-obvious) and is industrially applicable.
                (b) International preliminary examination will begin in accordance with PCT Rule 69.1.
                (c) No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
                (d) The International Preliminary Examining Authority will establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability and will set a non-extendable time limit in the written opinion for the applicant to reply.

                (e) The written opinion established by the International Searching Authority under PCT Rule 43bis.1 shall be considered to be a written opinion of the United States International Preliminary Examining Authority for the purposes of paragraph (d) of this section.
                (f) The International Preliminary Examining Authority may establish further written opinions under paragraph (d) of this section.
                (g) If no written opinion under paragraph (d) of this section is necessary, or if no further written opinion under paragraph (f) of this section is to be established, or after any written opinion and the reply thereto or the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be established by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy will be submitted to the applicant.
                (h) An applicant will be permitted a personal or telephone interview with the examiner, which may be requested after the filing of a Demand, and must be conducted during the period between the establishment of the written opinion and the establishment of the international preliminary examination report. Additional interviews may be conducted where the examiner determines that such additional interviews may be helpful to advancing the international preliminary examination procedure. A summary of any such personal or telephone interview must be filed by the applicant or, if not filed by applicant be made of record in the file by the examiner.
                (i) If the application whose priority is claimed in the international application is in a language other than English, the United States International Preliminary Examining Authority may, where the validity of the priority claim is relevant for the formulation of the opinion referred to in Article 33(1), invite the applicant to furnish an English translation of the priority document within two months from the date of the invitation. If the translation is not furnished within that time limit, the international preliminary report may be established as if the priority had not been claimed.
                [52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001; 68 FR 59888, Oct. 20, 2003]

                § 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]

                § 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]

                § 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]

              National Stage

                § 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]

                § 1.492
                National stage fees.
                The following fees and charges are established for international applications entering the national stage under 35 U.S.C. 371:
                (a) The basic national fee for an international application entering the national stage under 35 U.S.C. 371:

                    By a micro entity (§ 1.29)
                    $75.00

                    By a small entity (§ 1.27(a))
                    150.00

                    By other than a small or micro entity
                    300.00

                (b) Search fee for an international application entering the national stage under 35 U.S.C. 371:
                (1) If an international preliminary examination report on the international application prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33(1) to (4) have been satisfied for all of the claims presented in the application entering the national stage:

                    By a micro entity (§ 1.29)
                    $0.00

                    By a small entity (§ 1.27(a))
                    0.00

                    By other than a small or micro entity
                    0.00

                (2) If the 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:

                    By a micro entity (§ 1.29)
                    $35.00

                    By a small entity (§ 1.27(a))
                    70.00

                    By other than a small or micro entity
                    140.00

                (3) If an international search report on the international application has been prepared by an International Searching Authority other than the United States International Searching Authority and is provided, or has been previously communicated by the International Bureau, to the Office:

                    By a micro entity (§ 1.29)
                    $130.00

                    By a small entity (§ 1.27(a))
                    260.00

                    By other than a small or micro entity
                    520.00

                (4) In all situations not provided for in paragraph (b)(1), (2), or (3) of this section:

                    By a micro entity (§ 1.29)
                    $165.00

                    By a small entity (§ 1.27(a))
                    330.00

                    By other than a small or micro entity
                    660.00

                (c) The examination fee for an international application entering the national stage under 35 U.S.C. 371:
                (1) If an international preliminary examination report on the international application prepared by the United States International Preliminary Examining Authority or a written opinion on the international application prepared by the United States International Searching Authority states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33 (1) to (4) have been satisfied for all of the claims presented in the application entering the national stage:

                    By a micro entity (§ 1.29)
                    $0.00

                    By a small entity (§ 1.27(a))
                    0.00

                    By other than a small or micro entity
                    0.00

                (2) In all situations not provided for in paragraph (c)(1) of this section:

                    By a micro entity (§ 1.29)
                    $190.00

                    By a small entity (§ 1.27(a))
                    380.00

                    By other than a small or micro entity
                    760.00

                (d) In addition to the basic national fee, for filing or on later presentation at any other time of each claim in independent form in excess of 3:

                    By a micro entity (§ 1.29)
                    $115.00

                    By a small entity (§ 1.27(a))
                    230.00

                    By other than a small or micro entity
                    460.00

                (e) In addition to the basic national fee, for filing or on later presentation at any other time of each claim (whether dependent or independent) in excess of 20 (note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes):

                    By a micro entity (§ 1.29)
                    $25.00

                    By a small entity (§ 1.27(a))
                    50.00

                    By other than a small or micro entity
                    100.00

                (f) In addition to the basic national fee, if the application contains, or is amended to contain, a multiple dependent claim, per application:

                    By a micro entity (§ 1.29)
                    $205.00

                    By a small entity (§ 1.27(a))
                    410.00

                    By other than a small or micro entity
                    820.00

                (g) If the excess claims fees required by paragraphs (d) and (e) of this section and multiple dependent claim fee required by paragraph (f) of this section are not paid with the basic national fee or on later presentation of the claims for which excess claims or multiple dependent claim fees are due, the fees required by paragraphs (d), (e), and (f) of this section must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
                (h) Surcharge for filing any of the search fee, the examination fee, or the oath or declaration after the date of the commencement of the national stage (§ 1.491(a)) pursuant to § 1.495(c):

                    By a micro entity (§ 1.29)
                    $35.00

                    By a small entity (§ 1.27(a))
                    70.00

                    By other than a small or micro entity
                    140.00

                (i) For filing an English translation of an international application or any annexes to an international preliminary examination report later than thirty months after the priority date (§ 1.495(c) and (e)):

                    By a micro entity (§ 1.29)
                    $35.00

                    By a small entity (§ 1.27(a))
                    70.00

                    By other than a small or micro entity
                    140.00

                (j) Application size fee for any international application, the specification and drawings of which exceed 100 sheets of paper, for each additional 50 sheets or fraction thereof:

                    By a micro entity (§ 1.29)
                    $100.00

                    By a small entity (§ 1.27(a))
                    200.00

                    By other than a small or micro entity
                    400.00

                [78 FR 4290, Jan. 18, 2013, as amended at 82 FR 52816, Nov. 14, 2017]

                § 1.495
                Entering the national stage in the United States of America.
                (a) The applicant in an international application must fulfill the requirements of 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the United States of America. The thirty-month time period set forth in paragraphs (b), (c), (d), (e) and (h) of this section may not be extended.
                (b) To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of thirty months from the priority date:
                (1) A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
                (2) The basic national fee (see § 1.492(a)).
                (c)(1) If applicant complies with paragraph (b) of this section before expiration of thirty months from the priority date, the Office will notify the applicant if he or she has omitted any of:
                (i) A translation of the international application, as filed, into the English language, if it was originally filed in another language and if any English language translation of the publication of the international application previously submitted under 35 U.S.C. 154(d) (§ 1.417) is not also a translation of the international application as filed (35 U.S.C. 371(c)(2));

                (ii) The inventor's oath or declaration (35 U.S.C. 371(c)(4) and § 1.497), if a declaration of inventorship 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 26ter.1;
                (iii) The search fee set forth in § 1.492(b);
                (iv) The examination fee set forth in § 1.492(c); and
                (v) Any application size fee required by § 1.492(j).

                (2) A notice under paragraph (c)(1) of this section will set a time period within which applicant must provide any omitted translation, search fee set forth in § 1.492(b), examination fee set forth in § 1.492(c), and any application size fee required by § 1.492(j) in order to avoid abandonment of the application.
                (3) The inventor's oath or declaration must also be filed within the period specified in paragraph (c)(2) of this section, except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (c)(3)(i) through (c)(3)(iii) of this section.
                (i) The application contains an application data sheet in accordance with § 1.76 filed prior to the expiration of the time period set in any notice under paragraph (c)(1) identifying:
                (A) Each inventor by his or her legal name;
                (B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.

                (ii) The applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee for the patent is paid. If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)). The Office may dispense with the notice provided for in paragraph (c)(1) of this section if each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, has been filed before the application is in condition for allowance.

                (iii) An international application in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid and for which an application data sheet in accordance with § 1.76 has been filed may be treated as complying with 35 U.S.C. 371 for purposes of eighteen-month publication under 35 U.S.C. 122(b) and § 1.211 et seq.

                (4) The payment of the processing fee set forth in § 1.492(i) is required for acceptance of an English translation later than the expiration of thirty months after the priority date. The payment of the surcharge set forth in § 1.492(h) is required for acceptance of any of the search fee, the examination fee, or the inventor's oath or declaration after the date of the commencement of the national stage (§ 1.491(a)).
                (5) A “Sequence Listing” need not be translated if the “Sequence Listing” complies with PCT Rule 12.1(d) and the description complies with PCT Rule 5.2(b).
                (d) A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Amendments under PCT Article 19 which are not received by the expiration of thirty months from the priority date will be considered to be canceled.
                (e) A translation into English of any annexes to an international preliminary examination report (if applicable), if the annexes were made in another language, must be furnished not later than the expiration of thirty months from the priority date. Translations of the annexes which are not received by the expiration of thirty months from the priority date may be submitted within any period set pursuant to paragraph (c) of this section accompanied by the processing fee set forth in § 1.492(f). Annexes for which translations are not timely received will be considered canceled.
                (f) Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English.

                (g) The documents and fees submitted under paragraphs (b) and (c) of this section must be identified as a submission to enter the national stage under 35 U.S.C. 371. If the documents and fees contain conflicting indications as between an application under 35 U.S.C. 111 and a submission to enter the national stage under 35 U.S.C. 371, the documents and fees will be treated as a submission to enter the national stage under 35 U.S.C. 371.
                (h) An international application becomes abandoned as to the United States thirty months from the priority date if the requirements of paragraph (b) of this section have not been complied with within thirty months from the priority date.
                [52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63 FR 29620, June 1, 1998; 65 FR 57060, Sept. 20, 2000; 67 FR 523, Jan. 4, 2002; 68 FR 71007, Dec. 22, 2003; 70 FR 3892, Jan. 27, 2005; 70 FR 30365, May 26, 2005; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 77 FR 48824, Aug. 14, 2012; 78 FR 62407, Oct. 21, 2013]

                § 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]

                § 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 26ter.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]

                § 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]

            Subpart D—Ex Parte Reexamination of Patents

              Source:
              46 FR 29185, May 29, 1981, unless otherwise noted.

              Citation of Prior Art and Written Statements

                § 1.501
                Citation of prior art and written statements in patent files.
                (a) Information content of submission: At any time during the period of enforceability of a patent, any person may file a written submission with the Office under this section, which is directed to the following information:
                (1) Prior art consisting of patents or printed publications which the person making the submission believes to have a bearing on the patentability of any claim of the patent; or
                (2) Statements of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent. Any statement submitted under this paragraph must be accompanied by any other documents, pleadings, or evidence from the proceeding in which the statement was filed that address the written statement, and such statement and accompanying information under this paragraph must be submitted in redacted form to exclude information subject to an applicable protective order.
                (3) Submissions under paragraph (a)(2) of this section must identify:
                (i) The forum and proceeding in which patent owner filed each statement;
                (ii) The specific papers and portions of the papers submitted that contain the statements; and
                (iii) How each statement submitted is a statement in which patent owner took a position on the scope of any claim in the patent.
                (b) Explanation: A submission pursuant to paragraph (a) of this section:
                (1) Must include an explanation in writing of the pertinence and manner of applying any prior art submitted under paragraph (a)(1) of this section and any written statement and accompanying information submitted under paragraph (a)(2) of this section to at least one claim of the patent, in order for the submission to become a part of the official file of the patent; and
                (2) May, if the submission is made by the patent owner, include an explanation of how the claims differ from any prior art submitted under paragraph (a)(1) of this section or any written statements and accompanying information submitted under paragraph (a)(2) of this section.
                (c) Reexamination pending: If a reexamination proceeding has been requested and is pending for the patent in which the submission is filed, entry of the submission into the official file of the patent is subject to the provisions of §§ 1.502 and 1.902.
                (d) Identity: If the person making the submission wishes his or her identity to be excluded from the patent file and kept confidential, the submission papers must be submitted anonymously without any identification of the person making the submission.
                (e) Certificate of Service: A submission under this section by a person other than the patent owner must include a certification that a copy of the submission was served in its entirety upon patent owner at the address as provided for in § 1.33 (c). A submission by a person other than the patent owner that fails to include proper proof of service as required by § 1.248(b) will not be entered into the patent file.
                [77 FR 46626, Aug. 6, 2012]

                § 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]

              Request for Ex Parte Reexamination

                § 1.510
                Request for ex parte reexamination.

                (a) Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).
                (b) Any request for reexamination must include the following parts:
                (1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.
                (2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. For each statement of the patent owner and accompanying information submitted pursuant to § 1.501(a)(2) which is relied upon in the detailed explanation, the request must explain how that statement is being used to determine the proper meaning of a patent claim in connection with the prior art applied to that claim and how each relevant claim is being interpreted. If appropriate, the party requesting reexamination may also point out how claims distinguish over cited prior art.
                (3) A copy of every patent or printed publication relied upon or referred to in paragraph (b) (1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.
                (4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.
                (5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.

                (6) A certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit the requester from filing the ex parte reexamination request.

                (c) If the request does not include the fee for requesting ex parte reexamination required by paragraph (a) of this section and meet all the requirements by paragraph (b) of this section, then the person identified as requesting reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the ex parte reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
                (d) The filing date of the request for ex parte reexamination is the date on which the request satisfies all the requirements of this section.
                (e) A request filed by the patent owner may include a proposed amendment in accordance with § 1.530.
                (f) If a request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
                (35 U.S.C. 6; 15 U.S.C. 1113, 1123)
                [46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982; 62 FR 53200, Oct. 10, 1997; 65 FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000; 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006; 72 FR 18905, Apr. 16, 2007; 77 FR 46626, Aug. 6, 2012]

                § 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]

                § 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]

                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]

                § 1.530
                Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination.

                (a) Except as provided in § 1.510(e), no statement or other response by the patent owner in an ex parte reexamination proceeding shall be filed prior to the determinations made in accordance with § 1.515 or § 1.520. If a premature statement or other response is filed by the patent owner, it will not be acknowledged or considered in making the determination, and it will be returned or discarded (at the Office's option).
                (b) The order for ex parte reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability, including any proposed amendments the patent owner wishes to make.

                (c) Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Where the reexamination request was filed by a third party requester, any statement filed by the patent owner must be served upon the ex parte reexamination requester in accordance with § 1.248.
                (d) Making amendments in a reexamination proceeding. A proposed amendment in an ex parte or an inter partes reexamination proceeding is made by filing a paper directing that proposed specified changes be made to the patent specification, including the claims, or to the drawings. An amendment paper directing that proposed specified changes be made in a reexamination proceeding may be submitted as an accompaniment to a request filed by the patent owner in accordance with § 1.510(e), as part of a patent owner statement in accordance with paragraph (b) of this section, or, where permitted, during the prosecution of the reexamination proceeding pursuant to § 1.550(a) or § 1.937.
                (1) Specification other than the claims. Changes to the specification, other than to the claims, must be made by submission of the entire text of an added or rewritten paragraph including markings pursuant to paragraph (f) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification must be identified where any added or rewritten paragraph is located. This paragraph applies whether the amendment is submitted on paper or compact disc (see §§ 1.96 and 1.825).
                (2) Claims. An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each patent claim proposed to be changed and each proposed added claim must include markings pursuant to paragraph (f) of this section, except that a patent claim or proposed added claim should be canceled by a statement canceling the claim, without presentation of the text of the claim.
                (3) Drawings. Any change to the patent drawings must be submitted as a sketch on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval of the changes by the examiner, only new sheets of drawings including the changes and in compliance with § 1.84 must be filed. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
                (4) The formal requirements for papers making up the reexamination proceeding other than those set forth in this section are set out in § 1.52.
                (e) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes to the claims made by the amendment paper.
                (f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings:
                (1) The matter to be omitted by the reexamination proceeding must be enclosed in brackets; and
                (2) The matter to be added by the reexamination proceeding must be underlined.
                (g) Numbering of patent claims preserved. Patent claims may not be renumbered. The numbering of any claims added in the reexamination proceeding must follow the number of the highest numbered patent claim.
                (h) Amendment of disclosure may be required. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.

                (i) Amendments made relative to patent. All amendments must be made relative to the patent specification, including the claims, and drawings, which are in effect as of the date of filing the request for reexamination.
                (j) No enlargement of claim scope. No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.
                (k) Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.
                (l) Correction of inventorship in an ex parte or inter partes reexamination proceeding.  (1) When it appears in a patent being reexamined that the correct inventor or inventors were not named, the Director may, on petition of all the parties set forth in § 1.324(b)(1) and (b)(2), including the assignees, and satisfactory proof of the facts and payment of the fee set forth in § 1.20(b), or on order of a court before which such matter is called in question, include in the reexamination certificate to be issued under § 1.570 or § 1.997 an amendment naming only the actual inventor or inventors. The petition must be submitted as part of the reexamination proceeding and must satisfy the requirements of § 1.324.
                (2) Notwithstanding paragraph (l)(1) of this section, if a petition to correct inventorship satisfying the requirements of § 1.324 is filed in a reexamination proceeding, and the reexamination proceeding is concluded other than by a reexamination certificate under § 1.570 or § 1.997, a certificate of correction indicating the change of inventorship stated in the petition will be issued upon request by the patentee.
                [46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997; 65 FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000; 72 FR 18905, Apr. 16, 2007; 77 FR 48825, Aug. 14, 2012]

                § 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]

                § 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]

                § 1.550
                Conduct of ex parte reexamination proceedings.
                (a) All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116 and will result in the issuance of an ex parte reexamination certificate under § 1.570.
                (b) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to any Office action. In response to any rejection, such response may include further statements and/or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.

                (c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as provided in this paragraph.

                (1) Any request for such an extension must specify the requested period of extension and be accompanied by the petition fee set forth in § 1.17(g).

                (2) Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of such a request for extension will not effect the extension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence of sufficient cause or for more than a reasonable time.

                (3) Any request for an extension in a patent owner requested or Director ordered ex parte reexamination for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested or Director ordered ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months from the time period set in the Office action will not effect the extension. The time for taking action in a patent owner requested or Director ordered ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.
                (4) The reply or other action must in any event be filed prior to the expiration of the period of extension, but in no situation may a reply or other action be filed later than the maximum time period set by statute.
                (5) See § 90.3(c) of this title for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.

                (d) If the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under § 1.560(b), the prosecution in the ex parte reexamination proceeding will be a terminated prosecution, and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.570 in accordance with the last action of the Office.
                (e) If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under paragraph (d) of this section if the delay in response was unintentional.

                (f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
                (g) The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
                (1) in accordance with § 1.510 or § 1.535; or

                (2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to § 1.525.

                (h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).
                (i) A petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6), except for petitions under paragraph (c) of this section to extend the period for response by a patent owner, petitions under paragraph (e) of this section to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.
                [65 FR 76776, Dec. 7, 2000, as amended at 69 FR 56545, Sept. 21, 2004; 72 FR 18905, Apr. 16, 2007; 77 FR 48851, Aug. 14, 2012; 78 FR 62407, Oct. 21, 2013]

                § 1.552
                Scope of reexamination in ex parte reexamination proceedings.
                (a) Claims in an ex parte reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
                (b) Claims in an ex parte reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.
                (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding. If such issues are raised by the patent owner or third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may consider the advisability of filing a reissue application to have such issues considered and resolved.
                (d) Any statement of the patent owner and any accompanying information submitted pursuant to § 1.501(a)(2) which is of record in the patent being reexamined (which includes any reexamination files for the patent) may be used after a reexamination proceeding has been ordered to determine the proper meaning of a patent claim when applying patents or printed publications.
                [65 FR 76776, Dec. 7, 2000, as amended at 77 FR 46627, Aug. 6, 2012]

                § 1.555
                Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.
                (a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective reexamination occurs when, at the time a reexamination proceeding is being conducted, the Office is aware of and evaluates the teachings of all information material to patentability in a reexamination proceeding. Each individual associated with the patent owner in a reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding. The individuals who have a duty to disclose to the Office all information known to them to be material to patentability in a reexamination proceeding are the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding. The duty to disclose the information exists with respect to each claim pending in the reexamination proceeding until the claim is cancelled. Information material to the patentability of a cancelled claim need not be submitted if the information is not material to patentability of any claim remaining under consideration in the reexamination proceeding. The duty to disclose all information known to be material to patentability in a reexamination proceeding is deemed to be satisfied if all information known to be material to patentability of any claim in the patent after issuance of the reexamination certificate was cited by the Office or submitted to the Office in an information disclosure statement. However, the duties of candor, good faith, and disclosure have not been complied with if any fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct by, or on behalf of, the patent owner in the reexamination proceeding. Any information disclosure statement must be filed with the items listed in § 1.98(a) as applied to individuals associated with the patent owner in a reexamination proceeding, and should be filed within two months of the date of the order for reexamination, or as soon thereafter as possible.

                (b) Under this section, information is material to patentability in a reexamination proceeding when it is not cumulative to information of record or being made of record in the reexamination proceeding, and

                (1) It is a patent or printed publication that establishes, by itself or in combination with other patents or printed publications, a prima facie case of unpatentability of a claim; or
                (2) It refutes, or is inconsistent with, a position the patent owner takes in:
                (i) Opposing an argument of unpatentability relied on by the Office, or
                (ii) Asserting an argument of patentability.
                A prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
                (c) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).
                [57 FR 2036, Jan. 17, 1992, as amended at 65 FR 76776, Dec. 7, 2000]

                § 1.560
                Interviews in ex parte reexamination proceedings.
                (a) Interviews in ex parte reexamination proceedings pending before the Office between examiners and the owners of such patents or their attorneys or agents of record must be conducted in the Office at such times, 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. Interviews for the discussion of the patentability of claims in patents involved in ex parte reexamination proceedings will not be conducted prior to the first official action. Interviews should be arranged in advance. Requests that reexamination requesters participate in interviews with examiners will not be granted.

                (b) In every instance of an interview with an examiner in an ex parte reexamination proceeding, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner. An interview does not remove the necessity for response to Office actions as specified in § 1.111. Patent owner's response to an outstanding Office action after the interview does not remove the necessity for filing the written statement. The written statement must be filed as a separate part of a response to an Office action outstanding at the time of the interview, or as a separate paper within one month from the date of the interview, whichever is later.
                [65 FR 76777, Dec. 7, 2000]

                § 1.565

                Concurrent office proceedings which include an ex parte reexamination proceeding.
                (a) In an ex parte reexamination proceeding before the Office, the patent owner must inform the Office of any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings. See § 1.985 for notification of prior or concurrent proceedings in an inter partes reexamination proceeding.
                (b) If a patent in the process of ex parte reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the reexamination. See § 1.987 for inter partes reexamination proceedings.
                (c) If ex parte reexamination is ordered while a prior ex parte reexamination proceeding is pending and prosecution in the prior ex parte reexamination proceeding has not been terminated, the ex parte reexamination proceedings will usually be merged and result in the issuance and publication of a single certificate under § 1.570. For merger of inter partes reexamination proceedings, see § 1.989(a). For merger of ex parte reexamination and inter partes reexamination proceedings, see § 1.989(b).
                (d) If a reissue application and an ex parte reexamination proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will usually be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an ex parte reexamination proceeding is ordered, the merged examination will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the ex parte reexamination proceeding during the pendency of the merged proceeding. The examiner's actions and responses by the patent owner in a merged proceeding will apply to both the reissue application and the ex parte reexamination proceeding and will be physically entered into both files. Any ex parte reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent. For merger of a reissue application and an inter partes reexamination, see § 1.991.
                (e) If a patent in the process of ex parte reexamination is or becomes involved in an interference, the Director may suspend the reexamination or the interference. The Director will not consider a request to suspend an interference unless a motion (§ 41.121(a)(3) of this title) to suspend the interference has been presented to, and denied by, an administrative patent judge, and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set. For concurrent inter partes reexamination and interference of a patent, see § 1.993.
                [65 FR 76776, Dec. 7, 2000, as amended at 69 FR 50001, Aug. 12, 2004; 72 FR 18905, Apr. 16, 2007]

                Ex Parte Reexamination Certificate

                § 1.570
                Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.
                (a) To conclude an ex parte reexamination proceeding, the Director will issue and publish an ex parte reexamination certificate in accordance with 35 U.S.C. 307 setting forth the results of the ex parte reexamination proceeding and the content of the patent following the ex parte reexamination proceeding.
                (b) An ex parte reexamination certificate will be issued and published in each patent in which an ex parte reexamination proceeding has been ordered under § 1.525 and has not been merged with any inter partes reexamination proceeding pursuant to § 1.989(a). Any statutory disclaimer filed by the patent owner will be made part of the ex parte reexamination certificate.
                (c) The ex parte reexamination certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the ex parte reexamination certificate will also be mailed to the requester of the ex parte reexamination proceeding.
                (d) If an ex parte reexamination certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
                (e) If the ex parte reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(d), the reissued patent will constitute the ex parte reexamination certificate required by this section and 35 U.S.C. 307.
                (f) A notice of the issuance of each ex parte reexamination certificate under this section will be published in the Official Gazette on its date of issuance.
                [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18905, Apr. 16, 2007]

            Subpart E—Supplemental Examination of Patents

              Source:
              77 FR 48851, Aug. 14, 2012, unless otherwise noted.

              § 1.601
              Filing of papers in supplemental examination.
              (a) A request for supplemental examination of a patent must be filed by the owner(s) of the entire right, title, and interest in the patent.
              (b) Any party other than the patent owner (i.e., any third party) is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding.

              (c) A request for supplemental examination of a patent may be filed at any time during the period of enforceability of the patent.

              § 1.605
              Items of information.
              (a) Each request for supplemental examination may include no more than twelve items of information believed to be relevant to the patent. More than one request for supplemental examination of the same patent may be filed at any time during the period of enforceability of the patent.
              (b) An item of information includes a document submitted as part of the request that contains information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct. If the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on any document submitted as part of the request, the discussion within the body of the request relative to the information will be considered as an item of information.
              (c) An item of information must be in writing in accordance with § 1.2. To be considered, any audio or video recording must be submitted in the form of a written transcript.
              (d) If one item of information is combined in the request with one or more additional items of information, each item of information of the combination may be separately counted. Exceptions include the combination of a non-English language document and its translation, and the combination of a document that is over 50 pages in length and its summary pursuant to § 1.610(b)(8).

              § 1.610
              Content of request for supplemental examination.
              (a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2), and any applicable document size fees as set forth in § 1.20(k)(3).
              (b) A request for supplemental examination must include:
              (1) An identification of the number of the patent for which supplemental examination is requested.
              (2) A list of the items of information that are requested to be considered, reconsidered, or corrected. Where appropriate, the list must meet the requirements of § 1.98(b).

              (3) A list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested, including an identification of the type of proceeding, the identifying number of any such proceeding (e.g., a control number or reissue application number), and the filing date of any such proceeding.
              (4) An identification of each claim of the patent for which supplemental examination is requested.
              (5) A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.
              (6) A copy of the patent for which supplemental examination is requested and a copy of any disclaimer or certificate issued for the patent.
              (7) A copy of each item of information listed in paragraph (b)(2) of this section, accompanied by a written English translation of all of the necessary and pertinent parts of any non-English language item of information. The patent owner is not required to submit copies of items of information that form part of the discussion within the body of the request as specified in § 1.605(b), or copies of U.S. patents and U.S. patent application publications.
              (8) A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length. The summary must include citations to the particular pages containing the relevant portions.
              (9) An identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with § 3.73(c) of this chapter establishing the entirety of the ownership in the patent requested to be examined.
              (c) The request may also include:

              (1) A cover sheet itemizing each component submitted as part of the request;
              (2) A table of contents for the request;
              (3) An explanation of how the claims patentably distinguish over the items of information; and
              (4) An explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability.
              (d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605, 1.615, and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605, 1.615, and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.

              § 1.615
              Format of papers filed in a supplemental examination proceeding.
              (a) All papers submitted in a supplemental examination proceeding must be formatted in accordance with § 1.52.
              (b) Court documents and non-patent literature may be redacted, but must otherwise be identical both in content and in format to the original documents, and, if a court document, to the document submitted in court, and must not otherwise be reduced in size or modified, particularly in terms of font type, font size, line spacing, and margins. Patents, patent application publications, and third-party-generated affidavits or declarations must not be reduced in size or otherwise modified in the manner described in this paragraph.

              § 1.620
              Conduct of supplemental examination proceeding.
              (a) Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.
              (b) The Office may hold in abeyance action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate as set forth in § 1.625.
              (c) If an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not be entered into the official file or considered, or if inadvertently entered, it will be expunged.

              (d) The patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent for which the current supplemental examination is requested, file a paper limited to notifying the Office of the post- patent Office proceeding, if such notice has not been previously provided with the request. The notice shall be limited to an identification of the post-patent Office proceeding, including the type of proceeding, the identifying number of any such proceeding (e.g., a control number or reissue application number), and the filing date of any such proceeding, without any discussion of the issues of the current supplemental examination proceeding or of the identified post-patent Office proceeding(s).
              (e) Interviews are prohibited in a supplemental examination proceeding.

              (f) No amendment may be filed in a supplemental examination proceeding.

              (g) If the Office becomes aware, during the course of supplemental examination or of any reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the Office may have been committed in connection with the patent requested to be examined, the supplemental examination proceeding or any reexamination proceeding ordered under 35 U.S.C. 257 will continue, and the matter will be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).

              § 1.625
              Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.
              (a) A supplemental examination proceeding will conclude with the electronic issuance of a supplemental examination certificate. The supplemental examination certificate will indicate the result of the determination whether any of the items of information presented in the request raised a substantial new question of patentability.

              (b) If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published. The electronically issued supplemental examination certificate will remain as part of the public record of the patent.

              (c) If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, and ex parte reexamination is not ordered under 35 U.S.C. 257, the electronically issued supplemental examination certificate will be published in due course. The fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be refunded in accordance with § 1.26(c).
              (d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be conducted in accordance with §§ 1.530 through 1.570, which govern ex parte reexamination, except that:
              (1) The patent owner will not have the right to file a statement pursuant to § 1.530, and the order will not set a time period within which to file such a statement;
              (2) Reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in § 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during the reexamination proceeding, notwithstanding § 1.552(a);
              (3) Issues in addition to those raised by patents and printed publications, and by subject matter added or deleted during a reexamination proceeding, may be considered and resolved, notwithstanding § 1.552(c); and
              (4) Information material to patentability will be defined by § 1.56(b), notwithstanding § 1.555(b).

            Subpart F—Adjustment and Extension of Patent Term

              Authority:
              35 U.S.C. 2(b)(2), 154, and 156.

              Source:
              52 FR 9394, Mar. 24, 1987, unless otherwise noted.

              Adjustment of Patent Term Due to Examination Delay

                § 1.701
                Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000).
                (a) A patent, other than for designs, issued on an application filed on or after June 8, 1995, is entitled to extension of the patent term if the issuance of the patent was delayed due to:
                (1) Interference or derivation proceedings under 35 U.S.C. 135(a); and/or
                (2) The application being placed under a secrecy order under 35 U.S.C. 181; and/or

                (3) Appellate review by the Patent Trial and Appeal Board or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued pursuant to a decision in the review reversing an adverse determination of patentability and if the patent is not subject to a terminal disclaimer due to the issuance of another patent claiming subject matter that is not patentably distinct from that under appellate review. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809, 4983-85 (1994), and a final decision in favor of the applicant under paragraph (c)(3) of this section. A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
                (b) The term of a patent entitled to extension under paragraph (a) of this section shall be extended for the sum of the periods of delay calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the extent that these periods are not overlapping, up to a maximum of five years. The extension will run from the expiration date of the patent.
                (c)(1) The period of delay under paragraph (a)(1) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
                (i) With respect to each interference or derivation proceeding in which the application was involved, the number of days, if any, in the period beginning on the date the interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
                (ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Patent and Trademark Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
                (2) The period of delay under paragraph (a)(2) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
                (i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
                (ii) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order and any renewal thereof was removed;
                (iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding would be instituted but for the secrecy order and ending on the date the secrecy order and any renewal thereof was removed; and
                (iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) and ending on the date of mailing of the notice of allowance under § 1.311.
                (3) The period of delay under paragraph (a)(3) of this section is the sum of the number of days, if any, in the period beginning on the date on which an appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and ending on the date of a final decision in favor of the applicant by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
                (d) The period of delay set forth in paragraph (c)(3) shall be reduced by:
                (1) Any time during the period of appellate review that occurred before three years from the filing date of the first national application for patent presented for examination; and

                (2) Any time during the period of appellate review, as determined by the Director, during which the applicant for patent did not act with due diligence. In determining the due diligence of an applicant, the Director may examine the facts and circumstances of the applicant's actions during the period of appellate review to determine whether the applicant exhibited that degree of timeliness as may reasonably be expected from, and which is ordinarily exercised by, a person during a period of appellate review.
                (e) The provisions of this section apply only to original patents, except for design patents, issued on applications filed on or after June 8, 1995, and before May 29, 2000.
                [60 FR 20228, Apr. 25, 1995, as amended at 65 FR 56391, Sept. 18, 2000; 69 FR 21710, Apr. 22, 2004; 69 FR 50001, Aug. 12, 2004; 77 FR 46627, Aug. 6, 2012]

                § 1.702
                Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000).
                (a) Failure to take certain actions within specified time frames. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to:
                (1) Mail at least one of a notification under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 not later than fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application;
                (2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken under 35 U.S.C. 134 not later than four months after the date on which the reply was filed or the appeal was taken;
                (3) Act on an application not later than four months after the date of a decision by the Patent Trial and Appeal Board under 35 U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 where at least one allowable claim remains in the application; or
                (4) Issue a patent not later than four months after the date on which the issue fee was paid under 35 U.S.C. 151 and all outstanding requirements were satisfied.
                (b) Three-year pendency. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application, but not including:
                (1) Any time consumed by continued examination of the application under 35 U.S.C. 132(b);
                (2) Any time consumed by an interference or derivation proceeding under 35 U.S.C. 135(a);
                (3) Any time consumed by the imposition of a secrecy order under 35 U.S.C. 181;
                (4) Any time consumed by review by the Patent Trial and Appeal Board or a Federal court; or
                (5) Any delay in the processing of the application by the Office that was requested by the applicant.
                (c) Delays caused by interference and derivation proceedings. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to interference or derivation proceedings under 35 U.S.C. 135(a).
                (d) Delays caused by secrecy order. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the application being placed under a secrecy order under 35 U.S.C. 181.
                (e) Delays caused by successful appellate review. Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term of an original patent shall be adjusted if the issuance of the patent was delayed due to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued under a decision in the review reversing an adverse determination of patentability. If an application is remanded by a panel of the Patent Trial and Appeal Board and the remand is the last action by a panel of the Patent Trial and Appeal Board prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the application, the remand shall be considered a decision by the Patent Trial and Appeal Board as that phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review reversing an adverse determination of patentability as that phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of the applicant under § 1.703(e). A remand by a panel of the Patent Trial and Appeal Board shall not be considered a decision in the review reversing an adverse determination of patentability as provided in this paragraph if there is filed a request for continued examination under 35 U.S.C. 132(b) that was not first preceded by the mailing, after such remand, of at least one of an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
                (f) The provisions of this section and §§ 1.703 through 1.705 apply only to original applications, except applications for a design patent, filed on or after May 29, 2000, and patents issued on such applications.
                [65 FR 56391, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 77 FR 46627, Aug. 6, 2012; 78 FR 19420, Apr. 1, 2013]

                § 1.703
                Period of adjustment of patent term due to examination delay.
                (a) The period of adjustment under § 1.702(a) is the sum of the following periods:
                (1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or the date the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
                (2) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply under § 1.111 was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
                (3) The number of days, if any, in the period beginning on the day after the date that is four months after the date a reply in compliance with § 1.113(c) was filed and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
                (4) The number of days, if any, in the period beginning on the day after the date that is four months after the date an appeal brief in compliance with § 41.37 of this title was filed and ending on the date of mailing of any of an examiner's answer under § 41.39 of this title, an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first;
                (5) The number of days, if any, in the period beginning on the day after the date that is four months after the date of a final decision by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where at least one allowable claim remains in the application and ending on the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
                (6) The number of days, if any, in the period beginning on the day after the date that is four months after the date the issue fee was paid and all outstanding requirements were satisfied and ending on the date a patent was issued.
                (b) The period of adjustment under § 1.702(b) is the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application and ending on the date a patent was issued, but not including the sum of the following periods:

                (1) The number of days, if any, in the period beginning on the date on which any request for continued examination of the application under 35 U.S.C. 132(b) was filed and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151;

                (2)(i) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
                (ii) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension;
                (3)(i) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
                (ii) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order was removed;
                (iii) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
                (iv) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151; and,
                (4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date that jurisdiction by the Patent Trial and Appeal Board ends under § 41.35(b) of this chapter or the date of the last decision by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145, whichever is later.
                (c) The period of adjustment under § 1.702(c) is the sum of the following periods, to the extent that the periods are not overlapping:
                (1) The number of days, if any, in the period beginning on the date an interference or derivation proceeding was instituted to involve the application in the interference or derivation proceeding under 35 U.S.C. 135(a) and ending on the date that the interference or derivation proceeding was terminated with respect to the application; and
                (2) The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Office due to interference or derivation proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
                (d) The period of adjustment under § 1.702(d) is the sum of the following periods, to the extent that the periods are not overlapping:
                (1) The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
                (2) The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 41.39 of this title in the application under secrecy order and ending on the date the secrecy order was removed;
                (3) The number of days, if any, in the period beginning on the date applicant was notified that an interference or derivation proceeding under 35 U.S.C. 135(a) would be instituted but for the secrecy order and ending on the date the secrecy order was removed; and
                (4) The number of days, if any, in the period beginning on the date of notification under § 5.3(c) of this chapter and ending on the date of mailing of the notice of allowance under 35 U.S.C. 151.
                (e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Patent Trial and Appeal Board under § 41.35(a) of this chapter and ending on the date of a final decision in favor of the applicant by the Patent Trial and Appeal Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.

                (f) The adjustment will run from the expiration date of the patent as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay attributable to the grounds specified in § 1.702 overlap, the period of adjustment granted under this section shall not exceed the actual number of days the issuance of the patent was delayed. The term of a patent entitled to adjustment under § 1.702 and this section shall be adjusted for the sum of the periods calculated under paragraphs (a) through (e) of this section, to the extent that such periods are not overlapping, less the sum of the periods calculated under § 1.704. The date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in this calculation.
                (g) No patent, the term of which has been disclaimed beyond a specified date, shall be adjusted under § 1.702 and this section beyond the expiration date specified in the disclaimer.
                [65 FR 56392, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 69 FR 50001, Aug. 12, 2004; 77 FR 46628, Aug. 6, 2012; 77 FR 49360, Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013; 80 FR 1356, Jan. 9, 2015]

                § 1.704
                Reduction of period of adjustment of patent term.
                (a) The period of adjustment of the term of a patent under §§ 1.703(a) through (e) shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution (processing or examination) of the application.
                (b) With respect to the grounds for adjustment set forth in §§ 1.702(a) through (e), and in particular the ground of adjustment set forth in § 1.702(b), an applicant shall be deemed to have failed to engage in reasonable efforts to conclude processing or examination of an application for the cumulative total of any periods of time in excess of three months that are taken to reply to any notice or action by the Office making any rejection, objection, argument, or other request, measuring such three-month period from the date the notice or action was mailed or given to the applicant, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is three months after the date of mailing or transmission of the Office communication notifying the applicant of the rejection, objection, argument, or other request and ending on the date the reply was filed. The period, or shortened statutory period, for reply that is set in the Office action or notice has no effect on the three-month period set forth in this paragraph.
                (c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
                (1) Suspension of action under § 1.103 at the applicant's request, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for suspension of action under § 1.103 was filed and ending on the date of the termination of the suspension;
                (2) Deferral of issuance of a patent under § 1.314, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under § 1.314 was filed and ending on the date the patent was issued;
                (3) Abandonment of the application or late payment of the issue fee, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the date after the date the issue fee was due and ending on the earlier of:
                (i) The date of mailing of the decision reviving the application or accepting late payment of the issue fee; or
                (ii) The date that is four months after the date the grantable petition to revive the application or accept late payment of the issue fee was filed;

                (4) Failure to file a petition to withdraw the holding of abandonment or to revive an application within two months from the mailing date of a notice of abandonment, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the mailing date of a notice of abandonment and ending on the date a petition to withdraw the holding of abandonment or to revive the application was filed;

                (5) Conversion of a provisional application under 35 U.S.C. 111(b) to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 U.S.C. 111(b)(5), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date the application was filed under 35 U.S.C. 111(b) and ending on the date a request in compliance with § 1.53(c)(3) to convert the provisional application into a nonprovisional application was filed;
                (6) Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
                (i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the date of mailing of the supplemental Office action or notice of allowance; or
                (ii) Four months;
                (7) Submission of a reply having an omission (§ 1.135(c)), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the reply having an omission was filed and ending on the date that the reply or other paper correcting the omission was filed;
                (8) Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed;
                (9) Submission of an amendment or other paper after a decision by the Patent Trial and Appeal Board, other than a decision designated as containing a new ground of rejection under § 41.50 (b) of this title or statement under § 41.50(c) of this title, or a decision by a Federal court, less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or supplemental notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
                (i) The number of days, if any, beginning on the day after the mailing date of the original Office action or notice of allowance and ending on the mailing date of the supplemental Office action or notice of allowance; or
                (ii) Four months;
                (10) Submission of an amendment under § 1.312 or other paper, other than a request for continued examination in compliance with § 1.114, after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the lesser of:
                (i) The number of days, if any, beginning on the date the amendment under § 1.312 or other paper was filed and ending on the mailing date of the Office action or notice in response to the amendment under § 1.312 or such other paper; or
                (ii) Four months;
                (11) Failure to file an appeal brief in compliance with § 41.37 of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and ending on the date an appeal brief in compliance with § 41.37 of this chapter or a request for continued examination in compliance with § 1.114 was filed;

                (12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed;
                (13) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section; and
                (14) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
                (d)(1) A paper containing only an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this section, and a request for continued examination in compliance with § 1.114 with no submission other than an information disclosure statement in compliance with §§ 1.97 and 1.98 will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(12) of this section, if the paper or request for continued examination is accompanied by a statement that each item of information contained in the information disclosure statement:
                (i) Was first cited in any communication from a patent office in a counterpart foreign or international application or from the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement; or
                (ii) Is a communication that was issued by a patent office in a counterpart foreign or international application or by the Office, and this communication was not received by any individual designated in § 1.56(c) more than thirty days prior to the filing of the information disclosure statement.
                (2) The thirty-day period set forth in paragraph (d)(1) of this section is not extendable.
                (e) The submission of a request under § 1.705(c) for reinstatement of reduced patent term adjustment will not be considered a failure to engage in reasonable efforts to conclude prosecution (processing or examination) of the application under paragraph (c)(10) of this section.

                (f) An application filed under 35 U.S.C. 111(a) is in condition for examination when the application includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, any English translation required by § 1.52(d) or § 1.57(a), a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor's oath or declaration or an application data sheet containing the information specified in § 1.63(b), the basic filing fee (§ 1.16(a) or § 1.16(c)), the search fee (§ 1.16(k) or § 1.16(m)), the examination fee (§ 1.16(o) or § 1.16(q)), any certified copy of the previously filed application required by § 1.57(a), and any application size fee required by the Office under § 1.16(s). An international application is in condition for examination when the application has entered the national stage as defined in § 1.491(b), and includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor's oath or declaration or an application data sheet containing the information specified in § 1.63(b), the search fee (§ 1.492(b)), the examination fee (§ 1.492(c)), and any application size fee required by the Office under § 1.492(j). An application shall be considered as having papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, and a sequence listing in compliance with § 1.821 through § 1.825 (if applicable) for purposes of this paragraph on the filing date of the latest reply (if any) correcting the papers, drawings, or sequence listing that is prior to the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
                [65 FR 56393, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 69 FR 50002, Aug. 12, 2004; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 76 FR 74702, Dec. 1, 2011; 77 FR 46628, Aug. 6, 2012; 77 FR 49360, Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013; 78 FR 62408, Oct. 21, 2013; 80 FR 1356, Jan. 9, 2015]
                § 1.704, Nt.

                  Effective Date Note:
                  At 85 FR 36341, June 16, 2020, § 1.704 was amended by revising paragraph (c), effective July 16, 2020. For the convenience of the user, the revised text is set forth as follows:

                      § 1.704
                      Reduction of Period of Adjustment of Patent Term.

                      (c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
                      (1) Suspension of action under § 1.103 at the applicant's request, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for suspension of action under § 1.103 was filed and ending on the date of the termination of the suspension;
                      (2) Deferral of issuance of a patent under § 1.314, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date a request for deferral of issuance of a patent under § 1.314 was filed and ending on the earlier of the date a request to terminate the deferral was filed or the date the patent was issued;
                      (3) Abandonment of the application or late payment of the issue fee, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date of abandonment or the day after the date the issue fee was due and ending on the date the grantable petition to revive the application or accept late payment of the issue fee was filed;
                      (4) Failure to file a petition to withdraw the holding of abandonment or to revive an application within two months from the date of mailing of a notice of abandonment, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the date of mailing of a notice of abandonment and ending on the date a petition to withdraw the holding of abandonment or to revive the application was filed;
                      (5) Conversion of a provisional application under 35 U.S.C. 111(b) to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 U.S.C. 111(b)(5), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the date the application was filed under 35 U.S.C. 111(b) and ending on the date a request in compliance with § 1.53(c)(3) to convert the provisional application into a nonprovisional application was filed;
                      (6) Submission of a preliminary amendment or other preliminary paper less than one month before the mailing of an Office action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the preliminary amendment or other preliminary paper was filed;
                      (7) Submission of a reply having an omission (§ 1.135(c)), in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the reply having an omission was filed and ending on the date that the reply or other paper correcting the omission was filed;
                      (8) Submission of a supplemental reply or other paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply has been filed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date the initial reply was filed and ending on the date that the supplemental reply or other such paper was filed;

                      (9) Submission of an amendment or other paper after a decision by the Patent Trial and Appeal Board, other than a decision designated as containing a new ground of rejection under § 41.50(b) of this title or statement under § 41.50(c) of this title, or a decision by a Federal court, less than one month before the mailing of an Office action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151 that requires the mailing of a supplemental Office action or supplemental notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of the decision by the Patent Trial and Appeal Board or by a Federal court and ending on date the amendment or other paper was filed;
                      (10) Submission of an amendment under § 1.312 or other paper, other than an amendment under § 1.312 or other paper expressly requested by the Office or a request for continued examination in compliance with § 1.114, after a notice of allowance has been given or mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the amendment under § 1.312 or other paper was filed;
                      (11) Failure to file an appeal brief in compliance with § 41.37 of this chapter within three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date three months from the date on which a notice of appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 134 and § 41.31 of this chapter, and ending on the date an appeal brief in compliance with § 41.37 of this chapter or a request for continued examination in compliance with § 1.114 was filed;
                      (12) Submission of a request for continued examination under 35 U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the request for continued examination under 35 U.S.C. 132(b) was filed;
                      (13) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section; and
                      (14) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.

                § 1.705
                Patent term adjustment determination.
                (a) The patent will include notification of any patent term adjustment under 35 U.S.C. 154(b).
                (b) Any request for reconsideration of the patent term adjustment indicated on the patent must be by way of an application for patent term adjustment filed no later than two months from the date the patent was granted. This two-month time period may be extended under the provisions of § 1.136(a). An application for patent term adjustment under this section must be accompanied by:
                (1) The fee set forth in § 1.18(e); and
                (2) A statement of the facts involved, specifying:
                (i) The correct patent term adjustment and the basis or bases under § 1.702 for the adjustment;
                (ii) The relevant dates as specified in §§ 1.703(a) through (e) for which an adjustment is sought and the adjustment as specified in § 1.703(f) to which the patent is entitled;
                (iii) Whether the patent is subject to a terminal disclaimer and any expiration date specified in the terminal disclaimer; and
                (iv)(A) Any circumstances during the prosecution of the application resulting in the patent that constitute a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704; or
                (B) That there were no circumstances constituting a failure to engage in reasonable efforts to conclude processing or examination of such application as set forth in § 1.704.

                (c) Any request for reinstatement of all or part of the period of adjustment reduced pursuant to § 1.704(b) for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request must be filed prior to the issuance of the patent. This time period is not extendable. Any request for reinstatement of all or part of the period of adjustment reduced pursuant to § 1.704(b) under this paragraph must also be accompanied by:
                (1) The fee set forth in § 1.18(f); and
                (2) A showing to the satisfaction of the Director that, in spite of all due care, the applicant was unable to reply to the rejection, objection, argument, or other request within three months of the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request. The Office shall not grant any request for reinstatement for more than three additional months for each reply beyond three months from the date of mailing of the Office communication notifying the applicant of the rejection, objection, argument, or other request.
                (d) No submission or petition on behalf of a third party concerning patent term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any such submission or petition will be returned to the third party, or otherwise disposed of, at the convenience of the Office.
                [65 FR 56394, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 78 FR 19420, Apr. 1, 2013]

              Extension of Patent Term Due to Regulatory Review

                § 1.710
                Patents subject to extension of the patent term.
                (a) A patent is eligible for extension of the patent term if the patent claims a product as defined in paragraph (b) of this section, either alone or in combination with other ingredients that read on a composition that received permission for commercial marketing or use, or a method of using such a product, or a method of manufacturing such a product, and meets all other conditions and requirements of this subpart.
                (b) The term product referred to in paragraph (a) of this section means—
                (1) The active ingredient of a new human drug, antibiotic drug, or human biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act) including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
                (2) The active ingredient of a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes including site specific genetic manipulation techniques, including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient; or
                (3) Any medical device, food additive, or color additive subject to regulation under the Federal Food, Drug, and Cosmetic Act.
                [54 FR 30379, July 20, 1989]

                § 1.720
                Conditions for extension of patent term.
                The term of a patent may be extended if:
                (a) The patent claims a product or a method of using or manufacturing a product as defined in § 1.710;
                (b) The term of the patent has never been previously extended, except for extensions issued pursuant to §§ 1.701, 1.760, or § 1.790;
                (c) An application for extension is submitted in compliance with § 1.740;
                (d) The product has been subject to a regulatory review period as defined in 35 U.S.C. 156(g) before its commercial marketing or use;
                (e) The product has received permission for commercial marketing or use and—
                (1) The permission for the commercial marketing or use of the product is the first received permission for commercial marketing or use under the provision of law under which the applicable regulatory review occurred, or

                (2) In the case of a patent other than one directed to subject matter within § 1.710(b)(2) claiming a method of manufacturing the product that primarily uses recombinant DNA technology in the manufacture of the product, the permission for the commercial marketing or use is the first received permission for the commercial marketing or use of a product manufactured under the process claimed in the patent, or
                (3) In the case of a patent claiming a new animal drug or a veterinary biological product that is not covered by the claims in any other patent that has been extended, and has received permission for the commercial marketing or use in non-food-producing animals and in food-producing animals, and was not extended on the basis of the regulatory review period for use in non-food-producing animals, the permission for the commercial marketing or use of the drug or product after the regulatory review period for use in food-producing animals is the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal.
                (f) The application is submitted within the sixty-day period beginning on the date the product first received permission for commercial marketing or use under the provisions of law under which the applicable regulatory review period occurred; or in the case of a patent claiming a method of manufacturing the product which primarily uses recombinant DNA technology in the manufacture of the product, the application for extension is submitted within the sixty-day period beginning on the date of the first permitted commercial marketing or use of a product manufactured under the process claimed in the patent; or in the case of a patent that claims a new animal drug or a veterinary biological product that is not covered by the claims in any other patent that has been extended, and said drug or product has received permission for the commercial marketing or use in non-food-producing animals, the application for extension is submitted within the sixty-day period beginning on the date of the first permitted commercial marketing or use of the drug or product for administration to a food-producing animal;
                (g) The term of the patent, including any interim extension issued pursuant to § 1.790, has not expired before the submission of an application in compliance with § 1.741; and
                (h) No other patent term has been extended for the same regulatory review period for the product.
                [52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 65 FR 54679, Sept. 8, 2000]

                § 1.730
                Applicant for extension of patent term; signature requirements.
                (a) Any application for extension of a patent term must be submitted by the owner of record of the patent or its agent and must comply with the requirements of § 1.740.
                (b) If the application is submitted by the patent owner, the application must be signed either by:
                (1) The patent owner in compliance with § 3.73(c) of this chapter; or
                (2) A registered practitioner on behalf of the patent owner.
                (c) If the application is submitted on behalf of the patent owner by an agent of the patent owner (e.g., a licensee of the patent owner), the application must be signed by a registered practitioner on behalf of the agent. The Office may require proof that the agent is authorized to act on behalf of the patent owner.
                (d) If the application is signed by a registered practitioner, the Office may require proof that the practitioner is authorized to act on behalf of the patent owner or agent of the patent owner.
                [65 FR 54679, Sept. 8, 2000, as amended at 77 FR 48825, Aug. 14, 2012]

                § 1.740
                Formal requirements for application for extension of patent term; correction of informalities.
                (a) An application for extension of patent term must be made in writing to the Director. A formal application for the extension of patent term must include:
                (1) A complete identification of the approved product as by appropriate chemical and generic name, physical structure or characteristics;
                (2) A complete identification of the Federal statute including the applicable provision of law under which the regulatory review occurred;

                (3) An identification of the date on which the product received permission for commercial marketing or use under the provision of law under which the applicable regulatory review period occurred;
                (4) In the case of a drug product, an identification of each active ingredient in the product and as to each active ingredient, a statement that it has not been previously approved for commercial marketing or use under the Federal Food, Drug, and Cosmetic Act, the Public Health Service Act, or the Virus-Serum-Toxin Act, or a statement of when the active ingredient was approved for commercial marketing or use (either alone or in combination with other active ingredients), the use for which it was approved, and the provision of law under which it was approved.
                (5) A statement that the application is being submitted within the sixty day period permitted for submission pursuant to § 1.720(f) and an identification of the date of the last day on which the application could be submitted;
                (6) A complete identification of the patent for which an extension is being sought by the name of the inventor, the patent number, the date of issue, and the date of expiration;
                (7) A copy of the patent for which an extension is being sought, including the entire specification (including claims) and drawings;
                (8) A copy of any disclaimer, certificate of correction, receipt of maintenance fee payment, or reexamination certificate issued in the patent;
                (9) A statement that the patent claims the approved product, or a method of using or manufacturing the approved product, and a showing which lists each applicable patent claim and demonstrates the manner in which at least one such patent claim reads on:
                (i) The approved product, if the listed claims include any claim to the approved product;
                (ii) The method of using the approved product, if the listed claims include any claim to the method of using the approved product; and
                (iii) The method of manufacturing the approved product, if the listed claims include any claim to the method of manufacturing the approved product;
                (10) A statement beginning on a new page of the relevant dates and information pursuant to 35 U.S.C. 156(g) in order to enable the Secretary of Health and Human Services or the Secretary of Agriculture, as appropriate, to determine the applicable regulatory review period as follows:
                (i) For a patent claiming a human drug, antibiotic, or human biological product:
                (A) The effective date of the investigational new drug (IND) application and the IND number;
                (B) The date on which a new drug application (NDA) or a Product License Application (PLA) was initially submitted and the NDA or PLA number; and
                (C) The date on which the NDA was approved or the Product License issued;
                (ii) For a patent claiming a new animal drug:
                (A) The date a major health or environmental effects test on the drug was initiated, and any available substantiation of that date, or the date of an exemption under subsection (j) of Section 512 of the Federal Food, Drug, and Cosmetic Act became effective for such animal drug;
                (B) The date on which a new animal drug application (NADA) was initially submitted and the NADA number; and
                (C) The date on which the NADA was approved;
                (iii) For a patent claiming a veterinary biological product:
                (A) The date the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act became effective;
                (B) The date an application for a license was submitted under the Virus-Serum-Toxin Act; and
                (C) The date the license issued;
                (iv) For a patent claiming a food or color additive:
                (A) The date a major health or environmental effects test on the additive was initiated and any available substantiation of that date;
                (B) The date on which a petition for product approval under the Federal Food, Drug and Cosmetic Act was initially submitted and the petition number; and
                (C) The date on which the FDA published a Federal Register notice listing the additive for use;

                (v) For a patent claiming a medical device:
                (A) The effective date of the investigational device exemption (IDE) and the IDE number, if applicable, or the date on which the applicant began the first clinical investigation involving the device, if no IDE was submitted, and any available substantiation of that date;
                (B) The date on which the application for product approval or notice of completion of a product development protocol under Section 515 of the Federal Food, Drug and Cosmetic Act was initially submitted and the number of the application; and
                (C) The date on which the application was approved or the protocol declared to be completed;
                (11) A brief description beginning on a new page of the significant activities undertaken by the marketing applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities;
                (12) A statement beginning on a new page that in the opinion of the applicant the patent is eligible for the extension and a statement as to the length of extension claimed, including how the length of extension was determined;

                (13) A statement that applicant acknowledges a duty to disclose to the Director of the United States Patent and Trademark Office and the Secretary of Health and Human Services or the Secretary of Agriculture any information which is material to the determination of entitlement to the extension sought (see § 1.765);
                (14) The prescribed fee for receiving and acting upon the application for extension (see § 1.20(j)); and
                (15) The name, address, and telephone number of the person to whom inquiries and correspondence relating to the application for patent term extension are to be directed.
                (b) The application under this section must be accompanied by two additional copies of such application (for a total of three copies).
                (c) If an application for extension of patent term is informal under this section, the Office will so notify the applicant. The applicant has two months from the mail date of the notice, or such time as is set in the notice, within which to correct the informality. Unless the notice indicates otherwise, this time period may be extended under the provisions of § 1.136.
                [54 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 56 FR 65155, Dec. 13, 1991; 65 FR 54679, Sept. 8, 2000; 68 FR 14337, Mar. 25, 2003]

                § 1.741
                Complete application given a filing date; petition procedure.
                (a) The filing date of an application for extension of a patent term is the date on which a complete application is received in the Office or filed pursuant to the procedures set forth in § 1.8 or § 1.10. A complete application must include:
                (1) An identification of the approved product;
                (2) An identification of each Federal statute under which regulatory review occurred;
                (3) An identification of the patent for which an extension is being sought;
                (4) An identification of each claim of the patent which claims the approved product or a method of using or manufacturing the approved product;
                (5) Sufficient information to enable the Director to determine under subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a patent for extension, and the rights that will be derived from the extension, and information to enable the Director and the Secretary of Health and Human Services or the Secretary of Agriculture to determine the length of the regulatory review period; and
                (6) A brief description of the activities undertaken by the marketing applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities.

                (b) If an application for extension of patent term is incomplete under this section, the Office will so notify the applicant. If applicant requests review of a notice that an application is incomplete, or review of the filing date accorded an application under this section, applicant must file a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f) within two months of the mail date of the notice that the application is incomplete, or the notice according the filing date complained of. Unless the notice indicates otherwise, this time period may be extended under the provisions of § 1.136.
                [52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61 FR 64028, Dec. 3, 1996; 65 FR 54680, Sept. 8, 2000; 69 FR 56546, Sept. 21, 2004]

                § 1.750
                Determination of eligibility for extension of patent term.
                A determination as to whether a patent is eligible for extension may be made by the Director solely on the basis of the representations contained in the application for extension filed in compliance with § 1.740 or § 1.790. This determination may be delegated to appropriate Patent and Trademark Office officials and may be made at any time before the certificate of extension is issued. The Director or other appropriate officials may require from applicant further information or make such independent inquiries as desired before a final determination is made on whether a patent is eligible for extension. In an application for extension filed in compliance with § 1.740, a notice will be mailed to applicant containing the determination as to the eligibility of the patent for extension and the period of time of the extension, if any. This notice shall constitute the final determination as to the eligibility and any period of extension of the patent. A single request for reconsideration of a final determination may be made if filed by the applicant within such time as may be set in the notice of final determination or, if no time is set, within one month from the date of the final determination. The time periods set forth herein are subject to the provisions of § 1.136.
                [60 FR 25618, May 12, 1995]

                § 1.760
                Interim extension of patent term under 35 U.S.C. 156(e)(2).

                An applicant who has filed a formal application for extension in compliance with § 1.740 may request one or more interim extensions for periods of up to one year each pending a final determination on the application pursuant to § 1.750. Any such request should be filed at least three months prior to the expiration date of the patent. The Director may issue interim extensions, without a request by the applicant, for periods of up to one year each until a final determination is made. The patent owner or agent will be notified when an interim extension is granted and notice of the extension will be published in the Official Gazette of the United States Patent and Trademark Office. The notice will be recorded in the official file of the patent and will be considered as part of the original patent. In no event will the interim extensions granted under this section be longer than the maximum period for extension to which the applicant would be eligible.
                [65 FR 54680, Sept. 8, 2000]

                § 1.765
                Duty of disclosure in patent term extension proceedings.
                (a) A duty of candor and good faith toward the Patent and Trademark Office and the Secretary of Health and Human Services or the Secretary of Agriculture rests on the patent owner or its agent, on each attorney or agent who represents the patent owner and on every other individual who is substantively involved on behalf of the patent owner in a patent term extension proceeding. All such individuals who are aware, or become aware, of material information adverse to a determination of entitlement to the extension sought, which has not been previously made of record in the patent term extension proceeding must bring such information to the attention of the Office or the Secretary, as appropriate, in accordance with paragraph (b) of this section, as soon as it is practical to do so after the individual becomes aware of the information. Information is material where there is a substantial likelihood that the Office or the Secretary would consider it important in determinations to be made in the patent term extension proceeding.

                (b) Disclosures pursuant to this section must be accompanied by a copy of each written document which is being disclosed. The disclosure must be made to the Office or the Secretary, as appropriate, unless the disclosure is material to determinations to be made by both the Office and the Secretary, in which case duplicate copies, certified as such, must be filed in the Office and with the Secretary. Disclosures pursuant to this section may be made to the Office or the Secretary, as appropriate, through an attorney or agent having responsibility on behalf of the patent owner or its agent for the patent term extension proceeding or through a patent owner acting on his or her own behalf. Disclosure to such an attorney, agent or patent owner shall satisfy the duty of any other individual. Such an attorney, agent or patent owner has no duty to transmit information which is not material to the determination of entitlement to the extension sought.
                (c) No patent will be determined eligible for extension and no extension will be issued if it is determined that fraud on the Office or the Secretary was practiced or attempted or the duty of disclosure was violated through bad faith or gross negligence in connection with the patent term extension proceeding. If it is established by clear and convincing evidence that any fraud was practiced or attempted on the Office or the Secretary in connection with the patent term extension proceeding or that there was any violation of the duty of disclosure through bad faith or gross negligence in connection with the patent term extension proceeding, a final determination will be made pursuant to § 1.750 that the patent is not eligible for extension.
                (d) The duty of disclosure pursuant to this section rests on the individuals identified in paragraph (a) of this section and no submission on behalf of third parties, in the form of protests or otherwise, will be considered by the Office. Any such submissions by third parties to the Office will be returned to the party making the submission, or otherwise disposed of, without consideration by the Office.
                [24 FR 10332, Dec. 22, 1959, as amended at 54 FR 30381, July 20, 1989; 60 FR 25618, May 12, 1995]

                § 1.770
                Express withdrawal of application for extension of patent term.
                An application for extension of patent term may be expressly withdrawn before a determination is made pursuant to § 1.750 by filing in the Office, in duplicate, a written declaration of withdrawal signed by the owner of record of the patent or its agent. An application may not be expressly withdrawn after the date permitted for reply to the final determination on the application. An express withdrawal pursuant to this section is effective when acknowledged in writing by the Office. The filing of an express withdrawal pursuant to this section and its acceptance by the Office does not entitle applicant to a refund of the filing fee (§ 1.20(j)) or any portion thereof.
                [62 FR 53201, Oct. 10, 1997]

                § 1.775
                Calculation of patent term extension for a human drug, antibiotic drug or human biological product.
                (a) If a determination is made pursuant to § 1.750 that a patent for a human drug, antibiotic drug or human biological product is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or any earlier date set by terminal disclaimer (§ 1.321).
                (b) The term of the patent for a human drug, antibiotic drug or human biological product will be extended by the length of the regulatory review period for the product as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
                (c) The length of the regulatory review period for a human drug, antibiotic drug or human biological product will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it is the sum of—

                (1) The number of days in the period beginning on the date an exemption under subsection (i) of section 505 or subsection (d) of section 507 of the Federal Food, Drug, and Cosmetic Act became effective for the approved product and ending on the date the application was initially submitted for such product under those sections or under section 351 of the Public Health Service Act; and

                (2) The number of days in the period beginning on the date the application was initially submitted for the approved product under section 351 of the Public Health Service Act, subsection (b) of section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act and ending on the date such application was approved under such section.
                (d) The term of the patent as extended for a human drug, antibiotic drug or human biological product will be determined by—
                (1) Subtracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period:
                (i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section which were on and before the date on which the patent issued;
                (ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
                (iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for purposes of subtraction;
                (2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
                (3) By adding 14 years to the date of approval of the application under section 351 of the Public Health Service Act, or subsection (b) of section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act;
                (4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
                (5) If the original patent was issued after September 24, 1984,
                (i) By adding 5 years to the original expiration date of the patent or any earlier date set by terminal disclaimer; and
                (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
                (6) If the original patent was issued before September 24, 1984, and
                (i) If no request was submitted for an exemption under subsection (i) of section 505 or subsection (d) of section 507 of the Federal Food, Drug, and Cosmetic Act before September 24, 1984, by—
                (A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
                (B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
                (ii) If a request was submitted for an exemption under subsection (i) of section 505 or subsection (d) of section 507 of the Federal Food, Drug, or Cosmetic Act before September 24, 1984 and the commercial marketing or use of the product was not approved before September 24, 1984, by—
                (A) Adding 2 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
                (B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.
                [52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30381, July 20, 1989]

                § 1.776
                Calculation of patent term extension for a food additive or color additive.
                (a) If a determination is made pursuant to § 1.750 that a patent for a food additive or color additive is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or earlier date set by terminal disclaimer (§ 1.321).
                (b) The term of the patent for a food additive or color additive will be extended by the length of the regulatory review period for the product as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.

                (c) The length of the regulatory review period for a food additive or color additive will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of—
                (1) The number of days in the period beginning on the date a major health or environmental effects test on the additive was initiated and ending on the date a petition was initially submitted with respect to the approved product under the Federal Food, Drug, and Cosmetic Act requesting the issuance of a regulation for use of the product; and
                (2) The number of days in the period beginning on the date a petition was initially submitted with respect to the approved product under the Federal Food, Drug, and Cosmetic Act requesting the issuance of a regulation for use of the product, and ending on the date such regulation became effective or, if objections were filed to such regulation, ending on the date such objections were resolved and commercial marketing was permitted or, if commercial marketing was permitted and later revoked pending further proceedings as a result of such objections, ending on the date such proceedings were finally resolved and commercial marketing was permitted.
                (d) The term of the patent as extended for a food additive or color additive will be determined by
                (1) Subtracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period:
                (i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section which were on and before the date on which the patent issued;
                (ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
                (iii) The number of days equal to one-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for purposes of subtraction;
                (2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
                (3) By adding 14 years to the date a regulation for use of the product became effective or, if objections were filed to such regulation, to the date such objections were resolved and commercial marketing was permitted or, if commercial marketing was permitted and later revoked pending further proceedings as a result of such objections, to the date such proceedings were finally resolved and commercial marketing was permitted;
                (4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
                (5) If the original patent was issued after September 24, 1984,
                (i) By adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
                (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
                (6) If the original patent was issued before September 24, 1984, and
                (i) If no major health or environmental effects test was initiated and no petition for a regulation or application for registration was submitted before September 24, 1984, by—
                (A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
                (B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
                (ii) If a major health or environmental effects test was initiated or a petition for a regulation or application for registration was submitted by September 24, 1984, and the commercial marketing or use of the product was not approved before September 24, 1984, by—
                (A) Adding 2 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and

                (B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.

                § 1.777
                Calculation of patent term extension for a medical device.
                (a) If a determination is made pursuant to § 1.750 that a patent for a medical device is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or earlier date as set by terminal disclaimer (§ 1.321).
                (b) The term of the patent for a medical device will be extended by the length of the regulatory review period for the product as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
                (c) The length of the regulatory review period for a medical device will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(3)(B), it is the sum of
                (1) The number of days in the period beginning on the date a clinical investigation on humans involving the device was begun and ending on the date an application was initially submitted with respect to the device under section 515 of the Federal Food, Drug, and Cosmetic Act; and
                (2) The number of days in the period beginning on the date the application was initially submitted with respect to the device under section 515 of the Federal Food, Drug, and Cosmetic Act, and ending on the date such application was approved under such Act or the period beginning on the date a notice of completion of a product development protocol was initially submitted under section 515(f)(5) of the Act and ending on the date the protocol was declared completed under section 515(f)(6) of the Act.
                (d) The term of the patent as extended for a medical device will be determined by—
                (1) Substracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period pursuant to paragraph (c) of this section:
                (i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section which were on and before the date on which the patent issued;
                (ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
                (iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for purposes of subtraction;
                (2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
                (3) By adding 14 years to the date of approval of the application under section 515 of the Federal Food, Drug, and Cosmetic Act or the date a product development protocol was declared completed under section 515(f)(6) of the Act;
                (4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
                (5) If the original patent was issued after September 24, 1984,
                (i) By adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
                (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
                (6) If the original patent was issued before September 24, 1984, and
                (i) If no clinical investigation on humans involving the device was begun or no product development protocol was submitted under section 515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 24, 1984, by—
                (A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer and

                (B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or

                (ii) If a clinical investigation on humans involving the device was begun or a product development protocol was submitted under section 515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 24, 1984 and the commercial marketing or use of the product was not approved before September 24, 1984, by
                (A) Adding 2 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
                (B) By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.

                § 1.778
                Calculation of patent term extension for an animal drug product.
                (a) If a determination is made pursuant to § 1.750 that a patent for an animal drug is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or any earlier date set by terminal disclaimer (§ 1.321).
                (b) The term of the patent for an animal drug will be extended by the length of the regulatory review period for the drug as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
                (c) The length of the regulatory review period for an animal drug will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(4)(B), it is the sum of—
                (1) The number of days in the period beginning on the earlier of the date a major health or environmental effects test on the drug was initiated or the date an exemption under subsection (j) of section 512 of the Federal Food, Drug, and Cosmetic Act became effective for the approved animal drug and ending on the date an application was initially submitted for such animal drug under section 512 of the Federal Food, Drug, and Cosmetic Act; and
                (2) The number of days in the period beginning on the date the application was initially submitted for the approved animal drug under subsection (b) of section 512 of the Federal Food, Drug, and Cosmetic Act and ending on the date such application was approved under such section.
                (d) The term of the patent as extended for an animal drug will be determined by—
                (1) Subtracting from the number of days determined by the Secretary of Health and Human Services to be in the regulatory review period:
                (i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section that were on and before the date on which the patent issued;
                (ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Health and Human Services that applicant did not act with due diligence;
                (iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for purposes of subtraction;
                (2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
                (3) By adding 14 years to the date of approval of the application under section 512 of the Federal Food, Drug, and Cosmetic Act;
                (4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
                (5) If the original patent was issued after November 16, 1988, by—
                (i) Adding 5 years to the original expiration date of the patent or any earlier date set by terminal disclaimer; and
                (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
                (6) If the original patent was issued before November 16, 1988, and

                (i) If no major health or environmental effects test on the drug was initiated and no request was submitted for an exemption under subsection (j) of section 512 of the Federal Food, Drug, and Cosmetic Act before November 16, 1988, by—
                (A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
                (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
                (ii) If a major health or environmental effects test was initiated or a request for an exemption under subsection (j) of section 512 of the Federal Food, Drug, and Cosmetic Act was submitted before November 16, 1988, and the application for commercial marketing or use of the animal drug was not approved before November 16, 1988, by—
                (A) Adding 3 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
                (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.
                [54 FR 30381, July 20, 1989]

                § 1.779
                Calculation of patent term extension for a veterinary biological product.
                (a) If a determination is made pursuant to § 1.750 that a patent for a veterinary biological product is eligible for extension, the term shall be extended by the time as calculated in days in the manner indicated by this section. The patent term extension will run from the original expiration date of the patent or any earlier date set by terminal disclaimer (§ 1.321).
                (b) The term of the patent for a veterinary biological product will be extended by the length of the regulatory review period for the product as determined by the Secretary of Agriculture, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
                (c) The length of the regulatory review period for a veterinary biological product will be determined by the Secretary of Agriculture. Under 35 U.S.C. 156(g)(5)(B), it is the sum of—
                (1) The number of days in the period beginning on the date the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act became effective and ending on the date an application for a license was submitted under the Virus-Serum-Toxin Act; and
                (2) The number of days in the period beginning on the date an application for a license was initially submitted for approval under the Virus-Serum-Toxin Act and ending on the date such license was issued.
                (d) The term of the patent as extended for a veterinary biological product will be determined by—
                (1) Subtracting from the number of days determined by the Secretary of Agriculture to be in the regulatory review period:
                (i) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section that were on and before the date on which the patent issued;
                (ii) The number of days in the periods of paragraphs (c)(1) and (c)(2) of this section during which it is determined under 35 U.S.C. 156(d)(2)(B) by the Secretary of Agriculture that applicant did not act with due diligence;
                (iii) One-half the number of days remaining in the period defined by paragraph (c)(1) of this section after that period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for purposes of subtraction;
                (2) By adding the number of days determined in paragraph (d)(1) of this section to the original term of the patent as shortened by any terminal disclaimer;
                (3) By adding 14 years to the date of the issuance of a license under the Virus-Serum-Toxin Act;
                (4) By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
                (5) If the original patent was issued after November 16, 1988, by—
                (i) Adding 5 years to the original expiration date of the patent or any earlier date set by terminal disclaimer; and
                (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;

                (6) If the original patent was issued before November 16, 1988, and

                (i) If no request for the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act was submitted before November 16, 1988, by—
                (A) Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
                (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
                (ii) If a request for the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act was submitted before November 16, 1988, and the commercial marketing or use of the product was not approved before November 16, 1988, by—
                (A) Adding 3 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
                (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.
                [52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30382, July 20, 1989]

                § 1.780
                Certificate or order of extension of patent term.

                If a determination is made pursuant to § 1.750 that a patent is eligible for extension and that the term of the patent is to be extended, a certificate of extension, under seal, or an order granting interim extension under 35 U.S.C. 156(d)(5), will be issued to the applicant for the extension of the patent term. Such certificate or order will be recorded in the official file of the patent and will be considered as part of the original patent. Notification of the issuance of the certificate or order of extension will be published in the Official Gazette of the United States Patent and Trademark Office. Notification of the issuance of the order granting an interim extension under 35 U.S.C. 156(d)(5), including the identity of the product currently under regulatory review, will be published in the Official Gazette of the United States Patent and Trademark Office and in the Federal Register. No certificate of, or order granting, an extension will be issued if the term of the patent cannot be extended, even though the patent is otherwise determined to be eligible for extension. In such situations, the final determination made pursuant to § 1.750 will indicate that no certificate or order will issue.
                [65 FR 54680, Sept. 8, 2000]

                § 1.785
                Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.
                (a) Only one patent may be extended for a regulatory review period for any product (§ 1.720(h)). If more than one application for extension of the same patent is filed, the certificate of extension of patent term, if appropriate, will be issued based upon the first filed application for extension.
                (b) If more than one application for extension is filed by a single applicant which seeks the extension of the term of two or more patents based upon the same regulatory review period, and the patents are otherwise eligible for extension pursuant to the requirements of this subpart, in the absence of an election by the applicant, the certificate of extension of patent term, if appropriate, will be issued upon the application for extension of the patent term having the earliest date of issuance of those patents for which extension is sought.
                (c) If an application for extension is filed which seeks the extension of the term of a patent based upon the same regulatory review period as that relied upon in one or more applications for extension pursuant to the requirements of this subpart, the certificate of extension of patent term will be issued on the application only if the patent owner or its agent is the holder of the regulatory approval granted with respect to the regulatory review period.

                (d) An application for extension shall be considered complete and formal regardless of whether it contains the identification of the holder of the regulatory approval granted with respect to the regulatory review period. When an application contains such information, or is amended to contain such information, it will be considered in determining whether an application is eligible for an extension under this section. A request may be made of any applicant to supply such information within a non-extendable period of not less than one month whenever multiple applications for extension of more than one patent are received and rely upon the same regulatory review period. Failure to provide such information within the period for reply set shall be regarded as conclusively establishing that the applicant is not the holder of the regulatory approval.
                (e) Determinations made under this section shall be included in the notice of final determination of eligibility for extension of the patent term pursuant to § 1.750 and shall be regarded as part of that determination.
                [60 FR 25618, May 12, 1995, as amended at 62 FR 53201, Oct. 10, 1997]

                § 1.790
                Interim extension of patent term under 35 U.S.C. 156(d)(5).
                (a) An owner of record of a patent or its agent who reasonably expects that the applicable regulatory review period described in paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product that is the subject of such patent may extend beyond the expiration of the patent term in effect may submit one or more applications for interim extensions for periods of up to one year each. The initial application for interim extension must be filed during the period beginning 6 months and ending 15 days before the patent term is due to expire. Each subsequent application for interim extension must be filed during the period beginning 60 days before and ending 30 days before the expiration of the preceding interim extension. In no event will the interim extensions granted under this section be longer than the maximum period of extension to which the applicant would be entitled under 35 U.S.C. 156(c).
                (b) A complete application for interim extension under this section shall include all of the information required for a formal application under § 1.740 and a complete application under § 1.741. Sections (a)(1), (a)(2), (a)(4), and (a)(6)-(a)(17) of § 1.740 and § 1.741 shall be read in the context of a product currently undergoing regulatory review. Sections (a)(3) and (a)(5) of § 1.740 are not applicable to an application for interim extension under this section.
                (c) The content of each subsequent interim extension application may be limited to a request for a subsequent interim extension along with a statement that the regulatory review period has not been completed along with any materials or information required under §§ 1.740 and 1.741 that are not present in the preceding interim extension application.
                [60 FR 25619, May 12, 1995]

                § 1.791
                Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.
                Any interim extension granted under 35 U.S.C. 156(d)(5) terminates at the end of the 60-day period beginning on the date on which the product involved receives permission for commercial marketing or use. If within that 60-day period the patent owner or its agent files an application for extension under §§ 1.740 and 1.741 including any additional information required under 35 U.S.C. 156(d)(1) not contained in the application for interim extension, the patent shall be further extended in accordance with the provisions of 35 U.S.C. 156.
                [60 FR 25619, May 12, 1995]

            Subpart G—Biotechnology Invention Disclosures

              Deposit of Biological Material

                Source:
                54 FR 34880, Aug. 22, 1989, unless otherwise noted.

                § 1.801
                Biological material.

                For the purposes of these regulations pertaining to the deposit of biological material for purposes of patents for inventions under 35 U.S.C. 101, the term biological material shall include material that is capable of self-replication either directly or indirectly. Representative examples include bacteria, fungi including yeast, algae, protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses, plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles and other non-living material existing in and reproducible from a living cell may be deposited by deposit of the host cell capable of reproducing the non-living material.

                § 1.802
                Need or opportunity to make a deposit.
                (a) Where an invention is, or relies on, a biological material, the disclosure may include reference to a deposit of such biological material.
                (b) Biological material need not be deposited unless access to such material is necessary for the satisfaction of the statutory requirements for patentability under 35 U.S.C. 112. If a deposit is necessary, it shall be acceptable if made in accordance with these regulations. Biological material need not be deposited, inter alia, if it is known and readily avaliable to the public or can be made or isolated without undue experimentation. Once deposited in a depository complying with these regulations, a biological material will be considered to be readily available even though some requirement of law or regulation of the United States or of the country in which the depository institution is located permits access to the material only under conditions imposed for safety, public health or similar reasons.
                (c) The reference to a biological material in a specification disclosure or the actual deposit of such material by an applicant or patent owner does not create any presumption that such material is necessary to satisfy 35 U.S.C. 112 or that deposit in accordance with these regulations is or was required.

                § 1.803
                Acceptable depository.
                (a) A deposit shall be recognized for the purposes of these regulations if made in
                (1) Any International Depositary Authority (IDA) as established under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, or
                (2) Any other depository recognized to be suitable by the Office. Suitability will be determined by the Director on the basis of the administrative and technical competence, and agreement of the depository to comply with the terms and conditions applicable to deposits for patent purposes. The Director may seek the advice of impartial consultants on the suitability of a depository. The depository must:
                (i) Have a continuous existence;
                (ii) Exist independent of the control of the depositor;
                (iii) Possess the staff and facilities sufficient to examine the viability of a deposit and store the deposit in a manner which ensures that it is kept viable and uncontaminated;
                (iv) Provide for sufficient safety measures to minimize the risk of losing biological material deposited with it;
                (v) Be impartial and objective;
                (vi) Furnish samples of the deposited material in an expeditious and proper manner; and
                (vii) Promptly notify depositors of its inability to furnish samples, and the reasons why.
                (b) A depository seeking status under paragraph (a)(2) of this section must direct a communication to the Director which shall:
                (1) Indicate the name and address of the depository to which the communication relates;
                (2) Contain detailed information as to the capacity of the depository to comply with the requirements of paragraph (a)(2) of this section, including information on its legal status, scientific standing, staff and facilities;
                (3) Indicate that the depository intends to be available, for the purposes of deposit, to any depositor under these same conditions;
                (4) Where the depository intends to accept for deposit only certain kinds of biological material, specify such kinds;
                (5) Indicate the amount of any fees that the depository will, upon acquiring the status of suitable depository under paragraph (a)(2) of this section, charge for storage, viability statements and furnishings of samples of the deposit.

                (c) A depository having status under paragraph (a)(2) of this section limited to certain kinds of biological material may extend such status to additional kinds of biological material by directing a communication to the Director in accordance with paragraph (b) of this section. If a previous communication under paragraph (b) of this section is of record, items in common with the previous communication may be incorporated by reference.
                (d) Once a depository is recognized to be suitable by the Director or has defaulted or discontinued its performance under this section, notice thereof will be published in the Office Gazette of the Patent and Trademark Office.

                § 1.804
                Time of making an original deposit.
                (a) Whenever a biological material is specifically identified in an application for patent as filed, an original deposit thereof may be made at any time before filing the application for patent or, subject to § 1.809, during pendency of the application for patent.
                (b) When the original deposit is made after the effective filing date of an application for patent, the applicant must promptly submit a statement from a person in a position to corroborate the fact, stating that the biological material which is deposited is a biological material specifically identified in the application as filed.
                [54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]

                § 1.805
                Replacement or supplement of deposit.
                (a) A depositor, after receiving notice during the pendency of an application for patent, application for reissue patent or reexamination proceeding, that the depository possessing a deposit either cannot furnish samples thereof or can furnish samples thereof but the deposit has become contaminated or has lost its capability to function as described in the specification, shall notify the Office in writing, in each application for patent or patent affected. In such a case, or where the Office otherwise learns, during the pendency of an application for patent, application for reissue patent or reexamination proceeding, that the depository possessing a deposit either cannot furnish samples thereof or can furnish samples thereof but the deposit has become contaminated or has lost its capability to function as described in the specification, the need for making a replacement or supplemental deposit will be governed by the same considerations governing the need for making an original deposit under the provisions set forth in § 1.802(b). A replacement or supplemental deposit made during the pendency of an application for patent shall not be accepted unless it meets the requirements for making an original deposit under these regulations, including the requirement set forth under § 1.804(b). A replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, shall not be accepted unless a certificate of correction under § 1.323 is requested by the patent owner which meets the terms of paragraphs (b) and (c) of this section.
                (b) A request for certificate of correction under this section shall not be granted unless the certificate identifies:
                (1) The accession number for the replacement or supplemental deposit;
                (2) The date of the deposit; and
                (3) The name and address of the depository.
                (c) A request for a certificate of correction under this section shall not be granted unless the request is made promptly after the replacement or supplemental deposit has been made and the request:
                (1) Includes a statement of the reason for making the replacement or supplemental deposit;
                (2) Includes a statement from a person in a position to corroborate the fact, and stating that the replacement or supplemental deposit is of a biological material which is identical to that originally deposited;
                (3) Includes a showing that the patent owner acted diligently—
                (i) In the case of a replacement deposit, in making the deposit after receiving notice that samples could no longer be furnished from an earlier deposit; or
                (ii) In the case of a supplemental deposit, in making the deposit after receiving notice that the earlier deposit had become contaminated or had lost its capability to function as described in the specification;

                (4) Includes a statement that the term of the replacement or supplemental deposit expires no earlier than the term of the deposit being replaced or supplemented; and
                (5) Otherwise establishes compliance with these regulations.
                (d) A depositor's failure to replace a deposit, or in the case of a patent, to diligently replace a deposit and promptly thereafter request a certificate of correction which meets the terms of paragraphs (b) and (c) of this section, after being notified that the depository possessing the deposit cannot furnish samples thereof, shall cause the application or patent involved to be treated in any Office proceeding as if no deposit were made.
                (e) In the event a deposit is replaced according to these regulations, the Office will apply a rebuttable presumption of identity between the original and the replacement deposit where a patent making reference to the deposit is relied upon during any Office proceeeding.
                (f) A replacement or supplement deposit made during the pendency of an application for patent may be made for any reason.
                (g) In no case is a replacement or supplemental deposit of a biological material necessary where the biological material, in accordance with § 1.802(b), need not be deposited.
                (h) No replacement deposit of a biological material is necessary where a depository can furnish samples thereof but the depository for national security, health or environmental safety reasons is unable to provide samples to requesters outside of the jurisdiction where the depository is located.
                (i) The Office will not recognize in any Office proceeding a replacement deposit of a biological material made by a patent owner where the depository could furnish samples of the deposit being replaced.
                [54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]

                § 1.806
                Term of deposit.
                A deposit made before or during pendency of an application for patent shall be made for a term of at least thirty (30) years and at least five (5) years after the most recent request for the furnishing of a sample of the deposit was received by the depository. In any case, samples must be stored under agreements that would make them available beyond the enforceable life of the patent for which the deposit was made.

                § 1.807
                Viability of deposit.
                (a) A deposit of biological material that is capable of self-replication either directly or indirectly must be viable at the time of deposit and during the term of deposit. Viability may be tested by the depository. The test must conclude only that the deposited material is capable of reproduction. No evidence is necessarily required regarding the ability of the deposited material to perform any function described in the patent application.
                (b) A viability statement for each deposit of a biological material defined in paragraph (a) of this section not made under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure must be filed in the application and must contain:
                (1) The name and address of the depository;
                (2) The name and address of the depositor;
                (3) The date of deposit;
                (4) The identity of the deposit and the accession number given by the depository;
                (5) The date of the viability test;
                (6) The procedures used to obtain a sample if the test is not done by the depository; and
                (7) A statement that the deposit is capable of reproduction.
                (c) If a viability test indicates that the deposit is not viable upon receipt, or the examiner cannot, for scientific or other valid reasons, accept the statement of viability received from the applicant, the examiner shall proceed as if no deposit has been made. The examiner will accept the conclusion set forth in a viability statement issued by a depository recognized under § 1.803(a).

                § 1.808
                Furnishing of samples.

                (a) A deposit must be made under conditions that assure that:

                (1) Access to the deposit will be available during pendency of the patent application making reference to the deposit to one determined by the Director to be entitled thereto under § 1.14 and 35 U.S.C. 122, and
                (2) Subject to paragraph (b) of this section, all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent.
                (b) The depositor may contract with the depository to require that samples of a deposited biological material shall be furnished only if a request for a sample, during the term of the patent:
                (1) Is in writing or other tangible form and dated;
                (2) Contains the name and address of the requesting party and the accession number of the deposit; and
                (3) Is communicated in writing by the depository to the depositor along with the date on which the sample was furnished and the name and address of the party to whom the sample was furnished.
                (c) Upon request made to the Office, the Office will certify whether a deposit has been stated to have been made under conditions which make it available to the public as of the issue date of the patent grant provided the request contains:
                (1) The name and address of the depository;
                (2) The accession number given to the deposit;
                (3) The patent number and issue date of the patent referring to the deposit; and
                (4) The name and address of the requesting party.

                § 1.809
                Examination procedures.
                (a) The examiner shall determine pursuant to § 1.104 in each application for patent, application for reissue patent or reexamination proceeding if a deposit is needed, and if needed, if a deposit actually made is acceptable for patent purposes. If a deposit is needed and has not been made or replaced or supplemented in accordance with these regulations, the examiner, where appropriate, shall reject the affected claims under the appropriate provision of 35 U.S.C. 112, explaining why a deposit is needed and/or why a deposit actually made cannot be accepted.
                (b) The applicant for patent or patent owner shall reply to a rejection under paragraph (a) of this section by—
                (1) In the case of an applicant for patent, either making an acceptable original, replacement, or supplemental deposit, or assuring the Office in writing that an acceptable deposit will be made; or, in the case of a patent owner, requesting a certificate of correction of the patent which meets the terms of paragraphs (b) and (c) of § 1.805, or
                (2) Arguing why a deposit is not needed under the circumstances of the application or patent considered and/or why a deposit actually made should be accepted. Other replies to the examiner's action shall be considered nonresponsive. The rejection will be repeated until either paragraph (b)(1) of this section is satisfied or the examiner is convinced that a deposit is not needed.

                (c) If an application for patent is otherwise in condition for allowance except for a needed deposit and the Office has received a written assurance that an acceptable deposit will be made, the Office may notify the applicant in a notice of allowability and set a three-month period of time from the mailing date of the notice of allowability within which the deposit must be made in order to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).
                (d) For each deposit made pursuant to these regulations, the specification shall contain:
                (1) The accession number for the deposit;
                (2) The date of the deposit;
                (3) A description of the deposited biological material sufficient to specifically identify it and to permit examination; and
                (4) The name and address of the depository.
                (e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of this section must be filed before or with the payment of the issue fee (see § 1.312).
                [54 FR 34880, Aug. 22, 1989, as amended at 66 FR 21092, Apr. 27, 2001; 78 FR 62408, Oct. 21, 2013]

              Application Disclosures Containing Nucleotide and/or Amino Acid Sequences

                Source:
                Sections 1.821 through 1.825 appear at 55 FR 18245, May 1, 1990, unless otherwise noted.

                § 1.821
                Nucleotide and/or amino acid sequence disclosures in patent applications.

                (a) Nucleotide and/or amino acid sequences as used in §§ 1.821 through 1.825 are interpreted to mean an unbranched sequence of four or more amino acids or an unbranched sequence of ten or more nucleotides. Branched sequences are specifically excluded from this definition. Sequences with fewer than four specifically defined nucleotides or amino acids are specifically excluded from this section. “Specifically defined” means those amino acids other than “Xaa” and those nucleotide bases other than “n”defined in accordance with the World Intellectual Property Organization (WIPO) Handbook on Industrial Property Information and Documentation, Standard ST.25: Standard for the Presentation of Nucleotide and Amino Acid Sequence Listings in Patent Applications (1998), including Tables 1 through 6 in Appendix 2, herein incorporated by reference. (Hereinafter “WIPO Standard ST.25 (1998)”). This incorporation by reference was approved by the Director of the Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of WIPO Standard ST.25 (1998) may be obtained from the World Intellectual Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies may also be inspected at the National Archives and Records Administration (NARA). For information on the availability of this material at NARA, call 202-741-6030, or go to: http://www.archives.gov/federal_register/code_of_federal_regulations/ibr_locations.html. Nucleotides and amino acids are further defined as follows:
                (1) Nucleotides: Nucleotides are intended to embrace only those nucleotides that can be represented using the symbols set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., methylated bases, may be described as set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 2, but shall not be shown explicitly in the nucleotide sequence.
                (2) Amino acids: Amino acids are those L-amino acids commonly found in naturally occurring proteins and are listed in WIPO Standard ST.25 (1998), Appendix 2, Table 3. Those amino acid sequences containing D-amino acids are not intended to be embraced by this definition. Any amino acid sequence that contains post-translationally modified amino acids may be described as the amino acid sequence that is initially translated using the symbols shown in WIPO Standard ST.25 (1998), Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or glycosylations, being described as set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 4, but these modifications shall not be shown explicitly in the amino acid sequence. Any peptide or protein that can be expressed as a sequence using the symbols in WIPO Standard ST.25 (1998), Appendix 2, Table 3 in conjunction with a description in the Feature section to describe, for example, modified linkages, cross links and end caps, non-peptidyl bonds, etc., is embraced by this definition.
                (b) Patent applications which contain disclosures of nucleotide and/or amino acid sequences, in accordance with the definition in paragraph (a) of this section, shall, with regard to the manner in which the nucleotide and/or amino acid sequences are presented and described, conform exclusively to the requirements of §§ 1.821 through 1.825.

                (c) Patent applications which contain disclosures of nucleotide and/or amino acid sequences must contain, as a separate part of the disclosure, a paper or compact disc copy (see § 1.52(e)) disclosing the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of §§ 1.822 and 1.823. This paper or compact disc copy is referred to elsewhere in this subpart as the “Sequence Listing.” Each sequence disclosed must appear separately in the “Sequence Listing.” Each sequence set forth in the “Sequence Listing” must be assigned a separate sequence identifier. The sequence identifiers must begin with 1 and increase sequentially by integers. If no sequence is present for a sequence identifier, the code “000” must be used in place of the sequence. The response for the numeric identifier <160>must include the total number of SEQ ID NOs, whether followed by a sequence or by the code “000.”
                (d) Where the description or claims of a patent application discuss a sequence that is set forth in the “Sequence Listing” in accordance with paragraph (c) of this section, reference must be made to the sequence by use of the sequence identifier, preceded by “SEQ ID NO:” in the text of the description or claims, even if the sequence is also embedded in the text of the description or claims of the patent application.
                (e) A copy of the “Sequence Listing” referred to in paragraph (c) of this section must also be submitted in computer readable form (CRF) in accordance with the requirements of § 1.824. The computer readable form must be a copy of the “Sequence Listing” and may not be retained as a part of the patent application file. If the computer readable form of a new application is to be identical with the computer readable form of another application of the applicant on file in the Office, reference may be made to the other application and computer readable form in lieu of filing a duplicate computer readable form in the new application if the computer readable form in the other application was compliant with all of the requirements of this subpart. The new application must be accompanied by a letter making such reference to the other application and computer readable form, both of which shall be completely identified. In the new application, applicant must also request the use of the compliant computer readable “Sequence Listing” that is already on file for the other application and must state that the paper or compact disc copy of the “Sequence Listing” in the new application is identical to the computer readable copy filed for the other application.
                (f) In addition to the paper or compact disc copy required by paragraph (c) of this section and the computer readable form required by paragraph (e) of this section, a statement that the “Sequence Listing” content of the paper or compact disc copy and the computer readable copy are the same must be submitted with the computer readable form, e.g., a statement that “the sequence listing information recorded in computer readable form is identical to the written (on paper or compact disc) sequence listing.”
                (g) If any of the requirements of paragraphs (b) through (f) of this section are not satisfied at the time of filing under 35 U.S.C. 111(a) or at the time of entering the national stage under 35 U.S.C. 371, applicant will be notified and given a period of time within which to comply with such requirements in order to prevent abandonment of the application. Any submission in reply to a requirement under this paragraph must be accompanied by a statement that the submission includes no new matter.
                (h) If any of the requirements of paragraphs (b) through (f) of this section are not satisfied at the time of filing an international application under the Patent Cooperation Treaty (PCT), which application is to be searched by the United States International Searching Authority or examined by the United States International Preliminary Examining Authority, applicant will be sent a notice necessitating compliance with the requirements within a prescribed time period. Any submission in reply to a requirement under this paragraph must be accompanied by a statement that the submission does not include matter which goes beyond the disclosure in the international application as filed. If applicant fails to timely provide the required computer readable form, the United States International Searching Authority shall search only to the extent that a meaningful search can be performed without the computer readable form and the United States International Preliminary Examining Authority shall examine only to the extent that a meaningful examination can be performed without the computer readable form.
                [63 FR 29634, June 1, 1998, as amended at 65 FR 54680, Sept. 8, 2000; 69 FR 18803, Apr. 9, 2004; 70 FR 10489, Mar. 4, 2005]

                § 1.822
                Symbols and format to be used for nucleotide and/or amino acid sequence data.
                (a) The symbols and format to be used for nucleotide and/or amino acid sequence data shall conform to the requirements of paragraphs (b) through (e) of this section.

                (b) The code for representing the nucleotide and/or amino acid sequence characters shall conform to the code set forth in the tables in WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This incorporation by reference was approved by the Director of the Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of ST.25 may be obtained from the World Intellectual Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies may also be inspected at the National Archives and Records Administration (NARA). For information on the availability of this material at NARA, call 202-741-6030, or go to: http://www.archives.gov/federal_register/code_of_federal_regulations/ibr_locations.html. No code other than that specified in these sections shall be used in nucleotide and amino acid sequences. A modified base or modified or unusual amino acid may be presented in a given sequence as the corresponding unmodified base or amino acid if the modified base or modified or unusual amino acid is one of those listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and 4, and the modification is also set forth in the Feature section. Otherwise, each occurrence of a base or amino acid not appearing in WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3, shall be listed in a given sequence as “n” or “Xaa,” respectively, with further information, as appropriate, given in the Feature section, preferably by including one or more feature keys listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 5 and 6.
                (c) Format representation of nucleotides. (1) A nucleotide sequence shall be listed using the lower-case letter for representing the one-letter code for the nucleotide bases set forth in WIPO Standard ST.25 (1998), Appendix 2, Table 1.
                (2) The bases in a nucleotide sequence (including introns) shall be listed in groups of 10 bases except in the coding parts of the sequence. Leftover bases, fewer than 10 in number, at the end of noncoding parts of a sequence shall be grouped together and separated from adjacent groups of 10 or 3 bases by a space.
                (3) The bases in the coding parts of a nucleotide sequence shall be listed as triplets (codons). The amino acids corresponding to the codons in the coding parts of a nucleotide sequence shall be typed immediately below the corresponding codons. Where a codon spans an intron, the amino acid symbol shall be typed below the portion of the codon containing two nucleotides.
                (4) A nucleotide sequence shall be listed with a maximum of 16 codons or 60 bases per line, with a space provided between each codon or group of 10 bases.
                (5) A nucleotide sequence shall be presented, only by a single strand, in the 5 to 3 direction, from left to right.
                (6) The enumeration of nucleotide bases shall start at the first base of the sequence with number 1. The enumeration shall be continuous through the whole sequence in the direction 5 to 3. The enumeration shall be marked in the right margin, next to the line containing the one-letter codes for the bases, and giving the number of the last base of that line.
                (7) For those nucleotide sequences that are circular in configuration, the enumeration method set forth in paragraph (c)(6) of this section remains applicable with the exception that the designation of the first base of the nucleotide sequence may be made at the option of the applicant.
                (d) Representation of amino acids. (1) The amino acids in a protein or peptide sequence shall be listed using the three-letter abbreviation with the first letter as an upper case character, as in WIPO Standard ST.25 (1998), Appendix 2, Table 3.
                (2) A protein or peptide sequence shall be listed with a maximum of 16 amino acids per line, with a space provided between each amino acid.

                (3) An amino acid sequence shall be presented in the amino to carboxy direction, from left to right, and the amino and carboxy groups shall not be presented in the sequence.
                (4) The enumeration of amino acids may start at the first amino acid of the first mature protein, with the number 1. When presented, the amino acids preceding the mature protein, e.g., pre-sequences, pro-sequences, pre-pro-sequences and signal sequences, shall have negative numbers, counting backwards starting with the amino acid next to number 1. Otherwise, the enumeration of amino acids shall start at the first amino acid at the amino terminal as number 1. It shall be marked below the sequence every 5 amino acids. The enumeration method for amino acid sequences that is set forth in this section remains applicable for amino acid sequences that are circular in configuration, with the exception that the designation of the first amino acid of the sequence may be made at the option of the applicant.
                (5) An amino acid sequence that contains internal terminator symbols (e.g., “Ter”, “*”, or “.”, etc.) may not be represented as a single amino acid sequence, but shall be presented as separate amino acid sequences.
                (e) A sequence with a gap or gaps shall be presented as a plurality of separate sequences, with separate sequence identifiers, with the number of separate sequences being equal in number to the number of continuous strings of sequence data. A sequence that is made up of one or more noncontiguous segments of a larger sequence or segments from different sequences shall be presented as a separate sequence.
                [63 FR 29635, June 1, 1998, as amended at 69 FR 18803, Apr. 9, 2004; 70 FR 10489, Mar. 4, 2005]

                § 1.823
                Requirements for nucleotide and/or amino acid sequences as part of the application.
                (a)(1) If the “Sequence Listing” required by § 1.821(c) is submitted on paper: The “Sequence Listing,” setting forth the nucleotide and/or amino acid sequence and associated information in accordance with paragraph (b) of this section, must begin on a new page and must be titled “Sequence Listing.” The pages of the “Sequence Listing” preferably should be numbered independently of the numbering of the remainder of the application. Each page of the “Sequence Listing” shall contain no more than 66 lines and each line shall contain no more than 72 characters. The sheet or sheets presenting a sequence listing may not include material other than part of the sequence listing. A fixed-width font should be used exclusively throughout the “Sequence Listing.”
                (2) If the “Sequence Listing” required by § 1.821(c) is submitted on compact disc: The “Sequence Listing” must be submitted on a compact disc in compliance with § 1.52(e). The compact disc may also contain table information if the application contains table information that may be submitted on a compact disc (§ 1.52(e)(1)(iii)). The specification must contain an incorporation-by-reference of the Sequence Listing as required by § 1.52(e)(5). The presentation of the “Sequence Listing” and other materials on compact disc under § 1.821(c) does not substitute for the Computer Readable Form that must be submitted on disk, compact disc, or tape in accordance with § 1.824.

                (b) The “Sequence Listing” shall, except as otherwise indicated, include the actual nucleotide and/or amino acid sequence, the numeric identifiers and their accompanying information as shown in the following table. The numeric identifier shall be used only in the “Sequence Listing.” The order and presentation of the items of information in the “Sequence Listing” shall conform to the arrangement given below. Each item of information shall begin on a new line and shall begin with the numeric identifier enclosed in angle brackets as shown. The submission of those items of information designated with an “M” is mandatory. The submission of those items of information designated with an “O” is optional. Numeric identifiers <110>through <170>shall only be set forth at the beginning of the “Sequence Listing.” The following table illustrates the numeric identifiers.

                    Numeric identifier
                    Definition
                    Comments and format
                    Mandatory (M) or optional (O).

                    <110>
                    Applicant
                    Preferably max. of 10 names; one name per line; preferable format: Surname, Other Names and/or Initials
                    M.

                    <120>
                    Title of Invention

                    M.

                    <130>
                    File Reference
                    Personal file reference
                    M when filed prior to assignment of appl. number.

                    <140>
                    Current Application Number
                    Specify as: US 07/999,999 or PCT/US96/99999
                    M, if available.

                    <141>
                    Current Filing Date
                    Specify as: yyyy-mm-dd
                    M, if available.

                    <150>
                    Prior Application Number
                    Specify as: US 07/999,999 or PCT/US96/99999
                    M, if applicable include priority documents under 35 USC 119 and 120.

                    <151>
                    Prior Application Filing Date
                    Specify as: yyyy-mm-dd
                    M, if applicable.

                    <160>
                    Number of SEQ ID NOs
                    Count includes total number of SEQ ID NOs
                    M.

                    <170>
                    Software
                    Name of software used to create the Sequence Listing
                    O.

                    <210>
                    SEQ ID NO:#:
                    Response shall be an integer representing the SEQ ID NO shown
                    M.

                    <211>
                    Length
                    Respond with an integer expressing the number of bases or amino acid residues
                    M.

                    <212>
                    Type
                    Whether presented sequence molecule is DNA, RNA, or PRT (protein). If a nucleotide sequence contains both DNA and RNA fragments, the type shall be “DNA.” In addition, the combined DNA/RNA molecule shall be further described in the <220>to <223>feature section
                    M.

                    <213>
                    Organism
                    Scientific name, i.e., Genus/ species, Unknown or Artificial Sequence. In addition, the “Unknown” or “Artificial Sequence” organisms shall be further described in the <220>to <223>feature section
                    M

                    <220>
                    Feature
                    Leave blank after <220>. <221-223>provide for a description of points of biological significance in the sequence.
                    M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence; if ORGANISM is “Artificial Sequence” or “Unknown”; if molecule is combined DNA/RNA”

                    <221>
                    Name/Key
                    Provide appropriate identifier for feature, preferably from WIPO Standard ST.25 (1998), Appendix 2, Tables 5 and 6
                    M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence.

                    <222>
                    Location
                    Specify location within sequence; where appropriate state number of first and last bases/amino acids in feature
                    M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence.

                    <223>
                    Other Information
                    Other relevant information; four lines maximum
                    M, under the following conditions: if “n,” “Xaa,” or a modified or unusual L-amino acid or modified base was used in a sequence; if ORGANISM is “Artificial Sequence” or “Unknown”; if molecule is combined DNA/RNA.

                    <300>
                    Publication Information
                    Leave blank after <300>
                    O.

                    <301>
                    Authors
                    Preferably max of ten named authors of publication; specify one name per line; preferable format: Surname, Other Names and/or Initials
                    O.

                    <302>
                    Title

                    O.

                    <303>
                    Journal

                    O.

                    <304>
                    Volume

                    O.

                    <305>
                    Issue

                    O.

                    <306>
                    Pages

                    O.

                    <307>
                    Date
                    Journal date on which data published; specify as yyyy-mm-dd, MMM-yyyy or Season-yyyy
                    O.

                    <308>
                    Database Accession Number
                    Accession number assigned by database including database name
                    O.

                    <309>
                    Database Entry Date
                    Date of entry in database; specify as yyyy-mm-dd or MMM-yyyy
                    O.

                    <310>
                    Patent Document Number
                    Document number; for patent-type citations only. Specify as, for example, US 07/999,999
                    O.

                    <311>
                    Patent Filing Date
                    Document filing date, for patent-type citations only; specify as yyyy-mm-dd
                    O.

                    <312>
                    Publication Date
                    Document publication date, for patent-type citations only; specify as yyyy-mm-dd
                    O.

                    <313>
                    Relevant Residues
                    FROM (position) TO (position)
                    O.

                    <400>
                    Sequence
                    SEQ ID NO should follow the numeric identifier and should appear on the line preceding the actual sequence
                    M.

                [63 FR 29636, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000; 68 FR 38630, June 30, 2003]

                § 1.824
                Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
                (a) The computer readable form required by § 1.821(e) shall meet the following requirements:
                (1) The computer readable form shall contain a single “Sequence Listing” as either a diskette, series of diskettes, or other permissible media outlined in paragraph (c) of this section.
                (2) The “Sequence Listing” in paragraph (a)(l) of this section shall be submitted in American Standard Code for Information Interchange (ASCII) text. No other formats shall be allowed.
                (3) The computer readable form may be created by any means, such as word processors, nucleotide/amino acid sequence editors' or other custom computer programs; however, it shall conform to all requirements detailed in this section.
                (4) File compression is acceptable when using diskette media, so long as the compressed file is in a self-extracting format that will decompress on one of the systems described in paragraph (b) of this section.
                (5) Page numbering must not appear within the computer readable form version of the “Sequence Listing” file.
                (6) All computer readable forms must have a label permanently affixed thereto on which has been hand-printed or typed: the name of the applicant, the title of the invention, the date on which the data were recorded on the computer readable form, the operating system used, a reference number, and an application number and filing date, if known. If multiple diskettes are submitted, the diskette labels must indicate their order (e.g., “1 of X”).
                (b) Computer readable form submissions must meet these format requirements:
                (1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
                (2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or Macintosh;
                (3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
                (4) Pagination: Continuous file (no “hard page break” codes permitted).
                (c) Computer readable form files submitted may be in any of the following media:
                (1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
                (2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 bits per inch, 9 track; Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
                (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking factor (not “block size”); Line Terminator: ASCII Carriage Return plus ASCII Line Feed.
                (4) Compact disc: Format: ISO 9660 or High Sierra Format.
                (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 640 Mb.
                (d) Computer readable forms that are submitted to the Office will not be returned to the applicant.
                [65 FR 54681, Sept. 8, 2000]

                § 1.825
                Amendments to or replacement of sequence listing and computer readable copy thereof.

                (a) Any amendment to a paper copy of the “Sequence Listing” (§ 1.821(c)) must be made by the submission of substitute sheets and include a statement that the substitute sheets include no new matter. Any amendment to a compact disc copy of the “Sequence Listing” (§ 1.821(c)) must be made by the submission of a replacement compact disc (2 copies) in compliance with § 1.52(e). Amendments must also be accompanied by a statement that indicates support for the amendment in the application, as filed, and a statement that the replacement compact disc includes no new matter.
                (b) Any amendment to the paper or compact disc copy of the “Sequence Listing,” in accordance with paragraph (a) of this section, must be accompanied by a substitute copy of the computer readable form (§ 1.821(e)) including all previously submitted data with the amendment incorporated therein, accompanied by a statement that the copy in computer readable form is the same as the substitute copy of the “Sequence Listing.”
                (c) Any appropriate amendments to the “Sequence Listing” in a patent; e.g., by reason of reissue or certificate of correction, must comply with the requirements of paragraphs (a) and (b) of this section.
                (d) If, upon receipt, the computer readable form is found to be damaged or unreadable, applicant must provide, within such time as set by the Director, a substitute copy of the data in computer readable form accompanied by a statement that the substitute data is identical to that originally filed.
                [63 FR 29638, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000]

              Pt. 1, Subpt. G, App. A
              Appendix A to Subpart G of Part 1—Sample Sequence Listing

                ER01JN98.006

                ER01JN98.007

                ER01JN98.008

                ER01JN98.009

                ER01JN98.010

              [63 FR 29639, June 1, 1998]

            Subpart H—Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or After November 29, 1999

              Source:
              65 FR 76777, Dec. 7, 2000, unless otherwise noted.

              Prior Art Citations

                § 1.902
                Processing of prior art citations during an inter partes reexamination proceeding.

                Citations by the patent owner in accordance with § 1.933 and by an inter partes reexamination third party requester under § 1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citations submitted after the date of an order for reexamination pursuant to § 1.931 by persons other than the patent owner, or the third party requester under either § 1.913 or § 1.948, will be delayed until the inter partes reexamination proceeding has been concluded by the issuance and publication of a reexamination certificate. See § 1.502 for processing of prior art citations in patent and reexamination files during an ex parte reexamination proceeding filed under § 1.510.
                [72 FR 18906, Apr. 16, 2007]

              Requirements for Inter Partes Reexamination Proceedings

                § 1.903
                Service of papers on parties in inter partes reexamination.

                The patent owner and the third party requester will be sent copies of Office actions issued during the inter partes reexamination proceeding. After filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on every other party in the reexamination proceeding in the manner provided in § 1.248. Any document must reflect service or the document may be refused consideration by the Office. The failure of the patent owner or the third party requester to serve documents may result in their being refused consideration.

                § 1.904
                Notice of inter partes reexamination in Official Gazette.

                A notice of the filing of an inter partes reexamination request will be published in the Official Gazette. The notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice of the inter partes reexamination proceeding and inter partes reexamination will proceed.

                § 1.905
                Submission of papers by the public in inter partes reexamination.
                Unless specifically provided for, no submissions on behalf of any third parties other than third party requesters as defined in 35 U.S.C. 100(e) will be considered unless such submissions are in accordance with § 1.915 or entered in the patent file prior to the date of the order for reexamination pursuant to § 1.931. Submissions by third parties, other than third party requesters, filed after the date of the order for reexamination pursuant to § 1.931, must meet the requirements of § 1.501 and will be treated in accordance with § 1.902. Submissions which do not meet the requirements of § 1.501 will be returned.

                § 1.906
                Scope of reexamination in inter partes reexamination proceeding.
                (a) Claims in an inter partes reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112.
                (b) Claims in an inter partes reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent.

                (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in an inter partes reexamination proceeding. If such issues are raised by the patent owner or the third party requester during a reexamination proceeding, the existence of such issues will be noted by the examiner in the next Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such issues considered and resolved.

                § 1.907

                  Inter partes reexamination prohibited.

                (a) Once an order to reexamine has been issued under § 1.931, neither the third party requester, nor its privies, may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certificate is issued under § 1.997, unless authorized by the Director.

                (b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be maintained by the Office.
                (c) If a final decision in an inter partes reexamination proceeding instituted by a third party requester is favorable to patentability of any original, proposed amended, or new claims of the patent, then neither that party nor its privies may thereafter request inter partes reexamination of any such patent claims on the basis of issues which that party, or its privies, raised or could have raised in such inter partes reexamination proceeding.

                § 1.913

                Persons eligible to file, and time for filing, a request for inter partes reexamination.

                (a) Except as provided for in § 1.907 and in paragraph (b) of this section, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501.
                (b) Any request for an inter partes reexamination submitted on or after September 16, 2012, will not be accorded a filing date, and any such request will not be granted.
                [76 FR 59057, Sept. 23, 2011]

                § 1.915
                Content of request for inter partes reexamination.

                (a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 1.20(c)(2).
                (b) A request for inter partes reexamination must include the following parts:
                (1) An identification of the patent by patent number and every claim for which reexamination is requested.
                (2) A citation of the patents and printed publications which are presented to provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request.
                (3) A statement pointing out, based on the cited patents and printed publications, each showing of a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.
                (4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-English language document.
                (5) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.

                (6) A certification by the third party requester that a copy of the request has been served in its entirety on the patent owner at the address provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.

                (7) A certification by the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter partes reexamination.

                (8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy.
                (c) If an inter partes request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34.
                (d) If the inter partes request does not include the fee for requesting inter partes reexamination required by paragraph (a) of this section and meet all the requirements of paragraph (b) of this section, then the person identified as requesting inter partes reexamination will be so notified and will generally be given an opportunity to complete the request within a specified time. Failure to comply with the notice will result in the inter partes reexamination request not being granted a filing date, and will result in placement of the request in the patent file as a citation if it complies with the requirements of § 1.501.
                [65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006; 72 FR 18906, Apr. 16, 2007; 76 FR 59058, Sept. 23, 2011]

                § 1.919
                Filing date of request for inter partes reexamination.
                (a) The filing date of a request for inter partes reexamination is the date on which the request satisfies all the requirements for the request set forth in § 1.915.
                (b) If the request is not granted a filing date, the request will be placed in the patent file as a citation of prior art if it complies with the requirements of § 1.501.
                [65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006]

                § 1.923
                Examiner's determination on the request for inter partes reexamination.

                Within three months following the filing date of a request for inter partes reexamination under § 1.915, the examiner will consider the request and determine whether or not the request and the prior art establish a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in 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 mailed to the patent owner at the address as provided for in § 1.33(c) and to the third party requester. If the examiner determines that the request has not established a reasonable likelihood that the requester will prevail with respect to at least one of the challenged claims, the examiner shall refuse the request and shall not order inter partes reexamination.
                [76 FR 59058, Sept. 23, 2011]

                § 1.925
                Partial refund if request for inter partes reexamination is not ordered.
                Where inter partes reexamination is not ordered, a refund of a portion of the fee for requesting inter partes reexamination will be made to the requester in accordance with § 1.26(c).

                § 1.927
                Petition to review refusal to order inter partes reexamination.

                The third party 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 to order inter partes reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request has not been established, the determination shall be final and nonappealable.
                [76 FR 59058, Sept. 23, 2011]

                Inter Partes Reexamination of Patents

                § 1.931
                Order for inter partes reexamination.

                (a) If it is found that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request, the determination will include an order for inter partes reexamination of the patent for resolution of the question of whether the requester will prevail.
                (b) If the order for inter partes reexamination resulted from a petition pursuant to § 1.927, the inter partes reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.923.
                [65 FR 76777, Dec. 7, 2000, as amended at 76 FR 59058, Sept. 23, 2011]

              Information Disclosure in Inter Partes Reexamination

                § 1.933
                Patent owner duty of disclosure in inter partes reexamination proceedings.

                (a) Each individual associated with the patent owner in an inter partes reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding as set forth in § 1.555(a) and (b). The duty to disclose all information known to be material to patentability in an inter partes reexamination proceeding is deemed to be satisfied by filing a paper in compliance with the requirements set forth in § 1.555(a) and (b).
                (b) The responsibility for compliance with this section rests upon the individuals designated in paragraph (a) of this section, and no evaluation will be made by the Office in the reexamination proceeding as to compliance with this section. If questions of compliance with this section are raised by the patent owner or the third party requester during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.906(c).

              Office Actions and Responses (Before the Examiner) in Inter Partes Reexamination

                § 1.935

                Initial Office action usually accompanies order for inter partes reexamination.
                The order for inter partes reexamination will usually be accompanied by the initial Office action on the merits of the reexamination.

                § 1.937
                Conduct of inter partes reexamination.
                (a) All inter partes reexamination proceedings, including any appeals to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office, unless the Director makes a determination that there is good cause for suspending the reexamination proceeding.
                (b) The inter partes reexamination proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sections governing the application examination process, and will result in the issuance of an inter partes reexamination certificate under § 1.997, except as otherwise provided.

                (c) All communications between the Office and the parties to the inter partes reexamination which are directed to the merits of the proceeding must be in writing and filed with the Office for entry into the record of the proceeding.
                (d) A petition in an inter partes reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6), except for petitions under § 1.956 to extend the period for response by a patent owner, petitions under § 1.958 to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.
                [65 FR 76777, as amended at 77 FR 46628, Aug. 6, 2012; 77 FR 48853, Aug. 14, 2012]

                § 1.939
                Unauthorized papers in inter partes reexamination.

                (a) If an unauthorized paper is filed by any party at any time during the inter partes reexamination proceeding it will not be considered and may be returned.

                (b) Unless otherwise authorized, no paper shall be filed prior to the initial Office action on the merits of the inter partes reexamination.

                § 1.941
                Amendments by patent owner in inter partes reexamination.
                Amendments by patent owner in inter partes reexamination proceedings are made by filing a paper in compliance with §§ 1.530(d)-(k) and 1.943.

                § 1.943

                Requirements of responses, written comments, and briefs in inter partes reexamination.
                (a) The form of responses, written comments, briefs, appendices, and other papers must be in accordance with the requirements of § 1.52.
                (b) Responses by the patent owner and written comments by the third party requester shall not exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior art references.
                (c) Appellant's briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding appendices of claims and reference materials such as prior art references. All other briefs filed by any party shall not exceed fifteen pages in length or 7,000 words. If the page limit for any brief is exceeded, a certificate is required stating the number of words contained in the brief.

                § 1.945
                Response to Office action by patent owner in inter partes reexamination.

                (a) The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partes reexamination.
                (b) Any supplemental response to the Office action will be entered only where the supplemental response is accompanied by a showing of sufficient cause why the supplemental response should be entered. The showing of sufficient cause must include:
                (1) An explanation of how the requirements of § 1.111(a)(2)(i) are satisfied;
                (2) An explanation of why the supplemental response was not presented together with the original response to the Office action; and
                (3) A compelling reason to enter the supplemental response.
                [72 FR 18906, Apr. 16, 2007]

                § 1.947

                Comments by third party requester to patent owner's response in inter partes reexamination.
                Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945, a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner's response. These comments shall be limited to issues raised by the Office action or the patent owner's response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester, the comments will be considered as having been received in the Office as of the date of deposit specified in the certificate under § 1.8.

                § 1.948

                Limitations on submission of prior art by third party requester following the order for inter partes reexamination.
                (a) After the inter partes reexamination order, the third party requester may only cite additional prior art as defined under § 1.501 if it is filed as part of a comments submission under § 1.947 or § 1.951(b) and is limited to prior art:
                (1) which is necessary to rebut a finding of fact by the examiner;
                (2) which is necessary to rebut a response of the patent owner; or

                (3) which for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim.
                (b) [Reserved]

                § 1.949

                Examiner's Office action closing prosecution in inter partes reexamination.

                Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.

                § 1.951

                Options after Office action closing prosecution in inter partes reexamination.

                (a) After an Office action closing prosecution in an inter partes reexamination, the patent owner may once file comments limited to the issues raised in the Office action closing prosecution. The comments can include a proposed amendment to the claims, which amendment will be subject to the criteria of § 1.116 as to whether or not it shall be admitted. The comments must be filed within the time set for response in the Office action closing prosecution.
                (b) When the patent owner does file comments, a third party requester may once file comments responsive to the patent owner's comments within 30 days from the date of service of patent owner's comments on the third party requester.

                § 1.953
                Examiner's Right of Appeal Notice in inter partes reexamination.

                (a) Upon considering the comments of the patent owner and the third party requester subsequent to the Office action closing prosecution in an inter partes reexamination, or upon expiration of the time for submitting such comments, the examiner shall issue a Right of Appeal Notice, unless the examiner reopens prosecution and issues another Office action on the merits.

                (b) Expedited Right of Appeal Notice: At any time after the patent owner's response to the initial Office action on the merits in an inter partes reexamination, the patent owner and all third party requesters may stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability, and may request the issuance of a Right of Appeal Notice. The request must have the concurrence of the patent owner and all third party requesters present in the proceeding and must identify all of the appealable issues and the positions of the patent owner and all third party requesters on those issues. If the examiner determines that no other issues are present or should be raised, a Right of Appeal Notice limited to the identified issues shall be issued.

                (c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting forth each ground of rejection and/or final decision favorable to patentability including each determination not to make a proposed rejection, an identification of the status of each claim, and the reasons for decisions favorable to patentability and/or the grounds of rejection for each claim. No amendment can be made in response to the Right of Appeal Notice. The Right of Appeal Notice shall set a one-month time period for either party to appeal. If no notice of appeal is filed, prosecution in the inter partes reexamination proceeding will be terminated, and the Director will proceed to issue and publish a certificate under § 1.997 in accordance with the Right of Appeal Notice.
                [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]

              Interviews Prohibited in Inter Partes Reexamination

                § 1.955
                Interviews prohibited in inter partes reexamination proceedings.
                There will be no interviews in an inter partes reexamination proceeding which discuss the merits of the proceeding.

              Extensions of Time, Terminating of Reexamination Prosecution, and Petitions To Revive in Inter Partes Reexamination

                § 1.956
                Patent owner extensions of time in inter partes reexamination.

                The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.
                [69 FR 56546, Sept. 21, 2004]

                § 1.957

                Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.

                (a) If the third party requester files an untimely or inappropriate comment, notice of appeal or brief in an inter partes reexamination, the paper will be refused consideration.

                (b) If no claims are found patentable, and the patent owner fails to file a timely and appropriate response in an inter partes reexamination proceeding, the prosecution in the reexamination proceeding will be a terminated prosecution and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.997 in accordance with the last action of the Office.

                (c) If claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at the time of the failure to respond, and to any claims added thereafter which do not expand the scope of the claims which were found patentable at that time.
                (d) When action by the patent owner is a bona fide attempt to respond and to advance the prosecution and is substantially a complete response to the Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, an opportunity to explain and supply the omission may be given.
                [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]

                § 1.958
                Petition to revive inter partes reexamination prosecution terminated for lack of patent owner response.
                If a response by the patent owner is not timely filed in the Office, a petition may be filed pursuant to § 1.137 to revive a reexamination prosecution terminated under § 1.957(b) or limited under § 1.957(c) if the delay in response was unintentional.
                [78 FR 62408, Oct. 21, 2013]

              Appeal to the Patent Trial and Appeal Board in Inter Partes Reexamination

                § 1.959
                Appeal in inter partes reexamination.
                Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c) are conducted according to part 41 of this title.
                [77 FR 46628, Aug. 6, 2012]

                §§ 1.961-1.977
                [Reserved]

                § 1.979
                Return of Jurisdiction from the Patent Trial and Appeal Board; termination of appeal proceedings.
                (a) Jurisdiction over an inter partes reexamination proceeding passes to the examiner after a decision by the Patent Trial and Appeal Board upon transmittal of the file to the examiner, subject to each appellant's right of appeal or other review, for such further action as the condition of the inter partes reexamination proceeding may require, to carry into effect the decision of the Patent Trial and Appeal Board.

                (b) Upon judgment in the appeal before the Patent Trial and Appeal Board, if no further appeal has been taken (§ 1.983), the prosecution in the inter partes reexamination proceeding will be terminated and the Director will issue and publish a certificate under § 1.997 concluding the proceeding. If an appeal to the U.S. Court of Appeals for the Federal Circuit has been filed, that appeal is considered terminated when the mandate is issued by the Court.
                [77 FR 46628, Aug. 6, 2012]

                § 1.981
                Reopening after a final decision of the Patent Trial and Appeal Board.

                When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except under the provisions of § 41.77 of this title without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.
                [77 FR 46628, Aug. 6, 2012]

              Appeal to the United States Court of Appeals for the Federal Circuit in Inter Partes Reexamination

                § 1.983

                Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.

                (a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, subject to § 41.81, appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board.
                (b) The appellant must take the following steps in such an appeal:
                (1) In the U.S. Patent and Trademark Office, timely file a written notice of appeal directed to the Director in accordance with §§ 1.302 and 1.304;
                (2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice of appeal and pay the fee, as provided for in the rules of the U.S. Court of Appeals for the Federal Circuit; and
                (3) Serve a copy of the notice of appeal on every other party in the reexamination proceeding in the manner provided in § 1.248.
                (c) If the patent owner has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the third party requester may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
                (d) If the third party requester has filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, the patent owner may cross appeal to the U.S. Court of Appeals for the Federal Circuit if also dissatisfied with the decision of the Patent Trial and Appeal Board.
                (e) A party electing to participate in an appellant's appeal must, within fourteen days of service of the appellant's notice of appeal under paragraph (b) of this section, or notice of cross appeal under paragraphs (c) or (d) of this section, take the following steps:
                (1) In the U.S. Patent and Trademark Office, timely file a written notice directed to the Director electing to participate in the appellant's appeal to the U.S. Court of Appeals for the Federal Circuit by mail to, or hand service on, the General Counsel as provided in § 104.2;
                (2) In the U.S. Court of Appeals for the Federal Circuit, file a copy of the notice electing to participate in accordance with the rules of the U.S. Court of Appeals for the Federal Circuit; and
                (3) Serve a copy of the notice electing to participate on every other party in the reexamination proceeding in the manner provided in § 1.248.
                (f) Notwithstanding any provision of the rules, in any reexamination proceeding commenced prior to November 2, 2002, the third party requester is precluded from appealing and cross appealing any decision of the Patent Trial and Appeal Board to the U.S. Court of Appeals for the Federal Circuit, and the third party requester is precluded from participating in any appeal taken by the patent owner to the U.S. Court of Appeals for the Federal Circuit.
                [68 FR 71008, Dec. 22, 2003, as amended at 72 FR 18907, Apr. 16, 2007; 77 FR 46628, Aug. 6, 2012]

              Concurrent Proceedings Involving Same Patent in Inter Partes Reexamination

                § 1.985

                Notification of prior or concurrent proceedings in inter partes reexamination.
                (a) In any inter partes reexamination proceeding, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings.

                (b) Notwithstanding any provision of the rules, any person at any time may file a paper in an inter partes reexamination proceeding notifying the Office of a prior or concurrent proceeding in which the same patent is or was involved, including but not limited to interference or trial before the Patent Trial and Appeal Board, reissue, reexamination, or litigation and the results of such proceedings. Such paper must be limited to merely providing notice of the other proceeding without discussion of issues of the current inter partes reexamination proceeding.
                [77 FR 46629, Aug. 6, 2012]

                § 1.987
                Suspension of inter partes reexamination proceeding due to litigation.
                If a patent in the process of inter partes reexamination is or becomes involved in litigation, the Director shall determine whether or not to suspend the inter partes reexamination proceeding.

                § 1.989
                Merger of concurrent reexamination proceedings.
                (a) If any reexamination is ordered while a prior inter partes reexamination proceeding is pending for the same patent and prosecution in the prior inter partes reexamination proceeding has not been terminated, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger is ordered, the merged examination will normally result in the issuance and publication of a single reexamination certificate under § 1.997.
                (b) An inter partes reexamination proceeding filed under § 1.913 which is merged with an ex parte reexamination proceeding filed under § 1.510 will result in the merged proceeding being governed by §§ 1.902 through 1.997, except that the rights of any third party requester of the ex parte reexamination shall be governed by §§ 1.510 through 1.560.
                [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]

                § 1.991
                Merger of concurrent reissue application and inter partes reexamination proceeding.
                If a reissue application and an inter partes reexamination proceeding on which an order pursuant to § 1.931 has been mailed are pending concurrently on a patent, a decision may be made to merge the two proceedings or to suspend one of the two proceedings. Where merger of a reissue application and an inter partes reexamination proceeding is ordered, the merged proceeding will be conducted in accordance with §§ 1.171 through 1.179, and the patent owner will be required to place and maintain the same claims in the reissue application and the inter partes reexamination proceeding during the pendency of the merged proceeding. In a merged proceeding the third party requester may participate to the extent provided under §§ 1.902 through 1.997 and 41.60 through 41.81, except that such participation shall be limited to issues within the scope of inter partes reexamination. The examiner's actions and any responses by the patent owner or third party requester in a merged proceeding will apply to both the reissue application and the inter partes reexamination proceeding and be physically entered into both files. Any inter partes reexamination proceeding merged with a reissue application shall be concluded by the grant of the reissued patent.
                [72 FR 18907, Apr. 16, 2007]

                § 1.993
                Suspension of concurrent interference and inter partes reexamination proceeding.
                If a patent in the process of inter partes reexamination is or becomes involved in an interference or trial before the Patent Trial and Appeal Board, the Director may suspend the inter partes reexamination, interference, or trial. The Director will not consider a request to suspend an interference or trial unless a motion under § 41.121(a)(3) of this title to suspend the interference or trial has been presented to, and denied by, an administrative patent judge and the request is filed within ten (10) days of a decision by an administrative patent judge denying the motion for suspension or such other time as the administrative patent judge may set.
                [77 FR 46629, Aug. 6, 2012]

                § 1.995
                Third party requester's participation rights preserved in merged proceeding.

                When a third party requester is involved in one or more proceedings, including an inter partes reexamination proceeding, the merger of such proceedings will be accomplished so as to preserve the third party requester's right to participate to the extent specifically provided for in these regulations. In merged proceedings involving different requesters, any paper filed by one party in the merged proceeding shall be served on all other parties of the merged proceeding.

              Reexamination Certificate in Inter Partes Reexamination

                § 1.997
                Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.
                (a) To conclude an inter partes reexamination proceeding, the Director will issue and publish an inter partes reexamination certificate in accordance with 35 U.S.C. 316 setting forth the results of the inter partes reexamination proceeding and the content of the patent following the inter partes reexamination proceeding.

                (b) A certificate will be issued and published in each patent in which an inter partes reexamination proceeding has been ordered under § 1.931. Any statutory disclaimer filed by the patent owner will be made part of the certificate.

                (c) The certificate will be sent to the patent owner at the address as provided for in § 1.33(c). A copy of the certificate will also be sent to the third party requester of the inter partes reexamination proceeding.
                (d) If a certificate has been issued and published which cancels all of the claims of the patent, no further Office proceedings will be conducted with that patent or any reissue applications or any reexamination requests relating thereto.
                (e) If the inter partes reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.991, the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 316.

                (f) A notice of the issuance of each certificate under this section will be published in the Official Gazette.

                [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]

            Subpart I—International Design Application

              Source:
              80 FR 17964, Apr. 2, 2015, unless otherwise noted.

              General Information

                § 1.1001
                Definitions related to international design applications.
                (a) Article as used in this subpart means an article of the Hague Agreement;
                (b) Regulations as used in this subpart, when capitalized, means the “Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement”;
                (c) Rule as used in this subpart, when capitalized, means one of the Regulations;
                (d) Administrative Instructions as used in this subpart means the Administrative Instructions referred to in Rule 34;
                (e) 1960 Act as used in this subpart means the Act signed at the Hague on November 28, 1960, of the Hague Agreement;
                (f) Other terms and expressions in subpart I not defined in this section are as defined in Article 1, Rule 1, and 35 U.S.C. 381.

                § 1.1002
                The United States Patent and Trademark Office as an office of indirect filing.
                (a) The United States Patent and Trademark Office, as an office of indirect filing, shall accept international design applications where the applicant's Contracting Party is the United States.
                (b) The major functions of the United States Patent and Trademark Office as an office of indirect filing include:
                (1) Receiving and according a receipt date to international design applications;
                (2) Collecting and, when required, transmitting fees due for processing international design applications;
                (3) Determining compliance with applicable requirements of part 5 of this chapter; and
                (4) Transmitting an international design application to the International Bureau, unless prescriptions concerning national security prevent the application from being transmitted.

                § 1.1003
                The United States Patent and Trademark Office as a designated office.
                (a) The United States Patent and Trademark Office will act as a designated office (“United States Designated Office”) for international design applications in which the United States has been designated as a Contracting Party in which protection is sought.
                (b) The major functions of the United States Designated Office include:
                (1) Accepting for national examination international design applications which satisfy the requirements of the Hague Agreement, the Regulations, and the regulations;
                (2) Performing an examination of the international design application in accordance with 35 U.S.C. chapter 16; and
                (3) Communicating the results of examination to the International Bureau.

                § 1.1004
                The International Bureau.
                (a) The International Bureau is the World Intellectual Property Organization located at Geneva, Switzerland. It is the international intergovernmental organization which acts as the coordinating body under the Hague Agreement and the Regulations.
                (b) The major functions of the International Bureau include:
                (1) Receiving international design applications directly from applicants and indirectly from an office of indirect filing;
                (2) Collecting required fees and crediting designation fees to the accounts of the Contracting Parties concerned;
                (3) Reviewing international design applications for compliance with prescribed formal requirements;
                (4) Translating international design applications into the required languages for recordation and publication;
                (5) Registering international designs in the International Register where the international design application complies with the applicable requirements;
                (6) Publishing international registrations in the International Designs Bulletin; and
                (7) Sending copies of the publication of the international registration to each designated office.

                § 1.1005
                Display of currently valid control number under the Paperwork Reduction Act.

                (a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.), the collection of information in this subpart has been reviewed and approved by the Office of Management and Budget under control number 0651-0075.

                (b) Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid Office of Management and Budget control number. This section constitutes the display required by 44 U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of information under Office of Management and Budget control number 0651-0075 (see 5 CFR 1320.5(b)(2)(ii)(D)).

              Who May File an International Design Application

                § 1.1011
                Applicant for international design application.
                (a) Only persons who are nationals of the United States or who have a domicile, a habitual residence, or a real and effective industrial or commercial establishment in the territory of the United States may file international design applications through the United States Patent and Trademark Office.
                (b) Although the United States Patent and Trademark Office will accept international design applications filed by any person referred to in paragraph (a) of this section, an international design application designating the United States may be refused by the Office as a designated office if the applicant is not a person qualified under 35 U.S.C. chapter 11 to be an applicant.

                § 1.1012
                Applicant's Contracting Party.
                In order to file an international design application through the United States Patent and Trademark Office as an office of indirect filing, the United States must be applicant's Contracting Party (Articles 4 and 1(xiv)).

              The International Design Application

                § 1.1021
                Contents of the international design application.
                (a) Mandatory contents. The international design application shall be in English, French, or Spanish (Rule 6(1)) and shall contain or be accompanied by:
                (1) A request for international registration under the Hague Agreement (Article 5(1)(i));
                (2) The prescribed data concerning the applicant (Article 5(1)(ii) and Rule 7(3)(i) and (ii));
                (3) The prescribed number of copies of a reproduction or, at the choice of the applicant, of several different reproductions of the industrial design that is the subject of the international design application, presented in the prescribed manner; however, where the industrial design is two-dimensional and a request for deferment of publication is made in accordance with Article 5(5), the international design application may, instead of containing reproductions, be accompanied by the prescribed number of specimens of the industrial design (Article 5(1)(iii));
                (4) An indication of the product or products that constitute the industrial design or in relation to which the industrial design is to be used, as prescribed (Article 5(1)(iv) and Rule 7(3)(iv));
                (5) An indication of the designated Contracting Parties (Article 5(1)(v));
                (6) The prescribed fees (Article 5(1)(vi) and Rule 12(1));
                (7) The Contracting Party or Parties in respect of which the applicant fulfills the conditions to be the holder of an international registration (Rule 7(3)(iii));
                (8) The number of industrial designs included in the international design application, which may not exceed 100, and the number of reproductions or specimens of the industrial designs accompanying the international design application (Rule 7(3)(v));
                (9) The amount of the fees being paid and the method of payment, or instructions to debit the required amount of fees to an account opened with the International Bureau, and the identification of the party effecting the payment or giving the instructions (Rule 7(3)(vii)); and
                (10) An indication of applicant's Contracting Party as required under Rule 7(4)(a).
                (b) Additional mandatory contents required by certain Contracting Parties. (1) Where the international design application contains the designation of a Contracting Party that requires, pursuant to Article 5(2), any of the following elements, then the international design application shall contain such required element(s):
                (i) Indications concerning the identity of the creator of the industrial design that is the subject of that application (Rule 11(1));
                (ii) A brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application (Rule 11(2));
                (iii) A claim (Rule 11(3)).
                (2) Where the international design application contains the designation of a Contracting Party that has made a declaration under Rule 8(1), then the international application shall contain the statement, document, oath or declaration specified in that declaration (Rule 7(4)(c)).
                (c) Optional contents. The international design application may contain:
                (1) Two or more industrial designs, subject to the prescribed conditions (Article 5(4) and Rule 7(7));
                (2) A request for deferment of publication (Article 5(5) and Rule 7(5)(e)) or a request for immediate publication (Rule 17);
                (3) An element referred to in item (i) or (ii) of Article 5(2)(b) of the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where that element is not required in consequence of a notification in accordance with Article 5(2)(a) of the Hague Agreement or in consequence of a requirement under Article 8(4)(a) of the 1960 Act (Rule 7(5)(a));
                (4) The name and address of applicant's representative, as prescribed (Rule 7(5)(b));
                (5) A claim of priority of one or more earlier filed applications in accordance with Article 6 and Rule 7(5)(c);

                (6) A declaration, for purposes of Article 11 of the Paris Convention, that the product or products which constitute the industrial design or in which the industrial design is incorporated have been shown at an official or officially recognized international exhibition, together with the place where the exhibition was held and the date on which the product or products were first exhibited there and, where less than all the industrial designs contained in the international design application are concerned, the indication of those industrial designs to which the declaration relates or does not relate (Rule 7(5)(d));
                (7) Any declaration, statement or other relevant indication as may be specified in the Administrative Instructions (Rule 7(5)(f));
                (8) A statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned (Rule 7(5)(g));
                (9) A proposed translation of any text matter contained in the international design application for purposes of recording and publication (Rule 6(4)).
                (d) Required contents where the United States is designated. In addition to the mandatory requirements set forth in paragraph (a) of this section, an international design application that designates the United States shall contain or be accompanied by:
                (1) A claim (§§ 1.1021(b)(1)(iii) and 1.1025);

                (2) Indications concerning the identity of the creator (i.e., the inventor, see § 1.9(d)) in accordance with Rule 11(1); and
                (3) The inventor's oath or declaration (§§ 1.63 and 1.64). The requirements in §§ 1.63(b) and 1.64(b)(4) to identify each inventor by his or her legal name, mailing address, and residence, if an inventor lives at a location which is different from the mailing address, and the requirement in § 1.64(b)(2) to identify the residence and mailing address of the person signing the substitute statement will be considered satisfied by the presentation of such information in the international design application prior to international registration.

                § 1.1022
                Form and signature.
                (a) The international design application shall be presented on the official form (Rules 7(1) and 1(vi)).
                (b) The international design application shall be signed by the applicant.

                § 1.1023
                Filing date of an international design application in the United States.
                (a) Subject to paragraph (b) of this section, the filing date of an international design application in the United States is the date of international registration determined by the International Bureau under the Hague Agreement (35 U.S.C. 384 and 381(a)(5)).
                (b) Where the applicant believes the international design application is entitled under the Hague Agreement to a filing date in the United States other than the date of international registration, the applicant may petition the Director under this paragraph to accord the international design application a filing date in the United States other than the date of international registration. Such petition must be accompanied by the fee set forth in § 1.17(f) and include a showing to the satisfaction of the Director that the international design application is entitled to such filing date.

                § 1.1024
                The description.
                An international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproduction pursuant to Rule 7(5)(a) describing the view or views of the reproductions.

                § 1.1025
                The claim.
                The specific wording of the claim in an international design application designating the United States shall be in formal terms to the ornamental design for the article (specifying name of article) as shown, or as shown and described. More than one claim is neither required nor permitted for purposes of the United States.

                § 1.1026
                Reproductions.
                Reproductions shall comply with the requirements of Rule 9 and Part Four of the Administrative Instructions.

                § 1.1027
                Specimens.
                Where a request for deferment of publication has been filed in respect of a two-dimensional industrial design, the international design application may include specimens of the design in accordance with Rule 10 and Part Four of the Administrative Instructions. Specimens are not permitted in an international design application that designates the United States or any other Contracting Party which does not permit deferment of publication.

                § 1.1028
                Deferment of publication.
                The international design application may contain a request for deferment of publication, provided the application does not designate the United States or any other Contracting Party which does not permit deferment of publication.

              Fees

                § 1.1031
                International design application fees.
                (a) International design applications filed through the Office as an office of indirect filing are subject to payment of a transmittal fee (35 U.S.C. 382(b) and Article 4(2)) in the amount of:

                    By a micro entity (§ 1.29)
                    $30.00

                    By a small entity (§ 1.27(a))
                    60.00

                    By other than a small or micro entity
                    120.00

                (b) The Schedule of Fees annexed to the Regulations (Rule 27(1)), a list of individual designation fee amounts, and a fee calculator may be viewed on the Web site of the World Intellectual Property Organization, currently available at http://www.wipo.int/hague.

                (c) The following fees required by the International Bureau may be paid either directly to the International Bureau or through the Office as an office of indirect filing in the amounts specified on the World Intellectual Property Organization Web site described in paragraph (b) of this section:
                (1) International application fees (Rule 12(1)); and
                (2) Fee for descriptions exceeding 100 words (Rule 11(2)).
                (d) The fees referred to in paragraph (c) of this section may be paid as follows:

                (1) Directly to the International Bureau in Swiss currency (see Administrative Instruction 801); or
                (2) Through the Office as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee required under paragraph (a) of this section. Any payment through the Office must be in U.S. dollars. Applicants paying the fees in paragraph (c) of this section through the Office may be subject to a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.
                (e) Payment of the fees referred to in Article 17 and Rule 24 for renewing an international registration (“renewal fees”) is not required to maintain a U.S. patent issuing on an international design application in force. Renewal fees, if required, must be submitted directly to the International Bureau. Any renewal fee submitted to the Office will not be transmitted to the International Bureau.
                (f) The designation fee for the United States shall consist of:
                (1) A first part established in Swiss currency pursuant to Hague Rule 28 based on the combined amounts of the basic filing fee (§ 1.16(b)), search fee (§ 1.16(l)), and examination fee (§ 1.16(p)) for a design application. The first part is payable at the time of filing the international design application; and
                (2) A second part (issue fee) as provided in § 1.18(b). The second part is payable within the period specified in a notice of allowance (§ 1.311).
                [80 FR 17964, Apr. 2, 2015, as amended at 82 FR 52816, Nov. 14, 2017]

              Representation

                § 1.1041
                Representation in an international design application.
                (a) The applicant may appoint a representative before the International Bureau in accordance with Rule 3.

                (b) Applicants of international design applications may be represented before the Office as an office of indirect filing by a practitioner registered (§ 11.6) or granted limited recognition (§ 11.9(a) or (b)) to practice before the Office in patent matters. Such practitioner may act pursuant to § 1.34 or pursuant to appointment by the applicant. The appointment must be in writing signed by the applicant, must give the practitioner power to act on behalf of the applicant, and must specify the name and registration number or limited recognition number of each practitioner. An appointment of a representative made in the international design application pursuant to Rule 3(2) that complies with the requirements of this paragraph will be effective as an appointment before the Office as an office of indirect filing.

                § 1.1042
                Correspondence respecting international design applications filed with the Office as an office of indirect filing.
                The applicant may specify a correspondence address for correspondence sent by the Office as an office of indirect filing. Where no such address has been specified, the Office will use as the correspondence address the address of applicant's appointed representative (§ 1.1041) or, where no representative is appointed, the address as specified in Administrative Instruction 302.

              Transmittal of International Design Application to the International Bureau

                § 1.1045
                Procedures for transmittal of international design application to the International Bureau.
                (a) Subject to paragraph (b) of this section and payment of the transmittal fee set forth in § 1.1031(a), transmittal of the international design application to the International Bureau shall be made by the Office as provided by Rule 13(1). At the same time as it transmits the international design application to the International Bureau, the Office shall notify the International Bureau of the date on which it received the application. The Office shall also notify the applicant of the date on which it received the application and of the transmittal of the international design application to the International Bureau.
                (b) No copy of an international design application may be transmitted to the International Bureau, a foreign designated office, or other foreign authority by the Office or the applicant, unless the applicable requirements of part 5 of this chapter have been satisfied.
                (c) Once transmittal of the international design application has been effected under paragraph (a) of this section, except for matters properly before the United States Patent and Trademark Office as an office of indirect filing or as a designated office, all further correspondence concerning the application should be sent directly to the International Bureau. The United States Patent and Trademark Office will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau. Any reply to an invitation sent to the applicant by the International Bureau must be filed directly with the International Bureau, and not with the Office, to avoid abandonment or other loss of rights under Article 8.

              Relief From Prescribed Time Limits; Conversion to a Design Application Under 35 U.S.C. Chapter 16

                § 1.1051
                Relief from prescribed time limits.
                (a) If the delay in an applicant's failure to act within prescribed time limits under the Hague Agreement in connection with requirements pertaining to an international design application was unintentional, a petition may be filed pursuant to this section to excuse the failure to act as to the United States. A grantable petition pursuant to this section must be accompanied by:
                (1) A copy of any invitation sent from the International Bureau setting a prescribed time limit for which applicant failed to timely act;
                (2) The reply required under paragraph (c) of this section, unless previously filed;
                (3) The fee as set forth in § 1.17(m);

                (4) A certified copy of the originally filed international design application, unless a copy of the international design application was previously communicated to the Office from the International Bureau or the international design application was filed with the Office as an office of indirect filing, and a translation thereof into the English language if it was filed in another language;
                (5) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Director may require additional information where there is a question whether the delay was unintentional; and
                (6) A terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (d) of this section.
                (b) Any request for reconsideration or review of a decision refusing to excuse the applicant's failure to act within prescribed time limits in connection with requirements pertaining to an international design application upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to excuse or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of § 1.136.
                (c) Reply. The reply required may be:
                (1) The filing of a continuing application. If the international design application has not been subject to international registration, the reply must also include a grantable petition under § 1.1023(b) to accord the international design application a filing date; or
                (2) A grantable petition under § 1.1052, where the international design application was filed with the Office as an office of indirect filing.
                (d) Terminal disclaimer. Any petition pursuant to this section must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period beginning on the due date for the reply for which applicant failed to timely act and ending on the date of filing of the reply required under paragraph (c) of this section and must also apply to any patent granted on a continuing design application that contains a specific reference under 35 U.S.C. 120, 121, 365(c) or 386(c) to the application for which relief under this section is sought.

                § 1.1052
                Conversion to a design application under 35 U.S.C. chapter 16.
                (a) An international design application designating the United States filed with the Office as an office of indirect filing and meeting the requirements under § 1.53(b) for a filing date for an application for a design patent may, on petition under this section, be converted to an application for a design patent under § 1.53(b) and accorded a filing date as provided therein. A petition under this section must be accompanied by the fee set forth in § 1.17(t) and be filed prior to publication of the international registration under Article 10(3). The conversion of an international design application to an application for a design patent under § 1.53(b) will not entitle applicant to a refund of the transmittal fee or any fee forwarded to the International Bureau, or the application of any such fee toward the filing fee, or any other fee, for the application for a design patent under § 1.53(b). The application for a design patent resulting from conversion of an international design application must also include the basic filing fee (§ 1.16(b)), the search fee (§ 1.16(l)), the examination fee (§ 1.16(p)), the inventor's oath or declaration (§ 1.63 or 1.64), and a surcharge if required by § 1.16(f).
                (b) An international design application will be converted to an application for a design patent under § 1.53(b) if a decision on petition under this section is granted prior to transmittal of the international design application to the International Bureau pursuant to § 1.1045. Otherwise, a decision granting a petition under this section will be effective to convert the international design application to an application for a design patent under § 1.53(b) only for purposes of the designation of the United States.
                (c) A petition under this section will not be granted in an abandoned international design application absent a grantable petition under § 1.1051.
                (d) An international design application converted under this section is subject to the regulations applicable to a design application filed under 35 U.S.C. chapter 16.

              National Processing of International Design Applications

                § 1.1061
                Rules applicable.
                (a) The rules relating to applications for patents for other inventions or discoveries are also applicable to international design applications designating the United States, except as otherwise provided in this chapter or required by the Articles or Regulations.
                (b) The provisions of § 1.74, § 1.84, except for § 1.84(c), and §§ 1.152 through 1.154 shall not apply to international design applications.

                § 1.1062
                Examination.
                (a) Examination. The Office shall make an examination pursuant to title 35, United States Code, of an international design application designating the United States.
                (b) Timing. For each international design application to be examined under paragraph (a) of this section, the Office shall, subject to Rule 18(1)(c)(ii), send to the International Bureau within 12 months from the publication of the international registration under Rule 26(3) a notification of refusal (§ 1.1063) where it appears that the applicant is not entitled to a patent under the law with respect to any industrial design that is the subject of the international registration.

                § 1.1063
                Notification of refusal.
                (a) A notification of refusal shall contain or indicate:
                (1) The number of the international registration;
                (2) The grounds on which the refusal is based;
                (3) A copy of a reproduction of the earlier industrial design and information concerning the earlier industrial design, where the grounds of refusal refer to similarity with an industrial design that is the subject of an earlier application or registration;
                (4) Where the refusal does not relate to all the industrial designs that are the subject of the international registration, those to which it relates or does not relate; and
                (5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.
                (b) Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. The requirements of § 1.111 shall apply to a reply to a notification of refusal.

                § 1.1064
                One independent and distinct design.
                (a) Only one independent and distinct design may be claimed in a nonprovisional international design application.
                (b) If the requirements under paragraph (a) of this section are not satisfied, the examiner shall in the notification of refusal or other Office action require the applicant in the reply to that action to elect one independent and distinct design for which prosecution on the merits shall be restricted. Such requirement will normally be made before any action on the merits but may be made at any time before the final action. Review of any such requirement is provided under §§ 1.143 and 1.144.

                § 1.1065
                Corrections and other changes in the International Register.
                (a) The effects of any correction in the International Register by the International Bureau pursuant to Rule 22 in a pending nonprovisional international design application shall be decided by the Office in accordance with the merits of each situation, subject to such other requirements as may be imposed. A patent issuing from an international design application may only be corrected in accordance with the provisions of title 35, United States Code, for correcting patents. Any correction under Rule 22 recorded by the International Bureau with respect to an abandoned nonprovisional international design application will generally not be acted upon by the Office and shall not be given effect unless otherwise indicated by the Office.
                (b) A recording of a partial change in ownership in the International Register pursuant to Rule 21(7) concerning a transfer of less than all designs shall not have effect in the United States.

                § 1.1066
                Correspondence address for a nonprovisional international design application.
                (a) Unless the correspondence address is changed in accordance with § 1.33(a), the Office will use as the correspondence address in a nonprovisional international design application the address according to the following order:
                (1) The correspondence address under § 1.1042;
                (2) The address of applicant's representative identified in the publication of the international registration; and
                (3) The address of the applicant identified in the publication of the international registration.
                (b) Reference in the rules to the correspondence address set forth in § 1.33(a) shall be construed to include a reference to this section for a nonprovisional international design application.

                § 1.1067
                Title, description, and inventor's oath or declaration.
                (a) The title of the design must designate the particular article. Where a nonprovisional international design application does not contain a title of the design, the Office may establish a title. No description, other than a reference to the drawing, is ordinarily required in a nonprovisional international design application.

                (b) An international design application designating the United States must include the inventor's oath or declaration. See § 1.1021(d). If the applicant is notified in a notice of allowability that an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each named inventor has not been filed, the applicant must file each required oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, no later than the date on which the issue fee is paid to avoid abandonment. This time period is not extendable under § 1.136 (see § 1.136(c)).

                § 1.1068
                Statement of grant of protection.
                Upon issuance of a patent on an international design application designating the United States, the Office may send to the International Bureau a statement to the effect that protection is granted in the United States to those industrial design or designs that are the subject of the international registration and covered by the patent.

                § 1.1070
                Notification of Invalidation.
                (a) Where a design patent that was granted from an international design application is invalidated in the United States, and the invalidation is no longer subject to any review or appeal, the patentee shall inform the Office.
                (b) After receiving a notification of invalidation under paragraph (a) of this section or through other means, the Office will notify the International Bureau in accordance with Hague Rule 20.

                § 1.1071
                Grant of protection for an industrial design only upon issuance of a patent.
                A grant of protection for an industrial design that is the subject of an international registration shall only arise in the United States through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171, and in accordance with 35 U.S.C. 153.
                PART 2—RULES OF PRACTICE IN TRADEMARK CASES

                  Editorial Note:
                  Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations.

          Pt. 3
          PART 3—ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

            Sec.
            3.1
            Definitions.

              Documents Eligible for Recording
              3.11
              Documents which will be recorded.
              3.16
              Assignability of trademarks prior to filing of an allegation of use.

              Requirements for Recording
              3.21
              Identification of patents and patent applications.
              3.24
              Requirements for documents and cover sheets relating to patents and patent applications.
              3.25
              Recording requirements for trademark applications and registrations.
              3.26
              English language requirement.

              3.27
              Mailing address for submitting documents to be recorded.
              3.28
              Requests for recording.

              Cover Sheet Requirements
              3.31
              Cover sheet content.
              3.34
              Correction of cover sheet errors.

              Fees
              3.41
              Recording fees.

              Date and Effect of Recording
              3.51
              Recording date.
              3.54
              Effect of recording.
              3.56
              Conditional assignments.
              3.58
              Governmental registers.

              Domestic Representative
              3.61
              Domestic representative.

              Action Taken by Assignee
              3.71
              Prosecution by assignee.
              3.73
              Establishing right of assignee to take action.

              Issuance to Assignee
              3.81
              Issue of patent to assignee.
              3.85
              Issue of registration to assignee.

            Authority:
            15 U.S.C. 1123; 35 U.S.C. 2(b)(2).

            Source:
            57 FR 29642, July 6, 1992, unless otherwise noted.

            Editorial Note:
            Nomenclature changes to part 3 appear at 68 FR 14337, Mar. 25, 2003.

            § 3.1
            Definitions.
            For purposes of this part, the following definitions shall apply:

              Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051, or 15 U.S.C. 1126, unless otherwise indicated.

              Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.

              Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.

              Office means the United States Patent and Trademark Office.

              Recorded document means a document which has been recorded in the Office pursuant to § 3.11.

              Registration means a trademark registration issued by the Office.
            [69 FR 29878, May 26, 2004, as amended at 80 FR 17969, Apr. 2, 2015]

            Documents Eligible for Recording

              § 3.11
              Documents which will be recorded.
              (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
              (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
              (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.
              [62 FR 53202, Oct. 10, 1997, as amended at 70 FR 1824, Jan. 11, 2005; 70 FR 54267, Sept. 14, 2005; 78 FR 62408, Oct. 21, 2013]

              § 3.16
              Assignability of trademarks prior to filing of an allegation of use.

              Before an allegation of use under either 15 U.S.C. 1051(c) or 15 U.S.C. 1051(d) is filed, an applicant may only assign an application to register a mark under 15 U.S.C. 1051(b) to a successor to the applicant's business, or portion of the business to which the mark pertains, if that business is ongoing and existing.
              [64 FR 48926, Sept. 8, 1999]

            Requirements for Recording

              § 3.21
              Identification of patents and patent applications.
              An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.
              [80 FR 17969, Apr. 2, 2015]

              § 3.24
              Requirements for documents and cover sheets relating to patents and patent applications.
              (a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (81/2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
              (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (81/2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.
              [69 FR 29879, May 26, 2004]

              § 3.25
              Recording requirements for trademark applications and registrations.
              (a) Documents affecting title. To record documents affecting title to a trademark application or registration, a legible cover sheet (see § 3.31) and one of the following must be submitted:
              (1) A copy of the original document;
              (2) A copy of an extract from the document evidencing the effect on title; or
              (3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.
              (b) Name changes. Only a legible cover sheet is required (See § 3.31).
              (c) All documents. (1) For electronic submissions: All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (81/2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides.
              (2) For paper or facsimile submissions: All documents should be submitted on white and non-shiny paper that is either 81/2 by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case. Only one side of each page may be used. The Office will not return recorded documents, so original documents should not be submitted for recording.
              [69 FR 29879, May 26, 2004]

              § 3.26
              English language requirement.
              The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
              [62 FR 53202, Oct. 10, 1997]

              § 3.27
              Mailing address for submitting documents to be recorded.
              Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.
              [69 FR 29879, May 26, 2004]

              § 3.28
              Requests for recording.
              Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.
              [70 FR 56128, Sept. 26, 2005]

            Cover Sheet Requirements

              § 3.31
              Cover sheet content.
              (a) Each patent or trademark cover sheet required by § 3.28 must contain:
              (1) The name of the party conveying the interest;
              (2) The name and address of the party receiving the interest;
              (3) A description of the interest conveyed or transaction to be recorded;
              (4) Identification of the interests involved:
              (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
              (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
              (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
              (6) The date the document was executed;
              (7) The signature of the party submitting the document. For an assignment document or name change filed electronically, the person who signs the cover sheet must either:
              (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g., /Thomas O'Malley III/) in the signature block on the electronic submission; or
              (ii) Sign the cover sheet using some other form of electronic signature specified by the Director.

              (8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.

              (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
              (c) Each patent cover sheet required by § 3.28 seeking to record a governmental interest as provided by § 3.11(b) must:
              (1) Indicate that the document relates to a Government interest; and
              (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see § 3.41(b)).
              (d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
              (e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
              (f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
              (g) The cover sheet required by § 3.28 seeking to record a joint research agreement or an excerpt of a joint research agreement as provided by § 3.11(c) must:
              (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
              (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
              (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
              (4) Indicate the date the joint research agreement was executed.
              (h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.
              [57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997; 64 FR 48927, Sept. 8, 1999; 67 FR 79523, Dec. 30, 2002; 69 FR 29879, May 26, 2004; 70 FR 1824, Jan. 11, 2005; 70 FR 56128, Sept. 26, 2005; 73 FR 67775, Nov. 17, 2008; 77 FR 48825, Aug. 14, 2012; 78 FR 62408, Oct. 21, 2013]

              § 3.34
              Correction of cover sheet errors.
              (a) An error in a cover sheet recorded pursuant to § 3.11 will be corrected only if:
              (1) The error is apparent when the cover sheet is compared with the recorded document to which it pertains, and
              (2) A corrected cover sheet is filed for recordation.
              (b) The corrected cover sheet must be accompanied by a copy of the document originally submitted for recording and by the recording fee as set forth in § 3.41.
              [69 FR 29879, May 26, 2004]

            Fees

              § 3.41
              Recording fees.

              (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
              (b) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if:
              (1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
              (2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27.
              [63 FR 52159, Sept. 30, 1998, as amended at 69 FR 29879, May 26, 2004]

            Date and Effect of Recording

              § 3.51
              Recording date.
              The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office. A document which does not comply with the identification requirements of § 3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available. The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document. The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service. If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.
              [62 FR 53203, Oct. 10, 1997]

              § 3.54
              Effect of recording.
              The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.

              § 3.56
              Conditional assignments.
              Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other condition subsequent, if recorded in the Office, are regarded as absolute assignments for Office purposes until cancelled with the written consent of all parties or by the decree of a court of competent jurisdiction. The Office does not determine whether such conditions have been fulfilled.

              § 3.58
              Governmental registers.
              (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12.

              (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.
              [62 FR 53203, Oct. 10, 1997]

            Domestic Representative

              § 3.61
              Domestic representative.
              If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
              [67 FR 79522, Dec. 30, 2002]

            Action Taken by Assignee

              § 3.71
              Prosecution by assignee.
              (a) Patents—conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may conduct prosecution of a national patent application as the applicant under § 1.46 of this title, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner. Conflicts between purported assignees are handled in accordance with § 3.73(c)(3).
              (b) Patents—assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under § 1.46 of this title or a supplemental examination or reexamination proceeding are:
              (1) A single assignee. An assignee of the entire right, title and interest in the application or patent, or
              (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent. A partial assignee is any assignee having less than the entire right, title and interest in the application or patent. The word “assignee” as used in this chapter means with respect to patent matters the single assignee of the entire right, title and interest in the application or patent if there is such a single assignee, or all of the partial assignees, or all of the partial assignee and inventors who have not assigned their interest in the application or patent, who together own the entire right, title and interest in the application or patent.
              (c) Patents—Becoming of record. An assignee becomes of record as the applicant in a national patent application under § 1.46 of this title, and in a supplemental examination or reexamination proceeding, by filing a statement in compliance with § 3.73(c) that is signed by a party who is authorized to act on behalf of the assignee.
              (d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee's trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
              [65 FR 54682, Sept. 8, 2000, as amended at 77 FR 48825, Aug. 14, 2012]

              § 3.73
              Establishing right of assignee to take action.
              (a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

              (b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

              (1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or

              (2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
              (c)(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

              (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or

              (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

              (2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
              (i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
              (ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties own the entire right, title and interest.
              (3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.
              (d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
              (1) Including a statement that the person signing the submission is authorized to act on behalf of the assignee;
              (2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
              (3) For patent matters only, being signed by a practitioner of record.
              [77 FR 48825, Aug. 14, 2012]

            Issuance to Assignee

              § 3.81
              Issue of patent to assignee.
              (a) With payment of the issue fee: An application may issue in the name of the assignee consistent with the application's assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
              (b) After payment of the issue fee: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.
              (c) Partial assignees. (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.
              (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
              [69 FR 29879, May 26, 2004]

              § 3.85
              Issue of registration to assignee.
              The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.

          Pt. 4
          PART 4—COMPLAINTS REGARDING INVENTION PROMOTERS

            Sec.
            4.1
            Complaints regarding invention promoters.
            4.2
            Definitions.
            4.3
            Submitting complaints.
            4.4
            Invention promoter reply.
            4.5
            Notice by publication.
            4.6
            Attorneys and Agents.

            Authority:
            35 U.S.C. 2(b)(2) and 297.

            Source:
            65 FR 3129, Jan. 20, 2000, unless otherwise noted.

            § 4.1
            Complaints regarding invention promoters.
            These regulations govern the Patent and Trademark Office's (Office) responsibilities under the Inventors' Rights Act of 1999, which can be found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to provide a forum for the publication of complaints concerning invention promoters. The Office will not conduct any independent investigation of the invention promoter. Although the Act provides additional civil remedies for persons injured by invention promoters, those remedies must be pursued by the injured party without the involvement of the Office.

            § 4.2
            Definitions.
            (a) Invention Promoter means any person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, and who holds itself out through advertising in any mass media as providing such services, but does not include—
            (1) Any department or agency of the Federal Government or of a State or local government;
            (2) Any nonprofit, charitable, scientific, or educational organization qualified under applicable State law or described under section 170(b)(1)(A) of the Internal Revenue Code of 1986;
            (3) Any person or entity involved in the evaluation to determine commercial potential of, or offering to license or sell, a utility patent or a previously filed nonprovisional utility patent application;
            (4) Any party participating in a transaction involving the sale of the stock or assets of a business; or
            (5) Any party who directly engages in the business of retail sales of products or the distribution of products.
            (b) Customer means any individual who enters into a contract with an invention promoter for invention promotion services.
            (c) Contract for Invention Promotion Services means a contract by which an invention promoter undertakes invention promotion services for a customer.
            (d) Invention Promotion Services means the procurement or attempted procurement for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer.

            § 4.3
            Submitting complaints.

            (a) A person may submit a complaint concerning an invention promoter with the Office. A person submitting a complaint should understand that the complaint may be forwarded to the invention promoter and may become publicly available. The Office will not accept any complaint that requests that it be kept confidential.
            (b) A complaint must be clearly marked, or otherwise identified, as a complaint under these rules. The complaint must include:
            (1) The name and address of the complainant;
            (2) The name and address of the invention promoter;
            (3) The name of the customer;
            (4) The invention promotion services offered or performed by the invention promoter;
            (5) The name of the mass media in which the invention promoter advertised providing such services;
            (6) An explanation of the relationship between the customer and the invention promoter; and
            (7) A signature of the complainant.
            (c) The complaint should fairly summarize the action of the invention promoter about which the person complains. Additionally, the complaint should include names and addresses of persons believed to be associated with the invention promoter. Complaints, and any replies, must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
            (d) Complaints that do not provide the information requested in paragraphs (b) and (c) of this section will be returned. If complainant's address is not provided, the complaint will be destroyed.
            (e) No originals of documents should be included with the complaint.
            (f) A complaint can be withdrawn by the complainant or the named customer at any time prior to its publication.
            [65 FR 3129, Jan. 20, 2000, as amended at 68 FR 14338, Mar. 25, 2003]

            § 4.4
            Invention promoter reply.
            (a) If a submission appears to meet the requirements of a complaint, the invention promoter named in the complaint will be notified of the complaint and given 30 days to respond. The invention promoter's response will be made available to the public along with the complaint. If the invention promoter fails to reply within the 30-day time period set by the Office, the complaint will be made available to the public. Replies sent after the complaint is made available to the public will also be published.
            (b) A response must be clearly marked, or otherwise identified, as a response by an invention promoter. The response must contain:
            (1) The name and address of the invention promoter;
            (2) A reference to a complaint forwarded to the invention promoter or a complaint previously published;
            (3) The name of the individual signing the response; and
            (4) The title or authority of the individual signing the response.

            § 4.5
            Notice by publication.

            If the copy of the complaint that is mailed to the invention promoter is returned undelivered, then the USPTO will primarily publish a Notice of Complaint Received on the USPTO's Internet home page at http://www.uspto.gov. Only where the USPTO's Web site is unavailable for publication will the USPTO publish the Notice of Complaint in the Official Gazette and/or the Federal Register. The invention promoter will be given 30 days from such notice to submit a reply to the Notice of Complaint. If the USPTO does not receive a reply from the invention promoter within 30 days, the complaint alone will become publicly available.
            [68 FR 9553, Feb. 28, 2003]

            § 4.6
            Attorneys and Agents.

            Complaints against registered patent attorneys and agents will not be treated under this section, unless a complaint fairly demonstrates that invention promotion services are involved. Persons having complaints about registered patent attorneys or agents should contact the Office of Enrollment and Discipline at Mail Stop OED, Director of the United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450, and the attorney discipline section of the attorney's state licensing bar if an attorney is involved.
            [68 FR 14338, Mar. 25, 2003]

          Pt. 5
          PART 5—SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES

              Secrecy Orders
              Sec.
              5.1
              Applications and correspondence involving national security.
              5.2
              Secrecy order.
              5.3
              Prosecution of application under secrecy orders; withholding patent.
              5.4
              Petition for rescission of secrecy order.
              5.5
              Permit to disclose or modification of secrecy order.
              5.6-5.8
              [Reserved]

              Licenses for Foreign Exporting and Filing
              5.11
              License for filing in, or exporting to, a foreign country an application on an invention made in the United States or technical data relating thereto.
              5.12
              Petition for license.
              5.13
              Petition for license; no corresponding application.
              5.14
              Petition for license; corresponding U.S. application.
              5.15
              Scope of license.
              5.16-5.17
              [Reserved]
              5.18
              Arms, ammunition, and implements of war.
              5.19
              Export of technical data.
              5.20
              Export of technical data relating to sensitive nuclear technology.
              5.25
              Petition for retroactive license.

              General
              5.31-5.33
              [Reserved]

            Authority:

            35 U.S.C. 2(b)(2), 41, 181-188, as amended by the Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2571 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; the Nuclear Non Proliferation Act of 1978; 22 U.S.C. 3201 et seq.; and the delegations in the regulations under these Acts to the Director (15 CFR 734.3(b)(1)(v), 22 CFR 125.04, and 10 CFR 810.7), as well as the Export Administration Act of 1979, 50 U.S.C. app. 2401 et seq.; the International Emergency Economic Powers Act, 50 U.S.C. 1701 et seq.; E.O. 12938, 59 FR 59099, 3 CFR, 1994 Comp., p. 950; E.O. 13222, 66 FR 44025, 3 CFR, 2001 Comp., p. 783; Notice of August 2, 2005, 70 FR 45273 (August 5, 2005).

            Source:
            24 FR 10381, Dec. 22, 1959, unless otherwise noted.

            Editorial Note:
            Nomenclature changes to part 5 appear at 68 FR 14338, Mar. 25, 2003.

            Secrecy Orders

              § 5.1
              Applications and correspondence involving national security.
              (a) All correspondence in connection with this part, including petitions, should be addressed to: Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
              (b) Definitions. (1) Application as used in this part includes provisional applications (§ 1.9(a)(2) of this chapter), nonprovisional applications (§ 1.9(a)(3)), international applications (§ 1.9(b)), or international design applications (§ 1.9(n)).
              (2) Foreign application as used in this part includes, for filing in a foreign country, foreign patent office, foreign patent agency, or international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, § 1.412) or as an office of indirect filing for international design applications (35 U.S.C. 382, § 1.1002)) any of the following: An application for patent, international application, international design application, or application for the registration of a utility model, industrial design, or model.
              (c) Patent applications and documents relating thereto that are national security classified (see § 1.9(i) of this chapter) and contain authorized national security markings (e.g., “Confidential,” “Secret” or “Top Secret”) are accepted by the Office. National security classified documents filed in the Office must be either hand-carried to Licensing and Review or mailed to the Office in compliance with paragraph (a) of this section.

              (d) The applicant in a national security classified patent application must obtain a secrecy order pursuant to § 5.2(a). If a national security classified patent application is filed without a notification pursuant to § 5.2(a), the Office will set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency in order to prevent abandonment of the application. If evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency is submitted by the applicant within the time period set by the Office, but the application has not been declassified or placed under a secrecy order pursuant to § 5.2(a), the Office will again set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to again obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency in order to prevent abandonment of the application.
              (e) An application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter if publication or disclosure of the application would be detrimental to national security. An application under national security review will not be published at least until six months from its filing date or three months from the date the application was referred to a defense agency, whichever is later. A national security classified patent application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter until the application is declassified and any secrecy order under § 5.2(a) has been rescinded.
              (f) Applications on inventions made outside the United States and on inventions in which a U.S. Government defense agency has a property interest will not be made available to defense agencies.
              [65 FR 54682, Sept. 8, 2000, as amended at 65 FR 57060, Sept. 20, 2000; 68 FR 14338, Mar. 25, 2003; 69 FR 29880, May 26, 2004; 80 FR 17969, Apr. 2, 2015]

              § 5.2
              Secrecy order.
              (a) When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner for Patents.
              (b) Any request for compensation as provided in 35 U.S.C. 183 must not be made to the Patent and Trademark Office, but directly to the department or agency which caused the secrecy order to be issued.
              (c) An application disclosing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section also falls within the scope of such secrecy order. Any such application that is pending before the Office must be promptly brought to the attention of Licensing and Review, unless such application is itself under a secrecy order pursuant to paragraph (a) of this section. Any subsequently filed application containing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section must either be hand-carried to Licensing and Review or mailed to the Office in compliance with § 5.1(a).
              [24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53203, Oct. 10, 1997; 65 FR 54683, Sept. 8, 2000]

              § 5.3
              Prosecution of application under secrecy orders; withholding patent.
              Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section:
              (a) National applications under secrecy order which come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant but unless otherwise specifically ordered by the Commissioner for Patents will not be set for hearing until the secrecy order is removed.

              (b) An interference or derivation will not be instituted involving a national application under secrecy order. An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the application remains under a secrecy order.

              (c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under § 1.311 of this chapter) does not require reply by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under § 1.311 of this chapter, or take such other action as may then be warranted.
              (d) International applications and international design applications under secrecy order will not be mailed, delivered, or otherwise transmitted to the international authorities or the applicant. International applications under secrecy order will be processed up to the point where, if it were not for the secrecy order, record and search copies would be transmitted to the international authorities or the applicant.
              (Pub. L. 94-131, 89 Stat. 685)
              [43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988; 62 FR 53203, Oct. 10, 1997; 69 FR 50002, Aug. 12, 2004; 77 FR 46629, Aug. 6, 2012; 80 FR 17969, Apr. 2, 2015]

              § 5.4
              Petition for rescission of secrecy order.
              (a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate.
              (b) The petition must recite any and all facts that purport to render the order ineffectual or futile if this is the basis of the petition. When prior publications or patents are alleged the petition must give complete data as to such publications or patents and should be accompanied by copies thereof.
              (c) The petition must identify any contract between the Government and any of the principals, under which the subject matter of the application or any significant part thereof was developed, or to which the subject matter is otherwise related. If there is no such contract, the petition must so state.
              (d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within sixty days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued, will be notified of the time and place of hearing.
              [24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204, Oct. 10, 1997]

              § 5.5
              Permit to disclose or modification of secrecy order.
              (a) Consent to disclosure, or to the filing of an application abroad, as provided in 35 U.S.C. 182, shall be made by a “permit” or “modification” of the secrecy order.
              (b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any proposed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate.
              (c) In a petition for modification of a secrecy order to permit filing abroad, all countries in which it is proposed to file must be made known, as well as all attorneys, agents and others to whom the material will be consigned prior to being lodged in the foreign patent office. The petition should include a statement vouching for the loyalty and integrity of the proposed disclosees and where their clearance status in this or the foreign country is known all details should be given.
              (d) Consent to the disclosure of subject matter from one application under secrecy order may be deemed to be consent to the disclosure of common subject matter in other applications under secrecy order so long as not taken out of context in a manner disclosing material beyond the modification granted in the first application.

              (e) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection with repeated routine operation may petition for such consent in the form of a general permit. To be successful such petitions must ordinarily recite the security clearance status of the disclosees as sufficient for the highest classification of material that may be involved.
              [24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204 Oct. 10, 1997]

              §§ 5.6-5.8
              [Reserved]

            Licenses for Foreign Exporting and Filing

              § 5.11
              License for filing in, or exporting to, a foreign country an application on an invention made in the United States or technical data relating thereto.
              (a) A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign country, foreign patent office, foreign patent agency, or any international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, § 1.412) or as an office of indirect filing for international design applications (35 U.S.C. 382, § 1.1002)), if the invention was made in the United States, and:
              (1) An application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed; or
              (2) No application on the invention has been filed in the United States.
              (b) The license from the Commissioner for Patents referred to in paragraph (a) of this section would also authorize the export of technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign application without separately complying with the regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce), and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy).
              (c) Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce), and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon. The term “exported” means export as it is defined in 22 CFR part 120, 15 CFR part 734, and activities covered by 10 CFR part 810.
              (d) If a secrecy order has been issued under § 5.2, an application cannot be exported to, or filed in, a foreign country (including an international agency in a foreign country), except in accordance with § 5.5.
              (e) No license pursuant to paragraph (a) of this section is required:
              (1) If the invention was not made in the United States, or
              (2) If the corresponding United States application is not subject to a secrecy order under § 5.2, and was filed at least six months prior to the date on which the application is filed in a foreign country, or
              (3) For subsequent modifications, amendments and supplements containing additional subject matter to, or divisions of, a foreign patent application if:
              (i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign application;

              (ii) The corresponding United States application was not required to be made available for inspection under 35 U.S.C. 181; and
              (iii) Such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.
              (f) A license pursuant to paragraph (a) of this section can be revoked at any time upon written notification by the United States Patent and Trademark Office. An authorization to file a foreign application resulting from the passage of six months from the date of filing of a United States patent application may be revoked by the imposition of a secrecy order.
              [49 FR 13461, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 FR 53204, Oct. 10, 1997; 70 FR 56129, Sept. 26, 2005; 80 FR 17969, Apr. 2, 2015]

              § 5.12
              Petition for license.
              (a) Filing of an application on an invention made in the United States will be considered to include a petition for license under 35 U.S.C. 184 for the subject matter of the application. The filing receipt or other official notice will indicate if a license is granted. If the initial automatic petition is not granted, a subsequent petition may be filed under paragraph (b) of this section.
              (b) A petition for license must include the fee set forth in § 1.17(g) of this chapter, the petitioner's address, and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner. The petition should be presented in letter form.
              (35 U.S.C. 6, Pub. L. 97-247)
              [48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62 FR 53204, Oct. 10, 1997; 65 FR 54683, Sept. 8, 2000; 69 FR 56546, Sept. 21, 2004; 80 FR 17970, Apr. 2, 2015]

              § 5.13
              Petition for license; no corresponding application.
              If no corresponding national, international design, or international application has been filed in the United States, the petition for license under § 5.12(b) must also be accompanied by a legible copy of the material upon which a license is desired. This copy will be retained as a measure of the license granted.
              [80 FR 17970, Apr. 2, 2015]

              § 5.14
              Petition for license; corresponding U.S. application.
              (a) When there is a corresponding United States application on file, a petition for license under § 5.12(b) must also identify this application by application number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by the disclosure of the United States application.
              (b) Two or more United States applications should not be referred to in the same petition for license unless they are to be combined in the foreign or international application, in which event the petition should so state and the identification of each United States application should be in separate paragraphs.
              (c) Where the application to be filed or exported abroad contains matter not disclosed in the United States application or applications, including the case where the combining of two or more United States applications introduces subject matter not disclosed in any of them, a copy of the application as it is to be filed or exported abroad, must be furnished with the petition. If, however, all new matter in the application to be filed or exported is readily identifiable, the new matter may be submitted in detail and the remainder by reference to the pertinent United States application or applications.
              (Pub. L. 94-131, 89 Stat. 685)
              [43 FR 20471, May 11, 1978, as amended at 49 FR 13462, Apr. 4, 1984; 62 FR 53204, Oct. 10, 1997; 80 FR 17970, Apr. 2, 2015]

              § 5.15
              Scope of license.

              (a) Applications or other materials reviewed pursuant to §§ 5.12 through 5.14, which were not required to be made available for inspection by defense agencies under 35 U.S.C. 181, will be eligible for a license of the scope provided in this paragraph. This license permits subsequent modifications, amendments, and supplements containing additional subject matter to, or divisions of, a foreign application, if such changes to the application do not alter the general nature of the invention in a manner that would require the United States application to have been made available for inspection under 35 U.S.C. 181. Grant of this license authorizes the export and filing of an application in a foreign country or to any foreign patent agency or international patent agency when the subject matter of the foreign application corresponds to that of the domestic application. This license includes authority:
              (1) To export and file all duplicate and formal application papers in foreign countries or with international agencies;
              (2) To make amendments, modifications, and supplements, including divisions, changes or supporting matter consisting of the illustration, exemplification, comparison, or explanation of subject matter disclosed in the application; and
              (3) To take any action in the prosecution of the foreign application provided that the adding of subject matter or taking of any action under paragraph (a)(1) or (2) of this section does not change the general nature of the invention disclosed in the application in a manner that would require such application to have been made available for inspection under 35 U.S.C. 181 by including technical data pertaining to:
              (i) Defense services or articles designated in the United States Munitions List applicable at the time of foreign filing, the unlicensed exportation of which is prohibited pursuant to the Arms Export Control Act, as amended, and 22 CFR parts 120 through 130; or
              (ii) Restricted Data, sensitive nuclear technology or technology useful in the production or utilization of special nuclear material or atomic energy, dissemination of which is subject to restrictions of the Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation Act of 1978, as implemented by the regulations for Assistance to Foreign Atomic Energy Activities, 10 CFR part 810, in effect at the time of foreign filing.
              (b) Applications or other materials which were required to be made available for inspection under 35 U.S.C. 181 will be eligible for a license of the scope provided in this paragraph. Grant of this license authorizes the export and filing of an application in a foreign country or to any foreign patent agency or international patent agency. Further, this license includes authority to export and file all duplicate and formal papers in foreign countries or with foreign and international patent agencies and to make amendments, modifications, and supplements to, file divisions of, and take any action in the prosecution of the foreign application, provided subject matter additional to that covered by the license is not involved.
              (c) A license granted under § 5.12(b) pursuant to § 5.13 or § 5.14 shall have the scope indicated in paragraph (a) of this section, if it is so specified in the license. A petition, accompanied by the required fee (§ 1.17(g) of this chapter), may also be filed to change a license having the scope indicated in paragraph (b) of this section to a license having the scope indicated in paragraph (a) of this section. No such petition will be granted if the copy of the material filed pursuant to § 5.13 or any corresponding United States application was required to be made available for inspection under 35 U.S.C. 181. The change in the scope of a license will be effective as of the date of the grant of the petition.
              (d) In those cases in which no license is required to file or export the foreign application, no license is required to file papers in connection with the prosecution of the foreign application not involving the disclosure of additional subject matter.

              (e) Any paper filed abroad or transmitted to an international patent agency following the filing of a foreign application that changes the general nature of the subject matter disclosed at the time of filing in a manner that would require such application to have been made available for inspection under 35 U.S.C. 181 or that involves the disclosure of subject matter listed in paragraph (a)(3)(i) or (ii) of this section must be separately licensed in the same manner as a foreign application. Further, if no license has been granted under § 5.12(a) on filing the corresponding United States application, any paper filed abroad or with an international patent agency that involves the disclosure of additional subject matter must be licensed in the same manner as a foreign application.
              (f) Licenses separately granted in connection with two or more United States applications may be exercised by combining or dividing the disclosures, as desired, provided:
              (1) Subject matter which changes the general nature of the subject matter disclosed at the time of filing or which involves subject matter listed in paragraph (a)(3) (i) or (ii) of this section is not introduced, and
              (2) In the case where at least one of the licenses was obtained under § 5.12(b), additional subject matter is not introduced.
              (g) A license does not apply to acts done before the license was granted. See § 5.25 for petitions for retroactive licenses.
              [49 FR 13462, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 FR 53204, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004; 80 FR 17970, Apr. 2, 2015]

              §§ 5.16-5.17
              [Reserved]

              § 5.18
              Arms, ammunition, and implements of war.
              (a) The exportation of technical data relating to arms, ammunition, and implements of war generally is subject to the International Traffic in Arms Regulations of the Department of State (22 CFR parts 120 through 130); the articles designated as arms, ammunitions, and implements of war are enumerated in the U.S. Munitions List (22 CFR part 121). However, if a patent applicant complies with regulations issued by the Commissioner for Patents under 35 U.S.C. 184, no separate approval from the Department of State is required unless the applicant seeks to export technical data exceeding that used to support a patent application in a foreign country. This exemption from Department of State regulations is applicable regardless of whether a license from the Commissioner for Patents is required by the provisions of §§ 5.11 and 5.12 (22 CFR part 125).
              (b) When a patent application containing subject matter on the Munitions List (22 CFR part 121) is subject to a secrecy order under § 5.2 and a petition is made under § 5.5 for a modification of the secrecy order to permit filing abroad, a separate request to the Department of State for authority to export classified information is not required (22 CFR part 125).
              [62 FR 53205, Oct. 10, 1997]

              § 5.19
              Export of technical data.
              (a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the Department of Commerce, a license is not required in any case to file a patent application or part thereof in a foreign country if the foreign filing is in accordance with the regulations (§§ 5.11 through 5.25) of the U.S. Patent and Trademark Office.
              (b) An export license is not required for data contained in a patent application prepared wholly from foreign-origin technical data where such application is being sent to the foreign inventor to be executed and returned to the United States for subsequent filing in the U.S. Patent and Trademark Office (15 CFR 734.10(a)).
              [70 FR 56129, Sept. 26, 2005]

              § 5.20
              Export of technical data relating to sensitive nuclear technology.
              Under regulations (10 CFR 810.7) established by the United States Department of Energy, an application filed in accordance with the regulations (§§ 5.11 through 5.25) of the Patent and Trademark Office and eligible for foreign filing under 35 U.S.C. 184, is considered to be information available to the public in published form and a generally authorized activity for the purposes of the Department of Energy regulations.
              [62 FR 53205, Oct. 10, 1997]

              § 5.25
              Petition for retroactive license.
              (a) A petition for a retroactive license under 35 U.S.C. 184 shall be presented in accordance with § 5.13 or § 5.14(a), and shall include:
              (1) A listing of each of the foreign countries in which the unlicensed patent application material was filed,
              (2) The dates on which the material was filed in each country,

              (3) A verified statement (oath or declaration) containing:

              (i) An averment that the subject matter in question was not under a secrecy order at the time it was filed aboard, and that it is not currently under a secrecy order,
              (ii) A showing that the license has been diligently sought after discovery of the proscribed foreign filing, and
              (iii) An explanation of why the material was filed abroad through error without the required license under § 5.11 first having been obtained, and
              (4) The required fee (§ 1.17(g) of this chapter).
              (b) The explanation in paragraph (a) of this section must include a showing of facts rather than a mere allegation of action through error. The showing of facts as to the nature of the error should include statements by those persons having personal knowledge of the acts regarding filing in a foreign country and should be accompanied by copies of any necessary supporting documents such as letters of transmittal or instructions for filing. The acts which are alleged to constitute error should cover the period leading up to and including each of the proscribed foreign filings.
              (c) If a petition for a retroactive license is denied, a time period of not less than thirty days shall be set, during which the petition may be renewed. Failure to renew the petition within the set time period will result in a final denial of the petition. A final denial of a petition stands unless a petition is filed under § 1.181 within two months of the date of the denial. If the petition for a retroactive license is denied with respect to the invention of a pending application and no petition under § 1.181 has been filed, a final rejection of the application under 35 U.S.C. 185 will be made.
              [49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62 FR 53206, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004; 77 FR 48826, Aug. 14, 2012]

            General

              §§ 5.31-5.33
              [Reserved]

              PART 6—CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT

                Editorial Note:
                Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations.

              PART 7—RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS

                Editorial Note:
                Part 7 is placed in the separate grouping of parts pertaining to trademarks regulations.

          37 CFR Ch. I (7-1-20 Edition)
          Index I

          INDEX I—RULES RELATING TO PATENTS

            Editorial Note:
            This listing is provided for information purposes only. It is compiled and kept up-to-date by the Department of Commerce. This index is updated as of July 1, 2020.

          Section
          A
          Abandoned applications:
          Abandonment by failure to prosecute
          1.135
          Abandonment during interference
          41.127(b)
          Abandonment for failure to pay issue fee
          1.316
          Express abandonment
          1.138
          To avoid publication
          1.138(c)
          Referred to in issued patents
          1.14
          Revival of
          1.137
          When open for public inspection
          1.14
          Abandonment of application. (See Abandoned applications)
          Abstract of the disclosure.(content, physical requirements)
          1.72(b)
          Separate sheet required for commencement of
          1.52(b)(4), 1.72(b)
          Arrangement in overall application
          1.77, 1.163
          Access to pending applications (limited)
          1.14
          Action by applicant
          1.111-1.116, 1.121-1.138
          Address, Correspondence, only one recognized by Office
          1.33(c)
          Address for notice to Director of appeal to Fed. Cir
          90.2
          Address of Solicitor's Office
          1.1(a)(3)
          Address of the Patent and Trademark Office
          1.1
          Mail Stop Assignment Recordation Services
          1.1(a)(4), 3.27
          Mail Stop Document Services
          1.1(a)(4)
          Mail Stop Ex Parte Reexam
          1.1(c)(1), 1.1(c)(4)
          Mail Stop Inter Partes Reexam
          1.1(c)(2)
          Mail Stop Interference
          41.10(b)
          Mail Stop OED
          1.1(a)(5), 4.6
          Mail Stop Patent Ext
          1.1(e)
          Mail Stop PCT
          1.1(b)
          Mail Stop Supplemental Examination
          1.1(c)(3)
          Adjustment of patent term. (See Patent term adjustment)
          Administrator, executor, or other legal representative may make application and receive patent
          1.42, 1.43
          In an international application
          1.422
          Oath or declaration
          1.64
          Admission to practice. (See Attorneys and agents)
          Affidavit (see also Oath in patent application):
          After appeal
          41.33(d)
          In support of application for reissue
          1.175
          To disqualify commonly owned patent as prior art
          1.131(c)
          To overcome cited patent or publication
          1.131
          Traversing grounds of rejection
          1.132
          Agents. (See Attorneys and agents)
          Allowance and issue of patent:
          Amendment after allowance (before or with issue fee)
          1.312
          Deferral of issuance
          1.314
          Delivery of patent
          1.315

          Failure to pay issue fee
          1.137(c), 1.316
          Issuance of patent
          1.314
          Notice of allowance
          1.311
          Patent to issue upon payment of issue fee
          1.314
          Reasons for
          1.104(e)
          Withdrawal from issue
          1.313
          Amendment:
          Adding or substituting claims
          1.111, 1.121
          After appeal
          1.116, 41.33, 41.63
          After decision on appeal, based on new rejection of Patent Trial and Appeal Board
          41.50(b)
          After final action
          1.116, 41.33
          After final action (transitional procedures)
          1.129
          After notice of allowance
          1.312
          By patent owner
          1.530
          Copying claim of another application for interference
          41.202
          Copying claim of issued patent
          41.202
          Deletions and insertions
          1.121
          Drawings
          1.84, 1.85, 1.121(d)
          Manner of making
          1.121
          May be required
          1.121
          New matter prohibited
          1.121(f), 1.173(a)
          Numbering of claims
          1.126
          Of amendments
          1.121
          Of claims
          1.111, 1.121
          Of disclosure
          1.121
          Of drawing
          1.121(d)
          Of specification
          1.121
          Paper and writing
          1.52
          Preliminary
          1.115
          Proposed during interference
          41.121, 41.208
          Provisional application
          1.53(c), 1.121(k)
          Reexamination proceedings
          1.121(j), 1.530, 1.941
          Reissue
          1.121(i), 1.173(b)
          Requisites of
          1.33(b), 1.111, 1.116, 1.121, 1.125
          Right to amend
          1.111, 1.114, 1.116, 1.121
          Signature to
          1.33(b)
          Substitute specification
          1.125
          Time for
          1.134
          To applications in interference
          41.121, 41.208
          To correct inaccuracies
          1.121(e)
          To correspond to original drawing or specification
          1.121(e)
          To reissues
          1.121(i), 1.173
          To save from abandonment
          1.135
          America Invents Act Post-Grant Proceedings (See Inter partes review, post-grant review, covered business method review, and derivation proceeding)
          Amino Acid Sequences. (See Nucleotide and/or Amino Acid Sequences)
          Appeal to Court of Appeals for the Federal Circuit:
          Fee provided by rules of court
          90.2
          From Patent Trial and Appeal Board
          90.1-90.3
          Notice and reasons of appeal
          90.2
          Reexamination, inter partes proceeding
          1.983
          Time for
          90.3
          Appeal to Patent Trial and Appeal Board:
          Action following decision
          41.54
          Affidavits after appeal
          41.33(d)
          Brief
          41.37
          Decision by Board
          41.50(b)

          Examiner's answer
          41.39
          Fees
          41.20, 41.45
          Hearing of
          41.47
          New grounds for rejecting a claim
          41.50(b)
          Notice of appeal
          41.31
          Reexamination, inter partes proceeding
          1.959
          Rehearing
          41.52
          Reopening after decision
          1.198
          Reply brief
          41.41
          Statement of grounds for rejecting, by Patent Trial and Appeal Board
          41.50
          Applicant for patent
          1.42, 1.421
          Change
          1.46, 1.472
          Deceased or legally incapacitated inventor
           1.43, 1.422
          Executor or administrator
          1.43
          Informed of application number
          1.54(b)
          Letters for, sent to attorney or agent
          1.33(a)
          May be represented by patent practitioner
          1.31
          Must be represented by patent practitioner if juristic entity
          1.31
          Personal attendance unnecessary
          1.2
          Required to conduct business with decorum and courtesy
          1.3
          Required to report assistance received
          1.4(g)
          Application data sheet
          1.76
          Application for patent (see also Abandoned applications, Claims, Drawing, Examination of application Reissues, Provisional applications, Specification):
          Access to
          1.14
          Acknowledgement of filing
          1.54(b)
          Alteration after execution
          1.52(c)
          Alteration before execution
          1.52(c)
          Applicant
          1.42
          Application number and filing date
          1.54
          Arrangement
          1.77, 1.154, 1.163
          Continuation or division, reexecution not required
          1.63(d)
          Continued Prosecution Application (CPA), Design
          1.53(d)
          Copies of, furnished to applicants
          1.59(c)
          Cross-references to related applications
          1.78
          Deceased or legally incapacitated inventor
          1.43, 1.64
          International phase
          1.422
          Declaration in lieu of oath
          1.68
          Duty of disclosure
          1.56
          Elements of, order and arrangement of
          1.77, 1.154, 1.163
          Filed apparently without all figures of drawing:
          Petition and filing of missing figures seeking new filing date
          1.182
          Petition asserting all figures of drawing were filed
          1.53(e)
          Filed apparently without all pages of specification, petition asserting all pages were filed
          1.53(e)
          Filed apparently without any drawing, petition asserting drawing was filed, or was not necessary, or adding drawing and seeking new filing date
          1.53(e)
          Filed by other than inventor
          1.42, 1.43, 1.46
          Filed by reference
          1.57(a)
          International phase
          1.421(c), 1.422
          Filing and national fees
          1.16, 1.445, 1.492
          Filing date
          1.53
          International application
          1.431(b)
          Foreign language oath or declaration
          1.69
          Formulas and tables
          1.58
          General requisites
          1.51

          Identification required in letters concerning
          1.5
          Incomplete application not forwarded for examination
          1.53
          Language, paper, writing, margin
          1.52
          Later completion of nonprovisional application
          1.53(f)
          Must be made by actual inventor, with exceptions
          1.42, 1.46, 1.64
          Names of all inventors required
          1.41, 1.53
          Non-English language
          1.52(b)(1)(ii)
          Nonprovisional application forwarded for examination only when complete
          1.53
          Nonprovisional filing of petition to convert to a provisional application
          1.53(c)(2)
          Owned by Government
          1.103(f)
          Papers forming part of original disclosure not to be expunged
          1.59(a)(2)
          Parts filed separately
          1.54
          Parts of application desirably filed together
          1.54
          Parts of complete application
          1.51
          Processing fees
          1.17
          Provisional application
          1.9(a)(2), 1.51(c), 1.53(c), 1.121(k)
          Publication. (See Publication of applications)
          Relating to atomic energy
          1.14(d)
          Reservation for future application not permitted
          1.79
          Secrecy order
          5.1-5.5
          Tables and formulas
          1.58
          To be made to Director of the U.S. Patent and Trademark Office
          1.51
          To claim one independent and distinct invention
          1.141
          Two or more by same party with patentably indistinct claims
          1.78(f), (g)
          Application number
          1.5(a), 1.53(a), 1.54(b)
          Application size fee
          1.16(s), 1.52(f)
          Arbitration award filing
          1.335
          Arbitration in interference
          41.126
          Assertion of micro entity status
          1.29
          Assertion of small entity status
          1.27(c)
          Assignee:
          Correspondence held with assignee of entire interest
          3.71, 3.73
          Establishing ownership
          3.73(b)
          If of entire interest, patent may issue to
          1.46, 3.81
          If of undivided part interest, correspondence will be held with inventor
          1.33
          If of undivided part interest, must assent to application for reissue of patent
          1.172
          If of undivided part interest, patent may issue jointly
          1.46, 3.81
          May conduct prosecution of application
          3.71, 3.73
          May take action in interference
          41.9
          Assignments and recording:
          Abstracts of title, fee for
          1.19(b)
          Conditional assignments
          3.56
          Correction of Cover Sheet errors
          3.34
          Cover Sheet required
          3.28, 3.31
          Date of receipt is date of record
          3.51
          Effect of recording
          3.54
          Fees
          1.21(h), 3.41
          If recorded before payment of issue fee, patent may issue to assignee
          3.81
          Impact on entitlement to micro entity status
          1.29
          Impact on entitlement to small entity status
          1.27
          May serve as inventor's oath or declaration
          1.63(e)
          Must be recorded in Patent and Trademark Office to issue patent to assignee
          3.81

          Must identify patent or application
          3.21
          Orders for copies of
          1.12
          Patent may issue to assignee
          3.81
          Recording of assignments
          3.11
          Records open to public inspection
          1.12
          Requirements for recording
          3.21-3.41
          What will be accepted for recording
          3.11
          Atomic energy applications reported to Department of Energy
          1.14
          Attorneys and agents:
          Acting in a representative capacity
          1.33, 1.34
          Assignment will not operate as a revocation of power
          1.36
          Certificate of good standing
          1.21(a)(4)
          Office cannot aid in selection of
          1.31
          Personal interviews with examiners
          1.133
          Power of attorney
          1.32
          Privileged communications
          42.57
          Registration fees
          1.21(a)
          Representation in international application
          1.455
          Representative capacity
          1.33, 1.34
          Required to conduct business with decorum and courtesy
          1.3
          Revocation of power
          1.36(a)
          Withdrawal of
          1.36(b), 41.5
          Authorization of agents. (See Attorneys and agents)
          Award in arbitration
          1.335
          B
          Balance in deposit account
          1.25
          Basic filing fee
          1.16
          Basic national fee
          1.492
          Benefit of earlier application
          1.78
          Bill in equity. (See Civil action)
          Biological material. (See Deposit of Biological material)
          Board of Patent Appeals and Interferences (renamed as Patent Trial and Appeal Board). (See Appeal to Patent Trial and Appeal Board, Patent Trial and Appeal Board, Inter Partes Review, Post-Grant Review, Derivation Proceeding, Patent Trial Practice and Procedure, and Interferences)
          Briefs:
          In petitions to Director
          1.181
          On appeal to Patent Trial and Appeal Board
          41.37
          Business to be conducted with decorum and courtesy
          1.3
          Business to be transacted in writing
          1.2
          C
          Certificate of correction
          1.322, 1.323
          Fee
          1.20(a)
          Mistakes not corrected
          1.325
          Certificate of mailing (as first class mail) or transmission
          1.8
          Certificate, reexamination
          1.570
          Certified copies of records, papers, etc
          1.4(f), 1.13
          Chemical and mathematical formulas and tables
          1.58
          Citation of prior art in patent
          1.501
          Citation of references by examiner
          1.104(d)
          Civil action
          90.1-90.3
          Claims (see also Examination of applications):
          Amendment of
          1.121
          Dependent
          1.75
          Design patent
          1.153

          International
          1.1025
          May be in dependent form
          1.75
          More than one permitted
          1.75
          Multiple dependent
          1.75
          Must conform to invention and specification
          1.75
          Notice of rejection of
          1.104
          Numbering of
          1.126
          Part of complete application
          1.51
          Patentably indistinct, same applicant or owner
          1.78(f), (g)
          Plant patent
          1.164
          Rejection of
          1.104(c)
          Required
          1.75
          Separate Sheet required for commencement of claim(s)
          1.52(b), 1.75(h)
          Twice or finally rejected before appeal
          41.31(a)
          Color drawing
          1.84(a)(2)
          Color photographs
          1.84(b)(2)
          Common Ownership, statement by assignee may be required
          1.78
          Compact disc submissions:
          Computer program listings
          1.96
          Requirements
          1.52(e)
          Sequence listings
          1.821(c)
          Tables
          1.58
          Complaints against examiners, how presented
          1.3
          Composition of matter, specimens of ingredients may be required
          1.93
          Computer program listings
          1.96
          Concurrent office proceedings
          1.565
          Conduct of ex parte reexamination proceedings
          1.550
          Continued examination, request for
          1.114
          Continued Prosecution Application (CPA), Design
          1.53(d)
          Continuing application for invention disclosed and claimed in prior application
          1.53(b)
          Copies of patents, published applications, records, etc.
          1.11, 1.12, 1.13
          Copies of records, fees
          1.19(b), 1.59
          Copyright notice in drawings
          1.84(s)
          Copyright notice in specification
          1.71(d)
          Corrected publication of application
          1.221
          Correction, certificate of
          1.322, 1.323
          Correction of inventorship
          1.48, 1.324
          Correspondence:
          Address, only one recognized
          1.33(c)
          Addresses for non-trademark correspondence
          1.1
          Business with the Office to be transacted by
          1.2
          Discourteous communications not entered
          1.3
          Double, with different parties in interest not allowed
          1.33
          Facsimile transmissions
          1.6(d)
          Held with attorney or agent
          1.33
          Identification of application or patent in letter relating to
          1.5
          Involving national security
          5.1
          May be held exclusively with assignee of entire interest
          3.71
          Nature of
          1.4
          Patent owners in reexamination
          1.33(c)
          Receipt of letters and papers
          1.6
          Rules for conducting in general
          1.1-1.8
          Separate letter for each subject or inquiry
          1.4(c)
          Signature requirements
          1.4(d)
          When no attorney or agent
          1.33
          With attorney or agent after power or authorization is filed
          1.33

          Court of Appeals for the Federal Circuit, appeal to. (See Appeal to Court of Appeals for the Federal Circuit)
          CPA (Continued Prosecution Application), Design
          1.53(d)
          Credit card payment
          1.23
          Covered Business Method Patent Review. (See also Patent Trial Practice and Procedure; Post-Grant Review):
          General
          42.300-42.304
          Procedure; pendency
          42.300
          Definitions
          42.301
          Content of petition
          42.304
          Time for filing
          42.303
          Who may petition
          42.302
          Customer Number:
          Defined
          1.32(a)(5)
          Required to establish a Fee Address
          1.363(c)
          D
          Date of invention of subject matter of individual claims
          1.110
          Day for taking any action or paying any fee falling on Saturday, Sunday, or Federal holiday
          1.7, 1.9(h)
          Daytime telephone number
          1.33(a)
          Death or legal incapacitation of inventor
          1.43
          In an international application
          1.422
          Decision on appeal by the Patent Trial and Appeal Board
          41.50
          Action following decision
          41.54
          Declaration (See also Oath in patent application).
          Foreign language
          1.69
          In lieu of oath
          1.68
          In patent application
          1.68
          Requirements to enter the U.S. national phase
          1.497
          Deferral of examination
          1.103
          Definitions:
          Applicant
          1.42
          Assignment
          3.1
          Customer Number
          1.32(a)(5)
          Document
          3.1
          Effective filing date of a claimed invention
          1.109
          Federal holiday within the District of Columbia
           1.9(h)
          Inventorship
          1.9(d), 1.41
          Joint Research Agreement
          1.9(e)
          Micro entity
          1.29
          National and international applications
          1.9
          National security classified
          1.9(i)
          Nonprofit organization(for small entity purposes)
          1.27(a)(3)
          Nonprovisional application
          1.9(a)(3)
          Paper
          1.9(k)
          Person (for small entity purposes)
          1.27(a)(1)
          Power of attorney
          1.32(a)(2)
          Principal
          1.32(a)(3)
          Provisional application
          1.9(a)(2)
          Published application
          1.9(c)
          Recorded document
          3.1
          Revocation
          1.32(a)(4)
          Service of process
          15 C.F.R. Part 15
          Small business concern (for small entity purposes)
          1.27(a)(2)
          Small entity
          1.27(a)
          Terms under Patent Cooperation Treaty
          1.401

          Delivery of patent
          1.315
          Deposit accounts
          1.25
          Fees
          1.21(b)
          Deposit of computer program listings
          1.96
          Deposit of biological material:
          Acceptable depository
          1.803
          Biological material
          1.801
          Examination procedures
          1.809
          Furnishing of samples
          1.808
          Need or Opportunity to make a deposit
          1.802
          Replacement or supplemental deposit
          1.805
          Term of deposit
          1.806
          Time of making original deposit
          1.804
          Viability of deposit
          1.807
          Depositions (See also Testimony in interferences):
          Certificate of officer to accompany
          41.157(e)
          Formalities to be observed in preparing
          41.157
          Person before whom taken
          41.157
          Description of invention. (See Specification)
          Design Patent Applications:
          Arrangement of specification
          1.154
          Claim
          1.153(a)
          Description
          1.153(a)
          Drawing
          1.152
          Expedited Examination
          1.155
          Filing fee
          1.16(b)
          International. (See Hague Agreement)
          Issue fee
          1.18(b)
          Oath
          1.153(b)
          Rules applicable
          1.151
          Title
          1.153(a)
          Determination of request for ex parte reexamination
          1.515
          Derivation Proceeding (See also Patent Trial Practice and Procedure)
          General
          42.400-42.407
          Procedure; pendency
          42.400
          Definitions
          42.401
          Who may petition
          42.402
          Time for filing
          42.403
          Derivation Fee
          42.15, 42.404
          Content of petition
          42.405
          Service of petition
          42.406
          Filing date
          42.407
          Institution of derivation proceeding
          42.408
          After Institution
          42.409-42.412
          Settlement agreement
          42.409
          Arbitration
          42.410
          Common interests in the invention
          42.411
          Public availability of Board records
          42.412
          Director of the USPTO (See also Petition to the Director):
          Address of
          1.1
          Availability of decisions by
          1.14
          Cases decided by Board reopened only by
          1.198
          Initiates ex parte reexamination
          1.520
          Disclaimer, statutory:
          During interference
          41.127(b)
          Fee
          1.20(d)
          Requirements of
          1.321
          Terminal
          1.321

          Discovery in interferences
          41.150
          Division. (See Restriction of application)
          Division of patent on reissue
          1.177
          Document supply fees
          1.19
          Drawing:
          Amendment of
          1.121(d)
          Annotated drawings
          1.121(d)
          Arrangement of views
          1.84(i)
          Arrows
          1.84(r)
          Character of lines
          1.84(l)
          Color
          1.84(a)(2)
          Content of drawing
          1.83
          Conventional features
          1.83(a)
          Copyright notice
          1.84(s)
          Correction
          1.84(w), 1.85(c), 1.121(d)
          Cost of copies of
          1.19
          Description, brief and detailed
          1.74
          Design application
          1.152
          Figure for front page
          1.76(b)(3), 1.84(j)
          Filed with application
          1.81
          Graphics
          1.84(d)
          Hatching and shading
          1.84(m)
          Holes
          1.84(x)
          Identification
          1.84(c)
          If of an improvement, must show connection with old structure
          1.83(b)
          Incorporation by reference to prior application
          1.57
          In international applications
          1.437
          Ink
          1.84(a)(1)
          Lead lines
          1.84(q)
          Legends
          1.84(o)
          Letters
          1.84(p)
          Location of names
          1.84(c)
          Margin
          1.84(g)
          Mask work notice
          1.84(s)
          Must show every feature of the invention
          1.83(a)
          No return or release
          1.85(b)
          Numbering of sheets
          1.84(t)
          Numbering of views
          1.84(u)
          Numbers
          1.84(p)
          Original should be retained by applicant
          1.81(a)
          Paper
          1.84(e)
          Part of application papers
          1.52(b)
          Photographs
          1.84(b)
          Plant patent application
          1.81, 1.165
          Printed and published by the Office when patented
          1.84
          Reference letters, numerals, and characters
          1.74, 1.84(p)
          Reissue
          1.173(a)(2)
          Release not permitted
          1.85(b)
          Replacement drawings
          1.121(d)
          Required by law when necessary for understanding
          1.81
          Scale
          1.84(k)
          Security markings
          1.84(v)
          Shading
          1.84(m)
          Size of sheet
          1.84(f)
          Standards for drawings
          1.84
          Symbols
          1.84(n)
          Views
          1.84(h)
          When necessary, part of complete application
          1.51

          Duplicate copies
          1.4(b)
          Duty of disclosure
          1.56, 1.555, 1.933
          Patent term extension
          1.765
          E
          Early publication of application
          1.219
          Eighteen-month publication of applications. (See Publication of applications)
          Election of species
          1.146
          Electronic documents
          1.52(e)
          Application size fee
          1.16(s), 1.52(f)
          Non-electronic filing fee
          1.16(t)
          Electronic filing of application
          1.6(a)(4), 1.52(a)(5)
          Establishing micro entity status
          1.29
          Establishing small entity status
          1.27, 1.28
          Evidence. (See Testimony in interferences)

            Ex parte reexamination. (See Reexamination)
          Examination of applications:
          Advancement of examination
          1.102
          As to form
          1.104(a)(1)
          Citation of references
          1.104(d)
          Completeness of examiner's action
          1.104(b)
          Deferral of
          1.103
          Examiner's action
          1.104(a)
          International-type search
          1.104(a)(3)
          Nature of examination
          1.104(a)
          Prioritized examination
          1.102(e)
          Reasons for allowance
          1.104(e)
          Reconsideration after rejection if requested
          1.111
          Reissue
          1.176
          Rejection of claims
          1.104(c)
          Request for continued examination(RCE)
          1.114
          Requirement for information by examiner
          1.105
          Suspension of action by the Office
          1.103
          Examiners:
          Answers on appeal
          41.39
          Complaints against
          1.3
          Interviews with
          1.133, 1.560
          Executors
          1.42, 1.64, 1.422
          Exhibits. (See Models and exhibits)
          Expedited examination of design applications
          1.155
          Export of technical data
          5.11, 5.19, 5.20
          Express abandonment
          1.138
          To avoid publication
          1.138(c)
           Priority Mail Express®
          1.10
          Date of receipt of
          1.6
          Petition in regard to
          1.10
          Expungement of information
          1.59
          Extension of patent term. (See also Patent term adjustment):
          Due to examination delay under the URAA (35 U.S.C. 154)
          1.701
          Due to regulatory review period (35 U.S.C. 156):
          Applicant for
          1.730
          Application for
          1.740
          Calculation of term:
          Animal Drug Product
          1.778
          Food or color additive
          1.776
          Human drug product
          1.775
          Medical device
          1.777

          Veterinary biological product
          1.779
          Certificate
          1.780
          Conditions for
          1.720
          Determination of eligibility
          1.750
          Duty of disclosure
          1.765
          Filing date of application
          1.741
          Formal requirements
          1.740
          Incomplete application
          1.741
          Interim extension
          1.760, 1.790
          Multiple applications
          1.785
          Patents subject to
          1.710
          Signature requirements for application
          1.730
          Withdrawal of application
          1.770
          Extension of time
          1.136
          Fees
          1.17(a)
          Interference proceedings
          41.4
          Reexamination proceedings
          1.550(c)
          F
          Facsimile transmissions
          1.6(d), 1.8
          Federal Holiday, time for taking action
          1.7, 1.9(h)
          Fees and payment of money:
          Credit card
          1.23(b)
          Deposit account
          1.25
          Document supply fees
          1.19
          Extension of time
          1.17(a)
          Fee on appeal to the Court of Appeals for the Federal Circuit provided by rules of court
          90.2
          Fees payable in advance
          1.22(a)
          For international-type search report
          1.21(e)
          Foreign filing license petition
          1.17(g)
          Itemization required
          1.22(b)
          Method of payment
          1.23
          Money by mail at risk of sender
          1.23(a)
          Money paid by mistake or in excess
          1.26
          Necessary for application to be complete
          1.51
          Petition fees
          1.17(f), 1.17(g), 1.17(h), 41.20(a)
          Prioritized examination
          1.17(c)
          Processing fees
          1.17(i)
          Publication of application
          1.18(d), 1.211(e)
          Reexamination request
          1.20(c)
          Refunds
          1.26, 1.28
          Relating to international applications
          1.445, 1.492
          Schedule of fees and charges
          1.16-1.21
          Files open to the public
          1.11, 1.14
          Filing, search and examination fees
          1.16
          Filing date of application
          1.53
          Filing of interference settlement agreements
          41.205
          Final rejection:
          Appeal from
          41.31
          Response to
          1.113, 1.114, 1.116, 1.129
          When and how given
          1.113
          First Class Mail
          1.8
          Foreign application
          1.55
          License to file
          5.11-5.25
          Foreign country:
          Taking oath in
          1.66

          Taking testimony in
          41.156, 41.157
          Foreign mask work protection
          Part 150
          Evaluation of request
          150.4
          Definition
          150.1
          Duration of proclamation
          150.5
          Initiation of evaluation
          150.2
          Mailing address
          150.6
          Submission of requests
          150.3
          Formulas and tables in patent applications
          1.58
          Fraud practiced or attempted on Office
          1.27(h), 1.56, 1.555, 1.765
          Freedom of Information Act
          Part 102
          G
          Gazette. (See Official Gazette)
          General authorization to charge deposit account
          1.25
          General information and correspondence
          1.1-1.8, 1.10
          Government acquisition of foreign patent rights
          Part 501
          Government employee invention
          Part 501
          Government interest in patent, recording of
          3.11, 3.31, 3.41, 3.58
          Governmental registers
          3.58
          H
          Hague Agreement:
          International design applications
          1.1001-1.1071
          Access to
          1.14(j)
          Applied for by person/entity other than inventor
          1.46(b)
          Benefit claim in
          1.78(d), 1.78(e)
          Definition of
          1.9(n)
          Deposit account usage in
          1.25
          Drawing corrections in
          1.121(d)
          Expedited examination of
          1.155
          Incorporation by reference as to inadvertently omitted portion of specification or drawing(s)
          1.57(b)
          Inventorship in
          1.41(f)
          Priority claim in
          1.55(m)
          Hearings:
          Before the Patent Trial and Appeal Board
          41.47
          Fee for appeal hearing
          41.20
          In disciplinary proceedings
          11. 44
          Of motions in interferences
          41.124
          Holiday, time for action expiring on
          1.6, 1.7
          I
          Identification of application, patent or registration
          1.5
          Incorporation by Reference
          1.57
          Information disclosure statement:
          At time of filing application
          1.51(d)
          Content of
          1.98
          Not permitted in provisional applications
          1.51(d)
          Reexamination
          1.555, 1.902
          To comply with duty of disclosure
          1.97
          Information, Public
          Part 102

            Inter partes reexamination. (See Reexamination)
          Interferences. (See also Depositions, Notice, Statement in interferences, Testimony in interferences):
          Abandonment of the contest
          41.127(b)

          Access to applications
          41.109
          Action by examiner after interference
          41.127
          Addition of new party by judge
          41.203
          Amendment during
          41.121, 41.208
          Appeal to the Court of Appeals for the Federal Circuit
          90.1-90.3
          Applicant requests
          41.202
          Arbitration
          41.126
          Burden of proof
          41.121(b)
          Civil action
          90.1-90.3
          Concession of priority
          41.127(b)
          Correspondence
          41.10
          Decision on motions
          41.125
          Declaration of interference
          41.203
          Definition
          41.100, 41.201
          Disclaimer to avoid interference
          41.127(b)
          Discovery
          41.150
          Extensions of time
          41.4
          Identifying claim from patent
          41.202
          In what cases declared
          41.203
          Inspection of cases of opposing parties
          41.109
          Interference with a patent
          41.202
          Judgment
          41.127
          Junior party fails to overcome filing date of senior party
          41.204
          Jurisdiction of interference
          41.103
          Manner of service of papers
          41.106
          Motions
          41.121, 41.155, 41.208
          Notice and access to applications of opposing parties
          41.109
          Notice of basis for relief
          41.120, 41.204
          Notice of reexamination, reissue, protest or litigation
          41.8
          Notice to file civil action
          90.2
          Oral argument
          41.124
          Ownership of applications or patents involved
          41.206
          Petitions
          41.3
          Preparation for
          41.202
          Priority statement
          41.204
          Prosecution by assignee
          41.9
          Recommendation by Patent Trial and Appeal Board
          41.127
          Record and exhibits
          41.106, 41.154
          Records of, when open to public
          1.11, 41.6
          Reissue filed by patentee during
          41.203
          Request by applicant
          41.202
          Return of unauthorized papers
          41.128
          Review of decision by civil action
          90.1-90.3
          Same party
          41.206
          Sanctions for failure to comply with rules or order
          41.128
          Sanctions for taking and maintaining a frivolous position
          41.128
          Secrecy order cases
          5.3(b)
          Service of papers
          41.106
          Status of claims of defeated applicant after interference
          41.127
          Statutory disclaimer by patentee during
          41.127(b)
          Suggestion of claims for interference
          41.202
          Suspension of other proceedings
          41.103
          Testimony copies
          41.157
          Time period for completion
          41.200
          Times for discovery and taking testimony
          41.150, 41.156, 41.157
          Translation of document in foreign language
          41.154

          International application. (See Patent Cooperation Treaty)

          International Bureau
          1.415
          International design application. (See Hague Agreement)
          International Preliminary Examining Authority, United States as
          1.416
          International Searching Authority, United States as
          1.413
          Interview summary
          1.133
          Interviews with examiner
          1.133, 1.560
          Inter Partes Review. (See also Patent Trial Practice and Procedure):
          General
          42.100-42.107
          Procedure; pendency
          42.100
          Who may petition
          42.101
          Time for filing
          42.102
          Fee
          42.15, 42.103
          Content of petition
          42.104
          Service of petition
          42.105
          Filing date
          42.106
          Preliminary response
          42.107
          Instituting a review
          42.108
          After Institution
          42.120-42.123
          Patent owner response
          42.120
          Motion to amend
          42.121
          Multiple proceedings; joinder
          42.122
          Supplemental information
          42.123
          Invention promoters:
          Complaints regarding
          4.1-4.6
          Publication of
          4.1, 4.3, 4.5
          Reply to
          4.4
          Submission of
          4.3
          Withdrawal of
          4.4
          Definition
          4.2
          Inventor (see also Oath in patent application):
          Death or legal incapacity of
          1.43
          In international application
          1.422,
          May apply for patent
          1.42
          Unavailable or refuses to sign application
          1.64
          Inventor's certificate priority benefit
          1.55
          Inventorship and date of invention of the subject matter of individual claims
          1.110
          Issue fee
          1.18
          Issue of patent. (See Allowance and issue of patent)
          J
          Joinder of inventions in one application
          1.141-1.146
          Joint inventors
          1.45, 1.47, 1.48, 1.324, 1.421(b)
          Joint patent to inventor and assignee
          1.46, 3.81
          Jurisdiction:
          After decision by Patent Trial and Appeal Board
          1.197, 1.198
          After notice of allowance
          1.312, 1.313
          Of involved files in contested case
          41.103
          L
          Law School Clinic Certification Program
          11.16-11.17
          Legal representative of deceased or incapacitated inventor
          1.42, 1.43, 1.64
          In international application
          1.422
          Legal Processes
          Part 104
          Legibility of papers which are to become part of the permanent Office records
          1.52(a)
          Letters to the Office. (See Correspondence)

          Library service fee
          1.19(c)
          License and assignment of government interest in patent
          3.11, 3.31, 3.41
          License for foreign filing
          5.11-5.15
          Lost files
          1.251
          M
          Mail Stops
          Mail Stop Assignment Recordation Services
          1.1(a)(4), 3.27
          Mail Stop Document Services
          1.1(a)(4)
          Mail Stop Ex parte Reexam
          1.1(c)(1), 1.1(c)(4)
          Mail Stop Inter partes Reexam
          1.1(c)(2)
          Mail Stop Interference
          41.10(b)
          Mail Stop OED
          1.1(a)(5), 4.6
          Mail Stop Patent Ext
          1.1(e)
          Mail Stop PCT
          1.1(b), 1.417, 1.434(a), 1.480(b)
          Mail Stop Supplemental Examination
          1.1(c)(3)
          Maintenance fees
          1.20(e)-(h)
          Acceptance of delayed payment of
          1.378
          Address for payments and correspondence
          1.1(d)
          Fee address for
          1.363
          Review of decision refusing to accept
          1.377
          Submission of
          1.366
          Time for payment of
          1.362
          Mask work notice in specification
          1.71(d)
          Mask work notice on drawing
          1.84(s)
          Mask work protection, foreign
          Part 150
          Microorganisms. (See Deposit of Biological Material)
          Minimum balance in deposit accounts
          1.25
          Misjoinder of inventor
          1.48, 1.324, 1.497(d)
          Missing pages when application filed
          Petition alleging there were no missing pages
          1.53(e)
          Petition with new oath or declaration and later submission of missing pages seeking new filing date
          1.182
          Mistake in patent, certificate thereof issued
          1.322, 1.323
          Models and exhibits:
          Copies of
          1.95
          Disposal unless return arrangements made
          1.94
          In contested cases
          41.154
          May be required if deemed necessary in examination of application
          1.91(b)
          Model not generally admitted as part of application or patent
          1.91
          Not to be taken from the Office except in custody of sworn employee
          1.95
          Return of
          1.94
          Working model may be required
          1.91(b)
          Money. (See Fees and payment of money)
          Motions in interference
          41.121, 41.155, 41.208
          To take testimony in foreign country
          41.156, 41.157
          N
          Name of applicant
          1.41
          New matter inadmissible in application
          1.53(b), 1.121(f)
          New matter inadmissible in reexamination
          1.530(d), 1.552(b)
          New matter inadmissible in reissue
          1.173
          Non-English language specification fee
          1.17(i)
          Nonprofit organization:
          Definition (for small entity purposes)
          1.27(a)(3)

          Nonpublication request
          1.213
          Notice:
          Of allowance of application
          1.311
          Of appeal to the Court of Appeals for the Federal Circuit
          90.1-90.3
          Of arbitration award
          1.335
          Of defective reexamination request
          1.510(c)
          Of interference
          41.101, 41.203
          Of oral hearings on appeals before Patent Trial and Appeal Board
          41.47
          Of rejection of an application
          1.104(a)
          Nucleotide and/or Amino Acid Sequences:
          Amendments to
          1.825
          Disclosure in patent application
          1.821
          Form and format for computer readable form
          1.824
          Format for sequence data
          1.822
          Replacement of
          1.825
          Requirements
          1.823
          Submission on compact disc
          1.52, 1.821, 1.823
          O
          Oath or declaration (inventor's) in patent application:
          Assignment may serve as
          1.63(e)
          Apostilles
          1.66
          Before whom taken in foreign countries
          1.66
          Before whom taken in the United States
          1.66
          By administrator or executor
          1.42, 1.63, 1.64, 1.497(b)
          Certificate of Officer administering
          1.66
          Continuation-in-part
          1.63(e)
          Declaration in lieu of oath
          1.68
          Foreign language
          1.69
          Identification of specification to which it is directed
          1.63
          International application, National Stage
          1.497
          Inventor's Certificate
          1.63
          Made by inventor
          1.41, 1.63, 1.64
          Officers authorized to administer oaths
          1.66
          Part of complete application
          1.51
          Person making
          1.63, 1.64
          Plant patent application
          1.162
          Requirements of
          1.63
          Sealed
          1.66
          Signature to
          1.4, 1.63, 1.64, 1.67
          Substitute Statement
          1.64
          Supplemental
          1.67
          To acknowledge duty of disclosure
          1.63
          When taken abroad to seal all papers
          1.66
          Oath or declaration in reissue application
          1.172, 1.175
          Object of the invention
          1.73
          Office action time for reply
          1.134
          Office fees. (See Fees and payment of money)
          Official action, based exclusively upon the written record
          1.2
          Official business, should be transacted in writing
          1.2

            Official Gazette:

          Announces request for reexamination
          1.11(c), 1.525, 1.904
          Notice of filing application to nonsigning inventor
          1.47
          Notice of issuance of ex parte reexamination certificate
          1.570(f)
          Notice of issuance of inter partes reexamination certificate
          1.997
          Service of notices in
          41.101
          Oral statements
          1.2

          Order to reexamine
          1.525
          Ownership, statement establishing by assignee
          3.73(b)
          P
          Paper, definition of
          1.9(k)
          Papers (requirements to become part of Office permanent records)
          1.52
          Handwritten, not permitted
          1.52(a)
          Papers not received on Saturday, Sunday or holidays
          1.6
          Patent application. (See Application for patent and Provisional patent applications)
          Patent application publication. (See Published application)
          Patent attorneys and agents. (See Attorneys and agents)
          Patent Cooperation Treaty:
          Amendments and corrections during international processing
          1.471
          Amendments during international preliminary examination
          1.485
          Applicant for international application
          1.421
          Changes in person, name and address, where filed
          1.421(f), 1.472
          Claim content and format in an international application
          1.436
          Commencement of the national stage
          1.491(a)
          Conduct of international preliminary examination
          1.484
          Definition of terms
          1.401
          Delays in meeting time limits
          1.468
          Demand for international preliminary examination
          1.480
          Designation of States
          1.432
          Election of States
          1.480(d)
          Entry into national stage
          1.491(b), 1.495
          Examination at national stage
          1.496
          Fees:
          Due within one month of filing international application
          1.431(c)
          Failure to pay results in withdrawal of application
          1.431(d), 1.432
          Filing and processing fees
          1.445
          International preliminary examination
          1.481, 1.482
          National stage
          1.492
          Refunds
          1.26, 1.446, 1.480(c)
          Filing by other than inventor
          1.421(c), 1.422
          International application requirements
          1.431
          Abstract
          1.438
          Claims
          1.436
          Description
          1.435
          Drawings
          1.437
          Physical requirements
          1.433
          Request
          1.434
          International Bureau
          1.415
          Inventor deceased
          1.422, 1.497
          Inventor insane or legally incapacitated
          1.497
          Inventors, joint
          1.421(b), 1.497
          National stage examination
          1.496
          Oath or declaration at national stage
          1.497
          Priority, claim for
          1.451, 1.452
          Record copy to International Bureau, Transmittal procedures
          1.461
          Representation by attorney or agent
          1.455
          Time limits for processing applications
          1.465, 1.468
          Translation:
          Of international application for U.S. national phase
          1.495
          Of publication of international application for provisional rights
          1.417
          United States as:
          Designated or Elected Office
          1.414

          International Preliminary Examining Authority
          1.416
          International Searching Authority
          1.413
          Receiving Office
          1.412
          Unity of invention:
          Before International Searching Authority
          1.475, 1.476
          Before International Preliminary Examining Authority
          1.488
          National stage
          1.475, 1.499
          Protest to lack of
          1.477, 1.489
          Withdrawal of international application, designations, priority claims, demands and elections
          1.421(g), 1.431(d)
          Patent Law Treaty:
          Model International Forms
          1.76, 3.31(h)
          Patent term adjustment due to examination delay
          1.702-1.705
          Application for
          1.705
          Determination
          1.705
          Grounds for
          1.702
          Period of adjustment
          1.703
          Reduction of period of adjustment
          1.704
          Patent term extension due to examination delay
          1.701
          Patent term extension due to regulatory review period. (See Extension of patent term due to regulatory review period (35 U.S.C. 156))
          Patentee notified of interference
          41.101, 41.203
          Patents. (see also Allowance and issue of Patent):
          Available for license or sale, publication of notice
          1.21(i)
          Certified copies of
          1.13
          Correction of errors in
          1.171, 1.322, 1.323, 1.324
          Delivery of
          1.315
          Disclaimer
          1.321
          Identification required in letters concerning
          1.5
          Obtainable by civil action
          90.1-90.3
          Price of copies
          1.19
          Records of, open to public
          1.11
          Reissuing of, when defective
          1.171-1.178
          Payment of fees
          1.23
          Person, definition for small entity purposes
          1.27(a)(1)
          Personal attendance unnecessary
          1.2
          Petition for reissue
          1.171, 1.172
          Patent Trial and Appeal Board. (See Appeal to Patent Trial and Appeal Board, Inter Partes Review, Post-Grant Review, Derivation Proceeding, Patent Trial Practice and Procedure, and Interferences)
          Patent Trial Practice and Procedure (see also inter partes review, post-grant review, covered business method patent review, and derivation proceeding)
          General
          42.1-42.14
          Policy
          42.1
          Definitions
          42.2
          Jurisdiction
          42.3
          Notice of trial
          42.4
          Conduct of the proceeding
          42.5
          Filing of documents, including exhibits; service
          42.6
          Management of the record
          42.7
          Mandatory notices
          42.8
           Action by patent owner
          42.9
          Counsel
          42.10
           Duty of candor; signing papers; representations to the Board; sanctions
          42.11
           Sanctions
          42.12
           Citation of authority
          42.13
           Public availability
          42.14

          Fees
          42.15
          Petition and Motion Practice
          42.20-42.25
          General
          42.20
          Notice of basis for relief
          42.21
          Content of petitions and motions
          42.22
          Oppositions and replies
          42.23
          Type-volume or page and word count limits for petitions, motions, oppositions and replies
          42.24
          Default filing times
          42.25
          Testimony and Production
          42.51-42.65
          Discovery
          42.51
          Compelling testimony and production
          42.52
          Taking testimony
          42.53
          Protective order
          42.54
          Confidential information in a petition
          42.55
          Expungement of confidential information
          42.56
          Admissibility
          42.61
          Applicability of the Federal Rules of Evidence
          42.62
          Form of evidence
          42.63
          Objection; motion to exclude
          42.64
          Expert testimony; tests and data
          42.65
          Oral Argument, Decision, and Settlement
          42.70-74
          Oral argument
          42.70
          Decision on petitions or motions
          42.71
          Termination of trial
          42.72
          Judgment
          42.73
          Settlement
          42.74
          Certificate
          42.80
          Petition to the Director:
          Fees
          1.17
          For delayed payment of issue fee
          1.137
          For license for foreign filing
          5.12
          For the revival of an abandoned application
          1.137
          From formal objections or requirements
          1.113, 1.181
          From requirement for restriction
          1.129, 1.144
          General requirements
          1.181
          In interferences
          41.3
          In reexamination
          1.515(c)
          Petition to accept an unintentionally delayed claim for domestic benefit
          1.78
           Petition to accept an unintentionally delayed claim for foreign priority
          1.55
          Questions not specifically provided for
          1.182
          Suspension of rules
          1.183
          To exercise supervisory authority
          1.181
          To make special
          1.102
          Plant patent applications:
          Applicant
          1.42, 1.162
          Claim
          1.164
          Declaration
          1.162
          Description
          1.162
          Drawings
          1.165
          Examination
          1.167
          Fee for copies
          1.19
          Filing fee
          1.16(c)
          Issue fee
          1.18(c)
          Latin named genus and species
          1.76(b)(3), 1.163(c)(4)
          Oath
          1.162

          Rules applicable
          1.161
          Specification
          1.163
          Specimens
          1.166
          Post issuance fees
          1.20
          Post Office receipt as filing date
          1.10
          Postal emergency or interruption
          1.10(g)-(i)
          Post-Grant Review. (See also Patent Trial Practice and Procedure):
          General
          42.200-42.207
          Procedure; pendency
          42.200
          Who may petition
          42.201
          Time for filing
          42.202
          Fee
          42.15, 42.203
          Content of petition
          42.204
          Service of petition
          42.205
          Filing date
          42.206
          Preliminary response
          42.207
          Instituting a review
          42.208
          After Institution
          42.220-42.224
          Patent owner response
          42.220
          Motion to amend
          42.221
          Multiple proceedings; joinder
          42.222
          Supplemental information
          42.223
          Discovery
          42.224
          Power of attorney. (See Attorneys and agents)
          Preliminary amendments
          1.115
          Preserved in confidence, applications
          1.12, 1.14
          Exceptions (status, access or copies available)
          1.14
          Prior art citation in patent files
          1.501
          Prior art statement:
          Content of
          1.98
          In reexamination
          1.555, 1.933
          To comply with duty of disclosure
          1.97
          Prior art submission by third party:
          In patent application
          1.290
          In patent file
          1.501
          In protest against pending unpublished application
          1.291
          Prior Invention, affidavit or declaration of, to overcome rejection
          1.131
          Prior public disclosure, affidavit or declaration of, to overcome rejection
          1.130
          Prioritized examination
          1.102(e)
          Priority, international applications
          1.451
          Priority, right of, under treaty or law
          1.55
          Priority statement in interferences:
          Contents of
          41.204
          Correction of statement on motion
          41.120
          Effect of statement
          41.204
          Failure to file
          41.204
          In case of motion to amend interference
          41.208
          May be amended if defective
          41.120
          Reliance on prior application
          41.204
          Requirement for
          41.204
          Service on opposing parties
          41.204
          When opened to inspection
          41.204
          Proclamation as to protection of foreign mask works
          Part 150
          Protests to grant of patent
          1.291
          Provisional patent applications:
          Claiming the benefit of
          1.78
          Converting a nonprovisional to a provisional
          1.53(c)(2)

          Converting a provisional to a nonprovisional
          1.53(c)(3)
          Filing date
          1.53
          Filing fee
          1.16(d)
          General requisites
          1.51(c)
          Later filing of filing fee and cover sheet
          1.53(g)
          Names of all inventors required
          1.41, 1.53(c)
          No right of priority
          1.53(c)(4)
          No examination
          1.53(i)
          Papers concerning, must identify provisional applications as such, and by application number
          1.5(f)
          Parts of complete provisional application
          1.51(c)
          Processing fees
          1.17(i)
          Revival of
          1.137
          When abandoned
          1.53(i)
          Public information
          Part 102
          Fee
          1.17(j)
          Publication:
          Of reexamination certificate
          1.570(f), 1.997(f)
          Publication of application
          1.211
          Early publication
          1.219
          Express abandonment to avoid publication
          1.138(c)
          Fee
          1.18
          Nonpublication request
          1.213
          Publication of redacted copy
          1.217
          Republication
          1.221
          Voluntary publication
          1.221
          Published application
          Access to
          1.11, 1.14
          Certified copies
          1.13
          Contents
          1.215
          Definition of published application
          1.9(c)
          Records of, open to public
          1.11, 1.12
          Republication of
          1.221
          Third party submission in
          1.290
          R
          RCE (Request for continued examination)
          1.114
          Reasons for allowance
          1.104(e)
          Reconsideration of Office action
          1.112
          Reconstruction of lost files
          1.251
          Recording of assignments. (See Assignments and recording)
          Records of the Patent and Trademark Office
          1.11-1.15
          Redacted publication of application
          1.217
          Reexamination:
          Amendments, manner of making
          1.121(c)
          Announcement in Official Gazette

          1.11(c)
          Correction of inventorship
          1.530
          Correspondence address
          1.33(c)

            Ex parte proceedings
          Amendments, manner of making
          1.121(j), 1.530
          Appeal to Board
          41.31
          Appeal to C.A.F.C.
          90.1-90.3
          Civil action under 35 U.S.C. 145
          90.1-90.3
          Concurrent with interference, reissue, other reexamination, litigation or office proceedings(s)
          1.565
          Conduct of
          1.550
          Duty of disclosure in
          1.555

          Examiner's determination to grant or refuse request for
          1.515
          Extensions of time
          1.550(c)
          Fees
          1.20(c)
          Initiated by the Director
          1.520
          Interviews in
          1.560
          Issuance of certificate at conclusion of
          1.570
          Order for reexamination by examiner
          1.525
          Patent owner's statement
          1.530, 1.540
          Processing of prior art citations during
          1.502
          Reply to patent owner's statement to third party requester
          1.535, 1.540
          Request for
          1.510
          Scope of
          1.552
          Service of papers
          1.248
          Examiner's action
          1.104
          Fee charged to deposit account
          1.25
          Identification in letter
          1.5(d)

            Inter partes proceedings
          1.902-907
          Amendments, manner of making
          1.121(j), 1.530, 1.941
          Appeal to Board
          41.61
          Appeal to C.A.F.C.
          1.983
          Civil action under 35 U.S.C. 145 not available
          90.1-90.3
          Concurrent with interference, reissue, other reexamination, litigation or office proceedings(s)
          1.565, 1.985
          Conduct of
          1.937
          Duty of disclosure in
          1.555, 1.933
          Examiner's determination to grant or refuse request for
          1.923-1.927
          Extensions of time
          1.956
          Filing date of request for
          1.919
          Issuance of certificate at conclusion of
          1.997
          Merged with concurrent reexamination proceedings
          1.989
          Merged with reissue application
          1.991
          Notice of, in the Official Gazette

          1.904
          Persons eligible to file request for
          1.903
          Processing of prior art citations during
          1.902
          Scope of
          1.906
          Service of papers
          1.248, 1.903
          Submission of papers by the public
          1.905
          Subsequent requests for
          1.907
          Suspension due to concurrent interference
          1.993
          Suspension due to litigation
          1.987
          Information Disclosure Statements
          1.98, 1.555
          Open to public
          1.11(d)
          Reconsideration before final action
          1.112
          Refund of fee
          1.26
          Reply to action
          1.111
          Revival of termination examination
          1.137
          Reference characters in drawings
          1.74, 1.84(p)
          References cited on examination
          1.104(d)
          Refund of international application filing and processing fees
          1.446
          Refund of money paid by mistake
          1.26
          Register of Government interest in patents
          3.58
          Rehearing:
          Of appeal decisions by Patent Trial and Appeal Board
          41.52
          Request for, time for appeal after action on
          90.3
          Reissues:
          Amendments
          1.173
          Applicants, assignees
          1.172
          Application for reissue
          1.171

          Application made and sworn to by inventor, if living
          1.172
          Declaration
          1.175
          Drawings
          1.173(a)(2), 1.173(b)(3)
          Examination of reissue
          1.176
          Filed during interference
          41.202, 41.203
          Filing during reexamination
          1.565, 1.985
          Filing fee
          1.16
          Filing of announced in Official Gazette

          1.11(b)
          Grounds for and requirements
          1.171-1.173, 1.175-1.178
          Issue fee
          1.18(a)
          Oath
          1.175
          Open to public
          1.11
          Original claims subject to reexamination
          1.176
          Original patent surrendered
          1.178
          Reissue in divisions
          1.177
          Restriction
          1.176
          Specification
          1.173
          Take precedence in order of examination
          1.176
          To contain no new matter
          1.173(a)
          What must accompany application
          1.171, 1.172
          Rejection:
          After two rejections appeal may be taken from examiner to Board of Appeals
          1.191, 41.31
          Applicant will be notified of rejection with reasons and references
          1.104(a)(2)
          Examiner may rely on admissions by applicant or patent owner, or facts within examiner's knowledge
          1.104(c)(3)
          Final
          1.113
          Formal objections
          1.104
          On account of invention shown by others but not claimed, how overcome
          1.131
          References will be cited
          1.104(c)
          Requisites of notice of
          1.104
          Reply brief
          41.41
          Reply by applicant or patent owner
          1.111
          Reply by requester
          1.535, 1.947
          Representative capacity
          1.34(a)
          Request for continued examination(RCE)
          1.114
          Request for reconsideration
          1.112
          Request for ex parte reexamination
          1.510
          Request for inter partes reexamination
          1.913-1.927
          Requirement for information
          1.105
          Response time to Office action
          1.134
          Restriction of application
          1.141-1.146
          Claims to nonelected invention withdrawn
          1.142
          Constructive election
          1.145
          Petition from requirements for
          1.129, 1.144
          Provisional election
          1.143
          Reconsideration of requirement
          1.143
          Reissue
          1.176
          Requirement for
          1.142
          Subsequent presentation of claims for different invention
          1.145
          Transitional procedures
          1.129
          Return of correspondence
          1.5(a)
          Revival of abandoned application or terminated or limited reexamination proceeding
          1.137
          Unintentional abandonment fee
          1.17(m)
          Revocation of power of attorney or authorization of agent
          1.36(a)

          S
          Saturday, when last day falls on
          1.7, 1.9(h)
          Scope of reexamination proceedings
          1.552, 1.906
          Secrecy order
          5.1-5.5
          Serial number of application (see also Application Number)
          1.5, 1.53, 1.54(b)
          Service of notices:
          For taking testimony
          41.157
          In contested cases
          41.101
          Of appeal to the Court of Appeals for the Federal Circuit
          90.1-90.3
          Service of papers
          1.248
          Shortened period for reply
          1.134
          Signature:
          Handwritten
          1.4(d)(1)
          Implicit certifications
          1.4(d), 11.18
          To a written assertion of small entity status
          1.27(c)(2)
          To amendments and other papers
          1.33(b)
          To an application for extension of patent term
          1.730
          To express abandonment
          1.138
          To oath
          1.63
          To reissue oath or declaration
          1.172
          When copy is acceptable
          1.4
          S-Signature
          1.4(d)(2)
          Small business concern:
          Definition (for small entity purposes)
          1.27(a)(2)
          Small entity:
          Definition
          1.27(a)
          License to Federal Agency
          1.27(a)(4)
          Status establishment
          1.27, 1.28
          Status update
          1.27(g), 1.28
          Written assertion
          1.27(c)
          Solicitor's address
          1.1(a)(3)
          Species of invention claimed
          1.141, 1.146
          Specification (see also Application for patent, Claims):
          Abstract
          1.72
          Amendments to
          1.121, 1.125
          Arrangement of
          1.77, 1.154, 1.163
          Best mode
          1.71
          Claim
          1.75
          Contents of
          1.71-1.75
          Copyright notice
          1.71(d)
          Cross-references to other applications
          1.78
          Description of the invention
          1.71
          Filed by reference
          1.57(a)
          If defective, reissue to correct
          1.171-1.178
          Incorporation by reference of prior filed application
          1.57(b)
          Mask work notice
          1.71(d)
          Must conclude with specific and distinct claim
          1.75
          Must point out new improvements specifically
          1.71
          Must refer by figures to drawings
          1.74
          Must set forth the precise invention
          1.71
          Object of the invention
          1.73
          Order of arrangement in framing
          1.77
          Paper, writing, margins
          1.52
          Paragraph numbering
          1.52(b)(6)
          Part of complete application
          1.51
          Reference to drawings
          1.74
          Requirements of
          1.71-1.75

          Substitute
          1.125
          Summary of the invention
          1.73
          Title of the invention
          1.72(a)
          To be rewritten, if necessary
          1.125
          Specimens. (See Models and exhibits)
          Specimens of composition of matter to be furnished when required
          1.93
          Specimens of plants
          1.166
          Statutory disclaimer fee
          1.20(d)
          Sufficient funds in deposit account
          1.25
          Suit in equity. (See Civil action)
          Summary of invention
          1.73
          Sunday, when last day falls on
          1.7. 1.9(h)
          Supervisory authority, petition to Director to exercise
          1.181
          Supplemental oath/declaration
          1.67
          Supplemental Examination of Patents:
          Conclusion of
          1.625
          Conduct of
          1.620
          Content of request
          1.610
          Filing of papers in supplemental examination
          1.601
          Format of papers filed
          1.615
          Procedure after conclusion
          1.625
          Publication of certificate
          1.625
          Surcharge for completion of nonprovisional application after filing date
          1.16(f), 1.53(f)
          Suspension of action by Office
          1.103
          CPA, Design
          1.103(b)
          Deferral of examination
          1.103(d)
          For cause
          1.103(a)
          RCE
          1.103(c)
          Suspension of ex parte prosecution during interference
          41.103
          Suspension of rules
          1.183
          Symbols for drawings
          1.84(n)
          Symbols for nucleotide and/or amino acid sequence data
          1.822
          T
          Tables in patent applications
          1.58
          Technological Invention
          42.301
          Terminal disclaimer
          1.321
          Testimony by Office employees
          15 C.F.R. Part 15a
          Testimony in interferences:
          Additional time for taking
          41.4
          Assignment of times for taking
          41.157
          Certification and filing by officer
          41.157
          Copies of
          41.157
          Depositions must be filed
          41.157
          Discovery
          41.150
          Effect of errors and irregularities in deposition
          41.155, 41.157
          Evidence must comply with rules
          41.152
          Examination of witnesses
          41.157
          Form of deposition
          41.157
          Formal objections to
          41.155, 41.157
          Formalities in preparing depositions
          41.157
          In foreign countries
          41.156, 41.157
          Manner of taking testimony of witnesses
          41.157
          Notice of examination of witnesses
          41.157
          Objections noted in depositions
          41.155, 41.157
          Objections to formal matters
          41.155, 41.157

          Officer's certificate
          41.157
          Persons before whom depositions may be taken
          41.157
          Service of notice
          41.157
          Stipulations or agreements concerning
          41.157
          Taken by depositions
          41.157
          Time for taking
          41.157
          Third-party submission in published application
          1.290
          Time expiring on Saturday, Sunday, or holiday
          1.7, 1.9(h)
          Time for payment of issue fee
          1.311
          Time for reply by applicant
          1.134, 1.136
          Time for reply by patent owner
          1.530, 1.945
          Time for reply by requester
          1.535, 1.947
          Time for reply to Office action
          1.134, 1.136
          Time, periods of
          1.7
          Timely filing of correspondence
          1.8, 1.10
          Title of invention
          1.72(a)
          Title reports, fee for
          1.19(b)(4)
          Transitional procedures
          1.129
          U
          Unintentional abandonment
          1.137
          Unintentional delay in reexamination
          1.550(e), 1.958
          United States as:
          Designated Office
          1.414
          Elected Office
          1.414
          International Preliminary Examining Authority
          1.416
          International Searching Authority
          1.413
          Receiving Office
          1.412
          Unlocatable files
          1.251
          Unsigned continuation or divisional application
          1.53, 1.63
          Use of file of parent application
          1.53(d)
          V
          Voluntary publication of application
          1.221
          W
          Waiver of confidentiality
          1.53(d)(6)
          Withdrawal from issue
          1.313
          Withdrawal of attorney or agent
          1.36
          37 CFR Ch. I (7-1-20 Edition)
          U.S. Patent and Trademark Office, Commerce

          PART 1—RULES OF PRACTICE IN PATENT CASES

            Editorial Note:
            Part 1 is placed in the separate grouping of parts pertaining to patents regulations.

            TRADEMARKS

          Pt. 2
          PART 2—RULES OF PRACTICE IN TRADEMARK CASES

            Sec.
            2.1
            [Reserved]
            2.2
            Definitions.
            2.6
            Trademark fees.
            2.7
            Fastener recordal fees.

              Representation by Attorneys or Other Authorized Persons
              2.11
              Requirement for representation.
              2.12-2.16
              [Reserved]
              2.17
              Recognition for representation.
              2.18
              Correspondence, with whom held.
              2.19
              Revocation or withdrawal of attorney.

              Declarations
              2.20
              Declarations in lieu of oaths.

              Application for Registration
              2.21
              Requirements for receiving a filing date.
              2.22
              Requirements for a TEAS Plus application.
              2.23
              Requirement to correspond electronically with the Office and duty to monitor status.
              2.24
              Designation and revocation of domestic representative by foreign applicant.
              2.25
              Documents not returnable.
              2.27
              Pending trademark application index; access to applications.

              The Written Application
              2.31
              [Reserved]
              2.32
              Requirements for a complete trademark or service mark application.
              2.33
              Verified statement for a trademark or service mark.
              2.34
              Bases for filing a trademark or service mark application.
              2.35
              Adding, deleting, or substituting bases.
              2.36
              Identification of prior registrations.
              2.37
              Description of mark.
              2.38
              Use by predecessor or by related companies.
              2.39
              [Reserved]
              2.41
              Proof of distinctiveness under section 2(f).
              2.42
              Concurrent use.
              2.43
              Service mark.
              2.44
              Requirements for a complete collective mark application.
              2.45
              Requirements for a complete certification mark application; restriction on certification mark application.
              2.46
              Principal Register.
              2.47
              Supplemental Register.
              2.48
              Office does not issue duplicate registrations.

              Drawing
              2.51
              Drawing required.
              2.52
              Types of drawings and format for drawings.
              2.53
              Requirements for drawings filed through the TEAS.
              2.54
              Requirements for drawings submitted on paper.

              Specimens
              2.56
              Specimens.
              2.57-2.58
              [Reserved]
              2.59
              Filing substitute specimen(s).

              Examination of Application and Action by Applicants
              2.61
              Action by examiner.
              2.62
              Procedure for submitting response.
              2.63
              Action after response.
              2.64
              Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error.
              2.65
              Abandonment.
              2.66
              Revival of applications abandoned in full or in part due to unintentional delay.
              2.67
              Suspension of action by the Patent and Trademark Office.
              2.68
              Express abandonment (withdrawal) of application.
              2.69
              Compliance with other laws.

              Amendment of Application
              2.71
              Amendments to correct informalities.
              2.72
              Amendments to description or drawing of the mark.
              2.73
              Amendment to recite concurrent use.
              2.74
              Form and signature of amendment.
              2.75
              Amendment to change application to different register.
              2.76
              Amendment to allege use.
              2.77
              Amendments between notice of allowance and statement of use.

              Publication and Post Publication
              2.80
              Publication for opposition.
              2.81
              Post publication.
              2.82
              Marks on Supplemental Register published only upon registration.
              2.83
              Conflicting marks.

              2.84
              Jurisdiction over published applications.

              Classification
              2.85
              Classification schedules.
              2.86
              Multiple-class applications.
              2.87
              Dividing an application.

              Post Notice of Allowance
              2.88
              Statement of use after notice of allowance.
              2.89
              Extensions of time for filing a statement of use.

              Concurrent use proceedings
              2.91-2.98
              [Reserved]
              2.99
              Application to register as concurrent user.

              Opposition
              2.101
              Filing an opposition.
              2.102
              Extension of time for filing an opposition.
              2.103
              [Reserved]
              2.104
              Contents of opposition.
              2.105
              Notification to parties of opposition proceeding(s).
              2.106
              Answer.
              2.107
              Amendment of pleadings in an opposition proceeding.

              Cancellation
              2.111
              Filing petition for cancellation.
              2.112
              Contents of petition for cancellation.
              2.113
              Notification of cancellation proceeding.
              2.114
              Answer.
              2.115
              Amendment of pleadings in a cancellation proceeding.

              Procedure in Inter Partes Proceedings
              2.116
              Federal Rules of Civil Procedure.
              2.117
              Suspension of proceedings.
              2.118
              Undelivered Office notices.
              2.119
              Service and signing.
              2.120
              Discovery.
              2.121
              Assignment of times for taking testimony and presenting evidence.
              2.122
              Matters in evidence.
              2.123
              Trial testimony in inter partes cases.
              2.124
              Depositions upon written questions.
              2.125
              Filing and service of testimony.
              2.126
              Form of submissions to the Trademark Trial and Appeal Board.
              2.127
              Motions.
              2.128
              Briefs at final hearing.
              2.129
              Oral argument; reconsideration.
              2.130
              New matter suggested by the trademark examining attorney.
              2.131
              Remand after decision in inter partes proceeding.
              2.132
              Involuntary dismissal for failure to take testimony.
              2.133
              Amendment of application or registration during proceedings.
              2.134
              Surrender or voluntary cancellation of registration.
              2.135
              Abandonment of application or mark.
              2.136
              Status of application or registration on termination of proceeding.

              Appeals
              2.141

                Ex parte appeals from action of trademark examining attorney.
              2.142
              Time and manner of ex parte appeals.
              2.143
              [Reserved]
              2.144
              Reconsideration of decision on ex parte appeal.
              2.145
              Appeal to court and civil action.

              Petitions and Action by the Director
              2.146
              Petitions to the Director.
              2.147
              Petition to the Director to accept a paper submission.
              2.148
              Director may suspend certain rules.

              Certificate
              2.151
              Certificate.

              Publication of Marks Registered Under 1905 Act
              2.153
              Publication requirements.
              2.154
              Publication inOfficial Gazette.

              2.155
              Notice of publication.
              2.156
              Not subject to opposition; subject to cancellation.

              Reregistration of Marks Registered Under Prior Acts
              2.158
              Reregistration of marks registered under Acts of 1881, 1905, and 1920.

              Cancellation for Failure To File Affidavit or Declaration During Sixth Year
              2.160
              Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration.
              2.161
              Requirements for a complete affidavit or declaration of continued use or excusable nonuse.
              2.162
              Notice to registrant.
              2.163
              Acknowledgment of receipt of affidavit or declaration.
              2.164
              Correcting deficiencies in affidavit or declaration.
              2.165
              Petition to Director to review refusal.
              2.166
              Affidavit of continued use or excusable nonuse combined with renewal application.

              Affidavit or Declaration Under Section 15
              2.167
              Affidavit or declaration under section 15.
              2.168
              Affidavit or declaration under section 15 combined with affidavit or declaration under sections 8 or 71, or with renewal application.

              Correction, Disclaimer, Surrender, Etc.
              2.171
              New certificate on change of ownership.
              2.172
              Surrender for cancellation.
              2.173
              Amendment of registration.
              2.174
              Correction of Office mistake.
              2.175
              Correction of mistake by owner.
              2.176
              Consideration of above matters.

              Term and Renewal
              2.181
              Term of original registrations and renewals.
              2.182
              Time for filing renewal application.
              2.183
              Requirements for a complete renewal application.
              2.184
              Refusal of renewal.
              2.185
              Correcting deficiencies in renewal application.
              2.186
              Petition to Director to review refusal of renewal.
              2.187
              [Reserved]

              General Information and Correspondence in Trademark Cases
              2.188
              [Reserved]
              2.189
              Requirement to provide domicile address.
              2.190
              Addresses for trademark correspondence with the United States Patent and Trademark Office.
              2.191
              Action of the Office based on the written record.
              2.192
              Business to be conducted with decorum and courtesy.
              2.193
              Trademark correspondence and signature requirements.
              2.194
              Identification of trademark application or registration.
              2.195
              Filing date of trademark correspondence.
              2.196
              Times for taking action: Expiration on Saturday, Sunday or Federal holiday.
              2.197
              Certificate of mailing.
              2.198
              Filing of correspondence by Priority Mail Express®.

              Trademark Records and Files of the Patent and Trademark Office
              2.200
              Assignment records open to public inspection.
              2.201
              Copies and certified copies.

              Fees and Payment of Money in Trademark Cases
              2.206
              Trademark fees payable in advance.
              2.207
              Methods of payment.
              2.208
              Deposit accounts.
              2.209
              Refunds.

            Authority:
            15 U.S.C. 1123 and 35 U.S.C. 2 unless otherwise noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 434; 15 U.S.C. 1066, 1067.

            Source:
            30 FR 13193, Oct. 16, 1965, unless otherwise noted.

            Editorial Note:
            Nomenclature changes to part 2 appear at 68 FR 14337, Mar. 25, 2003.

            § 2.1
            [Reserved]

            § 2.2
            Definitions.
            (a) The Act as used in this part means the Trademark Act of 1946, 60 Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.

            (b) Entity as used in this part includes both natural and juristic persons.
            (c) Director as used in this chapter, except for part 11, means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
            (d) Federal holiday within the District of Columbia means any day, except Saturdays and Sundays, when the United States Patent and Trademark Office is officially closed for business for the entire day.
            (e) The term Office or abbreviation USPTO means the United States Patent and Trademark Office.
            (f) The acronym TEAS means the Trademark Electronic Application System and, as used in this part, includes all related electronic systems required to complete an electronic submission through TEAS.
            (g) The acronym ESTTA means the Electronic System for Trademark Trials and Appeals and, as used in this part, includes all related electronic systems required to complete an electronic submission through ESTTA.
            (h) The term international application as used in this part means, in addition to the definition in section 60 of the Act, an application seeking an extension of protection of an international registration in an initial designation filed under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
            (i) The term subsequent designation as used in this part means a request for extension of protection of an international registration made after the International Bureau registers the mark on the International Register.
            (j) The term holder as used in this part means, in addition to the definition of a “holder of an international registration” in section 60 of the Act, the natural or juristic person in whose name an international registration seeking an extension of protection to the United States is recorded on the International Register.
            (k) The term use in commerce or use of the mark in commerce as used in this part means, in addition to the definition of “use in commerce” in section 45 of the Act:
            (1) For a trademark or service mark, use of the mark in commerce by an applicant, owner, or holder on or in connection with the goods or services specified in a U.S. application, amendment to allege use, statement of use, or affidavit or declaration of use or excusable nonuse;
            (2) For a collective trademark or collective service mark, use of the mark in commerce by members on or in connection with the goods or services specified in a U.S. application, amendment to allege use, statement of use, or affidavit or declaration of use or excusable nonuse;
            (3) For a collective membership mark, use of the mark in commerce by members to indicate membership in the collective organization as specified in a U.S. application, amendment to allege use, statement of use, or affidavit or declaration of use or excusable nonuse; and
            (4) For a certification mark, use of the mark in commerce by authorized users on or in connection with the goods or services specified in a U.S. application, amendment to allege use, statement of use, or affidavit or declaration of use or excusable nonuse.
            (l) The term bona fide intention to use the mark in commerce as used in this part means, for a trademark or service mark, that an applicant or holder has a bona fide intention to use the mark in commerce on or in connection with the goods or services specified in a U.S. application or international application/subsequent designation.
            (m) The term bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce as used in this part means:
            (1) For a collective trademark or collective service mark, that an applicant or holder has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the goods or services specified in a U.S. application or international application/subsequent designation;
            (2) For a collective membership mark, that an applicant or holder has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce by members to indicate membership in the collective organization as specified in a U.S. application or international application/subsequent designation; and
            (3) For a certification mark, that an applicant or holder has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the goods or services specified in a U.S. application or international application/subsequent designation.
            (n) The term verified statement, and the terms verify, verified, or verification as used in this part refers to a statement that is sworn to, made under oath or in an affidavit, or supported by a declaration under § 2.20 or 28 U.S.C. 1746, and signed in accordance with the requirements of § 2.193.
            (o) The term domicile as used in this part means the permanent legal place of residence of a natural person or the principal place of business of a juristic entity.
            (p) The term principal place of business as used in this part means the location of a juristic entity's headquarters where the entity's senior executives or officers ordinarily direct and control the entity's activities and is usually the center from where other locations are controlled.
            (q) The acronym ETAS means the Electronic Trademark Assignment System and, as used in this part, includes all related electronic systems required to complete an electronic submission through ETAS.
            (r) Eastern Time means Eastern Standard Time or Eastern Daylight Time, as appropriate.
            (s) The term electronic submission as used in this part refers to any submission made through an electronic filing system available on the Office's website, but not through email or facsimile transmission.

            (t) The abbreviation USPS as used in this part means the U.S. Postal Service.
            [54 FR 37588, Sept. 11, 1989, as amended at 68 FR 48289, Aug. 13, 2003; 68 FR 55762, Sept. 26, 2003; 73 FR 47685, Aug. 14, 2008; 78 FR 20197, Apr. 3, 2013; 80 FR 33178, June 11, 2015; 84 FR 31510, July 2, 2019; 84 FR 37093, July 31, 2019]

            § 2.6
            Trademark fees.
            (a) Trademark process fees.

              (1) Application filing fees.
              (i) For filing an application on paper, per class
              $600.00
              (ii) For filing an application under section 66(a) of the Act, per class—$400.00
              (iii) For filing a TEAS Standard application, per class—$275.00
              (iv) For filing a TEAS Plus application under § 2.22, per class—$225.00
              (v) Additional processing fee under § 2.22(c), per class—$125.00
              (2) Amendment to allege use. (i) For filing an amendment to allege use under section 1(c) of the Act on paper, per class
              $200.00
              (ii) For filing an amendment to allege use under section 1(c) of the Act through TEAS, per class
              $100.00
              (3) Statement of use. (i) For filing a statement of use under section 1(d)(1) of the Act on paper, per class
              $200.00
              (ii) For filing a statement of use under section 1(d)(1) of the Act through TEAS, per class
              $100.00
              (4) Extension of time for filing statement of use. (i) For filing a request under section 1(d)(2) of the Act for a six-month extension of time for filing a statement of use under section 1(d)(1) of the Act on paper, per class
              $225.00
              (ii) For filing a request under section 1(d)(2) of the Act for a six-month extension of time for filing a statement of use under section 1(d)(1) of the Act through TEAS, per class
              $125.00
              (5) Application for renewal of a registration fees. (i) For filing an application for renewal of a registration on paper, per class
              $500.00
              (ii) For filing an application for renewal of a registration through TEAS, per class
              $300.00
              (6) Renewal during grace period. (i) Additional fee for filing a renewal application during the grace period on paper, per class
              $200.00
              (ii) Additional fee for filing a renewal application during the grace period through TEAS, per class
              $100.00
              (7) Publishing mark under section 12(c). (i) For filing to publish a mark under section 12(c) on paper, per class
              $200.00
              (ii) For filing to publish a mark under section 12(c) through TEAS, per class
              $100.00
              (8) New certificate of registration. (i) For issuing a new certificate of registration upon request of registrant, request filed on paper
              $200.00
              (ii) For issuing a new certificate of registration upon request of registrant, request filed through TEAS
              $100.00
              (9) Certificate of correction of registrant's error. (i) For a certificate of correction of registrant's error, request filed on paper
              $200.00
              (ii) For a certificate of correction of registrant's error, request filed through TEAS
              $100.00
              (10) Disclaimer to a registration. (i) For filing a disclaimer to a registration, on paper
              $200.00
              (ii) For filing a disclaimer to a registration, through TEAS or ESTTA
              $100.00
              (11) Amendment of registration. (i) For filing an amendment to a registration, on paper
              $200.00
              (ii) For filing an amendment to a registration, through TEAS or ESTTA
              $100.00
              (12) Affidavit under section 8. (i) For filing an affidavit under section 8 of the Act on paper, per class
              $225.00
              (ii) For filing an affidavit under section 8 of the Act through TEAS, per class
              $125.00
              (13) Affidavit under section 15. (i) For filing an affidavit under section 15 of the Act on paper, per class
              $300.00
              (ii) For filing an affidavit under section 15 of the Act through TEAS, per class
              $200.00
              (14) Filing section 8 affidavit during grace period. (i) Additional fee for filing a section 8 affidavit during the grace period on paper, per class
              $200.00
              (ii) Additional fee for filing a section 8 affidavit during the grace period through TEAS, per class
              $100.00
              (15) Petitions to the Director. (i) For petitions to the Director filed on paper
              $200.00
              (ii) For petitions to the Director filed through TEAS
              $100.00
              (16) Petition to cancel. (i) For filing a petition to cancel on paper, per class
              $500.00
              (ii) For filing a petition to cancel through ESTTA, per class
              $400.00
              (17) Notice of opposition. (i) For filing a notice of opposition on paper, per class
              $500.00
              (ii) For filing a notice of opposition through ESTTA, per class
              $400.00
              (18) Ex parte appeal. (i) For ex parte appeal to the Trademark Trial and Appeal Board filed on paper, per class
              $300.00
              (ii) For ex parte appeal to the Trademark Trial and Appeal Board filed through ESTTA, per class
              $200.00
              (19) Dividing an application. (i) Request to divide an application filed on paper, per new application created
              $200.00
              (ii) Request to divide an application filed through TEAS, per new application created
              $100.00
              (20) Correcting deficiency in section 8 affidavit. (i) For correcting a deficiency in a section 8 affidavit via paper filing
              $200.00
              (ii) For correcting a deficiency in a section 8 affidavit via TEAS filing
              $100.00
              (21) Correcting deficiency in renewal application. (i) For correcting a deficiency in a renewal application via paper filing
              $200.00
              (ii) For correcting a deficiency in a renewal application via TEAS filing
              $100.00
              (22) Extension of time for filing notice of opposition under § 2.102(c)(1)(ii) or (c)(2). (i) For filing a request for an extension of time to file a notice of opposition under § 2.102(c)(1)(ii) or (c)(2) on paper
              $200.00
              (ii) For filing a request for an extension of time to file a notice of opposition under § 2.102(c)(1)(ii) or (c)(2) through ESTTA
              $100.00
              (23) Extension of time for filing notice of opposition under § 2.102(c)(3). (i) For filing a request for an extension of time to file a notice of opposition under § 2.102(c)(3) on paper
              $300.00
              (ii) For filing a request for an extension of time to file a notice of opposition under § 2.102(c)(3) through ESTTA
              $200.00

            (b) Trademark service fees.

              (1) For printed copy of registered mark, copy only. Service includes preparation of copies by the Office within two to three business days and delivery by United States Postal Service; and preparation of copies by the Office within one business day of receipt and delivery to an Office Box or by electronic means (e.g., facsimile, electronic mail)
              $3.00
              (2) Certified or uncertified copy of trademark application as filed processed within seven calendar days
              $15.00
              (3) Certified or uncertified copy of a trademark-related official record
              $50.00

              (4) Certified copy of a registered mark, showing title and/or status:

              (i) Regular service
              $15.00
              (ii) Expedited local service
              $30.00
              (5) Certified or uncertified copy of trademark records, per document except as otherwise provided in this section
              $25.00
              (6) For recording each trademark assignment, agreement or other document relating to the property in a registration or application
              (i) First property in a document
              $40.00
              (ii) For each additional property in the same document
              $25.00
              (7) For assignment records, abstract of title and certification, per registration
              $25.00
              (8) Additional Fee for Overnight Delivery
              $40.00
              (9) Additional Fee for Expedited Service
              $160.00
              (10) For processing each payment refused (including a check returned “unpaid”) or charged back by a financial institution
              $50.00
              (11) Deposit account service charge for each month when the balance at the end of the month is below $1,000
              $25.00

            [81 FR 72706, Oct. 21, 2016, as amended at 84 FR 37093, July 31, 2019]

            § 2.7
            Fastener recordal fees.

              (a) Application fee for recordal of insignia
              $20.00
              (b) Renewal of insignia recordal
              $20.00
              (c) Surcharge for late renewal of insignia recordal
              $20.00

            [61 FR 55223, Oct. 25, 1996]

            Representation by Attorneys or Other Authorized Persons

              Authority:
              Secs. 2.11 to 2.19 also issued under 35 U.S.C. 31, 32.

              § 2.11
              Requirement for representation.
              (a) An applicant, registrant, or party to a proceeding whose domicile is not located within the United States or its territories must be represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter. The Office cannot aid in the selection of an attorney.

              (b) The Office may require an applicant, registrant, or party to a proceeding to furnish such information or declarations as may be reasonably necessary to the proper determination of whether the applicant, registrant, or party is subject to the requirement in paragraph (a) of this section.
              (c) An applicant, registrant, or party to a proceeding may be required to state whether assistance within the scope of § 11.5(b)(2) of this chapter was received in a trademark matter before the Office and, if so, to disclose the name(s) of the person(s) providing such assistance and whether any compensation was given or charged.
              (d) Failure to respond to requirements issued pursuant to paragraphs (a) through (c) of this section is governed by § 2.65.
              (e) Providing false, fictitious, or fraudulent information in connection with the requirements of paragraphs (a) through (c) of this section shall be deemed submitting a paper for an improper purpose, in violation of § 11.18(b) of this chapter, and subject to the sanctions and actions provided in § 11.18(c).
              (f) Notwithstanding § 2.63(b)(2)(ii), if an Office action maintains only requirements under paragraphs (a), (b), and/or (c) of this section, or only requirements under paragraphs (a), (b), and/or (c) of this section and the requirement for a processing fee under § 2.22(c), the requirements may be reviewed only by filing a petition to the Director under § 2.146.
              [84 FR 31510, July 2, 2019]

              §§ 2.12-2.16
              [Reserved]

              § 2.17
              Recognition for representation.
              (a) Authority to practice in trademark cases. Only an individual qualified to practice under § 11.14 of this chapter may represent an applicant, registrant, or party to a proceeding before the Office in a trademark case.
              (b)(1) Recognition of practitioner as representative. To be recognized as a representative in a trademark case, a practitioner qualified under § 11.14 of this chapter may:
              (i) File a power of attorney that meets the requirements of paragraph (c) of this section;
              (ii) Sign a document on behalf of an applicant, registrant, or party to a proceeding who is not already represented by a practitioner qualified under § 11.14 of this chapter from a different firm; or
              (iii) Appear by being identified as the representative in a document submitted to the Office on behalf of an applicant, registrant, or party to a proceeding who is not already represented by a practitioner qualified under § 11.14 of this chapter from a different firm.
              (2) Authorization to represent. When a practitioner qualified under § 11.14 of this chapter signs a document or appears pursuant to paragraph (b) of this section, his or her signature or appearance shall constitute a representation to the Office that he or she is authorized to represent the person or entity on whose behalf he or she acts. The Office may require further proof of authority to act in a representative capacity.
              (3) Bar information required. A practitioner qualified under § 11.14(a) of this chapter will be required to provide the name of a State, as defined in § 11.1 of this chapter, in which he or she is an active member in good standing, the date of admission to the bar of the named State, and the bar license number, if one is issued by the named State. The practitioner may be required to provide evidence that he or she is an active member in good standing of the bar of the specified State.
              (c) Requirements for power of attorney. A power of attorney must:
              (1) Designate by name at least one practitioner meeting the requirements of § 11.14 of this chapter; and

              (2) Be signed by the individual applicant, registrant, or party to a proceeding pending before the Office, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or joint registrants, all must sign. Once the applicant, registrant, or party has designated a practitioner(s) qualified to practice under § 11.14 of this chapter, that practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to represent the applicant, registrant, or party. If the applicant, registrant, or party revokes the original power of attorney (§ 2.19(a)), the revocation discharges any associate power signed by the practitioner whose power has been revoked. If the practitioner who signed an associate power withdraws (§ 2.19(b)), the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the Office.
              (d) Power of attorney relating to multiple applications or registrations. The owner of an application or registration may appoint a practitioner(s) qualified to practice under § 11.14 of this chapter to represent the owner for all existing applications or registrations that have the identical owner name.
              (e) Foreign attorneys and agents. Recognition to practice before the Office in trademark matters is governed by § 11.14(c) of this chapter.
              (f) Non-lawyers. A non-lawyer may not act as a representative except in the limited circumstances set forth in § 11.14(b) of this chapter. Before any non-lawyer who meets the requirements of § 11.14(b) of this chapter may take action of any kind with respect to an application, registration or proceeding, a written authorization must be filed, signed by the applicant, registrant, or party to the proceeding, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership).
              (g) Duration of recognition. (1) The Office considers recognition as to a pending application to end when the mark registers, when ownership changes, or when the application is abandoned.
              (2) The Office considers recognition obtained after registration to end when the mark is cancelled or expired, or when ownership changes. If a practitioner was recognized as the representative in connection with an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, recognition is deemed to end upon acceptance or final rejection of the filing.
              [84 FR 31510, July 2, 2019, as amended at 84 FR 37093, July 31, 2019]

              § 2.18
              Correspondence, with whom held.
              (a) Establishing the correspondent. The Office will send correspondence as follows:
              (1) If the applicant, registrant, or party to a proceeding is not represented by an attorney qualified to practice before the Office under § 11.14(a) of this chapter, the Office will send correspondence to the applicant, registrant, or party to the proceeding.
              (2) If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney. A request to change the correspondence address does not revoke a power of attorney. Except for service of a cancellation petition, the Office will not correspond directly with the applicant, registrant, or a party to a proceeding, or with another attorney from a different firm, unless:
              (i) The applicant or registrant files a revocation of the power of attorney under § 2.19(a) and/or a new power of attorney that meets the requirements of § 2.17(c);
              (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; or
              (iii) Recognition of the attorney has ended pursuant to § 2.17(g).
              (b) Ex parte matters. Only one correspondence address may be designated in an ex parte matter.
              (c) Maintaining and changing the correspondence addresses. The applicant, registrant, or party to a proceeding must maintain current and accurate correspondence addresses, as required by § 2.23, for itself and its attorney, if one is designated. If any of these addresses change, a request to change the address, signed in accordance with § 2.193(e)(9), must be promptly filed.
              (d) Post registration filings under sections 7, 8, 9, 12(c), 15, and 71 of the Act. Even if there is no new power of attorney or written request to change the correspondence address, the Office will change the correspondence address upon the examination of an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, if a new address is provided, in accordance with paragraph (a) of this section.
              [84 FR 37093, July 31, 2019]

              § 2.19
              Revocation or withdrawal of attorney.
              (a) Revocation. (1) Authority to represent an applicant, registrant or party to a proceeding before the Office may be revoked at any stage in the proceedings of a trademark case, upon written notification signed by the applicant, registrant, or party to the proceeding, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or joint registrants, all must sign.
              (2) When a power of attorney is revoked, the Office will communicate directly with the applicant, registrant, or party to the proceeding, or with the new attorney or domestic representative if appropriate.
              (3) A request to change the correspondence address does not revoke a power of attorney.
              (4) A new power of attorney that meets the requirements of § 2.17(c) will be treated as a revocation of the previous power.
              (b) Withdrawal of attorney. If the requirements of § 11.116 of this chapter are met, a practitioner authorized to represent an applicant, registrant, or party to a proceeding in a trademark case may withdraw upon application to and approval by the Director or, when applicable, upon motion granted by the Trademark Trial and Appeal Board. The practitioner should file the request to withdraw soon after the practitioner notifies the client of his/her intent to withdraw. The request must include the following:
              (1) The application serial number, registration number, or proceeding number;
              (2) A statement of the reason(s) for the request to withdraw; and
              (3) Either
              (i) A statement that the practitioner has given notice to the client that the practitioner is withdrawing from employment and will be filing the necessary documents with the Office; that the client was given notice of the withdrawal at least two months before the expiration of the response period, if applicable; that the practitioner has delivered to the client all documents and property in the practitioner's file concerning the application, registration or proceeding to which the client is entitled; and that the practitioner has notified the client of any responses that may be due, and of the deadline for response; or
              (ii) If more than one qualified practitioner is of record, a statement that representation by co-counsel is ongoing.
              [74 FR 54907, Oct. 26, 2009, as amended at 80 FR 2310, Jan. 16, 2015]

            Declarations

              § 2.20
              Declarations in lieu of oaths.

              Instead of an oath, affidavit, or sworn statement, the language of 28 U.S.C. 1746, or the following declaration language, may be used:

                The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

              [80 FR 33178, June 11, 2015]

            Application for Registration

              Authority:
              Secs. 2.21 to 2.47 also issued under sec. 1, 60 Stat. 427; 15 U.S.C. 1051.

              § 2.21
              Requirements for receiving a filing date.
              (a) The Office will grant a filing date to an application under section 1 or section 44 of the Act that is filed through TEAS, is written in the English language, and contains all of the following:
              (1) The name, address, and email address of each applicant;
              (2) If the applicant is represented by a practitioner qualified under § 11.14 of this chapter, the practitioner's name, postal address, and email address;
              (3) A clear drawing of the mark;
              (4) A listing of the goods or services; and

              (5) The filing fee required under § 2.6 for at least one class of goods or services.
              (b) If the applicant does not satisfy all the elements required in paragraph (a) of this section, the Office will deny a filing date to the application unless the applicant meets the requirements of paragraph (c) of this section.
              (c) If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraph (a) of this section to file through TEAS and provide an email address do not apply.
              [84 FR 37093, July 31, 2019, as amended at 84 FR 68046, Dec. 13, 2019]

              § 2.22
              Requirements for a TEAS Plus application.
              (a) A trademark/service mark application for registration on the Principal Register under section 1 and/or section 44 of the Act that meets the requirements for a filing date under § 2.21 will be entitled to a reduced filing fee under § 2.6(a)(1)(iv) if it includes:
              (1) The applicant's name and domicile address;
              (2) The applicant's legal entity;
              (3) The citizenship of each individual applicant, or the state or country of incorporation or organization of each juristic applicant;
              (4) If the applicant is a domestic partnership, the names and citizenship of the general partners, or if the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture;
              (5) If the applicant is a sole proprietorship, the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor;
              (6) One or more bases for filing that satisfy all the requirements of § 2.34. If more than one basis is set forth, the applicant must comply with the requirements of § 2.34 for each asserted basis;
              (7) Correctly classified goods and/or services, with an identification of goods and/or services from the Office's Acceptable Identification of Goods and Services Manual, available through the TEAS Plus form. In an application based on section 44 of the Act, the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration;
              (8) If the application contains goods and/or services in more than one class, compliance with § 2.86;
              (9) A filing fee for each class of goods and/or services, as required by § 2.6(a)(1)(iv);
              (10) A verified statement that meets the requirements of § 2.33, dated and signed by a person properly authorized to sign on behalf of the owner pursuant to § 2.193(e)(1);
              (11) If the applicant does not claim standard characters, the applicant must attach a digitized image of the mark. If the mark includes color, the drawing must show the mark in color;
              (12) If the mark is in standard characters, a mark comprised only of characters in the Office's standard character set, typed in the appropriate field of the TEAS Plus form;
              (13) If the mark includes color, a statement naming the color(s) and describing where the color(s) appears on the mark, and a claim that the color(s) is a feature of the mark;
              (14) If the mark is not in standard characters, a description of the mark;
              (15) If the mark includes non-English wording, an English translation of that wording;
              (16) If the mark includes non-Latin characters, a transliteration of those characters;

              (17) If the mark includes an individual's name or portrait, either (i) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual, or (ii) a statement that the name or portrait does not identify a living individual (see section 2(c) of the Act).

              (18) If the applicant owns one or more registrations for the same mark, and the owner(s) last listed in Office records of the prior registration(s) for the same mark differs from the owner(s) listed in the application, a claim of ownership of the registration(s) identified by the registration number(s), pursuant to § 2.36;

              (19) If the application is a concurrent use application, compliance with § 2.42; and
              (20) An applicant whose domicile is not located within the United States or its territories must designate an attorney as the applicant's representative, pursuant to § 2.11(a), and include the attorney's name, postal address, email address, and bar information.
              (b) In addition to the filing requirements under paragraph (a) of this section, the applicant must comply with § 2.23(a) and (b).
              (c) If an application does not fulfill the requirements of paragraph (a) of this section, the applicant must pay the processing fee required by § 2.6(a)(1)(v).
              (d) The following types of applications cannot be filed as TEAS Plus applications:
              (1) Applications for certification marks (see § 2.45);

              (2) Applications for collective trademarks and service marks (see § 2.44);
              (3) Applications for collective membership marks (see § 2.44); and

              (4) Applications for registration on the Supplemental Register (see § 2.47).
              [84 FR 37093, July 31, 2019, as amended at 84 FR 68046, Dec. 13, 2019]

              § 2.23
              Requirement to correspond electronically with the Office and duty to monitor status.
              (a) Unless stated otherwise in this chapter, all trademark correspondence must be submitted through TEAS.
              (b) Applicants, registrants, and parties to a proceeding must provide and maintain a valid email address for correspondence.
              (c) If the applicant or registrant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraphs (a) and (b) of this section do not apply.
              (d) Notices issued or actions taken by the USPTO are displayed in the USPTO's publicly available electronic systems. Applicants and registrants are responsible for monitoring the status of their applications and registrations in the USPTO's electronic systems during the following time periods:
              (1) At least every six months between the filing date of the application and issuance of a registration; and
              (2) After filing an affidavit of use or excusable nonuse under section 8 or section 71 of the Act, or a renewal application under section 9 of the Act, at least every six months until the registrant receives notice that the affidavit or renewal application has been accepted.
              [84 FR 37094, July 31, 2019]

              § 2.24
              Designation and revocation of domestic representative by foreign applicant.

              (a) An applicant or registrant that is not domiciled in the United States may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served).
              (b) The designation, or a request to change or revoke a designation, must set forth the name, email address, and postal address of the domestic representative and be signed pursuant to § 2.193(e)(8).
              (c) The mere designation of a domestic representative does not authorize the person designated to represent the applicant or registrant.
              [84 FR 37094, July 31, 2019]

              § 2.25
              Documents not returnable.
              Except as provided in § 2.27(e), documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed.
              [73 FR 67768, Nov. 17, 2008]

              § 2.27
              Pending trademark application index; access to applications.
              (a) An index of pending applications including the name and address of the applicant, a reproduction or description of the mark, the goods or services with which the mark is used, the class number, the dates of use, and the serial number and filing date of the application will be available for public inspection as soon as practicable after filing.

              (b) Except as provided in paragraph (e) of this section, access to the file of a particular pending application will be permitted prior to publication under § 2.80 upon written request.
              (c) Decisions of the Director and the Trademark Trial and Appeal Board in applications and proceedings relating thereto are published or available for inspection or publication.
              (d) Except as provided in paragraph (e) of this section, the official records of applications and all proceedings relating thereto are available for public inspection and copies of the documents may be furnished upon payment of the fee required by § 2.6.
              (e) Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or a registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the Board shall be filed under seal.
              [36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48 FR 27225, June 14, 1983; 73 FR 67768, Nov. 17, 2008]

            The Written Application

              § 2.31
              [Reserved]

              § 2.32
              Requirements for a complete trademark or service mark application.
              (a) The application must be in English and include the following:
              (1) A request for registration;
              (2) The name, domicile address, and email address of each applicant. If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide an email address does not apply;
              (3)(i) The legal entity type and citizenship of the applicant(s); and
              (ii) If the applicant is a corporation, association, partnership or other juristic person, the jurisdiction (usually state or nation) under the laws of which the applicant is organized;
              (iii) If the applicant is a domestic partnership, the names and citizenship of the general partners;
              (iv) If the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture; or
              (v) If the applicant is a sole proprietorship, the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor.
              (4) When the applicant is, or must be, represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter, the attorney's name, postal address, email address, and bar information;
              (5) One or more bases, as required by § 2.34(a);
              (6) A list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. In a U.S. application filed under section 44 of the Act, the scope of the goods or services covered by the section 44 basis may not exceed the scope of the goods or services in the foreign application or registration;
              (7) The international class of goods or services, if known. See § 6.1 of this chapter for a list of the international classes of goods and services.
              (8) If the mark is not in standard characters, a description of the mark;
              (9) If the mark includes non-English wording, an English translation of that wording; and
              (10) If the mark includes non-Latin characters, a transliteration of those characters, and either a translation of the transliterated term in English, or a statement that the transliterated term has no meaning in English.
              (b) The application must include a verified statement that meets the requirements of § 2.33.
              (c) The application must include a drawing that meets the requirements of § 2.51 and § 2.52.
              (d) The application must include the fee required by § 2.6 for each class of goods or services.
              (e) For the requirements of a multiple-class application, see § 2.86.

              (f) For the requirements of all collective mark applications, see § 2.44.

              (g) For the requirements of a certification mark application, see § 2.45.
              [64 FR 48918, Sept. 8, 1999, as amended at 73 FR 13784, Mar. 14, 2008; 73 FR 67768, Nov. 17, 2008; 80 FR 33178, June 11, 2015; 84 FR 31511, July 2, 2019; 84 FR 37094, July 31, 2019]

              § 2.33
              Verified statement for a trademark or service mark.
              (a) The application must include a verified statement.

              (b)(1) In an application under section 1(a) of the Act, the verified statement must allege:

                That the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of such other person, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services; and that the facts set forth in the application are true.

              (2) In an application under section 1(b) or 44 of the Act, the verified statement must allege:

                That the applicant has a bona fide intention to use the mark in commerce; that the applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of such other person, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.

              (c) If the verified statement in paragraph (b)(1) or (2) of this section is not filed within a reasonable time after it is signed, the Office may require the applicant to submit a substitute verified statement attesting that the mark was in use in commerce as of the application filing date, or the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
              (d) [Reserved]

              (e) In an application under section 66(a) of the Act, the verified statement, which is part of the international registration on file with the International Bureau, must allege that:

                (1) The applicant/holder has a bona fide intention to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation;
                (2) The signatory is properly authorized to execute the declaration on behalf of the applicant/holder;
                (3) The signatory believes the applicant/holder to be entitled to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation; and
                (4) To the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive.

              (f) In an application for concurrent use under § 2.42, the verified statement in paragraph (b)(1) of this section must be modified to indicate that no other person except as specified in the application has the right to use the mark in commerce.
              [80 FR 33178, June 11, 2015]

              § 2.34
              Bases for filing a trademark or service mark application.
              (a) An application for a trademark or service mark must include one or more of the following five filing bases:
              (1) Use in commerce under section 1(a) of the Act. The requirements for an application under section 1(a) of the Act are:
              (i) The applicant's verified statement that the mark is in use in commerce. If the verified statement is not filed with the initial application, the verified statement must also allege that the mark was in use in commerce as of the application filing date;
              (ii) The date of the applicant's first use of the mark anywhere on or in connection with the goods or services;
              (iii) The date of the applicant's first use of the mark in commerce;

              (iv) One specimen showing how the applicant uses the mark in commerce; and

              (v) If the application specifies more than one item of goods or services in a class, the dates of use in paragraphs (a)(1)(ii) and (iii) of this section are required for only one item of goods or services specified in that class.
              (2) Intent-to-use under section 1(b) of the Act. In an application under section 1(b) of the Act, the applicant must verify that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
              (3) Registration of a mark in a foreign applicant's country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
              (i) The applicant's verified statement that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is not filed with the initial application, the Office will require submission of the verified statement, which must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
              (ii) A true copy, a photocopy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. The certification or copy of the foreign registration must show the name of the owner, the mark, and the goods or services for which the mark is registered. If the foreign registration is not in the English language, the applicant must submit a translation.
              (iii) If the record indicates that the foreign registration will expire before the U.S. registration will issue, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a proof of renewal from the applicant's country of origin to establish that the foreign registration has been renewed and will be in full force and effect at the time the U.S. registration will issue. If the proof of renewal is not in the English language, the applicant must submit a translation.
              (4) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
              (i) A claim of priority, filed within six months of the filing date of the foreign application. Before publication or registration on the Supplemental Register, the applicant must either:
              (A) Specify the filing date, serial number and country of the first regularly filed foreign application; or
              (B) State that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.
              (ii) The applicant's verified statement that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is not filed with the initial application, the Office will require submission of the verified statement, which must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
              (iii) Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under section 1 or 44 of the Act.
              (5) Extension of protection of an international registration under section 66(a) of the Act. In an application under section 66(a) of the Act, the international application/subsequent designation must contain a signed declaration that meets the requirements of § 2.33(a), (e).
              (b) More than one basis. In an application under section 1 or 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. In such case, the applicant must specify each basis and the goods or services to which that basis applies. An applicant must specify the goods or services covered by more than one basis. Section 1(a) and 1(b) of the Act may not both be claimed for identical goods or services in the same application. A basis under section 66(a) of the Act may not be combined with another basis.
              [64 FR 48919, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002; 68 FR 55763, Sept. 26, 2003; 73 FR 67768, Nov. 17, 2008; 77 FR 30207, May 22, 2012; 80 FR 33179, June 11, 2015]

              § 2.35
              Adding, deleting, or substituting bases.
              (a) In an application under section 66(a) of the Act, an applicant may not add, substitute or delete a basis, unless the applicant meets the requirements for transformation under section 70(c) of the Act and § 7.31 of this chapter.
              (b) In an application under section 1 or section 44 of the Act:
              (1) Before publication for opposition, an applicant may add or substitute a basis, if the applicant meets all requirements for the new basis, as stated in § 2.34, § 2.44, or § 2.45. The applicant may delete a basis at any time.

              (2) After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, but only with the express permission of the Director, after consideration on petition. Republication will be required. The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by § 2.133(a).
              (3) When an applicant substitutes one basis for another, the Office will presume that there was a continuing valid basis, unless there is contradictory evidence in the record, and the application will retain the original filing date, including a priority filing date under section 44(d), if appropriate.
              (4) If an applicant properly claims a section 44(d) basis in addition to another basis, the applicant will retain the priority filing date under section 44(d) no matter which basis the applicant perfects.
              (5) The applicant may add or substitute a section 44(d) basis only within the six-month priority period following the filing date of the foreign application.
              (6) When the applicant adds or substitutes a basis, the applicant must list each basis and specify the goods, services, or collective membership organization to which that basis applies.
              (7) When the applicant deletes a basis, the applicant must also delete any goods, services, or collective membership organization covered solely by the deleted basis.
              (8) Once an applicant claims a section 1(b) basis as to any or all of the goods or services, or a collective membership organization, the applicant may not amend the application to seek registration under section 1(a) of the Act for identical goods or services or the same collective membership organization, unless the applicant files an allegation of use under section 1(c) or section 1(d) of the Act.
              [68 FR 55763, Sept. 26, 2003, as amended at 80 FR 33180, June 11, 2015]

              § 2.36
              Identification of prior registrations.
              Prior registrations of the same or similar marks owned by the applicant should be identified in the application if the owner(s) last listed in Office records of the prior registrations differs from the owner(s) listed in the application.
              [80 FR 2310, Jan. 16, 2015]

              § 2.37
              Description of mark.
              A description of the mark must be included if the mark is not in standard characters. In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.
              [73 FR 13784, Mar. 14, 2008]

              § 2.38
              Use by predecessor or by related companies.
              (a) If the first use of the mark was by a predecessor in title or by a related company (sections 5 and 45 of the Act), and the use inures to the benefit of the applicant, the dates of first use (§§ 2.34(a)(1) (ii) and (iii)) may be asserted with a statement that first use was by the predecessor in title or by the related company, as appropriate.

              (b) The Office may require such details concerning the nature of the relationship and such proofs as may be necessary and appropriate for the purpose of showing that the use by related companies inures to the benefit of the applicant and does not affect the validity of the mark.
              (Sec. 5, 60 Stat. 429; 15 U.S.C. 1055)
              [30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989; 64 FR 48920, Sept. 8, 1999; 80 FR 2310, Jan. 16, 2015]

              § 2.39
              [Reserved]

              § 2.41
              Proof of distinctiveness under section 2(f).
              (a) For a trademark or service mark—(1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required.
              (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a trademark or service mark is said to have become distinctive of the applicant's goods or services by reason of the applicant's substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
              (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of the applicant's goods or services, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
              (b) For a collective trademark or collective service mark—(1) Ownership of prior registration(s). See the requirements of paragraph (a)(1) of this section.
              (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a collective trademark or collective service mark is said to have become distinctive of the members' goods or services by reason of the members' substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
              (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of the members' goods or services, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce, and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
              (c) For a collective membership mark—(1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods, services, or nature of the collective membership organization are sufficiently similar to the collective membership organization in the application; however, further evidence may be required.
              (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a collective membership mark is said to have become distinctive of indicating membership in the applicant's collective membership organization by reason of the members' substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
              (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of indicating membership in the applicant's collective membership organization, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the members' use in commerce, and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
              (d) For a certification mark—(1) Ownership of prior certification mark registration(s). In appropriate cases, ownership of one or more active prior certification mark registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the authorized users' goods or services are sufficiently similar to the goods or services certified in the application, subject to the limitations of the statement set forth in § 2.45(a)(4)(i)(C); however, further evidence may be required.
              (2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a certification mark is said to have become distinctive of the certified goods or services by reason of the authorized users' substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
              (3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive of the certified goods or services program, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the authorized users' use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
              (e) Certification marks with geographical matter. Paragraph (d) of this section does not apply to geographical matter in a certification mark certifying regional origin because section 2(e)(2) of the Act does not apply to certification marks that are indications of regional origin.
              [80 FR 33180, June 11, 2015]

              § 2.42
              Concurrent use.
              (a) Prior to seeking concurrent use, an application for registration on the Principal Register under the Act must assert use in commerce and include all the application elements required by the preceding sections, in addition to § 2.44 or § 2.45, if applicable.
              (b) The applicant must also include a verified statement that indicates the following, to the extent of the applicant's knowledge:
              (1) For a trademark or service mark, the geographic area in which the applicant is using the mark in commerce; for a collective mark or certification mark, the geographic area in which the applicant's members or authorized users are using the mark in commerce;
              (2) For a trademark or service mark, the applicant's goods or services; for a collective trademark, collective service mark, or certification mark, the applicant's members' or authorized users' goods or services; for a collective membership mark, the nature of the applicant's collective membership organization;
              (3) The mode of use for which the applicant seeks registration;
              (4) The concurrent users' names and addresses;

              (5) The registrations issued to or applications filed by such concurrent users, if any;
              (6) For a trademark or service mark, the geographic areas in which the concurrent user is using the mark in commerce; for a collective mark or certification mark, the geographic areas in which the concurrent user's members or authorized users are using the mark in commerce;
              (7) For a trademark or service mark, the concurrent user's goods or services; for a collective trademark, collective service mark, or certification mark, the concurrent user's members' or authorized users' goods or services; for a collective membership mark, the nature of the concurrent user's collective membership organization;
              (8) The mode of use by the concurrent users or the concurrent users' members or authorized users; and
              (9) The time periods of such use by the concurrent users or the concurrent users' members or authorized users.
              (c) For the requirements to amend an application to concurrent use, see § 2.73.
              (d) For the requirements of a concurrent use proceeding, see § 2.99.
              [80 FR 33181, June 11, 2015]

              § 2.43
              Service mark.
              In an application to register a service mark, the application shall specify and contain all the elements required by the preceding sections for trademarks, but shall be modified to relate to services instead of to goods wherever necessary.
              (Sec. 3, 60 Stat. 429; 15 U.S.C. 1052)

              § 2.44
              Requirements for a complete collective mark application.
              (a) A complete application to register a collective trademark, collective service mark, or collective membership mark must include the following:
              (1) The requirements specified in § 2.32(a) introductory text through (a)(4), (a)(8) through (10), (c), and (d);
              (2)(i) For a collective trademark or collective service mark, a list of the particular goods or services on or in connection with which the applicant's members use or intend to use the mark; or
              (ii) For a collective membership mark, a description of the nature of the membership organization such as by type, purpose, or area of activity of the members; and
              (iii) In a U.S. application filed under section 44 of the Act, the scope of the goods or services or the nature of the membership organization covered by the section 44 basis may not exceed the scope of the goods or services or nature of the membership organization in the foreign application or registration.
              (3)(i) For a collective trademark or collective service mark application, the international class of goods or services, if known. See § 6.1 of this chapter for a list of the international classes of goods and services; or
              (ii) For a collective membership mark application filed under sections 1 or 44 of the Act, classification in U.S. Class 200; and for a collective membership mark application filed under section 66(a) of the Act, the international class(es) assigned by the International Bureau in the corresponding international registration.
              (4) One or more of the following five filing bases:
              (i) Use in commerce under section 1(a) of the Act. The requirements for an application under section 1(a) of the Act are:
              (A) A statement specifying the nature of the applicant's control over the use of the mark by the members;
              (B) For a collective trademark or collective service mark, the date of the applicant's member's first use of the mark anywhere on or in connection with the goods or services and the date of the applicant's member's first use of the mark in commerce; or for a collective membership mark, the date of the applicant's member's first use anywhere to indicate membership in the collective organization and the date of the applicant's member's first use in commerce. If the application specifies more than one item of goods or services in a class, the dates of use are required for only one item of goods or services specified in that class;
              (C) One specimen showing how a member uses the mark in commerce; and
              (D) A verified statement alleging:

              That the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising legitimate control over the use of the mark in commerce; that to the best of the signatory's knowledge and belief, no other persons except members have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods, services, or collective membership organization of such other persons to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant's members; and that the facts set forth in the application are true.
              (ii) Intent-to-use under section 1(b) of the Act. The requirement for an application based on section 1(b) of the Act is a verified statement alleging:
              That the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory's knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods, services, or collective membership organization of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.
              (iii) Registration of a mark in a foreign applicant's country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
              (A) The requirements of § 2.34(a)(3)(ii) and (iii); and
              (B) A verified statement in accordance with paragraph (a)(4)(ii) of this section.
              (iv) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
              (A) The requirements of § 2.34(a)(4)(i) and (iii); and
              (B) A verified statement in accordance with paragraph (a)(4)(ii) of this section.
              (v) Extension of protection of an international registration under section 66(a) of the Act. The requirement for an application under section 66(a) of the Act is a verified statement alleging that the applicant/holder has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation; that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods, services, or collective membership organization of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive.
              (b) Verification not filed within reasonable time or omitted. (1) If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B), or (a)(4)(iv)(B) of this section is not filed within a reasonable time after it is signed, the Office may require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce; or

              (2) If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B), or (a)(4)(v) of this section is not filed with the initial application, the verified statement must also allege that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce.
              (c) More than one basis. In an application under section 1 or 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. In such case, the applicant must specify each basis, followed by the goods, services, or collective membership organization to which that basis applies. An applicant must specify the goods, services, or collective membership organization covered by more than one basis. Section 1(a) and 1(b) of the Act may not both be claimed for identical goods, or services, or the same collective membership organization in one application. A basis under section 66(a) of the Act may not be combined with another basis.
              (d) In an application for concurrent use under § 2.42, the verified statement in paragraph (a)(4)(i)(D) of this section must be modified to indicate that no other persons except members and the concurrent users as specified in the application have the right to use the mark in commerce.
              (e) Multiple-class applications. For the requirements of a multiple-class application, see § 2.86.
              [80 FR 33181, June 11, 2015]

              § 2.45
              Requirements for a complete certification mark application; restriction on certification mark application.
              (a) A complete application to register a certification mark must include the following:
              (1) The requirements specified in § 2.32(a) introductory text through (a)(4), (a)(8) through (10), (c), and (d);
              (2) A list of the particular goods or services on or in connection with which the applicant's authorized users use or intend to use the mark. In an application filed under section 44 of the Act, the scope of the goods or services covered by the section 44 basis may not exceed the scope of the goods or services in the foreign application or registration;
              (3) For applications filed under section 1 or 44 of the Act, classification in U.S. Class A for an application certifying goods and U.S. Class B for an application certifying services. For applications filed under section 66(a) of the Act, the international class(es) of goods or services assigned by the International Bureau in the corresponding international registration;
              (4) One or more of the following five filing bases:
              (i) Use in commerce under section 1(a) of the Act. The requirements for an application under section 1(a) of the Act are:
              (A) A statement specifying what the applicant is certifying about the goods or services in the application;
              (B) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the application;
              (C) A statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant;
              (D) The date of the applicant's authorized user's first use of the mark anywhere on or in connection with the goods or services and the date of the applicant's authorized user's first use of the mark in commerce. If the application specifies more than one item of goods or services in a class, the dates of use are required for only one item of goods or services specified in that class;
              (E) One specimen showing how an authorized user uses the mark in commerce; and
              (F) A verified statement alleging:

              That the applicant believes the applicant is the owner of the mark; that the mark is in use in commerce; that the applicant is exercising legitimate control over the use of the mark in commerce; that to the best of the signatory's knowledge and belief, no other persons except authorized users have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used in commerce by the applicant's authorized users; and that the facts set forth in the application are true.
              (ii) Intent-to-use under section 1(b) of the Act. The requirements for an application based on section 1(b) of the Act are:
              (A) A statement specifying what the applicant will be certifying about the goods or services in the application;
              (B) A statement that the applicant will not engage in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant; and
              (C) A verified statement alleging:
              That the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory's knowledge and belief, no other persons, except authorized users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.
              (iii) Registration of a mark in a foreign applicant's country of origin under section 44(e) of the Act. The requirements for an application under section 44(e) of the Act are:
              (A) The requirements of § 2.34(a)(3)(ii) and (iii);
              (B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this section; and
              (C) A verified statement in accordance with paragraph (a)(4)(ii)(C) of this section.
              (iv) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the Act. The requirements for an application under section 44(d) of the Act are:
              (A) The requirements of § 2.34(a)(4)(i) and (iii);
              (B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this section; and
              (C) A verified statement in accordance with paragraph (a)(4)(ii)(C) of this section.
              (v) Extension of protection of an international registration under section 66(a) of the Act. The requirements for an application under section 66(a) of the Act are:
              (A) The requirements of paragraphs (a)(4)(ii)(A) and (B) of this section; and
              (B) A verified statement alleging that the applicant/holder has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation; that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except authorized users, has the right to use the mark in commerce that the U.S. Congress can regulate either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive.
              (b) Verification not filed within reasonable time or omitted. (1) If the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), or (a)(4)(iv)(C) of this section is not filed within a reasonable time after it is signed, the Office may require the applicant to submit a substitute verified statement attesting that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce; or

              (2) If the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), or (a)(4)(v)(B) of this section is not filed with the initial application, the verified statement must also allege that, as of the application filing date, the mark was in use in commerce and the applicant was exercising legitimate control over the use of the mark in commerce; or, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce.
              (c) More than one basis. In an application under section 1 or 44 of the Act, an applicant may claim more than one basis, provided the applicant satisfies all requirements for the bases claimed. In such case, the applicant must specify each basis, followed by the goods or services to which that basis applies. An applicant must specify the goods or services covered by more than one basis. Section 1(a) and 1(b) of the Act may not both be claimed for identical goods or services in the same application. A basis under section 66(a) of the Act may not be combined with another basis.
              (d) Concurrent use. In an application for concurrent use under § 2.42, the verified statement in paragraph (a)(4)(i)(F) of this section must be modified to indicate that no other persons except authorized users and concurrent users as specified in the application have the right to use the mark in commerce.
              (e) Multiple-class applications. For the requirements of a multiple-class application, see § 2.86.
              (f) Restriction on certification mark application. A single application may not include a certification mark and another type of mark. The same mark for the same goods or services is not registrable as both a certification mark and another type of mark. See sections 4 and 14(5)(B) of the Act.
              [80 FR 33182, June 11, 2015]

              § 2.46
              Principal Register.
              All applications will be treated as seeking registration on the Principal Register unless otherwise stated in the application. Service marks, collective marks, and certification marks, registrable in accordance with the applicable provisions of section 2 of the Act, are registered on the Principal Register.

              § 2.47
              Supplemental Register.
              (a) In an application to register on the Supplemental Register under section 23 of the Act, the application shall so indicate and shall specify that the mark has been in use in commerce.
              (b) In an application to register on the Supplemental Register under section 44 of the Act, the application shall so indicate. The statement of lawful use in commerce may be omitted.
              (c) An application under section 66(a) of the Act is not eligible for registration on the Supplemental Register.
              (d) A mark in an application to register on the Principal Register under section 1(b) of the Act is eligible for registration on the Supplemental Register only after an acceptable amendment to allege use under § 2.76 or statement of use under § 2.88 has been timely filed.
              (e) An application for registration on the Supplemental Register must conform to the requirements for registration on the Principal Register under section 1(a) of the Act, so far as applicable.
              [54 FR 37590, Sept. 11, 1989, as amended at 68 FR 55763, Sept. 26, 2003; 73 FR 67769, Nov. 17, 2008]

              § 2.48
              Office does not issue duplicate registrations.
              If two applications on the same register would result in registrations that are exact duplicates, the Office will permit only one application to mature into registration, and will refuse registration in the other application.
              [73 FR 67769, Nov. 17, 2008]

            Drawing

              Authority:
              Secs. 2.51 to 2.55 also issued under sec. 1, 60 Stat. 427; 15 U.S.C. 1051.

              § 2.51
              Drawing required.
              (a) In an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.

              (b) In an application under section 1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods and/or services specified in the application, and once an amendment to allege use under § 2.76 or a statement of use under § 2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.
              (c) In an application under section 44 of the Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the applicant's country of origin.
              (d) In an application under section 66(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration.
              [68 FR 55763, Sept. 26, 2003]

              § 2.52
              Types of drawings and format for drawings.
              A drawing depicts the mark sought to be registered. The drawing must show only one mark. The applicant must include a clear drawing of the mark when the application is filed. There are two types of drawings:
              (a) Standard character (typed) drawing. Applicants who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color must submit a standard character drawing that shows the mark in black on a white background. An applicant may submit a standard character drawing if:
              (1) The application includes a statement that the mark is in standard characters and no claim is made to any particular font style, size, or color;
              (2) The mark does not include a design element;
              (3) All letters and words in the mark are depicted in Latin characters;
              (4) All numerals in the mark are depicted in Roman or Arabic numerals; and
              (5) The mark includes only common punctuation or diacritical marks.
              (b) Special form drawing. Applicants who seek to register a mark that includes a two or three-dimensional design; color; and/or words, letters, or numbers or the combination thereof in a particular font style or size must submit a special form drawing. The drawing should show the mark in black on a white background, unless the mark includes color.
              (1) Marks that include color. If the mark includes color, the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.
              (2) Three dimensional marks. If the mark has three-dimensional features, the drawing must depict a single rendition of the mark, and the applicant must indicate that the mark is three-dimensional.
              (3) Motion marks. If the mark has motion, the drawing may depict a single point in the movement, or the drawing may depict up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also describe the mark.
              (4) Broken lines to show placement. If necessary to adequately depict the commercial impression of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears. The applicant must also use broken lines to show any other matter not claimed as part of the mark. For any drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must describe the mark and explain the purpose of the broken lines.
              (5) Description of mark. A description of the mark must be included.
              (c) TEAS drawings. A drawing filed through TEAS must meet the requirements of § 2.53.
              (d) Paper drawings. A paper drawing must meet the requirements of § 2.54.
              (e) Sound, scent, and non-visual marks. An applicant is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant must submit a detailed description of the mark.
              [68 FR 55763, Sept. 26, 2003, as amended at 73 FR 13784, Mar. 14, 2008; 73 FR 67769, Nov. 17, 2008]

              § 2.53
              Requirements for drawings filed through the TEAS.

              The drawing must meet the requirements of § 2.52. In addition, in a TEAS submission, the drawing must meet the following requirements:
              (a) Standard character drawings. If an applicant seeks registration of a standard character mark, the applicant must enter the mark in the appropriate field on the TEAS form, and check the box to claim that the mark consists of standard characters.
              (b) Special form drawings: If an applicant is filing a special form drawing, the applicant must attach a digitized image of the mark to the TEAS submission that meets the requirements of paragraph (c) of this section.
              (c) Requirements for digitized image: The image must be in .jpg format and scanned at no less than 300 dots per inch and no more than 350 dots per inch with a length and width of no less than 250 pixels and no more than 944 pixels. All lines must be clean, sharp and solid, not fine or crowded, and produce a high quality image when copied.
              [68 FR 55764, Sept. 26, 2003, as amended at 70 FR 38774, July 6, 2005; 73 FR 67769, Nov. 17, 2008]

              § 2.54
              Requirements for drawings submitted on paper.
              The drawing must meet the requirements of § 2.52. In addition, in a paper submission, the drawing should:
              (a) Be on non-shiny white paper that is separate from the application;
              (b) Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long. One of the shorter sides of the sheet should be regarded as its top edge. The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
              (c) Include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge; and
              (d) Depict the mark in black ink, or in color if color is claimed as a feature of the mark.
              (e) Drawings must be typed or made with a pen or by a process that will provide high definition when copied. A photolithographic, printer's proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.
              [68 FR 55764, Sept. 26, 2003]

              § 2.56
              Specimens.
              (a) An application under section 1(a) of the Act, an amendment to allege use under § 2.76, a statement of use under § 2.88, an affidavit or declaration of continued use or excusable nonuse under § 2.160, or an affidavit or declaration of use or excusable nonuse under § 7.36 must include one specimen per class showing the mark as actually used in commerce on or in connection with the goods or services identified. When requested by the Office as reasonably necessary to proper examination, additional specimens must be provided.
              (b)(1) A trademark specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. To constitute a display associated with the goods, a specimen must show use of the mark directly associated with the goods and such use must be of a point-of-sale nature. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods.
              (2) A service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services. The specimen must show a direct association between the mark and the services.
              (3) A collective trademark or collective service mark specimen must show how a member uses the mark on the member's goods or in the sale of the services, including use in the performance or rendering of the services, or advertising of the member's services.
              (4) A collective membership mark specimen must show use by members to indicate membership in the collective organization.

              (5) A certification mark specimen must show how a person other than the owner uses the mark to reflect certification of regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person's goods or services; or that members of a union or other organization performed the work or labor on the goods or services.
              (c) A clear and legible photocopy, photograph, web page printout, or other similar type of reproduction of an actual specimen that meets the requirements of paragraphs (a) and (b) of this section is acceptable. The reproduction must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the good or service with which the mark is used are identifiable. A web page must include the URL and access or print date. An artist's rendering, a printer's proof, a computer illustration, digital image, or similar mockup of how the mark may be displayed, or a photocopy of the drawing required by § 2.51, are not proper specimens.
              (d) The specimen must be submitted through TEAS in a file format designated as acceptable by the Office, unless:
              (1) The mark consists of a scent, flavor, or similar non-traditional mark type, in which case the specimen may be mailed to the Office, pursuant to § 2.190(a), without resort to the procedures set forth in § 2.147; or
              (2) Submission on paper is permitted under § 2.23(c) or is accepted on petition pursuant to § 2.147.
              [84 FR 37095, July 31, 2019]

              §§ 2.57-2.58
              [Reserved]

              § 2.59
              Filing substitute specimen(s).
              (a) In an application under section 1(a) of the Act, the applicant may submit substitute specimens of the mark as used on or in connection with the goods or in the sale or advertising of the services, or as used to indicate membership in the collective organization. The applicant must submit a verified statement that the substitute specimen was in use in commerce at least as early as the filing date of the application. The verified statement is not required if the specimen is a duplicate or facsimile of a specimen already of record in the application.
              (b) In an application under section 1(b) of the Act, after filing either an amendment to allege use under § 2.76 or a statement of use under § 2.88, the applicant may submit substitute specimens of the mark as used on or in connection with the goods or in the sale or advertising of the services, or as used to indicate membership in the collective organization. If the applicant submits substitute specimen(s), the applicant must:
              (1) For an amendment to allege use under § 2.76, submit a verified statement that the substitute specimen(s) was in use in commerce prior to filing the amendment to allege use.
              (2) For a statement of use under § 2.88, submit a verified statement that the substitute specimen(s) was in use in commerce either prior to filing the statement of use or prior to the expiration of the deadline for filing the statement of use.
              [80 FR 33183, June 11, 2015]

            Examination of Application and Action by Applicants

              Authority:
              Secs. 2.61 to 2.69 also issued under sec. 12, 60 Stat. 432; 15 U.S.C. 1062.

              § 2.61
              Action by examiner.
              (a) Applications for registration, including amendments to allege use under section 1(c) of the Act, and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
              (b) The Office may require the applicant to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the application.
              (c) Whenever it shall be found that two or more parties whose interests are in conflict are represented by the same attorney, each party and also the attorney shall be notified of this fact.
              [30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb. 9, 1972; 54 FR 37592, Sept. 11, 1989; 77 FR 30207, May 22, 2012]

              § 2.62
              Procedure for submitting response.
              (a) Deadline. The applicant's response to an Office action must be received by the USPTO within six months from the issue date.

              (b) Signature. The response must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2).
              (c) Form. Responses must be submitted through TEAS pursuant to § 2.23(a). Responses sent via email or facsimile will not be accorded a date of receipt.
              [84 FR 37095, July 31, 2019]

              § 2.63
              Action after response.
              (a) Repeated non-final refusal or requirement. After response by the applicant, the examining attorney will review all statutory refusals and/or requirement(s) in light of the response.
              (1) If, after review of the applicant's response, the examining attorney issues a non-final action that maintains any previously issued substantive refusal(s) to register or repeats any requirement(s), the applicant may submit a timely response to the action under § 2.62(a).

              (2) If, after review of the applicant's response, the examining attorney issues a non-final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond to such repeated requirement(s) by filing a timely petition to the Director for relief from the repeated requirement(s) if the subject matter of the repeated requirement(s) is appropriate for petition to the Director (see § 2.146(b)).
              (b) Final refusal or requirement. Upon review of a response, the examining attorney may state that the refusal(s) to register, or the requirement(s), is final.
              (1) If the examining attorney issues a final action that maintains any substantive refusal(s) to register, the applicant may respond by timely filing:
              (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to overcome any substantive refusal(s) to register, and comply with any outstanding requirement(s), maintained in the final action; or
              (ii) An appeal to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142.
              (2) If the examining attorney issues a final action that contains no substantive refusals to register, but maintains any requirement(s), the applicant may respond by timely filing:
              (i) A request for reconsideration under paragraph (b)(3) of this section that seeks to comply with any outstanding requirement(s) maintained in the final action;
              (ii) An appeal of the requirement(s) to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142; or
              (iii) A petition to the Director under § 2.146 to review the requirement(s), if the subject matter of the requirement(s) is procedural, and therefore appropriate for petition.
              (3) Prior to the expiration of the time for filing an appeal or a petition, the applicant may file a request for reconsideration of the final action that seeks to overcome any substantive refusal(s) and/or comply with any outstanding requirement(s). Filing a request for reconsideration does not stay or extend the time for filing an appeal or petition. The Office will enter amendments accompanying requests for reconsideration after final action if the amendments comply with the rules of practice in trademark cases and the Act.
              (4) Filing a request for reconsideration that does not result in the withdrawal of all refusals and requirements, without the filing of a timely appeal or petition, will result in abandonment of the application for incomplete response, pursuant to § 2.65(a).
              (c) If a petition to the Director under § 2.146 is denied, the applicant will have six months from the date of issuance of the Office action that repeated the requirement(s), or made it final, or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement(s). A requirement that is the subject of a petition decided by the Director subsequently may not be the subject of an appeal to the Trademark Trial and Appeal Board.

              (d) If an applicant in an application under section 1(b) of the Act files an amendment to allege use under § 2.76 during the six-month response period after issuance of a final action, the examining attorney will examine the amendment. The filing of such an amendment does not stay or extend the time for filing an appeal or petition.
              [80 FR 2310, Jan. 16, 2015]

              § 2.64
              Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error.
              (a) Request for Reinstatement of an Abandoned Application. The applicant may file a written request to reinstate an application abandoned due to Office error. There is no fee for a request for reinstatement.
              (1) Deadline. The applicant must file the request by not later than:
              (i) Two months after the issue date of the notice of abandonment; or
              (ii) Two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned, where the applicant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment.
              (2) Requirements. A request to reinstate an application abandoned due to Office error must include:
              (i) Proof that a response to an Office action, a statement of use, or a request for extension of time to file a statement of use was timely filed and a copy of the relevant document;
              (ii) Proof of actual receipt by the Office of a response to an Office action, a statement of use, or a request for extension of time to file a statement of use and a copy of the relevant document;
              (iii) Proof that the Office processed a fee in connection with the filing at issue and a copy of the relevant document;
              (iv) Proof that the Office sent the Office action or notice of allowance to an address that is not the designated correspondence address; or
              (v) Other evidence, or factual information supported by a declaration under § 2.20 or 28 U.S.C. 1746, demonstrating Office error in abandoning the application.
              (b) Request for Reinstatement of Cancelled or Expired Registration. The registrant may file a written request to reinstate a registration cancelled or expired due to Office error. There is no fee for the request for reinstatement.
              (1) Deadline. The registrant must file the request by not later than:
              (i) Two months after the issue date of the notice of cancellation/expiration; or
              (ii) Where the registrant has timely filed an affidavit of use or excusable non-use under section 8 or 71 of the Act, or a renewal application under section 9 of the Act, two months after the date of actual knowledge of the cancellation/expiration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired, where the registrant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of cancellation/expiration or where the Office did not issue a notice.
              (2) Requirements. A request to reinstate a registration cancelled/expired due to Office error must include:
              (i) Proof that an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action was timely filed and a copy of the relevant document;
              (ii) Proof of actual receipt by the Office of an affidavit or declaration of use or excusable nonuse, a renewal application, or a response to an Office action and a copy of the relevant document;
              (iii) Proof that the Office processed a fee in connection with the filing at issue and a copy of the relevant document;
              (iv) Proof that the Office sent the Office action to an address that is not the designated correspondence address; or
              (v) Other evidence, or factual information supported by a declaration under § 2.20 or 28 U.S.C. 1746, demonstrating Office error in cancelling/expiring the registration.
              (c) Request for Reinstatement May be Construed as Petition. If an applicant or registrant is not entitled to reinstatement, a request for reinstatement may be construed as a petition to the Director under § 2.146 or a petition to revive under § 2.66, if appropriate. If the applicant or registrant is unable to meet the timeliness requirement under paragraphs (a)(1) or (b)(1) of this section for filing the request, the applicant or registrant may submit a petition to the Director under § 2.146(a)(5) to request a waiver of the rule.
              [82 FR 29407, June 29, 2017]

              § 2.65
              Abandonment.

              (a) An application will be abandoned if an applicant fails to respond to an Office action, or to respond completely, within six months from the date of issuance. A timely petition to the Director pursuant to §§ 2.63(a) and (b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a response that avoids abandonment (see § 2.63(b)(4)).
              (1) If all refusals and/or requirements are expressly limited to certain goods and/or services, the application will be abandoned only as to those goods and/or services.
              (2) When a timely response by the applicant is a bona fide attempt to advance the examination of the application and is a substantially complete response to the examining attorney's action, but consideration of some matter or compliance with a requirement has been omitted, the examining attorney may grant the applicant thirty days, or to the end of the response period set forth in the action to which the substantially complete response was submitted, whichever is longer, to explain and supply the omission before the examining attorney considers the question of abandonment.
              (b) An application will be abandoned if an applicant expressly abandons the application pursuant to § 2.68.
              (c) An application will be abandoned if an applicant in an application under section 1(b) of the Act fails to timely file either a statement of use under § 2.88 or a request for an extension of time for filing a statement of use under § 2.89.
              [80 FR 2311, Jan. 16, 2015]

              § 2.66
              Revival of applications abandoned in full or in part due to unintentional delay.
              (a) Deadline. The applicant may file a petition to revive an application abandoned in full or in part because the applicant did not timely respond to an Office action or notice of allowance, if the delay was unintentional. The applicant must file the petition by not later than:
              (1) Two months after the issue date of the notice of abandonment in full or in part; or
              (2) Two months after the date of actual knowledge of the abandonment and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in full or in part, where the applicant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the notice of abandonment.
              (b) Petition To Revive Application Abandoned in Full or in Part for Failure To Respond to an Office Action. A petition to revive an application abandoned in full or in part because the applicant did not timely respond to an Office action must include:
              (1) The petition fee required by § 2.6;
              (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional; and
              (3) A response to the Office action, signed pursuant to § 2.193(e)(2), or a statement that the applicant did not receive the Office action or the notification that an Office action issued. If the applicant asserts that the unintentional delay is based on non-receipt of an Office action or notification, the applicant may not assert non-receipt of the same Office action or notification in a subsequent petition. When the abandonment is after a final Office action, the response is treated as a request for reconsideration under § 2.63(b)(3) and the applicant must also file:
              (i) A notice of appeal to the Trademark Trial and Appeal Board under § 2.141 or a petition to the Director under § 2.146, if permitted by § 2.63(b)(2)(iii); or
              (ii) A statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).
              (c) Petition To Revive Application Abandoned for Failure To Respond to a Notice of Allowance. A petition to revive an application abandoned because the applicant did not timely respond to a notice of allowance must include:
              (1) The petition fee required by § 2.6;

              (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in filing the statement of use (or request for extension of time to file a statement of use) on or before the due date was unintentional; and one of the following:
              (i) A statement of use under § 2.88, signed pursuant to § 2.193(e)(1), and the required fees for the number of requests for extensions of time to file a statement of use that the applicant should have filed under § 2.89 if the application had never been abandoned;
              (ii) A request for an extension of time to file a statement of use under § 2.89, signed pursuant to § 2.193(e)(1), and the required fees for the number of requests for extensions of time to file a statement of use that the applicant should have filed under § 2.89 if the application had never been abandoned;
              (iii) A statement that the applicant did not receive the notice of allowance and a request to cancel said notice and issue a new notice. If the applicant asserts that the unintentional delay in responding is based on non-receipt of the notice of allowance, the applicant may not assert non-receipt of the notice of allowance in a subsequent petition; or
              (iv) In a multiple-basis application, an amendment, signed pursuant to § 2.193(e)(2), deleting the section 1(b) basis and seeking registration based on section 1(a) and/or section 44(e) of the Act.
              (3) The applicant must file any further requests for extensions of time to file a statement of use under § 2.89 that become due while the petition is pending, or file a statement of use under § 2.88.
              (d) Statement of Use or Petition To Substitute a Basis May Not Be Filed More Than 36 Months After Issuance of the Notice of Allowance. In an application under section 1(b) of the Act, the Director will not grant a petition under this section if doing so would permit an applicant to file a statement of use, or a petition under § 2.35(b) to substitute a basis, more than 36 months after the issue date of the notice of allowance under section 13(b)(2) of the Act.
              (e) Request for Reconsideration. If the Director denies a petition to revive under this section, the applicant may request reconsideration, if:
              (1) The applicant files the request by not later than:
              (i) Two months after the issue date of the decision denying the petition; or
              (ii) Two months after the date of actual knowledge of the decision denying the petition and not later than six months after the issue date of the decision where the applicant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the decision; and
              (2) The applicant pays a second petition fee under § 2.6.
              [82 FR 29408, June 29, 2017]

              § 2.67
              Suspension of action by the Patent and Trademark Office.
              Action by the Patent and Trademark Office may be suspended for a reasonable time for good and sufficient cause. The fact that a proceeding is pending before the Patent and Trademark Office or a court which is relevant to the issue of registrability of the applicant's mark, or the fact that the basis for registration is, under the provisions of section 44(e) of the Act, registration of the mark in a foreign country and the foreign application is still pending, will be considered prima facie good and sufficient cause. An applicant's request for a suspension of action under this section filed within the 6-month response period (see § 2.62) may be considered responsive to the previous Office action. The first suspension is within the discretion of the Examiner of Trademarks and any subsequent suspension must be approved by the Director.
              [37 FR 3898, Feb. 24, 1972]

              § 2.68
              Express abandonment (withdrawal) of application.
              (a) Written document required. An applicant may expressly abandon an application by filing a written request for abandonment or withdrawal of the application, signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2). A request for abandonment or withdrawal may not subsequently be withdrawn.
              (b) Rights in the mark not affected. Except as provided in § 2.135, the fact that an application has been expressly abandoned shall not affect any rights that the applicant may have in the mark set forth in the abandoned application in any proceeding before the Office.
              [80 FR 2311, Jan. 16, 2015]

              § 2.69
              Compliance with other laws.
              When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.
              [54 FR 37592, Sept. 11, 1989]

            Amendment of Application

              § 2.71
              Amendments to correct informalities.
              The applicant may amend the application during the course of examination, when required by the Office or for other reasons.
              (a) The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services or the description of the nature of the collective membership organization.
              (b)(1) If the verified statement in an application under § 2.33 is unsigned or signed by the wrong party, the applicant may submit a substitute verification.
              (2) If the verified statement in a statement of use under § 2.88, or a request for extension of time to file a statement of use under § 2.89, is unsigned or signed by the wrong party, the applicant must submit a substitute verification before the expiration of the statutory deadline for filing the statement of use.

              (c) The applicant may amend the dates of use, provided that the amendment is verified, except that the following amendments are not permitted:
              (1) In an application under section 1(a) of the Act, the applicant may not amend the application to specify a date of use that is subsequent to the filing date of the application;
              (2) In an application under section 1(b) of the Act, after filing a statement of use under § 2.88, the applicant may not amend the statement of use to specify a date of use that is subsequent to the expiration of the deadline for filing the statement of use.
              (d) The applicant may amend the application to correct the name of the applicant, if there is a mistake in the manner in which the name of the applicant is set out in the application. The amendment must be verified. However, the application cannot be amended to set forth a different entity as the applicant. An application filed in the name of an entity that did not own the mark as of the filing date of the application is void.
              (e) An amendment that would materially alter the certification statement specified in § 2.45(a)(4)(i)(A) or (a)(4)(ii)(A) will not be permitted.
              [64 FR 48922, Sept. 8, 1999, as amended at 80 FR 33184, June 11, 2015]

              § 2.72
              Amendments to description or drawing of the mark.
              (a) In an application based on use in commerce under section 1(a) of the Act, the applicant may amend the description or drawing of the mark only if:
              (1) The specimens originally filed, or substitute specimens filed under § 2.59(a), support the proposed amendment; and
              (2) The proposed amendment does not materially alter the mark. The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.
              (b) In an application based on a bona fide intention to use a mark in commerce under section 1(b) of the Act, the applicant may amend the description or drawing of the mark only if:
              (1) The specimens filed with an amendment to allege use or statement of use, or substitute specimens filed under § 2.59(b), support the proposed amendment; and

              (2) The proposed amendment does not materially alter the mark. The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.
              (c) In an application based on a claim of priority under section 44(d) of the Act, or on a mark duly registered in the country of origin of the foreign applicant under section 44(e) of the Act, the applicant may amend the description or drawing of the mark only if:
              (1) The description or drawing of the mark in the foreign registration certificate supports the amendment; and
              (2) The proposed amendment does not materially alter the mark. The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.
              [64 FR 48922, Sept. 8, 1999]

              § 2.73
              Amendment to recite concurrent use.
              An application that includes section 1(a) of the Trademark Act as a filing basis, or for which an acceptable allegation of use under § 2.76 or § 2.88 has been filed, may be amended to an application for concurrent use registration, provided that the application as amended meets the requirements of § 2.42. The trademark examining attorney will determine whether the application, as amended, is acceptable.
              [73 FR 67770, Nov. 17, 2008]

              § 2.74
              Form and signature of amendment.
              (a) Form of Amendment. Amendments should be set forth clearly and completely. Applicant should either set forth the entire wording, including the proposed changes, or, if it would be more efficient, indicate which words should be added and which words should be deleted. The examining attorney may require the applicant to rewrite the entire amendment, if necessary for clarification of the record.
              (b) Signature. A request for amendment of an application must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2). If the amendment requires verification, see § 2.2(n).
              [73 FR 67770, Nov. 17, 2008, as amended at 74 FR 54908, Oct. 26, 2009; 80 FR 33184, June 11, 2015]

              § 2.75
              Amendment to change application to different register.
              (a) An application for registration on the Principal Register under section 1(a) or 44 of the Act may be changed to an application for registration on the Supplemental Register and vice versa by amending the application to comply with the rules relating to the appropriate register, as the case may be.
              (b) An application under section 1(b) of the Act may be amended to change the application to a different register only after submission of an acceptable amendment to allege use under § 2.76 or statement of use under § 2.88. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of the filing of the allegation of use under section 1(c) or 1(d) of the Act.
              (c) In an application under section 66(a) of the Act, the applicant may not amend the application to the Supplemental Register.
              [54 FR 37593, Sept. 11, 1989, as amended at 68 FR 55765, Sept. 26, 2003]

              § 2.76
              Amendment to allege use.
              (a) When to file an amendment to allege use. (1) An application under section 1(b) of the Act may be amended to allege use of the mark in commerce under section 1(c) of the Act at any time between the filing of the application and the date the examiner approves the mark for publication. Thereafter, an allegation of use may be submitted only as a statement of use under § 2.88 after the issuance of a notice of allowance under section 13(b)(2) of the Act. An amendment to allege use filed outside the time period specified in this paragraph will not be reviewed.

              (2)(i) For a trademark, service mark, collective trademark, collective service mark, and certification mark, an amendment to allege use may be filed only when the mark has been in use in commerce on or in connection with all the goods or services specified in the application for which the applicant will seek registration. For a collective membership mark, an amendment to allege use may be filed only when the mark has been in use in commerce to indicate membership in the collective organization specified in the application for which the applicant will seek registration.
              (ii) An amendment to allege use may be accompanied by a request in accordance with § 2.87 to divide out from the application the goods, services, or classes not yet in use in commerce.
              (b) A complete amendment to allege use. A complete amendment to allege use must include the following:
              (1) A verified statement alleging:
              (i) The applicant believes the applicant is the owner of the mark;
              (ii) The mark is in use in commerce;
              (iii) The date of first use of the mark anywhere on or in connection with the goods or services, and/or to indicate membership in the collective organization specified in the application, and the date of first use of the mark in commerce. If the amendment to allege use specifies more than one item of goods or services in a class, the dates of use are required for only one item of goods or services specified in that class;
              (iv) The goods, services, and/or nature of the collective membership organization specified in the application; and
              (v) For a collective mark and certification mark, the applicant is exercising legitimate control over the use in commerce of the mark.
              (2) One specimen showing how the applicant, member, or authorized user uses the mark in commerce. See § 2.56 for the requirements for specimens;
              (3) The fee per class required by § 2.6;
              (4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
              (5) For a certification mark, the requirements of § 2.45(a)(4)(i)(A)-(C); and
              (6) The title “Amendment to Allege Use” should appear at the top of the first page of the document, if not filed through TEAS.
              (c) Minimum filing requirements for a timely filed amendment to allege use. The Office will review a timely filed amendment to allege use to determine whether it meets the following minimum requirements:
              (1) The fee required by § 2.6 for at least one class;
              (2) One specimen of the mark as used in commerce; and
              (3) The verified statement in paragraph (b)(1)(ii) of this section.
              (d) Deficiency notification. If the amendment to allege use is filed within the permitted time period but does not meet the minimum requirements specified in paragraph (c) of this section, the Office will notify the applicant of the deficiency. The deficiency may be corrected provided the mark has not been approved for publication. If an acceptable amendment to correct the deficiency is not filed prior to approval of the mark for publication, the amendment will not be examined, and the applicant must instead file a statement of use after the notice of allowance issues.
              (e) Notification of refusals and requirements. A timely filed amendment to allege use that meets the minimum requirements specified in paragraph (c) of this section will be examined in accordance with §§ 2.61 through 2.69. If, as a result of the examination of the amendment to allege use, the applicant is found not entitled to registration for any reason not previously stated, the applicant will be notified and advised of the reasons and of any formal requirements or refusals. The notification shall restate or incorporate by reference all unresolved refusals or requirements previously stated. The amendment to allege use may be amended in accordance with §§ 2.59 and 2.71 through 2.75.
              (f) Withdrawal. An amendment to allege use may be withdrawn for any reason prior to approval of a mark for publication.
              (g) Verification not filed within reasonable time. If the verified statements in paragraphs (b)(1)(ii) and, if applicable, (b)(1)(v) of this section are not filed within a reasonable time after they are signed, the Office may require the applicant to submit substitute verified statements attesting that the mark is in use in commerce, and, if applicable, the applicant is exercising legitimate control over the use of the mark in commerce.
              (h) An amendment to allege use is not a response but may include amendments. The filing of an amendment to allege use does not constitute a response to any outstanding action by the examiner. See § 2.62. The amendment to allege use may include amendments in accordance with §§ 2.59 and 2.71 through 2.75.
              (i) If the application is amended to concurrent use under § 2.73, the amendment to allege use must include a verified statement modified in accordance with § 2.33(f), § 2.44(d), or § 2.45(d).
              (j) Multiple-class application. For the requirements of a multiple-class application, see § 2.86.
              [80 FR 33184, June 11, 2015]

              § 2.77
              Amendments between notice of allowance and statement of use.
              (a) The only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are:
              (1) The deletion of specified goods or services, or the entire description of the nature of the collective membership organization, from the identification;
              (2) The deletion of a basis in a multiple-basis application; and
              (3) A change of attorney or change of address.
              (b) Other amendments may be entered during this period only with the express permission of the Director, after consideration on petition under § 2.146. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review.
              [73 FR 67770, Nov. 17, 2008, as amended at 80 FR 2311, Jan. 16, 2015; 80 FR 33185, June 11, 2015]

            Publication and Post Publication

              § 2.80
              Publication for opposition.

              If, on examination or reexamination of an application for registration on the Principal Register, it appears that the applicant is entitled to have his mark registered, the mark will be published in the Official Gazette for opposition. The mark will also be published in the case of an application to be placed in interference or concurrent use proceedings, if otherwise registrable.
              [41 FR 758, Jan. 5, 1976]

              § 2.81
              Post publication.
              (a) Except in an application under section 1(b) of the Act for which no amendment to allege use under § 2.76 has been submitted and accepted, if no opposition is filed within the time permitted or all oppositions filed are dismissed, and if no interference is declared and no concurrent use proceeding is instituted, the application will be prepared for issuance of the certificate of registration as provided in § 2.151.
              (b) In an application under section 1(b) of the Act for which no amendment to allege use under § 2.76 has been submitted and accepted, if no opposition is filed within the time permitted or all oppositions filed are dismissed, and if no interference is declared, a notice of allowance will issue. Thereafter, the applicant must submit a statement of use as provided in § 2.88.
              [54 FR 37594, Sept. 11, 1989, as amended at 73 FR 67770, Nov. 17, 2008; 80 FR 2311, Jan. 16, 2015]

              § 2.82
              Marks on Supplemental Register published only upon registration.

              In the case of an application for registration on the Supplemental Register the mark will not be published for opposition but if it appears, after examination or reexamination, that the applicant is entitled to have the mark registered, a certificate of registration will issue as provided in § 2.151. The mark will be published in the Official Gazette when registered.
              [54 FR 37594, Sept. 11, 1989]

              § 2.83
              Conflicting marks.

              (a) Whenever an application is made for registration of a mark which so resembles another mark or marks pending registration as to be likely to cause confusion or mistake or to deceive, the mark with the earliest effective filing date will be published in the Official Gazette for opposition if eligible for the Principal Register, or issued a certificate of registration if eligible for the Supplemental Register.

              (b) In situations in which conflicting applications have the same effective filing date, the application with the earliest date of execution will be published in the Official Gazette for opposition or issued on the Supplemental Register.

              (c) Action on the conflicting application which is not published in the Official Gazette for opposition or not issued on the Supplemental Register will be suspended by the Examiner of Trademarks until the published or issued application is registered or abandoned.
              [37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, Sept. 11, 1989]

              § 2.84
              Jurisdiction over published applications.

              (a) The trademark examining attorney may exercise jurisdiction over an application up to the date the mark is published in the Official Gazette. After publication of an application under section 1(a), 44 or 66(a) of the Act, the trademark examining attorney may, with the permission of the Director, exercise jurisdiction over the application. After publication of an application under section 1(b) of the Act, the trademark examining attorney may exercise jurisdiction over the application after the issuance of the notice of allowance under section 13(b)(2) of the Act. After publication, and prior to issuance of a notice of allowance in an application under section 1(b), the trademark examining attorney may, with the permission of the Director, exercise jurisdiction over the application.

              (b) After publication, but before the certificate of registration is issued in an application under section 1(a), 44, or 66(a) of the Act, or before the notice of allowance is issued in an application under section 1(b) of the Act, an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board may be amended if the amendment meets the requirements of §§ 2.71, 2.72, and 2.74. Otherwise, an amendment to such an application may be submitted only upon petition to the Director to restore jurisdiction over the application to the examining attorney for consideration of the amendment and further examination. The amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by § 2.133.
              [68 FR 55765, Sept. 26, 2003, as amended at 73 FR 67770, Nov. 17, 2008; 80 FR 2311, Jan. 16, 2015]

            Classification

              § 2.85
              Classification schedules.
              (a) International classification system. Section 6.1 of this chapter sets forth the international system of classification for goods and services, which applies for all statutory purposes to:
              (1) Applications filed in the Office on or after September 1, 1973, and resulting registrations; and
              (2) Registrations resulting from applications filed on or before August 31, 1973, that have been amended to adopt international classification pursuant to § 2.85(e)(3).
              (b) Prior United States classification system. Section 6.2 of this chapter sets forth the prior United States system of classification for goods and services, which applies for all statutory purposes to registrations resulting from applications filed on or before August 31, 1973, unless:
              (1) The registration has been amended to adopt international classification pursuant to § 2.85(e)(3); or
              (2) The registration was issued under a classification system prior to that set forth in § 6.2.
              (c) Certification marks and collective membership marks. Sections 6.3 and 6.4 specify the system of classification which applies to certification marks and collective membership marks in applications based on sections 1 and 44 of the Act, and to registrations resulting from applications based on sections 1 and 44. These sections do not apply to applications under section 66(a) or to registered extensions of protection.
              (d) Section 66(a) applications and registered extensions of protection. In an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization, unless the International Bureau corrects the classification. Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.
              (e) Changes to Nice Agreement. The international classification system changes periodically, pursuant to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. These changes are listed in the International Classification of Goods and Services for the Purposes of the Registration of Marks, which is published by the World Intellectual Property Organization.
              (1) If international classification changes pursuant to the Nice Agreement, the new classification applies only to applications filed on or after the effective date of the change.
              (2) In a section 1 or section 44 application filed before the effective date of a change to the Nice Agreement, the applicant may amend the application to comply with the requirements of the current edition. The applicant must comply with the current edition for all goods or services identified in the application. The applicant must pay the fees for any added class(es).
              (3) In a registration resulting from a section 1 or section 44 application that was filed before the effective date of a change to the Nice Agreement, the owner may amend the registration to comply with the requirements of the current edition. The owner must reclassify all goods or services identified in the registration to the current edition. The owner must pay the fee required by § 2.6 for amendments under section 7 of the Act. The owner may reclassify registrations from multiple United States classes (§ 2.85(b)) into a single international classification, where appropriate.

              (f) Classification schedules shall not limit or extend the applicant's rights, except that in a section 66(a) application, the scope of the identification of goods or services for purposes of permissible amendments (see § 2.71(a)) is limited by the class, pursuant to § 2.85(d).
              [73 FR 67770, Nov. 17, 2008]

              § 2.86
              Multiple-class applications.
              (a) In a single application for a trademark, service mark, and/or collective mark, an applicant may apply to register the same mark for goods, services, and/or a collective membership organization in multiple classes. In a multiple-class application, the applicant must satisfy the following, in addition to the application requirements of § 2.32 for a trademark or service mark, and § 2.44 for collective marks:
              (1) For an application filed under section 1 or 44 of the Act, identify the goods or services in each international class and/or the nature of the collective membership organization in U.S. Class 200; for applications filed under section 66(a) of the Act, identify the goods, services, and/or the nature of the collective membership organization in each international class assigned by the International Bureau in the corresponding international registration;
              (2) Submit the application filing fee required by § 2.6 for each class; and
              (3) Include either dates of use and one specimen for each class based on section 1(a) of the Act; or a statement that the applicant has a bona fide intention to use the mark in commerce, for a trademark or service mark, or a statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, for collective marks, for each class based on section 1(b), 44, or 66(a) of the Act. When requested by the Office, additional specimens must be provided.
              (b) In a single application for a certification mark, an applicant may apply to register the same certification mark for goods and services. In such case, the applicant must satisfy the following, in addition to the application requirements of § 2.45:

              (1) For an application filed under section 1 or 44 of the Act, identify the goods in U.S. Class A and the services in U.S. Class B; for applications filed under section 66(a) of the Act, identify the goods and services in each international class assigned by the International Bureau in the corresponding international registration;
              (2) Submit the application filing fee required by § 2.6 for both classes; and
              (3) Include either dates of use and one specimen for each class based on section 1(a) of the Act; or a statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce for each class based on section 1(b), 44, or 66(a) of the Act. When requested by the Office, additional specimens must be provided.
              (c) In a single application, both section 1(a) and 1(b) of the Act may not be claimed for identical goods or services.

              (d) In a single application based on section 1 or 44 of the Act, goods or services in U.S. Classes A and/or B may not be combined with either goods or services in any international class or with a collective membership organization in U.S. Class 200; and in a single application based on section 66(a) of the Act, a certification mark application may not be combined with goods, services, or a collective membership organization in any international class. See § 2.45(f).
              (e) An amendment to allege use under § 2.76 or a statement of use under § 2.88 for multiple classes must include, for each class, the required fee, dates of use, and one specimen. When requested by the Office, additional specimens must be provided. The applicant may not file an amendment to allege use or a statement of use until the applicant has used the mark on or in connection with all the goods, services, or classes, unless the applicant also files a request to divide under § 2.87.
              (f) The Office will issue a single certificate of registration for the mark, unless the applicant files a request to divide under § 2.87.
              [80 FR 33185, June 11, 2015]

              § 2.87
              Dividing an application.
              (a) Application may be divided. An application may be divided into two or more separate applications upon the payment of a fee for each new application created and submission by the applicant of a request in accordance with paragraph (d) of this section.
              (b) Fee. In the case of a request to divide out one or more entire classes from an application, only the fee for dividing an application as set forth in § 2.6(a)(19) will be required. However, in the case of a request to divide out some, but not all, of the goods or services in a class, the applicant must submit the application filing fee as set forth in § 2.6(a)(1) for each new separate application to be created by the division, in addition to the fee for dividing an application.
              (c) Time for filing. (1) A request to divide an application may be filed at any time between the application filing date and the date on which the trademark examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board.
              (2) In an application under section 1(b) of the Act, a request to divide may also be filed with a statement of use under § 2.88 or at any time between the filing of a statement of use and the date on which the trademark examining attorney approves the mark for registration.
              (3) In a multiple-basis application, a request to divide out goods or services having a particular basis may also be filed during the period between the issuance of the notice of allowance under section 13(b)(2) of the Act and the filing of a statement of use under § 2.88.
              (d) Form. A request to divide an application should be made in a separate document from any other amendment or response in the application. The title “Request to Divide Application” should appear at the top of the first page of the document.
              (e) Outstanding time periods apply to newly created applications. Any time period for action by the applicant which is outstanding in the original application at the time of the division will apply to each separate new application created by the division, except as follows:

              (1) If an Office action pertaining to less than all the classes in a multiple-class application is outstanding, and the applicant files a request to divide out the goods, services, and/or class(es) to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application;
              (2) If an Office action pertaining to less than all the bases in a multiple-basis application is outstanding, and the applicant files a request to divide out the goods/services having the basis or bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application; or
              (3) In a multiple-basis application in which a notice of allowance has issued, if the applicant files a request to divide out the goods/services having the basis or bases to which the notice of allowance does not pertain before the deadline for filing the statement of use, the new (child) applications created by the division are not affected by the notice of allowance.
              (f) Signature. The request to divide must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of § 11.14, in accordance with the requirements of § 2.193(e)(2).
              (g) Section 66(a) applications—change of ownership with respect to some but not all of the goods or services. (1) When the International Bureau of the World Intellectual Property Organization notifies the Office that an international registration has been divided as the result of a change of ownership with respect to some but not all of the goods or services, the Office will construe the International Bureau's notice as a request to divide. The Office will record the partial change of ownership in the Assignment Services Branch, and divide out the assigned goods/services from the original (parent) application. The Office will create a new (child) application serial number, and enter the information about the new application in its automated records.
              (2) To obtain a certificate of registration in the name of the new owner for the goods/services that have been divided out, the new owner must pay the fee(s) for the request to divide, as required by § 2.6 and paragraph (b) of this section. The examining attorney will issue an Office action in the child application requiring the new owner to pay the required fee(s). If the owner of the child application fails to respond, the child application will be abandoned. It is not necessary for the new owner to file a separate request to divide.
              (3) The Office will not divide a section 66(a) application based upon a change of ownership unless the International Bureau notifies the Office that the international registration has been divided.
              [73 FR 67771, Nov. 17, 2008, as amended at 74 FR 54908, Oct. 26, 2009]

            Post Notice of Allowance

              § 2.88
              Statement of use after notice of allowance.
              (a) When to file a statement of use. (1) In an application under section 1(b) of the Act, a statement of use, required under section 1(d) of the Act, must be filed within six months after issuance of a notice of allowance under section 13(b)(2) of the Act, or within an extension of time granted under § 2.89. A statement of use filed prior to issuance of a notice of allowance is premature and will not be reviewed.
              (2)(i) For a trademark, service mark, collective trademark, collective service mark, and certification mark, a statement of use may be filed only when the mark has been in use in commerce on or in connection with all the goods or services specified in the notice of allowance for which the applicant will seek registration in that application. For a collective membership mark, a statement of use may be filed only when the mark has been in use in commerce to indicate membership in the collective membership organization specified in the notice of allowance for which the applicant will seek registration in that application.
              (ii) A statement of use may be accompanied by a request in accordance with § 2.87 to divide out from the application the goods, services, or classes not yet in use in commerce.
              (b) A complete statement of use. A complete statement of use must include the following:

              (1) A verified statement alleging:
              (i) The applicant believes the applicant is the owner of the mark;
              (ii) The mark is in use in commerce;
              (iii) The date of first use of the mark anywhere on or in connection with the goods, services, and/or to indicate membership in the collective organization specified in the application, and the date of first use of the mark in commerce. If the statement of use specifies more than one item of goods or services in a class, the dates of use are required for only one item of goods or services specified in that class;
              (iv) The goods, services, and/or nature of the collective membership organization specified in the notice of allowance. The goods or services specified in a statement of use must conform to those goods or services specified in the notice of allowance for trademark, service mark, collective trademark, collective service mark, or certification mark applications. Any goods or services specified in the notice of allowance that are omitted from the identification of goods or services in the statement of use will be presumed to be deleted and the deleted goods or services may not be reinserted in the application. For collective membership mark applications, the description of the nature of the collective membership organization in the statement of use must conform to that specified in the notice of allowance; and
              (v) For a collective mark and certification mark, the applicant is exercising legitimate control over the use in commerce of the mark;
              (2) One specimen showing how the applicant, member, or authorized user uses the mark in commerce. See § 2.56 for the requirements for specimens;
              (3) Fee(s). The fee required by § 2.6 per class. The applicant must pay a filing fee sufficient to cover at least one class within the statutory time for filing the statement of use, or the application will be abandoned. If the applicant submits a fee insufficient to cover all the classes in a multiple-class application, the applicant should specify the classes to be abandoned. If the applicant timely submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to be abandoned, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining class(es) or to specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid, beginning with the lowest numbered class, in ascending order. The Office will delete the class(es) not covered by the fees submitted;
              (4) For a collective mark, the requirements of § 2.44(a)(4)(i)(A);
              (5) For a certification mark, the requirements of § 2.45(a)(4)(i)(A) through (C); and
              (6) The title “Statement of Use” should appear at the top of the first page of the document, if not filed through TEAS.
              (c) Minimum filing requirements for a timely filed statement of use. The Office will review a timely filed statement of use to determine whether it meets the following minimum requirements:
              (1) The fee required by § 2.6 for at least one class;
              (2) One specimen of the mark as used in commerce; and
              (3) The verified statement in paragraph (b)(1)(ii) of this section. If this verified statement is unsigned or signed by the wrong party, the applicant must submit a substitute verified statement on or before the statutory deadline for filing the statement of use.
              (d) Deficiency notification. If the statement of use is filed within the permitted time period but does not meet the minimum requirements specified in paragraph (c) of this section, the Office will notify the applicant of the deficiency. If the time permitted for the applicant to file a statement of use has not expired, the applicant may correct the deficiency.
              (e) Notification of refusals and requirements. A timely filed statement of use that meets the minimum requirements specified in paragraph (c) of this section will be examined in accordance with §§ 2.61 through 2.69. If, as a result of the examination of the statement of use, the applicant is found not entitled to registration, the applicant will be notified and advised of the reasons and of any formal requirements or refusals. The statement of use may be amended in accordance with §§ 2.59 and 2.71 through 2.75.
              (f) Statement of use may not be withdrawn. The applicant may not withdraw a timely filed statement of use to return to the previous status of awaiting submission of a statement of use, regardless of whether it is in compliance with paragraph (c) of this section.
              (g) Verification not filed within reasonable time. If the verified statements in paragraphs (b)(1)(ii) and, if applicable, (b)(1)(v) of this section are not filed within a reasonable time after they are signed, the Office may require the applicant to submit substitute verified statements attesting that the mark is in use in commerce, and, if applicable, the applicant is exercising legitimate control over the use of the mark in commerce.
              (h) Amending the application. The statement of use may include amendments in accordance with §§ 2.51, 2.59, and 2.71 through 2.75.
              (i) Concurrent use. If the application is amended to concurrent use under § 2.73, the statement of use must include a verified statement modified in accordance with § 2.33(f), § 2.44(d), or § 2.45(d).
              (j) Multiple-class application. For the requirements of a multiple-class application, see § 2.86.
              (k) Abandonment. The failure to timely file a statement of use which meets the minimum requirements specified in paragraph (c) of this section shall result in the abandonment of the application.
              [80 FR 33185, June 11, 2015]

              § 2.89
              Extensions of time for filing a statement of use.
              (a) First extension request after issuance of notice of allowance. The applicant may request a six-month extension of time to file the statement of use required by § 2.88. The extension request must be filed within six months of the date of issuance of the notice of allowance under section 13(b)(2) of the Act and must include the following:
              (1) A written request for an extension of time to file the statement of use;
              (2) The fee required by § 2.6 per class. The applicant must pay a filing fee sufficient to cover at least one class within the statutory time for filing the extension request, or the request will be denied. If the applicant submits a fee insufficient to cover all the classes in a multiple-class application, the applicant should specify the classes to be abandoned. If the applicant timely submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to be abandoned, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining classes, or specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid, beginning with the lowest numbered class, in ascending order. The Office will delete the class(es) not covered by the fees submitted; and
              (3) A verified statement that the applicant has a continued bona fide intention to use the mark in commerce, specifying the relevant goods or services, for trademarks or service marks; or that the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, specifying the relevant goods, services, or collective membership organization, for collective marks or certification marks. If this verified statement is unsigned or signed by the wrong party, the applicant must submit a substitute verified statement within six months of the date of issuance of the notice of allowance.
              (b) Subsequent extension requests. Before the expiration of the previously granted extension of time, the applicant may request further six-month extensions of time to file the statement of use by submitting the following:
              (1) A written request for an extension of time to file the statement of use;
              (2) The requirements of paragraph (a)(2) of this section for a fee;

              (3) A verified statement that the applicant has a continued bona fide intention to use the mark in commerce, specifying the relevant goods or services, for trademarks or service marks; or that the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, specifying the relevant goods, services, or collective membership organization, for collective marks or certification marks. If this verified statement is unsigned or signed by the wrong party, the applicant must submit a substitute verified statement before the expiration of the previously granted extension; and
              (4) A showing of good cause, as specified in paragraph (d) of this section.
              (c) Four subsequent extension requests permitted. Extension requests specified in paragraph (b) of this section will be granted only in six-month increments and may not aggregate more than 24 months total.
              (d) Good cause. A showing of good cause must include:
              (1) For a trademark or service mark, a statement of the applicant's ongoing efforts to make use of the mark in commerce on or in connection with each of the relevant goods or services. Those efforts may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain governmental approval, or other similar activities. In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts to use the mark in commerce.
              (2) For a collective mark, a statement of ongoing efforts to make use of the mark in commerce by members on or in connection with each of the relevant goods or services or in connection with the applicant's collective membership organization. Those efforts may include the development of standards, the steps taken to acquire members such as marketing and promotional activities targeted to potential members, training members regarding the standards, or other similar activities. In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts for applicant's members to use the mark in commerce.
              (3) For a certification mark, a statement of ongoing efforts to make use of the mark in commerce by authorized users on or in connection with each of the relevant goods or services. Those efforts may include the development of certification standards, steps taken to obtain governmental approval or acquire authorized users, marketing and promoting the recognition of the certification program or of the goods or services that meet the certification standards of the applicant, training authorized users regarding the standards, or other similar activities. In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts for applicant's authorized users to use the mark in commerce.
              (e) Extension request filed in conjunction with or after a statement of use. (1) An applicant may file one request for a six-month extension of time for filing a statement of use when filing a statement of use or after filing a statement of use if time remains in the existing six-month period in which the statement of use was filed, provided that the time requested would not extend beyond 36 months from the date of issuance of the notice of allowance. Thereafter, applicant may not request any further extensions of time.
              (2) A request for an extension of time that is filed under paragraph (e)(1) of this section, must comply with all the requirements of paragraph (a) of this section, if it is an applicant's first extension request, or paragraph (b) of this section, if it is a second or subsequent extension request. However, in a request under paragraph (b) of this section, an applicant may satisfy the requirement for a showing of good cause by asserting the applicant believes the applicant has made valid use of the mark in commerce, as evidenced by the submitted statement of use, but that if the statement of use is found by the Office to be fatally defective, the applicant will need additional time in which to file a new statement of use.
              (f) Goods or services. For trademark, service mark, collective trademark, collective service mark, or certification mark applications, the goods or services specified in a request for an extension of time for filing a statement of use must conform to those goods or services specified in the notice of allowance. Any goods or services specified in the notice of allowance that are omitted from the identification of goods or services in the request for extension of time will be presumed to be deleted and the deleted goods or services may not thereafter be reinserted in the application. For collective membership mark applications, the description of the nature of the collective membership organization in the request for extension of time must conform to that set forth in the notice of allowance.
              (g) Notice of grant or denial. The applicant will be notified of the grant or denial of a request for an extension of time, and of the reasons for a denial. Failure to notify the applicant of the grant or denial of the request prior to the expiration of the existing period or requested extension does not relieve the applicant of the responsibility of timely filing a statement of use under § 2.88. If, after denial of an extension request, there is time remaining in the existing six-month period for filing a statement of use, applicant may submit a substitute request for extension of time to correct the defects of the prior request. Otherwise, the only recourse available after denial of a request for an extension of time is to file a petition to the Director in accordance with § 2.66 or § 2.146. A petition from the denial of an extension request must be filed within two months of the date of issuance of the denial of the request. If the petition is granted, the term of the requested six-month extension that was the subject of the petition will run from the date of expiration of the previously existing six-month period for filing a statement of use.
              (h) Verification not filed within reasonable time. If the verified statement in paragraph (a)(3) or (b)(3) of this section is not filed within a reasonable time after it is signed, the Office may require the applicant to submit a substitute verified statement attesting that the applicant has a continued bona fide intention to use the mark in commerce, for trademarks or service marks; or that the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, for collective marks or certification marks.
              [80 FR 33186, June 11, 2015]

            Concurrent Use Proceedings

              §§ 2.91-2.98
              [Reserved]

              § 2.99
              Application to register as concurrent user.
              (a) An application for registration as a lawful concurrent user will be examined in the same manner as other applications for registration.
              (b) If it appears that the applicant is entitled to have the mark registered, subject to a concurrent use proceeding, the mark will be published in the Official Gazette as provided by § 2.80.
              (c) If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the Trademark Trial and Appeal Board will send a notice of institution to the applicant for concurrent use registration (plaintiff) and to each applicant, registrant or user specified as a concurrent user in the application (defendants). The notice for each defendant shall state the name and address of the plaintiff and of the plaintiff's attorney or other authorized representative, if any, together with the serial number and filing date of the application. If a party has provided the Office with an email address, the notice may be transmitted via email.
              (d)(1) The Board's notice of institution will include a web link or web address to access the concurrent use application proceeding contained in Office records.
              (2) An answer to the notice is not required in the case of an applicant or registrant whose application or registration is acknowledged by the concurrent use applicant in the concurrent use application, but a statement, if desired, may be filed within forty days after the issuance of the notice; in the case of any other party specified as a concurrent user in the application, an answer must be filed within forty days after the issuance of the notice.

              (3) If an answer, when required, is not filed, judgment will be entered precluding the defaulting user from claiming any right more extensive than that acknowledged in the application(s) for concurrent use registration, but the burden of proving entitlement to registration(s) will remain with the concurrent use applicant(s).

              (e) The applicant for a concurrent use registration has the burden of proving entitlement thereto. If there are two or more applications for concurrent use registration involved in a proceeding, the party whose application has the latest filing date is the junior party. A party whose application has a filing date between the filing dates of the earliest involved application and the latest involved application is a junior party to every party whose involved application has an earlier filing date. If any applications have the same filing date, the application with the latest date of execution will be deemed to have the latest filing date and that applicant will be the junior party. A person specified as an excepted user in a concurrent use application but who has not filed an application shall be considered a party senior to every party that has an application involved in the proceeding.
              (f) When a concurrent use registration is sought on the basis that a court of competent jurisdiction has finally determined that the parties are entitled to use the same or similar marks in commerce, a concurrent use registration proceeding will not be instituted if all of the following conditions are fulfilled:
              (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding; and
              (2) The court decree specifies the rights of the parties; and
              (3) A true copy of the court decree is submitted to the examining attorney; and
              (4) The concurrent use application complies fully and exactly with the court decree; and
              (5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted by the Director in accordance with the court decree.
              If any of the conditions specified in this paragraph is not satisfied, a concurrent use registration proceeding shall be prepared and instituted as provided in paragraphs (a) through (e) of this section.
              (g) Registrations and applications to register on the Supplemental Register and registrations under the Act of 1920 are not subject to concurrent use registration proceedings. Applications under section 1(b) of the Act of 1946 are subject to concurrent use registration proceedings only after the applicant files an acceptable allegation of use under § 2.76 or § 2.88. Applications based solely on section 44 or section 66(a) of the Act are not subject to concurrent use registration proceedings.
              (h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.
              [48 FR 23135, May 23, 1983; 48 FR 27225, 27226, June 14, 1983, as amended at 54 FR 37596, Sept. 11, 1989; 72 FR 42258, Aug. 1, 2007; 73 FR 67772, Nov. 17, 2008; 81 FR 69971, Oct. 7, 2016]

            Opposition

              Authority:
              Secs. 2.101 to 2.106 also issued under secs. 13, 17, 60 Stat. 433, 434; 15 U.S.C. 1063, 1067.

              § 2.101
              Filing an opposition.
              (a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.
              (b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board. The opposition need not be verified, but must be signed by the opposer or the opposer's attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for oppositions filed through ESTTA under paragraph (b)(1) or (2) of this section.
              (1) An opposition to an application must be filed by the due date set forth in paragraph (c) of this section through ESTTA.

              (2) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an opposition against an application based on Section 1 or 44 of the Act may be filed in paper form. A paper opposition to an application based on Section 1 or 44 of the Act must be filed by the due date set forth in paragraph (c) of this section and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
              (3) An opposition to an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.
              (c) The opposition must be filed within thirty days after publication (§ 2.80) of the application being opposed or within an extension of time (§ 2.102) for filing an opposition. The opposition must be accompanied by the required fee for each party joined as opposer for each class in the application for which registration is opposed (see § 2.6).
              (d) An otherwise timely opposition cannot be filed via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay in full for each named party opposer to oppose the registration of a mark in each class specified in the opposition. A paper opposition that is not accompanied by the required fee sufficient to pay in full for each named party opposer for each class in the application for which registration is opposed may not be instituted. If time remains in the opposition period as originally set or as extended by the Board, the potential opposer may resubmit the opposition with the required fee.
              (e) The filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition, and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.
              [81 FR 69971, Oct. 7, 2016]

              § 2.102
              Extension of time for filing an opposition.
              (a) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file a request with the Trademark Trial and Appeal Board to extend the time for filing an opposition. The request need not be verified, but must be signed by the potential opposer or by the potential opposer's attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for electronically filed extension requests.
              (1) A request to extend the time for filing an opposition to an application must be filed through ESTTA by the opposition due date set forth in § 2.101(c). In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a request to extend the opposition period for an application based on Section 1 or 44 of the Act may be filed in paper form by the opposition due date set forth in § 2.101(c). A request to extend the opposition period for an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form.
              (2) A paper request to extend the opposition period for an application based on Section 1 or 44 of the Act must be filed by the due date set forth in § 2.101(c) and be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under paragraph (a)(1) of this section. Timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.
              (b) A request to extend the time for filing an opposition must identify the potential opposer with reasonable certainty. Any opposition filed during an extension of time must be in the name of the person to whom the extension was granted, except that an opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time.

              (c) The time for filing an opposition shall not be extended beyond 180 days from the date of publication. Any request to extend the time for filing an opposition must be filed before thirty days have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate. Requests to extend the time for filing an opposition must be filed as follows:
              (1) A person may file a first request for:
              (i) Either a thirty-day extension of time, which will be granted upon request; or
              (ii) A ninety-day extension of time, which will be granted only for good cause shown. A sixty-day extension is not available as a first extension of time to oppose.
              (2) If a person was granted an initial thirty-day extension of time, that person may file a request for an additional sixty-day extension of time, which will be granted only for good cause shown.
              (3) After receiving one or two extensions of time totaling ninety days, a person may file one final request for an extension of time for an additional sixty days. No other time period will be allowed for a final extension of the opposition period. The Board will grant this request only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances. No further extensions of time to file an opposition will be granted under any circumstances.
              (d) The filing date of a request to extend the time for filing an opposition is the date of electronic receipt in the Office of the request. In the rare instance that filing by paper is permitted under these rules, the filing date will be determined in accordance with §§ 2.195 through 2.198.
              (e) [Reserved]
              [68 FR 55765, Sept. 26, 2003, as amended at 73 FR 47685, Aug. 14, 2008; 74 FR 54909, Oct. 26, 2009; 81 FR 69972, Oct. 7, 2016]

              § 2.103
              [Reserved]

              § 2.104
              Contents of opposition.
              (a) The opposition must set forth a short and plain statement showing why the opposer believes he, she or it would be damaged by the registration of the opposed mark and state the grounds for opposition. ESTTA requires the opposer to select relevant grounds for opposition. The required accompanying statement supports and explains the grounds.
              (b) Oppositions to different applications owned by the same party may be joined in a consolidated opposition when appropriate, but the required fee must be included for each party joined as opposer for each class in which registration is opposed in each application against which the opposition is filed.
              (c) Oppositions to applications filed under Section 66(a) of the Act are limited to the goods, services and grounds set forth in the ESTTA cover sheet.
              [54 FR 34897, Aug. 22, 1989, as amended at 68 FR 55766, Sept. 26, 2003; 81 FR 69972, Oct. 7, 2016]

              § 2.105
              Notification to parties of opposition proceeding(s).
              (a) When an opposition in proper form (see §§ 2.101 and 2.104) has been filed with the correct fee(s), and the opposition has been determined to be timely and complete, the Trademark Trial and Appeal Board shall prepare a notice of institution, which shall identify the proceeding as an opposition, number of the proceeding, and the application(s) involved; and the notice shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a Web link or Web address to access the electronic proceeding record, constitutes service of the notice of opposition to the applicant.
              (b) The Board shall forward a copy of the notice to opposer, as follows:
              (1) If the opposition is transmitted by an attorney, or a written power of attorney is filed, the Board will send the notice to the attorney transmitting the opposition or to the attorney designated in the power of attorney, provided that the person is an “attorney” as defined in § 11.1 of this chapter, at the email or correspondence address for the attorney.

              (2) If opposer is not represented by an attorney in the opposition, but opposer has appointed a domestic representative, the Board will send the notice to the domestic representative, at the email or correspondence address of record for the domestic representative, unless opposer designates in writing another correspondence address.
              (3) If opposer is not represented by an attorney in the opposition, and no domestic representative has been appointed, the Board will send the notice directly to opposer at the email or correspondence address of record for opposer, unless opposer designates in writing another correspondence address.
              (c) The Board shall forward a copy of the notice to applicant, as follows:
              (1) If the opposed application contains a clear indication that the application is being prosecuted by an attorney, as defined in § 11.1 of this chapter, the Board shall send the notice described in this section to applicant's attorney at the email or correspondence address of record for the attorney.
              (2) If the opposed application is not being prosecuted by an attorney but a domestic representative has been appointed, the Board will send the notice described in this section to the domestic representative, at the email or correspondence address of record for the domestic representative, unless applicant designates in writing another correspondence address.
              (3) If the opposed application is not being prosecuted by an attorney, and no domestic representative has been appointed, the Board will send the notice described in this section directly to applicant, at the email or correspondence address of record for the applicant, unless applicant designates in writing another correspondence address.
              [81 FR 69972, Oct. 7, 2016]

              § 2.106
              Answer.
              (a) If no answer is filed within the time initially set, or as may later be reset by the Board, the opposition may be decided as in case of default. The failure to file a timely answer tolls all deadlines, including the discovery conference, until the issue of default is resolved.
              (b)(1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).
              (2) An answer shall state in short and plain terms the applicant's defenses to each claim asserted and shall admit or deny the averments upon which the opposer relies. If the applicant is without knowledge or information sufficient to form a belief as to the truth of an averment, applicant shall so state and this will have the effect of a denial. Denials may take any of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure. An answer may contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or affirmative defense. When pleading special matters, the Federal Rules of Civil Procedure shall be followed. A reply to an affirmative defense shall not be filed. When a defense attacks the validity of a registration pleaded in the opposition, paragraph (b)(3) of this section shall govern. A pleaded registration is a registration identified by number by the party in the position of plaintiff in an original notice of opposition or in any amendment thereto made under Rule 15 of the Federal Rules of Civil Procedure.
              (3)(i) A defense attacking the validity of any one or more of the registrations pleaded in the opposition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if the claim is the subject of another proceeding between the same parties or anyone in privity therewith; but the applicant must promptly inform the Board, in the context of the opposition proceeding, of the filing of the other proceeding.

              (ii) An attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.
              (iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated by the Board within which an answer to the counterclaim must be filed.
              (iv) The times for pleading, discovery, testimony, briefs or oral argument may be reset or extended when necessary, upon motion by a party, or as the Board may deem necessary, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.
              (c) The opposition may be withdrawn without prejudice before the answer is filed. After the answer is filed, the opposition may not be withdrawn without prejudice except with the written consent of the applicant or the applicant's attorney or other authorized representative.
              [30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6940, Jan. 22, 1981; 48 FR 23136, May 23, 1983; 54 FR 34897, Aug. 22, 1989; 81 FR 69973, Oct. 7, 2016]

              § 2.107
              Amendment of pleadings in an opposition proceeding.
              (a) Pleadings in an opposition proceeding against an application filed under section 1 or 44 of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, after the close of the time period for filing an opposition including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed, or to add a joint opposer.
              (b) Pleadings in an opposition proceeding against an application filed under section 66(a) of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, once filed, the opposition may not be amended to add grounds for opposition or goods or services beyond those identified in the notice of opposition, or to add a joint opposer. The grounds for opposition, the goods or services opposed, and the named opposers are limited to those identified in the ESTTA cover sheet regardless of what is contained in any attached statement.
              [81 FR 69973, Oct. 7, 2016]

            Cancellation

              Authority:
              Secs. 2.111 to 2.114 also issued under secs. 14, 17, 24, 60 Stat. 433, 434, 436; 15 U.S.C. 1064, 1067, 1092.

              § 2.111
              Filing petition for cancellation.
              (a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.
              (b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. The petition for cancellation need not be verified, but must be signed by the petitioner or the petitioner's attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c) are required for petitions submitted electronically via ESTTA. The petition for cancellation may be filed at any time in the case of registrations on the Supplemental Register or under the Act of 1920, or registrations under the Act of 1881 or the Act of 1905 which have not been published under section 12(c) of the Act, or on any ground specified in section 14(3) or (5) of the Act. In all other cases, the petition for cancellation and the required fee must be filed within five years from the date of registration of the mark under the Act or from the date of publication under section 12(c) of the Act.
              (c)(1) A petition to cancel a registration must be filed through ESTTA.

              (2)(i) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. A paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (c). Timeliness of the paper submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198.
              (ii) For a petition to cancel a registration on the fifth year anniversary of the date of registration of the mark, a petitioner for cancellation who meets the requirements of § 2.147(b) may submit a petition to the Director to accept a timely filed paper petition to cancel.
              (d) The petition for cancellation must be accompanied by the required fee for each party joined as petitioner for each class in the registration(s) for which cancellation is sought (see § 2.6). A petition cannot be filed via ESTTA unless the petition is accompanied by a fee that is sufficient to pay in full for each named petitioner to seek cancellation of the registration(s) in each class specified in the petition. A petition filed in paper form that is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought may not be instituted.
              (e) The filing date of a petition for cancellation is the date of electronic receipt in the Office of the petition and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date of a petition for cancellation will be determined in accordance with §§ 2.195 through 2.198.
              [81 FR 69973, Oct. 7, 2016, as amended at 84 FR 37095, July 31, 2019]

              § 2.112
              Contents of petition for cancellation.
              (a) The petition for cancellation must set forth a short and plain statement showing why the petitioner believes he, she or it is or will be damaged by the registration, state the ground for cancellation, and indicate, to the best of petitioner's knowledge, the name and address, and a current email address(es), of the current owner of the registration. ESTTA requires the petitioner to select relevant grounds for petition to cancel. The required accompanying statement supports and explains the grounds.
              (b) When appropriate, petitions for cancellation of different registrations owned by the same party may be joined in a consolidated petition for cancellation. The required fee must be included for each party joined as a petitioner for each class sought to be cancelled in each registration against which the petition for cancellation has been filed.
              [81 FR 69974, Oct. 7, 2016]

              § 2.113
              Notification of cancellation proceeding.
              (a) When a petition for cancellation in proper form (see §§ 2.111 and 2.112) has been filed and the correct fee has been submitted, the Trademark Trial and Appeal Board shall prepare a notice of institution which shall identify the proceeding as a cancellation, number of the proceeding and the registration(s) involved; and shall designate a time, not less than thirty days from the mailing date of the notice, within which an answer must be filed. The notice, which will include a Web link or Web address to access the electronic proceeding record, constitutes service to the registrant of the petition to cancel.
              (b) The Board shall forward a copy of the notice to petitioner, as follows:
              (1) If the petition for cancellation is transmitted by an attorney, or a written power of attorney is filed, the Board will send the notice to the attorney transmitting the petition for cancellation or to the attorney designated in the power of attorney, provided that person is an “attorney” as defined in § 11.1 of this chapter, to the attorney's email or correspondence address of record for the attorney.
              (2) If petitioner is not represented by an attorney in the cancellation proceeding, but petitioner has appointed a domestic representative, the Board will send the notice to the domestic representative, at the email or correspondence address of record for the domestic representative, unless petitioner designates in writing another correspondence address.
              (3) If petitioner is not represented by an attorney in the cancellation proceeding, and no domestic representative has been appointed, the Board will send the notice directly to petitioner, at the email or correspondence address of record for petitioner, unless petitioner designates in writing another correspondence address.

              (c)(1) The Board shall forward a copy of the notice to the party shown by the records of the Office to be the current owner of the registration(s) sought to be cancelled at the email or address of record for the current owner, except that the Board, in its discretion, may join or substitute as respondent a party who makes a showing of a current ownership interest in such registration(s).
              (2) If the respondent has appointed a domestic representative, and such appointment is reflected in the Office's records, the Board will send the notice only to the domestic representative at the email or correspondence address of record for the domestic representative.
              (d) When the party alleged by the petitioner, pursuant to § 2.112(a), as the current owner of the registration(s) is not the record owner, a courtesy copy of the notice with a Web link or Web address to access the electronic proceeding record shall be forwarded to the alleged current owner. The alleged current owner may file a motion to be joined or substituted as respondent.
              [81 FR 69974, Oct. 7, 2016]

              § 2.114
              Answer.
              (a) If no answer is filed within the time initially set, or as may later be reset by the Board, the petition may be decided as in case of default. The failure to file a timely answer tolls all deadlines, including the discovery conference, until the issue of default is resolved.
              (b)(1) An answer must be filed through ESTTA. In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, an answer may be filed in paper form. An answer filed in paper form must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (b).
              (2) An answer shall state in short and plain terms the respondent's defenses to each claim asserted and shall admit or deny the averments upon which the petitioner relies. If the respondent is without knowledge or information sufficient to form a belief as to the truth of an averment, respondent shall so state and this will have the effect of a denial. Denials may take any of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure. An answer may contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or affirmative defense. When pleading special matters, the Federal Rules of Civil Procedure shall be followed. A reply to an affirmative defense shall not be filed. When a defense attacks the validity of a registration pleaded in the petition, paragraph (b)(3) of this section shall govern. A pleaded registration is a registration identified by number by the party in position of plaintiff in an original petition for cancellation, or a counterclaim petition for cancellation, or in any amendment thereto made under Rule 15 of the Federal Rules of Civil Procedure.
              (3)(i) A defense attacking the validity of any one or more of the registrations pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed. If grounds for a counterclaim are known to respondent when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the cancellation proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned. A counterclaim need not be filed if the claim is the subject of another proceeding between the same parties or anyone in privity therewith; but the party in position of respondent and counterclaim plaintiff must promptly inform the Board, in the context of the primary cancellation proceeding, of the filing of the other proceeding.
              (ii) An attack on the validity of a registration pleaded by a petitioner for cancellation will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.

              (iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims. A time, not less than thirty days, will be designated by the Board within which an answer to the counterclaim must be filed. Such response period may be reset as necessary by the Board, for a time period to be determined by the Board.

              (iv) The times for pleading, discovery, testimony, briefs, or oral argument may be reset or extended when necessary, upon motion by a party, or as the Board may deem necessary, to enable a party fully to present or meet a counterclaim or separate petition for cancellation of a registration.
              (c) The petition for cancellation or counterclaim petition for cancellation may be withdrawn without prejudice before the answer is filed. After the answer is filed, such petition or counterclaim petition may not be withdrawn without prejudice except with the written consent of the registrant or the registrant's attorney or other authorized representative.
              [81 FR 69974, Oct. 7, 2016]

              § 2.115
              Amendment of pleadings in a cancellation proceeding.
              Pleadings in a cancellation proceeding may be amended in the same manner and to the same extent as in a civil action in a United States district court.
              [48 FR 23136, May 23, 1983]

            Procedure in Inter Partes Proceedings

              Authority:
              Secs. 2.116 to 2.136 also issued under sec. 17, 60 Stat. 434; 15 U.S.C. 1067.

              § 2.116
              Federal Rules of Civil Procedure.

              (a) Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.
              (b) The opposer in an opposition proceeding or the petitioner in a cancellation proceeding shall be in the position of plaintiff, and the applicant in an opposition proceeding or the respondent in a cancellation proceeding shall be in the position of defendant. A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.
              (c) The notice of opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.
              (d) The assignment of testimony periods corresponds to setting a case for trial in court proceedings.
              (e) The submission of notices of reliance, declarations and affidavits, as well as the taking of depositions, during the assigned testimony periods correspond to the trial in court proceedings.
              (f) Oral hearing, if requested, of arguments on the record and merits corresponds to oral summation in court proceedings.
              (g) The Trademark Trial and Appeal Board's standard protective order is automatically imposed in all inter partes proceedings unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office's Web site. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board's standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board. The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.
              [30 FR 13193, Oct. 16, 1965. Redesignated and amended at 37 FR 7606, Apr. 18, 1972; 48 FR 23136, May 23, 1983; 72 FR 42259, Aug. 1, 2007; 81 FR 69975, Oct. 7, 2016]

              § 2.117
              Suspension of proceedings.
              (a) Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil action or another Board proceeding which may have a bearing on the case, proceedings before the Board may be suspended until termination of the civil action or the other Board proceeding.

              (b) Whenever there is pending before the Board both a motion to suspend and a motion which is potentially dispositive of the case, the potentially dispositive motion may be decided before the question of suspension is considered regardless of the order in which the motions were filed.
              (c) Proceedings may also be suspended sua sponte by the Board, or, for good cause, upon motion or a stipulation of the parties approved by the Board. Many consented or stipulated motions to suspend are suitable for automatic approval by ESTTA, but the Board retains discretion to condition approval on the party or parties providing necessary information about the status of settlement talks, discovery activities, or trial activities, as may be appropriate.
              [48 FR 23136, May 23, 1983, as amended at 63 FR 48097, Sept. 9, 1998; 81 FR 69975, Oct. 7, 2016]

              § 2.118
              Undelivered Office notices.
              When a notice sent by the Office to any registrant or applicant is returned to the Office undelivered, including notification to the Office of non-delivery in paper or electronic form, additional notice may be given by publication in the Official Gazette.
              [81 FR 69975, Oct. 7, 2016]

              § 2.119
              Service and signing.
              (a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, including notices of appeal to the courts, must be served upon the other party or parties. Proof of such service must be made before the submission will be considered by the Office. A statement signed by the attorney or other authorized representative, attached to or appearing on the original submission when filed, clearly stating the date and manner in which service was made will be accepted as prima facie proof of service.
              (b) Service of submissions filed with the Board and any other papers served on a party not required to be filed with the Board, must be on the attorney or other authorized representative of the party if there be such or on the party if there is no attorney or other authorized representative, and must be made by email, unless otherwise stipulated, or if the serving party can show by written explanation accompanying the submission or paper, or in a subsequent amended certificate of service, that service by email was attempted but could not be made due to technical problems or extraordinary circumstances, then service may be made in any of the following ways:
              (1) By delivering a copy of the submission or paper to the person served;
              (2) By leaving a copy at the usual place of business of the person served, with someone in the person's employment;
              (3) When the person served has no usual place of business, by leaving a copy at the person's residence, with some person of suitable age and discretion who resides there;
              (4) Transmission by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service or by first-class mail, which may also be certified or registered;
              (5) Transmission by overnight courier; or
              (6) Other forms of electronic transmission.
              (c) When service is made by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service.

              (d) If a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, none of the parties to the proceeding is eligible to use the service option under paragraph (b)(4) of this section. The party not domiciled in the United States may designate by submission filed in the Office the name and address of a person residing in the United States on whom may be served notices or process in the proceeding. If the party has appointed a domestic representative, official communications of the Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under § 11.14(c) of this chapter. If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under § 11.14(a) of this chapter, or qualified under § 11.14(b) of this chapter and authorized under § 2.17(f).
              (e) Every submission filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party's attorney or other authorized representative, but an unsigned submission will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the notification of this defect by the Office.
              [81 FR 69975, Oct. 7, 2016]

              § 2.120
              Discovery.
              (a) In general. (1) Except as otherwise provided in this section, and wherever appropriate, the provisions of the Federal Rules of Civil Procedure relating to disclosure and discovery shall apply in opposition, cancellation, interference and concurrent use registration proceedings. The provisions of Rule 26 of the Federal Rules of Civil Procedure relating to required disclosures, the conference of the parties to discuss settlement and to develop a disclosure and discovery plan, the scope, proportionality, timing and sequence of discovery, protective orders, signing of disclosures and discovery responses, and supplementation of disclosures and discovery responses, are applicable to Board proceedings in modified form, as noted in these rules and as may be detailed in any order instituting an inter partes proceeding or subsequent scheduling order. The Board will specify the deadline for a discovery conference, the opening and closing dates for the taking of discovery, and the deadlines within the discovery period for making initial disclosures and expert disclosure. The trial order setting these deadlines and dates will be included within the notice of institution of the proceeding.
              (2)(i) The discovery conference shall occur no later than the opening of the discovery period, and the parties must discuss the subjects set forth in Rule 26(f) of the Federal Rules of Civil Procedure and any subjects set forth in the Board's institution order. A Board Interlocutory Attorney or Administrative Trademark Judge will participate in the conference upon request of any party made after answer but no later than ten days prior to the deadline for the conference, or when the Board deems it useful for the parties to have Board involvement. The participating attorney or judge may expand or reduce the number or nature of subjects to be discussed in the conference as may be deemed appropriate. The discovery period will be set for a period of 180 days.
              (ii) Initial disclosures must be made no later than thirty days after the opening of the discovery period.
              (iii) Disclosure of expert testimony must occur in the manner and sequence provided in Rule 26(a)(2) of the Federal Rules of Civil Procedure, unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates. If the expert is retained after the deadline for disclosure of expert testimony, the party must promptly file a motion for leave to use expert testimony. Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board, either on its own initiative or on notice from either party of the disclosure of expert testimony, may issue an order regarding expert discovery and/or set a deadline for any other party to disclose plans to use a rebuttal expert.

              (iv) The parties may stipulate to a shortening of the discovery period, that there will be no discovery, that the number of discovery requests or depositions be limited, or that reciprocal disclosures be used in place of discovery. Limited extensions of the discovery period may be granted upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the discovery period may remain as originally set or as reset. Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board, but the expert disclosure deadline must always be scheduled prior to the close of discovery. If a stipulation or motion for modification is denied, discovery disclosure deadlines may remain as originally set or reset and obligations may remain unaltered.
              (v) The parties are not required to prepare or transmit to the Board a written report outlining their discovery conference discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a report by a participating Board Interlocutory Attorney or Administrative Trademark Judge.
              (3) A party must make its initial disclosures prior to seeking discovery, absent modification of this requirement by a stipulation of the parties approved by the Board, or a motion granted by the Board, or by order of the Board. Discovery depositions must be properly noticed and taken during the discovery period. Interrogatories, requests for production of documents and things, and requests for admission must be served early enough in the discovery period, as originally set or as may have been reset by the Board, so that responses will be due no later than the close of discovery. Responses to interrogatories, requests for production of documents and things, and requests for admission must be served within thirty days from the date of service of such discovery requests. The time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery. The resetting of a party's time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.
              (b) Discovery deposition within the United States. The deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree in writing. The responsibility rests wholly with the party taking discovery to secure the attendance of a proposed deponent other than a party or anyone who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure. (See 35 U.S.C. 24.)
              (c) Discovery deposition in foreign countries; or of foreign party within jurisdiction of the United States. (1) The discovery deposition of a natural person residing in a foreign country who is a party or who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in a foreign country, be taken in the manner prescribed by § 2.124 unless the Trademark Trial and Appeal Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.

              (2) Whenever a foreign party is or will be, during a time set for discovery, present within the United States or any territory which is under the control and jurisdiction of the United States, such party may be deposed by oral examination upon notice by the party seeking discovery. Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by oral examination upon notice by the party seeking discovery. The party seeking discovery may have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is regularly employed in a Federal judicial district, where the witness is at the time of the deposition. This paragraph (c)(2) does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section.
              (d) Interrogatories. The total number of written interrogatories which a party may serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional interrogatories upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional interrogatories must be filed and granted prior to the service of the proposed additional interrogatories and must be accompanied by a copy of the interrogatories, if any, which have already been served by the moving party, and by a copy of the interrogatories proposed to be served. If a party upon which interrogatories have been served believes that the number of interrogatories exceeds the limitation specified in this paragraph (d), and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number. If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of the interrogatories which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (f) of this section.
              (e) Requests for production. The total number of requests for production which a party may serve upon another party pursuant to Rule 34 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional requests upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional requests must be filed and granted prior to the service of the proposed additional requests and must be accompanied by a copy of the requests, if any, which have already been served by the moving party, and by a copy of the requests proposed to be served. If a party upon which requests have been served believes that the number of requests exceeds the limitation specified in this paragraph, and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving responses and specific objections to the requests, serve a general objection on the ground of their excessive number. If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of the requests which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (f) of this section. The time, place, and manner for production of documents, electronically stored information, and tangible things shall comport with the provisions of Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to agreement of the parties, or where and in the manner which the Trademark Trial and Appeal Board, upon motion, orders.
              (f) Motion for an order to compel disclosure or discovery.(1) If a party fails to make required initial disclosures or expert testimony disclosure, or fails to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, or if a party, or such designated person, or an officer, director or managing agent of a party fails to attend a deposition or fails to answer any question propounded in a discovery deposition, or any interrogatory, or fails to produce and permit the inspection and copying of any document, electronically stored information, or tangible thing, the party entitled to disclosure or seeking discovery may file a motion to compel disclosure, a designation, or attendance at a deposition, or an answer, or production and an opportunity to inspect and copy. A motion to compel initial disclosures must be filed within thirty days after the deadline therefor and include a copy of the disclosure(s), if any, and a motion to compel an expert testimony disclosure must be filed prior to the close of the discovery period. A motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset. A motion to compel discovery shall include a copy of the request for designation of a witness or of the relevant portion of the discovery deposition; or a copy of the interrogatory with any answer or objection that was made; or a copy of the request for production, any proffer of production or objection to production in response to the request, and a list and brief description of the documents, electronically stored information, or tangible things that were not produced for inspection and copying. A motion to compel initial disclosures, expert testimony disclosure, or discovery must be supported by a showing from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion but the parties were unable to resolve their differences. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication.
              (2) When a party files a motion for an order to compel initial disclosures, expert testimony disclosure, or discovery, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion to compel is filed and served, no party should file any paper that is not germane to the motion, except as otherwise specified in the Board's suspension order. Nor may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board. The filing of a motion to compel any disclosure or discovery shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition. If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board.
              (g) Motion for a protective order. Upon motion by a party obligated to make initial disclosures or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders provided by clauses (A) through (H), inclusive, of Rule 26(c)(1) of the Federal Rules of Civil Procedure. If the motion for a protective order is denied in whole or in part, the Board may, on such conditions (other than an award of expenses to the party prevailing on the motion) as are just, order that any party comply with disclosure obligations or provide or permit discovery.
              (h) Sanctions. (1) If a party fails to participate in the required discovery conference, or if a party fails to comply with an order of the Trademark Trial and Appeal Board relating to disclosure or discovery, including a protective order, the Board may make any appropriate order, including those provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except that the Board will not hold any person in contempt or award expenses to any party. The Board may impose against a party any of the sanctions provided in Rule 37(b)(2) in the event that said party or any attorney, agent, or designated witness of that party fails to comply with a protective order made pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. A motion for sanctions against a party for its failure to participate in the required discovery conference must be filed prior to the deadline for any party to make initial disclosures.

              (2) If a party fails to make required initial disclosures or expert testimony disclosure, and such party or the party's attorney or other authorized representative informs the party or parties entitled to receive disclosures that required disclosures will not be made, the Board may make any appropriate order, as specified in paragraph (h)(1) of this section. If a party, or an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or 31(a) of the Federal Rules of Civil Procedure to testify on behalf of a party, fails to attend the party's or person's discovery deposition, after being served with proper notice, or fails to provide any response to a set of interrogatories or to a set of requests for production of documents and things, and such party or the party's attorney or other authorized representative informs the party seeking discovery that no response will be made thereto, the Board may make any appropriate order, as specified in paragraph (h)(1) of this section.
              (i) Requests for admission. The total number of requests for admission which a party may serve upon another party pursuant to Rule 36 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the Trademark Trial and Appeal Board, in its discretion, may allow additional requests upon motion therefor showing good cause, or upon stipulation of the parties, approved by the Board. A motion for leave to serve additional requests must be filed and granted prior to the service of the proposed additional requests and must be accompanied by a copy of the requests, if any, which have already been served by the moving party, and by a copy of the requests proposed to be served. If a party upon which requests for admission have been served believes that the number of requests for admission exceeds the limitation specified in this paragraph, and is not willing to waive this basis for objection, the party shall, within the time for (and instead of) serving answers and specific objections to the requests for admission, serve a general objection on the ground of their excessive number. However, independent of this limit, a party may make one comprehensive request for admission of any adverse party that has produced documents for an admission authenticating specific documents, or specifying which of those documents cannot be authenticated.
              (1) Any motion by a party to determine the sufficiency of an answer or objection, including testing the sufficiency of a general objection on the ground of excessive number, to a request made by that party for an admission must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. The motion shall include a copy of the request for admission and any exhibits thereto and of the answer or objection. The motion must be supported by a written statement from the moving party showing that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion and has been unable to reach agreement. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication.
              (2) When a party files a motion to determine the sufficiency of an answer or objection to a request for an admission, the case will be suspended by the Board with respect to all matters not germane to the motion. After the motion is filed and served, no party should file any paper that is not germane to the motion, except as otherwise specified in the Board's suspension order. Nor may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board. The filing of a motion to determine the sufficiency of an answer or objection to a request for admission shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition. If discovery has closed, however, the parties need not make pretrial disclosures until directed to do so by the Board.
              (j) Telephone and pretrial conferences. (1) Whenever it appears to the Trademark Trial and Appeal Board that a stipulation or motion filed in an inter partes proceeding is of such nature that a telephone conference would be beneficial, the Board may, upon its own initiative or upon request made by one or both of the parties, schedule a telephone conference.
              (2) Whenever it appears to the Trademark Trial and Appeal Board that questions or issues arising during the interlocutory phase of an inter partes proceeding have become so complex that their resolution by correspondence or telephone conference is not practical and that resolution would likely be facilitated by a conference in person of the parties or their attorneys with an Administrative Trademark Judge or an Interlocutory Attorney of the Board, the Board may, upon its own initiative, direct that the parties and/or their attorneys meet with the Board for a disclosure, discovery or pretrial conference on such terms as the Board may order.
              (3) Parties may not make a recording of the conferences referenced in paragraphs (j)(1) and (2) of this section.
              (k) Use of discovery deposition, answer to interrogatory, admission or written disclosure. (1) The discovery deposition of a party or of anyone who at the time of taking the deposition was an officer, director or managing agent of a party, or a person designated by a party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.
              (2) Except as provided in paragraph (k)(1) of this section, the discovery deposition of a witness, whether or not a party, shall not be offered in evidence unless the person whose deposition was taken is, during the testimony period of the party offering the deposition, dead; or out of the United States (unless it appears that the absence of the witness was procured by the party offering the deposition); or unable to testify because of age, illness, infirmity, or imprisonment; or cannot be served with a subpoena to compel attendance at a testimonial deposition; or there is a stipulation by the parties; or upon a showing that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used. The use of a discovery deposition by any party under this paragraph will be allowed only by stipulation of the parties approved by the Trademark Trial and Appeal Board, or by order of the Board on motion, which shall be filed when the party makes its pretrial disclosures, unless the motion is based upon a claim that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used, even though such deadline has passed, in which case the motion shall be filed promptly after the circumstances claimed to justify use of the deposition became known.
              (3)(i) A discovery deposition, an answer to an interrogatory, an admission to a request for admission, or a written initial disclosure, which may be offered in evidence under the provisions of paragraph (k) of this section, may be made of record in the case by filing the deposition or any part thereof with any exhibit to the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part of the answer, or a copy of the request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto), or a copy of the written initial disclosure, together with a notice of reliance in accordance with § 2.122(g). The notice of reliance and the material submitted thereunder should be filed during the testimony period of the party that files the notice of reliance. An objection made at a discovery deposition by a party answering a question subject to the objection will be considered at final hearing.
              (ii) A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e), or the party has obtained an admission or stipulation from the producing party that authenticates the documents.

              (4) If only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. A notice of reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse party's notice, failing which the Board, in its discretion, may refuse to consider the additional parts.
              (5) Written disclosures, an answer to an interrogatory, or an admission to a request for admission, may be submitted and made part of the record only by the receiving or inquiring party except that, if fewer than all of the written disclosures, answers to interrogatories, or fewer than all of the admissions, are offered in evidence by the receiving or inquiring party, the disclosing or responding party may introduce under a notice of reliance any other written disclosures, answers to interrogatories, or any other admissions, which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party. The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party's notice, and absent such statement, the Board, in its discretion, may refuse to consider the additional written disclosures or responses.
              (6) Paragraph (k) of this section will not be interpreted to preclude reading or use of written disclosures or documents, a discovery deposition, or answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.
              (7) When a written disclosure, a discovery deposition, or a part thereof, or an answer to an interrogatory, or an admission, or an authenticated produced document has been made of record by one party in accordance with the provisions of paragraph (k)(3) of this section, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
              (8) Written disclosures or disclosed documents, requests for discovery, responses thereto, and materials or depositions obtained through the disclosure or discovery process should not be filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party's testimony period.
              [81 FR 69976, Oct. 7, 2016, as amended at 82 FR 33805, July 21, 2017]

              § 2.121
              Assignment of times for taking testimony and presenting evidence.
              (a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party's required pretrial disclosures and assigning to each party its time for taking testimony and presenting evidence (“testimony period”). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. The deadlines for pretrial disclosures and the testimony periods may be rescheduled by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. If a motion to reschedule any pretrial disclosure deadline and/or testimony period is denied, the pretrial disclosure deadline or testimony period and any subsequent remaining periods may remain as set. The resetting of the closing date for discovery will result in the rescheduling of pretrial disclosure deadlines and testimony periods without action by any party. The resetting of a party's testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party.
              (b)(1) The Trademark Trial and Appeal Board will schedule a testimony period for the plaintiff to present its case in chief, a testimony period for the defendant to present its case and to meet the case of the plaintiff, and a testimony period for the plaintiff to present evidence in rebuttal.

              (2) When there is a counterclaim, or when proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Board will schedule testimony periods so that each party in the position of plaintiff will have a period for presenting its case in chief against each party in the position of defendant, each party in the position of defendant will have a period for presenting its case and meeting the case of each plaintiff, and each party in the position of plaintiff will have a period for presenting evidence in rebuttal.
              (c) A testimony period which is solely for rebuttal will be set for fifteen days. All other testimony periods will be set for thirty days. The periods may be shortened or extended by stipulation of the parties approved by the Trademark Trial and Appeal Board, or may be extended upon motion granted by the Board, or by order of the Board. If a motion for an extension is denied, the testimony periods and their associated pretrial disclosure deadlines may remain as set.
              (d) When parties stipulate to the rescheduling of a deadline for pretrial disclosures and subsequent testimony periods or to the rescheduling of the closing date for discovery and the rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be submitted to the Board through ESTTA, with the relevant dates set forth and an express statement that all parties agree to the new dates.
              (e) A party need not disclose, prior to its testimony period, any notices of reliance it intends to file during its testimony period. However, no later than fifteen days prior to the opening of each testimony period, or on such alternate schedule as may be provided by order of the Board, the party scheduled to present evidence must disclose the name and, if not previously provided, the telephone number and address of each witness from whom it intends to take testimony, or may take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness. The testimony of a witness may be taken upon oral examination and transcribed, or presented in the form of an affidavit or declaration, as provided in § 2.123. Pretrial disclosure of a witness under this paragraph (e) does not substitute for issuance of a proper notice of examination under § 2.123(c) or § 2.124(b). If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure. When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. A party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. When testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike, as provided in §§ 2.123 and 2.124.
              [48 FR 23138, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 54 FR 34899, Aug. 22, 1989; 63 FR 48099, Sept. 9, 1998; 68 FR 55767, Sept. 26, 2003; 72 FR 42262, Aug. 1, 2007; 81 FR 69979, Oct. 7, 2016]

              § 2.122
              Matters in evidence.
              (a) Applicable rules. Unless the parties otherwise stipulate, the rules of evidence for proceedings before the Trademark Trial and Appeal Board are the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this part. When evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence.
              (b) Application and registration files. (1) The file of each application or registration specified in a notice of interference, of each application or registration specified in the notice of a concurrent use registration proceeding, of the application against which a notice of opposition is filed, or of each registration against which a petition or counterclaim for cancellation is filed forms part of the record of the proceeding without any action by the parties and reference may be made to the file for any relevant and competent purpose in accordance with paragraph (b)(2) of this section.
              (2) The allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be established by competent evidence. Specimens in the file of an application for registration, or in the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced in evidence as exhibits during the period for the taking of testimony. Statements made in an affidavit or declaration in the file of an application for registration, or in the file of a registration, are not testimony on behalf of the applicant or registrant. Establishing the truth of these or any other matters asserted in the files of these applications and registrations shall be governed by the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this part.
              (c) Exhibits to pleadings. Except as provided in paragraph (d)(1) of this section, an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached, and must be identified and introduced in evidence as an exhibit during the period for the taking of testimony.
              (d) Registrations. (1) A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing the current status and title of the registration. For the cost of a copy of a registration showing status and title, see § 2.6(b)(4).
              (2) A registration owned by any party to a proceeding may be made of record in the proceeding by that party by appropriate identification and introduction during the taking of testimony or by filing a notice of reliance in accordance with paragraph (g) of this section, which shall be accompanied by a copy (original or photocopy) of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing the current status and title of the registration. The notice of reliance shall be filed during the testimony period of the party that files the notice.
              (e) Printed publications and official records. (1) Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation among members of the public or that segment of the public which is relevant in a particular proceeding, and official records, if the publication or official record is competent evidence and relevant to an issue, may be introduced in evidence by filing a notice of reliance on the material being offered in accordance with paragraph (g) of this section. The notice of reliance shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed publication or a copy of the relevant portion thereof. A copy of an official record of the Office need not be certified to be offered in evidence.

              (2) Internet materials may be admitted into evidence under a notice of reliance in accordance with paragraph (g) of this section, in the same manner as a printed publication in general circulation, so long as the date the internet materials were accessed and their source (e.g., URL) are provided.
              (f) Testimony from other proceedings. By order of the Trademark Trial and Appeal Board, on motion, testimony taken in another proceeding, or testimony taken in a suit or action in a court, between the same parties or those in privity may be used in a proceeding, so far as relevant and material, subject, however, to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony.
              (g) Notices of reliance. The types of evidence admissible by notice of reliance are identified in paragraphs (d)(2) and (e)(1) and (2) of this section and § 2.120(k). A notice of reliance shall be filed during the testimony period of the party that files the notice. For all evidence offered by notice of reliance, the notice must indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. Failure to identify the relevance of the evidence, or associate it with issues in the proceeding, with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order.
              [48 FR 23138, May 23, 1983, as amended at 54 FR 34899, Aug. 22, 1989; 54 FR 38041, Sept. 14, 1989; 63 FR 48099, Sept. 9, 1998; 72 FR 42262, Aug. 1, 2007; 81 FR 69980, Oct. 7, 2016]

              § 2.123
              Trial testimony in inter partes cases.
              (a)(1) The testimony of witnesses in inter partes cases may be submitted in the form of an affidavit or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, filed during the proffering party's testimony period, subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such witness is within the jurisdiction of the United States, or conduct cross-examination by written questions as provided in § 2.124 if such witness is outside the jurisdiction of the United States, and the offering party must make that witness available; or taken by deposition upon oral examination as provided by this section; or by deposition upon written questions as provided by § 2.124.
              (2) Testimony taken in a foreign country shall be taken: by deposition upon written questions as provided by § 2.124, unless the Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate; or by affidavit or declaration, subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness. If a party serves notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present within the United States or any territory which is under the control and jurisdiction of the United States, any adverse party may, within twenty days from the date of service of the notice, file a motion with the Trademark Trial and Appeal Board, for good cause, for an order that the deposition be taken by oral examination.
              (b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. The parties may stipulate in writing what a particular witness would testify to if called; or any relevant facts in the case may be stipulated in writing.
              (c) Notice of examination of witnesses. Before the oral depositions of witnesses shall be taken by a party, due notice in writing shall be given to the adverse party or parties, as provided in § 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined. Depositions may be noticed for any reasonable time and place in the United States. A deposition may not be noticed for a place in a foreign country except as provided in paragraph (a)(2) of this section. No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. When a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election. Upon motion for good cause by any party, or upon its own initiative, the Board may extend the periods for electing and taking oral cross-examination. When such election has been made but cannot be completed within that testimony period, the Board, after the close of that testimony period, shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the oral cross-examination(s).
              (d) Persons before whom depositions may be taken. Depositions may be taken before persons designated by Rule 28 of the Federal Rules of Civil Procedure.
              (e) Examination of witnesses. (1) Each witness before providing oral testimony shall be duly sworn according to law by the officer before whom the deposition is to be taken. Where oral depositions are taken, every adverse party shall have a full opportunity to cross-examine each witness. When testimony is proffered by affidavit or declaration, every adverse party will have the right to elect oral cross-examination of any witness within the jurisdiction of the United States. For examination of witnesses outside the jurisdiction of the United States, see § 2.124.
              (2) The deposition shall be taken in answer to questions, with the questions and answers recorded in their regular order by the officer, or by some other person (who shall be subject to the provisions of Rule 28 of the Federal Rules of Civil Procedure) in the presence of the officer except when the officer's presence is waived on the record by agreement of the parties. The testimony shall be recorded and transcribed, unless the parties present agree otherwise. Exhibits which are marked and identified at the deposition will be deemed to have been offered into evidence, without any formal offer thereof, unless the intention of the party marking the exhibits is clearly expressed to the contrary.
              (3) If pretrial disclosures or the notice of examination of witnesses served pursuant to paragraph (c) of this section are improper or inadequate with respect to any witness, an adverse party may cross-examine that witness under protest while reserving the right to object to the receipt of the testimony in evidence. Promptly after the testimony is completed, the adverse party, to preserve the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.
              (i) A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not adequately disclosed in accordance with § 2.121(e).
              (ii) A motion to strike the testimony of a witness for lack of proper or adequate notice of examination must request the exclusion of the entire testimony of that witness and not only a part of that testimony.
              (4) All objections made at the time of an oral examination to the qualifications of the officer taking the deposition, or to the manner of taking it, or to the evidence presented, or to the conduct of any party, and any other objection to the proceedings, shall be noted by the officer upon the deposition. Evidence objected to shall be taken subject to the objections.
              (5) When the oral deposition has been transcribed, the deposition transcript shall be carefully read over by the witness or by the officer to the witness, and shall then be signed by the witness in the presence of any officer authorized to administer oaths unless the reading and the signature be waived on the record by agreement of all parties.
              (f) Certification and filing of deposition. (1) The officer shall annex to the deposition his or her certificate showing:

              (i) Due administration of the oath by the officer to the witness before the commencement of his or her deposition;
              (ii) The name of the person by whom the deposition was taken down, and whether, if not taken down by the officer, it was taken down in his or her presence;
              (iii) The presence or absence of the adverse party;
              (iv) The place, day, and hour of commencing and taking the deposition;
              (v) The fact that the officer was not disqualified as specified in Rule 28 of the Federal Rules of Civil Procedure.
              (2) If any of the foregoing requirements in paragraph (f)(1) of this section are waived, the certificate shall so state. The officer shall sign the certificate and affix thereto his or her seal of office, if he or she has such a seal. The party taking the deposition, or its attorney or other authorized representative, shall then promptly file the transcript and exhibits in electronic form using ESTTA. If the nature of an exhibit precludes electronic transmission via ESTTA, it shall be submitted by mail by the party taking the deposition, or its attorney or other authorized representative.
              (g) Form of deposition. (1) The pages of each deposition must be numbered consecutively, and the name of the witness plainly and conspicuously written at the top of each page. A deposition must be in written form. The questions propounded to each witness must be consecutively numbered unless the pages have numbered lines. Each question must be followed by its answer. The deposition transcript must be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet).
              (2) Exhibits must be numbered or lettered consecutively and each must be marked with the number and title of the case and the name of the party offering the exhibit. Entry and consideration may be refused to improperly marked exhibits.
              (3) Each deposition must contain a word index and an index of the names of the witnesses, giving the pages where the words appear in the deposition and where witness examination and cross-examination begin, and an index of the exhibits, briefly describing their nature and giving the pages at which they are introduced and offered in evidence.
              (h) Depositions must be filed. All depositions which are taken must be duly filed in the Office. On refusal to file, the Office at its discretion will not further hear or consider the contestant with whom the refusal lies; and the Office may, at its discretion, receive and consider a copy of the withheld deposition, attested by such evidence as is procurable.
              (i) Effect of errors and irregularities in depositions. Rule 32(d)(1), (2), and (3)(A) and (B) of the Federal Rules of Civil Procedure shall apply to errors and irregularities in depositions. Notice will not be taken of merely formal or technical objections which shall not appear to have wrought a substantial injury to the party raising them; and in case of such injury it must be made to appear that the objection was raised at the time specified in said rule.
              (j) Objections to admissibility. Subject to the provisions of paragraph (i) of this section, objection may be made to receiving in evidence any declaration, affidavit, or deposition, or part thereof, or any other evidence, for any reason which would require the exclusion of the evidence from consideration. Objections to the competency of a witness or to the competency, relevancy, or materiality of testimony must be raised at the time specified in Rule 32(d)(3)(A) of the Federal Rules of Civil Procedure. Such objections may not be considered until final hearing.
              (k) Evidence not considered. Evidence not obtained and filed in compliance with these sections will not be considered.
              [37 FR 7607, Apr. 18, 1972, as amended at 41 FR 760, Jan. 5, 1976; 48 FR 23139, May 23, 1983; 54 FR 34899, Aug. 22, 1989; 54 FR 38041, Sept. 14, 1989; 63 FR 48099, Sept. 9, 1998; 68 FR 14337, Mar. 25, 2003; 68 FR 48289, Aug. 13, 2003; 68 FR 55767, Sept. 26, 2003; 72 FR 42262, Aug. 1, 2007; 81 FR 69981, Oct. 7, 2016; 81 FR 89383, Dec. 12, 2016]

              § 2.124
              Depositions upon written questions.

              (a) A deposition upon written questions may be taken before any person before whom depositions may be taken as provided by Rule 28 of the Federal Rules of Civil Procedure.

              (b)(1) A party desiring to take a testimonial deposition upon written questions shall serve notice thereof upon each adverse party within ten days from the opening date of the testimony period of the party who serves the notice. The notice shall state the name and address of the witness. A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board.
              (2) A party desiring to take a discovery deposition upon written questions shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board. The notice shall state the name and address, if known, of the person whose deposition is to be taken. If the name of the person is not known, a general description sufficient to identify the witness or the particular class or group to which he or she belongs shall be stated in the notice, and the party from whom the discovery deposition is to be taken shall designate one or more persons to be deposed in the same manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil Procedure.
              (3) A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration shall serve notice thereof upon each adverse party and shall file a copy of the notice, but not copies of the questions, with the Board.
              (c) Every notice given under the provisions of paragraph (b) of this section shall be accompanied by the name or descriptive title of the officer before whom the deposition is to be taken.
              (d)(1) Every notice served on any adverse party under the provisions of paragraphs (b)(1) and (2) of this section, for the taking of direct examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the deposition. Every notice served on any adverse party under the provisions of paragraph (b)(3) of this section, for the taking of cross-examination, shall be accompanied by the written questions to be propounded on behalf of the party who proposes to take the cross-examination. Within twenty days from the date of service of the notice of taking direct examination, or service of a testimony affidavit or declaration, any adverse party may serve cross questions upon the party who proposes to take the deposition. Any party who serves cross questions, whether in response to direct examination questions or under paragraph (b)(3) of this section, shall also serve every other adverse party. Within ten days from the date of service of the cross questions, the party who proposes to take the deposition, or who earlier offered testimony of the witness by affidavit or declaration, may serve redirect questions on every adverse party. Within ten days from the date of service of the redirect questions,any party who served cross questions may serve recross questions upon the party who proposes to take the deposition or who earlier offered testimony of the witness by affidavit or declaration; any party who serves recross questions shall also serve every other adverse party. Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other adverse party. In response to objections, substitute questions may be served on the objecting party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party.
              (2) Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial and Appeal Board may extend any of the time periods provided by paragraph (d)(1) of this section. Upon receipt of written notice that one or more testimonial depositions are to be taken upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other proceedings in the matter to allow for the orderly completion of the depositions upon written questions.
              (3) Service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).

              (e) Within ten days after the last date when questions, objections, or substitute questions may be served, the party who proposes to take the deposition shall mail a copy of the notice and copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party. The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question. The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition.
              (f) The party who took the deposition shall promptly serve a copy of the transcript, copies of documentary exhibits, and duplicates or photographs of physical exhibits on every adverse party. It is the responsibility of the party who takes the deposition to assure that the transcript is correct (see § 2.125(c)). If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(k). If the deposition is a testimonial deposition, the original, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be filed promptly with the Trademark Trial and Appeal Board.
              (g) Objections to questions and answers in depositions upon written questions may be considered at final hearing.
              [48 FR 23139, May 23, 1983, as amended at 81 FR 69982, Oct. 7, 2016; 81 FR 89383, Dec. 12, 2016]

              § 2.125
              Filing and service of testimony.
              (a) One copy of the declaration or affidavit prepared in accordance with § 2.123, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Trademark Trial and Appeal Board during the assigned testimony period.
              (b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123 or § 2.124, together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party within thirty days after completion of the taking of that testimony. If the transcript with exhibits is not served on each adverse party within thirty days or within an extension of time for the purpose, any adverse party which was not served may have remedy by way of a motion to the Trademark Trial and Appeal Board to reset such adverse party's testimony and/or briefing periods, as may be appropriate. If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or enter judgment as by default against the deposing party, or take any such other action as may be deemed appropriate.
              (c) The party who takes testimony is responsible for having all typographical errors in the transcript and all errors of arrangement, indexing and form of the transcript corrected, on notice to each adverse party, prior to the filing of one certified transcript with the Trademark Trial and Appeal Board. The party who takes testimony is responsible for serving on each adverse party one copy of the corrected transcript or, if reasonably feasible, corrected pages to be inserted into the transcript previously served.
              (d) One certified transcript and exhibits shall be filed with the Trademark Trial and Appeal Board. Notice of such filing shall be served on each adverse party and a copy of each notice shall be filed with the Board.
              (e) Each transcript shall comply with § 2.123(g) with respect to arrangement, indexing and form.
              (f) Upon motion by any party, for good cause, the Trademark Trial and Appeal Board may order that any part of an affidavit or declaration or a deposition transcript or any exhibits that directly disclose any trade secret or other confidential research, development, or commercial information may be filed under seal and kept confidential under the provisions of § 2.27(e). If any party or any attorney or agent of a party fails to comply with an order made under this paragraph, the Board may impose any of the sanctions authorized by § 2.120(h).
              [81 FR 69983, Oct. 7, 2016]

              § 2.126
              Form of submissions to the Trademark Trial and Appeal Board.

              (a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA.

              (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced.
              (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible.

              (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper form, except the extensions of time to file a notice of opposition, the notice of opposition, the petition to cancel, or answers thereto (see §§ 2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), must include a written explanation of such technical problems or extraordinary circumstances. Paper submissions that do not meet the showing required under this paragraph (b) will not be considered. A paper submission, including exhibits and depositions, must meet the following requirements:
              (1) A paper submission must be printed in at least 11-point type and double-spaced, with text on one side only of each sheet;
              (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
              (3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
              (4) A paper submission must not be stapled or bound;
              (5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
              (6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
              (c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(f) must be submitted using the “Confidential” selection available in ESTTA or, where appropriate, under a separate paper cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission for public viewing with the confidential portions redacted must be submitted concurrently.
              [81 FR 69983, Oct. 7, 2016, as amended at 81 FR 89383, Dec. 12, 2016]

              § 2.127
              Motions.
              (a) Every motion must be submitted in written form and must meet the requirements prescribed in § 2.126. It shall contain a full statement of the grounds, and shall embody or be accompanied by a brief. Except as provided in paragraph (e)(1) of this section, a brief in response to a motion shall be filed within twenty days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. If a motion for an extension is denied, the time for responding to the motion remains as specified under this section, unless otherwise ordered. Except as provided in paragraph (e)(1) of this section, a reply brief, if filed, shall be filed within twenty days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended or reopened. The Board will consider no further papers in support of or in opposition to a motion. Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-five pages in length in its entirety, including table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary. A reply brief shall not exceed ten pages in length in its entirety. Exhibits submitted in support of or in opposition to a motion are not considered part of the brief for purposes of determining the length of the brief. When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded. An oral hearing will not be held on a motion except on order by the Board.

              (b) Any request for reconsideration or modification of an order or decision issued on a motion must be filed within one month from the date thereof. A brief in response must be filed within twenty days from the date of service of the request.
              (c) Interlocutory motions, requests, conceded matters, and other matters not actually or potentially dispositive of a proceeding may be acted upon by a single Administrative Trademark Judge of the Trademark Trial and Appeal Board, or by an Interlocutory Attorney or Paralegal of the Board to whom authority to act has been delegated, or by ESTTA. Motions disposed of by orders entitled “By the Trademark Trial and Appeal Board” have the same legal effect as orders by a panel of three Administrative Trademark Judges of the Board.
              (d) When any party timely files a potentially dispositive motion, including, but not limited to, a motion to dismiss, a motion for judgment on the pleadings, or a motion for summary judgment, the case is suspended by the Trademark Trial and Appeal Board with respect to all matters not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise may be specified in a Board order. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided.
              (e)(1) A party may not file a motion for summary judgment until the party has made its initial disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the Trademark Trial and Appeal Board. A motion for summary judgment must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset. A motion under Rule 56(d) of the Federal Rules of Civil Procedure, if filed in response to a motion for summary judgment, shall be filed within thirty days from the date of service of the summary judgment motion. The time for filing a motion under Rule 56(d) will not be extended or reopened. If no motion under Rule 56(d) is filed, a brief in response to the motion for summary judgment shall be filed within thirty days from the date of service of the motion unless the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon order of the Board. If a motion for an extension is denied, the time for responding to the motion for summary judgment may remain as specified under this section. A reply brief, if filed, shall be filed within twenty days from the date of service of the brief in response to the motion. The time for filing a reply brief will not be extended or reopened. The Board will consider no further papers in support of or in opposition to a motion for summary judgment.
              (2) For purposes of summary judgment only, the Board will consider any of the following, if a copy is provided with the party's brief on the summary judgment motion: Written disclosures or disclosed documents, a discovery deposition or any part thereof with any exhibit to the part that is filed, an interrogatory and answer thereto with any exhibit made part of the answer, a request for production and the documents or things produced in response thereto, or a request for admission and any exhibit thereto and the admission (or a statement that the party from which an admission was requested failed to respond thereto). If any motion for summary judgment is denied, the parties may stipulate that the materials submitted with briefs on the motion be considered at trial as trial evidence, which may be supplemented by additional evidence during trial.
              (f) The Board will not hold any person in contempt, or award attorneys' fees or other expenses to any party.
              [48 FR 23140, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63 FR 48099, Sept. 9, 1998; 63 FR 52159, Sept. 30, 1998; 68 FR 55768, Sept. 26, 2003; 72 FR 42262, Aug. 1, 2007; 81 FR 69983, Oct. 7, 2016; 82 FR 33806, July 21, 2017]

              § 2.128
              Briefs at final hearing.

              (a)(1) The brief of the party in the position of plaintiff shall be due not later than sixty days after the date set for the close of rebuttal testimony. The brief of the party in the position of defendant, if filed, shall be due not later than thirty days after the due date of the first brief. A reply brief by the party in the position of plaintiff, if filed, shall be due not later than fifteen days after the due date of the defendant's brief.

              (2) When there is a counterclaim, or when proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Trademark Trial and Appeal Board will set the due dates for the filing of the main brief, and the answering brief, and the rebuttal brief by the parties.
              (3) When a party in the position of plaintiff fails to file a main brief, an order may be issued allowing plaintiff until a set time, not less than fifteen days, in which to show cause why the Board should not treat such failure as a concession of the case. If plaintiff fails to file a response to the order, or files a response indicating that plaintiff has lost interest in the case, judgment may be entered against plaintiff. If a plaintiff files a response to the order showing good cause, but does not have any evidence of record and does not move to reopen its testimony period and make a showing of excusable neglect sufficient to support such reopening, judgment may be entered against plaintiff for failure to take testimony or submit any other evidence.
              (b) Briefs must be submitted in written form and must meet the requirements prescribed in § 2.126. Each brief shall contain an alphabetical index of cited cases. Without prior leave of the Trademark Trial and Appeal Board, a main brief on the case shall not exceed fifty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary; and a reply brief shall not exceed twenty-five pages in its entirety. Evidentiary objections that may properly be raised in a party's brief on the case may instead be raised in an appendix or by way of a separate statement of objections. The appendix or separate statement is not included within the page limit. Any brief beyond the page limits and any brief with attachments outside the stated requirements may not be considered by the Board.
              [48 FR 23140, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 68 FR 55768, Sept. 26, 2003; 81 FR 69984, Oct. 7, 2016]

              § 2.129
              Oral argument; reconsideration.
              (a) If a party desires to have an oral argument at final hearing, the party shall request such argument by a separate notice filed not later than ten days after the due date for the filing of the last reply brief in the proceeding. Oral arguments will be heard by at least three Administrative Trademark Judges or other statutory members of the Trademark Trial and Appeal Board at the time specified in the notice of hearing. If any party appears at the specified time, that party will be heard. Parties and members of the Board may attend in person or, at the discretion of the Board, remotely. If the Board is prevented from hearing the case at the specified time, a new hearing date will be set. Unless otherwise permitted, oral arguments in an inter partes case will be limited to thirty minutes for each party. A party in the position of plaintiff may reserve part of the time allowed for oral argument to present a rebuttal argument.
              (b) The date or time of a hearing may be reset, so far as is convenient and proper, to meet the wishes of the parties and their attorneys or other authorized representatives. The Board may, however, deny a request to reset a hearing date for lack of good cause or if multiple requests for rescheduling have been filed.
              (c) Any request for rehearing or reconsideration or modification of a decision issued after final hearing must be filed within one month from the date of the decision. A brief in response must be filed within twenty days from the date of service of the request. The times specified may be extended by order of the Trademark Trial and Appeal Board on motion for good cause.
              (d) When a party to an inter partes proceeding before the Trademark Trial and Appeal Board cannot prevail without establishing constructive use pursuant to section 7(c) of the Act in an application under section 1(b) of the Act, the Trademark Trial and Appeal Board will enter a judgment in favor of that party, subject to the party's establishment of constructive use. The time for filing an appeal or for commencing a civil action under section 21 of the Act shall run from the date of the entry of the judgment.
              [48 FR 23141, May 23, 1983, as amended at 54 FR 29554, July 13, 1989; 54 FR 34900, Aug. 22, 1989; 54 FR 37597, Sept. 11, 1989; 72 FR 42263, Aug. 1, 2007; 81 FR 69984, Oct. 7, 2016]

              § 2.130
              New matter suggested by the trademark examining attorney.
              If, while an inter partes proceeding involving an application under section 1 or 44 of the Act is pending, facts appear which, in the opinion of the examining attorney, render the mark in the application unregistrable, the examining attorney should request that the Board remand the application. The Board may suspend the proceeding and remand the application to the trademark examining attorney for an ex parte determination of the question of registrability. A copy of the trademark examining attorney's final action will be furnished to the parties to the inter partes proceeding following the final determination of registrability by the trademark examining attorney or the Board on appeal. The Board will consider the application for such further inter partes action as may be appropriate.
              [81 FR 69985, Oct. 7, 2016]

              § 2.131
              Remand after decision in inter partes proceeding.
              If, during an inter partes proceeding involving an application under section 1 or 44 of the Act, facts are disclosed which appear to render the mark unregistrable, but such matter has not been tried under the pleadings as filed by the parties or as they might be deemed to be amended under Rule 15(b) of the Federal Rules of Civil Procedure to conform to the evidence, the Trademark Trial and Appeal Board, in lieu of determining the matter in the decision on the proceeding, may remand the application to the trademark examining attorney for reexamination in the event the applicant ultimately prevails in the inter partes proceeding. Upon remand, the trademark examining attorney shall reexamine the application in light of the matter referenced by the Board. If, upon reexamination, the trademark examining attorney finally refuses registration to the applicant, an appeal may be taken as provided by §§ 2.141 and 2.142.
              [81 FR 69985, Oct. 7, 2016]

              § 2.132
              Involuntary dismissal for failure to take testimony.
              (a) If the time for taking testimony by any party in the position of plaintiff has expired and it is clear to the Board from the proceeding record that such party has not taken testimony or offered any other evidence, the Board may grant judgment for the defendant. Also, any party in the position of defendant may, without waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground of the failure of the plaintiff to prosecute. The party in the position of plaintiff shall have twenty days from the date of service of the motion to show cause why judgment should not be rendered dismissing the case. In the absence of a showing of excusable neglect, judgment may be rendered against the party in the position of plaintiff. If the motion is denied, testimony periods will be reset for the party in the position of defendant and for rebuttal.

              (b) If no evidence other than Office records showing the current status and title of plaintiff's pleaded registration(s) is offered by any party in the position of plaintiff, any party in the position of defendant may, without waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground that upon the law and the facts the party in the position of plaintiff has shown no right to relief. The party in the position of plaintiff shall have twenty days from the date of service of the motion to file a brief in response to the motion. The Trademark Trial and Appeal Board may render judgment against the party in the position of plaintiff, or the Board may decline to render judgment until all testimony periods have passed. If judgment is not rendered on the motion to dismiss, testimony periods will be reset for the party in the position of defendant and for rebuttal.

              (c) A motion filed under paragraph (a) or (b) of this section must be filed before the opening of the testimony period of the moving party, except that the Trademark Trial and Appeal Board may in its discretion grant a motion under paragraph (a) even if the motion was filed after the opening of the testimony period of the moving party.
              [48 FR 23141, May 23, 1983, as amended at 51 FR 28710, Aug. 11, 1986; 81 FR 69985, Oct. 7, 2016]

              § 2.133
              Amendment of application or registration during proceedings.
              (a) An application subject to an opposition may not be amended in substance nor may a registration subject to a cancellation be amended or disclaimed in part, except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board.
              (b) If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party whose application or registration is the subject of the proceeding is not entitled to registration in the absence of a specified restriction to the application or registration, the Board will allow the party time in which to file a motion that the application or registration be amended to conform to the findings of the Board, failing which judgment will be entered against the party.
              (c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.
              (d) A plaintiff's pleaded registration will not be restricted in the absence of a counterclaim to cancel the registration in whole or in part, except that a counterclaim need not be filed if the registration is the subject of another proceeding between the same parties or anyone in privity therewith.
              [54 FR 37597, Sept. 11, 1989, as amended at 72 FR 42263, Aug. 1, 2007]

              § 2.134
              Surrender or voluntary cancellation of registration.
              (a) After the commencement of a cancellation proceeding, if the respondent applies for cancellation of the involved registration under section 7(e) of the Act of 1946 without the written consent of every adverse party to the proceeding, judgment shall be entered against the respondent. The written consent of an adverse party may be signed by the adverse party or by the adverse party's attorney or other authorized representative.
              (b) After the commencement of a cancellation proceeding, if it comes to the attention of the Trademark Trial and Appeal Board that the respondent has permitted its involved registration to be cancelled under section 8 or section 71 of the Act of 1946, or has failed to renew its involved registration under section 9 of the Act of 1946, or has allowed its registered extension of protection to expire under section 70(b) of the Act of 1946, an order may be issued allowing respondent until a set time, not less than fifteen days, in which to show cause why such cancellation, failure to renew, or expiration should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of the adverse party and should not result in entry of judgment against respondent as provided by paragraph (a) of this section. In the absence of a showing of good and sufficient cause, judgment may be entered against respondent as provided by paragraph (a) of this section.
              [48 FR 23141, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63 FR 48100, Sept. 9, 1998; 81 FR 69985, Oct. 7, 2016]

              § 2.135
              Abandonment of application or mark.
              After the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant. The written consent of an adverse party may be signed by the adverse party or by the adverse party's attorney or other authorized representative.
              [54 FR 34900, Aug. 22, 1989]

              § 2.136
              Status of application or registration on termination of proceeding.
              After the Board has issued its decision in an opposition, cancellation or concurrent use proceeding, and after the time for filing any appeal of the decision has expired, or any appeal that was filed has been decided and the Board's decision affirmed, the proceeding will be terminated by the Board. On termination of an opposition, cancellation or concurrent use proceeding, if the judgment is not adverse to the applicant or registrant, the subject application returns to the status it had before the institution of the proceeding and the otherwise appropriate status of the subject registration is unaffected by the proceeding. If the judgment is adverse to the applicant or registrant, the application stands refused or the registration will be cancelled in whole or in part without further action and all proceedings thereon are considered terminated.
              [81 FR 69985, Oct. 7, 2016]

            Appeals

              § 2.141
              Ex parte appeals from action of trademark examining attorney.
              (a) An applicant may, upon final refusal by the trademark examining attorney, appeal to the Trademark Trial and Appeal Board upon payment of the prescribed fee for each class in the application for which an appeal is taken, within six months of the date of issuance of the final action. A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal.
              (b) The applicant must pay an appeal fee for each class from which the appeal is taken. If the applicant does not pay an appeal fee for at least one class of goods or services before expiration of the six-month statutory filing period, the application will be abandoned. In a multiple-class application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken. If the applicant timely submits a fee sufficient to pay for an appeal in at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant may either pay the additional fees or specify the class(es) being appealed. If the applicant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending order, beginning with the lowest numbered class.
              [73 FR 67772, Nov. 17, 2008]

              § 2.142
              Time and manner of ex parte appeals.
              (a) Any appeal filed under the provisions of § 2.141 must be filed within six months from the date of the final refusal or the date of the action from which the appeal is taken. An appeal is taken by filing a notice of appeal in written form, as prescribed in § 2.126, and paying the appeal fee.
              (b)(1) The brief of appellant shall be filed within sixty days from the date of appeal. If the brief is not filed within the time allowed, the appeal may be dismissed. The examining attorney shall, within sixty days after the brief of appellant is sent to the examining attorney, file with the Trademark Trial and Appeal Board a written brief answering the brief of appellant and shall email or mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examining attorney.
              (2) Briefs must meet the requirements prescribed in § 2.126, except examining attorney submissions need not be filed through ESTTA. Without prior leave of the Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its entirety, including the table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary. A reply brief from the appellant, if any, shall not exceed ten pages in length in its entirety. Unless authorized by the Board, no further briefs are permitted.

              (3) Citation to evidence in briefs should be to the documents in the electronic application record by date, the name of the paper under which the evidence was submitted, and the page number in the electronic record.
              (c) All requirements made by the examining attorney and not the subject of appeal shall be complied with prior to the filing of an appeal, and the statement of issues in the brief should note such compliance.
              (d) The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination.
              (e)(1) If the appellant desires an oral hearing, a request should be made by a separate notice filed not later than ten days after the due date for a reply brief. Oral argument will be heard by at least three Administrative Trademark Judges or other statutory members of the Trademark Trial and Appeal Board at the time specified in the notice of hearing, which may be reset if the Board is prevented from hearing the argument at the specified time or, so far as is convenient and proper, to meet the wish of the appellant or the appellant's attorney or other authorized representative. Appellants, examining attorneys, and members of the Board may attend in person or, at the discretion of the Board, remotely.
              (2) If the appellant requests an oral argument, the examining attorney who issued the refusal of registration or the requirement from which the appeal is taken, or in lieu thereof another examining attorney as designated by a supervisory or managing attorney, shall present an oral argument. If no request for an oral hearing is made by the appellant, the appeal will be decided on the record and briefs.
              (3) Oral argument will be limited to twenty minutes by the appellant and ten minutes by the examining attorney. The appellant may reserve part of the time allowed for oral argument to present a rebuttal argument.
              (f)(1) If, during an appeal from a refusal of registration, it appears to the Trademark Trial and Appeal Board that an issue not previously raised may render the mark of the appellant unregistrable, the Board may suspend the appeal and remand the application to the examining attorney for further examination to be completed within the time set by the Board.
              (2) If the further examination does not result in an additional ground for refusal of registration, the examining attorney shall promptly return the application to the Board, for resumption of the appeal, with a written statement that further examination did not result in an additional ground for refusal of registration.
              (3) If the further examination does result in an additional ground for refusal of registration, the examining attorney and appellant shall proceed as provided by §§ 2.61, 2.62, and 2.63. If the ground for refusal is made final, the examining attorney shall return the application to the Board, which shall thereupon issue an order allowing the appellant sixty days from the date of the order to file a supplemental brief limited to the additional ground for the refusal of registration. If the supplemental brief is not filed by the appellant within the time allowed, the appeal may be dismissed.
              (4) If the supplemental brief of the appellant is filed, the examining attorney shall, within sixty days after the supplemental brief of the appellant is sent to the examining attorney, file with the Board a written brief answering the supplemental brief of appellant and shall email or mail a copy of the brief to the appellant. The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examining attorney.

              (5) If an oral hearing on the appeal had been requested prior to the remand of the application but not yet held, an oral hearing will be set and heard as provided in paragraph (e) of this section. If an oral hearing had been held prior to the remand or had not been previously requested by the appellant, an oral hearing may be requested by the appellant by a separate notice filed not later than ten days after the due date for a reply brief on the additional ground for refusal of registration. If the appellant files a request for an oral hearing, one will be set and heard as provided in paragraph (e) of this section.
              (6) If, during an appeal from a refusal of registration, it appears to the examining attorney that an issue not involved in the appeal may render the mark of the appellant unregistrable, the examining attorney may, by written request, ask the Board to suspend the appeal and to remand the application to the examining attorney for further examination. If the request is granted, the examining attorney and appellant shall proceed as provided by §§ 2.61, 2.62, and 2.63. After the additional ground for refusal of registration has been withdrawn or made final, the examining attorney shall return the application to the Board, which shall resume proceedings in the appeal and take further appropriate action with respect thereto.
              (g) An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946 or upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of sufficient cause for consideration of any matter not already adjudicated.
              [48 FR 23141, May 23, 1983, as amended at 54 FR 34901, Aug. 22, 1989; 68 FR 55768, Sept. 26, 2003; 72 FR 42263, Aug. 1, 2007; 80 FR 2312, Jan. 16, 2015; 81 FR 69985, Oct. 7, 2016]

              § 2.143
              [Reserved]

              § 2.144
              Reconsideration of decision on ex parte appeal.
              Any request for rehearing or reconsideration, or modification of the decision, must be filed within one month from the date of the decision. Such time may be extended by the Trademark Trial and Appeal Board upon a showing of sufficient cause.
              [54 FR 29554, July 13, 1989]

              § 2.145
              Appeal to court and civil action.
              (a) For an Appeal to the United States Court of Appeals for the Federal Circuit under section 21(a) of the Act. (1) An applicant for registration, or any party to an interference, opposition, or cancellation proceeding or any party to an application to register as a concurrent user, hereinafter referred to as inter partes proceedings, who is dissatisfied with the decision of the Trademark Trial and Appeal Board, and any registrant who has filed an affidavit or declaration under section 8 or section 71 of the Act or who has filed an application for renewal and is dissatisfied with the decision of the Director (§§ 2.165, 2.184), may appeal to the United States Court of Appeals for the Federal Circuit. It is unnecessary to request reconsideration by the Board before filing any such appeal; however, a party requesting reconsideration must do so before filing a notice of appeal.
              (2) In all appeals under section 21(a), the appellant must take the following steps:
              (i) File the notice of appeal with the Director, addressed to the Office of the General Counsel, as provided in § 104.2 of this chapter;
              (ii) File a copy of the notice of appeal with the Trademark Trial and Appeal Board via ESTTA; and
              (iii) Comply with the requirements of the Federal Rules of Appellate Procedure and Rules for the United States Court of Appeals for the Federal Circuit, including serving the requisite number of copies on the Court and paying the requisite fee for the appeal.
              (3) Additional requirements. (i) The notice of appeal shall specify the party or parties taking the appeal and shall designate the decision or part thereof appealed from.
              (ii) In inter partes proceedings, the notice of appeal must be served as provided in § 2.119.
              (b) For a notice of election under section 21(a)(1) to proceed under section 21(b) of the Act. (1) Any applicant or registrant in an ex parte case who takes an appeal to the United States Court of Appeals for the Federal Circuit waives any right to proceed under section 21(b) of the Act.

              (2) If an adverse party to an appeal taken to the United States Court of Appeals for the Federal Circuit by a defeated party in an inter partes proceeding elects to have all further review proceedings conducted under section 21(b) of the Act, that party must take the following steps:

              (i) File a notice of election with the Director, addressed to the Office of the General Counsel, as provided in § 104.2 of this chapter;
              (ii) File a copy of the notice of election with the Trademark Trial and Appeal Board via ESTTA; and
              (iii) Serve the notice of election as provided in § 2.119.
              (c) For a civil action under section 21(b) of the Act. (1) Any person who may appeal to the United States Court of Appeals for the Federal Circuit (paragraph (a) of this section), may have remedy by civil action under section 21(b) of the Act. It is unnecessary to request reconsideration by the Board before filing any such civil action; however, a party requesting reconsideration must do so before filing a civil action.
              (2) Any applicant or registrant in an ex parte case who seeks remedy by civil action under section 21(b) of the Act must serve the summons and complaint pursuant to Rule 4(i) of the Federal Rules of Civil Procedure with the copy to the Director addressed to the Office of the General Counsel as provided in § 104.2 of this chapter. A copy of the complaint must also be filed with the Trademark Trial and Appeal Board via ESTTA.
              (3) The party initiating an action for review of a Board decision in an inter partes case under section 21(b) of the Act must file notice thereof with the Trademark Trial and Appeal Board via ESTTA no later than five business days after filing the complaint in the district court. The notice must identify the civil action with particularity by providing the case name, case number, and court in which it was filed. A copy of the complaint may be filed with the notice. Failure to file the required notice can result in termination of the Board proceeding and further action within the United States Patent and Trademark Office consistent with the final Board decision.
              (d) Time for appeal or civil action—(1) For an appeal under section 21(a). The notice of appeal filed pursuant to section 21(a) of the Act must be filed with the Director no later than sixty-three (63) days from the date of the final decision of the Trademark Trial and Appeal Board or the Director. In inter partes cases, the time for filing a notice of cross-appeal expires 14 days after service of the notice of appeal or 63 days from the date of the decision of the Trademark Trial and Appeal Board or the Director, whichever is later.
              (2) For a notice of election under 21(a)(1) and a civil action pursuant to such notice of election. The times for filing a notice of election under section 21(a)(1) and for commencing a civil action pursuant to a notice of election are governed by section 21(a)(1) of the Act.
              (3) For a civil action under section 21(b). A civil action must be commenced no later than sixty-three (63) days after the date of the final decision of the Trademark Trial and Appeal Board or Director. In inter partes cases, the time for filing a cross-action expires 14 days after service of the summons and complaint or 63 days from the date of the decision of the Trademark Trial and Appeal Board or the Director, whichever is later.
              (4) Time computation. (i) If a request for rehearing or reconsideration or modification of the Board decision is filed within the time specified in § 2.127(b), § 2.129(c), or § 2.144, or within any extension of time granted thereunder, the time for filing an appeal or commencing a civil action shall expire no later than sixty-three (63) days after action on the request.
              (ii) Holidays. The times specified in this section in days are calendar days. If the last day of time specified for an appeal, notice of election, or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal holiday in the District of Columbia pursuant to § 2.196.
              (e) Extension of time. (1) The Director, or the Director's designee, may extend the time for filing an appeal, or commencing a civil action, upon written request if:
              (i) Requested before the expiration of the period for filing an appeal or commencing a civil action, and upon a showing of good cause; or

              (ii) Requested after the expiration of the period for filing an appeal or commencing a civil action, and upon a showing that the failure to act was the result of excusable neglect.
              (2) The request must be filed as provided in § 104.2 of this chapter and addressed to the attention of the Office of the Solicitor. A copy of the request should also be filed with the Trademark Trial and Appeal Board via ESTTA.
              [81 FR 69986, Oct. 7, 2016, as amended at 81 FR 89383, Dec. 12, 2016]

            Petitions and Action by the Director

              § 2.146
              Petitions to the Director.
              (a) Petition may be taken to the Director in a trademark case:
              (1) From any repeated or final formal requirement of the examiner in the ex parte prosecution of an application if permitted by § 2.63(a) and (b);
              (2) In any case for which the Act of 1946, Title 35 of the United States Code, or parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined directly or reviewed by the Director;
              (3) To invoke the supervisory authority of the Director in appropriate circumstances;
              (4) In any case not specifically defined and provided for by parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or
              (5) In an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946.
              (b) Questions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under sections 2, 3, 4, 5, 6, and 23 of the Act of 1946, are not appropriate subject matter for petitions to the Director.
              (c) Every petition to the Director shall include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the fee required by § 2.6. Any brief in support of the petition shall be embodied in or accompany the petition. The petition must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(5). When facts are to be proved on petition, the petitioner must submit proof in the form of verified statements signed by someone with firsthand knowledge of the facts to be proved, and any exhibits.
              (d) Unless a different deadline is specified elsewhere in this chapter, a petition under this section must be filed by not later than:
              (1) Two months after the issue date of the action, or date of receipt of the filing, from which relief is requested; or
              (2) Where the applicant or registrant declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the action, or where no action was issued, the petition must be filed by not later than:
              (i) Two months of actual knowledge of the abandonment of an application and not later than six months after the date the trademark electronic records system indicates that the application is abandoned in full or in part;
              (ii) Where the registrant has timely filed an affidavit of use or excusable non-use under Section 8 or 71 of the Act, or a renewal application under Section 9 of the Act, two months after the date of actual knowledge of the cancellation/expiration of a registration and not later than six months after the date the trademark electronic records system indicates that the registration is cancelled/expired; or
              (iii) Two months after the date of actual knowledge of the denial of certification of an international application under § 7.13(b) and not later than six months after the trademark electronic records system indicates that certification is denied.

              (e)(1) A petition from the grant or denial of a request for an extension of time to file a notice of opposition must be filed by not later than fifteen days after the issue date of the grant or denial of the request. A petition from the grant of a request must be served on the attorney or other authorized representative of the potential opposer, if any, or on the potential opposer. A petition from the denial of a request must be served on the attorney or other authorized representative of the applicant, if any, or on the applicant. Proof of service of the petition must be made as provided by § 2.119. The potential opposer or the applicant, as the case may be, may file a response by not later than fifteen days after the date of service of the petition and must serve a copy of the response on the petitioner, with proof of service as provided by § 2.119. No further document relating to the petition may be filed.
              (2) A petition from an interlocutory order of the Trademark Trial and Appeal Board must be filed by not later than thirty days after the issue date of the order from which relief is requested. Any brief in response to the petition must be filed, with any supporting exhibits, by not later than fifteen days after the date of service of the petition. Petitions and responses to petitions, and any documents accompanying a petition or response under this subsection, must be served on every adverse party pursuant to § 2.119.
              (f) An oral hearing will not be held on a petition except when considered necessary by the Director.
              (g) The mere filing of a petition to the Director will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board, nor stay the period for replying to an Office action in an application, except when a stay is specifically requested and is granted or when §§ 2.63(a) and (b) and 2.65(a) are applicable to an ex parte application.
              (h) Authority to act on petitions, or on any petition, may be delegated by the Director.
              (i) If the Director denies a petition, the petitioner may request reconsideration, if:
              (1) The petitioner files the request by not later than:
              (i) Two months after the issue date of the decision denying the petition; or
              (ii) Two months after the date of actual knowledge of the decision denying the petition and not later than six months after the issue date of the decision where the petitioner declares under § 2.20 or 28 U.S.C. 1746 that it did not receive the decision; and
              (2) The petitioner pays a second petition fee under § 2.6.
              [82 FR 29409, June 29, 2017, as amended at 84 FR 37095, July 31, 2019]

              § 2.147
              Petition to the Director to accept a paper submission.
              (a) Paper submission when TEAS is unavailable on the date of a filing deadline. (1) An applicant or registrant may file a petition to the Director under this section requesting acceptance of a submission filed on paper if:
              (i) TEAS is unavailable on the date of the deadline for the submission specified in a regulation in part 2 or 7 of this chapter or in a section of the Act; and
              (ii) The petition is timely filed, pursuant to § 2.197 or § 2.198, on the date of the deadline.
              (2) The petition must include:
              (i) The paper submission;
              (ii) Proof that TEAS was unavailable on the date of the deadline;

              (iii) A statement of the facts relevant to the petition, supported by a declaration under § 2.20 or 28 U.S.C. 1746 that is signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter;
              (iv) The fee for a petition filed on paper under § 2.6(a)(15)(i); and
              (v) Any other required fee(s) under § 2.6 for the paper submission.
              (b) Certain paper submissions timely filed before the date of a filing deadline. (1) An applicant, registrant, or petitioner for cancellation may file a petition to the Director under this section, requesting acceptance of any of the following submissions that was timely submitted on paper and otherwise met the minimum filing requirements, but not processed or examined by the Office because it was not submitted electronically pursuant to § 2.21(a), § 2.23(a), or § 2.111(c)(1), and the applicant, registrant, or petitioner for cancellation is unable to timely resubmit the document electronically by the deadline:
              (i) An application seeking a priority filing date with a deadline under section 44(d)(1) of the Act;
              (ii) A statement of use filed within the last six months of the period specified in section 1(d)(2) of the Act;

              (iii) An affidavit or declaration of continued use or excusable nonuse with a deadline under section 8(a)(3) or section 71(a)(3) of the Act;

              (iv) A request for renewal of a registration with a deadline under section 9(a) of the Act;
              (v) An application for transformation of an extension of protection into a United States application with a deadline under section 70(c) of the Act; or
              (vi) A petition to cancel a registration under section 14 of the Act on the fifth year anniversary of the date of the registration of the mark.
              (2) The petition must be filed by not later than two months after the issue date of the notice denying acceptance of the paper filing and must include:

              (i) A statement of the facts relevant to the petition, supported by a declaration under § 2.20 or 28 U.S.C. 1746 that is signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter;
              (ii) A copy of the relevant paper submission and proof that it was timely filed;
              (iii) Proof that a sufficient fee accompanied the original paper submission;
              (iv) The required fee(s) under § 2.6 for the paper submission; and
              (v) The relevant petition fee under § 2.6(a)(15).
              (c) Petition under § 2.146. If the applicant or registrant is unable to meet the requirements under paragraphs (a) or (b) of this section for filing the petition, the applicant or registrant may submit a petition to the Director under § 2.146(a)(5) to request a waiver of § 2.21(a) or § 2.23(a).
              (d) This section does not apply to requirements for paper submissions to the Trademark Trial and Appeal Board except as specified in paragraph (b)(vi).
              [84 FR 37095, July 31, 2019]

              § 2.148
              Director may suspend certain rules.
              In an extraordinary situation, when justice requires and no other party is injured thereby, any requirement of the rules in parts 2, 3, 6, and 7 of this chapter that is not a requirement of the Act may be suspended or waived by the Director.
              [84 FR 37096, July 31, 2019]

            Certificate

              § 2.151
              Certificate.
              When the Office determines that a mark is registrable, the Office will issue to the owner a certificate of registration on the Principal Register or the Supplemental Register. The certificate will state the application filing date, the act under which the mark is registered, the date of issue, and the number of the registration and will include a reproduction of the mark and pertinent data from the application. A notice of the requirements of sections 8 and 71 of the Act will issue with the certificate.
              [84 FR 37096, July 31, 2019]

            Publication of Marks Registered Under 1905 Act

              Authority:
              Secs. 2.153 to 2.156 also issued under sec. 12, 60 Stat. 432; 15 U.S.C. 1062.

              § 2.153
              Publication requirements.
              The owner of a mark registered under the provisions of the Trademark Act of 1881 or 1905 may at any time prior to the expiration of the period for which the registration was issued or renewed, upon the payment of the prescribed fee, file an affidavit or declaration in accordance with § 2.20 setting forth those goods or services in the registration on or in connection with which said mark is in use in commerce, and stating that the owner claims the benefits of the Act of 1946. The affidavit or declaration must be signed by a person properly authorized to sign on behalf of the owner under § 2.193(e)(1).
              [74 FR 54909, Oct. 26, 2009]

              § 2.154
              Publication in Official Gazette.

              A notice of the claim of benefits under the Act of 1946 and a reproduction of the mark will then be published in the Official Gazette as soon as practicable. The published mark will retain its original registration number.

              § 2.155
              Notice of publication.

              The Office will send the registrant a notice of publication of the mark and of the requirement for filing the affidavit or declaration required by section 8 of the Act.
              [64 FR 48924, Sept. 8, 1999]

              § 2.156
              Not subject to opposition; subject to cancellation.
              The published mark is not subject to opposition, but is subject to petitions to cancel as specified in § 2.111 and to cancellation for failure to file the affidavit or declaration required by section 8 of the Act.
              [64 FR 48924, Sept. 8, 1999]

            Reregistration of Marks Registered Under Prior Acts

              § 2.158
              Reregistration of marks registered under Acts of 1881, 1905, and 1920.
              Trademarks registered under the Act of 1881, the Act of 1905 or the Act of 1920 may be reregistered under the Act of 1946, either on the Principal Register, if eligible, or on the Supplemental Register, but a new complete application for registration must be filed complying with the rules relating thereto, and such application will be subject to examination and other proceedings in the same manner as other applications filed under the Act of 1946. See § 2.26 for use of old drawing.

            Cancellation for Failure To File Affidavit or Declaration

              Authority:
              Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

              § 2.160
              Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration.
              (a) During the following time periods, the owner of the registration must file an affidavit or declaration of continued use or excusable nonuse, or the registration will be cancelled:
              (1)(i) For registrations issued under the Trademark Act of 1946, on or after the fifth anniversary and no later than the sixth anniversary after the date of registration; or
              (ii) For registrations issued under prior Acts, on or after the fifth anniversary and no later than the sixth anniversary after the date of publication under section 12(c) of the Act; and
              (2) For all registrations, within the year before the end of every ten-year period after the date of registration.
              (3) The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (a)(1) and (a)(2) of this section, with payment of the grace period surcharge per class required by section 8(a)(3) of the Act and § 2.6.
              (b) For the requirements for the affidavit or declaration, see § 2.161.
              [64 FR 48924, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]

              § 2.161
              Requirements for a complete affidavit or declaration of continued use or excusable nonuse.
              A complete affidavit or declaration under section 8 of the Act must:
              (a) Be filed by the owner within the period set forth in § 2.160(a);
              (b) Include a verified statement attesting to the use in commerce or excusable nonuse of the mark within the period set forth in section 8 of the Act. This verified statement must be executed on or after the beginning of the filing period specified in § 2.160(a);
              (c) Include the U.S. registration number;
              (d)(1) Include the fee required by § 2.6 for each class that the affidavit or declaration covers;
              (2) If the affidavit or declaration is filed during the grace period under section 8(a)(3) of the Act, include the grace period surcharge per class required by § 2.6;

              (3) If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes, and the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either submission of the additional fee(s) or specification of the class(es) to which the initial fee(s) should be applied. Additional fee(s) may be submitted if the requirements of § 2.164 are met. If the additional fee(s) are not submitted within the time period set out in the Office action and the class(es) to which the original fee(s) should be applied are not specified, the Office will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class;
              (e)(1) Specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce, and/or the goods, services, or nature of the collective membership organization for which excusable nonuse is claimed under paragraph (f)(2) of this section; and
              (2) Specify the goods, services, or classes being deleted from the registration, if the affidavit or declaration covers fewer than all the goods, services, or classes in the registration;
              (f)(1) State that the registered mark is in use in commerce; or
              (2) If the registered mark is not in use in commerce on or in connection with all the goods, services, or classes specified in the registration, set forth the date when such use of the mark in commerce stopped and the approximate date when such use is expected to resume; and recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark; and
              (g) Include one specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed under paragraph (f)(2) of this section. When requested by the Office, additional specimens must be provided. The specimen must meet the requirements of § 2.56.
              (h) The Office may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act or for the Office to assess and promote the accuracy and integrity of the register.
              (i) Additional requirements for a collective mark: In addition to the above requirements, a complete affidavit or declaration pertaining to a collective mark must:
              (1) State that the owner is exercising legitimate control over the use of the mark in commerce; and
              (2) If the registration issued from an application based solely on section 44 of the Act, state the nature of the owner's control over the use of the mark by the members in the first affidavit or declaration filed under paragraph (a) of this section.
              (j) Additional requirements for a certification mark: In addition to the above requirements, a complete affidavit or declaration pertaining to a certification mark must:
              (1) Include a copy of the certification standards specified in § 2.45(a)(4)(i)(B);
              (i) Submitting certification standards for the first time. If the registration issued from an application based solely on section 44 of the Act, include a copy of the certification standards in the first affidavit or declaration filed under paragraph (a) of this section; or
              (ii) Certification standards submitted in prior filing. If the certification standards in use at the time of filing the affidavit or declaration have not changed since the date they were previously submitted to the Office, include a statement to that effect; if the certification standards in use at the time of filing the affidavit or declaration have changed since the date they were previously submitted to the Office, include a copy of the revised certification standards;
              (2) State that the owner is exercising legitimate control over the use of the mark in commerce; and
              (3) Satisfy the requirements of § 2.45(a)(4)(i)(A) and (C).
              (k) For requirements of a complete affidavit or declaration of use in commerce or excusable nonuse for a registration that issued from a section 66(a) basis application, see § 7.37.
              [64 FR 48924, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002; 68 FR 55769, Sept. 26, 2003; 73 FR 47686, Aug. 14, 2008; 73 FR 67773, Nov. 17, 2008; 74 FR 54910, Oct. 26, 2009; 75 FR 35976, June 24, 2010; 77 FR 30207, May 22, 2012; 80 FR 33188, June 11, 2015; 82 FR 6265, Jan. 19, 2017]

              § 2.162
              Notice to registrant.

              When a certificate of registration is originally issued, the Office issues with the certificate a notice of the requirement for filing the affidavit or declaration of use or excusable nonuse under section 8 or section 71 of the Act. However, the affidavit or declaration must be filed within the time period required by section 8 or section 71 of the Act even if this notice is not received.
              [84 FR 37096, July 31, 2019]

              § 2.163
              Acknowledgment of receipt of affidavit or declaration.
              The Office will issue a notice as to whether an affidavit or declaration is acceptable, or the reasons for refusal.
              (a) If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, deficiencies may be corrected after notification from the Office if the requirements of § 2.164 are met.
              (b) A response to the refusal must be filed within six months of the date of issuance of the Office action, or before the end of the filing period set forth in section 8(a) of the Act, whichever is later. The response must be signed by the owner, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2).
              (c) If no response is filed within this time period, the registration will be cancelled, unless time remains in the grace period under section 8(a)(3) of the Act. If time remains in the grace period, the owner may file a complete, new affidavit.
              [75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]

              § 2.164
              Correcting deficiencies in affidavit or declaration.
              (a) If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, deficiencies may be corrected after notification from the Office, as follows:
              (1) Correcting deficiencies in affidavits or declarations timely filed within the periods set forth in sections 8(a)(1) and 8(a)(2) of the Act. If the affidavit or declaration is timely filed within the relevant filing period set forth in section 8(a)(1) or section 8(a)(2) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge. Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.
              (2) Correcting deficiencies in affidavits or declarations filed during the grace period. If the affidavit or declaration is filed during the six-month grace period provided by section 8(a)(3) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.
              (b) If the affidavit or declaration is not filed within the time periods set forth in section 8 of the Act, the registration will be cancelled.
              [75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]

              § 2.165
              Petition to Director to review refusal.
              (a) A response to the examiner's initial refusal to accept an affidavit or declaration is required before filing a petition to the Director, unless the examiner directs otherwise. See § 2.163(b) for the deadline for responding to an examiner's Office action.
              (b) If the examiner maintains the refusal of the affidavit or declaration, the owner may file a petition to the Director to review the action. The petition must be filed within six months of the date of issuance of the action maintaining the refusal, or the Office will cancel the registration and issue a notice of the cancellation.
              (c) A decision by the Director is necessary before filing an appeal or commencing a civil action in any court.
              [64 FR 48925, Sept. 8, 1999, as amended at 73 FR 67773, Nov. 17, 2008]

              § 2.166
              Affidavit of continued use or excusable nonuse combined with renewal application.
              An affidavit or declaration under section 8 of the Act and a renewal application under section 9 of the Act may be combined into a single document, provided that the document meets the requirements of both sections 8 and 9 of the Act.
              [64 FR 48925, Sept. 8, 1999]

            Affidavit or Declaration Under Section 15

              § 2.167
              Affidavit or declaration under section 15.
              The affidavit or declaration in accordance with § 2.20 provided by section 15 of the Act for acquiring incontestability for a mark registered on the Principal Register or a mark registered under the Trademark Act of 1881 or 1905 and published under section 12(c) of the Act (see § 2.153) must:
              (a) Be verified;
              (b) Identify the certificate of registration by the certificate number and date of registration;
              (c) For a trademark, service mark, collective trademark, collective service mark, and certification mark, recite the goods or services stated in the registration on or in connection with which the mark has been in continuous use in commerce for a period of five years after the date of registration or date of publication under section 12(c) of the Act, and is still in use in commerce; for a collective membership mark, describe the nature of the owner's collective membership organization specified in the registration in connection with which the mark has been in continuous use in commerce for a period of five years after the date of registration or date of publication under section 12(c) of the Act, and is still in use in commerce;
              (d) Specify that there has been no final decision adverse to the owner's claim of ownership of such mark for such goods, services, or collective membership organization, or to the owner's right to register the same or to keep the same on the register;
              (e) Specify that there is no proceeding involving said rights pending in the Office or in a court and not finally disposed of;
              (f) Be filed within one year after the expiration of any five-year period of continuous use following registration or publication under section 12(c) of the Act; and
              (g) Include the fee required by § 2.6 for each class to which the affidavit or declaration pertains in the registration. If no fee, or a fee insufficient to cover at least one class, is filed at an appropriate time, the affidavit or declaration will not be refused if the required fee(s) (see § 2.6) is filed in the Office within the time limit set forth in the notification of this defect by the Office. If the submitted fees are insufficient to cover all classes in the registration, the particular class or classes to which the affidavit or declaration pertains should be specified.
              (h) If the affidavit or declaration fails to satisfy any of the requirements in paragraphs (a) through (g) of this section, the owner will be notified in an Office action that the affidavit or declaration cannot be acknowledged. If a response is not received within the time period provided or does not satisfy the requirements of the Office action, the affidavit or declaration will be abandoned.
              (i) If the affidavit or declaration satisfies paragraphs (a) through (g) of this section, the Office will issue a notice of acknowledgement.
              (j) An affidavit or declaration may be abandoned by the owner upon petition to the Director under § 2.146 either before or after the notice of acknowledgement has issued.
              (k) If an affidavit or declaration is abandoned, the owner may file a new affidavit or declaration with a new filing fee.
              (Sec. 15, 60 Stat. 433; 15 U.S.C. 1065; 35 U.S.C. 6; 15 U.S.C. 1113, 1123)
              [30 FR 13193, Oct. 16, 1965, as amended at 47 FR 41282, Sept. 17, 1982; 64 FR 48925, Sept. 8, 1999; 73 FR 67773, Nov. 17, 2008; 74 FR 54910, Oct. 26, 2009; 80 FR 33188, June 11, 2015]

              § 2.168
              Affidavit or declaration under section 15 combined with affidavit or declaration under sections 8 or 71, or with renewal application.
              (a) The affidavit or declaration filed under section 15 of the Act may also be used as the affidavit or declaration required by section 8, if the affidavit or declaration meets the requirements of both sections 8 and 15. The affidavit or declaration filed under section 15 of the Act may also be used as the affidavit or declaration required by section 71, if the affidavit or declaration meets the requirements of both sections 71 and 15.

              (b) The affidavit or declaration filed under section 15 of the Act may be combined with an application for renewal of a registration under section 9 of the Act, if the requirements of both sections 9 and 15 are met.
              [64 FR 48925, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]

            Correction, Disclaimer, Surrender, Etc.

              § 2.171
              New certificate on change of ownership.
              (a) Full change of ownership. If the ownership of a registered mark changes, the new owner may request that a new certificate of registration be issued in the name of the new owner. The assignment or other document changing title must be recorded in the Office. The request for the new certificate must include the fee required by § 2.6(a)(8) and be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter. In a registered extension of protection, the assignment must be recorded with the International Bureau of the World Intellectual Property Organization before it can be recorded in the Office (see § 7.22).
              (b) Partial change of ownership. (1) In a registration resulting from an application based on section 1 or section 44 of the Act, if ownership of a registration has changed with respect to some but not all of the goods and/or services, the owner(s) may file a request that the registration be divided into two or more separate registrations. The assignment or other document changing title must be recorded in the Office. The request to divide must include the fee required by § 2.6(a)(8) for each new registration created by the division, and be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with § 2.193(e)(2) of this chapter.

              (2)(i) When the International Bureau of the World Intellectual Property Organization notifies the Office that an international registration has been divided as the result of a change of ownership with respect to some but not all of the goods and/or services, the Office will construe the International Bureau's notice as a request to divide. The Office will update Office records to reflect the change in ownership, divide out the assigned goods and/or services from the registered extension of protection (parent registration), and publish notice of the parent registration in the Official Gazette.

              (ii) The Office will create a new registration number for the child registration, and enter the information about the new registration in its automated records. The Office will notify the new owner that the new owner must pay the fee required by § 2.6 to obtain a new registration certificate for the child registration. It is not necessary for the new owner to file a separate request to divide.
              (iii) The Office will not divide a registered extension of protection unless the International Bureau notifies the Office that the international registration has been divided.
              [73 FR 67774, Nov. 17, 2008, as amended at 74 FR 54910, Oct. 26, 2009; 80 FR 2312, Jan. 16, 2015]

              § 2.172
              Surrender for cancellation.

              Upon application by the owner, the Director may permit any registration to be surrendered for cancellation. The application for surrender must be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter. When a registration has more than one class, one or more entire class(es) but fewer than the total number of classes may be surrendered. Deletion of fewer than all the goods or services in a single class constitutes amendment of the registration as to that class (see § 2.173), rather than surrender. A surrender for cancellation may not subsequently be withdrawn.
              [80 FR 2312, Jan. 16, 2015]

              § 2.173
              Amendment of registration.
              (a) Form of amendment. The owner of a registration may apply to amend a registration or to disclaim part of the mark in the registration. The owner must submit a written request specifying the amendment or disclaimer. If the registration is involved in an inter partes proceeding before the Trademark Trial and Appeal Board, the request must be filed by appropriate motion to the Board.
              (b) Requirements for request. A request for amendment or disclaimer must:
              (1) Include the fee required by § 2.6;
              (2) Be verified and signed in accordance with § 2.193(e)(6); and
              (3) If the amendment involves a change in the mark: one new specimen per class showing the mark as used on or in connection with the goods, services, or collective membership organization; a verified statement that the specimen was in use in commerce at least as early as the filing date of the amendment; and a new drawing of the amended mark. When requested by the Office, additional specimens must be provided.
              (4) The Office may require the owner to furnish such specimens, information, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the amendment.
              (c) Registration must still contain registrable matter. The registration as amended must still contain registrable matter, and the mark as amended must be registrable as a whole.
              (d) Amendment may not materially alter the mark. An amendment or disclaimer that materially alters the character of the mark will not be permitted, in accordance with section 7(e) of the Act.
              (e) Amendment of identification of goods, services, or collective membership organization. No amendment in the identification of goods or services, or description of the nature of the collective membership organization, in a registration will be permitted except to restrict the identification or to change it in ways that would not require republication of the mark.
              (f) Amendment of certification statement for certification marks. An amendment of the certification statement specified in § 2.45(a)(4)(i)(A) or (a)(4)(ii)(A) that would materially alter the certification statement will not be permitted, in accordance with section 7(e) of the Act.
              (g) Conforming amendments may be required. If the registration includes a disclaimer, description of the mark, or other miscellaneous statement, any request to amend the registration must include a request to make any necessary conforming amendments to the disclaimer, description, or other statement.
              (h) Elimination of disclaimer. No amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought.
              (i) No amendment to add or delete section 2(f) claim of acquired distinctiveness. An amendment seeking the addition or deletion of a claim of acquired distinctiveness will not be permitted.
              [73 FR 67774, Nov. 17, 2008, as amended at 77 FR 30207, May 22, 2012; 80 FR 33189, June 11, 2015]

              § 2.174
              Correction of Office mistake.
              Whenever Office records clearly disclose a material mistake in a registration, incurred through the fault of the Office, the Office will issue a certificate of correction stating the fact and nature of the mistake, signed by the Director or by an employee designated by the Director, without charge. Thereafter, the corrected certificate shall have the same effect as if it had been originally issued in the corrected form. In the discretion of the Director, the Office may issue a new certificate of registration without charge.
              [73 FR 67774, Nov. 17, 2008]

              § 2.175
              Correction of mistake by owner.
              (a) Whenever a mistake has been made in a registration and a showing has been made that the mistake occurred in good faith through the fault of the owner, the Director may issue a certificate of correction. In the discretion of the Director, the Office may issue a new certificate upon payment of the required fee, provided that the correction does not involve such changes in the registration as to require republication of the mark.
              (b) An application for such action must:
              (1) Include the following:

              (i) Specification of the mistake for which correction is sought;
              (ii) Description of the manner in which it arose; and
              (iii) A showing that it occurred in good faith;
              (2) Be verified; and
              (3) Be accompanied by the required fee.
              (Sec. 7, 60 Stat. 430, as amended; 15 U.S.C. 1057)
              [30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 69 FR 51364, Aug. 19, 2004; 73 FR 67774, Nov. 17, 2008; 80 FR 33189, June 11, 2015]

              § 2.176
              Consideration of above matters.

              The matters in §§ 2.171 to 2.175 will be considered in the first instance by the Post Registration examiners, except for requests to amend registrations involved in inter partes proceedings before the Trademark Trial and Appeal Board, as specified in § 2.173(a), which shall be considered by the Board. If an action of the examiner is adverse, the owner of the registration may petition the Director to review the action under § 2.146. If the owner does not respond to an adverse action of the examiner within six months of the date of issuance, the matter will be considered abandoned.
              [73 FR 67774, Nov. 17, 2008]

            Term and Renewal

              Authority:
              Secs. 2.181 to 2.184 also issued under sec. 9, 60 Stat. 431; 15 U.S.C. 1059.

              § 2.181
              Term of original registrations and renewals.
              (a)(1) Subject to the provisions of section 8 of the Act requiring an affidavit or declaration of continued use or excusable nonuse, registrations issued or renewed prior to November 16, 1989, whether on the Principal Register or on the Supplemental Register, remain in force for twenty years from their date of issue or the date of renewal, and may be further renewed for periods of ten years, unless previously cancelled or surrendered.
              (2) Subject to the provisions of section 8 of the Act requiring an affidavit or declaration of continued use or excusable nonuse, registrations issued or renewed on or after November 16, 1989, whether on the Principal Register or on the Supplemental Register, remain in force for ten years from their date of issue or the date of renewal, and may be further renewed for periods of ten years, unless previously cancelled or surrendered.
              (b) Registrations issued under the Acts of 1905 and 1881 remain in force for their unexpired terms and may be renewed in the same manner as registrations under the Act of 1946.
              (c) Registrations issued under the Act of 1920 cannot be renewed unless renewal is required to support foreign registrations and in such case may be renewed on the Supplemental Register in the same manner as registrations under the Act of 1946.
              [30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37597, Sept. 11, 1989; 64 FR 48926, Sept. 8, 1999]

              § 2.182
              Time for filing renewal application.
              An application for renewal must be filed within one year before the expiration date of the registration, or within the six-month grace period after the expiration date of the registration. If no renewal application is filed within this period, the registration will expire.
              [64 FR 48926, Sept. 8, 1999]

              § 2.183
              Requirements for a complete renewal application.
              A complete renewal application must include:
              (a) A request for renewal of the registration, signed by the registrant or the registrant's representative;
              (b) The fee required by § 2.6 for each class;
              (c) The additional fee required by § 2.6 for each class if the renewal application is filed during the six-month grace period set forth in section 9(a) of the Act;
              (d) If the renewal application covers less than all the goods, services, or classes in the registration, then a list specifying the particular goods, services, or classes to be renewed.

              (e) If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes and the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied. Additional fee(s) may be submitted if the requirements of § 2.185 are met. If the required fee(s) are not submitted and the class(es) to which the original fee(s) should be applied are not specified, the Office will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class.
              (f) Renewals of registrations issued under a prior classification system will be processed on the basis of that system, unless the registration has been amended to adopt international classification pursuant to § 2.85(e)(3).
              [64 FR 48926, Sept. 8, 1999, as amended at 67 FR 79523, Dec. 30, 2002; 73 FR 67775, Nov. 17, 2008; 80 FR 33189, June 11, 2015]

              § 2.184
              Refusal of renewal.
              (a) If the renewal application is not acceptable, the Office will issue a notice stating the reason(s) for refusal.
              (b)(1) The registrant must file a response to the refusal of renewal within six months of the date of issuance of the Office action, or before the expiration date of the registration, whichever is later. If no response is filed within this time period, the registration will expire, unless time remains in the grace period under section 9(a) of the Act. If time remains in the grace period, the registrant may file a complete new renewal application.
              (2) The response must be signed by the registrant, someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2).
              (c) If the renewal application is not filed within the time periods set forth in section 9(a) of the Act, the registration will expire.
              [64 FR 48926, Sept. 8, 1999, as amended at 73 FR 67775, Nov. 17, 2008; 74 FR 54910, Oct. 26, 2009]

              § 2.185
              Correcting deficiencies in renewal application.
              (a) If the renewal application is filed within the time periods set forth in section 9(a) of the Act, deficiencies may be corrected after notification from the Office, as follows:
              (1) Correcting deficiencies in renewal applications filed within one year before the expiration date of the registration. If the renewal application is filed within one year before the expiration date of the registration, deficiencies may be corrected before the expiration date of the registration without paying a deficiency surcharge. Deficiencies may be corrected after the expiration date of the registration with payment of the deficiency surcharge required by section 9(a) of the Act and § 2.6.
              (2) Correcting deficiencies in renewal applications filed during the grace period. If the renewal application is filed during the six-month grace period, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 9(a) of the Act and § 2.6.
              (b) If the renewal application is not filed within the time periods set forth in section 9(a) of the Act, the registration will expire. This deficiency cannot be cured.
              [64 FR 48926, Sept. 8, 1999, as amended at 80 FR 2312, Jan. 16, 2015]

              § 2.186
              Petition to Director to review refusal of renewal.
              (a) A response to the examiner's initial refusal of the renewal application is required before filing a petition to the Director, unless the examiner directs otherwise. See § 2.184(b) for the deadline for responding to an examiner's Office action.
              (b) If the examiner maintains the refusal of the renewal application, a petition to the Director to review the refusal may be filed. The petition must be filed within six months of the date of issuance of the Office action maintaining the refusal, or the renewal application will be abandoned and the registration will expire.
              (c) A decision by the Director is necessary before filing an appeal or commencing a civil action in any court.
              [64 FR 48926, Sept. 8, 1999, as amended at 73 FR 67775, Nov. 17, 2008]

            General Information and Correspondence in Trademark Cases

              Source:
              68 FR 48289, Aug. 13, 2003, unless otherwise noted.

              §§ 2.188
              [Reserved]

              § 2.189
              Requirement to provide domicile address.
              An applicant or registrant must provide and keep current the address of its domicile, as defined in § 2.2(o).
              [84 FR 31511, July 2, 2019]

              § 2.190
              Addresses for trademark correspondence with the United States Patent and Trademark Office.
              (a) Paper trademark documents. In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. Trademark-related documents to be delivered by hand, private courier, or other delivery service may be delivered during the hours the Office is open to receive correspondence to the Trademark Assistance Center, James Madison Building—East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia 22314.
              (b) Electronic trademark documents. Trademark documents filed electronically must be submitted through TEAS. Documents that relate to proceedings before the Trademark Trial and Appeal Board must be filed electronically with the Board through ESTTA.
              (c) Trademark assignment documents. Requests to record documents in the Assignment Recordation Branch may be filed electronically through ETAS. Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be addressed as designated in § 3.27 of this chapter.
              (d) Requests for certified copies of trademark documents. Paper requests for certified copies of trademark documents must be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
              (e) Certain documents relating to international applications and registrations. International applications under § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacements under § 7.28, requests for transformation under § 7.31 of this chapter, and petitions to the Director to review an action of the Office's Madrid Processing Unit must be addressed to: Madrid Processing Unit, 600 Dulany Street, Alexandria, VA 22314-5796.
              [84 FR 37096, July 31, 2019]

              § 2.191
              Action of the Office based on the written record.
              All business with the Office must be transacted in writing. The action of the Office will be based exclusively on the written record. No consideration will be given to any alleged oral promise, stipulation, or understanding when there is disagreement or doubt.
              [84 FR 37096, July 31, 2019]

              § 2.192
              Business to be conducted with decorum and courtesy.
              Trademark applicants, registrants, and parties to proceedings before the Trademark Trial and Appeal Board and their attorneys or agents are required to conduct their business with decorum and courtesy. Documents presented in violation of this requirement will be submitted to the Director and will be returned by the Director's direct order. Complaints against trademark examining attorneys and other employees must be made in correspondence separate from other documents.

              § 2.193
              Trademark correspondence and signature requirements.
              (a) Signature required. Each piece of correspondence that requires a signature must bear:
              (1) A handwritten signature personally signed in permanent ink by the person named as the signatory, or a true copy thereof; or

              (2) An electronic signature that meets the requirements of paragraph (c) of this section, personally entered by the person named as the signatory. The Office will accept an electronic signature that meets the requirements of paragraph (c) of this section on correspondence filed on paper or through TEAS or ESTTA.
              (b) Copy of original signature. If a copy of an original signature is filed, the filer should retain the original as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.
              (c) Requirements for electronic signature. A person signing a document electronically must:
              (1) Personally enter any combination of letters, numbers, spaces and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (“/”) symbols in the signature block on the electronic submission; or
              (2) Sign the document using some other form of electronic signature specified by the Director.
              (d) Signatory must be identified. The first and last name, and the title or position, of the person who signs a document in connection with a trademark application, registration, or proceeding before the Trademark Trial and Appeal Board must be set forth immediately below or adjacent to the signature.
              (e) Proper person to sign. Documents filed in connection with a trademark application or registration must be signed as specified in paragraphs (e)(1) through (9) of this section:
              (1) Verified statement of facts. A verified statement in support of an application for registration, amendment to an application for registration, allegation of use under § 2.76 or § 2.88, request for extension of time to file a statement of use under § 2.89, or an affidavit under section 8, 12(c), 15, or 71 of the Act must satisfy the requirements of § 2.2(n), and be signed by the owner or a person properly authorized to sign on behalf of the owner. A person who is properly authorized to verify facts on behalf of an owner is:
              (i) A person with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership);
              (ii) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
              (iii) An attorney as defined in § 11.1 of this chapter who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
              (2) Responses, amendments to applications, requests for express abandonment, requests for reconsideration of final actions, and requests to divide. Responses to Office actions, amendments to applications, requests for express abandonment, requests for reconsideration of final actions, and requests to divide must be signed by the owner of the application or registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the following guidelines:
              (i) If the owner is represented by a practitioner qualified to practice before the Office under § 11.14 of this chapter, the practitioner must sign, except where the owner is required to sign the correspondence; or
              (ii) If the owner is not represented by a practitioner qualified to practice under § 11.14 of this chapter, the individual owner or someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership) must sign. In the case of joint owners who are not represented by a qualified practitioner, all must sign.
              (3) Powers of attorney and revocations of powers of attorney. Powers of attorney and revocations of powers of attorney must be signed by the individual applicant, registrant or party to a proceeding pending before the Office, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants, registrants, or parties, all must sign. Once the applicant, registrant or party has designated a qualified practitioner(s), the named practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to prosecute the application or registration. If the applicant, registrant, or party revokes the original power of attorney, the revocation discharges any associate power signed by the practitioner whose power has been revoked. If the practitioner who signed an associate power withdraws, the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the Office.
              (4) Petitions to revive under § 2.66. A petition to revive under § 2.66 must be signed by someone with firsthand knowledge of the facts regarding unintentional delay.
              (5) Petitions to Director under § 2.146 or § 2.147. A petition to the Director under § 2.146 or § 2.147 must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the following guidelines:
              (i) If the petitioner is represented by a practitioner qualified to practice before the Office under § 11.14 of this chapter, the practitioner must sign; or
              (ii) If the petitioner is not represented by a practitioner authorized to practice before the Office under § 11.14 of this chapter, the individual petitioner or someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership) must sign. In the case of joint petitioners, all must sign.
              (6) Requests for correction, amendment or surrender of registrations. A request for correction, amendment or surrender of a registration must be signed by the owner of the registration, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice before the Office under § 11.14 of this chapter. In the case of joint owners who are not represented by a qualified practitioner, all must sign.
              (7) Renewal applications. A renewal application must be signed by the registrant or the registrant's representative.
              (8) Designations and revocations of domestic representative. A designation or revocation of a domestic representative must be signed by the applicant or registrant, someone with legal authority to bind the applicant or registrant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter. In the case of joint applicants or registrants, all must sign.
              (9) Requests to change correspondence address in an application or registration. A notice of change of correspondence address in an application or registration must be signed by the applicant or registrant, someone with legal authority to bind the applicant or registrant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the following guidelines:
              (i) If the applicant or registrant is represented by a practitioner qualified to practice before the Office under § 11.14 of this chapter, the practitioner must sign; or

              (ii) If the applicant or registrant is not represented by a practitioner qualified to practice before the Office under § 11.14, the individual applicant or registrant or someone with legal authority to bind the applicant or registrant (e.g., a corporate officer or general partner of a partnership) must sign. In the case of joint applicants or joint registrants, all must sign.
              (10) Cover letters. A person transmitting paper documents to the Office may sign a cover letter or transmittal letter. The Office neither requires cover letters nor questions the authority of a person who signs a communication that merely transmits paper documents.
              (f) Signature as certification. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by any person, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter. Violations of § 11.18(b) of this chapter may jeopardize the validity of the application or registration, and may result in the imposition of sanctions under § 11.18(c) of this chapter. Any practitioner violating § 11.18(b) of this chapter may also be subject to disciplinary action. See § 11.18(d) and § 11.804 of this chapter.
              (g) Separate copies for separate files. (1) Since each file must be complete in itself, a separate copy of every document filed in connection with a trademark application, registration, or inter partes proceeding must be furnished for each file to which the document pertains, even though the documents filed in multiple files may be identical.
              (2) Parties should not file duplicate copies of documents in a single application, registration, or proceeding file, unless the Office requires the filing of duplicate copies.
              (h) Separate documents for separate branches of the Office. Since different branches or sections of the Office may consider different matters, each distinct subject, inquiry or order must be contained in a separate document to avoid confusion and delay in answering correspondence.
              (i) Certified documents required by statute. When a statute requires that a document be certified, a copy or facsimile transmission of the certification is not acceptable.
              [74 FR 54910, Oct. 26, 2009, as amended at 80 FR 33189, June 11, 2015; 83 FR 1559, Jan. 12, 2018; 84 FR 37096, July 31, 2019]

              § 2.194
              Identification of trademark application or registration.
              (a) No correspondence relating to a trademark application should be filed prior to receipt of the application serial number.
              (b) (1) A letter about a trademark application should identify the serial number, the name of the applicant, and the mark.
              (2) A letter about a registered trademark should identify the registration number, the name of the registrant, and the mark.

              § 2.195
              Filing date of trademark correspondence.
              The filing date of trademark correspondence is determined as follows:
              (a) Electronic submissions. The filing date of an electronic submission is the date the Office receives the submission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
              (b) Paper correspondence. The filing date of a submission submitted on paper is the date the Office receives the submission, except as follows:
              (1) Priority Mail Express®. The filing date of the submission is the date of deposit with the USPS, if filed pursuant to the requirements of § 2.198.
              (2) Certificate of mailing. The filing date of the submission is the date of deposit with the USPS, if filed pursuant to the requirements of § 2.197.
              (3) Office closed. The Office is not open to receive paper correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia.
              (c) Email and facsimile submissions. Email and facsimile submissions are not permitted and, if submitted, will not be accorded a date of receipt.
              (d) Interruptions in USPS. If the Director designates a postal service interruption or emergency within the meaning of 35 U.S.C. 21(a), any person attempting to file correspondence by Priority Mail Express® Post Office to Addressee service who was unable to deposit the correspondence with the USPS due to the interruption or emergency may petition the Director to consider such correspondence as filed on a particular date in the Office. The petition must:
              (1) Be filed promptly after the ending of the designated interruption or emergency;
              (2) Include the original correspondence or a copy of the original correspondence; and
              (3) Include a statement that the correspondence would have been deposited with the USPS on the requested filing date but for the designated interruption or emergency in Priority Mail Express® service; and that the correspondence attached to the petition is the original correspondence or a true copy of the correspondence originally attempted to be deposited as Priority Mail Express® on the requested filing date.
              [84 FR 37097, July 31, 2019]

              § 2.196
              Times for taking action: Expiration on Saturday, Sunday or Federal holiday.

              Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by regulation under this part for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day that is not a Saturday, Sunday, or a Federal holiday.

              § 2.197
              Certificate of mailing.
              (a) The filing date of correspondence submitted under this section is the date of deposit with the USPS if the correspondence:
              (1) Is addressed as set out in § 2.190 and deposited with the USPS with sufficient postage as first-class mail; and
              (2) Includes a certificate of mailing for each piece of correspondence that:
              (i) Attests to the mailing and the address used;
              (ii) Includes the name of the document and the application serial number or USPTO reference number, if assigned, or registration number to which the document pertains;
              (iii) Is signed separately from any signature for the correspondence by a person who has a reasonable basis to expect that the correspondence would be mailed on the date indicated; and
              (iv) Sets forth the date of deposit with the USPS.
              (b) If correspondence is mailed in accordance with paragraph (a) of this section, but not received by the Office, the party who mailed such correspondence may file a petition to the Director under § 2.146(a)(2) to consider such correspondence filed in the Office on the date of deposit with the USPS. The petition must:
              (1) Be filed within two months after the date of mailing;
              (2) Include a copy of the previously mailed correspondence and certificate; and
              (3) Include a verified statement attesting to the facts of the original mailing.
              (c) If the certificate of mailing does not meet the requirements of paragraph (a)(2) of this section, the filing date is the date the Office receives the submission.
              [84 FR 37097, July 31, 2019]

              § 2.198
              Filing of correspondence by Priority Mail Express®.
              (a) The filing date of correspondence submitted under this section is the date of deposit with the USPS, as shown by the “date accepted” on the Priority Mail Express® label or other official USPS notation.
              (b) If the USPS deposit date cannot be determined, the filing date is the date the Office receives the submission.
              (c) If there is a discrepancy between the filing date accorded by the Office to the correspondence and the “date accepted,” the party who submitted the correspondence may file a petition to the Director under § 2.146(a)(2) to accord the correspondence a filing date as of the “date accepted.” The petition must:
              (1) Be filed within two months after the date of deposit;
              (2) Include a true copy of the Priority Mail Express® mailing label showing the “date accepted,” and any other official notation by the USPS relied upon to show the date of deposit; and
              (3) Include a verified statement attesting to the facts of the original mailing.
              (d) If the party who submitted the correspondence can show that the “date accepted” was incorrectly entered or omitted by the USPS, the party may file a petition to the Director under § 2.146(a)(2) to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS. The petition must:
              (1) Be filed within two months after the date of deposit;
              (2) Include proof that the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup on the requested filing date. Such proof must be corroborated by evidence from the USPS or evidence that came into being within one business day after the date of deposit; and
              (3) Include a verified statement attesting to the facts of the original mailing.

              (e) If correspondence is properly addressed to the Office pursuant to § 2.190 and deposited with sufficient postage in the Priority Mail Express® Post Office to Addressee service of the USPS, but not received by the Office, the party who submitted the correspondence may file a petition to the Director under § 2.146(a)(2) to consider such correspondence filed in the Office on the USPS deposit date. The petition must:

              (1) Be filed within two months after the date of deposit;
              (2) Include a copy of the previously mailed correspondence showing the number of the Priority Mail Express® mailing label thereon; and
              (3) Include a verified statement attesting to the facts of the original mailing.
              [84 FR 37097, July 31, 2019]

            Trademark Records and Files of the Patent and Trademark Office

              Source:
              68 FR 48292, Aug. 13, 2003, unless otherwise noted.

              § 2.200
              Assignment records open to public inspection.
              (a)(1) Separate assignment records are maintained in the Office for patents and trademarks. The assignment records relating to trademark applications and registrations (for assignments recorded on or after January 1, 1955) are open to public inspection at the Office, and copies of those assignment records may be obtained upon request and payment of the fee set forth in § 2.6 of this chapter.
              (2) All records of trademark assignments recorded before January 1, 1955, 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) 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.
              [68 FR 48292, Aug. 13, 2003, as amended at 81 FR 72707, Oct. 21, 2016]

              § 2.201
              Copies and certified copies.
              (a) Non-certified copies of trademark registrations and of any trademark records or trademark documents within the jurisdiction of the Office and open to the public, will be furnished by the Office to any person entitled thereto, upon payment of the appropriate fee required by § 2.6.
              (b) Certified copies of trademark registrations and of any trademark records or trademark documents within the jurisdiction of the Office and open to the public will be authenticated by the seal of the Office and certified by the Director, or in his or her name attested by an officer of the Office authorized by the Director, upon payment of the fee required by § 2.6.

            Fees and Payment of Money in Trademark Cases

              Source:
              68 FR 48292, Aug. 13, 2003, unless otherwise noted.

              § 2.206
              Trademark fees payable in advance.
              (a) Trademark fees and charges payable to the Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable.
              (b) All fees paid to the Office must be itemized in each individual trademark application or registration file, or trademark proceeding, so that the purpose for which the fees are paid is clear. The Office may return fees that are not itemized as required by this paragraph.

              § 2.207
              Methods of payment.
              (a) All payments of money required in trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier's or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.

              (b) Payments of money required for trademark fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
              [68 FR 48292, Aug. 13, 2003, as amended at 69 FR 43752, July 22, 2004]

              § 2.208
              Deposit accounts.
              (a) For the convenience of attorneys, and the general public in paying any fees due, in ordering copies of records, or services offered by the Office, deposit accounts may be established in the Office. A minimum deposit of $1,000 is required for paying any fees due or in ordering any services offered by the Office. The Office will issue a deposit account statement at the end of each month. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit. An amount sufficient to cover all fees, copies, or services requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 2.6(b)(11)) will be assessed for each month that the balance at the end of the month is below $1,000.
              (b) A general authorization to charge all fees, or only certain fees to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular document filed. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
              (c) A deposit account holder may replenish the deposit account by submitting a payment to the Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
              (1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder's bank or financial institution:
              (i) Name of the Bank, which is Treas NYC (Treasury New York City);
              (ii) Bank Routing Code, which is 021030004;
              (iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
              (iv) The deposit account holder's company name and deposit account number.

              (2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office's Internet Web site (www.uspto.gov).
              (3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
              [68 FR 48292, Aug. 13, 2003, as amended at 69 FR 43752, July 22, 2004; 70 FR 56128, Sept. 26, 2005; 73 FR 67775, Nov. 17, 2008; 81 FR 72707, Oct. 21, 2016]

              § 2.209
              Refunds.

              (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a trademark application, appeal or other trademark filing for which a fee was paid, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
              (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph. If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 2.208(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
              PART 3—ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

                Editorial Note:
                Part 3 pertaining to both patents and trademarks is placed in the grouping pertaining to patents regulations.

              PART 4—COMPLAINTS REGARDING INVENTION PROMOTERS

                Editorial Note:
                Part 4 is placed in the separate grouping of parts pertaining to patents regulations.

              PART 5—SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES

                Editorial Note:
                Part 5 is placed in the separate grouping of parts pertaining to patents regulations.

          Pt. 6
          PART 6—CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT

            Sec.
            6.1
            International schedule of classes of goods and services.
            6.2
            Prior U.S. schedule of classes of goods and services.
            6.3
            Schedule for certification marks.
            6.4
            Schedule for collective membership marks.

            Authority:
            Secs. 30, 41, 60 Stat. 436, 440; 15 U.S.C. 1112, 1123; 35 U.S.C. 2, unless otherwise noted.

            § 6.1
            International schedule of classes of goods and services.

              Goods
              1. Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing and fire prevention compositions; tempering and soldering preparations; substances for tanning animal skins and hides; adhesives for use in industry; putties and other paste fillers; compost, manures, fertilizers; biological preparations for use in industry and science.
              2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants, dyes; inks for printing, marking and engraving; raw natural resins; metals in foil and powder form for use in painting, decorating, printing and art.
              3. Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.
              4. Industrial oils and greases, wax; lubricants; dust absorbing, wetting and binding compositions; fuels and illuminants; candles and wicks for lighting.
              5. Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
              6. Common metals and their alloys, ores; metal materials for building and construction; transportable buildings of metal; non-electric cables and wires of common metal; small items of metal hardware; metal containers for storage or transport; safes.
              7. Machines, machine tools, power-operated tools; motors and engines, except for land vehicles; machine coupling and transmission components, except for land vehicles; agricultural implements, other than hand-operated hand tools; incubators for eggs; automatic vending machines.
              8. Hand tools and implements, hand-operated; cutlery; side arms, except firearms; razors.

              9. Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity; apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data; recorded and downloadable media, computer software, blank digital or analogue recording and storage media; mechanisms for coin-operated apparatus; cash registers, calculating devices; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus.
              10. Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for persons with disabilities; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.
              11. Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes.
              12. Vehicles; apparatus for locomotion by land, air or water.
              13. Firearms; ammunition and projectiles; explosives; fireworks.
              14. Precious metals and their alloys; jewellery, precious and semi-precious stones; horological and chronometric instruments.
              15. Musical instruments; music stands and stands for musical instruments; conductors' batons.
              16. Paper and cardboard; printed matter; bookbinding material; photographs; stationery and office requisites, except furniture; adhesives for stationery or household purposes; drawing materials and materials for artists; paintbrushes; instructional and teaching materials; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks.
              17. Unprocessed and semi-processed rubber, gutta-percha, gum, asbestos, mica and substitutes for all these materials; plastics and resins in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses, not of metal.
              18. Leather and imitations of leather; animal skins and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals.
              19. Materials, not of metal, for building and construction; rigid pipes, not of metal, for building; asphalt, pitch, tar and bitumen; transportable buildings, not of metal; monuments, not of metal.
              20. Furniture, mirrors, picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber.
              21. Household or kitchen utensils and containers; cookware and tableware, except forks, knives and spoons; combs and sponges; brushes, except paintbrushes; brush-making materials; articles for cleaning purposes; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware.
              22. Ropes and string; nets; tents and tarpaulins; awnings of textile or synthetic materials; sails; sacks for the transport and storage of materials in bulk; padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics; raw fibrous textile materials and substitutes therefor.
              23. Yarns and threads for textile use.
              24. Textiles and substitutes for textiles; household linen; curtains of textile or plastic.
              25. Clothing, footwear, headwear.
              26. Lace, braid and embroidery, and haberdashery ribbons and bows; buttons, hooks and eyes, pins and needles; artificial flowers; hair decorations; false hair.
              27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings, not of textile.
              28. Games, toys and playthings; video game apparatus; gymnastic and sporting articles; decorations for Christmas trees.
              29. Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yogurt and other milk products; oils and fats for food.
              30. Coffee, tea, cocoa and artificial coffee; rice, pasta and noodles; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; chocolate; ice cream, sorbets and other edible ices; sugar, honey, treacle; yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water).
              31. Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; live animals; foodstuffs and beverages for animals; malt.
              32. Beers; non-alcoholic beverages; mineral and aerated waters; fruit beverages and fruit juices; syrups and other non-alcoholic preparations for making beverages.
              33. Alcoholic beverages, except beers; alcoholic preparations for making beverages.
              34. Tobacco and tobacco substitutes; cigarettes and cigars; electronic cigarettes and oral vaporizers for smokers; smokers' articles; matches.
              Services

              35. Advertising; business management; business administration; office functions.

              36. Insurance; financial affairs; monetary affairs; real estate affairs.
              37. Construction services; installation and repair services; mining extraction, oil and gas drilling.
              38. Telecommunications services.
              39. Transport; packaging and storage of goods; travel arrangement.
              40. Treatment of materials; recycling of waste and trash; air purification and treatment of water; printing services; food and drink preservation.
              41. Education; providing of training; entertainment; sporting and cultural activities.
              42. Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software.
              43. Services for providing food and drink; temporary accommodation.
              44. Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services.
              45. Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.

            [84 FR 65682, Nov. 29, 2019]

            § 6.2
            Prior U.S. schedule of classes of goods and services.

                Class
                Title

                  Goods

                1
                Raw or partly prepared materials.

                2
                Receptacles.

                3
                Baggage, animal equipments, portfolios, and pocket books.

                4
                Abrasives and polishing materials.

                5
                Adhesives.

                6
                Chemicals and chemical compositions.

                7
                Cordage.

                8
                Smokers' articles, not including tobacco products.

                9
                Explosives, firearms, equipments, and projectiles.

                10
                Fertilizers.

                11
                Inks and inking materials.

                12
                Construction materials.

                13
                Hardware and plumbing and steamfitting supplies.

                14
                Metals and metal castings and forgings.

                15
                Oils and greases.

                16
                Protective and decorative coatings.

                17
                Tobacco products.

                18
                Medicines and pharmaceutical preparations.

                19
                Vehicles.

                20
                Linoleum and oiled cloth.

                21
                Electrical apparatus, machines, and supplies.

                22
                Games, toys, and sporting goods.

                23
                Cutlery, machinery, and tools, and parts thereof.

                24
                Laundry appliances and machines.

                25
                Locks and safes.

                26
                Measuring and scientific appliances.

                27
                Horological instruments.

                28
                Jewelry and precious-metal ware.

                29
                Brooms, brushes, and dusters.

                30
                Crockery, earthenware, and porcelain.

                31
                Filters and refrigerators.

                32
                Furniture and upholstery.

                33
                Glassware.

                34
                Heating, lighting, and ventilating apparatus.

                35
                Belting, hose, machinery packing, and nonmetallic tires.

                36
                Musical instruments and supplies.

                37
                Paper and stationery.

                38
                Prints and publications.

                39
                Clothing.

                40
                Fancy goods, furnishings, and notions.

                41
                Canes, parasols, and umbrellas.

                42
                Knitted, netted, and textile fabrics, and substitutes therefor.

                43
                Thread and yarn.

                44
                Dental, medical, and surgical appliances.

                45
                Soft drinks and carbonated waters.

                46
                Foods and ingredients of foods.

                47
                Wines.

                48
                Malt beverages and liquors.

                49
                Distilled alcoholic liquors.

                50
                Merchandise not otherwise classified.

                51
                Cosmetics and toilet preparations.

                52
                Detergents and soaps.

                  Services

                100
                Miscellaneous.

                101
                Advertising and business.

                102
                Insurance and financial.

                103
                Construction and repair.

                104
                Communication.

                105
                Transportation and storage.

                106
                Material treatment.

                107
                Education and entertainment.

            [24 FR 10383, Dec. 22, 1959. Redesignated at 38 FR 14681, June 4, 1973]

            § 6.3
            Schedule for certification marks.
            In applications for registration of certification marks based on sections 1 and 44 of the Trademark Act and registrations resulting from such applications, goods and services are classified in two classes as follows:
            A. Goods.
            B. Services.
            [73 FR 67775, Nov. 15, 2008]

            § 6.4
            Schedule for collective membership marks.
            All collective membership marks in applications based on sections 1 and 44 of the Trademark Act and registrations resulting from such applications are classified as follows:

                Class
                Title

                200
                Collective Membership.

            [73 FR 67775, Nov. 17, 2008]

          Pt. 7
          PART 7—RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS

              Subpart A—General Information
              Sec.
              7.1
              Definitions of terms as used in this part.
              7.2
              [Reserved]
              7.3
              Correspondence must be in English.
              7.4
              International applications and registrations originating from the USPTO—Requirements to electronically file and communicate with the Office.
              7.5
              [Reserved]
              7.6
              Schedule of U.S. process fees.
              7.7
              Payments of fees to International Bureau.

              Subpart B—International Application Originating From the United States
              7.11
              Requirements for international application originating from the United States.
              7.12
              Claim of color.
              7.13
              Certification of international application.
              7.14
              Correcting irregularities in international application.

              Subpart C—Subsequent Designation Submitted Through the Office
              7.21
              Subsequent designation.

              Subpart D—Recording Changes to International Registration
              7.22
              Recording changes to international registration.
              7.23
              Requests for recording assignments at the International Bureau.
              7.24
              Requests to record security interest or other restriction of holder's rights of disposal or release of such restriction submitted through the Office.

              Subpart E—Extension of Protection to the United States
              7.25
              Sections of part 2 applicable to extension of protection.
              7.26
              Filing date of extension of protection for purposes of examination in the Office.
              7.27
              Priority claim of extension of protection for purposes of examination in the Office.
              7.28
              Replacement of U.S. registration by registered extension of protection.
              7.29
              Effect of replacement on U.S. registration.
              7.30
              Effect of cancellation or expiration of international registration.
              7.31
              Requirements for transformation of an extension of protection to the United States into a U.S. application.

              Subpart F—Affidavit Under Section 71 of the Act for Extension of Protection to the United States
              7.36
              Affidavit or declaration of use in commerce or excusable nonuse required to avoid cancellation of an extension of protection to the United States.
              7.37
              Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse.
              7.38
              Notice to holder of extension of protection.
              7.39
              Acknowledgment of receipt of and correcting deficiencies in affidavit or declaration of use in commerce or excusable nonuse.
              7.40
              Petition to Director to review refusal.

              Subpart G—Renewal of International Registration and Extension of Protection
              7.41
              Renewal of international registration and extension of protection.

            Authority:
            15 U.S.C. 1123, 35 U.S.C. 2, unless othe rwise noted.

            Source:
            68 FR 55769, Sept. 26, 2003, unless otherwise noted.

            Subpart A—General Information

              § 7.1
              Definitions of terms as used in this part.
              (a) the Act means the Trademark Act of 1946, 60 Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.

              (b) Subsequent designation means a request for extension of protection of an international registration to a Contracting Party made after the International Bureau registers the mark.
              (c) The acronym TEAS means the Trademark Electronic Application System, and, as used in this part, includes all related electronic systems required to complete an electronic submission through TEAS.
              (d) The term Office or the abbreviation USPTO means the United States Patent and Trademark Office.

              (e) All references to sections in this part refer to 37 Code of Federal Regulations, except as otherwise stated.

              (f) The definitions specified in § 2.2 of this chapter apply to this part.
              [68 FR 55769, Sept. 26, 2003, as amended at 80 FR 33190, June 11, 2015; 84 FR 31511, July 2, 2019; 84 FR 37098, July 31, 2019]

              § 7.2
              [Reserved]

              § 7.3
              Correspondence must be in English.
              International applications and registrations, requests for extension of protection and all other related correspondence with the Office must be in English. The Office will not process correspondence that is in a language other than English.

              § 7.4
              International applications and registrations originating from the USPTO—Requirements to electronically file and communicate with the Office.
              (a) Unless stated otherwise in this chapter, all correspondence filed with the USPTO relating to international applications and registrations originating from the USPTO must be submitted through TEAS and include a valid email address for correspondence.
              (b) Applicants and registrants under this section must provide and maintain a valid email address for correspondence with the Office.
              (c) If an applicant or registrant under this section is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraphs (a) and (b) of this section do not apply.
              (d) If TEAS is unavailable, or in an extraordinary situation, an applicant or registrant under this section who is required to file a submission through TEAS may submit a petition to the Director under § 2.146(a)(5) and (c) of this chapter to accept the submission filed on paper.
              [84 FR 37098, July 31, 2019]

              § 7.5
              [Reserved]

              § 7.6
              Schedule of U.S. process fees.
              (a) The Office requires the following process fees:
              (1) Certification of international application based on single application or registration. (i) For certifying an international application based on a single basic application or registration, filed on paper, per class—$200.00
              (ii) For certifying an international application based on a single basic application or registration, filed through TEAS, per class—$100.00
              (2) Certification of international application based on more than one application or registration. (i) For certifying an international application based on more than one basic application or registration filed on paper, per class—$250.00
              (ii) For certifying an international application based on more than one basic application or registration filed through TEAS, per class—$150.00
              (3) Transmission of subsequent designation. (i) For transmitting a subsequent designation under § 7.21, filed on paper—$200.00
              (ii) For transmitting a subsequent designation under § 7.21, filed through TEAS—$100.00
              (4) Transmission of request to record an assignment or restriction. (i) For transmitting a request to record an assignment or restriction, or release of a restriction, under § 7.23 or § 7.24 filed on paper—$200.00
              (ii) For transmitting a request to record an assignment or restriction, or release of a restriction, under § 7.23 or § 7.24 filed through TEAS—$100.00
              (5) Notice of replacement. (i) For filing a notice of replacement under § 7.28 on paper, per class—$200.00
              (ii) For filing a notice of replacement under § 7.28 through TEAS, per class—$100.00
              (6) Affidavit under section 71. (i) For filing an affidavit under section 71 of the Act on paper, per class—$225.00
              (ii) For filing an affidavit under section 71 of the Act through TEAS, per class—$125.00
              (7) Filing affidavit under section 71 during grace period. (i) Surcharge for filing an affidavit under section 71 of the Act during the grace period on paper, per class—$200.00
              (ii) Surcharge for filing an affidavit under section 71 of the Act during the grace period through TEAS, per class—$100.00
              (8) Correcting deficiency in section 71 affidavit. (i) For correcting a deficiency in a section 71 affidavit filed on paper—$200.00
              (ii) For correcting a deficiency in a section 71 affidavit filed through TEAS—$100.00

              (b) The fees required in paragraph (a) of this section must be paid in U.S. dollars at the time of submission of the requested action. See § 2.207 of this chapter for acceptable forms of payment and § 2.208 of this chapter for payments using a deposit account established in the Office.
              [81 FR 72708, Oct. 21, 2016]

              § 7.7
              Payments of fees to International Bureau.
              (a) For documents filed through TEAS, the following fees may be paid either directly to the International Bureau or through the Office:
              (1) International application fees;
              (2) Subsequent designation fees; and
              (3) Recording fee for an assignment of an international registration under § 7.23.
              (b) The fees in paragraph (a) of this section may be paid as follows:
              (1)(i) Directly to the International Bureau by debit to a current account with the International Bureau. In this case, an applicant or holder's submission to the Office must include the International Bureau account number; or
              (ii) Directly to the International Bureau using any other acceptable method of payment. In this case, an applicant or holder's submission to the Office must include the International Bureau receipt number for payment of the fees; or
              (2) Through the Office. Fees paid through the Office must be paid in U.S. dollars at the time of submission. See § 2.207 of this chapter for acceptable forms of payment and § 2.208 of this chapter for payments using a deposit account established in the Office.
              (c) All fees for paper filings must be paid directly to the International Bureau.

              (d) The International Bureau fee calculator may be viewed on the Web site of the World Intellectual Property Organization, currently available at: http://www.wipo.int/madrid/en/.

              [68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57185, Sept. 24, 2004]

            Subpart B—International Application Originating From the United States

              § 7.11
              Requirements for international application originating from the United States.
              (a) The Office will grant a date of receipt to an international application that is filed through TEAS in accordance with § 7.4(a), or typed on the official paper form issued by the International Bureau, if permitted under § 7.4(c) or accepted on petition pursuant to § 7.4(d). The international application must include all of the following:
              (1) The filing date and serial number of the basic application and/or the registration date and registration number of the basic registration;
              (2) The name and entity of the international applicant that is identical to the name and entity of the applicant or registrant in the basic application or basic registration, and the applicant's current address;
              (3) A reproduction of the mark that is the same as the mark in the basic application and/or registration and that meets the requirements of § 2.52 of this title.
              (i) If the mark in the basic application and/or registration is depicted in black and white and the basic application or registration does not include a color claim, the reproduction of the mark in the international application must be black and white.
              (ii) If the mark in the basic application or registration is depicted in black and white and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark.
              (iii) If the mark in the basic application and/or registration is depicted in color, the reproduction of the mark in the international application must be in color.
              (iv) If the international application is filed on paper, the mark must be no more than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide, and must appear in the box designated by the International Bureau on the International Bureau's official form;

              (4) A color claim as set out in § 7.12, if appropriate;

              (5) A description of the mark that is the same as the description of the mark in the basic application or registration, as appropriate;
              (6) An indication of the type of mark if the mark in the basic application and/or registration is a three-dimensional mark, a sound mark, a collective mark or a certification mark;

              (7) A list of the goods and/or services that is identical to or narrower than the list of goods and/or services in each claimed basic application or registration and classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
              (8) A list of the designated Contracting Parties. If the goods and/or services in the international application are not the same for each designated Contracting Party, the application must list the goods and/or services in the international application that pertain to each designated Contracting Party;
              (9) The certification fee required by § 7.6;

              (10) If the application is filed through TEAS, the international application fees for all classes, and the fees for all designated Contracting Parties identified in the international application (see § 7.7); and
              (11) A statement that the applicant is entitled to file an international application in the Office, specifying that applicant: Is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where an applicant's address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment.
              (b) For requirements for certification, see § 7.13.
              [68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57185, Sept. 24, 2004; 73 FR 67775, Nov. 17, 2008; 84 FR 37098, July 31, 2019]

              § 7.12
              Claim of color.
              (a) If color is claimed as a feature of the mark in the basic application and/or registration, the international application must include a statement that color is claimed as a feature of the mark and set forth the same name(s) of the color(s) claimed in the basic application and/or registration.
              (b) If color is not claimed as a feature of the mark in the basic application and/or registration, color may not be claimed as a feature of the mark in the international application.

              § 7.13
              Certification of international application.
              (a) When an international application contains all the elements set forth in § 7.11(a), the Office will certify to the International Bureau that the information contained in the international application corresponds to the information contained in the basic application(s) and/or basic registration(s) at the time of certification, and will then forward the international application to the International Bureau.
              (b) When an international application does not meet the requirements of § 7.11(a), the Office will not certify or forward the international application. If the international applicant paid the international application fees (see § 7.7) through the Office, the Office will refund the international fees. The Office will not refund the certification fee.

              § 7.14
              Correcting irregularities in international application.
              (a) Response period. Upon receipt of a notice of irregularities in an international application from the International Bureau, the applicant must respond to the International Bureau within the period set forth in the notice.
              (b) Classification and Identification of Goods and Services. Responses to International Bureau notices of irregularities in the classification or identification of goods or services in an international application must be submitted through the Office for forwarding to the International Bureau. The Office will review an applicant's response to a notice of irregularities in the identification of goods or services to ensure that the response does not identify goods or services that are broader than the scope of the goods or services in the basic application or registration.
              (c) Fees. If the International Bureau notice of irregularities requires the payment of fees, the fees for correcting irregularities in the international application must be paid directly to the International Bureau.
              (d) Other Irregularities Requiring Response from Applicant. Except for responses to irregularities mentioned in paragraph (b) of this section and payment of fees for correcting irregularities mentioned in paragraph (c) of this section, all other responses may be submitted through the Office in accordance with § 7.14(e), or filed directly at the International Bureau. The Office will forward timely responses to the International Bureau, but will not review the responses or respond to any irregularities on behalf of the international applicant.
              (e) Procedure for response. To be considered timely, a response must be received by the International Bureau before the end of the response period set forth in the International Bureau's notice. Receipt in the Office does not fulfill this requirement. Any response submitted through the Office for forwarding to the International Bureau should be submitted as soon as possible, but at least one month before the end of the response period in the International Bureau's notice. The Office will not process any response received in the Office after the International Bureau's response deadline.
              [68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004; 73 FR 67776, Nov. 17, 2008]

            Subpart C—Subsequent Designation Submitted Through the Office

              § 7.21
              Subsequent designation.
              (a) A subsequent designation may be filed directly with the International Bureau, or, if it meets the requirements of paragraph (b) of this section, submitted through the Office.
              (b) The Office will grant a date of receipt to a subsequent designation that is filed through TEAS in accordance with § 7.4(a), or typed on the official paper form issued by the International Bureau, if permitted under § 7.4(c) or accepted on petition pursuant to § 7.4(d). The subsequent designation must contain all of the following:
              (1) The international registration number;
              (2) The serial number of the U.S. application or registration number of the U.S. registration that formed the basis of the international registration;
              (3) The name and address of the holder of the international registration;
              (4) A statement that the holder is entitled to file a subsequent designation in the Office, specifying that holder: Is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where a holder's address is not in the United States, the holder must provide the address of its U.S. domicile or establishment;
              (5) A list of goods and/or services that is identical to or narrower than the list of goods and/or services in the international registration;
              (6) A list of the designated Contracting Parties. If the goods and/or services in the subsequent designation are not the same for each designated Contracting Party, the holder must list the goods and/or services covered by the subsequent designation that pertain to each designated Contracting Party;
              (7) The U.S. transmittal fee required by § 7.6; and

              (8) If the subsequent designation is filed through TEAS, the subsequent designation fees (see § 7.7).
              (c) If the subsequent designation is accorded a date of receipt, the Office will then forward the subsequent designation to the International Bureau.

              (d) If the subsequent designation fails to contain all the elements set forth in paragraph (b) of this section, the Office will not forward the subsequent designation to the International Bureau. The Office will notify the holder of the reason(s). If the holder paid the subsequent designation fees (see § 7.7) through the Office, the Office will refund the subsequent designation fees. The Office will not refund the transmittal fee.

              (e) Correspondence to correct any irregularities in a subsequent designation must be made directly with the International Bureau.
              [68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004; 85 FR 37098, July 31, 2019]

            Subpart D—Recording Changes to International Registration

              § 7.22
              Recording changes to international registration.
              Except as provided in §§ 7.23 and 7.24, requests to record changes to an international registration must be filed with the International Bureau. If a request to record an assignment or restriction of a holder's right of disposal of an international registration or the release of such a restriction meets the requirements of § 7.23 or 7.24, the Office will forward the request to the International Bureau. Section 10 of the Act and part 3 of this chapter are not applicable to assignments or restrictions of international registrations.

              § 7.23
              Requests for recording assignments at the International Bureau.
              A request to record an assignment of an international registration may be submitted through the Office for forwarding to the International Bureau only if the assignee cannot obtain the assignor's signature for the request to record the assignment.
              (a) A request to record an assignment submitted through the Office must include all of the following:
              (1) The international registration number;
              (2) The name and address of the holder of the international registration;
              (3) The name and address of the assignee of the international registration;
              (4) A statement that the assignee: Is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where an assignee's address is not in the United States, the assignee must provide the address of its U.S. domicile or establishment;
              (5) A statement, signed and verified (sworn to) or supported by a declaration under § 2.20 of this chapter, that, for the request to record the assignment, either the assignee could not obtain the assignor's signature because the holder no longer exists, or, after a good-faith effort, the assignee could not obtain the assignor's signature;
              (6) An indication that the assignment applies to the designation to the United States or an international registration that is based on a U.S. application or registration;
              (7) A statement that the assignment applies to all the goods and/or services in the international registration, or if less, a list of the goods and/or services in the international registration that have been assigned that pertain to the designation to the United States; and
              (8) The U.S. transmittal fee required by § 7.6.
              (b) If a request to record an assignment contains all the elements set forth in paragraph (a) of this section, the Office will forward the request to the International Bureau. Forwarding the request to the International Bureau is not a determination by the Office of the validity of the assignment or the effect that the assignment has on the title of the international registration.

              (c) If the request fails to contain all the elements set forth in paragraph (a) of this section, the Office will not forward the request to the International Bureau. The Office will notify the assignee(s) of the reason(s). If the assignee paid the fees to record the assignment (see § 7.7) through the Office, the Office will refund the recording fee. The Office will not refund the transmittal fee.
              (d) Correspondence to correct any irregularities in a request to record an assignment must be made directly with the International Bureau.
              [68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004; 80 FR 2313, Jan. 16, 2015]

              § 7.24
              Requests to record security interest or other restriction of holder's rights of disposal or release of such restriction submitted through the Office.

              (a) A party who obtained a security interest or other restriction of a holder's right to dispose of an international registration, or the release of such a restriction, may submit a request to record the restriction or release through the Office for forwarding to the International Bureau only if:
              (1) The restriction or release:
              (i) Is the result of a court order; or
              (ii) Is the result of an agreement between the holder of the international registration and the party restricting the holder's right of disposal, and the signature of the holder cannot be obtained for the request to record the restriction or release;
              (2) The party who obtained the restriction is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States; and
              (3) The restriction or release applies to the holder's right to dispose of the international registration in the United States.
              (b) A request to record a restriction or the release of a restriction must be submitted by the party who obtained the restriction of the holder's right of disposal and include all the following:
              (1) The international registration number;
              (2) The name and address of the holder of the international registration;
              (3) The name and address of the party who obtained the restriction;
              (4) A statement that the party who submitted the request: Is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where a party's address is not in the United States, the party must provide the address of its U.S. domicile or establishment;
              (5)(i) A statement that the restriction is the result of a court order, or
              (ii) Where the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder's right of disposal, a statement, signed and verified (sworn to) or supported by a declaration under § 2.20 of this chapter, that, for the request to record the restriction, or release of the restriction, either the holder of the international registration could not obtain the signature of the party restricting the holder's right of disposal because the party restricting the holder's right of disposal no longer exists, or, after a good-faith effort, the holder of the international registration could not obtain the signature of the party restricting the holder's right of disposal;
              (6) A summary of the main facts concerning the restriction;
              (7) An indication that the restriction, or the release of the restriction, of the holder's right of disposal of the international registration applies to the designation to the United States or an international registration that is based on a U.S. application or registration; and
              (8) The U.S. transmittal fee required by § 7.6.
              (c) If a request to record a restriction, or the release of a restriction, contains all the elements set forth in paragraph (b) of this section, the Office will forward the request to the International Bureau. Forwarding the request to the International Bureau is not a determination by the Office of the validity of the restriction, or its release, or the effect that the restriction has on the holder's right to dispose of the international registration.
              (d) If the request fails to contain all the elements set forth in paragraph (b) of this section, the Office will not forward the request. The Office will notify the party who submitted the request of the reason(s). The Office will not refund the transmittal fee.
              (e) Correspondence to correct any irregularities in a request to record a restriction of a holder's right to dispose of an international registration or the release of such a restriction must be made directly with the International Bureau.
              [68 FR 55769, Sept. 26, 2003, as amended at 80 FR 2313, Jan. 16, 2015]

            Subpart E—Extension of Protection to the United States

              § 7.25
              Sections of part 2 applicable to extension of protection.

              (a) Except for §§ 2.21, 2.22, 2.76, 2.88, 2.89, 2.130, 2.131, 2.160 through 2.166, 2.168, 2.173, 2.175, and 2.181 through 2.186, all sections in parts 2 and 11 of this chapter shall apply to an extension of protection of an international registration to the United States, including sections related to proceedings before the Trademark Trial and Appeal Board, unless otherwise stated.
              (b) The Office will refer to a request for an extension of protection to the United States as an application under section 66(a) of the Act, and references to applications and registrations in part 2 of this chapter include extensions of protection to the United States.
              (c) Upon registration in the United States under section 69 of the Act, an extension of protection to the United States is referred to as a registration, a registered extension of protection, or a section 66(a) registration.
              [68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004; 70 FR 38774, July 6, 2005; 73 FR 47686, Aug. 14, 2008; 73 FR 67776, Nov. 17, 2008; 75 FR 35977, June 24, 2010; 78 FR 20197, Apr. 3, 2013; 80 FR 2313, Jan. 16, 2015; 84 FR 37099, July 31, 2019]

              § 7.26
              Filing date of extension of protection for purposes of examination in the Office.
              (a) If a request for extension of protection of an international registration to the United States is made in an international application and the request includes a declaration of a bona fide intention to use the mark in commerce as set out in § 2.33(e) of this chapter, the filing date of the extension of protection to the United States is the international registration date.
              (b) If a request for extension of protection of an international registration to the United States is made in a subsequent designation and the request includes a declaration of a bona fide intention to use the mark in commerce as set out in § 2.33(e), the filing date of the extension of protection to the United States is the date that the International Bureau records the subsequent designation.

              § 7.27
              Priority claim of extension of protection for purposes of examination in the Office.
              An extension of protection of an international registration to the United States is entitled to a claim of priority under section 67 of the Act if:
              (a) The request for extension of protection contains a claim of priority;
              (b) The request for extension of protection specifies the filing date, serial number and the country of the application that forms the basis for the claim of priority; and
              (c) The date of the international registration or the date of recording of the subsequent designation at the International Bureau of the request for extension of protection to the United States is not later than six months after the filing date of the application that forms the basis for the claim of priority.

              § 7.28
              Replacement of U.S. registration by registered extension of protection.
              (a) A registered extension of protection affords the same rights as those afforded to a previously issued U.S. registration if:
              (1) Both registrations are owned by the same person and identify the same mark; and
              (2) All the goods and/or services listed in the U.S. registration are also listed in the registered extension of protection.
              (b) The holder of an international registration with a registered extension of protection to the United States that meets the requirements of paragraph (a) of this section may file a request to note replacement of the U.S. registration with the extension of protection. If the request contains all of the following, the Office will take note of the replacement in its automated records:
              (1) The serial number or registration number of the extension of protection;
              (2) The registration number of the replaced U.S. registration; and
              (3) The fee required by § 7.6.
              (c) If the request to note replacement is denied, the Office will notify the holder of the reason(s) for refusal.

              § 7.29
              Effect of replacement on U.S. registration.
              A U.S. registration that has been replaced by a registered extension of protection under section 74 of the Act and § 7.28 will remain in force, unless cancelled, expired or surrendered, as long as:

              (a) The owner of the replaced U.S. registration continues to file affidavits or declarations of use in commerce or excusable nonuse under section 8 of the Act; and

              (b) The replaced U.S. registration is renewed under section 9 of the Act.

              § 7.30
              Effect of cancellation or expiration of international registration.
              When the International Bureau notifies the Office of the cancellation or expiration of an international registration, in whole or in part, the Office shall cancel, in whole or in part, the corresponding pending or registered extension of protection to the United States. The date of cancellation of an extension of protection or relevant part shall be the date of cancellation or expiration of the corresponding international registration or relevant part.

              § 7.31
              Requirements for transformation of an extension of protection to the United States into a U.S. application.
              If the International Bureau cancels an international registration in whole or in part, under Article 6(4) of the Madrid Protocol, the holder of that international registration may file a request to transform the goods and/or services to which the cancellation applies in the corresponding pending or registered extension of protection to the United States into an application under section 1 or 44 of the Act.
              (a) The holder of the international registration must file a request for transformation within three months of the date of cancellation of the international registration and include:
              (1) The serial number or registration number of the extension of protection to the United States;
              (2) The name and address of the holder of the international registration;
              (3) Identify the goods and/or services to be transformed, if other than all the goods and/or services that have been cancelled;
              (4) The application filing fee for at least one class of goods or services required by § 2.6(a)(1) of this chapter; and
              (5) An email address for receipt of correspondence from the Office.
              (b) If the request for transformation contains all the elements set forth in paragraph (a) of this section, the extension of protection shall be transformed into an application under section 1 and/or 44 of the Act and accorded the same filing date and the same priority that was accorded to the extension of protection.
              (c) The application under section 1 and/or 44 of the Act that results from a transformed extension of protection will be examined under part 2 of this chapter.
              (d) A request for transformation that fails to contain all the elements set forth in paragraph (a) of this section will not be accepted.
              [68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004; 80 FR 2313, Jan. 16, 2015]

            Subpart F—Affidavit Under Section 71 of the Act for Extension of Protection to the United States

              § 7.36
              Affidavit or declaration of use in commerce or excusable nonuse required to avoid cancellation of an extension of protection to the United States.
              (a) Subject to the provisions of section 71 of the Act, a registered extension of protection shall remain in force for the term of the international registration upon which it is based unless the international registration expires or is cancelled under section 70 of the Act due to cancellation of the international registration by the International Bureau.
              (b) During the following time periods, the holder of an international registration must file an affidavit or declaration of use or excusable nonuse, or the registered extension of protection will be cancelled under section 71 of the Act:
              (1) On or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States; and
              (2) Within the year before the end of every ten-year period after the date of registration in the United States.

              (3) The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (b)(1) and (b)(2) of this section, with payment of the grace period surcharge per class required by section 71(a)(3) of the Act and § 7.6.

              (c) For the requirements for the affidavit or declaration, see § 7.37.
              [68 FR 55769, Sept. 26, 2003, as amended at 75 FR 35977, June 24, 2010]

              § 7.37
              Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse.
              A complete affidavit or declaration under section 71 of the Act must:
              (a) Be filed by the holder of the international registration within the period set forth in § 7.36(b);
              (b) Include a verified statement attesting to the use in commerce or excusable nonuse of the mark within the period set forth in section 71 of the Act. The verified statement must be executed on or after the beginning of the filing period specified in § 7.36(b). A person who is properly authorized to sign on behalf of the holder is:
              (1) A person with legal authority to bind the holder;
              (2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the holder; or
              (3) An attorney as defined in § 11.1 of this chapter who has an actual written or verbal power of attorney or an implied power of attorney from the holder.
              (c) Include the U.S. registration number;
              (d)(1) Include the fee required by § 7.6 for each class that the affidavit or declaration covers;
              (2) If the affidavit or declaration is filed during the grace period under section 71(a)(3) of the Act, include the grace period surcharge per class required by § 7.6;
              (3) If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes and the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either submission of the additional fee(s) or specification of the class(es) to which the initial fee(s) should be applied. Additional fees may be submitted if the requirements of § 7.39 are met. If the additional fee(s) are not submitted within the time period set out in the Office action and the class(es) to which the original fee(s) should be applied are not specified, the Office will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class;
              (e)(1) Specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce, and/or the goods, services, or nature of the collective membership organization for which excusable nonuse is claimed under paragraph (f)(2) of this section; and
              (2) Specify the goods, services, or classes being deleted from the registration, if the affidavit or declaration covers fewer than all the goods, services, or classes in the registration;
              (f)(1) State that the registered mark is in use in commerce; or
              (2) If the registered mark is not in use in commerce on or in connection with all the goods, services, or classes specified in the registration, set forth the date when such use of the mark in commerce stopped and the approximate date when such use is expected to resume; and recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark; and
              (g) Include one specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed under paragraph (f)(2) of this section. When requested by the Office, additional specimens must be provided. The specimen must meet the requirements of § 2.56 of this chapter.
              (h) The Office may require the holder to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 71 of the Act or for the Office to assess and promote the accuracy and integrity of the register.
              (i) Additional requirements for a collective mark: In addition to the above requirements, a complete affidavit or declaration pertaining to a collective mark must:

              (1) State that the holder is exercising legitimate control over the use of the mark in commerce; and

              (2) State the nature of the holder's control over the use of the mark by the members in the first affidavit or declaration filed under paragraph (a) of this section.
              (j) Additional requirements for a certification mark: In addition to the above requirements, a complete affidavit or declaration pertaining to a certification mark must:
              (1) Include a copy of the certification standards specified in § 2.45(a)(4)(i)(B) of this chapter;
              (i) Submitting certification standards for the first time. In the first affidavit or declaration filed under paragraph (a) of this section, include a copy of the certification standards; or
              (ii) Certification standards submitted in prior filing. If the certification standards in use at the time of filing the affidavit or declaration have not changed since the date they were previously submitted to the Office, include a statement to that effect; if the certification standards in use at the time of filing the affidavit or declaration have changed since the date they were previously submitted to the Office, include a copy of the revised certification standards;
              (2) State that the holder is exercising legitimate control over the use of the mark in commerce; and
              (3) Satisfy the requirements of § 2.45(a)(4)(i)(A) and (C) of this chapter.
              [68 FR 55769, Sept. 26, 2003, as amended at 73 FR 47686, Aug. 14, 2008; 75 FR 35977, June 24, 2010; 77 FR 30208, May 22, 2012; 80 FR 33190, June 11, 2015; 82 FR 6265, Jan. 19, 2017]

              § 7.38
              Notice to holder of extension of protection.
              The registration certificate for an extension of protection to the United States includes a notice of the requirement for filing the affidavit or declaration of use or excusable nonuse under section 71 of the Act. However, the affidavit or declaration must be filed within the time period required by section 71 of the Act regardless of whether this notice is received.

              § 7.39
              Acknowledgment of receipt of and correcting deficiencies in affidavit or declaration of use in commerce or excusable nonuse.
              The Office will issue a notice as to whether an affidavit or declaration is acceptable, or the reasons for refusal.
              (a) A response to the refusal must be filed within six months of the date of issuance of the Office action, or before the end of the filing period set forth in section 71(a) of the Act, whichever is later. The response must be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2).
              (b) If no response is filed within this time period, the extension of protection will be cancelled, unless time remains in the grace period under section 71(a)(3) of the Act. If time remains in the grace period, the holder may file a complete, new affidavit.
              (c) If the affidavit or declaration is filed within the time periods set forth in section 71 of the Act, deficiencies may be corrected after notification from the Office, as follows:
              (1) Correcting deficiencies in affidavits or declarations timely filed within the periods set forth in sections 71(a)(1) and 71(a)(2) of the Act. If the affidavit or declaration is timely filed within the relevant filing period set forth in section 71(a)(1) or section 71(a)(2) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge. Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 71(c) of the Act and § 7.6.
              (2) Correcting deficiencies in affidavits or declarations filed during the grace period. If the affidavit or declaration is filed during the six-month grace period provided by section 71(a)(3) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 71(c) of the Act and § 7.6.

              (d) If the affidavit or declaration is not filed within the time periods set forth in section 71 of the Act, the registration will be cancelled.
              [75 FR 35977, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]

              § 7.40
              Petition to Director to review refusal.

              (a) A response to the examiner's initial refusal to accept an affidavit or declaration is required before filing a petition to the Director, unless the examiner directs otherwise. See § 7.39(b) for the deadline for responding to an examiner's Office action.
              (b) If the examiner maintains the refusal of the affidavit or declaration, the holder may file a petition to the Director to review the examiner's action. The petition must be filed within six months of the date of issuance of the action maintaining the refusal, or the Office will cancel the registration.
              (c) A decision by the Director is necessary before filing an appeal or commencing a civil action in any court.
              [68 FR 55769, Sept. 26, 2003, as amended at 73 FR 67776, Nov. 17, 2008]

            Subpart G—Renewal of International Registration and Extension of Protection

              § 7.41
              Renewal of international registration and extension of protection.
              (a) Any request to renew an international registration and its extension of protection to the United States must be made at the International Bureau in accordance with Article 7 of the Madrid Protocol.
              (b) A request to renew an international registration or extension of protection to the United States submitted through the Office will not be processed.

          37 CFR Ch. I (7-1-20 Edition)
          Index II

          INDEX II—RULES RELATING TO TRADEMARKS

            Editorial Note:
            This listing is provided for information purposes only. It is compiled and kept up-to-date by the Department of Commerce. This index is updated as of July 1, 2020.

          Section
           A
          Abandonment of application or mark:
          During inter partes proceeding
          2.135
          Express abandonment
          2.68
          For failure to respond or to respond completely to official action
          2.65(a)
          For failure to timely file a statement of use
          2.65(c)
          Revival of abandoned application
          2.66
          Acceptance of affidavit under sec. 8
          2.163
          Access:
          To applications, and all proceedings relating thereto, after publication or registration
          2.27(d)
          To applications prior to publication
          2.27(b)
          To assignment records
          2.200
          To decisions of Director and the Trademark Trial and Appeal Board
          2.27(c)
          To materials filed under seal pursuant to a protective order
          2.27(e); 2.126(c)
          To pending trademark application index
          2.27(a)
          Acknowledgment of receipt of affidavit or declaration:
          Filed under sec. 8
          2.163
          Filed under sec. 71
          7.39
          Act, The, defined
          2.2(a)
          Action by assignee of record or owner
          3.71(d), 3.73
          Action by Examiner on application
          2.61
          Adding party to an interference
          2.98
          Address for correspondence with U.S. Patent and Trademark Office
          2.190
          Additional specimens:
          Bases for filing
          2.34(a)(1)(iv)
          Specimens
          2.56(a)
          Action by examiner
          2.61(b)
          Amendment to allege use
          2.76(b)(2)
          Application may include multiple classes
          2.86(a)(3), (b)
          Filing statement of use after notice of allowance
          2.88(a)(1)
          Requirements for a complete affidavit or declaration of continued use or excusable nonuse
          2.161(g), (h)
          Amendment of registration
          2.173(b)(3), (4)
          Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse
          7.37(g), (h)
          Admissions, request for (discovery):
          Motion to determine sufficiency of response
          2.120(i)
          Numerical limit on
          2.120(i)
          Timing of
          2.120(a)
          Use of admission
          2.120(k)
          When to file copy of request with Trademark Trial and Appeal Board
          2.120(k)(8)
          Advertising by attorneys and others, restricted
          11.702
          Affidavit or declaration:

          Claiming benefits of Act of 1946
          2.153
          Combined secs. 8 and 15
          2.168(a)
          Combined secs. 9 and 15
          2.168(b)
          For incontestability under sec. 15
          2.167
          Of use in commerce or excusable nonuse under sec. 8
          2.160-166
          Of use in commerce or excusable nonuse under sec. 71
          7.36-7.40
          Reconsideration of, under sec. 8
          2.163-2.165
          Reconsideration of, under sec. 71
          7.39, 7.40
          Testimony in inter partes proceeding
          2.122(b)(2), 2.123(a)
          To avoid cancellation of registration under sec. 8
          2.160-2.166
          To avoid cancellation of registration under sec. 71
          7.36-7.40
          Agent. (See Attorneys and other representatives)

          Allegations in application or registration not evidence on behalf of applicant or registrant in inter partes proceeding
          2.122(b)(2)
          Allowance, notice of
          2.81(b), 2.88
          Amendment of application:
          After final action
          2.64(b)
          After publication
          2.35(b)(2), 2.84(b)
          Between notice of allowance and statement of use
          2.77
          Description or drawing of mark
          2.72
          Form of amendment
          2.74
          Involved in inter partes proceedings
          2.133
          To allege use
          2.76
          To change to different register
          2.75
          To correct informalities
          2.71
          To seek concurrent use registration
          2.73
          Amendment of pleadings in inter partes proceedings:
          Cancellation
          2.115
          Opposition
          2.107
          Amendment of registration:
          During inter partes proceedings
          2.133
          Requirements for, in general
          2.173
          Amendment to allege use
          2.76
          Amendments to description or drawing of mark after filing
          2.72(b)
          Correction of deficiency in
          2.76(g)
          Fee for filing
          2.6(a)(18)
          Filed during final action response period
          2.64(c)
          Minimum requirements for filing
          2.76(e)
          Requirements for
          2.76(b)
          Time for filing
          2.76(a)
          Withdrawal of
          2.76(h)
          Answer to pleadings in opposition and cancellation proceedings
          2.106, 2.114
          Contents of answer
          2.106(b)(1), 2.114(b)(2)
          Corresponds to answer in court proceeding
          2.116(c)
          Counterclaim
          2.106(b)(3), 2.114(b)(3)
          Failure to timely answer
          2.106(a), 2.114(a)
          Answer to notice instituting concurrent use proceeding
          2.99(d)
          Failure to answer
          2.99(d)(3)
          Who needs to answer and when
          2.99(d)(2)
          Appeal to Court and civil action
          2.145
          Appeal to Court from decision of Director
          2.145
          Appeal to Court from decision of Trademark Trial and Appeal Board
          2.145
          Appeal to U.S. Court of Appeals for the Federal Circuit
          2.145(a)
          Civil action
          2.145(c)
          Extensions of time to appeal
          2.145(e)
          Notice of appeal to Court
          2.145(c)(3)
          Notice of appeal to U.S. Court of Appeals for the Federal Circuit
          2.145(a)(2), (3)

          Notice of election by appellee to proceed by civil action after appeal to U.S. Court of Appeals for the Federal circuit
          2.145(b)(2)
          Time for appeal or civil action
          2.145(d)
          Appeal to Trademark Trial and Appeal Board:
          Appropriate response to final refusal or second refusal on the same grounds
          2.64(a), 2.141
          Briefs on appeal
          2.142(b)
          Compliance with requirements not on appeal
          2.142(c)
          Failure of appellant to file brief
          2.142(b)(1)
          Introduction of new evidence after filing of appeal
          2.142(d)
          Oral hearing on appeal
          2.142(e)
          Reconsideration of decision on appeal
          2.144
          Remand to Examiner re new issue prior to decision
          2.142(f)
          Reopening of examination of application after decision on appeal
          2.142(g)
          Time and manner of filing appeal
          2.142(a)
          Applicant:
          Foreign
          2.24, 2.34(a)(3)
          Name of
          2.21(a)(1), 2.32(a)(2)
          Signature and oath or declaration
          2.33
          Application for registration
          2.21-2.47
          Access to pending applications
          2.27
          Amendment of. See Amendment of application.
          Basis for filing
          2.34, 2.35
          Certification mark
          2.45
          Collective mark
          2.44
          Color claim in
          2.52(b)(1)
          Concurrent use
          2.42, 2.73, 2.99
          Conflicting marks, co-pending applications for
          2.83
          Description of mark
          2.37
          Different classes may be combined
          2.86
          Dividing of applications
          2.87
          Drawing required
          2.51
          Extension of protection of international registration to United States
          7.25-7.41
          Filing-date requirements
          2.21
          Form of application
          2.32-2.47
          For international registration. See International registration, application for
          Must be in English
          2.32(a)
          Principal Register
          2.46
          Priority claim based on foreign application
          2.34(a)(4), 7.27
          Prior registrations should be identified
          2.36
          Requirements for drawings
          2.52-2.54
          Requirements for written application
          2.32-2.34
          Service mark
          2.43
          Signature of
           2.33
          Specimens filed with
          2.56, 2.59
          Supplemental Register
          2.47
          Verification of
          2.32(b), (c), 2.33
          Assignee:
          Certificate of registration may be issued to
          3.85
          New certificate of registration may be issued to
          2.171
          Not domiciled in U.S.
          3.61
          Right to take action when assignment is recorded or proof of assignment has been submitted
          3.71(d), 3.73
          Assignment of registered marks or marks subject to pending applications
          3.1-3.85, 7.23
          Cover sheet required to record
          3.28, 3.31
          Effect of recording
          3.54

          Electronically filed requests to record
          3.25(c)(1), 3.31(a)(7)
          Extension of protection of international registration to U.S., assignment of
          7.22, 7.23
          Original documents should not be submitted for recordation
          3.25, 3.34(b)
          Recording fees
          3.41
          Recording in U.S. Patent and Trademark Office of assignments or other instruments relating to such marks
          3.11
          Recording of changes to International registrations or applications not applicable
          7.22
          Records open to public inspection
          2.200, 2.201
          Requirements for recording
          3.25-3.31, 3.41
          Assignment of trial dates in inter partes proceedings
          2.120(a), 2.121
          Consolidated proceedings
          2.121(b)(2)
          Counterclaim
          2.121(b)(2)
          Discovery period
          2.120(a)
          Extending, Rescheduling
          2.120(a), 2.121(a), (c), (d)
          Testimony periods
          2.121
          Trial order mailed with notice of institution
          2.120(a)
          Attorney conflict of interest
          2.61(c), 11.107, 11.108, 11.111
          Attorneys and other representatives
          2.11, 2.17-2.19, 2.119(d)
          Attorneys fees:
          Unavailable
          2.127(f)
          Authentication of copies of assignment records
          2.200(a)(2)
          B
          Basis for filing an application
          2.34, 2.35
          Bona fide intention to use
          2.34(a)(2), 2.34(a)(3)(i), 2.34(a)(4)(B)(ii), 2.89(a)(3), 2.89(b)(3)
          Briefs:
          At final hearing in inter partes case
          2.128
          Failure of appellant to file brief on appeal
          2.142(b)(1)
          Failure of inter partes plaintiff to file brief at final hearing
          2.128(a)(3)
          Failure to file brief on inter partes motion
          2.127(a)
          On appeal to Trademark Trial and Appeal Board
          2.142(b)
          On motions in inter partes cases
          2.127(a), (e)(1)
          On petitions to Director
          2.146(c), (e)
          Burden of proof in an interference
          2.96
          Business with U.S. Patent and Trademark Office to be conducted with decorum and courtesy
          2.192
          Business with U.S. Patent and Trademark Office transacted in writing
          2.191
          C
          Cancellation of registrations (See also International Registration, cancellation of):
          By cancellation proceeding; pleadings and procedure
          2.111
          (See also Petition for Cancellation)
          By registrant
          2.134, 2.172
          For failure to file affidavit or declaration of use under sec. 8
          2.160-2.166
          For failure to file affidavit or declaration of use under sec. 71
          7.36-7.40
          During cancellation proceeding
          2.134
          Cases not specifically defined in rules, petition to the Director
          2.146(a)(4)
          Certificate of correction of registration
          2.174, 2.175
          Certificate of mailing by first class mail
          2.197
          Certificate of registration:
          As evidence in inter partes proceeding
          2.122(b), (d), (e)
          Contents
          2.151

          In Registered extension of protection of international registration to United States
          7.28
          Issuance of new certificate to assignee
          2.171
          When and how issued
          2.81, 2.82, 2.151
          Certification mark
          2.45, 2.56(b)(5)
          Certification of international application
          7.13
          Certified copies of registrations and records
          2.201
          Citizenship of applicant
          2.32(a)(3)
          Civil action:
          From decision of Director
          2.145(c)
          From decision of Trademark Trial and Appeal Board
          2.145(c)
          Notice of election by appellee to proceed by civil action after appeal to U.S. Court of Appeals for the Federal Circuit
          2.145(b)(2)
          Notice to Trademark Trial and Appeal Board of election to commence civil action for review of Board decision
          2.145(c)(3)
          Suspension of action in application pending outcome
          2.67
          Suspension of inter partes proceedings pending outcome
          2.117
          Time for commencing civil action from decision of Director or Trademark Trial and Appeal Board
          2.145(d)(3)
          Waiver of right to proceed by civil action in ex parte case
          2.145(b)(1)
          Civil Procedure, Federal Rules of, applied to inter partes proceedings
          2.116(a), 2.120(a), 2.122(a)
          Claim of benefits of Act of 1946 for marks registered under prior Acts
          2.153-2.156
          Classification of goods and services
          2.85
          Application limited to single class
          2.86(a)
          Combined applications
          2.86
          Schedules of classes
          6.1-6.4
          Collective mark
          2.44, 2.56(b)(3)
          Color claim:
          In application for registration in United States
          2.52(b)(1)
          In application for international registration
          7.11(a)(4), 7.12
          Combined applications
          2.86
          Combined inter partes proceedings:
          Cancellation
          2.112(b)
          Opposition
          2.104(b)
          Commencement of cancellation
          2.111(a)
          Commencement of opposition
          2.101(a)
          Communication with attorney or other representative
          2.18
          Complaints against U.S. Patent and Trademark Office employees
          2.192
          Compliance of applicant with other laws
          2.69
          Compliance with discovery order of Trademark Trial and Appeal Board
          2.120(h)
          Compulsory counterclaim
          2.106(b)(3)(i), 2.114(b)(3)(i)
          Concurrent use registration
          2.42, 2.99
          Amendment to seek
          2.73
          Answer to notice of concurrent use proceeding, by whom and when
          2.99(d)
          Application requirements
          2.42
          Based upon court determination
          2.99(f)
          Burden of proving entitlement to
          2.99(e)
          Consideration and determination by Trademark Trial and Appeal Board
          2.99(h), 2.133(c)
          Examination by Examiner
          2.99(a), (b)
          Intent-to-use applications, when subject to
          2.73, 2.99(g)
          Mark must first be published for opposition purposes
          2.99(b)
          Notice of concurrent use proceeding
          2.99(c), (d)

          Registrations and applications to register on Supplemental Register and registrations under Act of 1920 not subject to
          2.99(g)
          Request to divide application during concurrent use proceeding
          2.87(c)(1)
          Conduct of practitioners
          11.101-11.901
          Conference, pre-trial, in inter partes cases
          2.120(j)(2)
          Conference, telephone, in inter partes cases
          2.120(j)(1)
          Confidential matters
          2.27(e), 2.125(f), 2.116(g), 2.126(c)
          Conflict of interest, attorney
          2.61(c), 11.107, 11.108, 11.111
          Conflicting marks, co-pending applications for
          2.83, 2.91
          Consent of applicant or authorized representative to withdrawal of opposition after answer
          2.106(c)
          Consent of opposer to abandonment of application or mark
          2.135
          Consent of petitioner to surrender or voluntary cancellation of registration
          2.134
          Consent of registrant withdrawal of cancellation after answer
          2.114(c)
          Consolidated inter partes proceedings:
          Filing consolidated petition to cancel
          2.112(b)
          Filing consolidated opposition
          2.104(b)
          Times for filing briefs
          2.128(a)(2)
          Times for taking testimony
          2.121(b)(2)

          Constructive use, entry of judgment subject to establishment of in inter partes proceedings
          2.129(d)
          Contested or inter partes case procedures
          2.116-2.136
          Copies of registrations and records
          2.6(b), 2.201
          Correction of informalities by amendment
          2.71
          Correction of mistake in certificate of registration:
          Mistake by U.S. Patent and Trademark Office
          2.174
          Mistake by registrant
          2.175
          Mistake in international registration
          7.22
          Correspondence, addresses for
          2.190, 7.4
          Correspondence, with whom held
          2.18, 2.24, 2.119(d)
          Counterclaim in opposition and cancellation
          2.106(b)(3), 2.114(b)(3)
          Court determination as basis for concurrent use registration
          2.99(f)
          Courtesy and decorum in dealing with U.S. Patent and Trademark Office
          2.192
          Court of Appeals for the Federal Circuit, U.S., appeal to
          2.145
          D
          Date of first use and first use in commerce:
          Amendment of
          2.71(c)
          Required in amendment to allege use
          2.76(b)(1)(iii), (c)
          Required in statement of use
          2.88(b)(1)(iii), (c)
          Required in use applications under sec. l(a)
          2.34(a)(1)(ii) and (iii)

          Date of use allegation in application or registration not evidence on behalf of applicant or registrant in inter partes case
          2.122(b)(2)
          Declaration in lieu of oath or verification
          2.20
          Declaration of interference
          2.91
          Default judgment for failure to offer evidence in inter partes proceeding
          2.132(a)
          Delay in responding to official action
          2.66
          Deposit accounts for paying fees
          2.208
          Depositions, discovery, in inter partes cases:
          Domestic party
          2.120(b)
          Foreign party or representative
          2.120(c)
          Motion to compel attendance
          2.120(f)
          Nonparty
          2.120(b)
          Time for taking
          2.120(a)

          Use of
          2.120(k)
          When to file with Trademark Trial and Appeal Board
          2.120(k)(8)
          Depositions, discovery or trial testimony, upon written questions
          2.124
          Depositions, trial testimony
          2.123
          Before whom taken
          2.123(d)
          Certification and filing
          2.123(f)
          Corresponds to the trial in court proceedings
          2.116(e)
          Effect of errors and irregularities
          2.123(i)
          Examination of witnesses
          2.123(e)
          Filing and service of testimony transcript
          2.123(f)(2), 2.125
          Form of depositions
          2.123(g)
          Manner of taking
          2.123(a)
          Must be filed
          2.123(h)
          Notice of taking
          2.123(c)
          Protective order relating to transcript or exhibits
          2.125(f)
          Raising of objections
          2.123(e), (i), (j)
          Stipulations concerning
          2.123(b)
          Taken in foreign country
          2.123(a)(2)
          Timing
          2.121
          Description of mark in application
          2.37, 2.52(b)(5)
          Amendment to
          2.72
          Designation of representative by foreign applicant, registrant, or party:
          Application
          2.24
          Assignment
          3.61
          In inter partes proceeding
          2.119(d)
          Director of United States Patent and Trademark Office:
          May suspend certain rules
          2.146(a), 2.148
          Petition to
          2.146
          Disciplinary Proceedings
          11.19 -11.62
          Disclaimer:
          During inter partes cases
          2.133
          In part, of registered mark
          2.173
          Disclosures:
          Expert disclosures
          2.120(a)(2)(iii)
          Failure to make
          2.120(f)
          Filing with Board
          2.120(k)(5), (8)
          Initial disclosures
          2.120(a)(2), (3)
          Motion to compel
          2.120(f)
          Protective order
          2.120(g)
          Sanctions
          2.120(h)(2)

          Discovery depositions. See Depositions, discovery, in inter partes cases.
          Discovery procedure
          2.120
          Automatic disclosure and discovery provisions of Federal Rules of Civil Procedure applicable
          2.120(a)
          Discovery conference
          2.120(a)
          Discovery deposition of domestic party
          2.120(b)
          Discovery deposition of foreign party
          2.120(c)
          Discovery provisions of Federal Rules of Civil Procedure apply except as otherwise provided
          2.120(a)
          Electronically stored information
          2.120(e), (f)
          Failure to comply with discovery order of Trademark Trial and Appeal Board
          2.120(h)
          Interrogatories
          2.120(d)
          Motion for order to compel discovery
          2.120(d), 2.120(f)
          Motion for a protective order
          2.120(g)
          Place of production of documents and things
          2.120(e)
          Pre-trial conference
          2.120(j)(2)
          Proceeding suspended pending decision on motion to compel
          2.120(f)(2)

          Request for admissions
          2.120(i)
          Sanctions for failure to comply with discovery order of Trademark Trial and Appeal Board
          2.120(h)
          Telephone conference
          2.120(j)(1)
          Time for discovery
          2.120(a)
          Use of discovery deposition, answer to interrogatory, or admission
          2.120(k)
          When to file discovery materials with Trademark Trial and Appeal Board
          2.120(k)(8)
          Dismissal:
          For failure to file brief on appeal to Trademark Trial and Appeal Board
          2.142(b)(1)

          For failure to take testimony or offer other evidence in inter partes case
          2.132
          Distinctiveness under sec. 2(f), proof of
          2.41
          Dividing an application
          2.87
          Dividing a registration
          2.171(b)
          Domestic representative of foreign applicant, registrant, or party:
          Application
          2.24
          Assignment
          3.61
          In inter partes proceeding
          2.119(d)
          Domicile of applicant
          2.32(a)(2)
          Domicile:
          Complete application
          2.32(a)(2)
          Definition
          2.6(o)
          Requirement for representation
          2.11(a)
          Requirement to provide
          2.189
          TEAS Plus application
          2.22(a)(1)
          Drawing
          2.51-2.54
          Amendment to mark in
          2.72
          Color in
          2.52(b)(1)
          Drawings required
          2.51
          Electronically filed
          2.52(c), 2.53
          Paper
          2.54
          Requirements for drawing
          2.52-2.54
          Standard character drawing
          2.52(a)
          Typed drawing. See Standard character drawing
          Duplicate registrations, Office does not issue
          2.48
          Duration of registration:
          Cancellation for failure to file affidavit or declaration of use under sec. 8
          2.160
          Cancellation for failure to file affidavit or declaration of use under sec. 71
          7.36
          Renewal
          2.181-2.186, 7.41
          Term of original registrations and renewals
          2.181
          Duty to monitor status:
          Applications
          2.23(d)(1)
          Registrations
          2.23(d)(2)
          E
          Electronic filing with Trademark Trial and Appeal Board
          2.126(a), 2.191
          Electronically stored information, discovery of
          2.120(e), (f)
          Emergencies or interruptions in United States Postal Service
          2.195(d)
          “Entity”, defined
          2.2(b)
          Entry of judgment, in inter partes proceeding, subject to establishment of constructive use
          2.129(d)
          Evidence in ex parte appeal after notice of appeal
          2.142(d)
          Evidence in inter partes proceeding
          2.122-2.125

          Affidavit and declaration testimony
          2.123(a)
          Allegations of use and specimens in applications and registrations
          2.122(b)(2)
          Discovery responses
          2.120(k)
          Exhibits attached to pleadings
          2.122(c)
          Files of applications or registrations which are subject matter of proceeding
          2.122(b)(1)
          Official records
          2.122(e)
          Printed publications
          2.122(e)
          Registration owned by any party to proceeding
          2.122(d)(2)
          Registration pleaded by opposer or petitioner
          2.122(d)(1)
          Rules of evidence
          2.122(a)
          Stipulated facts
          2.123(b)
          Testimony by affidavit or declaration
          2.123(a)
          Testimony from other proceedings between parties
          2.122(f)
          Testimony upon oral examination
          2.123
          Testimony upon written questions
          2.124
          Evidence of distinctiveness
          2.41
          Examination of applications
          2.61
          Examination of witnesses in inter partes proceeding
          2.123(e)
          Examiner's appearance at ex parte appeal oral hearing
          2.142(e)(2)
          Examiner's brief on appeal
          2.142(b)
          Examiner's jurisdiction over an application
          2.84
          Exhibits attached to pleadings as evidence
          2.122(c)
          Exhibits, testimony, filing and service of
          2.125

            Ex parte appeal. (See Appeal to Trademark Trial and Appeal Board)

            Ex parte matter disclosed but not tried in inter partes case
          2.131
          Express abandonment of application or mark:
          During examination procedure
          2.68
          During inter partes proceeding
          2.135
          “ExpressMail” procedure for filing of papers and fees
          2.198
          Express surrender or cancellation of registration:
          During inter partes proceeding
          2.134
          Requirements for
          2.172
          Extension of protection of international registration to United States
          7.25-7.41
          Affidavit of continued use or excusable nonuse required after registration
          7.36-7.40
          Assignment of
          7.23
          Basis for registration
          2.34(a)(5), 2.35(a)
          Certificate of registration
          2.151, 7.28
          Definitions of terms
          7.1
          Effect of cancellation or expiration of international registration
          7.30
          Filing date
          7.26
          Not registrable on Supplemental Register
          2.47(c), 2.75(c)
          Part 2 rules applicable
          7.25(a)
          Part 3 rules do not apply
          7.22
          Priority claim
          7.27
          Renewal
          7.41
          Registered extension of protection cannot be amended under Section 7 of the Act
          7.25(a)
          Replacement of U.S. registration by
          7.28, 7.29
          Trademark Rules of Practice applicable to
          7.25
          Transformation to U.S. application
           7.31
          Extension of time for discovery and testimony
          2.120(a), 2.121(a), (c), (d)
          Extension of time for filing opposition
          2.6(a)(22)-(23); 2.102
          Extension of time for filing statement of use
          2.89
          Fee for filing request for
          2.6(a)(22), (23)
          Good cause showing, when necessary
          2.89(b)(4), (d)

          Request filed with statement of use
          2.89(e)
          F
          Facsimile transmission of certain correspondence to U.S. Patent and Trademark Office
          2.195(c)
          Facsimile transmission not allowed to Trademark Trial and Appeal Board
          2.195(c)
          Failure by appellant to file brief on ex parte appeal
          2.142(b)(1)

          Failure by plaintiff to file brief at final hearing in inter partes proceeding
          2.128(a)(3)
          Failure to answer opposition
          2.106(a)
          Failure to answer petition for cancellation
          2.114(a)
          Failure to comply with discovery order
          2.120(h)
          Failure to comply with order relating to confidential testimony or exhibits
          2.125(f)

          Failure to file affidavit of use under sec. 8 or renewal application for registration in inter partes proceeding
          2.134(b)
          Failure to file brief on motion
          2.127(a)
          Failure to offer evidence other than U.S. Patent and Trademark Office records
          2.132(b)
          Failure to respond to official action
          2.65
          Failure to take testimony or offer other evidence
          2.132(a)
          Failure to timely file a statement of use
          2.88(h)
          Fax transmission of certain correspondence to U.S. Patent and Trademark Office
          2.195(c)
          Federal Rules of Civil Procedure
          2.116(a), 2.120(a), 2.122(a)
          Federal Rules of Evidence
          2.122(a)
          Fees and charges
          2.6, 2.206-2.209, 7.6, 7.7
          For application under section 66(a)
          2.6(a)(1)(ii)
          For filing an application
          2.6(a)(1)
          For TEAS Plus application
          2.6(a)(1)(iv)
          For TEAS Standard application
          2.6(a)(1)(iii)
          Payable to International Bureau
          7.7
          Fees, insufficient amount submitted:
          For application
          2.21(a)(5)
          For petition for cancellation
          2.111(d)
          For ex parte appeal
           2.141(b)
          For opposition
          2.101(c)
          For renewal application
          2.183(e)
          Fees, payment of
          2.6, 2.206-2.207, 7.6, 7.7
          To International Bureau
          7.7
          Filing an amendment to allege use
          2.76
          Filing an extension of protection under 66(a)
          2.34(a)(5)
          Filing an opposition
          2.101
          Filing and service of trial testimony
          2.125
          Filing date, effective, after amendment of sec. l(b) application to Supplemental Register
          2.75(b)
          Filing date of application
          2.21, 7.26
          Filing of confidential submissions
          2.125(f), 2.126-(c)
          Filing of submissions electronically with Trademark Trial and Appeal Board
          2.126(a), 2.191
          Filing of papers and fees by Priority Mail Express
          2.198
          Filing petition for cancellation
          2.111
          Filing requests for extensions of time for filing statement of use
          2.89
          Filing statement of use after notice of allowance
          2.88
          Filing substitute specimens
          2.59
          Final refusal of application
          2.64

          Filing amendment to allege use during final action response period
          2.64(d)
          Reconsideration of
          2.64(a)
          Final hearing, briefs at (inter partes proceeding)
          2.128
          Foreign applicant, registrant, or party, designation of domestic representative
          2.24, 2.119(d), 3.61
          Foreign application, priority claim based on
          2.34(a)(4), 7.27
          Foreign registration:
          Application based on, under sec. 44
          2.34(a)(3), 2.47(b)
          Copy of
          2.34(a)(3)(ii)
          Necessary before publication
          2.34(a)(3)(ii)
          Form of amendment to application
          2.74
          Form of submissions to Trademark Trial and Appeal Board
          2.126
          G
          General information and correspondence
          2.190-2.198, 7.4
          Goods and/or services identification of:
          Additions not permitted
          2.71(a)
          Amendment of
          2.71(a)
          Amendment of, filed with statement of use
          2.88(h)
          In affidavit or declaration filed under sec. 8
          2.161(e)
          In affidavit or declaration filed under sec. 71
          7.37(e)
          In international application
          7.11(a)(7)
          In written application
          2.32(a)(6)
          Multiple goods or services comprised in single class or multiple classes
          2.32(a)(6), 2.34(a)(1)(v), 2.86
          Required in amendment to allege use
          2.76(b)(iv), (c)
          Required in request for extension of time to file statement of use
          2.89(a)(3), (f)
          Required in statement of use
          2.88(b)(1)
          Good cause, showing necessary for extension of time to file statement of use
          2.89(b)(4), (d)
          H
          Hearing, oral:
          At final hearing in inter partes proceeding
          2.129
          On appeal to Trademark Trial and Appeal Board
          2.142(e)
          On motion in inter partes proceedings
          2.120(j), 2.127(a)
          On petition to Director
          2.146(f)
          I
          Identification of goods and/or services. (See Goods and/or services identification of)
          Identification of pending application or registered mark in correspondence
          2.194
          Identification of prior registrations
          2.36
          Incontestability of right to use mark:
          Affidavit under sec. 15
          2.167
          Freedom from interference proceeding
          2.91(b)
          Informalities, amendment to correct
          2.71
          Intent-to-use applications under sec. 1(b):
          Abandonment for failure to timely file a statement of use
          2.65(c)
          Amendment to allege use
          2.76
          Amendments between notice of allowance and statement of use
          2.77
          Basis for filing application
          2.34
          Bona fide intention to use mark in commerce necessary
          2.34(a)(2)(i)
          Certification mark
          2.45

          Collective mark
          2.44
          Dividing
          2.87
          Drawing required
          2.32(c), 2.51
          Extensions of time for filing statement of use
          2.89
          Filing-date requirements
          2.21
          Notice of allowance
          2.81(b)
          Requirements for written application
          2.32, 2.34(a)(2)
          Revival of application abandoned for failure to respond to a notice of allowance
          2.66(c)
          Specimens filed with amendment to allege use or statement of use
          2.56, 2.76, 2.88
          Statement of use
          2.88
          When eligible for concurrent use
          2.42, 2.73, 2.99(g)
          When eligible for amendment to Supplemental Register
          2.47(d), 2.75(b)
          Interlocutory motions, inter partes proceeding
          2.127
          Interference
          2.91-2.93, 2.96, 2.98
          Adding Party to interference
          2.98
          Burden of proof
          2.96
          Conflicting marks, co-pending applications for
          2.83
          Declaration of interference
          2.91
          Declared only on petition to Director
          2.91(a)
          Institution of interference
          2.93
          Issue
          2.96
          Marks must otherwise be deemed registrable
          2.92
          Notice of interference
          2.93
          Preliminary to interference
          2.92
          Registrations and applications on the Supplemental Register, registrations under the Act of 1920, and registrations of incontestable marks not subject to interference
          2.91(b)
          Request to divide application during interference
          2.87(c)(1)
          International application
          7.11-7.14
          Address for mailing paper
          2.190(a)
          Cannot be filed by fax
          2.195(c)
          Certification of
           7.13
          Claim of color in
          7.12
          Correspondence, receipt of
          7.4
          Definitions of terms
          7.1
          Fees for
          7.6, 7.7
          Irregularities in
           7.14
          Must be filed through TEAS or on International Bureau's form
          7.11(a)
          Must be in English
          7.3
          Requirements for
          7.11
          Subsequent designation
          7.21
          International Bureau
          7.1, 7.7, 7.11, 7.13, 7.14, 7.21, 7.22, 7.23, 7.24, 7.26, 7.27, 7.30, 7.31, 7.36, 7.41, 11.9
          Payment of fees to
          7.7
          International register, recording changes in. See also International registration
          7.22-7.24
          International registration
          7.1-7.41
          Application for. See International application.
          Assignment of
          7.23
          Cancellation of
          7.30, 7.31
          Correspondence must be in English
          7.3
          Definitions of terms
          7.1
          Extension of protection to United States. See Extension of protection of international registration to United States
          Priority claim
          7.27
          Recording changes in
          7.22-7.24

          Renewal of
          7.41
          Replacement
          7.28, 7.29
          Restriction on holder's right to dispose of
          7.24
          Subsequent designation
          7.21

            Inter partes procedure
          2.116-2.136

            Inter partes proceedings
          2.91-2.136
          Cancellation
          2.111-2.115
          Concurrent use
          2.99
          Failure of plaintiff to file brief at final hearing
          2.128(a)(3)
          Failure of plaintiff to take testimony
          2.132
          Interference
          2.91-2.93, 2.96, 2.98
          Opposition
          2.101-2.107
          Procedure in
          2.116-2.136
          Interrogatories (discovery)
          2.120(d)
          Motion for an order to compel answer
          2.120(d), 2.120(f)
          Numerical limit on
          2.120(d)
          Timing of
          2.120(a)
          Use of answers
          2.120(k)
          When to file copy of interrogatories and answers thereto with Trademark Trial and Appeal Board
          2.120(k)(8)
          Interruptions or emergencies in United States Postal Service
          2.195(d)
          Irregularities in application for international registration. (See International application, irregularities in)
          Issue date of the notice of allowance
          2.81(b)
          J
          Judgment by default:
          Failure by plaintiff to file brief at final hearing
          2.128(a)(3)
          Failure to answer cancellation
          2.114(a)
          Failure to answer notice of concurrent use proceeding
          2.99(d)(3)
          Failure to answer opposition
          2.106(a)
          Failure by plaintiff to take testimony or offer other evidence
          2.132
          Judgment, entry of in inter partes proceeding subject to establishment of constructive use
          2.129(d)
          Jurisdiction over published applications
          2.84
          Amendment after publication of mark
          2.84(b)
          Amendment during inter partes proceeding
          2.133
          Remand to Examiner by Trademark Trial and Appeal Board
           2.130, 2.131
          L
          Lawyers. (See Attorneys)
          Letter, separate for each distinct subject of inquiry
          2.193(h)
          Letters, address for mailing to U.S. Patent and Trademark Office
          2.190
          M
          Madrid Protocol. (See International registration, international application)
          Mailing, certificate of
          2.197
          Mailing address for correspondence with U.S. Patent and Trademark Office
          2.190
          Marks on Supplemental Register published only upon registration
          2.82
          Marks registered under 1905 Act. claiming benefits of 1946 Act
          2.153-2.156
          Marks under sec. 12(c) not subject to opposition; subject to cancellation
          2.156
          Matters in evidence in inter partes cases
          2.122
          Mistake in registration incurred through fault of applicant
          2.175

          Mistake in registration incurred through fault of U.S. Patent and Trademark Office
          2.174
          Money, payment of
          2.206-2.209, 7.6, 7.7
          Motions in inter partes proceedings:
          Briefs on
          2.127(a), (e)(1)
          Contents
          2.127(a)
          Electronic filing required
          2.126(a)
          Failure to respond to motion
          2.127(a)
          For a protective order
          2.120(g)
          For judgment for failure to take testimony
          2.132
          For summary judgment
          2.127(e)
          Interlocutory motions and requests, who may act on
          2.127(c)
          Request for reconsideration of decision on motion
          2.127(b)
          Suspension pending determination of potentially dispositive motion
          2.127(d)
          To add application to interference
          2.98
          To compel discovery
          2.120(d), 2.120(f)
          To determine sufficiency of answer or objection to request for admission
          2.120(i)
          To extend discovery period
          2.120(a)
          To extend times for taking testimony upon written questions
          2.124(d)(2)
          To extend trial periods
          2.121(a), (c), (d)
          To suspend
          2.117
          To take oral deposition abroad
          2.120(c)(1), 2.123(a)(2)
          To use testimony from another proceeding
          2.122(f)
          Unavailable remedies
          2.127(f)
          Multiple class applications
          2.32(a)(6), 2.34(a)(1)(v)
          Dividing of
          2.87
          Multiple goods or services comprised in single class or multiple classes
          2.86
          Dividing of
          2.87
          N
          New certificate on change of ownership
          2.171
          Notice by publication, undelivered Office notices
          2.118
          Notice of allowance
          2.81(b)
          Filing statement of use after
          2.88
          Issue date of
          2.81(b)
          Notice of appeal to court and civil action
          2.145
          Notice of appeal to Trademark Trial and Appeal Board
          2.142(a)
          Notice of concurrent use proceeding
          2.99(c), (d)
          Notice of claim of benefits of 1946 Act
          2.153-2.156
          Notice of election by appellee to proceed by civil action after appeal to U.S. Court of Appeals for the Federal Circuit
          2.145(b)(2)
          Notice of interference
          2.93
          Notice of publication under sec. 12(c)
          2.155
          Notice of reliance on discovery
          2.120(k)
          Notice of reliance on printed publications and official records
          2.122(e)
          Notice to Trademark Trial and Appeal Board of civil action
          2.145(c)(3)
          Notice, where address of registrant in cancellation proceeding is unknown
          2.118
          Notification of acceptance of or deficiency in amendment to allege use
          2.76(d), (e)
          Notification of acceptance of or deficiency in statement of use
          2.88(f), (g)
          Notification of filing cancellation
          2.113
          Notification of filing opposition
          2.105
          Notification of grant or denial of request for an extension of time to file a statement of use
          2.89(g)

          Notification of opposition
          2.105
          O
          Oath, declaration in lieu of
          2.20
          Oaths, before whom and when made in testimonial deposition
          2.123(e)(5)

            Official Gazette contents:
          Claim of benefits under sec. 12(c) for marks registered under 1905 Act
          2.154
          First filed of applications for conflicting marks
          2.83
          Marks on Principal Register published for opposition
          2.80
          Marks on Supplemental Register published when registered
          2.82
          Official records, reliance on in inter partes proceeding
          2.122(e)
          Omission of matter from response to Examiner's action
          2.65(b)
          Opposition to registration of mark on Principal Register:
          2.101-2.107
          Amendment of opposition
          2.107
          Answer
          2.106
          Commencement of opposition
          2.101(a)
          Consolidated oppositions
          2.104(b)
          Contents of opposition
          2.104
          Corresponds to complaint in a court proceeding
          2.116(c)
          Discovery
          2.120
          Documents not returnable
          2.25
          Extension of time for filing an opposition
          2.102
          Failure to timely answer
          2.106(a)
          Fee for filing
          2.6(a)(17)
          Filing an opposition
          2.101
          Insufficient fees
          2.101(d)
          Notification of opposition
          2.105
          Procedure, inter partes

          2.116-2.136
          Request to divide application during opposition
          2.87(c)(1)
          Suspension of proceedings
          2.117
          Time for filing opposition
          2.101(c)
          Who may file opposition
          2.101(b)
          Withdrawal of opposition
          2.106(c)
          Oral argument at final hearing in inter partes proceeding
          2.129
          Oral hearing:

            Ex parte appeal
          2.142(e)

            Inter partes proceedings
          2.116(f), 2.120(j), 2.127(a), 2.129
          On petition to Director
          2.146(f)
          Oral promise, stipulation, or understanding
          2.191
          Ownership, prior registrations, identification in application
          2.36
          P
          Payment of money
          2.6, 2.206-2.209, 7.6, 7.7
          Pending application index
          2.27
          Period for response to Office actions
          2.62
          Personal appearance unnecessary
          2.191
          Persons who may practice before the U.S. Patent and Trademark Office in trademark cases
          11.14
          Petition for cancellation
          2.111-2.115
          Amendment of petition
          2.115
          Answer
          2.114
          Commencement of cancellation proceeding
          2.111(a)
          Contents of petition
          2.112
          Corresponds to complaint in a court proceeding
          2.116(c)
          Discovery
          2.120
          Failure to timely answer
          2.114(a)

          Fee for filing
          2.6(a)(16)
          Filing petition for cancellation
          2.111
          Insufficient fees
          2.111(d)
          Notification of cancellation proceeding
          2.113
          Procedure, inter partes

          2.116-2.136
          Suspension of proceedings
          2.117
          Time for filing petition
          2.111(b)
          Who may file petition
          2.111(b)
          Withdrawal of petition
          2.114(c)
          Petition for rehearing, reconsideration or modification of decision:
          Decision in inter partes proceeding
          2.129(c)
          Decision on ex parte appeal
          2.144
          Decision on interlocutory motion in inter partes proceeding
          2.127(b)
          Petition to revive abandoned application
          2.66
          Petition to the Director
          2.146
          Any case not specifically defined and provided for by rules
          2.146(a)(4)
          Contents of petition
          2.146(c)
          Delegation of authority to act on petitions
          2.146(h)
          Extraordinary situation requiring suspension or waiver of requirement of rules
          2.146(a)(5)
          Fee
          2.6(a)(15), 2.146(c)
          From denial of request for extension of time to file statement of use
          2.89(g)
          From grant or denial of request for extension of time to oppose
          2.146(e)(1)
          From interlocutory order of Trademark Trial and Appeal Board
          2.146(e)(2)
          Invoke supervisory authority
          2.146(a)(3)
          Oral hearing on petition
          2.146(f)
          Reconsideration of decision on petition
          2.66(e), 2.146(i)
          Reconsideration of refusal to accept sec. 8 affidavit or declaration
          2.165(b)
          Refusal of renewal of registration
          2.186
          Relief from repeated formal requirement of Examiner
          2.63(b), 2.146(a)(1)
          Review of adverse action on correction, disclaimer, surrender, etc. of registration
          2.176
          Stays time in appeal, inter partes proceeding, or reply to Office action only when stay is specifically requested and granted
          2.146(g)
          Subject matter for petitions
          2.146(a), (b)
          Time to file petition
          2.146(d), (e)
          To accept a paper submission
          2.147
          To accord filing date as of date of deposit as Priority Mail Express
          2.198
          Pleading, amendment of
          2.107, 2.115
          Position of parties in inter partes proceedings
          2.96, 2.99(e), 2.116(b)
          Postal Service, United States, interruptions or emergencies in
          2.195(d)
          Post notice of allowance
          2.88, 2.89
          Post publication
          2.81
          Power of attorney or authorization of other representative
          2.17, 2.19
          Practice before the U.S. Patent and Trademark Office, individuals entitled to
          11.14
          Predecessor in title or related company, use by
          2.38
          Pre-trial conference, inter partes proceeding
          2.120(j)(2)
          Principal Register
          2.46
          Amendment to or from Supplemental Register
          2.75
          Printed publications, as evidence in inter partes proceedings
          2.122(e)
          Prior acts, status of prior registrations
          2.158
          Priority claim based on foreign application
          2.34(a)(4), 7.27
          Prior registrations, ownership, identification in application
          2.36
          Procedure in inter partes cases
          2.116-2.136
          Production of documents and things, request for (discovery)
          2.120(e)

          Motion for an order to compel production
          2.120(e), (f)
          Numerical limit on
          2.120(e)
          Place of production
          2.120(e)
          Timing of
          2.120(a)
          Professional conduct of attorneys
          11.101-11.901
          Proof of distinctiveness under sec. 2(f)
          2.41
          Proof of service
          2.119(a)
          Protective order:
          Access to materials filed under
          2.27(e)
          Form of filing materials under
          2.126(c)
          Standard protective order automatically imposed
          2.116(g)
          Relating to discovery
          2.120(g)
          Relating to testimony
          2.125(f)
          Sanctions for violation
          2.120(h), 2.125(f)
          Publication and post publication
          2.80-2.84
          Publication in Official Gazette:

          Jurisdiction over published applications
          2.84
          Of claim of benefits under sec. 12(c) for marks registered under 1905 Act
          2.154
          Of first filed of applications for conflicting marks
          2.83
          Of mark on Principal Register for opposition after approval
          2.80
          Of marks on Supplemental Register when registered
          2.82

          Publication, notice by, undelivered Office notices to applicant or registrant in inter partes proceeding
          2.118
          R
          Rebuttal testimony
          2.121(b)(1), (c)
          Receipt of papers and fees
          2.195-2.198, 7.4
          Recognition of attorneys or other authorized person
          2.17, 11.14
          Reconsideration:
          Of affidavit or declaration of use under sec. 8
          2.163(b), 2.165(a)
          Of decision after final hearing in inter partes proceeding
          2.129(c)
          Of decision on ex parte appeal
          2.144
          Of decision on petition to Director
          2.146(i)
          Of decision on petition to revive
          2.66(e)
          Of final action
          2.64(b)
          Of order or decision on interlocutory motion
          2.127(b)
          Records of documents in Assignment Services Division of U.S. Patent and Trademark Office
          3.11-3.56
          Records and files of the U.S. Patent and Trademark Office
          2.27, 2.200
          Reexamination of application
          2.63
          Reexamination of application after remand by the Trademark Trial and Appeal Board
          2.130, 2.131, 2.142
          Refund of money paid to U.S. Patent and Trademark Office
          2.209
          Refusal of affidavit or declaration of use under sec. 8
          2.163
          Refusal of affidavit or declaration of use under sec. 71
          7.39
          Refusal of registration
          2.61
          Refusal of renewal
          2.184
          Refusal of request for extension of time to file a statement of use
          2.89(g)
          Registered extension of protection. (See Extension of protection of international registration to United States)
          Registrability of marks in plurality of classes (combined applications)
          2.86
          Registrant claiming benefits of 1946 Act
          2.153-2.156
          Registration as evidence in inter partes proceeding:
          File of registration which is the subject of the proceeding
          2.122(b)
          Registration owned by any party to proceeding
          2.122(d)(2)

          Registration pleaded by opposer or petitioner
          2.122(d)(1)
          Registration records open to public inspection
          2.27(d)
          Registrations, printed copies available
          2.201
          Related company or predecessor, use by
          2.38
          Reinstatement:
          Of an abandoned application
          2.64(a)
          Deadline
          2.64(a)(1))
          Requirements
          2.64(a)(2))
          Of cancelled or expired registration
          2.64(b)
          Deadline
          2.64(b)(1))
          Requirements
          2.64(b)(2))
          May be construed as petition
          2.64(c)
          Remand to Examiner:
          After decision in inter partes case
          2.131
          During appeal from refusal of registration
          2.142(d), (f)
          During inter partes case
          2.130
          Renewal of registration
          2.181-2.186, 7.41
          Application for renewal, requirements
          2.183
          Failure to renew registration involved in inter partes proceeding
          2.134(b)
          Of international registration
          7.41
          Period in which to file
          2.182
          Refusal of renewal
          2.184
          Review of Examiner's refusal by Director
          2.186
          Term of original registrations and renewals
          2.181
          Replacement
          7.28, 7.29
          Reply briefs in inter partes proceedings
          2.127(a)
          Representation of others before the U.S. Patent and Trademark Office
           11.14
          Representative, domestic or U.S. (See Domestic representative)
          Representation, recognition for
          2.17, 11.14
          Representation, requirement for
          2.11
          Republication of marks registered under prior acts
          2.153-2.156
          Request for admissions (discovery). (See Admissions, request for)
          Request for Extension of protection of international registration to United States. (See Extension of protection of international registration to United States)
          Request for extension of time for discovery and testimony. (See Extension of time for discovery and testimony)
          Request for extension of time to file opposition. (See Extension of time for filing opposition)
          Request for extension of time to file statement of use. (See Extension of time to file statement of use)
          Request for information, exhibits, affidavits, declarations, and additional specimens by Examiner
          2.61(b)
          Request for production (discovery). (See Production of documents and things, request for)
          Request for reconsideration. See Reconsideration.
          Request for records
          2.201
          Request for registration
          2.32(a)(1)
          Request to divide an application
          2.87
          Request to divide a registration
          2.171(b)
          Requirements for receiving a filing date
          2.21, 7.26
          Requirements for written application
          2.32-2.34
          Registration of marks registered under prior acts
          2.158
          Response to official action
          2.62
          Restriction on holder's right to dispose of international registration
          7.24
          Request for reinstatement. See Reinstatement.
          Review by Director:

          For relief from repeated formal requirement by Examiner
          2.63(b)
          Of adverse action on correction, disclaimer, surrender, etc. of registration
          2.176
          Of refusal of affidavit or declaration of use under sec. 8
          2.165
          Of refusal of affidavit or declaration of use under sec. 71
          7.40
          Of refusal of renewal application
          2.186
          Petitions to the Director
          2.146
          Revival of abandoned applications
          2.66
          Revocation of power of attorney
          2.19
          Rules of evidence in inter partes cases
          2.122(a)
          Requirement to correspond electronically:
          Email address
          2.23(b)
          Trademark correspondence
          2.23
          Revival of applications abandoned in full or in part due to unintentional delay:
          Deadline
          2.66(a)
          For failure to respond to a notice of allowance
          2.66(c)
          For failure to respond to an Office action
          2.66(b)
          Reconsideration of denial of petition to revive
          2.66(e)
          Rules of practice in trademark cases:
          Suspension, petition to Director
          2.146(a)(5), 2.148
          Waiver, petition to Director
          2.146(a)(5), 2.148
          S
          Sanction for failure to comply with discovery order
          2.120(h)
          Sanction for failure to comply with protective order relating to testimony
          2.125(f)
          Saturday, Sunday, or Federal holiday, time for taking action expiring on
          2.195, 2.196
          Schedule of classes of goods and services
          2.85, 6.1-6.4
          Schedule of time for discovery and trial periods
          2.120(a), 2.121
          Sec. 2(f), proof of distinctiveness
          2.41
          Sec. 8 affidavit or declaration of use
          2.160-2.166
          Sec. 44, application based on:
          Amendment to change application to different register
          2.75(a)
          Amendment to description or drawing in mark
          2.72(c)
          Basis for filing
          2.34
          Certification mark
          2.45(b)
          Collective mark
          2.44(b)
          Drawing required
          2.32(c)
          Filing-date requirements
          2.21
          Goods or services identified may not exceed scope of those in foreign application or registration
          2.32(a)(6)
          Priority claim
          2.34(a)(4)
          Requirements for drawings
          2.52-2.54
          Requirements for written application
          2.32-2.34
          Supplemental Register
          2.47(b)
          Sec. 71 affidavit or declaration of use
          7.36-7.40
          Service charge for filing renewal application during grace period
          2.6(a)(6), 2.185
          Services marks
          2.43
          Specimens
          2.56(c)
          Service of copies of testimony
          2.125
          Service and signing of submissions
          2.119
          Signature and certificate of attorney
          11.18
          Signature of applicant
          2.33
          Signature of electronically-filed document
          2.193(c)
          Single certificate for one mark registered in a plurality of classes
          2.86(c)
          Specimens
          2.56, 2.59

          Electronically-filed
          2.56(d)(4), 2.161(g)

          Not evidence on behalf of applicant or registrant in inter partes proceeding
          2.122(b)(2)
          Of service mark
          2.56(b)(2)
          Requirement of filing with affidavit or declaration of use under sec. 8
          2.161(g)
          Requirement of filing with affidavit or declaration of use under sec. 71
          7.37(g)
          Requirement of filing with amendment to allege use
          2.76(b)(2)
          Requirement of filing with statement of use
          2.88(b)(2), (c)(2)
          Support of amendment to application
          2.71, 2.72
          Support of amendment to registration
          2.173
          Statement of use
          2.88
          Amendments to description or drawing of mark after filing
          2.72(b)(1)
          Amendments to dates of use after filing
          2.71(c)(2)
          Extensions of time to file
          2.89
          Fee for filing
          2.6(a)(3)
          May not be withdrawn
          2.88(g)
          Minimum requirements for filing
          2.88(e)
          Requirements for
          2.88(b)
          Time for filing
          2.88(a)
          Status of application after ex parte appeal
          2.142(g)

          Status of application and registration on termination of inter partes proceedings
          2.136
          Stipulated evidence, inter partes cases
          2.123(b)
          Stipulation to extend discovery and/or trial periods
          2.120(a), 2.121
          Subsequent designation
          7.21
          Address for mailing paper
          , 2.190(a)
          Cannot be filed by fax
          2.195(c)
          Fees for
          7.7, 7.21(b)(8)
          Must be filed through TEAS or on International Bureau's form
          7.21(b)
          Substitute specimens, filing of
          2.59
          Summary judgments in inter partes proceedings
          2.127(e)
          Sunday, Saturday, or Federal holiday, time for taking action expiring on
          2.195, 2.196
          Supplemental Register:
          Amendment from Principal Register
          2.47(c), 2.75(c)
          Application requirements
          2.47
          Approval
          2.82
          Cancellation
          2.111
          Certificate of registration
          2.82
          Intent-to-use applications, when eligible
          2.47(d)
          Marks published when registered
          2.82
          Marks in request for extension of protection of international registration not registrable on
          2.47(c), 2.75(c)
          Surrender of certificate of registration
          2.172
          During inter partes proceeding
          2.134
          Suspension of action in application by U.S. Patent and Trademark Office
          2.67
          Suspension from practice before U.S. Patent and Trademark Office
          11.11; 11.25
          Suspension of later filed conflicting application
          2.83
          Suspension of inter partes proceedings by Trademark Trial and Appeal Board:
          For good cause upon motion or stipulation
          2.117(c)
          Pending disposition of motion potentially dispositive of case
          2.127(d)
           Pending disposition of motion to compel
          2.120(f)(2)
          Pending disposition of motion to test sufficiency of response to request for admission
          2.120(i)(2)
          Pending termination of civil action or other Board proceeding
          2.117(a)

          Suspension of rules, Director
          2.146(a)(5), 2.148
          T
          TEAS
          2.2(f), 2.6(a)(1), 2.52(c), 2.56(d), 2.161(g)(3), 2.193(a)(2)
          Application filing fee
          2.6(a)(1)
          Definition of
          2.2(f)
           Drawing
          2.52(c), 2.53
          Signature
          2.193
          Specimen
          2.56(d), 2.161(g)(3)
          TEAS Plus
          2.6(a)(1)(iv), 2.22
          Term of original registrations and renewals
          2.181
          Testimony in inter partes cases:
          Assignment and resetting of times
          2.121
          By affidavit or declaration
          2.123(a)
          By oral examination
          2.123
          By written questions
          2.124
          Failure to take
          2.132
          Filing and service of testimony
          2.123(f), 2.124(f), 2.125
          Arrangement, indexing, and form of transcript
          2.123(g); 2.125 (c), (e)
          Corrections to
          2.124(f), 2.125(b)
          Deposition must be filed
          2.123(h)
          Filing with Trademark Trial and Appeal Board
          2.123(f), 2.124(f), 2.125(d), 2.126(a), 2.191
          Service on adverse party
          2.124(f), 2.125(a), (b)
          From another proceeding
          2.122(f)
          In foreign countries
          2.123(a)(2)
          Objections to
          2.123 (e), (i), (j); 2.124(d), (g)
          Stipulated testimony
          2.123(b)
          Time:
          For amendment
          2.62
          For ex parte appeal
          2.142(a)
          For filing affidavit or declaration to avoid cancellation
          2.160(a), 7.36(b)
          For filing amendment to allege use
          2.76(a)
          For filing appeal to court or civil action
          2.145(d)
          For filing briefs in inter partes proceedings
          2.127
          For filing extension of time to oppose
          2.102
          For filing opposition
          2.101(c)
          For filing petition for cancellation
          2.111(b)
          For filing request for extension of time to file statement of use
          2.89(a), (b)
          For filing request to divide application
          2.87(c)
          For filing statement of use
          2.88(a)
          For response to U.S. Patent and Trademark Office action
          2.62
          For taking discovery
          2.120(a)
          For taking testimony
          2.121
          Transformation
           7.31
          Translation of assignment
          3.26
          U
          Undelivered Office notices, to applicant or registrant
          2.118
          Unprofessional conduct, attorneys
          11.101-11.901
          Unprovided for and extraordinary circumstances, petition to Director
          2.146(a)(4), (5)
          U.S. Court of Appeals for the Federal Circuit, appeal to
          2.145
          Use:
          Allegation of use in commerce
          2.34, 2.76, 2.88
          Amendment to allege use in commerce
          2.76
          Bona fide intention to use in commerce
          2.34, 2.89

          By predecessor or by related companies
          2.38
          Dates of first use and first use in commerce
          2.34(a)(1)(ii) and (iii)
          Statement of use
          2.88
          Use of discovery
          2.120(k)
          V
          Verification:
          Declaration in lieu of oath or verification
          2.20
          In support of amendments to descriptions or drawings of the mark
          2.72
          In support of amendments to dates of use
          2.71(c)
          In support of request for extension of time to file statement of use
          2.89
          Of application
          2.33
          Of electronically-filed document
          2.193
          Required with amendment to allege use
          2.76(b)(1), (g)
          Required with statement of use
          2.88(b)(1), (c)(3)
          Required with substitute specimens
          2.59
          W
          Waiver of rule, petition to Director
          2.146(a)(5), 2.148
          Willful false statements, declaration
          2.20
          Withdrawal from employment, practitioners
          2.19, 11.116
          Withdrawal of amendment to allege use
          2.76(f)
          Withdrawal of application
          2.68
          Involved in inter partes proceeding
          2.135
          Withdrawal of opposition with or without consent
          2.106(c)
          Withdrawal of cancellation with or without consent
          2.114(c)
          Withdrawal of registration by voluntary surrender by registrant:
          Involved in cancellation proceeding
          2.134
          Requirements for
          2.172
          Withdrawal of statement of use prohibited
          2.88(f)
          Witnesses:
          Discovery deposition
          2.120(b), (c)
          Examination by oral deposition (Testimony)
          2.123
          Examination by written questions
          2.124
          Foreign
          2.120(c), 2.123(a)(2)
          Testimony by affidavit or declaration
          2.123(a)
          Written application
          2.32-2.47
          37 CFR Ch. I (7-1-20 Edition)
          U.S. Patent and Trademark Office, Commerce

            PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

          PART 10 [RESERVED]

          Pt. 11
          PART 11—REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE

              Subpart A—General Provisions

                General Information
                Sec.
                11.1
                Definitions.
                11.2
                Director of the Office of Enrollment and Discipline.
                11.3
                Suspension of rules.

              Subpart B—Recognition To Practice Before the USPTO

                Patents, Trademarks, and Other Non-Patent Law
                11.4
                [Reserved]
                11.5
                Register of attorneys and agents in patent matters; practice before the Office.
                11.6
                Registration of attorneys and agents.
                11.7
                Requirements for registration.
                11.8
                Oath and registration fee.
                11.9
                Limited recognition in patent matters.
                11.10
                Restrictions on practice in patent matters.
                11.11
                Administrative suspension, inactivation, resignation, and readmission.
                11.12-11.13
                [Reserved]
                11.14
                Individuals who may practice before the Office in trademark and other non-patent matters.
                11.15
                Refusal to recognize a practitioner.
                11.16
                Requirements for admission to the USPTO Law School Clinic Certification Program.
                11.17
                Requirements for participation in the USPTO Law School Clinic Certification Program.
                11.18
                Signature and certificate for correspondence filed in the Office.

              Subpart C—Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, Investigations, and Proceedings
              11.19
              Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status.
              11.20
              Disciplinary sanctions; Transfer to disability inactive status.
              11.21
              Warnings.
              11.22
              Disciplinary investigations.
              11.23
              Committee on Discipline.
              11.24
              Reciprocal discipline.
              11.25
              Interim suspension and discipline based upon conviction of committing a serious crime.
              11.26
              Settlement.
              11.27
              Exclusion on consent.
              11.28
              Incapacitated practitioners in a disciplinary proceeding.
              11.29
              Reciprocal transfer or initial transfer to disability inactive status.
              11.30-11.31
              [Reserved]
              11.32
              Instituting a disciplinary proceeding.
              11.33
              [Reserved]
              11.34
              Complaint.
              11.35
              Service of complaint.
              11.36
              Answer to complaint.
              11.37
              [Reserved]
              11.38
              Contested case.
              11.39
              Hearing officer; appointment; responsibilities; review of interlocutory orders; stays.
              11.40
              Representative for OED Director or respondent.
              11.41
              Filing of papers.
              11.42
              Service of papers.
              11.43
              Motions.
              11.44
              Hearings.
              11.45
              Amendment of pleadings.
              11.46-11.48
              [Reserved]
              11.49
              Burden of proof.
              11.50
              Evidence.
              11.51
              Depositions.
              11.52
              Discovery.
              11.53
              Proposed findings and conclusions; post-hearing memorandum.
              11.54
              Initial decision of hearing officer.
              11.55
              Appeal to the USPTO Director.
              11.56
              Decision of the USPTO Director.
              11.57
              Review of final decision of the USPTO Director.
              11.58
              Duties of disciplined or resigned practitioner.
              11.59
              Dissemination of disciplinary and other information.
              11.60
              Petition for reinstatement.
              11.61-11.99
              [Reserved]

              Subpart D—USPTO Rules of Professional Conduct
              11.100
              [Reserved]

                Client-Practitioner Relationship
                11.101
                Competence.
                11.102
                Scope of representation and allocation of authority between client and practitioner.
                11.103
                Diligence.
                11.104
                Communication.
                11.105
                Fees.
                11.106
                Confidentiality of information.
                11.107
                Conflict of interest; Current clients.

                11.108
                Conflict of interest; Current clients; Specific rules.
                11.109
                Duties to former clients.
                11.110
                Imputation of conflicts of interest; General rule.
                11.111
                Former or current Federal Government employees.
                11.112
                Former judge, arbitrator, mediator or other third-party neutral.
                11.113
                Organization as client.
                11.114
                Client with diminished capacity.
                11.115
                Safekeeping property.
                11.116
                Declining or terminating representation.
                11.117
                Sale of law practice.
                11.118
                Duties to prospective client.
                11.119-11.200
                [Reserved]

                Counselor
                11.201
                Advisor.
                11.202
                [Reserved]
                11.203
                Evaluation for use by third persons.
                11.204
                Practitioner serving as third-party neutral.
                11.205-11.300
                [Reserved]

                Advocate
                11.301
                Meritorious claims and contentions.
                11.302
                Expediting proceedings.
                11.303
                Candor toward the tribunal.
                11.304
                Fairness to opposing party and counsel.
                11.305
                Impartiality and decorum of the tribunal.
                11.306
                Trial publicity.
                11.307
                Practitioner as witness.
                11.308
                [Reserved]
                11.309
                Advocate in nonadjudicative proceedings.
                11.310-11.400
                [Reserved]

                Transactions With Persons Other Than Clients
                11.401
                Truthfulness in statements to others.
                11.402
                Communication with person represented by a practitioner.
                11.403
                Dealing with unrepresented person.
                11.404
                Respect for rights of third persons.
                11.405-11.500
                [Reserved]

                Law Firms and Associations
                11.501
                Responsibilities of partners, managers, and supervisory practitioners.
                11.502
                Responsibilities of a subordinate practitioner.
                11.503
                Responsibilities regarding non-practitioner assistance.
                11.504
                Professional independence of a practitioner.
                11.505
                Unauthorized practice of law.
                11.506
                Restrictions on right to practice.
                11.507
                Responsibilities regarding law-related services.
                11.508-11.700
                [Reserved]

                Information About Legal Services
                11.701
                Communications concerning a practitioner's services.
                11.702
                Advertising.
                11.703
                Direct contact with prospective clients.
                11.704
                Communication of fields of practice and specialization.
                11.705
                Firm names and letterheads.
                11.706-11.800
                [Reserved]

                Maintaining the Integrity of the Profession
                11.801
                Registration, recognition and disciplinary matters.
                11.802
                Judicial and legal officials.
                11.803
                Reporting professional misconduct.
                11.804
                Misconduct.
                11.805-11.900
                [Reserved]
                11.901
                Savings clause.

            Authority:
            5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 41; Sec. 1, Pub. L. 113-227, 128 Stat. 2114.

            Source:
            69 FR 35452, June 24, 2004, unless otherwise noted.

            Subpart A—General Provisions

              General Information

                § 11.1
                Definitions.
                This part governs solely the practice of patent, trademark, and other law before the United States Patent and Trademark Office. Nothing in this part shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary for the United States Patent and Trademark Office to accomplish its Federal objectives. Unless otherwise clear from the context, the following definitions apply to this part:

                  Attorney or lawyer means an individual who is an active member in good standing of the bar of the highest court of any State. A non-lawyer means a person who is not an attorney or lawyer.

                  Belief or believes means that the person involved actually supposed the fact in question to be true. A person's belief may be inferred from circumstances.

                  Confirmed in writing, when used in reference to the informed consent of a person, means informed consent that is given in writing by the person or a writing that a practitioner promptly transmits to the person confirming an oral informed consent. If it is not feasible to obtain or transmit the writing at the time the person gives informed consent, then the practitioner must obtain or transmit it within a reasonable time thereafter.

                  Conviction or convicted means any confession to a crime; a verdict or judgment finding a person guilty of a crime; any entered plea, including nolo contendre or Alford plea, to a crime; or receipt of deferred adjudication (whether judgment or sentence has been entered or not) for an accused or pled crime.

                  Crime means any offense declared to be a felony or misdemeanor by Federal or State law in the jurisdiction where the act occurs.

                  Data sheet means a form used to collect the name, address, and telephone information from individuals recognized to practice before the Office in patent matters.

                  Disqualified means any action that prohibits a practitioner from participating in or appearing before the program or agency, regardless of how long the prohibition lasts or the specific terminology used.

                  Federal agency means any authority of the executive branch of the Government of the United States.

                  Federal program means any program established by an Act of Congress or administered by a Federal agency.

                  Firm or law firm means a practitioner or practitioners in a law partnership, professional corporation, sole proprietorship or other association authorized to practice law; or practitioners employed in a legal services organization or the legal department of a corporation or other organization.

                  Fiscal year means the time period from October 1st through the ensuing September 30th.

                  Fraud or fraudulent means conduct that involves a misrepresentation of material fact made with intent to deceive or a state of mind so reckless respecting consequences as to be the equivalent of intent, where there is justifiable reliance on the misrepresentation by the party deceived, inducing the party to act thereon, and where there is injury to the party deceived resulting from reliance on the misrepresentation. Fraud also may be established by a purposeful omission or failure to state a material fact, which omission or failure to state makes other statements misleading, and where the other elements of justifiable reliance and injury are established.

                  Good moral character and reputation means the possession of honesty and truthfulness, trustworthiness and reliability, and a professional commitment to the legal process and the administration of justice, as well as the condition of being regarded as possessing such qualities.

                  Grievance means a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.

                  Informed consent means the agreement by a person to a proposed course of conduct after the practitioner has communicated adequate information and explanation about the material risks of and reasonably available alternatives to the proposed course of conduct.

                  Knowingly, known, or knows means actual knowledge of the fact in question. A person's knowledge may be inferred from circumstances.

                  Law-related services means services that might reasonably be performed in conjunction with and in substance are related to the provision of legal services, and that are not prohibited as unauthorized practice of law when provided by a non-lawyer.

                  OED means the Office of Enrollment and Discipline.

                  OED Director means the Director of the Office of Enrollment and Discipline.

                  OED Director's representatives means attorneys within the USPTO Office of General Counsel who act as representatives of the OED Director.

                  Office means the United States Patent and Trademark Office.

                  Partner means a member of a partnership, a shareholder in a law firm organized as a professional corporation, or a member of an association authorized to practice law.

                  Person means an individual, a corporation, an association, a trust, a partnership, and any other organization or legal entity.

                  Practitioner means:

                (1) An attorney or agent registered to practice before the Office in patent matters;
                (2) An individual authorized under 5 U.S.C. 500(b), or otherwise as provided by § 11.14(a), (b), and (c), to practice before the Office in trademark matters or other non-patent matters;
                (3) An individual authorized to practice before the Office in a patent case or matters under § 11.9(a) or (b); or
                (4) An individual authorized to practice before the Office under § 11.16(d).

                  Proceeding before the Office means an application for patent, an application for reissue, a reexamination, a protest, a public use matter, an inter partes patent matter, correction of a patent, correction of inventorship, an application to register a trademark, an inter partes trademark matter, an appeal, a petition, and any other matter that is pending before the Office.

                  Reasonable or reasonably when used in relation to conduct by a practitioner means the conduct of a reasonably prudent and competent practitioner.

                  Reasonable belief or reasonably believes when used in reference to a practitioner means that the practitioner believes the matter in question and that the circumstances are such that the belief is reasonable.

                  Reasonably should know when used in reference to a practitioner means that a practitioner of reasonable prudence and competence would ascertain the matter in question.

                  Registration means registration to practice before the Office in patent proceedings.

                  Roster means a list of individuals who have been registered as either a patent attorney or patent agent.

                  Screened means the isolation of a practitioner from any participation in a matter through the timely imposition of procedures within a firm that are reasonably adequate under the circumstances to protect information that the isolated practitioner is obligated to protect under these USPTO Rules of Professional Conduct or other law.

                  Serious crime means:
                (1) Any criminal offense classified as a felony under the laws of the United States, any state or any foreign country where the crime occurred; or
                (2) Any crime a necessary element of which, as determined by the statutory or common law definition of such crime in the jurisdiction where the crime occurred, includes interference with the administration of justice, false swearing, misrepresentation, fraud, willful failure to file income tax returns, deceit, bribery, extortion, misappropriation, theft, or an attempt or a conspiracy or solicitation of another to commit a “serious crime.”

                  Significant evidence of rehabilitation means satisfactory evidence that is significantly more probable than not that there will be no recurrence in the foreseeable future of the practitioner's prior disability or addiction.

                  State means any of the 50 states of the United States of America, the District of Columbia, and any Commonwealth or territory of the United States of America.

                  Substantial when used in reference to degree or extent means a material matter of clear and weighty importance.

                  Suspend or suspension means a temporary debarring from practice before the Office or other jurisdiction.

                  Tribunal means the Office, a court, an arbitrator in a binding arbitration proceeding or a legislative body, administrative agency or other body acting in an adjudicative capacity. A legislative body, administrative agency or other body acts in an adjudicative capacity when a neutral official, after the presentation of evidence or legal argument by a party or parties, will render a binding legal judgment directly affecting a party's interests in a particular matter.

                  United States means the United States of America, and the territories and possessions the United States of America.

                  USPTO Director means the Director of the United States Patent and Trademark Office, or an employee of the Office delegated authority to act for the Director of the United States Patent and Trademark Office in matters arising under this part.

                  Writing or written means a tangible or electronic record of a communication or representation, including handwriting, typewriting, printing, photostating, photography, audio or video recording and electronic communications. A “signed” writing includes an electronic sound, symbol or process attached to or logically associated with a writing and executed or adopted by a person with the intent to sign the writing.
                [69 FR 35452, June 24, 2004, as amended at 73 FR 47687, Aug. 14, 2008; 77 FR 45251, July 31, 2012; 78 FR 20197, Apr. 3, 2013; 81 FR 33596, May 27, 2016]

                § 11.2
                Director of the Office of Enrollment and Discipline.
                (a) Appointment. The USPTO Director shall appoint a Director of the Office of Enrollment and Discipline (OED Director). In the event of a vacancy in the office of the OED Director, the USPTO Director may designate an employee of the Office to serve as acting OED Director. The OED Director shall be an active member in good standing of the bar of the highest court of a State.
                (b) Duties. The OED Director shall:
                (1) Supervise staff as may be necessary for the performance of the OED Director's duties.
                (2) Receive and act upon applications for registration, prepare and grade the examination provided for in § 11.7(b), maintain the register provided for in § 11.5, and perform such other duties in connection with enrollment and recognition of attorneys and agents as may be necessary.
                (3) Conduct investigations into the moral character and reputation of any individual seeking to be registered as an attorney or agent, or of any individual seeking limited recognition, deny registration or recognition of individuals failing to demonstrate possession of good moral character and reputation, and perform such other duties in connection with enrollment matters and investigations as may be necessary.
                (4) Conduct investigations of matters involving possible grounds for discipline of practitioners coming to the attention of the OED Director. Except in matters meriting summary dismissal, no disposition under § 11.22(h) shall be recommended or undertaken by the OED Director until the accused practitioner shall have been afforded an opportunity to respond to a reasonable inquiry by the OED Director.
                (5) With the consent of a panel of three members of the Committee on Discipline, initiate disciplinary proceedings under § 11.32 and perform such other duties in connection with investigations and disciplinary proceedings as may be necessary.
                (6) Oversee the preliminary screening of information and close investigations as provided for in § 11.22.
                (7) [Reserved]
                (c) Petition to OED Director regarding enrollment or recognition. Any petition from any action or requirement of the staff of OED reporting to the OED Director shall be taken to the OED Director accompanied by payment of the fee set forth in § 1.21(a)(5)(i) of this chapter. Any such petition not filed within sixty days from the mailing date of the action or notice from which relief is requested will be dismissed as untimely. The filing of a petition will neither stay the period for taking other action which may be running, nor stay other proceedings. The petitioner may file a single request for reconsideration of a decision within thirty days of the date of the decision. Filing a request for reconsideration stays the period for seeking review of the OED Director's decision until a final decision on the request for reconsideration is issued.
                (d) Review of OED Director's decision regarding enrollment or recognition. A party dissatisfied with a final decision of the OED Director regarding enrollment or recognition shall seek review of the decision upon petition to the USPTO Director accompanied by payment of the fee set forth in § 1.21(a)(5)(ii) of this chapter. By filing such petition to the USPTO Director, the party waives any right to seek reconsideration from the OED Director. Any petition not filed within thirty days after the final decision of the OED Director may be dismissed as untimely. Briefs or memoranda, if any, in support of the petition shall accompany the petition. The petition will be decided on the basis of the record made before the OED Director. The USPTO Director in deciding the petition will consider no new evidence. Copies of documents already of record before the OED Director shall not be submitted with the petition. An oral hearing will not be granted except when considered necessary by the USPTO Director. Any request for reconsideration of the decision of the USPTO Director may be dismissed as untimely if not filed within thirty days after the date of said decision. Only a decision of the USPTO Director regarding denial of a petition constitutes a final decision for the purpose of judicial review.
                (e) Petition to USPTO Director in disciplinary matters. A party dissatisfied with any action or notice of any employee of the Office of Enrollment and Discipline during or at the conclusion of a disciplinary investigation shall seek review of the action or notice upon petition to the OED Director. A petition from any action or notice of the staff reporting to the OED Director shall be taken to the OED Director. A party dissatisfied with the OED Director's final decision shall seek review of the final decision upon petition to the USPTO Director to invoke the supervisory authority of the USPTO Director in appropriate circumstances in disciplinary matters. Any petition under this paragraph must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support of the petition must accompany the petition. Where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition. The OED Director may be directed by the USPTO Director to file a reply to the petition to the USPTO Director, supplying a copy to the petitioner. An oral hearing on petition taken to the USPTO Director will not be granted except when considered necessary by the USPTO Director. The filing of a petition under this paragraph will not stay an investigation, disciplinary proceeding, or other proceedings. Any petition under this part not filed within thirty days of the mailing date of the action or notice from which relief is requested may be dismissed as untimely. Any request for reconsideration of the decision of the OED Director or the USPTO Director may be dismissed as untimely if not filed within thirty days after the date of said decision. Only a decision of the USPTO Director regarding denial of a petition constitutes a final decision for the purpose of judicial review.
                [69 FR 35452, June 24, 2004, as amended at 73 FR 47687, Aug. 14, 2008; 78 FR 20198, Apr. 3, 2013]

                § 11.3
                Suspension of rules.

                (a) In an extraordinary situation, when justice requires, any requirement of the regulations of this Part which is not a requirement of statute may be suspended or waived by the USPTO Director or the designee of the USPTO Director, sua sponte, or on petition by any party, including the OED Director or the OED Director's representative, subject to such other requirements as may be imposed.
                (b) No petition under this section shall stay a disciplinary proceeding unless ordered by the USPTO Director or a hearing officer.
                [73 FR 47688, Aug. 14, 2008]

            Subpart B—Recognition To Practice Before the USPTO

              Patents, Trademarks, and Other Non-Patent Law

                § 11.4
                [Reserved]

                § 11.5
                Register of attorneys and agents in patent matters; practice before the Office.
                (a) A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants having prospective or immediate business before the Office in the preparation and prosecution of patent applications. Registration in the Office under the provisions of this part shall entitle the individuals so registered to practice before the Office only in patent matters.
                (b) Practice before the Office. Practice before the Office includes, but is not limited to, law-related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees relating to a client's rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent or registration of a trademark, or for enrollment or disciplinary matters. Such presentations include preparing necessary documents in contemplation of filing the documents with the Office, corresponding and communicating with the Office, and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the Office. Nothing in this section proscribes a practitioner from employing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitioner in matters pending or contemplated to be presented before the Office.
                (1) Practice before the Office in patent matters. Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding. Registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate. The services include:
                (i) Considering the advisability of relying upon alternative forms of protection which may be available under state law, and
                (ii) Drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, where the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and when drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.
                (2) Practice before the Office in trademark matters. Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an application for trademark registration; preparing an amendment which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.
                [73 FR 47688, Aug. 14, 2008, as amended at 77 FR 46629, Aug. 6, 2012]

                § 11.6
                Registration of attorneys and agents.
                (a) Attorneys. Any citizen of the United States who is an attorney and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office. When appropriate, any alien who is an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office, provided that such registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States and further provided that the alien may remain registered only:
                (1) If the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States, or

                (2) If the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 11.9(b).
                (b) Agents. Any citizen of the United States who is not an attorney, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office. When appropriate, any alien who is not an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office, provided that such registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States, and further provided that the alien may remain registered only:
                (1) If the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or

                (2) If the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 11.9(b).
                (c) Foreigners. Any foreigner not a resident of the United States who shall file proof to the satisfaction of the OED Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices, and who is possessed of the qualifications stated in § 11.7, may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided that the patent office of such country allows substantially reciprocal privileges to those admitted to practice before the Office. Registration as a patent agent under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain. Upon notice by the patent office of such country that a patent agent registered under this section is no longer registered or no longer in good standing before the patent office of such country, and absent a showing of cause why his or her name should not be removed from the register, the OED Director shall promptly remove the name of the patent agent from the register and publish the fact of removal. Upon ceasing to reside in such country, the patent agent registered under this section is no longer qualified to be registered under this section, and the OED Director shall promptly remove the name of the patent agent from the register and publish the fact of removal.
                (d) Patent Trial and Appeal Board matters. For action by a person who is not registered in a proceeding before the Patent Trial and Appeal Board, see § 41.5(a) or § 42.10(c) of this title.
                [69 FR 35452, June 24, 2004, as amended at 69 FR 50003, Aug. 12, 2004; 77 FR 46629, Aug. 6, 2012]

                § 11.7
                Requirements for registration.
                (a) No individual will be registered to practice before the Office unless he or she has:
                (1) Applied to the USPTO Director in writing by completing an application for registration form supplied by the OED Director and furnishing all requested information and material; and
                (2) Established to the satisfaction of the OED Director that he or she:
                (i) Possesses good moral character and reputation;
                (ii) Possesses the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service; and
                (iii) Is competent to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.
                (b)(1) To enable the OED Director to determine whether an individual has the qualifications specified in paragraph (a)(2) of this section, the individual shall:
                (i) File a complete application for registration each time admission to the registration examination is requested. A complete application for registration includes:
                (A) An application for registration form supplied by the OED Director wherein all requested information and supporting documents are furnished,
                (B) Payment of the fees required by § 1.21(a)(1) of this subchapter,
                (C) Satisfactory proof of scientific and technical qualifications, and
                (D) For aliens, provide proof that recognition is not inconsistent with the terms of their visa or entry into the United States;

                (ii) Pass the registration examination, unless the taking and passing of the examination is waived as provided in paragraph (d) of this section. Unless examination is waived pursuant to paragraph (d) of this section, each individual seeking registration must take and pass the registration examination to enable the OED Director to determine whether the individual possesses the legal and competence qualifications specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of this section. An individual failing the examination may, upon receipt of notice of failure from OED, reapply for admission to the examination. An individual failing the examination must wait thirty days after the date the individual last took the examination before retaking the examination. An individual reapplying shall:
                (A) File a completed application for registration form wherein all requested information and supporting documents are furnished,
                (B) Pay the fees required by § 1.21(a)(1) of this subchapter, and
                (C) For aliens, provide proof that recognition is not inconsistent with the terms of their visa or entry into the United States; and
                (iii) Provide satisfactory proof of possession of good moral character and reputation.
                (2) An individual failing to file a complete application for registration will not be admitted to the examination and will be notified of the incompleteness. Applications for registration that are incomplete as originally submitted will be considered only when they have been completed and received by OED, provided that this occurs within sixty days of the mailing date of the notice of incompleteness. Thereafter, a new and complete application for registration must be filed. Only an individual approved as satisfying the requirements of paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (b)(1)(i)(C) and (b)(1)(i)(D) of this section may be admitted to the examination.
                (3) If an individual does not reapply until more than one year after the mailing date of a notice of failure, that individual must again comply with paragraph (b)(1)(i) of this section.
                (c) Each individual seeking registration is responsible for updating all information and answers submitted in or with the application for registration based upon anything occurring between the date the application for registration is signed by the individual, and the date he or she is registered or recognized to practice before the Office in patent matters. The update shall be filed within thirty days after the date of the occasion that necessitates the update.
                (d) Waiver of the Registration Examination for Former Office Employees—(1) Former patent examiners who by July 26, 2004, had not actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may waive the taking of a registration examination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner but by July 26, 2004, had not served four years in the patent examining corps, if the individual demonstrates that he or she:
                (i) Actively served in the patent examining corps of the Office and was serving in the corps at the time of separation from the Office;
                (ii) Received a certificate of legal competency and negotiation authority;
                (iii) After receiving the certificate of legal competency and negotiation authority, was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner; and
                (iv) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.
                (2) Former patent examiners who on July 26, 2004, had actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may waive the taking of a registration examination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner and by July 26, 2004, had served four years in the patent examining corps, if the individual demonstrates that he or she:

                (i) Actively served for at least four years in the patent examining corps of the Office by July 26, 2004, and was serving in the corps at the time of separation from the Office;

                (ii) Was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner in the Office; and
                (iii) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.
                (3) Certain former Office employees who were not serving in the patent examining corps upon their separation from the Office. The OED Director may waive the taking of a registration examination in the case of a former Office employee meeting the requirements of paragraph (b)(1)(i)(C) of this section who by petition demonstrates possession of the necessary legal qualifications to render to patent applicants and others valuable service and assistance in the preparation and prosecution of their applications or other business before the Office by showing that he or she has:
                (i) Exhibited comprehensive knowledge of patent law equivalent to that shown by passing the registration examination as a result of having been in a position of responsibility in the Office in which he or she:
                (A) Provided substantial guidance on patent examination policy, including the development of rule or procedure changes, patent examination guidelines, changes to the Manual of Patent Examining Procedure, development of training or testing materials for the patent examining corps, or development of materials for the registration examination or continuing legal education; or
                (B) Represented the Office in patent cases before Federal courts; and
                (ii) Was rated at least fully successful in each quality performance element of his or her performance plan for said position for the last two complete rating periods in the Office, and was not under an oral or written warning regarding such performance elements at the time of separation from the Office.
                (4) To be eligible for consideration for waiver, an individual formerly employed by the Office within the scope of one of paragraphs (d)(1), (d)(2) or (d)(3) of this section must file a complete application for registration and pay the fee required by § 1.21(a)(1)(i) of this subchapter within two years of the individual's date of separation from the Office. All other individuals formerly employed by the Office, including former examiners, filing an application for registration or fee more than two years after separation from the Office, are required to take and pass the registration examination. The individual or former examiner must pay the examination fee required by § 1.21(a)(1)(ii) of this subchapter within thirty days after notice of non-waiver.
                (e) Examination results. Notification of the examination results is final. Within sixty days of the mailing date of a notice of failure, the individual is entitled to inspect, but not copy, the questions and answers he or she incorrectly answered. Review will be under supervision. No notes may be taken during such review. Substantive review of the answers or questions may not be pursued by petition for regrade. An individual who failed the examination has the right to retake the examination an unlimited number of times upon payment of the fees required by § 1.21(a)(1)(i) and (ii) of this subchapter, and a fee charged by a commercial entity administering the examination.
                (f) Application for reciprocal recognition. An individual seeking reciprocal recognition under § 11.6(c), in addition to satisfying the provisions of paragraphs (a) and (b) of this section, and the provisions of § 11.8(c), shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter upon filing an application for registration.
                (g) Investigation of good moral character and reputation. (1) Every individual seeking recognition shall answer all questions in the application for registration and request(s) for comments issued by OED; disclose all relevant facts, dates and information; and provide verified copies of documents relevant to his or her good moral character and reputation. An individual who is an attorney shall submit a certified copy of each of his or her State bar applications and moral character determinations, if available.

                (2)(i) If the OED Director receives information from any source that reflects adversely on the good moral character or reputation of an individual seeking registration or recognition, the OED Director shall conduct an investigation into the good moral character and reputation of that individual. The investigation will be conducted after the individual has passed the registration examination, or after the registration examination has been waived for the individual, as applicable. An individual failing to timely answer questions or respond to an inquiry by OED shall be deemed to have withdrawn his or her application, and shall be required to reapply, pass the examination, and otherwise satisfy all the requirements of this section. No individual shall be certified for registration or recognition by the OED Director until, to the satisfaction of the OED Director, the individual demonstrates his or her possession of good moral character and reputation.
                (ii) The OED Director, in considering an application for registration by an attorney, may accept a State bar's character determination as meeting the requirements set forth in paragraph (g) of this section if, after review, the Office finds no substantial discrepancy between the information provided with his or her application for registration and the State bar application and moral character determination, provided that acceptance is not inconsistent with other rules and the requirements of 35 U.S.C. 2(b)(2)(D).
                (h) Good moral character and reputation. Evidence showing lack of good moral character and reputation may include, but is not limited to, conviction of a felony or a misdemeanor identified in paragraph (h)(1) of this section, drug or alcohol abuse; lack of candor; suspension or disbarment on ethical grounds from a State bar; and resignation from a State bar while under investigation.
                (1) Conviction of felony or misdemeanor. An individual who has been convicted of a felony or a misdemeanor involving moral turpitude, breach of trust, interference with the administration of justice, false swearing, misrepresentation, fraud, deceit, bribery, extortion, misappropriation, theft, or conspiracy to commit any felony or misdemeanor, is presumed not to be of good moral character and reputation in the absence of a pardon or a satisfactory showing of reform and rehabilitation, and shall file with his or her application for registration the fees required by § 1.21(a)(1)(ii) and (a)(10) of this subchapter. The OED Director shall determine whether individuals convicted of said felony or misdemeanor provided satisfactory proof of reform and rehabilitation.
                (i) An individual who has been convicted of a felony or a misdemeanor identified in paragraph (h)(1) of this section shall not be eligible to apply for registration during the time of any sentence (including confinement or commitment to imprisonment), deferred adjudication, and period of probation or parole as a result of the conviction, and for a period of two years after the date of completion of the sentence, deferred adjudication, and period of probation or parole, whichever is later.
                (ii) The following presumptions apply to the determination of good moral character and reputation of an individual convicted of said felony or misdemeanor:
                (A) The court record or docket entry of conviction is conclusive evidence of guilt in the absence of a pardon or a satisfactory showing of reform or rehabilitation; and
                (B) An individual convicted of a felony or any misdemeanor identified in paragraph (h)(1) of this section is conclusively deemed not to have good moral character and reputation, and shall not be eligible to apply for registration for a period of two years after completion of the sentence, deferred adjudication, and period of probation or parole, whichever is later.
                (iii) The individual, upon applying for registration, shall provide satisfactory evidence that he or she is of good moral character and reputation.

                (iv) Upon proof that a conviction has been set aside or reversed, the individual shall be eligible to file a complete application for registration and the fee required by § 1.21(a)(1)(ii) of this subchapter and, upon passing the registration examination, have the OED Director determine, in accordance with paragraph (h)(1) of this section, whether, absent the conviction, the individual possesses good moral character and reputation.
                (2) Good moral character and reputation involving drug or alcohol abuse. An individual's record is reviewed as a whole to see if there is a drug or alcohol abuse issue. An individual appearing to abuse drugs or alcohol may be asked to undergo an evaluation, at the individual's expense, by a qualified professional approved by the OED Director. In instances where, before an investigation commences, there is evidence of a present abuse or an individual has not established a record of recovery, the OED Director may request the individual to withdraw his or her application, and require the individual to satisfactorily demonstrate that he or she is complying with treatment and undergoing recovery.
                (3) Moral character and reputation involving lack of candor. An individual's lack of candor in disclosing facts bearing on or relevant to issues concerning good moral character and reputation when completing the application or any time thereafter may be found to be cause to deny registration on moral character and reputation grounds.
                (4) Moral character and reputation involving suspension, disbarment, or resignation from a profession. (i) An individual who has been disbarred or suspended from practice of law or other profession, or has resigned in lieu of a disciplinary proceeding (excluded or disbarred on consent) shall be ineligible to apply for registration as follows:
                (A) An individual who has been disbarred from practice of law or other profession, or has resigned in lieu of a disciplinary proceeding (excluded or disbarred on consent) shall be ineligible to apply for registration for a period of five years from the date of disbarment or resignation.
                (B) An individual who has been suspended on ethical grounds from the practice of law or other profession shall be ineligible to apply for registration until expiration of the period of suspension.
                (C) An individual who was not only disbarred, suspended or resigned in lieu of a disciplinary proceeding, but also convicted in a court of a felony, or of a crime involving moral turpitude or breach of trust, shall be ineligible to apply for registration until the conditions in paragraphs (h)(1) and (h)(4) of this section are fully satisfied.
                (ii) An individual who has been disbarred or suspended, or who resigned in lieu of a disciplinary proceeding shall file an application for registration and the fees required by § 1.21(a)(1)(ii) and (a)(10) of this subchapter; provide a full and complete copy of the proceedings that led to the disbarment, suspension, or resignation; and provide satisfactory proof that he or she possesses good moral character and reputation. The following presumptions shall govern the determination of good moral character and reputation of an individual who has been licensed to practice law or other profession in any jurisdiction and has been disbarred, suspended on ethical grounds, or allowed to resign in lieu of discipline, in that jurisdiction:

                (A) A copy of the record resulting in disbarment, suspension or resignation is prima facie evidence of the matters contained in the record, and the imposition of disbarment or suspension, or the acceptance of the resignation of the individual shall be deemed conclusive that the individual has committed professional misconduct.
                (B) The individual is ineligible for registration and is deemed not to have good moral character and reputation during the period of the imposed discipline.
                (iii) The only defenses available with regard to an underlying disciplinary matter resulting in disbarment, suspension on ethical grounds, or resignation in lieu of a disciplinary proceeding are set out below, and must be shown to the satisfaction of the OED Director:
                (A) The procedure in the disciplinary court was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;

                (B) There was such infirmity of proof establishing the misconduct as to give rise to the clear conviction that the Office could not, consistently with its duty, accept as final the conclusion on that subject; or

                (C) The finding of lack of good moral character and reputation by the Office would result in grave injustice.
                (i) Factors that may be taken into consideration when evaluating rehabilitation of an individual seeking a moral character and reputation determination. The factors enumerated below are guidelines to assist the OED Director in determining whether an individual has demonstrated rehabilitation from an act of misconduct or moral turpitude. The factors include:
                (1) The nature of the act of misconduct, including whether it involved moral turpitude, whether there were aggravating or mitigating circumstances, and whether the activity was an isolated event or part of a pattern;
                (2) The age and education of the individual at the time of the misconduct and the age and education of the individual at the present time;
                (3) The length of time that has passed between the misconduct and the present, absent any involvement in any further acts of moral turpitude, the amount of time and the extent of rehabilitation being dependent upon the nature and seriousness of the act of misconduct under consideration;
                (4) Restitution by the individual to any person who suffered monetary losses through acts or omissions of the individual;
                (5) Expungement of a conviction;
                (6) Successful completion or early discharge from probation or parole;
                (7) Abstinence from the use of controlled substances or alcohol for not less than two years if the specific misconduct was attributable in part to the use of a controlled substance or alcohol, where abstinence may be demonstrated by, but is not necessarily limited to, enrolling in and complying with a self-help or professional treatment program;
                (8) If the specific misconduct was attributable in part to a medically recognized mental disease, disorder or illness, proof that the individual sought professional assistance, and complied with the treatment program prescribed by the professional, and submitted letters from the treating psychiatrist/psychologist verifying that the medically recognized mental disease, disorder or illness will not impede the individual's ability to competently practice before the Office;
                (9) Payment of the fine imposed in connection with any criminal conviction;
                (10) Correction of behavior responsible in some degree for the misconduct;
                (11) Significant and conscientious involvement in programs designed to provide social benefits or to ameliorate social problems; and
                (12) Change in attitude from that which existed at the time of the act of misconduct in question as evidenced by any or all of the following:
                (i) Statements of the individual;
                (ii) Statements from persons familiar with the individual's previous misconduct and with subsequent attitudes and behavioral patterns;
                (iii) Statements from probation or parole officers or law enforcement officials as to the individual's social adjustments; and
                (iv) Statements from persons competent to testify with regard to neuropsychiatry or emotional disturbances.
                (j) Notice to Show Cause. The OED Director shall inquire into the good moral character and reputation of an individual seeking registration, providing the individual with the opportunity to create a record on which a decision is made. If, following inquiry and consideration of the record, the OED Director is of the opinion that the individual seeking registration has not satisfactorily established that he or she possesses good moral character and reputation, the OED Director shall issue to the individual a notice to show cause why the individual's application for registration should not be denied.
                (1) The individual shall be given no less than ten days from the date of the notice to reply. The notice shall be given by certified mail at the address appearing on the application if the address is in the United States, and by any other reasonable means if the address is outside the United States.

                (2) Following receipt of the individual's response, or in the absence of a response, the OED Director shall consider the individual's response, if any, and the record, and determine whether, in the OED Director's opinion, the individual has sustained his or her burden of satisfactorily demonstrating that he or she possesses good moral character and reputation.
                (k) Reapplication for registration. An individual who has been refused registration for lack of good moral character or reputation may reapply for registration two years after the date of the decision, unless a shorter period is otherwise ordered by the USPTO Director. An individual, who has been notified that he or she is under investigation for good moral character and reputation may elect to withdraw his or her application for registration, and may reapply for registration two years after the date of withdrawal. Upon reapplication for registration, the individual shall pay the fees required by § 1.21(a)(1)(ii) and (a)(10) of this subchapter, and has the burden of showing to the satisfaction of the OED Director his or her possession of good moral character and reputation as prescribed in paragraph (b) of this section. Upon reapplication for registration, the individual also shall complete successfully the examination prescribed in paragraph (b) of this section, even though the individual has previously passed a registration examination.

                § 11.8
                Oath and registration fee.
                (a) After an individual passes the examination, or the examination is waived, the OED Director shall promptly publish a solicitation for information concerning the individual's good moral character and reputation. The solicitation shall include the individual's name, and business or communication postal address.
                (b) An individual shall not be registered as an attorney under § 11.6(a), registered as an agent under § 11.6(b) or (c), or granted limited recognition under § 11.9(b) unless within two years of the mailing date of a notice of passing registration examination or of waiver of the examination the individual files with the OED Director a completed Data Sheet, an oath or declaration prescribed by the USPTO Director, and the registration fee set forth in § 1.21(a)(2) of this subchapter. An individual seeking registration as an attorney under § 11.6(a) must provide a certificate of good standing of the bar of the highest court of a State that is no more than six months old.
                (c) An individual who does not comply with the requirements of paragraph (b) of this section within the two-year period will be required to retake the registration examination.
                (d) [Reserved]
                [69 FR 35452, June 24, 2004, as amended at 73 FR 67757, Nov. 17, 2008; 78 FR 20198, Apr. 3, 2013]

                § 11.9
                Limited recognition in patent matters.
                (a) Any individual not registered under § 11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.
                (b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted limited recognition if the nonimmigrant alien is authorized by the United States Government to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recognition shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien's departure from the United States.

                (c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent application only before the United States International Searching Authority and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.
                [69 FR 35452, June 24, 2004, as amended at 78 FR 20198, Apr. 3, 2013]

                § 11.10
                Restrictions on practice in patent matters.
                (a) Only practitioners who are registered under § 11.6 or individuals given limited recognition under § 11.9(a) or (b) are permitted to prosecute patent applications of others before the Office; or represent others in any proceedings before the Office.
                (b) Post employment agreement of former Office employee. No individual who has served in the patent examining corps or elsewhere in the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking agreeing:
                (1) To not knowingly act as agent or attorney for, or otherwise represent, or assist in any manner the representation of, any other person:
                (i) Before the Office,
                (ii) In connection with any particular patent or patent application,
                (iii) In which said employee participated personally and substantially as an employee of the Office; and
                (2) To not knowingly act within two years after terminating employment by the Office as agent or attorney for, or otherwise represent, or assist in any manner the representation of any other person:
                (i) Before the Office,
                (ii) In connection with any particular patent or patent application,
                (iii) If such patent or patent application was pending under the employee's official responsibility as an officer or employee within a period of one year prior to the termination of such responsibility.
                (3) The words and phrases in paragraphs (b)(1) and (b)(2) of this section are construed as follows:
                (i) Represent and representation mean acting as patent attorney or patent agent or other representative in any appearance before the Office, or communicating with an employee of the Office with intent to influence.
                (ii) Assist in any manner means aid or help another person on a particular patent or patent application involving representation.
                (iii) Particular patent or patent application means any patent or patent application, including, but not limited to, a provisional, substitute, international, international design, continuation, divisional, continuation-in-part, or reissue patent application, as well as any protest, reexamination, petition, appeal, interference, or trial proceeding based on the patent or patent application.
                (iv) Participate personally and substantially. (A) Basic requirements. The restrictions of § 11.10(a)(1) apply only to those patents and patent applications in which a former Office employee had “personal and substantial participation,” exercised “through decision, approval, disapproval, recommendation, the rendering of advice, investigation or otherwise.” To participate personally means directly, and includes the participation of a subordinate when actually directed by the former Office employee in the patent or patent application. Substantially means that the employee's involvement must be of significance to the matter, or form a basis for a reasonable appearance of such significance. It requires more than official responsibility, knowledge, perfunctory involvement, or involvement on an administrative or peripheral issue. A finding of substantiality should be based not only on the effort devoted to a patent or patent application, but also on the importance of the effort. While a series of peripheral involvements may be insubstantial, the single act of approving or participation in a critical step may be substantial. It is essential that the participation be related to a “particular patent or patent application.” (See paragraph (b)(3)(iii) of this section.)

                (B) Participation on ancillary matters. An Office employee's participation on subjects not directly involving the substantive merits of a patent or patent application may not be “substantial,” even if it is time-consuming. An employee whose official responsibility is the review of a patent or patent application solely for compliance with administrative control or budgetary considerations and who reviews a particular patent or patent application for such a purpose should not be regarded as having participated substantially in the patent or patent application, except when such considerations also are the subject of the employee's proposed representation.

                (C) Role of official responsibility in determining substantial participation. Official responsibility is defined in paragraph (b)(3)(v) of this section. “Personal and substantial participation” is different from “official responsibility.” One's responsibility may, however, play a role in determining the “substantiality” of an Office employee's participation.
                (v) Official responsibility means the direct administrative or operating authority, whether intermediate or final, and either exercisable alone or with others, and either personally or through subordinates, to approve, disapprove, or otherwise direct Government actions.
                (A) Determining official responsibility. Ordinarily, those areas assigned by statute, regulation, Executive Order, job description, or delegation of authority determine the scope of an employee's “official responsibility”. All particular matters under consideration in the Office are under the “official responsibility” of the Director of the Office, and each is under that of any intermediate supervisor having responsibility for an employee who actually participates in the patent or patent application within the scope of his or her duties. A patent examiner would have “official responsibility” for the patent applications assigned to him or her.
                (B) Ancillary matters and official responsibility. Administrative authority as used in paragraph (v) of this section means authority for planning, organizing and controlling a patent or patent application rather than authority to review or make decisions on ancillary aspects of a patent or patent application such as the regularity of budgeting procedures, public or community relations aspects, or equal employment opportunity considerations. Responsibility for such an ancillary consideration does not constitute official responsibility for the particular patent or patent application, except when such a consideration is also the subject of the employee's proposed representation.
                (C) Duty to inquire. In order for a former employee, e.g., former patent examiner, to be barred from representing or assisting in representing another as to a particular patent or patent application, he or she need not have known, while employed by the Office, that the patent or patent application was pending under his or her official responsibility. The former employee has a reasonable duty of inquiry to learn whether the patent or patent application had been under his or her official responsibility. Ordinarily, a former employee who is asked to represent another on a patent or patent application will become aware of facts sufficient to suggest the relationship of the prior matter to his or her former office, e.g., technology center, group or art unit. If so, he or she is under a duty to make further inquiry. It would be prudent for an employee to maintain a record of only patent application numbers of the applications actually acted upon by decision or recommendation, as well as those applications under the employee's official responsibility which he or she has not acted upon.
                (D) Self-disqualification. A former employee, e.g., former patent examiner, cannot avoid the restrictions of this section through self-disqualification with respect to a patent or patent application for which he or she otherwise had official responsibility. However, an employee who through self-disqualification does not participate personally and substantially in a particular patent or patent application is not subject to the lifetime restriction of paragraph (b)(1) of this section.
                (vi) Pending means that the matter was in fact referred to or under consideration by persons within the employee's area of official responsibility.

                (4) Measurement of the two-year restriction period. The two-year period under paragraph (b)(2) of this section is measured from the date when the employee's official responsibility in a particular area ends, not from the termination of service in the Office, unless the two occur simultaneously. The prohibition applies to all particular patents or patent applications subject to such official responsibility in the one-year period before termination of such responsibility.
                (c) Former employees of the Office. This section imposes restrictions generally parallel to those imposed in 18 U.S.C. 207(a) and (b)(1). This section, however, does not interpret these statutory provisions or any other post-employment restrictions that may apply to former Office employees, and such former employees should not assume that conduct not prohibited by this section is otherwise permissible. Former employees of the Office, whether or not they are practitioners, are encouraged to contact the Department of Commerce for information concerning applicable post-employment restrictions.
                (d) An employee of the Office may not prosecute or aid in any manner in the prosecution of any patent application before the Office.
                (e) Practice before the Office by Government employees is subject to any applicable conflict of interest laws, regulations or codes of professional responsibility.
                [69 FR 35452, June 24, 2004, as amended at 77 FR 46630, Aug. 6, 2012; 80 FR 17971, Apr. 2, 2015]

                § 11.11
                Administrative suspension, inactivation, resignation, and readmission.
                (a) Contact information. (1) A registered practitioner must notify the OED Director of his or her postal address for his or her office, up to three email addresses where he or she receives email, and a business telephone number, as well as every change to any of said addresses or telephone number within thirty days of the date of the change. A registered practitioner shall, in addition to any notice of change of address and telephone number filed in individual patent applications, separately file written notice of the change of address or telephone number to the OED Director. A registered practitioner who is an attorney in good standing with the bar of the highest court of one or more States shall provide the OED Director with the State bar identification number associated with each membership. The OED Director shall publish from the roster a list containing the name, postal business addresses, business telephone number, registration number, and registration status as an attorney or agent of each registered practitioner recognized to practice before the Office in patent cases.
                (2) A letter may be addressed to any registered practitioner, at the address of which separate notice was last received by the OED Director, for the purpose of ascertaining whether such practitioner desires to remain on the register. Any registered practitioner failing to reply and give any information requested by the OED Director within a time limit specified will be subject to administrative suspension under paragraph (b) of this section.
                (b) Administrative suspension. (1) Whenever it appears that a registered practitioner or a person granted limited recognition under § 11.9(b) has failed to comply with § 11.8(d) or paragraph (a)(2) of this section, the OED Director shall publish and send a notice to the registered practitioner or person granted limited recognition advising of the noncompliance, the consequence of being administratively suspended under paragraph (b)(5) of this section if noncompliance is not timely remedied, and the requirements for reinstatement under paragraph (f) of this section. The notice shall be published and sent to the registered practitioner or person granted limited recognition by mail to the last postal address furnished under paragraph (a) of this section or by email addressed to the last email addresses furnished under paragraph (a) of this section. The notice shall demand compliance and payment of a delinquency fee set forth in § 1.21(a)(9)(i) of this subchapter within sixty days after the date of such notice.

                (2) In the event a registered practitioner or person granted limited recognition fails to comply with the notice of paragraph (b)(1) of this section within the time allowed, the OED Director shall publish and send in the manner provided for in paragraph (b)(1) of this section to the registered practitioner or person granted limited recognition a Rule to Show Cause why his or her registration or recognition should not be administratively suspended, and he or she no longer be permitted to practice before the Office in patent matters or in any way hold himself or herself out as being registered or authorized to practice before the Office in patent matters. The OED Director shall file a copy of the Rule to Show Cause with the USPTO Director.
                (3) Within 30 days of the OED Director's sending the Rule to Show Cause identified in paragraph (b)(2) of this section, the registered practitioner or person granted limited recognition may file a response to the Rule to Show Cause with the USPTO Director. The response must set forth the factual and legal bases why the person should not be administratively suspended. The registered practitioner or person granted limited recognition shall serve the OED Director with a copy of the response at the time it is filed with the USPTO Director. Within ten days of receiving a copy of the response, the OED Director may file a reply with the USPTO Director that includes documents demonstrating that the notice identified in paragraph (b)(1) of this section was published and sent to the practitioner in accordance with paragraph (b)(1) of this section. A copy of the reply by the OED Director shall be served on the registered practitioner or person granted limited recognition. When acting on the Rule to Show Cause, if the USPTO Director determines that there are no genuine issues of material fact regarding the Office's compliance with the notice requirements under this section or the failure of the person to pay the requisite fees, the USPTO Director shall enter an order administratively suspending the registered practitioner or person granted limited recognition. Otherwise, the USPTO Director shall enter an appropriate order dismissing the Rule to Show Cause. Nothing herein shall permit an administratively suspended registered practitioner or person granted limited recognition to seek a stay of the administrative suspension during the pendency of any review of the USPTO Director's final decision.
                (4) [Reserved]
                (5) An administratively suspended registered practitioner or person granted limited recognition is subject to investigation and discipline for his or her conduct prior to, during, or after the period he or she was administratively suspended.
                (6) An administratively suspended registered practitioner or person granted limited recognition is prohibited from practicing before the Office in patent cases while administratively suspended. A registered practitioner or person granted limited recognition who knows he or she has been administratively suspended under this section will be subject to discipline for failing to comply with the provisions of this paragraph (b).
                (c) Administrative inactivation. (1) Any registered practitioner who shall become employed by the Office shall comply with § 11.116 for withdrawal from the applications, patents, and trademark matters wherein he or she represents an applicant or other person, and notify the OED Director in writing of said employment on the first day of said employment. The name of any registered practitioner employed by the Office shall be endorsed on the roster as administratively inactive. Upon separation from the Office, the administratively inactive practitioner may request reactivation by completing and filing an application, Data Sheet, signing a written undertaking required by § 11.10, and paying the fee set forth in § 1.21(a)(1)(i) of this subchapter. An administratively inactive practitioner remains subject to the provisions of the USPTO Rules of Professional Conduct and to proceedings and sanctions under §§ 11.19 through 11.58 for conduct that violates a provision of the USPTO Rules of Professional Conduct prior to or during employment at the Office. If, within 30 days after separation from the Office, the registered practitioner does not request active status or another status, the registered practitioner will be endorsed on the roster as voluntarily inactive and be subject to the provisions of paragraph (d) of this section.

                (2) Any registered practitioner who is a judge of a court of record, full-time court commissioner, U.S. bankruptcy judge, U.S. magistrate judge, or a retired judge who is eligible for temporary judicial assignment and is not engaged in the practice of law may request, in writing, that his or her name be endorsed on the roster as administratively inactive. Upon acceptance of the request, the OED Director shall endorse the name of the practitioner as administratively inactive. Following separation from the bench, the practitioner may request restoration to active status by completing and filing an application, Data Sheet, and signing a written undertaking required by § 11.10.
                (d) Voluntary inactivation. (1) Except as provided in paragraph (d)(4) of this section, any registered practitioner may voluntarily enter inactive status by filing a request, in writing, that his or her name be endorsed on the roster as voluntarily inactive. Upon acceptance of the request, the OED Director shall endorse the name as voluntarily inactive.
                (2) [Reserved]
                (3) A registered practitioner who seeks or enters into voluntary inactive status is subject to investigation and discipline for his or her conduct prior to, during, or after the period of his or her inactivation.
                (4) [Reserved]
                (5) A registered practitioner in voluntary inactive status is prohibited from practicing before the Office in patent cases while in voluntary inactive status. A registered practitioner in voluntary inactive status will be subject to discipline for failing to comply with the provisions of this paragraph. Upon acceptance of the request for voluntary inactive status, the practitioner must comply with the provisions of § 11.116.
                (6) Any registered practitioner whose name has been endorsed as voluntarily inactive pursuant to paragraph (d)(1) of this section and is not under investigation and not subject to a disciplinary proceeding may be restored to active status on the register as may be appropriate provided that the practitioner files a written request for restoration, a completed application for registration on a form supplied by the OED Director furnishing all requested information and material, including information and material pertaining to the practitioner's moral character and reputation under § 11.7(a)(2)(i) during the period of inactivation, a declaration or affidavit attesting to the fact that the practitioner has read the most recent revisions of the patent laws and the rules of practice before the Office, and pays the fees set forth in § 1.21(a)(7)(iii) and (iv) of this subchapter.
                (e) Resignation. A registered practitioner or a practitioner recognized under § 11.14(c), who is not under investigation under § 11.22 for a possible violation of the USPTO Rules of Professional Conduct, subject to discipline under §§ 11.24 or 11.25, or a practitioner against whom probable cause has been found by a panel of the Committee on Discipline under § 11.23(b), may resign by notifying the OED Director in writing that he or she desires to resign. Upon acceptance in writing by the OED Director of such notice, that registered practitioner or practitioner under § 11.14 shall no longer be eligible to practice before the Office in patent matters but shall continue to file a change of address for five years thereafter in order that he or she may be located in the event information regarding the practitioner's conduct comes to the attention of the OED Director or any grievance is made about his or her conduct while he or she engaged in practice before the Office. The name of any registered practitioner whose resignation is accepted shall be removed from the register, endorsed as resigned, and notice thereof published in the Official Gazette. Upon acceptance of the resignation by the OED Director, the registered practitioner must comply with the provisions of § 11.116.
                (f) Administrative reinstatement. (1) Any registered practitioner who has been administratively suspended pursuant to paragraph (b) of this section, or who has resigned pursuant to paragraph (e) of this section, may be reinstated on the register provided the practitioner has applied for reinstatement on an application form supplied by the OED Director, demonstrated compliance with the provisions of § 11.7(a)(2)(i) and (iii), and paid the fees set forth in § 1.21(a)(9)(i) and (a)(9)(ii) of this subchapter. Any person granted limited recognition who has been administratively suspended pursuant to paragraph (b) of this section may have their recognition reactivated provided the practitioner has applied for reinstatement on an application form supplied by the OED Director, demonstrated compliance with the provisions of § 11.7(a)(2)(i) and (iii), and paid the fees set forth in § 1.21(a)(9)(i) and (a)(9)(ii) of this subchapter. A practitioner who has resigned or was administratively suspended for two or more years before the date the Office receives a completed application from the person who resigned or was administratively suspended must also pass the registration examination under § 11.7(b)(1)(ii). Any reinstated practitioner is subject to investigation and discipline for his or her conduct that occurred prior to, during, or after the period of his or her administrative suspension or resignation.
                (2) Any registered practitioner whose registration has been administratively inactivated pursuant to paragraph (c) of this section may be reinstated to the register as may be appropriate provided within two years after his or her employment with the Office ceases or within two years after his or her employment in a judicial capacity ceases the following is filed with the OED Director: a request for reinstatement, a completed application for registration on a form supplied by the OED Director furnishing all requested information and material, and the fee set forth in § 1.21(a)(9)(ii) of this subchapter. Any registered practitioner inactivated or reinstated is subject to investigation and discipline for his or her conduct before, during, or after the period of his or her inactivation.
                [73 FR 67757, Nov. 17, 2008, as amended at 78 FR 20198, Apr. 3, 2013]

                §§ 11.12-11.13
                [Reserved]

                § 11.14
                Individuals who may practice before the Office in trademark and other non-patent matters.
                (a) Attorneys. Any individual who is an attorney as defined in § 11.1 may represent others before the Office in trademark and other non-patent matters. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent matters. Registration as a patent practitioner does not itself entitle an individual to practice before the Office in trademark matters.
                (b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
                (c) Foreigners. (1) Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: The trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph (c) shall continue only during the period that the conditions specified in this paragraph (c) obtain.

                (2) In any trademark matter where a foreign attorney or agent authorized under paragraph (c)(1) of this section is representing an applicant, registrant, or party to a proceeding, an attorney, as defined in § 11.1 and qualified to practice under paragraph (a) of this section, must also be appointed pursuant to § 2.17(b) and (c) of this chapter as the representative who will file documents with the Office and with whom the Office will correspond.
                (d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
                (e) Appearance. No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark matters on behalf of a client. Except as specified in § 2.11(a) of this chapter, an individual may appear in a trademark or other non-patent matter in his or her own behalf or on behalf of:
                (1) A firm of which he or she is a member;
                (2) A partnership of which he or she is a partner; or
                (3) A corporation or association of which he or she is an officer and which he or she is authorized to represent.
                (f) Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter.
                [73 FR 47688, Aug. 14, 2008, as amended at 84 FR 31511, July 2, 2019]

                § 11.15
                Refusal to recognize a practitioner.
                Any practitioner authorized to appear before the Office may be suspended, excluded, or reprimanded in accordance with the provisions of this Part. Any practitioner who is suspended or excluded under this Part shall not be entitled to practice before the Office in patent, trademark, or other non-patent matters while suspended or excluded.
                [73 FR 47688, Aug. 14, 2008]

                § 11.16
                Requirements for admission to the USPTO Law School Clinic Certification Program.

                (a) The USPTO Law School Clinic Certification Program allows students enrolled in a participating law school's clinic to practice before the Office in patent or trademark matters by drafting, filing, and prosecuting patent or trademark applications on a pro bono basis for clients that qualify for assistance from the law school's clinic. All law schools accredited by the American Bar Association are eligible for participation in the program, and shall be examined for acceptance using identical criteria.
                (b) Application for admission and renewal—(1) Application for admission. Non-participating law schools seeking admission to the USPTO Law School Clinic Certification Program, and participating law schools seeking to add a practice area, shall submit an application for admission for such practice area to OED in accordance with criteria and time periods set forth by the OED Director.
                (2) Renewal application. Each participating law school desiring to continue in the USPTO Law School Clinic Certification Program shall, biennially from a date assigned to the law school by the OED Director, submit a renewal application to OED in accordance with criteria set forth by the OED Director.
                (3) The OED Director may refuse admission or renewal of a law school to the USPTO Law School Clinic Certification Program if the OED Director determines that admission, or renewal, of the law school would fail to provide significant benefit to the public or the law students participating in the law school's clinic.
                (c) Faculty Clinic Supervisor. Any law school seeking admission to or participating in the USPTO Law School Clinic Certification Program must have at least one Faculty Clinic Supervisor for the patent practice area, if the clinic includes patent practice; and at least one Faculty Clinic Supervisor for the trademark practice area, if the clinic includes trademark practice.
                (1) Patent Faculty Clinic Supervisor. A Faculty Clinic Supervisor for a law school clinic's patent practice must:
                (i) Be a registered patent practitioner in active status and good standing with OED;

                (ii) Demonstrate at least 3 years experience in prosecuting patent applications before the Office within the 5 years immediately prior to the request for approval as a Faculty Clinic Supervisor;
                (iii) Assume full responsibility for the instruction and guidance of law students participating in the law school clinic's patent practice;
                (iv) Assume full responsibility for all patent applications and legal services, including filings with the Office, produced by the clinic; and
                (v) Comply with all additional criteria established by the OED Director.
                (2) Trademark Faculty Clinic Supervisor. A Faculty Clinic Supervisor for a law school clinic's trademark practice must:
                (i) Be an attorney as defined in § 11.1;
                (ii) Demonstrate at least 3 years experience in prosecuting trademark applications before the Office within the 5 years immediately prior to the date of the request for approval as a Faculty Clinic Supervisor;
                (iii) Assume full responsibility for the instruction, guidance, and supervision of law students participating in the law school clinic's trademark practice;
                (iv) Assume full responsibility for all trademark applications and legal services, including filings with the Office, produced by the clinic; and
                (v) Comply with all additional criteria established by the OED Director.
                (3) A Faculty Clinic Supervisor under paragraph (c) of this section must submit a statement:
                (i) Assuming responsibility for performing conflicts checks for each law student and client in the relevant clinic practice area;
                (ii) Assuming responsibility for student instruction and work, including instructing, mentoring, overseeing, and supervising all participating law school students in the clinic's relevant practice area;
                (iii) Assuming responsibility for content and timeliness of all applications and documents submitted to the Office through the relevant practice area of the clinic;
                (iv) Assuming responsibility for all communications by clinic students to clinic clients in the relevant clinic practice area;
                (v) Assuming responsibility for ensuring that there is no gap in representation of clinic clients in the relevant practice area during student turnover, school schedule variations, inter-semester transitions, or other disruptions;
                (vi) Attesting to meeting the criteria of paragraph (c)(1) or (2) of this section based on relevant practice area of the clinic; and
                (vii) Attesting to all other criteria as established by the OED Director.
                (d) Limited recognition for law students participating in the USPTO Law School Clinic Certification Program. (1) The OED Director may grant limited recognition to practice before the Office in patent or trademark matters, or both, to law school students enrolled in a clinic of a law school that is participating in the USPTO Law School Clinic Certification Program upon submission and approval of an application by a law student to OED in accordance with criteria established by the OED Director.
                (2) In order to be granted limited recognition to practice before the Office in patent matters under the USPTO Law School Clinic Certification Program, a law student must:
                (i) Be enrolled in a law school that is an active participant in the USPTO Law School Clinic Certification Program;
                (ii) Be enrolled in the patent practice area of a clinic of the participating law school;
                (iii) Have successfully completed at least one year of law school or the equivalent;
                (iv) Have read the USPTO Rules of Professional Conduct and the relevant rules of practice and procedure for patent matters;
                (v) Be supervised by an approved Faculty Clinic Supervisor pursuant to paragraph (c)(1) of this section;
                (vi) Be certified by the dean of the participating law school, or one authorized to act for the dean, as: Having completed the first year of law school or the equivalent, being in compliance with the law school's ethics code, and being of good moral character and reputation;

                (vii) Neither ask for nor receive any fee or compensation of any kind for legal services from a clinic client on whose behalf service is rendered;

                (viii) Have proved to the satisfaction of the OED Director that he or she possesses the scientific and technical qualifications necessary for him or her to render patent applicants valuable service; and
                (ix) Comply with all additional criteria established by the OED Director.
                (3) In order to be granted limited recognition to practice before the Office in trademark matters under the USPTO Law School Clinic Certification Program, a law student must:
                (i) Be enrolled in a law school that is an active participant in the USPTO Law School Clinic Certification Program;
                (ii) Be enrolled in the trademark practice area of a clinic of the participating law school;
                (iii) Have successfully completed at least one year of law school or the equivalent;
                (iv) Have read the USPTO Rules of Professional Conduct and the relevant USPTO rules of practice and procedure for trademark matters;
                (v) Be supervised by an approved Faculty Clinic Supervisor pursuant to paragraph (c)(2) of this section;
                (vi) Be certified by the dean of the participating law school, or one authorized to act for the dean, as: Having completed the first year of law school or the equivalent, being in compliance with the law school's ethics code, and being of good moral character and reputation;
                (vii) Neither ask for nor receive any fee or compensation of any kind for legal services from a clinic client on whose behalf service is rendered; and
                (viii) Comply with all additional criteria established by the OED Director.
                (4) Students registered to practice before the Office in patent matters as a patent agent, or authorized to practice before the Office in trademark matters under § 11.14, must complete and submit a student application pursuant to paragraph (d)(1) of this section and meet the criteria of paragraph (d)(2) or (3) of this section, as applicable, in order to participate in the program.
                [81 FR 33596, May 27, 2016]

                § 11.17
                Requirements for participation in the USPTO Law School Clinic Certification Program.

                (a) Each law school participating in the USPTO Law School Clinic Certification Program must provide its patent and/or trademark services on a pro bono basis.
                (b) Each law school participating in the USPTO Law School Clinic Certification Program shall, on a semi-annual basis, provide OED with a report regarding its clinic activity during the reporting period, which shall include:
                (1) The number of law students participating in each of the patent and trademark practice areas of the school's clinic;
                (2) The number of faculty participating in each of the patent and trademark practice areas of the school's clinic;
                (3) The number of persons to whom the school's clinic provided assistance in any given patent or trademark matter but with whom no practitioner-client relationship had formed;
                (4) The number of client representations undertaken for each of the patent and trademark practice areas of the school's clinic;
                (5) The identity and number of applications and responses filed in each of the patent and/or trademark practice areas of the school's clinic;
                (6) The number of patents issued, or trademarks registered, to clients of the clinic; and
                (7) All other information specified by the OED Director.
                (c) Inactivation of law schools participating in the USPTO Law School Certification Program. (1) The OED Director may inactivate a patent and/or trademark practice area of a participating law school:
                (i) If the participating law school does not have an approved Faculty Clinic Supervisor for the relevant practice area, as described in § 11.16(c);
                (ii) If the participating law school does not meet each of the requirements and criteria for participation in the USPTO Law School Clinic Certification Program as set forth in § 11.16, this section, or as otherwise established by the OED Director; or

                (iii) For other good cause as determined by the OED Director.

                (2) In the event that a practice area of a participating school is inactivated, the participating law school students must:
                (i) Immediately cease all student practice before the Office in the relevant practice area and notify each client of such; and
                (ii) Disassociate themselves from all client matters relating to practice before the Office in the relevant practice area, including complying with Office and State rules for withdrawal from representation.
                (3) A patent or trademark practice area of a law school clinic that has been inactivated may be restored to active status, upon application to and approval by the OED Director.
                (d) Removal of law schools participating in the USPTO Law School Clinic Certification Program. (1) The OED Director may remove a patent and/or trademark practice area of the clinic of a law school participating in the USPTO Law School Clinic Certification Program:
                (i) Upon request from the law school;
                (ii) If the participating law school does not meet each of the requirements and criteria for participation in the USPTO Law School Clinic Certification Program as set forth in § 11.16, this section, or as otherwise established by the OED Director; or
                (iii) For other good cause as determined by the OED Director.
                (2) In the event that a practice area of a participating school is removed by the OED Director, the participating law school students must:
                (i) Immediately cease all student practice before the Office in the relevant practice area and notify each client of such; and
                (ii) Disassociate themselves from all client matters relating to practice before the Office in the relevant practice area, including complying with Office and State rules for withdrawal from representation.
                (3) A school that has been removed from participation in the USPTO Law School Clinic Certification Program under this section may reapply to the program in compliance with § 11.16.
                [81 FR 33597, May 27, 2016]

                § 11.18
                Signature and certificate for correspondence filed in the Office.
                (a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.
                (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
                (1) All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
                (2) To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
                (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;

                (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
                (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
                (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
                (c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
                (1) Striking the offending paper;
                (2) Referring a practitioner's conduct to the Director of Enrollment and Discipline for appropriate action;
                (3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
                (4) Affecting the weight given to the offending paper; or
                (5) Terminating the proceedings in the Office.
                (d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
                [73 FR 47689, Aug. 14, 2008, as amended at 74 FR 54912, Oct. 26, 2009; 78 FR 62409, Oct. 21, 2013]

            Subpart C—Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, Investigations, and Proceedings

              Source:
              73 FR 47689, Aug. 14, 2008, unless otherwise noted.

              § 11.19
              Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status.
              (a) All practitioners engaged in practice before the Office; all practitioners administratively suspended; all practitioners registered to practice before the Office in patent cases; all practitioners inactivated; all practitioners authorized under § 11.6(d) to take testimony; and all practitioners transferred to disability inactive status, reprimanded, suspended, or excluded from the practice of law by a duly constituted authority, including by the USPTO Director, are subject to the disciplinary jurisdiction of the Office. Practitioners who have resigned shall also be subject to such jurisdiction with respect to conduct undertaken prior to the resignation and conduct in regard to any practice before the Office following the resignation. A person not registered or recognized to practice before the Office is also subject to the disciplinary authority of the Office if the person provides or offers to provide any legal services before the Office.
              (b) Grounds for discipline; Grounds for transfer to disability inactive status. The following, whether done individually by a practitioner or in concert with any other person or persons and whether or not done in the course of providing legal services to a client, or in a matter pending before the Office, constitute grounds for discipline or grounds for transfer to disability inactive status.
              (1) Grounds for discipline include:
              (i) Conviction of a serious crime;
              (ii) Discipline on ethical grounds imposed in another jurisdiction or disciplinary disqualification from participating in or appearing before any Federal program or agency;
              (iii) Failure to comply with any order of a Court disciplining a practitioner, or any final decision of the USPTO Director in a disciplinary matter;
              (iv) Violation of any USPTO Rule of Professional Conduct; or
              (v) Violation of the oath or declaration taken by the practitioner. See § 11.8.
              (2) Grounds for transfer to disability inactive status include:
              (i) Being transferred to disability inactive status in another jurisdiction;
              (ii) Being judicially declared incompetent, being judicially ordered to be involuntarily committed after a hearing on the grounds of insanity, incompetency or disability, or being placed by court order under guardianship or conservatorship; or

              (iii) Filing a motion requesting a disciplinary proceeding be held in abeyance because the practitioner is suffering from a disability or addiction that makes it impossible for the practitioner to adequately defend the charges in the disciplinary proceeding.
              (c) Petitions to disqualify a practitioner in ex parte or inter partes matters in the Office are not governed by §§ 11.19 through 11.60 and will be handled on a case-by-case basis under such conditions as the USPTO Director deems appropriate.
              (d) The OED Director may refer the existence of circumstances suggesting unauthorized practice of law to the authorities in the appropriate jurisdiction(s).
              [73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013]

              § 11.20
              Disciplinary sanctions; Transfer to disability inactive status.
              (a) Types of discipline. The USPTO Director, after notice and opportunity for a hearing, and where grounds for discipline exist, may impose on a practitioner the following types of discipline:
              (1) Exclusion from practice before the Office;
              (2) Suspension from practice before the Office for an appropriate period of time;
              (3) Reprimand or censure; or
              (4) Probation. Probation may be imposed in lieu of or in addition to any other disciplinary sanction. Any conditions of probation shall be stated in writing in the order imposing probation. The order shall also state whether, and to what extent, the practitioner shall be required to notify clients of the probation. Violation of any condition of probation shall be cause for imposition of the disciplinary sanction. Imposition of the disciplinary sanction predicated upon violation of probation shall occur only after an order to show cause why the disciplinary sanction should not be imposed is resolved adversely to the practitioner.
              (b) Conditions imposed with discipline. When imposing discipline, the USPTO Director may condition reinstatement upon the practitioner making restitution, successfully completing a professional responsibility course or examination, or any other condition deemed appropriate under the circumstances.
              (c) Transfer to disability inactive status. The USPTO Director, after notice and opportunity for a hearing may, and where grounds exist to believe a practitioner has been transferred to disability inactive status in another jurisdiction, or has been judicially declared incompetent; judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship, transfer the practitioner to disability inactive status.
              [73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013]

              § 11.21
              Warnings.
              A warning is neither public nor a disciplinary sanction. The OED Director may conclude an investigation with the issuance of a warning. The warning shall contain a brief statement of facts and USPTO Rules of Professional Conduct relevant to the facts.
              [78 FR 20200, Apr. 3, 2013]

              § 11.22
              Disciplinary investigations.
              (a) The OED Director is authorized to investigate possible grounds for discipline. An investigation may be initiated when the OED Director receives a grievance, information or evidence from any source suggesting possible grounds for discipline. Neither unwillingness nor neglect by a grievant to prosecute a charge, nor settlement, compromise, or restitution with the grievant, shall in itself justify abatement of an investigation.
              (b) Any person possessing information or evidence concerning possible grounds for discipline of a practitioner may report the information or evidence to the OED Director. The OED Director may request that the report be presented in the form of an affidavit or declaration.
              (c) [Reserved]
              (d) Preliminary screening of information or evidence. The OED Director shall examine all information or evidence concerning possible grounds for discipline of a practitioner.
              (e) Notification of investigation. The OED Director shall notify the practitioner in writing of the initiation of an investigation into whether a practitioner has engaged in conduct constituting possible grounds for discipline.

              (f) Request for information and evidence by OED Director.

              (1) In the course of the investigation, the OED Director may request information and evidence regarding possible grounds for discipline of a practitioner from:
              (i) The grievant,
              (ii) The practitioner, or
              (iii) Any person who may reasonably be expected to provide information and evidence needed in connection with the grievance or investigation.
              (2) The OED Director may request information and evidence regarding possible grounds for discipline of a practitioner from a non-grieving client either after obtaining the consent of the practitioner or upon a finding by a Contact Member of the Committee on Discipline, appointed in accordance with § 11.23(d), that good cause exists to believe that the possible ground for discipline alleged has occurred with respect to non-grieving clients. Neither a request for, nor disclosure of, such information shall constitute a violation of any USPTO Rules of Professional Conduct.
              (g) Where the OED Director makes a request under paragraph (f)(2) of this section to a Contact Member of the Committee on Discipline, such Contact Member shall not, with respect to the practitioner connected to the OED Director's request, participate in the Committee on Discipline panel that renders a probable cause determination under paragraph (b)(1) of this section concerning such practitioner, and that forwards the probable cause finding and recommendation to the OED Director under paragraph (b)(2) of this section.
              (h) Disposition of investigation. Upon the conclusion of an investigation, the OED Director may:
              (1) Close the investigation without issuing a warning, or taking disciplinary action;
              (2) Issue a warning to the practitioner;
              (3) Institute formal charges upon the approval of the Committee on Discipline; or
              (4) Enter into a settlement agreement with the practitioner and submit the same for approval of the USPTO Director.
              (i) Closing investigation. The OED Director shall terminate an investigation and decline to refer a matter to the Committee on Discipline if the OED Director determines that:
              (1) The information or evidence is unfounded;
              (2) The information or evidence relates to matters not within the jurisdiction of the Office;
              (3) As a matter of law, the conduct about which information or evidence has been obtained does not constitute grounds for discipline, even if the conduct may involve a legal dispute; or
              (4) The available evidence is insufficient to conclude that there is probable cause to believe that grounds exist for discipline.
              [73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012; 78 FR 20200, Apr. 3, 2013]

              § 11.23
              Committee on Discipline.
              (a) The USPTO Director shall appoint a Committee on Discipline. The Committee on Discipline shall consist of at least three employees of the Office. None of the Committee members shall report directly or indirectly to the OED Director or any employee designated by the USPTO Director to decide disciplinary matters. Each Committee member shall be a member in good standing of the bar of the highest court of a State. The Committee members shall select a Chairperson from among themselves. Three Committee members will constitute a panel of the Committee.
              (b) Powers and duties of the Committee on Discipline. The Committee shall have the power and duty to:
              (1) Meet in panels at the request of the OED Director and, after reviewing evidence presented by the OED Director, by majority vote of the panel, determine whether there is probable cause to bring charges under § 11.32 against a practitioner; and
              (2) Prepare and forward its own probable cause findings and recommendations to the OED Director.

              (c) No discovery shall be authorized of, and no member of the Committee on Discipline shall be required to testify about deliberations of, the Committee on Discipline or of any panel.

              (d) The Chairperson shall appoint the members of the panels and a Contact Member of the Committee on Discipline.

              § 11.24
              Reciprocal discipline.
              (a) Notification of OED Director. Within thirty days of being publicly censured, publicly reprimanded, subjected to probation, disbarred or suspended by another jurisdiction, or being disciplinarily disqualified from participating in or appearing before any Federal program or agency, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same. A practitioner is deemed to be disbarred if he or she is disbarred, excluded on consent, or has resigned in lieu of a disciplinary proceeding. Upon receiving notification from any source or otherwise learning that a practitioner subject to the disciplinary jurisdiction of the Office has been so publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended or disciplinarily disqualified, the OED Director shall obtain a certified copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification and file the same with the USPTO Director. The OED Director shall, in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint complying with § 11.34 against the practitioner predicated upon the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification. The OED Director shall request the USPTO Director to issue a notice and order as set forth in paragraph (b) of this section.
              (b) Notification served on practitioner. Upon receipt of a certified copy of the record or order regarding the practitioner being so publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended or disciplinarily disqualified together with the complaint, the USPTO Director shall issue a notice directed to the practitioner in accordance with § 11.35 and to the OED Director containing:
              (1) A copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification;
              (2) A copy of the complaint; and
              (3) An order directing the practitioner to file a response with the USPTO Director and the OED Director, within forty days of the date of the notice establishing a genuine issue of material fact predicated upon the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of this section that the imposition of the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification would be unwarranted and the reasons for that claim.
              (c) Effect of stay in another jurisdiction. In the event the public censure, public reprimand, probation, disbarment, suspension imposed by another jurisdiction or disciplinary disqualification imposed in the Federal program or agency has been stayed, any reciprocal discipline imposed by the USPTO may be deferred until the stay expires.
              (d) Hearing and discipline to be imposed. (1) The USPTO Director shall hear the matter on the documentary record unless the USPTO Director determines that an oral hearing is necessary. After expiration of the forty days from the date of the notice pursuant to provisions of paragraph (b) of this section, the USPTO Director shall consider any timely filed response and shall impose the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification unless the practitioner clearly and convincingly demonstrates, and the USPTO Director finds there is a genuine issue of material fact that:
              (i) The procedure elsewhere was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;
              (ii) There was such infirmity of proof establishing the conduct as to give rise to the clear conviction that the Office could not, consistently with its duty, accept as final the conclusion on that subject;

              (iii) The imposition of the same public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification by the Office would result in grave injustice; or

              (iv) Any argument that the practitioner was not publicly censured, publicly reprimanded, placed on probation, disbarred, suspended or disciplinarily disqualified.
              (2) If the USPTO Director determines that there is no genuine issue of material fact, the USPTO Director shall enter an appropriate final order. If the USPTO Director is unable to make such determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order:
              (i) Referring the complaint to a hearing officer for a formal hearing and entry of an initial decision in accordance with the other rules in this part, and
              (ii) Directing the practitioner to file an answer to the complaint in accordance with § 11.36.
              (e) Adjudication in another jurisdiction or Federal agency or program. In all other respects, a final adjudication in another jurisdiction or Federal agency or program that a practitioner, whether or not admitted in that jurisdiction, has been guilty of misconduct shall establish a prima facie case by clear and convincing evidence that the practitioner has engaged in misconduct under § 11.804.
              (f) Reciprocal discipline—action where practice has ceased. Upon request by the practitioner, reciprocal discipline may be imposed nunc pro tunc only if the practitioner promptly notified the OED Director of his or her censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification in another jurisdiction, and establishes by clear and convincing evidence that the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of § 11.58. The effective date of any public censure, public reprimand, probation, suspension, disbarment or disciplinary disqualification imposed nunc pro tunc shall be the date the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of § 11.58.
              (g) Reinstatement following reciprocal discipline proceeding. A practitioner may petition for reinstatement under conditions set forth in § 11.60 no sooner than completion of the period of reciprocal discipline imposed, and compliance with all provisions of § 11.58.
              [73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013]

              § 11.25
              Interim suspension and discipline based upon conviction of committing a serious crime.
              (a) Notification of OED Director. Upon being convicted of a crime in a court of the United States, any State, or a foreign country, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same within thirty days from the date of such conviction. Upon being advised or learning that a practitioner subject to the disciplinary jurisdiction of the Office has been convicted of a crime, the OED Director shall make a preliminary determination whether the crime constitutes a serious crime warranting interim suspension. If the crime is a serious crime, the OED Director shall file with the USPTO Director proof of the conviction and request the USPTO Director to issue a notice and order set forth in paragraph (b)(2) of this section. The OED Director shall in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint against the practitioner complying with § 11.34 predicated upon the conviction of a serious crime. If the crime is not a serious crime, the OED Director shall process the matter in the same manner as any other information or evidence of a possible violation of any USPTO Rule of Professional Conduct coming to the attention of the OED Director.
              (b) Interim suspension and referral for disciplinary proceeding. All proceedings under this section shall be handled as expeditiously as possible.
              (1) The USPTO Director has authority to place a practitioner on interim suspension after hearing the request for interim suspension on the documentary record.
              (2) Notification served on practitioner. Upon receipt of a certified copy of the court record, docket entry or judgment demonstrating that the practitioner has been so convicted together with the complaint, the USPTO Director shall forthwith issue a notice directed to the practitioner in accordance with §§ 11.35(a), (b) or (c), and to the OED Director, containing:
              (i) A copy of the court record, docket entry, or judgment of conviction;
              (ii) A copy of the complaint; and
              (iii) An order directing the practitioner to file a response with the USPTO Director and the OED Director, within forty days of the date of the notice, establishing that there is a genuine issue of material fact that the crime did not constitute a serious crime, the practitioner is not the individual found guilty of the crime, or that the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process.
              (3) Hearing and final order on request for interim suspension. The request for interim suspension shall be heard by the USPTO Director on the documentary record unless the USPTO Director determines that the practitioner's response establishes a genuine issue of material fact that: The crime did not constitute a serious crime, the practitioner is not the person who committed the crime, or that the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process. If the USPTO Director determines that there is no genuine issue of material fact regarding the defenses set forth in the preceding sentence, the USPTO Director shall enter an appropriate final order regarding the OED Director's request for interim suspension regardless of the pendency of any criminal appeal. If the USPTO Director is unable to make such determination because there is a genuine issue of material fact, the USPTO Director shall enter a final order dismissing the request and enter a further order referring the complaint to a hearing officer for a hearing and entry of an initial decision in accordance with the other rules in this part and directing the practitioner to file an answer to the complaint in accordance with § 11.36.
              (4) Termination. The USPTO Director has authority to terminate an interim suspension. In the interest of justice, the USPTO Director may terminate an interim suspension at any time upon a showing of extraordinary circumstances, after affording the OED Director an opportunity to respond to the request to terminate interim suspension.
              (5) Referral for disciplinary proceeding. Upon entering a final order imposing interim suspension, the USPTO Director shall refer the complaint to a hearing officer to conduct a formal disciplinary proceeding. The formal disciplinary proceeding, however, shall be stayed by the hearing officer until all direct appeals from the conviction are concluded. Review of the initial decision of the hearing officer shall be pursuant to § 11.55.
              (c) Proof of conviction and guilt—(1) Conviction in the United States. For purposes of a hearing for interim suspension and a hearing on the formal charges in a complaint filed as a consequence of the conviction, a certified copy of the court record, docket entry, or judgment of conviction in a court of the United States or any State shall establish a prima facie case by clear and convincing evidence that the practitioner was convicted of a serious crime and that the conviction was not lacking in notice or opportunity to be heard as to constitute a deprivation of due process.
              (2) Conviction in a foreign country. For purposes of a hearing for interim suspension and on the formal charges filed as a result of a finding of guilt, a certified copy of the court record, docket entry, or judgment of conviction in a court of a foreign country shall establish a prima facie case by clear and convincing evidence that the practitioner was convicted of a serious crime and that the conviction was not lacking in notice or opportunity to be heard as to constitute a deprivation of due process. However, nothing in this paragraph shall preclude the practitioner from demonstrating by clear and convincing evidence in any hearing on a request for interim suspension there is a genuine issue of material fact to be considered when determining if the elements of a serious crime were committed in violating the criminal law of the foreign country and whether a disciplinary sanction should be entered.
              (d) Crime determined not to be serious crime. If the USPTO Director determines that the crime is not a serious crime, the complaint shall be referred to the OED Director for investigation under § 11.22 and processing as is appropriate.
              (e) Reinstatement—(1) Upon reversal or setting aside a finding of guilt or a conviction. If a practitioner suspended solely under the provisions of paragraph (b) of this section demonstrates that the underlying finding of guilt or conviction of serious crimes has been reversed or vacated, the order for interim suspension shall be vacated and the practitioner shall be placed on active status unless the finding of guilt was reversed or the conviction was set aside with respect to less than all serious crimes for which the practitioner was found guilty or convicted. The vacating of the interim suspension will not terminate any other disciplinary proceeding then pending against the practitioner, the disposition of which shall be determined by the hearing officer before whom the matter is pending, on the basis of all available evidence other than the finding of guilt or conviction.
              (2) Following conviction of a serious crime. Any practitioner convicted of a serious crime and disciplined in whole or in part in regard to that conviction, may petition for reinstatement under conditions set forth in § 11.60 no sooner than five years after being discharged following completion of service of his or her sentence, or after completion of service under probation or parole, whichever is later.
              (f) Notice to clients and others of interim suspension. An interim suspension under this section shall constitute a suspension of the practitioner for the purpose of § 11.58.
              [73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013]

              § 11.26
              Settlement.
              Before or after a complaint under § 11.34 is filed, a settlement conference may occur between the OED Director and the practitioner. Any offers of compromise and any statements made during the course of settlement discussions shall not be admissible in subsequent proceedings. The OED Director may recommend to the USPTO Director any settlement terms deemed appropriate, including steps taken to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct. A settlement agreement shall be effective only upon entry of a final decision by the USPTO Director.

              § 11.27
              Exclusion on consent.
              (a) Required affidavit. The OED Director may confer with a practitioner concerning possible violations by the practitioner of the Rules of Professional Conduct whether or not a disciplinary proceeding has been instituted. A practitioner who is the subject of an investigation or a pending disciplinary proceeding based on allegations of grounds for discipline, and who desires to resign, may only do so by consenting to exclusion and delivering to the OED Director an affidavit declaring the consent of the practitioner to exclusion and stating:
              (1) That the practitioner's consent is freely and voluntarily rendered, that the practitioner is not being subjected to coercion or duress, and that the practitioner is fully aware of the implications of consenting to exclusion;
              (2) That the practitioner is aware that there is currently pending an investigation into, or a proceeding involving allegations of misconduct, the nature of which shall be specifically set forth in the affidavit to the satisfaction of the OED Director;
              (3) That the practitioner acknowledges that, if and when he or she applies for reinstatement under § 11.60, the OED Director will conclusively presume, for the limited purpose of determining the application for reinstatement, that:
              (i) The facts upon which the investigation or complaint is based are true, and
              (ii) The practitioner could not have successfully defended himself or herself against the allegations in the investigation or charges in the complaint.
              (b) Action by the USPTO Director. Upon receipt of the required affidavit, the OED Director shall file the affidavit and any related papers with the USPTO Director for review and approval. Upon such approval, the USPTO Director will enter an order excluding the practitioner on consent and providing other appropriate actions. Upon entry of the order, the excluded practitioner shall comply with the requirements set forth in § 11.58.
              (c) When an affidavit under paragraph (a) of this section is received after a complaint under § 11.34 has been filed, the OED Director shall notify the hearing officer. The hearing officer shall enter an order transferring the disciplinary proceeding to the USPTO Director, who may enter an order excluding the practitioner on consent.
              (d) Reinstatement. Any practitioner excluded on consent under this section may not petition for reinstatement for five years. A practitioner excluded on consent who intends to reapply for admission to practice before the Office must comply with the provisions of § 11.58, and apply for reinstatement in accordance with § 11.60. Failure to comply with the provisions of § 11.58 constitutes grounds for denying an application for reinstatement.

              § 11.28
              Incapacitated practitioners in a disciplinary proceeding.
              (a) Holding in abeyance a disciplinary proceeding because of incapacitation due to a current disability or addiction—(1) Practitioner's motion. In the course of a disciplinary proceeding under § 11.32, but before the date set by the hearing officer for a hearing, the practitioner may file a motion requesting the hearing officer to enter an order holding such proceeding in abeyance based on the contention that the practitioner is suffering from a disability or addiction that makes it impossible for the practitioner to adequately defend the charges in the disciplinary proceeding.
              (i) Content of practitioner's motion. The practitioner's motion shall, in addition to any other requirement of § 11.43, include or have attached thereto:
              (A) A brief statement of all material facts;
              (B) Affidavits, medical reports, official records, or other documents and the opinion of at least one medical expert setting forth and establishing any of the material facts on which the practitioner is relying;
              (C) A statement that the practitioner acknowledges the alleged incapacity by reason of disability or addiction;
              (D) Written consent that the practitioner be transferred to disability inactive status if the motion is granted; and
              (E) A written agreement by the practitioner to not practice before the Office in patent, trademark or other non-patent cases while on disability inactive status.
              (ii) Response. The OED Director's response to any motion hereunder shall be served and filed within thirty days after service of the practitioner's motion unless such time is shortened or enlarged by the hearing officer for good cause shown, and shall set forth the following:
              (A) All objections, if any, to the actions requested in the motion;
              (B) An admission, denial or allegation of lack of knowledge with respect to each of the material facts in the practitioner's motion and accompanying documents; and
              (C) Affidavits, medical reports, official records, or other documents setting forth facts on which the OED Director intends to rely for purposes of disputing or denying any material fact set forth in the practitioner's papers.
              (2) Disposition of practitioner's motion. The hearing officer shall decide the motion and any response thereto. The motion shall be granted upon a showing of good cause to believe the practitioner to be incapacitated as alleged. If the required showing is made, the hearing officer shall enter an order holding the disciplinary proceeding in abeyance. In the case of addiction to drugs or intoxicants, the order may provide that the practitioner will not be returned to active status absent satisfaction of specified conditions. Upon receipt of the order, the OED Director shall transfer the practitioner to disability inactive status, give notice to the practitioner, cause notice to be published, and give notice to appropriate authorities in the Office that the practitioner has been placed on disability inactive status. The practitioner shall comply with the provisions of § 11.58, and shall not engage in practice before the Office in patent, trademark and other non-patent law until a determination is made of the practitioner's capability to resume practice before the Office in a proceeding under paragraph (c) or paragraph (d) of this section. A practitioner on disability inactive status must seek permission from the OED Director to engage in an activity authorized under § 11.58(e). Permission will be granted only if the practitioner has complied with all the conditions of §§ 11.58(a) through 11.58(d) applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(e).
              (b) Motion for reactivation. Any practitioner transferred to disability inactive status in a disciplinary proceeding may file with the hearing officer a motion for reactivation once a year beginning at any time not less than one year after the initial effective date of inactivation, or once during any shorter interval provided by the order issued pursuant to paragraph (a)(2) of this section or any modification thereof. If the motion is granted, the disciplinary proceeding shall resume under such schedule as may be established by the hearing officer.
              (c) Contents of motion for reactivation. A motion by the practitioner for reactivation alleging that a practitioner has recovered from a prior disability or addiction shall be accompanied by all available medical reports or similar documents relating thereto. The hearing officer may require the practitioner to present such other information as is necessary.
              (d) OED Director's motion to resume disciplinary proceeding held in abeyance. (1) The OED Director, having good cause to believe a practitioner is no longer incapacitated, may file a motion requesting the hearing officer to terminate a prior order holding in abeyance any pending proceeding because of the practitioner's disability or addiction. The hearing officer shall decide the matter presented by the OED Director's motion hereunder based on the affidavits and other admissible evidence attached to the OED Director's motion and the practitioner's response. The OED Director bears the burden of showing by clear and convincing evidence that the practitioner is able to defend himself or herself. If there is any genuine issue as to one or more material facts, the hearing officer will hold an evidentiary hearing.
              (2) The hearing officer, upon receipt of the OED Director's motion under paragraph (d)(1) of this section, may direct the practitioner to file a response. If the hearing officer requires the practitioner to file a response, the practitioner must present clear and convincing evidence that the prior self-alleged disability or addiction continues to make it impossible for the practitioner to defend himself or herself in the underlying proceeding being held in abeyance.
              (e) Action by the hearing officer. If, in deciding a motion under paragraph (b) or (d) of this section, the hearing officer determines that there is good cause to believe the practitioner is not incapacitated from defending himself or herself, or is not incapacitated from practicing before the Office, the hearing officer shall take such action as is deemed appropriate, including the entry of an order directing the reactivation of the practitioner and resumption of the disciplinary proceeding.

              § 11.29
              Reciprocal transfer or initial transfer to disability inactive status.
              (a) Notification of OED Director. (1) Transfer to disability inactive status in another jurisdiction as grounds for reciprocal transfer by the Office. Within thirty days of being transferred to disability inactive status in another jurisdiction, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of the transfer. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status in another jurisdiction, the OED Director shall obtain a certified copy of the order. The OED Director shall file with the USPTO Director:
              (i) The order;
              (ii) A request that the practitioner be transferred to disability inactive status, including the specific grounds therefor; and
              (iii) A request that the USPTO Director issue a notice and order as set forth in paragraph (b) of this section.
              (2) Involuntary commitment, adjudication of incompetency or court ordered placement under guardianship or conservatorship as grounds for initial transfer to disability inactive status. Within thirty days of being judicially declared incompetent, being judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or being placed by court order under guardianship or conservatorship in another jurisdiction, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in writing of such judicial action. Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been subject to such judicial action, the OED Director shall obtain a certified copy of the order. The OED Director shall file with the USPTO Director:
              (i) The order;
              (ii) A request that the practitioner be transferred to disability inactive status, including the specific grounds therefor; and
              (iii) A request that the USPTO Director issue a notice and order as set forth in paragraph (b) of this section.
              (b) Notice served on practitioner. Upon receipt of a certified copy of an order or declaration issued by another jurisdiction demonstrating that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status, judicially declared incompetent, judicially ordered to be involuntarily committed after a judicial hearing on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship, together with the OED Director's request, the USPTO Director shall issue a notice, comporting with § 11.35, directed to the practitioner containing:
              (1) A copy of the order or declaration from the other jurisdiction,
              (2) A copy of the OED Director's request; and
              (3) An order directing the practitioner to file a response with the USPTO Director and the OED Director, within 30 days from the date of the notice, establishing a genuine issue of material fact supported by an affidavit and predicated upon the grounds set forth in § 11.29(d) (1) through (4) that a transfer to disability inactive status would be unwarranted and the reasons therefor.
              (c) Effect of stay of transfer, judicially declared incompetence, judicially ordered involuntarily commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship. In the event the transfer, judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship in the other jurisdiction has been stayed there, any reciprocal transfer or transfer by the Office may be deferred until the stay expires.
              (d) Hearing and transfer to disability inactive status. The request for transfer to disability inactive status shall be heard by the USPTO Director on the documentary record unless the USPTO Director determines that there is a genuine issue of material fact, in which case the USPTO Director may deny the request. Upon the expiration of 30 days from the date of the notice pursuant to the provisions of paragraph (b) of this section, the USPTO Director shall consider any timely filed response and impose the identical transfer to disability inactive status based on the practitioner's transfer to disability status in another jurisdiction, or shall transfer the practitioner to disability inactive status based on judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship, unless the practitioner demonstrates by clear and convincing evidence, or the USPTO Director finds there is a genuine issue of material fact by clear and convincing evidence that:
              (1) The procedure was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;

              (2) There was such infirmity of proof establishing the transfer to disability status, judicial declaration of incompetence, judicial order for involuntary commitment on the grounds of incompetency or disability, or placement by court order under guardianship or conservatorship that the USPTO Director could not, consistent with Office's duty, accept as final the conclusion on that subject;
              (3) The imposition of the same disability status or transfer to disability status by the USPTO Director would result in grave injustice; or
              (4) The practitioner is not the individual transferred to disability status, judicially declared incompetent, judicially ordered for involuntary commitment on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship.
              (5) If the USPTO Director determines that there is no genuine issue of material fact with regard to any of the elements of paragraphs (d)(1) through (4) of this section, the USPTO Director shall enter an appropriate final order. If the USPTO Director is unable to make that determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order dismissing the OED Director's request for such reason.
              (e) Adjudication in other jurisdiction. In all other aspects, a final adjudication in another jurisdiction that a practitioner be transferred to disability inactive status, is judicially declared incompetent, is judicially ordered to be involuntarily committed on the grounds of incompetency or disability, or is placed by court order under guardianship or conservatorship shall establish the disability for purposes of a reciprocal transfer to or transfer to disability status before the Office.
              (f) A practitioner who is transferred to disability inactive status under this section shall be deemed to have been refused recognition to practice before the Office for purposes of 35 U.S.C. 32.
              (g) Order imposing reciprocal transfer to disability inactive status or order imposing initial transfer to disability inactive status. An order by the USPTO Director imposing reciprocal transfer to disability inactive status, or transferring a practitioner to disability inactive status shall be effective immediately, and shall be for an indefinite period until further order of the USPTO Director. A copy of the order transferring a practitioner to disability inactive status shall be served upon the practitioner, the practitioner's guardian, and/or the director of the institution to which the practitioner has been committed in the manner the USPTO Director may direct. A practitioner reciprocally transferred or transferred to disability inactive status shall comply with the provisions of § 11.58, and shall not engage in practice before the Office in patent, trademark and other non-patent law unless and until reinstated to active status.
              (h) Confidentiality of proceeding; Orders to be public—(1) Confidentiality of proceeding. All proceedings under this section involving allegations of disability of a practitioner shall be kept confidential until and unless the USPTO Director enters an order reciprocally transferring or transferring the practitioner to disability inactive status.
              (2) Orders to be public. The OED Director shall publicize any reciprocal transfer to disability inactive status or transfer to disability inactive status in the same manner as for the imposition of public discipline.
              (i) Employment of practitioners on disability inactive status. A practitioner on disability inactive status must seek permission from the OED Director to engage in an activity authorized under § 11.58(e). Permission will be granted only if the practitioner has complied with all the conditions of §§ 11.58(a) through 11.58(d) applicable to disability inactive status. In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(e).
              (j) Reinstatement from disability inactive status. (1) Generally. No practitioner reciprocally transferred or transferred to disability inactive status under this section may resume active status except by order of the OED Director.
              (2) Petition. A practitioner reciprocally transferred or transferred to disability inactive status shall be entitled to petition the OED Director for transfer to active status once a year, or at whatever shorter intervals the USPTO Director may direct in the order transferring or reciprocally transferring the practitioner to disability inactive status or any modification thereof.
              (3) Examination. Upon the filing of a petition for transfer to active status, the OED Director may take or direct whatever action is deemed necessary or proper to determine whether the incapacity has been removed, including a direction for an examination of the practitioner by qualified medical or psychological experts designated by the OED Director. The expense of the examination shall be paid and borne by the practitioner.
              (4) Required disclosure, waiver of privilege. With the filing of a petition for reinstatement to active status, the practitioner shall be required to disclose the name of each psychiatrist, psychologist, physician and hospital or other institution by whom or in which the practitioner has been examined or treated for the disability since the transfer to disability inactive status. The practitioner shall furnish to the OED Director written consent to the release of information and records relating to the incapacity if requested by the OED Director.
              (5) Learning in the law, examination. The OED Director may direct that the practitioner establish proof of competence and learning in law, which proof may include passing the registration examination.
              (6) Granting of petition for transfer to active status. The OED Director shall grant the petition for transfer to active status upon a showing by clear and convincing evidence that the incapacity has been removed.
              (7) Reinstatement in other jurisdiction. If a practitioner is reciprocally transferred to disability inactive status on the basis of a transfer to disability inactive status in another jurisdiction, the OED Director may dispense with further evidence that the disability has been removed and may immediately direct reinstatement to active status upon such terms as are deemed proper and advisable.
              (8) Judicial declaration of competency. If a practitioner is transferred to disability inactive status on the basis of a judicially declared incompetence, judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship has been declared to be competent, the OED Director may dispense with further evidence that the incapacity to practice law has been removed and may immediately direct reinstatement to active status.

              §§ 11.30-11.31
              [Reserved]

              § 11.32
              Instituting a disciplinary proceeding.
              If after conducting an investigation under § 11.22(a), the OED Director is of the opinion that grounds exist for discipline under § 11.19(b), the OED Director, after complying where necessary with the provisions of 5 U.S.C. 558(c), may convene a meeting of a panel of the Committee on Discipline. If convened, the panel of the Committee on Discipline shall then determine as specified in § 11.23(b) whether there is probable cause to bring disciplinary charges. If the panel of the Committee on Discipline determines that probable cause exists to bring charges, the OED Director may institute a disciplinary proceeding by filing a complaint under § 11.34.
              [78 FR 20201, Apr. 3, 2013]

              § 11.33
              [Reserved]

              § 11.34
              Complaint.
              (a) A complaint instituting a disciplinary proceeding shall:
              (1) Name the person who is the subject of the complaint who may then be referred to as the “respondent”;
              (2) Give a plain and concise description of the respondent's alleged grounds for discipline;
              (3) State the place and time, not less than thirty days from the date the complaint is filed, for filing an answer by the respondent;
              (4) State that a decision by default may be entered if an answer is not timely filed by the respondent; and
              (5) Be signed by the OED Director.
              (b) A complaint will be deemed sufficient if it fairly informs the respondent of any grounds for discipline, and where applicable, the USPTO Rules of Professional Conduct that form the basis for the disciplinary proceeding so that the respondent is able to adequately prepare a defense.

              (c) The complaint shall be filed in the manner prescribed by the USPTO Director.

              (d) Time for filing a complaint. A complaint shall be filed within one year after the date on which the OED Director receives a grievance forming the basis of the complaint. No complaint shall be filed more than ten years after the date on which the misconduct forming the basis for the proceeding occurred.
              (e) Tolling agreements. The one-year period for filing a complaint under paragraph (d) of this section shall be tolled if the involved practitioner and the OED Director agree in writing to such tolling.
              [73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012; 78 FR 20201, Apr. 3, 2013]

              § 11.35
              Service of complaint.
              (a) A complaint may be served on a respondent in any of the following methods:
              (1) By delivering a copy of the complaint personally to the respondent, in which case the individual who gives the complaint to the respondent shall file an affidavit with the OED Director indicating the time and place the complaint was delivered to the respondent.
              (2) By mailing a copy of the complaint by Priority Mail Express®, first-class mail, or any delivery service that provides ability to confirm delivery or attempted delivery to:
              (i) A respondent who is a registered practitioner at the address provided to OED pursuant to § 11.11, or
              (ii) A respondent who is not registered at the last address for the respondent known to the OED Director.
              (3) By any method mutually agreeable to the OED Director and the respondent.
              (4) In the case of a respondent who resides outside the United States, by sending a copy of the complaint by any delivery service that provides ability to confirm delivery or attempted delivery, to:
              (i) A respondent who is a registered practitioner at the address provided to OED pursuant to § 11.11; or
              (ii) A respondent who is not registered at the last address for the respondent known to the OED Director.
              (b) If a copy of the complaint cannot be delivered to the respondent through any one of the procedures in paragraph (a) of this section, the OED Director shall serve the respondent by causing an appropriate notice to be published in the Official Gazette for two consecutive weeks, in which case, the time for filing an answer shall be thirty days from the second publication of the notice. Failure to timely file an answer will constitute an admission of the allegations in the complaint in accordance with paragraph (d) of § 11.36, and the hearing officer may enter an initial decision on default.
              (c) If the respondent is known to the OED Director to be represented by an attorney under § 11.40(a), a copy of the complaint shall be served on the attorney in lieu of service on the respondent in the manner provided for in paragraph (a) or (b) of this section.
              [73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20201, Apr. 3, 2013; 79 FR 63042, Oct. 22, 2014]

              § 11.36
              Answer to complaint.
              (a) Time for answer. An answer to a complaint shall be filed within the time set in the complaint but in no event shall that time be less than thirty days from the date the complaint is filed.
              (b) With whom filed. The answer shall be filed in writing with the hearing officer at the address specified in the complaint. The hearing officer may extend the time for filing an answer once for a period of no more than thirty days upon a showing of good cause, provided a motion requesting an extension of time is filed within thirty days after the date the complaint is served on respondent. A copy of the answer, and any exhibits or attachments thereto, shall be served on the OED Director.
              (c) Content. The respondent shall include in the answer a statement of the facts that constitute the grounds of defense and shall specifically admit or deny each allegation set forth in the complaint. The respondent shall not deny a material allegation in the complaint that the respondent knows to be true or state that respondent is without sufficient information to form a belief as to the truth of an allegation, when in fact the respondent possesses that information. The respondent shall also state affirmatively in the answer special matters of defense and any intent to raise a disability as a mitigating factor. If respondent intends to raise a special matter of defense or disability, the answer shall specify the defense or disability, its nexus to the misconduct, and the reason it provides a defense or mitigation. A respondent who fails to do so cannot rely on a special matter of defense or disability. The hearing officer may, for good cause, allow the respondent to file the statement late, grant additional hearing preparation time, or make other appropriate orders.
              (d) Failure to deny allegations in complaint. Every allegation in the complaint that is not denied by a respondent in the answer shall be deemed to be admitted and may be considered proven. The hearing officer at any hearing need receive no further evidence with respect to that allegation.
              (e) Default judgment. Failure to timely file an answer will constitute an admission of the allegations in the complaint and may result in entry of default judgment.

              § 11.37
              [Reserved]

              § 11.38
              Contested case.
              Upon the filing of an answer by the respondent, a disciplinary proceeding shall be regarded as a contested case within the meaning of 35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24 shall not be admitted into the record or considered unless leave to proceed under 35 U.S.C. 24 was previously authorized by the hearing officer.

              § 11.39
              Hearing officer; appointment; responsibilities; review of interlocutory orders; stays.
              (a) Appointment. A hearing officer, appointed by the USPTO Director under 5 U.S.C. 3105 or 35 U.S.C. 32, shall conduct disciplinary proceedings as provided by this Part.
              (b) Independence of the Hearing Officer. (1) A hearing officer appointed in accordance with paragraph (a) of this section shall not be subject to first level or second level supervision by either the USPTO Director or OED Director, or his or her designee.
              (2) A hearing officer appointed in accordance with paragraph (a) of this section shall not be subject to supervision of the person(s) investigating or prosecuting the case.
              (3) A hearing officer appointed in accordance with paragraph (a) of this section shall be impartial, shall not be an individual who has participated in any manner in the decision to initiate the proceedings, and shall not have been employed under the immediate supervision of the practitioner.
              (4) A hearing officer appointed in accordance with paragraph (a) of this section shall be admitted to practice law and have suitable experience and training conducting hearings, reaching a determination, and rendering an initial decision in an equitable manner.
              (c) Responsibilities. The hearing officer shall have authority, consistent with specific provisions of these regulations, to:
              (1) Administer oaths and affirmations;
              (2) Make rulings upon motions and other requests;
              (3) Rule upon offers of proof, receive relevant evidence, and examine witnesses;
              (4) Authorize the taking of a deposition of a witness in lieu of personal appearance of the witness before the hearing officer;
              (5) Determine the time and place of any hearing and regulate its course and conduct;
              (6) Hold or provide for the holding of conferences to settle or simplify the issues;
              (7) Receive and consider oral or written arguments on facts or law;
              (8) Adopt procedures and modify procedures for the orderly disposition of proceedings;
              (9) Make initial decisions under §§ 11.25 and 11.54; and
              (10) Perform acts and take measures as necessary to promote the efficient, timely, and impartial conduct of any disciplinary proceeding.
              (d) Time for making initial decision. The hearing officer shall set times and exercise control over a disciplinary proceeding such that an initial decision under § 11.54 is normally issued within nine months of the date a complaint is filed. The hearing officer may, however, issue an initial decision more than nine months after a complaint is filed if there exist circumstances, in his or her opinion, that preclude issuance of an initial decision within nine months of the filing of the complaint.
              (e) Review of interlocutory orders. The USPTO Director will not review an interlocutory order of a hearing officer except:
              (1) When the hearing officer shall be of the opinion:
              (i) That the interlocutory order involves a controlling question of procedure or law as to which there is a substantial ground for a difference of opinion, and
              (ii) That an immediate decision by the USPTO Director may materially advance the ultimate termination of the disciplinary proceeding, or
              (2) In an extraordinary situation where the USPTO Director deems that justice requires review.
              (f) Stays pending review of interlocutory order. If the OED Director or a respondent seeks review of an interlocutory order of a hearing officer under paragraph (b)(2) of this section, any time period set by the hearing officer for taking action shall not be stayed unless ordered by the USPTO Director or the hearing officer.
              (g) The hearing officer shall engage in no ex parte discussions with any party on the merits of the complaint, beginning with appointment and ending when the final agency decision is issued.

              § 11.40
              Representative for OED Director or respondent.
              (a) A respondent may represent himself or herself, or be represented by an attorney before the Office in connection with an investigation or disciplinary proceeding. The attorney shall file a written declaration that he or she is an attorney within the meaning of § 11.1 and shall state:
              (1) The address to which the attorney wants correspondence related to the investigation or disciplinary proceeding sent, and
              (2) A telephone number where the attorney may be reached during normal business hours.
              (b) The Deputy General Counsel for Intellectual Property and Solicitor, and attorneys in the Office of the Solicitor shall represent the OED Director. The attorneys representing the OED Director in disciplinary proceedings shall not consult with the USPTO Director, the General Counsel, the Deputy General Counsel for General Law, or an individual designated by the USPTO Director to decide disciplinary matters regarding the proceeding. The General Counsel and the Deputy General Counsel for General Law shall remain screened from the investigation and prosecution of all disciplinary proceedings in order that they shall be available as counsel to the USPTO Director in deciding disciplinary proceedings unless access is appropriate to perform their duties. After a final decision is entered in a disciplinary proceeding, the OED Director and attorneys representing the OED Director shall be available to counsel the USPTO Director, the General Counsel, and the Deputy General Counsel for General Law in any further proceedings.

              § 11.41
              Filing of papers.
              (a) The provisions of §§ 1.8 and 2.197 of this subchapter do not apply to disciplinary proceedings. All papers filed after the complaint and prior to entry of an initial decision by the hearing officer shall be filed with the hearing officer at an address or place designated by the hearing officer.
              (b) All papers filed after entry of an initial decision by the hearing officer shall be filed with the USPTO Director. A copy of the paper shall be served on the OED Director. The hearing officer or the OED Director may provide for filing papers and other matters by hand, by Priority Mail Express®, or by other means.
              [69 FR 35452, June 24, 2004, as amended at 79 FR 63042, Oct. 22, 2014]

              § 11.42
              Service of papers.
              (a) All papers other than a complaint shall be served on a respondent who is represented by an attorney by:

              (1) Delivering a copy of the paper to the office of the attorney; or

              (2) Mailing a copy of the paper by first-class mail, Priority Mail Express®, or other delivery service to the attorney at the address provided by the attorney under § 11.40(a)(1); or
              (3) Any other method mutually agreeable to the attorney and a representative for the OED Director.
              (b) All papers other than a complaint shall be served on a respondent who is not represented by an attorney by:
              (1) Delivering a copy of the paper to the respondent; or
              (2) Mailing a copy of the paper by first-class mail, Priority Mail Express®, or other delivery service to the respondent at the address to which a complaint may be served or such other address as may be designated in writing by the respondent; or
              (3) Any other method mutually agreeable to the respondent and a representative for the OED Director.
              (c) A respondent shall serve on the representative for the OED Director one copy of each paper filed with the hearing officer or the OED Director. A paper may be served on the representative for the OED Director by:
              (1) Delivering a copy of the paper to the representative; or
              (2) Mailing a copy of the paper by first-class mail, Priority Mail Express®, or other delivery service to an address designated in writing by the representative; or
              (3) Any other method mutually agreeable to the respondent and the representative.
              (d) Each paper filed in a disciplinary proceeding shall contain therein a certificate of service indicating:
              (1) The date on which service was made; and
              (2) The method by which service was made.
              (e) The hearing officer or the USPTO Director may require that a paper be served by hand or by Priority Mail Express®.
              (f) Service by mail is completed when the paper mailed in the United States is placed into the custody of the U.S. Postal Service.
              [79 FR 63042, Oct. 22, 2014]

              § 11.43
              Motions.
              Motions, including all prehearing motions commonly filed under the Federal Rules of Civil Procedure, shall be filed with the hearing officer. The hearing officer will determine whether replies to responses will be authorized and the time period for filing such a response. No motion shall be filed with the hearing officer unless such motion is supported by a written statement by the moving party that the moving party or attorney for the moving party has conferred with the opposing party or attorney for the opposing party in an effort in good faith to resolve by agreement the issues raised by the motion and has been unable to reach agreement. If, prior to a decision on the motion, the parties resolve issues raised by a motion presented to the hearing officer, the parties shall promptly notify the hearing officer.

              § 11.44
              Hearings.
              (a) The hearing officer shall preside over hearings in disciplinary proceedings. The hearing officer shall set the time and place for the hearing. In cases involving an incarcerated respondent, any necessary oral hearing may be held at the location of incarceration. Oral hearings will be stenographically recorded and transcribed, and the testimony of witnesses will be received under oath or affirmation. The hearing officer shall conduct the hearing as if the proceeding were subject to 5 U.S.C. 556. A copy of the transcript of the hearing shall become part of the record. A copy of the transcript shall be provided to the OED Director and the respondent at the expense of the Office.
              (b) If the respondent to a disciplinary proceeding fails to appear at the hearing after a notice of hearing has been given by the hearing officer, the hearing officer may deem the respondent to have waived the right to a hearing and may proceed with the hearing in the absence of the respondent.

              (c) A hearing under this section will not be open to the public except that the hearing officer may grant a request by a respondent to open his or her hearing to the public and make the record of the disciplinary proceeding available for public inspection, provided, a protective order is entered to exclude from public disclosure information which is privileged or confidential under applicable laws or regulations.

              § 11.45
              Amendment of pleadings.
              The OED Director may, without Committee on Discipline authorization, but with the authorization of the hearing officer, amend the complaint to include additional charges based upon conduct committed before or after the complaint was filed. If amendment of the complaint is authorized, the hearing officer shall authorize amendment of the answer. Any party who would otherwise be prejudiced by the amendment will be given reasonable opportunity to meet the allegations in the complaint or answer as amended, and the hearing officer shall make findings on any issue presented by the complaint or answer as amended.

              §§ 11.46-11.48
              [Reserved]

              § 11.49
              Burden of proof.
              In a disciplinary proceeding, the OED Director shall have the burden of proving the violation by clear and convincing evidence and a respondent shall have the burden of proving any affirmative defense by clear and convincing evidence.

              § 11.50
              Evidence.
              (a) Rules of evidence. The rules of evidence prevailing in courts of law and equity are not controlling in hearings in disciplinary proceedings. However, the hearing officer shall exclude evidence that is irrelevant, immaterial, or unduly repetitious.
              (b) Depositions. Depositions of witnesses taken pursuant to § 11.51 may be admitted as evidence.
              (c) Government documents. Official documents, records, and papers of the Office, including, but not limited to, all papers in the file of a disciplinary investigation, are admissible without extrinsic evidence of authenticity. These documents, records, and papers may be evidenced by a copy certified as correct by an employee of the Office.
              (d) Exhibits. If any document, record, or other paper is introduced in evidence as an exhibit, the hearing officer may authorize the withdrawal of the exhibit subject to any conditions the hearing officer deems appropriate.
              (e) Objections. Objections to evidence will be in short form, stating the grounds of objection. Objections and rulings on objections will be a part of the record. No exception to the ruling is necessary to preserve the rights of the parties.

              § 11.51
              Depositions.
              (a) Depositions for use at the hearing in lieu of personal appearance of a witness before the hearing officer may be taken by respondent or the OED Director upon a showing of good cause and with the approval of, and under such conditions as may be deemed appropriate by, the hearing officer. Depositions may be taken upon oral or written questions, upon not less than ten days' written notice to the other party, before any officer authorized to administer an oath or affirmation in the place where the deposition is to be taken. The parties may waive the requirement of ten days' notice and depositions may then be taken of a witness at a time and place mutually agreed to by the parties. When a deposition is taken upon written questions, copies of the written questions will be served upon the other party with the notice, and copies of any written cross-questions will be served by hand or Priority Mail Express® not less than five days before the date of the taking of the deposition unless the parties mutually agree otherwise. A party on whose behalf a deposition is taken shall file a copy of a transcript of the deposition signed by a court reporter with the hearing officer and shall serve one copy upon the opposing party. Expenses for a court reporter and preparing, serving, and filing depositions shall be borne by the party at whose instance the deposition is taken. Depositions may not be taken to obtain discovery, except as provided for in paragraph (b) of this section.

              (b) When the OED Director and the respondent agree in writing, a deposition of any witness who will appear voluntarily may be taken under such terms and conditions as may be mutually agreeable to the OED Director and the respondent. The deposition shall not be filed with the hearing officer and may not be admitted in evidence before the hearing officer unless he or she orders the deposition admitted in evidence. The admissibility of the deposition shall lie within the discretion of the hearing officer who may reject the deposition on any reasonable basis including the fact that demeanor is involved and that the witness should have been called to appear personally before the hearing officer.
              [69 FR 35452, June 24, 2004, as amended at 79 FR 63043, Oct. 22, 2014]

              § 11.52
              Discovery.
              Discovery shall not be authorized except as follows:
              (a) After an answer is filed under § 11.36 and when a party establishes that discovery is reasonable and relevant, the hearing officer, under such conditions as he or she deems appropriate, may order an opposing party to:
              (1) Answer a reasonable number of written requests for admission or interrogatories;
              (2) Produce for inspection and copying a reasonable number of documents; and
              (3) Produce for inspection a reasonable number of things other than documents.
              (b) Discovery shall not be authorized under paragraph (a) of this section of any matter which:
              (1) Will be used by another party solely for impeachment;
              (2) Is not available to the party under 35 U.S.C. 122;
              (3) Relates to any other disciplinary proceeding;
              (4) Relates to experts except as the hearing officer may require under paragraph (e) of this section;
              (5) Is privileged; or
              (6) Relates to mental impressions, conclusions, opinions, or legal theories of any attorney or other representative of a party.
              (c) The hearing officer may deny discovery requested under paragraph (a) of this section if the discovery sought:
              (1) Will unduly delay the disciplinary proceeding;
              (2) Will place an undue burden on the party required to produce the discovery sought; or
              (3) Consists of information that is available:
              (i) Generally to the public;
              (ii) Equally to the parties; or
              (iii) To the party seeking the discovery through another source.
              (d) Prior to authorizing discovery under paragraph (a) of this section, the hearing officer shall require the party seeking discovery to file a motion (§ 11.43) and explain in detail, for each request made, how the discovery sought is reasonable and relevant to an issue actually raised in the complaint or the answer.
              (e) The hearing officer may require parties to file and serve, prior to any hearing, a pre-hearing statement that contains:
              (1) A list (together with a copy) of all proposed exhibits to be used in connection with a party's case-in-chief;
              (2) A list of proposed witnesses;
              (3) As to each proposed expert witness:
              (i) An identification of the field in which the individual will be qualified as an expert;
              (ii) A statement as to the subject matter on which the expert is expected to testify; and
              (iii) A statement of the substance of the facts and opinions to which the expert is expected to testify;
              (4) Copies of memoranda reflecting respondent's own statements to administrative representatives.

              § 11.53
              Proposed findings and conclusions; post-hearing memorandum.
              Except in cases in which the respondent has failed to answer the complaint or amended complaint, the hearing officer, prior to making an initial decision, shall afford the parties a reasonable opportunity to submit proposed findings and conclusions and a post-hearing memorandum in support of the proposed findings and conclusions.

              § 11.54
              Initial decision of hearing officer.
              (a) The hearing officer shall make an initial decision in the case. The decision will include:

              (1) A statement of findings of fact and conclusions of law, as well as the reasons or bases for those findings and conclusions with appropriate references to the record, upon all the material issues of fact, law, or discretion presented on the record, and
              (2) An order of default judgment, of suspension or exclusion from practice, of reprimand, of probation or an order dismissing the complaint. The order also may impose any conditions deemed appropriate under the circumstances. The hearing officer shall transmit a copy of the decision to the OED Director and to the respondent. After issuing the decision, the hearing officer shall transmit the entire record to the OED Director. In the absence of an appeal to the USPTO Director, the decision of the hearing officer, including a default judgment, will, without further proceedings, become the decision of the USPTO Director thirty days from the date of the decision of the hearing officer.
              (b) The initial decision of the hearing officer shall explain the reason for any default judgment, reprimand, suspension, exclusion, or probation, and shall explain any conditions imposed with discipline. In determining any sanction, the following four factors must be considered if they are applicable:
              (1) Whether the practitioner has violated a duty owed to a client, to the public, to the legal system, or to the profession;
              (2) Whether the practitioner acted intentionally, knowingly, or negligently;
              (3) The amount of the actual or potential injury caused by the practitioner's misconduct; and
              (4) The existence of any aggravating or mitigating factors.
              [73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20201, Apr. 3, 2013]

              § 11.55
              Appeal to the USPTO Director.
              (a) Within thirty days after the date of the initial decision of the hearing officer under §§ 11.25 or 11.54, either party may appeal to the USPTO Director. The appeal shall include the appellant's brief. If more than one appeal is filed, the party who files the appeal first is the appellant for purpose of this rule. If appeals are filed on the same day, the respondent is the appellant. If an appeal is filed, then the OED Director shall transmit the entire record to the USPTO Director. Any cross-appeal shall be filed within fourteen days after the date of service of the appeal pursuant to § 11.42, or thirty days after the date of the initial decision of the hearing officer, whichever is later. The cross-appeal shall include the cross-appellant's brief. Any appellee or cross-appellee brief must be filed within thirty days after the date of service pursuant to § 11.42 of an appeal or cross-appeal. Any reply brief must be filed within fourteen days after the date of service of any appellee or cross-appellee brief.
              (b) An appeal or cross-appeal must include exceptions to the decisions of the hearing officer and supporting reasons for those exceptions. Any exception not raised will be deemed to have been waived and will be disregarded by the USPTO Director in reviewing the initial decision.
              (c) All briefs shall:
              (1) Be filed with the USPTO Director at the address set forth in § 1.1(a)(3)(ii) of this subchapter and served on the opposing party;
              (2) Include separate sections containing a concise statement of the disputed facts and disputed points of law; and
              (3) Be typed on 81/2 by 11-inch paper, and comply with Rule 32(a)(4)-(6) of the Federal Rules of Appellate Procedure.
              (d) An appellant's, cross-appellant's, appellee's, and cross-appellee's brief shall be no more than thirty pages in length, and comply with Rule 28(a)(2), (3), and (5) through (10) of the Federal Rules of Appellate Procedure. Any reply brief shall be no more than fifteen pages in length, and shall comply with Rule 28(a)(2), (3), (8), and (9) of the Federal Rules of Appellate Procedure.
              (e) The USPTO Director may refuse entry of a nonconforming brief.
              (f) The USPTO Director will decide the appeal on the record made before the hearing officer.
              (g) Unless the USPTO Director permits, no further briefs or motions shall be filed.

              (h) The USPTO Director may order reopening of a disciplinary proceeding in accordance with the principles that govern the granting of new trials. Any request to reopen a disciplinary proceeding on the basis of newly discovered evidence must demonstrate that the newly discovered evidence could not have been discovered by due diligence.
              (i) In the absence of an appeal by the OED Director, failure by the respondent to appeal under the provisions of this section shall result in the initial decision being final and effective thirty days from the date of the initial decision of the hearing officer.

              § 11.56
              Decision of the USPTO Director.
              (a) The USPTO Director shall decide an appeal from an initial decision of the hearing officer. On appeal from the initial decision, the USPTO Director has authority to conduct a de novo review of the factual record. The USPTO Director may affirm, reverse, or modify the initial decision or remand the matter to the hearing officer for such further proceedings as the USPTO Director may deem appropriate. In making a final decision, the USPTO Director shall review the record or the portions of the record designated by the parties. The USPTO Director shall transmit a copy of the final decision to the OED Director and to the respondent.
              (b) A final decision of the USPTO Director may dismiss a disciplinary proceeding, reverse or modify the initial decision, reprimand a practitioner, or may suspend or exclude the practitioner from practice before the Office. A final decision suspending or excluding a practitioner shall require compliance with the provisions of § 11.58. The final decision may also condition the reinstatement of the practitioner upon a showing that the practitioner has taken steps to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct.
              (c) The respondent or the OED Director may make a single request for reconsideration or modification of the decision by the USPTO Director if filed within twenty days from the date of entry of the decision. No request for reconsideration or modification shall be granted unless the request is based on newly discovered evidence or error of law or fact, and the requestor must demonstrate that any newly discovered evidence could not have been discovered any earlier by due diligence. Such a request shall have the effect of staying the effective date of the order of discipline in the final decision. The decision by the USPTO Director is effective on its date of entry.

              § 11.57
              Review of final decision of the USPTO Director.
              (a) Review of the final decision by the USPTO Director in a disciplinary case may be had, subject to § 11.55(d), by a petition filed in accordance with 35 U.S.C. 32. The Respondent must serve the USPTO Director with the petition. Respondent must serve the petition in accordance with Rule 4 of the Federal Rules of Civil Procedure and § 104.2 of this Title.
              (b) Except as provided for in § 11.56(c), an order for discipline in a final decision will not be stayed except on proof of exceptional circumstances.

              § 11.58
              Duties of disciplined or resigned practitioner, or practitioner on disability inactive status.
              (a) An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall not engage in any practice of patent, trademark and other non-patent law before the Office. An excluded, suspended or resigned practitioner will not be automatically reinstated at the end of his or her period of exclusion or suspension. An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status must comply with the provisions of this section and § 11.60 to be reinstated. Failure to comply with the provisions of this section may constitute both grounds for denying reinstatement or readmission; and cause for further action, including seeking further exclusion, suspension, and for revocation of any pending probation.
              (b) Unless otherwise ordered by the USPTO Director, any excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall:

              (1) Within thirty days after the date of entry of the order of exclusion, suspension, acceptance of resignation, or transfer to disability inactive status:

              (i) File a notice of withdrawal as of the effective date of the exclusion, suspension, acceptance of resignation, or transfer to disability inactive status in each pending patent and trademark application, each pending reexamination and interference or trial proceeding, and every other matter pending in the Office, together with a copy of the notices sent pursuant to paragraphs (b) and (c) of this section;
              (ii) Provide notice to all State and Federal jurisdictions and administrative agencies to which the practitioner is admitted to practice and all clients the practitioner represents having immediate or prospective business before the Office in patent, trademark and other non-patent matters of the order of exclusion, suspension, acceptance of resignation, or transferred to disability inactive status and of the practitioner's consequent inability to act as a practitioner after the effective date of the order; and that, if not represented by another practitioner, the client should act promptly to substitute another practitioner, or to seek legal advice elsewhere, calling attention to any urgency arising from the circumstances of the case;
              (iii) Provide notice to the practitioner(s) for all opposing parties (or, to the parties in the absence of a practitioner representing the parties) in matters pending before the Office of the practitioner's exclusion, suspension, resignation, or transfer to disability inactive status and, that as a consequence, the practitioner is disqualified from acting as a practitioner regarding matters before the Office after the effective date of the suspension, exclusion, resignation or transfer to disability inactive status, and state in the notice the mailing address of each client of the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status who is a party in the pending matter;
              (iv) Deliver to all clients having immediate or prospective business before the Office in patent, trademark or other non-patent matters any papers or other property to which the clients are entitled, or shall notify the clients and any co-practitioner of a suitable time and place where the papers and other property may be obtained, calling attention to any urgency for obtaining the papers or other property;
              (v) Relinquish to the client, or other practitioner designated by the client, all funds for practice before the Office, including any legal fees paid in advance that have not been earned and any advanced costs not expended;
              (vi) Take any necessary and appropriate steps to remove from any telephone, legal, or other directory any advertisement, statement, or representation which would reasonably suggest that the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office; and
              (vii) Serve all notices required by paragraphs (b)(1)(ii) and (b)(1)(iii) of this section by certified mail, return receipt requested, unless mailed abroad. If mailed abroad, all notices shall be served with a receipt to be signed and returned to the practitioner.
              (2) Within forty-five days after entry of the order of suspension, exclusion, or of acceptance of resignation, the practitioner shall file with the OED Director an affidavit of compliance certifying that the practitioner has fully complied with the provisions of the order, this section, and with § 11.116 for withdrawal from representation. Appended to the affidavit of compliance shall be:
              (i) A copy of each form of notice, the names and addresses of the clients, practitioners, courts, and agencies to which notices were sent, and all return receipts or returned mail received up to the date of the affidavit. Supplemental affidavits shall be filed covering subsequent return receipts and returned mail. Such names and addresses of clients shall remain confidential unless otherwise ordered by the USPTO Director;

              (ii) A schedule showing the location, title and account number of every bank account designated as a client or trust account, deposit account in the Office, or other fiduciary account, and of every account in which the practitioner holds or held as of the entry date of the order any client, trust, or fiduciary funds for practice before the Office;

              (iii) A schedule describing the practitioner's disposition of all client and fiduciary funds for practice before the Office in the practitioner's possession, custody or control as of the date of the order or thereafter;
              (iv) Such proof of the proper distribution of said funds and the closing of such accounts as has been requested by the OED Director, including copies of checks and other instruments;
              (v) A list of all other State, Federal, and administrative jurisdictions to which the practitioner is admitted to practice; and
              (vi) An affidavit describing the precise nature of the steps taken to remove from any telephone, legal, or other directory any advertisement, statement, or representation which would reasonably suggest that the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office. The affidavit shall also state the residence or other address of the practitioner to which communications may thereafter be directed, and list all State and Federal jurisdictions, and administrative agencies to which the practitioner is admitted to practice. The OED Director may require such additional proof as is deemed necessary. In addition, for the period of discipline, an excluded or suspended practitioner, or a practitioner transferred to disability inactive status shall continue to file a statement in accordance with § 11.11, regarding any change of residence or other address to which communications may thereafter be directed, so that the excluded or suspended practitioner, or practitioner transferred to disability inactive status may be located if a grievance is received regarding any conduct occurring before or after the exclusion or suspension. The practitioner shall retain copies of all notices sent and shall maintain complete records of the steps taken to comply with the notice requirements.
              (3) Not hold himself or herself out as authorized to practice law before the Office.
              (4) Not advertise the practitioner's availability or ability to perform or render legal services for any person having immediate or prospective business before the Office as to that business.
              (5) Not render legal advice or services to any person having immediate or prospective business before the Office as to that business.
              (6) Promptly take steps to change any sign identifying the practitioner's or the practitioner's firm's office and the practitioner's or the practitioner's firm's stationery to delete therefrom any advertisement, statement, or representation which would reasonably suggest that the practitioner is authorized to practice law before the Office.
              (c) An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status after entry of the order of exclusion or suspension, acceptance of resignation, or transfer to disability inactive status shall not accept any new retainer regarding immediate or prospective business before the Office, or engage as a practitioner for another in any new case or legal matter regarding practice before the Office. The excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall be granted limited recognition for a period of thirty days. During the thirty-day period of limited recognition, the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of exclusion or suspension, or acceptance of resignation. If such work cannot be concluded, the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall so advise the client so that the client may make other arrangements.
              (d) Required records. An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall keep and maintain records of the various steps taken under this section, so that in any subsequent proceeding proof of compliance with this section and with the exclusion or suspension order will be available. The OED Director will require the practitioner to submit such proof as a condition precedent to the granting of any petition for reinstatement.
              (e) An excluded, suspended or resigned practitioner, or practitioner on disability inactive status who aids another practitioner in any way in the other practitioner's practice of law before the Office, may, under the direct supervision of the other practitioner, act as a paralegal for the other practitioner or perform other services for the other practitioner which are normally performed by laypersons, provided:
              (1) The excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status is a salaried employee of:
              (i) The other practitioner;
              (ii) The other practitioner's law firm; or
              (iii) A client-employer who employs the other practitioner as a salaried employee;
              (2) The other practitioner assumes full professional responsibility to any client and the Office for any work performed by the excluded, suspended or resigned practitioner for the other practitioner;
              (3) The excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status does not:
              (i) Communicate directly in writing, orally, or otherwise with a client of the other practitioner in regard to any immediate or prospective business before the Office;
              (ii) Render any legal advice or any legal services to a client of the other practitioner in regard to any immediate or prospective business before the Office; or
              (iii) Meet in person or in the presence of the other practitioner in regard to any immediate or prospective business before the Office, with:
              (A) Any Office employee in connection with the prosecution of any patent, trademark, or other case;
              (B) Any client of the other practitioner, the other practitioner's law firm, or the client-employer of the other practitioner; or
              (C) Any witness or potential witness whom the other practitioner, the other practitioner's law firm, or the other practitioner's client-employer may or intends to call as a witness in any proceeding before the Office. The term “witness” includes individuals who will testify orally in a proceeding before, or sign an affidavit or any other document to be filed in, the Office.
              (f) When an excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status acts as a paralegal or performs services under paragraph (e) of this section, the practitioner shall not thereafter be reinstated to practice before the Office unless:
              (1) The practitioner shall have filed with the OED Director an affidavit which:
              (i) Explains in detail the precise nature of all paralegal or other services performed by the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status, and
              (ii) Shows by clear and convincing evidence that the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status has complied with the provisions of this section and all USPTO Rules of Professional Conduct; and
              (2) The other practitioner shall have filed with the OED Director a written statement which:
              (i) Shows that the other practitioner has read the affidavit required by paragraph (d)(1) of this section and that the other practitioner believes every statement in the affidavit to be true, and
              (ii) States why the other practitioner believes that the excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status has complied with paragraph (c) of this section.
              [73 FR 47689, Aug. 14, 2008, as amended at 77 FR 46630, Aug. 6, 2012; 78 FR 20201, Apr. 3, 2013]

              § 11.59
              Dissemination of disciplinary and other information.

              (a) The OED Director shall inform the public of the disposition of each matter in which public discipline has been imposed, and of any other changes in a practitioner's registration status. Public discipline includes exclusion, as well as exclusion on consent; suspension; and public reprimand. Unless otherwise ordered by the USPTO Director, the OED Director shall give notice of public discipline and the reasons for the discipline to disciplinary enforcement agencies in the State where the practitioner is admitted to practice, to courts where the practitioner is known to be admitted, and the public. If public discipline is imposed, the OED Director shall cause a final decision of the USPTO Director to be published. Final decisions of the USPTO Director include default judgments. See § 11.54(a)(2). If a private reprimand is imposed, the OED Director shall cause a redacted version of the final decision to be published.
              (b) Records available to the public. Unless the USPTO Director orders that the proceeding or a portion of the record be kept confidential, the OED Director's records of every disciplinary proceeding where a practitioner is reprimanded, suspended, or excluded, including when said sanction is imposed by default judgment, shall be made available to the public upon written request, except that information may be withheld as necessary to protect the privacy of third parties or as directed in a protective order issued pursuant to § 11.44(c). The record of a proceeding that results in a practitioner's transfer to disability inactive status shall not be available to the public.
              (c) Access to records of exclusion by consent. Unless the USPTO Director orders that the proceeding or a portion of the record be kept confidential, an order excluding a practitioner on consent under § 11.27 and the affidavit required under paragraph (a) of § 11.27 shall be available to the public, except that information in the order or affidavit may be withheld as necessary to protect the privacy of third parties or as directed in a protective order under § 11.44(c). The affidavit required under paragraph (a) of § 11.27 shall not be used in any other proceeding except by order of the USPTO Director or upon written consent of the practitioner.

              § 11.60
              Petition for reinstatement.
              (a) Restrictions on reinstatement. An excluded, suspended or resigned practitioner shall not resume practice of patent, trademark, or other non-patent law before the Office until reinstated by order of the OED Director or the USPTO Director.
              (b) Petition for reinstatement. An excluded or suspended practitioner shall be eligible to apply for reinstatement only upon expiration of the period of suspension or exclusion and the practitioner's full compliance with § 11.58. An excluded practitioner shall be eligible to apply for reinstatement no earlier than at least five years from the effective date of the exclusion. A resigned practitioner shall be eligible to petition for reinstatement and must show compliance with § 11.58 no earlier than at least five years from the date the practitioner's resignation is accepted and an order is entered excluding the practitioner on consent.
              (c) Review of reinstatement petition. An excluded, suspended or resigned practitioner shall file a petition for reinstatement accompanied by the fee required by § 1.21(a)(10) of this subchapter. The petition for reinstatement shall be filed with the OED Director. An excluded or suspended practitioner who has violated any provision of § 11.58 shall not be eligible for reinstatement until a continuous period of the time in compliance with § 11.58 that is equal to the period of suspension or exclusion has elapsed. A resigned practitioner shall not be eligible for reinstatement until compliance with § 11.58 is shown. If the excluded, suspended or resigned practitioner is not eligible for reinstatement, or if the OED Director determines that the petition is insufficient or defective on its face, the OED Director may dismiss the petition. Otherwise the OED Director shall consider the petition for reinstatement. The excluded, suspended or resigned practitioner seeking reinstatement shall have the burden of proof by clear and convincing evidence. Such proof shall be included in or accompany the petition, and shall establish:
              (1) That the excluded, suspended or resigned practitioner has the good moral character and reputation, competency, and learning in law required under § 11.7 for admission;
              (2) That the resumption of practice before the Office will not be detrimental to the administration of justice or subversive to the public interest; and

              (3) That the suspended practitioner has complied with the provisions of § 11.58 for the full period of suspension, that the excluded practitioner has complied with the provisions of § 11.58 for at least five continuous years, or that the resigned practitioner has complied with § 11.58 upon acceptance of the resignation.
              (d) Petitions for reinstatement—Action by the OED Director granting reinstatement. (1) If the excluded, suspended or resigned practitioner is found to have complied with paragraphs (c)(1) through (c)(3) of this section, the OED Director shall enter an order of reinstatement, which shall be conditioned on payment of the costs of the disciplinary proceeding to the extent set forth in paragraphs (d)(2) and (3) of this section.
              (2) Payment of costs of disciplinary proceedings. Prior to reinstatement to practice, the excluded or suspended practitioner shall pay the costs of the disciplinary proceeding. The costs imposed pursuant to this section include all of the following:
              (i) The actual expense incurred by the OED Director or the Office for the original and copies of any reporter's transcripts of the disciplinary proceeding, and any fee paid for the services of the reporter;
              (ii) All expenses paid by the OED Director or the Office which would qualify as taxable costs recoverable in civil proceedings; and
              (iii) The charges determined by the OED Director to be “reasonable costs” of investigation, hearing, and review. These amounts shall serve to defray the costs, other than fees for services of attorneys and experts, of the Office of Enrollment and Discipline in the preparation or hearing of the disciplinary proceeding, and costs incurred in the administrative processing of the disciplinary proceeding.
              (3) An excluded or suspended practitioner may be granted relief, in whole or in part, only from an order assessing costs under this section or may be granted an extension of time to pay these costs, in the discretion of the OED Director, upon grounds of hardship, special circumstances, or other good cause.
              (e) Petitions for reinstatement—Action by the OED Director denying reinstatement. If the excluded, suspended or resigned practitioner is found unfit to resume the practice of patent law before the Office, the OED Director shall first provide the excluded, suspended or resigned practitioner with an opportunity to show cause in writing why the petition should not be denied. Failure to comply with § 11.12(c) shall constitute unfitness. If unpersuaded by the showing, the OED Director shall deny the petition. The OED Director may require the excluded, suspended or resigned practitioner, in meeting the requirements of § 11.7, to take and pass an examination under § 11.7(b), ethics courses, and/or the Multistate Professional Responsibility Examination. The OED Director shall provide findings, together with the record. The findings shall include on the first page, immediately beneath the caption of the case, a separate section entitled “Prior Proceedings” which shall state the docket number of the original disciplinary proceeding in which the exclusion or suspension was ordered.
              (f) Resubmission of petitions for reinstatement. If a petition for reinstatement is denied, no further petition for reinstatement may be filed until the expiration of at least one year following the denial unless the order of denial provides otherwise.
              (g) Reinstatement proceedings open to public. Proceedings on any petition for reinstatement shall be open to the public. Before reinstating any excluded or suspended practitioner, the OED Director shall publish a notice of the excluded or suspended practitioner's petition for reinstatement and shall permit the public a reasonable opportunity to comment or submit evidence with respect to the petition for reinstatement.

              §§ 11.61-11.99
              [Reserved]

            Subpart D—USPTO Rules of Professional Conduct

              Source:
              78 FR 20201, Apr. 3, 2013, unless otherwise noted.

              § 11.100
              [Reserved]

              Client-Practitioner Relationship

                § 11.101
                Competence.
                A practitioner shall provide competent representation to a client. Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

                § 11.102
                Scope of representation and allocation of authority between client and practitioner.
                (a) Subject to paragraphs (c) and (d) of this section, a practitioner shall abide by a client's decisions concerning the objectives of representation and, as required by § 11.104, shall consult with the client as to the means by which they are to be pursued. A practitioner may take such action on behalf of the client as is impliedly authorized to carry out the representation. A practitioner shall abide by a client's decision whether to settle a matter.
                (b) [Reserved]
                (c) A practitioner may limit the scope of the representation if the limitation is reasonable under the circumstances and the client gives informed consent.
                (d) A practitioner shall not counsel a client to engage, or assist a client, in conduct that the practitioner knows is criminal or fraudulent, but a practitioner may discuss the legal consequences of any proposed course of conduct with a client and may counsel or assist a client to make a good-faith effort to determine the validity, scope, meaning or application of the law.

                § 11.103
                Diligence.
                A practitioner shall act with reasonable diligence and promptness in representing a client.

                § 11.104
                Communication.
                (a) A practitioner shall:
                (1) Promptly inform the client of any decision or circumstance with respect to which the client's informed consent is required by the USPTO Rules of Professional Conduct;
                (2) Reasonably consult with the client about the means by which the client's objectives are to be accomplished;
                (3) Keep the client reasonably informed about the status of the matter;
                (4) Promptly comply with reasonable requests for information from the client; and
                (5) Consult with the client about any relevant limitation on the practitioner's conduct when the practitioner knows that the client expects assistance not permitted by the USPTO Rules of Professional Conduct or other law.
                (b) A practitioner shall explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation.

                § 11.105
                Fees.
                (a) A practitioner shall not make an agreement for, charge, or collect an unreasonable fee or an unreasonable amount for expenses. The factors to be considered in determining the reasonableness of a fee include the following:
                (1) The time and labor required, the novelty and difficulty of the questions involved, and the skill requisite to perform the legal service properly;
                (2) The likelihood, if apparent to the client, that the acceptance of the particular employment will preclude other employment by the practitioner;
                (3) The fee customarily charged in the locality for similar legal services;
                (4) The amount involved and the results obtained;
                (5) The time limitations imposed by the client or by the circumstances;
                (6) The nature and length of the professional relationship with the client;
                (7) The experience, reputation, and ability of the practitioner or practitioners performing the services; and
                (8) Whether the fee is fixed or contingent.

                (b) The scope of the representation and the basis or rate of the fee and expenses for which the client will be responsible shall be communicated to the client, preferably in writing, before or within a reasonable time after commencing the representation, except when the practitioner will charge a regularly represented client on the same basis or rate. Any changes in the basis or rate of the fee or expenses shall also be communicated to the client.
                (c) A fee may be contingent on the outcome of the matter for which the service is rendered, except in a matter in which a contingent fee is prohibited by law. A contingent fee agreement shall be in a writing signed by the client and shall state the method by which the fee is to be determined, including the percentage or percentages that shall accrue to the practitioner in the event of settlement, trial or appeal; litigation and other expenses to be deducted from the recovery; and whether such expenses are to be deducted before or after the contingent fee is calculated. The agreement must clearly notify the client of any expenses for which the client will be liable whether or not the client is the prevailing party. Upon conclusion of a contingent fee matter, the practitioner shall provide the client with a written statement stating the outcome of the matter and, if there is a recovery, showing the remittance to the client and the method of its determination.
                (d) [Reserved]
                (e) A division of a fee between practitioners who are not in the same firm may be made only if:
                (1) The division is in proportion to the services performed by each practitioner or each practitioner assumes joint responsibility for the representation;
                (2) The client agrees to the arrangement, including the share each practitioner will receive, and the agreement is confirmed in writing; and
                (3) The total fee is reasonable.

                § 11.106
                Confidentiality of information.
                (a) A practitioner shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation, the disclosure is permitted by paragraph (b) of this section, or the disclosure is required by paragraph (c) of this section.
                (b) A practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary:
                (1) To prevent reasonably certain death or substantial bodily harm;
                (2) To prevent the client from engaging in inequitable conduct before the Office or from committing a crime or fraud that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has used or is using the practitioner's services;
                (3) To prevent, mitigate or rectify substantial injury to the financial interests or property of another that is reasonably certain to result or has resulted from the client's commission of a crime, fraud, or inequitable conduct before the Office in furtherance of which the client has used the practitioner's services;
                (4) To secure legal advice about the practitioner's compliance with the USPTO Rules of Professional Conduct;
                (5) To establish a claim or defense on behalf of the practitioner in a controversy between the practitioner and the client, to establish a defense to a criminal charge or civil claim against the practitioner based upon conduct in which the client was involved, or to respond to allegations in any proceeding concerning the practitioner's representation of the client; or
                (6) To comply with other law or a court order.
                (c) A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.

                § 11.107
                Conflict of interest; Current clients.
                (a) Except as provided in paragraph (b) of this section, a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if:
                (1) The representation of one client will be directly adverse to another client; or

                (2) There is a significant risk that the representation of one or more clients will be materially limited by the practitioner's responsibilities to another client, a former client or a third person or by a personal interest of the practitioner.

                (b) Notwithstanding the existence of a concurrent conflict of interest under paragraph (a) of this section, a practitioner may represent a client if:
                (1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client;
                (2) The representation is not prohibited by law;
                (3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same litigation or other proceeding before a tribunal; and
                (4) Each affected client gives informed consent, confirmed in writing.

                § 11.108
                Conflict of interest; Current clients; Specific rules.
                (a) A practitioner shall not enter into a business transaction with a client or knowingly acquire an ownership, possessory, security or other pecuniary interest adverse to a client unless:
                (1) The transaction and terms on which the practitioner acquires the interest are fair and reasonable to the client and are fully disclosed and transmitted in writing in a manner that can be reasonably understood by the client;
                (2) The client is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in the transaction; and
                (3) The client gives informed consent, in a writing signed by the client, to the essential terms of the transaction and the practitioner's role in the transaction, including whether the practitioner is representing the client in the transaction.
                (b) A practitioner shall not use information relating to representation of a client to the disadvantage of the client unless the client gives informed consent, except as permitted or required by the USPTO Rules of Professional Conduct.
                (c) A practitioner shall not solicit any substantial gift from a client, including a testamentary gift, or prepare on behalf of a client an instrument giving the practitioner or a person related to the practitioner any substantial gift unless the practitioner or other recipient of the gift is related to the client. For purposes of this paragraph, related persons include a spouse, child, grandchild, parent, grandparent or other relative or individual with whom the practitioner or the client maintains a close, familial relationship.
                (d) Prior to the conclusion of representation of a client, a practitioner shall not make or negotiate an agreement giving the practitioner literary or media rights to a portrayal or account based in substantial part on information relating to the representation.
                (e) A practitioner shall not provide financial assistance to a client in connection with pending or contemplated litigation or a proceeding before the Office, except that:
                (1) A practitioner may advance court costs and expenses of litigation, the repayment of which may be contingent on the outcome of the matter;
                (2) A practitioner representing an indigent client may pay court costs and expenses of litigation or a proceeding before the Office on behalf of the client;
                (3) A practitioner may advance costs and expenses in connection with a proceeding before the Office provided the client remains ultimately liable for such costs and expenses; and
                (4) A practitioner may also advance any fee required to prevent or remedy an abandonment of a client's application by reason of an act or omission attributable to the practitioner and not to the client, whether or not the client is ultimately liable for such fee.
                (f) A practitioner shall not accept compensation for representing a client from one other than the client unless:
                (1) The client gives informed consent;
                (2) There is no interference with the practitioner's independence of professional judgment or with the client-practitioner relationship; and
                (3) Information relating to representation of a client is protected as required by § 11.106.

                (g) A practitioner who represents two or more clients shall not participate in making an aggregate settlement of the claims of or against the clients, unless each client gives informed consent, in a writing signed by the client. The practitioner's disclosure shall include the existence and nature of all the claims involved and of the participation of each person in the settlement.
                (h) A practitioner shall not:
                (1) Make an agreement prospectively limiting the practitioner's liability to a client for malpractice unless the client is independently represented in making the agreement; or
                (2) Settle a claim or potential claim for such liability with an unrepresented client or former client unless that person is advised in writing of the desirability of seeking and is given a reasonable opportunity to seek the advice of independent legal counsel in connection therewith.
                (i) A practitioner shall not acquire a proprietary interest in the cause of action, subject matter of litigation, or a proceeding before the Office which the practitioner is conducting for a client, except that the practitioner may, subject to the other provisions in this section:
                (1) Acquire a lien authorized by law to secure the practitioner's fee or expenses;
                (2) Contract with a client for a reasonable contingent fee in a civil case; and
                (3) In a patent case or a proceeding before the Office, take an interest in the patent or patent application as part or all of his or her fee.
                (j) [Reserved]
                (k) While practitioners are associated in a firm, a prohibition in paragraphs (a) through (i) of this section that applies to any one of them shall apply to all of them.

                § 11.109
                Duties to former clients.
                (a) A practitioner who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing.
                (b) A practitioner shall not knowingly represent a person in the same or a substantially related matter in which a firm with which the practitioner formerly was associated had previously represented a client:
                (1) Whose interests are materially adverse to that person; and
                (2) About whom the practitioner had acquired information protected by §§ 11.106 and 11.109(c) that is material to the matter; unless the former client gives informed consent, confirmed in writing.
                (c) A practitioner who has formerly represented a client in a matter or whose present or former firm has formerly represented a client in a matter shall not thereafter:
                (1) Use information relating to the representation to the disadvantage of the former client except as the USPTO Rules of Professional Conduct would permit or require with respect to a client, or when the information has become generally known; or
                (2) Reveal information relating to the representation except as the USPTO Rules of Professional Conduct would permit or require with respect to a client.

                § 11.110
                Imputation of conflicts of interest; General rule.
                (a) While practitioners are associated in a firm, none of them shall knowingly represent a client when any one of them practicing alone would be prohibited from doing so by §§ 11.107 or 11.109, unless:
                (1) The prohibition is based on a personal interest of the disqualified practitioner and does not present a significant risk of materially limiting the representation of the client by the remaining practitioners in the firm; or
                (2) The prohibition is based upon § 11.109(a) or (b), and arises out of the disqualified practitioner's association with a prior firm, and
                (i) The disqualified practitioner is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; and

                (ii) Written notice is promptly given to any affected former client to enable the former client to ascertain compliance with the provisions of this section, which shall include a description of the screening procedures employed; a statement of the firm's and of the screened practitioner's compliance with the USPTO Rules of Professional Conduct; a statement that review may be available before a tribunal; and an agreement by the firm to respond promptly to any written inquiries or objections by the former client about the screening procedures.
                (b) When a practitioner has terminated an association with a firm, the firm is not prohibited from thereafter representing a person with interests materially adverse to those of a client represented by the formerly associated practitioner and not currently represented by the firm, unless:
                (1) The matter is the same or substantially related to that in which the formerly associated practitioner represented the client; and
                (2) Any practitioner remaining in the firm has information protected by §§ 11.106 and 11.109(c) that is material to the matter.
                (c) A disqualification prescribed by this section may be waived by the affected client under the conditions stated in § 11.107.
                (d) The disqualification of practitioners associated in a firm with former or current Federal Government lawyers is governed by § 11.111.

                § 11.111
                Former or current Federal Government employees.
                A practitioner who is a former or current Federal Government employee shall not engage in any conduct which is contrary to applicable Federal ethics law, including conflict of interest statutes and regulations of the department, agency or commission formerly or currently employing said practitioner.

                § 11.112
                Former judge, arbitrator, mediator or other third-party neutral.
                (a) Except as stated in paragraph (d) of this section, a practitioner shall not represent anyone in connection with a matter in which the practitioner participated personally and substantially as a judge or other adjudicative officer or law clerk to such a person or as an arbitrator, mediator or other third-party neutral, unless all parties to the proceeding give informed consent, confirmed in writing.
                (b) A practitioner shall not negotiate for employment with any person who is involved as a party or as practitioner for a party in a matter in which the practitioner is participating personally and substantially as a judge or other adjudicative officer or as an arbitrator, mediator or other third-party neutral. A practitioner serving as a law clerk to a judge or other adjudicative officer may negotiate for employment with a party or practitioner involved in a matter in which the clerk is participating personally and substantially, but only after the practitioner has notified the judge, or other adjudicative officer.
                (c) If a practitioner is disqualified by paragraph (a) of this section, no practitioner in a firm with which that practitioner is associated may knowingly undertake or continue representation in the matter unless:
                (1) The disqualified practitioner is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; and
                (2) Written notice is promptly given to the parties and any appropriate tribunal to enable them to ascertain compliance with the provisions of this section.
                (d) An arbitrator selected as a partisan of a party in a multimember arbitration panel is not prohibited from subsequently representing that party.

                § 11.113
                Organization as client.
                (a) A practitioner employed or retained by an organization represents the organization acting through its duly authorized constituents.

                (b) If a practitioner for an organization knows that an officer, employee or other person associated with the organization is engaged in action, intends to act or refuses to act in a matter related to the representation that is a violation of a legal obligation to the organization, or a violation of law that reasonably might be imputed to the organization, and that is likely to result in substantial injury to the organization, then the practitioner shall proceed as is reasonably necessary in the best interest of the organization. Unless the practitioner reasonably believes that it is not necessary in the best interest of the organization to do so, the practitioner shall refer the matter to higher authority in the organization, including, if warranted by the circumstances, to the highest authority that can act on behalf of the organization as determined by applicable law.

                (c) Except as provided in paragraph (d) of this section, if
                (1) Despite the practitioner's efforts in accordance with paragraph (b) of this section the highest authority that can act on behalf of the organization insists upon or fails to address in a timely and appropriate manner an action, or a refusal to act, that is clearly a violation of law, and
                (2) The practitioner reasonably believes that the violation is reasonably certain to result in substantial injury to the organization, then the practitioner may reveal information relating to the representation whether or not § 11.106 permits such disclosure, but only if and to the extent the practitioner reasonably believes necessary to prevent substantial injury to the organization.
                (d) Paragraph (c) of this section shall not apply with respect to information relating to a practitioner's representation of an organization to investigate an alleged violation of law, or to defend the organization or an officer, employee or other constituent associated with the organization against a claim arising out of an alleged violation of law.
                (e) A practitioner who reasonably believes that he or she has been discharged because of the practitioner's actions taken pursuant to paragraphs (b) or (c) of this section, or who withdraws under circumstances that require or permit the practitioner to take action under either of those paragraphs, shall proceed as the practitioner reasonably believes necessary to assure that the organization's highest authority is informed of the practitioner's discharge or withdrawal.
                (f) In dealing with an organization's directors, officers, employees, members, shareholders, or other constituents, a practitioner shall explain the identity of the client when the practitioner knows or reasonably should know that the organization's interests are adverse to those of the constituents with whom the practitioner is dealing.
                (g) A practitioner representing an organization may also represent any of its directors, officers, employees, members, shareholders or other constituents, subject to the provisions of § 11.107. If the organization's consent to the dual representation is required by § 11.107, the consent shall be given by an appropriate official of the organization other than the individual who is to be represented, or by the shareholders.

                § 11.114
                Client with diminished capacity.
                (a) When a client's capacity to make adequately considered decisions in connection with a representation is diminished, whether because of minority, mental impairment or for some other reason, the practitioner shall, as far as reasonably possible, maintain a normal client-practitioner relationship with the client.
                (b) When the practitioner reasonably believes that the client has diminished capacity, is at risk of substantial physical, financial or other harm unless action is taken and cannot adequately act in the client's own interest, the practitioner may take reasonably necessary protective action, including consulting with individuals or entities that have the ability to take action to protect the client and, in appropriate cases, seeking the appointment of a guardian ad litem, conservator or guardian.
                (c) Information relating to the representation of a client with diminished capacity is protected under § 11.106. When taking protective action pursuant to paragraph (b) of this section, the practitioner is impliedly authorized under § 11.106(a) to reveal information about the client, but only to the extent reasonably necessary to protect the client's interests.

                § 11.115
                Safekeeping property.

                (a) A practitioner shall hold property of clients or third persons that is in a practitioner's possession in connection with a representation separate from the practitioner's own property. Funds shall be kept in a separate account maintained in the state where the practitioner's office is situated, or elsewhere with the consent of the client or third person. Where the practitioner's office is situated in a foreign country, funds shall be kept in a separate account maintained in that foreign country or elsewhere with the consent of the client or third person. Other property shall be identified as such and appropriately safeguarded. Complete records of such account funds and other property shall be kept by the practitioner and shall be preserved for a period of five years after termination of the representation.
                (b) A practitioner may deposit the practitioner's own funds in a client trust account for the sole purpose of paying bank service charges on that account, but only in an amount necessary for that purpose.
                (c) A practitioner shall deposit into a client trust account legal fees and expenses that have been paid in advance, to be withdrawn by the practitioner only as fees are earned or expenses incurred.
                (d) Upon receiving funds or other property in which a client or third person has an interest, a practitioner shall promptly notify the client or third person. Except as stated in this section or otherwise permitted by law or by agreement with the client, a practitioner shall promptly deliver to the client or third person any funds or other property that the client or third person is entitled to receive and, upon request by the client or third person, shall promptly render a full accounting regarding such property.
                (e) When in the course of representation a practitioner is in possession of property in which two or more persons (one of whom may be the practitioner) claim interests, the property shall be kept separate by the practitioner until the dispute is resolved. The practitioner shall promptly distribute all portions of the property as to which the interests are not in dispute.
                (f) All separate accounts for clients or third persons kept by a practitioner must also comply with the following provisions:
                (1) Required records. The records to be kept include:
                (i) Receipt and disbursement journals containing a record of deposits to and withdrawals from client trust accounts, specifically identifying the date, source, and description of each item deposited, as well as the date, payee and purpose of each disbursement;
                (ii) Ledger records for all client trust accounts showing, for each separate trust client or beneficiary, the source of all funds deposited, the names of all persons for whom the funds are or were held, the amount of such funds, the descriptions and amounts of charges or withdrawals, and the names of all persons or entities to whom such funds were disbursed;
                (iii) Copies of retainer and compensation agreements with clients;
                (iv) Copies of accountings to clients or third persons showing the disbursement of funds to them or on their behalf;
                (v) Copies of bills for legal fees and expenses rendered to clients;
                (vi) Copies of records showing disbursements on behalf of clients;
                (vii) The physical or electronic equivalents of all checkbook registers, bank statements, records of deposit, pre-numbered canceled checks, and substitute checks provided by a financial institution;
                (viii) Records of all electronic transfers from client trust accounts, including the name of the person authorizing transfer, the date of transfer, the name of the recipient and confirmation from the financial institution of the trust account number from which money was withdrawn and the date and the time the transfer was completed;
                (ix) Copies of monthly trial balances and quarterly reconciliations of the client trust accounts maintained by the practitioner; and
                (x) Copies of those portions of client files that are reasonably related to client trust account transactions.
                (2) Client trust account safeguards. With respect to client trust accounts required by paragraphs (a) through (e) of this section:
                (i) Only a practitioner or a person under the direct supervision of the practitioner shall be an authorized signatory or authorize transfers from a client trust account;
                (ii) Receipts shall be deposited intact and records of deposit should be sufficiently detailed to identify each item; and

                (iii) Withdrawals shall be made only by check payable to a named payee and not to cash, or by authorized electronic transfer.

                (3) Availability of records. Records required by paragraph (f)(1) of this section may be maintained by electronic, photographic, or other media provided that they otherwise comply with paragraphs (f)(1) and (f)(2) of this section and that printed copies can be produced. These records shall be readily accessible to the practitioner.
                (4) Lawyers. The records kept by a lawyer are deemed to be in compliance with this section if the types of records that are maintained meet the recordkeeping requirements of a state in which the lawyer is licensed and in good standing, the recordkeeping requirements of the state where the lawyer's principal place of business is located, or the recordkeeping requirements of this section.
                (5) Patent agents and persons granted limited recognition who are employed in the United States by a law firm. The records kept by a law firm employing one or more registered patent agents or persons granted limited recognition under § 11.9 are deemed to be in compliance with this section if the types of records that are maintained meet the recordkeeping requirements of the state where at least one practitioner of the law firm is licensed and in good standing, the recordkeeping requirements of the state where the law firm's principal place of business is located, or the recordkeeping requirements of this section.

                § 11.116
                Declining or terminating representation.
                (a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:
                (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
                (2) The practitioner's physical or mental condition materially impairs the practitioner's ability to represent the client; or
                (3) The practitioner is discharged.
                (b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:
                (1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
                (2) The client persists in a course of action involving the practitioner's services that the practitioner reasonably believes is criminal or fraudulent;
                (3) The client has used the practitioner's services to perpetrate a crime or fraud;
                (4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
                (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner's services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
                (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
                (7) Other good cause for withdrawal exists.
                (c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.
                (d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client's interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.

                § 11.117
                Sale of law practice.
                A practitioner or a law firm may sell or purchase a law practice, or an area of law practice, including good will, if the following conditions are satisfied:
                (a) The seller ceases to engage in the private practice of law, or in the area of practice that has been sold, in a geographic area in which the practice has been conducted;

                (b)(1) Except as provided in paragraph (b)(2) of this section, the entire practice, or the entire area of practice, is sold to one or more lawyers or law firms;
                (2) To the extent the practice or the area of practice involves patent proceedings before the Office, that practice or area of practice may be sold only to one or more registered practitioners or law firms that include at least one registered practitioner;
                (c)(1) The seller gives written notice to each of the seller's clients regarding:
                (i) The proposed sale;
                (ii) The client's right to retain other counsel or to take possession of the file; and
                (iii) The fact that the client's consent to the transfer of the client's files will be presumed if the client does not take any action or does not otherwise object within ninety (90) days after receipt of the notice.
                (2) If a client cannot be given notice, the representation of that client may be transferred to the purchaser only upon entry of an order so authorizing by a court having jurisdiction. The seller may disclose to the court in camera information relating to the representation only to the extent necessary to obtain an order authorizing the transfer of a file; and
                (d) The fees charged clients shall not be increased by reason of the sale.

                § 11.118
                Duties to prospective client.
                (a) A person who discusses with a practitioner the possibility of forming a client-practitioner relationship with respect to a matter is a prospective client.
                (b) Even when no client-practitioner relationship ensues, a practitioner who has had discussions with the prospective client shall not use or reveal information learned in the consultation, except as § 11.109 would permit with respect to information of a former client.
                (c) A practitioner subject to paragraph (b) of this section shall not represent a client with interests materially adverse to those of a prospective client in the same or a substantially related matter if the practitioner received information from the prospective client that could be significantly harmful to that person in the matter, except as provided in paragraph (d) of this section. If a practitioner is disqualified from representation under this paragraph, no practitioner in a firm with which that practitioner is associated may knowingly undertake or continue representation in such a matter, except as provided in paragraph (d) of this section.
                (d) When the practitioner has received disqualifying information as defined in paragraph (c) of this section, representation is permissible if:
                (1) Both the affected client and the prospective client have given informed consent, confirmed in writing; or
                (2) The practitioner who received the information took reasonable measures to avoid exposure to more disqualifying information than was reasonably necessary to determine whether to represent the prospective client; and
                (i) The disqualified practitioner is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; and
                (ii) Written notice is promptly given to the prospective client.

                §§ 11.119-11.200
                [Reserved]

              Counselor

                § 11.201
                Advisor.
                In representing a client, a practitioner shall exercise independent professional judgment and render candid advice. In rendering advice, a practitioner may refer not only to law but to other considerations such as moral, economic, social and political factors that may be relevant to the client's situation.

                § 11.202
                [Reserved]

                § 11.203
                Evaluation for use by third persons.
                (a) A practitioner may provide an evaluation of a matter affecting a client for the use of someone other than the client if the practitioner reasonably believes that making the evaluation is compatible with other aspects of the practitioner's relationship with the client.

                (b) When the practitioner knows or reasonably should know that the evaluation is likely to affect the client's interests materially and adversely, the practitioner shall not provide the evaluation unless the client gives informed consent.

                (c) Except as disclosure is authorized in connection with a report of an evaluation, information relating to the evaluation is otherwise protected by § 11.106.

                § 11.204
                Practitioner serving as third-party neutral.
                (a) A practitioner serves as a third-party neutral when the practitioner assists two or more persons who are not clients of the practitioner to reach a resolution of a dispute or other matter that has arisen between them. Service as a third-party neutral may include service as an arbitrator, a mediator or in such other capacity as will enable the practitioner to assist the parties to resolve the matter.
                (b) A practitioner serving as a third-party neutral shall inform unrepresented parties that the practitioner is not representing them. When the practitioner knows or reasonably should know that a party does not understand the practitioner's role in the matter, the practitioner shall explain the difference between the practitioner's role as a third-party neutral and a practitioner's role as one who represents a client.

                §§ 11.205-11.300
                [Reserved]

              Advocate

                § 11.301
                Meritorious claims and contentions.
                A practitioner shall not bring or defend a proceeding, or assert or controvert an issue therein, unless there is a basis in law and fact for doing so that is not frivolous, which includes a good-faith argument for an extension, modification or reversal of existing law.

                § 11.302
                Expediting proceedings.
                A practitioner shall make reasonable efforts to expedite proceedings before a tribunal consistent with the interests of the client.

                § 11.303
                Candor toward the tribunal.
                (a) A practitioner shall not knowingly:
                (1) Make a false statement of fact or law to a tribunal or fail to correct a false statement of material fact or law previously made to the tribunal by the practitioner;

                (2) Fail to disclose to the tribunal legal authority in the controlling jurisdiction known to the practitioner to be directly adverse to the position of the client and not disclosed by opposing counsel in an inter partes proceeding, or fail to disclose such authority in an ex parte proceeding before the Office if such authority is not otherwise disclosed; or
                (3) Offer evidence that the practitioner knows to be false. If a practitioner, the practitioner's client, or a witness called by the practitioner, has offered material evidence and the practitioner comes to know of its falsity, the practitioner shall take reasonable remedial measures, including, if necessary, disclosure to the tribunal. A practitioner may refuse to offer evidence that the practitioner reasonably believes is false.
                (b) A practitioner who represents a client in a proceeding before a tribunal and who knows that a person intends to engage, is engaging or has engaged in criminal or fraudulent conduct related to the proceeding shall take reasonable remedial measures, including, if necessary, disclosure to the tribunal.
                (c) The duties stated in paragraphs (a) and (b) of this section continue to the conclusion of the proceeding, and apply even if compliance requires disclosure of information otherwise protected by § 11.106.
                (d) In an ex parte proceeding, a practitioner shall inform the tribunal of all material facts known to the practitioner that will enable the tribunal to make an informed decision, whether or not the facts are adverse.
                (e) In a proceeding before the Office, a practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.

                § 11.304
                Fairness to opposing party and counsel.
                A practitioner shall not:

                (a) Unlawfully obstruct another party's access to evidence or unlawfully alter, destroy or conceal a document or other material having potential evidentiary value. A practitioner shall not counsel or assist another person to do any such act;
                (b) Falsify evidence, counsel or assist a witness to testify falsely, or offer an inducement to a witness that is prohibited by law;
                (c) Knowingly disobey an obligation under the rules of a tribunal except for an open refusal based on an assertion that no valid obligation exists;
                (d) Make a frivolous discovery request or fail to make a reasonably diligent effort to comply with a legally proper discovery request by an opposing party;
                (e) In a proceeding before a tribunal, allude to any matter that the practitioner does not reasonably believe is relevant or that will not be supported by admissible evidence, assert personal knowledge of facts in issue except when testifying as a witness, or state a personal opinion as to the justness of a cause, the credibility of a witness, the culpability of a civil litigant or the guilt or innocence of an accused; or
                (f) Request a person other than a client to refrain from voluntarily giving relevant information to another party unless:
                (1) The person is a relative or an employee or other agent of a client; and
                (2) The practitioner reasonably believes that the person's interests will not be adversely affected by refraining from giving such information.

                § 11.305
                Impartiality and decorum of the tribunal.
                A practitioner shall not:
                (a) Seek to influence a judge, hearing officer, administrative law judge, administrative patent judge, administrative trademark judge, juror, prospective juror, employee or officer of the Office, or other official by means prohibited by law;
                (b) Communicate ex parte with such a person during the proceeding unless authorized to do so by law, rule or court order; or
                (c) [Reserved]
                (d) Engage in conduct intended to disrupt any proceeding before a tribunal.

                § 11.306
                Trial publicity.
                (a) A practitioner who is participating or has participated in the investigation or litigation of a matter shall not make an extrajudicial statement that the practitioner knows or reasonably should know will be disseminated by means of public communication and will have a substantial likelihood of materially prejudicing an adjudicative proceeding in the matter.
                (b) Notwithstanding paragraph (a) of this section, a practitioner may state:
                (1) The claim, offense or defense involved and, except when prohibited by law, the identity of the persons involved;
                (2) Information contained in a public record;
                (3) That an investigation of a matter is in progress;
                (4) The scheduling or result of any step in litigation;
                (5) A request for assistance in obtaining evidence and information necessary thereto; and
                (6) A warning of danger concerning the behavior of a person involved, when there is reason to believe that there exists the likelihood of substantial harm to an individual or to the public interest.
                (c) Notwithstanding paragraph (a) of this section, a practitioner may make a statement that a reasonable practitioner would believe is required to protect a client from the substantial undue prejudicial effect of recent publicity not initiated by the practitioner or the practitioner's client. A statement made pursuant to this paragraph shall be limited to such information as is necessary to mitigate the recent adverse publicity.
                (d) No practitioner associated in a firm or government agency with a practitioner subject to paragraph (a) of this section shall make a statement prohibited by paragraph (a).

                § 11.307
                Practitioner as witness.
                (a) A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless:
                (1) The testimony relates to an uncontested issue;

                (2) The testimony relates to the nature and value of legal services rendered in the case; or

                (3) Disqualification of the practitioner would work substantial hardship on the client.
                (b) A practitioner may act as advocate in a proceeding before a tribunal in which another practitioner in the practitioner's firm is likely to be called as a witness unless precluded from doing so by §§ 11.107 or 11.109.

                § 11.308
                [Reserved]

                § 11.309
                Advocate in nonadjudicative proceedings.
                A practitioner representing a client before a legislative body or administrative agency in a nonadjudicative proceeding shall disclose that the appearance is in a representative capacity and shall conform to the provisions of §§ 11.303(a) through (c), 11.304(a) through (c), and 11.305.

                §§ 11.310-11.400
                [Reserved]

              Transactions With Persons Other Than Clients

                § 11.401
                Truthfulness in statements to others.
                In the course of representing a client, a practitioner shall not knowingly:
                (a) Make a false statement of material fact or law to a third person; or
                (b) Fail to disclose a material fact to a third person when disclosure is necessary to avoid assisting a criminal or fraudulent act by a client, unless disclosure is prohibited by § 11.106.

                § 11.402
                Communication with person represented by a practitioner.
                (a) In representing a client, a practitioner shall not communicate about the subject of the representation with a person the practitioner knows to be represented by another practitioner in the matter, unless the practitioner has the consent of the other practitioner or is authorized to do so by law, rule, or a court order.
                (b) This section does not prohibit communication by a practitioner with government officials who are otherwise represented by counsel and who have the authority to redress the grievances of the practitioner's client, provided that, if the communication relates to a matter for which the government official is represented, then prior to the communication the practitioner must disclose to such government official both the practitioner's identity and the fact that the practitioner represents a party with a claim against the government.

                § 11.403
                Dealing with unrepresented person.
                In dealing on behalf of a client with a person who is not represented by a practitioner, a practitioner shall not state or imply that the practitioner is disinterested. When the practitioner knows or reasonably should know that the unrepresented person misunderstands the practitioner's role in the matter, the practitioner shall make reasonable efforts to correct the misunderstanding. The practitioner shall not give legal advice to an unrepresented person, other than the advice to secure counsel, if the practitioner knows or reasonably should know that the interests of such a person are or have a reasonable possibility of being in conflict with the interests of the client.

                § 11.404
                Respect for rights of third persons.
                (a) In representing a client, a practitioner shall not use means that have no substantial purpose other than to embarrass, delay, or burden a third person, or use methods of obtaining evidence that violate the legal rights of such a person.
                (b) A practitioner who receives a document or electronically stored information relating to the representation of the practitioner's client and knows or reasonably should know that the document or electronically stored information was inadvertently sent shall promptly notify the sender.

                §§ 11.405-11.500
                [Reserved]

              Law Firms and Associations

                § 11.501
                Responsibilities of partners, managers, and supervisory practitioners.

                (a) A practitioner who is a partner in a law firm, and a practitioner who individually or together with other practitioners possesses comparable managerial authority in a law firm, shall make reasonable efforts to ensure that the firm has in effect measures giving reasonable assurance that all practitioners in the firm conform to the USPTO Rules of Professional Conduct.
                (b) A practitioner having direct supervisory authority over another practitioner shall make reasonable efforts to ensure that the other practitioner conforms to the USPTO Rules of Professional Conduct.
                (c) A practitioner shall be responsible for another practitioner's violation of the USPTO Rules of Professional Conduct if:
                (1) The practitioner orders or, with knowledge of the specific conduct, ratifies the conduct involved; or
                (2) The practitioner is a partner or has comparable managerial authority in the law firm in which the other practitioner practices, or has direct supervisory authority over the other practitioner, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take reasonable remedial action.

                § 11.502
                Responsibilities of a subordinate practitioner.
                (a) A practitioner is bound by the USPTO Rules of Professional Conduct notwithstanding that the practitioner acted at the direction of another person.
                (b) A subordinate practitioner does not violate the USPTO Rules of Professional Conduct if that practitioner acts in accordance with a supervisory practitioner's reasonable resolution of an arguable question of professional duty.

                § 11.503
                Responsibilities regarding non-practitioner assistance.
                With respect to a non-practitioner assistant employed or retained by or associated with a practitioner:
                (a) A practitioner who is a partner, and a practitioner who individually or together with other practitioners possesses comparable managerial authority in a law firm shall make reasonable efforts to ensure that the firm has in effect measures giving reasonable assurance that the person's conduct is compatible with the professional obligations of the practitioner;
                (b) A practitioner having direct supervisory authority over the non-practitioner assistant shall make reasonable efforts to ensure that the person's conduct is compatible with the professional obligations of the practitioner; and
                (c) A practitioner shall be responsible for conduct of such a person that would be a violation of the USPTO Rules of Professional Conduct if engaged in by a practitioner if:
                (1) The practitioner orders or, with the knowledge of the specific conduct, ratifies the conduct involved; or
                (2) The practitioner is a partner or has comparable managerial authority in the law firm in which the person is employed, or has direct supervisory authority over the person, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take reasonable remedial action.

                § 11.504
                Professional independence of a practitioner.
                (a) A practitioner or law firm shall not share legal fees with a non-practitioner, except that:
                (1) An agreement by a practitioner with the practitioner's firm, partner, or associate may provide for the payment of money, over a reasonable period of time after the practitioner's death, to the practitioner's estate or to one or more specified persons;
                (2) A practitioner who purchases the practice of a deceased, disabled, or disappeared practitioner may, pursuant to the provisions of § 11.117, pay to the estate or other representative of that practitioner the agreed-upon purchase price;
                (3) A practitioner or law firm may include non-practitioner employees in a compensation or retirement plan, even though the plan is based in whole or in part on a profit-sharing arrangement; and
                (4) A practitioner may share legal fees, whether awarded by a tribunal or received in settlement of a matter, with a nonprofit organization that employed, retained or recommended employment of the practitioner in the matter and that qualifies under Section 501(c)(3) of the Internal Revenue Code.

                (b) A practitioner shall not form a partnership with a non-practitioner if any of the activities of the partnership consist of the practice of law.
                (c) A practitioner shall not permit a person who recommends, employs, or pays the practitioner to render legal services for another to direct or regulate the practitioner's professional judgment in rendering such legal services.
                (d) A practitioner shall not practice with or in the form of a professional corporation or association authorized to practice law for a profit, if:
                (1) A non-practitioner owns any interest therein, except that a fiduciary representative of the estate of a practitioner may hold the stock or interest of the practitioner for a reasonable time during administration;
                (2) A non-practitioner is a corporate director or officer thereof or occupies the position of similar responsibility in any form of association other than a corporation; or
                (3) A non-practitioner has the right to direct or control the professional judgment of a practitioner.

                § 11.505
                Unauthorized practice of law.
                A practitioner shall not practice law in a jurisdiction in violation of the regulation of the legal profession in that jurisdiction, or assist another in doing so.

                § 11.506
                Restrictions on right to practice.
                A practitioner shall not participate in offering or making:
                (a) A partnership, shareholders, operating, employment, or other similar type of agreement that restricts the right of a practitioner to practice after termination of the relationship, except an agreement concerning benefits upon retirement; or
                (b) An agreement in which a restriction on the practitioner's right to practice is part of the settlement of a client controversy.

                § 11.507
                Responsibilities regarding law-related services.
                A practitioner shall be subject to the USPTO Rules of Professional Conduct with respect to the provision of law-related services if the law-related services are provided:
                (a) By the practitioner in circumstances that are not distinct from the practitioner's provision of legal services to clients; or
                (b) In other circumstances by an entity controlled by the practitioner individually or with others if the practitioner fails to take reasonable measures to assure that a person obtaining the law-related services knows that the services are not legal services and that the protections of the client-practitioner relationship do not exist.

                §§ 11.508-11.700
                [Reserved]

              Information About Legal Services

                § 11.701
                Communications concerning a practitioner's services.
                A practitioner shall not make a false or misleading communication about the practitioner or the practitioner's services. A communication is false or misleading if it contains a material misrepresentation of fact or law, or omits a fact necessary to make the statement considered as a whole not materially misleading.

                § 11.702
                Advertising.
                (a) Subject to the requirements of §§ 11.701 and 11.703, a practitioner may advertise services through written, recorded or electronic communication, including public media.
                (b) A practitioner shall not give anything of value to a person for recommending the practitioner's services except that a practitioner may:
                (1) Pay the reasonable costs of advertisements or communications permitted by this section;
                (2) [Reserved]
                (3) Pay for a law practice in accordance with § 11.117; and
                (4) Refer clients to another practitioner or a non-practitioner professional pursuant to an agreement not otherwise prohibited under the USPTO Rules of Professional Conduct that provides for the other person to refer clients or customers to the practitioner, if:
                (i) The reciprocal referral agreement is not exclusive, and
                (ii) The client is informed of the existence and nature of the agreement.

                (c) Any communication made pursuant to this section shall include the name and office address of at least one practitioner or law firm responsible for its content.

                § 11.703
                Direct contact with prospective clients.
                (a) A practitioner shall not by in-person, live telephone or real-time electronic contact solicit professional employment from a prospective client when a significant motive for the practitioner's doing so is the practitioner's pecuniary gain, unless the person contacted:
                (1) Is a practitioner; or
                (2) Has a family, close personal, or prior professional relationship with the practitioner.
                (b) A practitioner shall not solicit professional employment from a prospective client by written, recorded or electronic communication or by in-person, telephone or real-time electronic contact even when not otherwise prohibited by paragraph (a) of this section, if:
                (1) The prospective client has made known to the practitioner a desire not to be solicited by the practitioner; or
                (2) The solicitation involves coercion, duress or harassment.
                (c) Every written, recorded or electronic communication from a practitioner soliciting professional employment from a prospective client known to be in need of legal services in a particular matter shall include the words “Advertising Material” on the outside envelope, if any, and at the beginning and ending of any recorded or electronic communication, unless the recipient of the communication is a person specified in paragraphs (a)(1) or (a)(2) of this section.
                (d) Notwithstanding the prohibitions in paragraph (a) of this section, a practitioner may participate with a prepaid or group legal service plan operated by an organization not owned or directed by the practitioner that uses in-person or telephone contact to solicit memberships or subscriptions for the plan from persons who are not known to need legal services in a particular matter covered by the plan.

                § 11.704
                Communication of fields of practice and specialization.
                (a) A practitioner may communicate the fact that the practitioner does or does not practice in particular fields of law.
                (b) A registered practitioner who is an attorney may use the designation “Patents,” “Patent Attorney,” “Patent Lawyer,” “Registered Patent Attorney,” or a substantially similar designation. A registered practitioner who is not an attorney may use the designation “Patents,” “Patent Agent,” “Registered Patent Agent,” or a substantially similar designation. Unless authorized by § 11.14(b), a registered patent agent shall not hold himself or herself out as being qualified or authorized to practice before the Office in trademark matters or before a court.
                (c) [Reserved]
                (d) A practitioner shall not state or imply that a practitioner is certified as a specialist in a particular field of law, unless:
                (1) The practitioner has been certified as a specialist by an organization that has been approved by an appropriate state authority or that has been accredited by the American Bar Association; and
                (2) The name of the certifying organization is clearly identified in the communication.
                (e) An individual granted limited recognition under § 11.9 may use the designation “Limited Recognition.”

                § 11.705
                Firm names and letterheads.
                (a) A practitioner shall not use a firm name, letterhead or other professional designation that violates § 11.701. A trade name may be used by a practitioner in private practice if it does not imply a connection with a government agency or with a public or charitable legal services organization and is not otherwise in violation of § 11.701.
                (b) [Reserved]
                (c) The name of a practitioner holding a public office shall not be used in the name of a law firm, or in communications on its behalf, during any substantial period in which the practitioner is not actively and regularly practicing with the firm.

                §§ 11.706-11.800
                [Reserved]

              Maintaining the Integrity of the Profession

                § 11.801
                Registration, recognition and disciplinary matters.
                An applicant for registration or recognition to practice before the Office, or a practitioner in connection with an application for registration or recognition, or a practitioner in connection with a disciplinary or reinstatement matter, shall not:
                (a) Knowingly make a false statement of material fact; or
                (b) Fail to disclose a fact necessary to correct a misapprehension known by the person to have arisen in the matter, fail to cooperate with the Office of Enrollment and Discipline in an investigation of any matter before it, or knowingly fail to respond to a lawful demand or request for information from an admissions or disciplinary authority, except that the provisions of this section do not require disclosure of information otherwise protected by § 11.106.

                § 11.802
                Judicial and legal officials.
                (a) A practitioner shall not make a statement that the practitioner knows to be false or with reckless disregard as to its truth or falsity concerning the qualifications or integrity of a judge, adjudicatory officer or public legal officer, or of a candidate for election or appointment to judicial or legal office.
                (b) A practitioner who is a candidate for judicial office shall comply with the applicable provisions of the Code of Judicial Conduct.

                § 11.803
                Reporting professional misconduct.
                (a) A practitioner who knows that another practitioner has committed a violation of the USPTO Rules of Professional Conduct that raises a substantial question as to that practitioner's honesty, trustworthiness or fitness as a practitioner in other respects, shall inform the OED Director and any other appropriate professional authority.
                (b) A practitioner who knows that a judge, hearing officer, administrative law judge, administrative patent judge, or administrative trademark judge has committed a violation of applicable rules of judicial conduct that raises a substantial question as to the individual's fitness for office shall inform the appropriate authority.
                (c) The provisions of this section do not require disclosure of information otherwise protected by § 11.106 or information gained while participating in an approved lawyers assistance program.

                § 11.804
                Misconduct.
                It is professional misconduct for a practitioner to:
                (a) Violate or attempt to violate the USPTO Rules of Professional Conduct, knowingly assist or induce another to do so, or do so through the acts of another;
                (b) Commit a criminal act that reflects adversely on the practitioner's honesty, trustworthiness or fitness as a practitioner in other respects;
                (c) Engage in conduct involving dishonesty, fraud, deceit or misrepresentation;
                (d) Engage in conduct that is prejudicial to the administration of justice;
                (e) State or imply an ability to influence improperly a government agency or official or to achieve results by means that violate the USPTO Rules of Professional Conduct or other law;
                (f) Knowingly assist a judge, hearing officer, administrative law judge, administrative patent judge, administrative trademark judge, or judicial officer in conduct that is a violation of applicable rules of judicial conduct or other law;
                (g) Knowingly assist an officer or employee of the Office in conduct that is a violation of applicable rules of conduct or other law;
                (h) Be publicly disciplined on ethical or professional misconduct grounds by any duly constituted authority of:
                (1) A State,
                (2) The United States, or
                (3) The country in which the practitioner resides; or
                (i) Engage in other conduct that adversely reflects on the practitioner's fitness to practice before the Office.

                §§ 11.805-11.900
                [Reserved]

                § 11.901
                Savings clause.
                (a) A disciplinary proceeding based on conduct engaged in prior to the effective date of these regulations may be instituted subsequent to such effective date, if such conduct would continue to justify disciplinary sanctions under the provisions of this part.
                (b) No practitioner shall be subject to a disciplinary proceeding under this part based on conduct engaged in before the effective date hereof if such conduct would not have been subject to disciplinary action before such effective date.

          PARTS 15-15a [RESERVED]

          Pt. 41
          PART 41—PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

              Subpart A—General Provisions
              Sec.
              41.1
              Policy.
              41.2
              Definitions.
              41.3
              Petitions.
              41.4
              Timeliness.
              41.5
              Counsel.
              41.6
              Public availability of Board records.
              41.7
              Management of the record.
              41.8
              Mandatory notices.
              41.9
              Action by owner.
              41.10
              Correspondence addresses.
              41.11

                Ex parte communications in inter partes proceedings.
              41.12
              Citation of authority.
              41.20
              Fees.

              Subpart B—Ex Parte Appeals
              41.30
              Definitions.
              41.31
              Appeal to Board.
              41.33
              Amendments and affidavits or other Evidence after appeal.
              41.35
              Jurisdiction over appeal.
              41.37
              Appeal brief.
              41.39
              Examiner's answer.
              41.40
              Tolling of time period to file a reply brief.
              41.41
              Reply brief.
              41.45
              Appeal forwarding fee.
              41.47
              Oral hearing.
              41.50
              Decisions and other actions by the Board.
              41.52
              Rehearing.
              41.54
              Action following decision.

              Subpart C—Inter Partes Appeals
              41.60
              Definitions.
              41.61
              Notice of appeal and cross appeal to Board.
              41.63
              Amendments and affidavits or other evidence after appeal.
              41.64
              Jurisdiction over appeal in inter partes reexamination.
              41.66
              Time for filing briefs.
              41.67
              Appellant's brief.
              41.68
              Respondent's brief.
              41.69
              Examiner's answer.
              41.71
              Rebuttal brief.
              41.73
              Oral hearing.
              41.77
              Decisions and other actions by the Board.
              41.79
              Rehearing.
              41.81
              Action following decision.

              Subpart D—Contested Cases
              41.100
              Definitions.
              41.101
              Notice of proceeding.
              41.102
              Completion of examination.
              41.103
              Jurisdiction over involved files.
              41.104
              Conduct of contested case.
              41.106
              Filing and service.
              41.108
              Lead counsel.
              41.109
              Access to and copies of Office records.
              41.110
              Filing claim information.
              41.120
              Notice of basis for relief.
              41.121
              Motions.
              41.122
              Oppositions and replies.
              41.123
              Default filing times.
              41.124
              Oral argument.
              41.125
              Decision on motions.
              41.126
              Arbitration.
              41.127
              Judgment.
              41.128
              Sanctions.
              41.150
              Discovery.
              41.151
              Admissibility.
              41.152
              Applicability of the Federal Rules of Evidence.
              41.153
              Records of the Office.
              41.154
              Form of evidence.
              41.155
              Objection; motion to exclude; motion in limine.
              41.156
              Compelling testimony and production.
              41.157
              Taking testimony.
              41.158
              Expert testimony; tests and data.

              Subpart E—Patent Interferences
              41.200
              Procedure; pendency.
              41.201
              Definitions.
              41.202
              Suggesting an interference.
              41.203
              Declaration.
              41.204
              Notice of basis for relief.
              41.205
              Settlement agreements.
              41.206
              Common interests in the invention.
              41.207
              Presumptions.
              41.208
              Content of substantive and responsive motions.

            Authority:
            35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135, and Public Law 112-29.

            Source:
            69 FR 50003, Aug. 12, 2004, unless otherwise noted.

            Subpart A—General Provisions

              § 41.1
              Policy.
              (a) Scope. Part 41 governs appeals and interferences before the Patent Trial and Appeal Board. Sections 1.1 to 1.36 and 1.181 to 1.183 of this title also apply to practice before the Board, as do other sections of part 1 of this title that are incorporated by reference into part 41.
              (b) Construction. The provisions of Part 41 shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding before the Board.
              (c) Decorum. Each party must act with courtesy and decorum in all proceedings before the Board, including interactions with other parties.
              [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012]

              § 41.2
              Definitions.
              Unless otherwise clear from the context, the following definitions apply to proceedings under this part:

                Affidavit means affidavit, declaration under § 1.68 of this title, or statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte deposition may be used as an affidavit in a contested case.

                Board means the Patent Trial and Appeal Board and includes:
              (1) For a final Board action:
              (i) In an appeal or contested case, a panel of the Board.
              (ii) In a proceeding under § 41.3, the Chief Administrative Patent Judge or another official acting under an express delegation from the Chief Administrative Patent Judge.
              (2) For non-final actions, a Board member or employee acting with the authority of the Board.

                Board member means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.

                Contested case means a Board proceeding other than an appeal under 35 U.S.C. 134 or a petition under § 41.3. An appeal in an inter partes reexamination is not a contested case.

                Final means, with regard to a Board action, final for the purposes of judicial review. A decision is final only if:
              (1) In a panel proceeding. The decision is rendered by a panel, disposes of all issues with regard to the party seeking judicial review, and does not indicate that further action is required; and
              (2) In other proceedings. The decision disposes of all issues or the decision states it is final.

                Hearing means consideration of the issues of record. Rehearing means reconsideration.

                Office means United States Patent and Trademark Office.

                Panel means at least three Board members acting in a panel proceeding.

                Panel proceeding means a proceeding in which final action is reserved by statute to at least three Board members, but includes a non-final portion of such a proceeding whether administered by a panel or not.

                Party, in this part, means any entity participating in a Board proceeding, other than officers and employees of the Office, including:
              (1) An appellant;
              (2) A participant in a contested case;
              (3) A petitioner; and
              (4) Counsel for any of the above, where context permits.
              [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012]

              § 41.3
              Petitions.
              (a) Deciding official. Petitions must be addressed to the Chief Administrative Patent Judge. A panel or an administrative patent judge may certify a question of policy to the Chief Administrative Patent Judge for decision. The Chief Administrative Patent Judge may delegate authority to decide petitions.
              (b) Scope. This section covers petitions on matters pending before the Board (§§ 41.35, 41.64, 41.103, and 41.205); otherwise, see §§ 1.181 to 1.183 of this title. The following matters are not subject to petition:
              (1) Issues committed by statute to a panel, and

              (2) In pending contested cases, procedural issues. See § 41.121(a)(3) and § 41.125(c).
              (c) Petition fee. The fee set in § 41.20(a) must accompany any petition under this section except no fee is required for a petition under this section seeking supervisory review.
              (d) Effect on proceeding. The filing of a petition does not stay the time for any other action in a Board proceeding.
              (e) Time for action. (1) Except as otherwise provided in this part or as the Board may authorize in writing, a party may:
              (i) File the petition within 14 days from the date of the action from which the party is requesting relief, and
              (ii) File any request for reconsideration of a petition decision within 14 days of the decision on petition or such other time as the Board may set.
              (2) A party may not file an opposition or a reply to a petition without Board authorization.
              [69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]

              § 41.4
              Timeliness.
              (a) Extensions of time. Extensions of time will be granted only on a showing of good cause except as otherwise provided by rule.
              (b) Late filings. (1) A late filing that results in either an application becoming abandoned or a reexamination prosecution becoming terminated under § 1.550(d) or § 1.957(b) of this title or limited under § 1.957(c) of this title may be revived as set forth in § 1.137 of this title.
              (2) A late filing that does not result in either an application becoming abandoned or a reexamination prosecution becoming terminated under § 1.550(d) or § 1.957(b) of this title or limited under § 1.957(c) of this title will be excused upon a showing of excusable neglect or a Board determination that consideration on the merits would be in the interest of justice.
              (c) Scope. This section governs all proceedings before the Board, but does not apply to filings related to Board proceedings before or after the Board has jurisdiction, such as:
              (1) Extensions during prosecution (see § 1.136 of this title),
              (2) Filing of a brief or request for oral hearing (see §§ 41.37, 41.41, 41.47, 41.67, 41.68, 41.71 and 41.73), or
              (3) Seeking judicial review (see §§ 1.301 to 1.304 of this title).
              [69 FR 50003, Aug. 12, 2004, as amended at 72 FR 18907, Apr. 16, 2007]

              § 41.5
              Counsel.
              While the Board has jurisdiction:
              (a) Appearance pro hac vice. The Board may authorize a person other than a registered practitioner to appear as counsel in a specific proceeding.
              (b) Disqualification. (1) The Board may disqualify counsel in a specific proceeding after notice and an opportunity to be heard.
              (2) A decision to disqualify is not final for the purposes of judicial review until certified by the Chief Administrative Patent Judge.
              (c) Withdrawal. Counsel may not withdraw from a proceeding before the Board unless the Board authorizes such withdrawal. See § 11.116 of this subchapter regarding conditions for withdrawal.
              (d) Procedure. The Board may institute a proceeding under this section on its own or a party in a contested case may request relief under this section.
              (e) Referral to the Director of Enrollment and Discipline. Possible violations of the disciplinary rules in part 11 of this subchapter may be referred to the Office of Enrollment and Discipline for investigation. See § 11.22 of this subchapter.
              [69 FR 50003, Aug. 12, 2004, as amended at 73 FR 47704, Aug. 14, 2008; 78 FR 20211, Apr. 3, 2013]

              § 41.6
              Public availability of Board records.
              (a) Publication—(1) Generally. Any Board action is available for public inspection without a party's permission if rendered in a file open to the public pursuant to § 1.11 of this title or in an application that has been published in accordance with §§ 1.211 to 1.221 of this title. The Office may independently publish any Board action that is available for public inspection.
              (2) Determination of special circumstances. Any Board action not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Director believes that special circumstances warrant publication and a party does not, within two months after being notified of the intention to make the action public, object in writing on the ground that the action discloses the objecting party's trade secret or other confidential information and states with specificity that such information is not otherwise publicly available. If the action discloses such information, the party shall identify the deletions in the text of the action considered necessary to protect the information. If the affected party considers that the entire action must be withheld from the public to protect such information, the party must explain why. The party will be given time, not less than twenty days, to request reconsideration and seek court review before any contested portion of the action is made public over its objection.
              (b) Record of proceeding. (1) The record of a Board proceeding is available to the public unless a patent application not otherwise available to the public is involved.
              (2) Notwithstanding paragraph (b)(1) of this section, after a final Board action in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the public if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes published under §§ 1.211 to 1.221 of this title.

              § 41.7
              Management of the record.
              (a) The Board may expunge any paper directed to a Board proceeding, or filed while an application or patent is under the jurisdiction of the Board, that is not authorized under this part or in a Board order, or that is filed contrary to a Board order.
              (b) A party may not file a paper previously filed in the same Board proceeding, not even as an exhibit or appendix, without Board authorization or as required by rule.

              § 41.8
              Mandatory notices.
              (a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify:
              (1) Its real party-in-interest, and
              (2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding.
              (b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the complaint or the notice of appeal. The notice to the Board must include a copy of the complaint or notice of appeal. See also §§ 1.301 to 1.304 of this title.

              § 41.9
              Action by owner.
              (a) Entire interest. An owner of the entire interest in an application or patent involved in a Board proceeding may act in the proceeding to the exclusion of the inventor (see §§ 3.71 and 3.73 of this title).
              (b) Part interest. An owner of a part interest in an application or patent involved in a Board proceeding may petition to act in the proceeding to the exclusion of an inventor or a co-owner. The petition must show the inability or refusal of an inventor or co-owner to prosecute the proceeding or other cause why it is in the interest of justice to permit the owner of a part interest to act in the proceeding. An order granting the petition may set conditions on the actions of the parties during the proceeding.
              [69 FR 50003, Aug. 12, 2004, as amended at 77 FR 48826, Aug. 14, 2012]

              § 41.10
              Correspondence addresses.
              Except as the Board may otherwise direct,
              (a) Appeals. Correspondence in an application or a patent involved in an appeal (subparts B and C of this part) during the period beginning when an appeal docketing notice is issued and ending when a decision has been rendered by the Board, as well as any request for rehearing of a decision by the Board, shall be mailed to: Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in § 1.1(a)(1)(i) of this title.
              (b) Interferences. Mailed correspondence in interference (subpart D of this part) shall be sent to Mail Stop INTERFERENCE, Patent Trial and Appeal Board, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
              (c) Trial Proceedings. Correspondence in trial proceedings (part 42 of this title) are governed by § 42.6(b) of this title.
              [77 FR 46630, Aug. 6, 2012]

              § 41.11

                Ex Parte communications in inter partes proceedings.
              An ex parte communication about an inter partes reexamination (subpart C of this part) or about a contested case (subparts D and E of this part) with a Board member, or with a Board employee assigned to the proceeding, is not permitted.

              § 41.12
              Citation of authority.
              (a) For any United States Supreme Court decision, citation to the United States Reports is preferred.
              (b) For any decision other than a United States Supreme Court decision, citation to the West Reporter System is preferred.
              (c) Citations to authority must include pinpoint citations whenever a specific holding or portion of an authority is invoked.
              (d) Non-binding authority should be used sparingly. If the authority is not an authority of the Office and is not reproduced in the United States Reports or the West Reporter System, a copy of the authority should be provided.
              [76 FR 72296, Nov. 22, 2011]

              § 41.20
              Fees.
              (a) Petition fee. The fee for filing a petition under this part is: $400.00.
              (b) Appeal fees. (1) For filing a notice of appeal from the examiner to the Patent Trial and Appeal Board:

                  By a micro entity (§ 1.29)
                  $200.00

                  By a small entity (§ 1.27(a))
                  400.00

                  By other than a small or micro entity
                  800.00

              (2)(i) For filing a brief in support of an appeal in an application or ex parte reexamination proceeding: $0.00.

              (ii) In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal in an inter partes reexamination proceeding:

                  By a micro entity (§ 1.29)
                  $500.00

                  By a small entity (§ 1.27(a))
                  1,000.00

                  By other than a small or micro entity
                  2,000.00

              (3) For filing a request for an oral hearing before the Board in an appeal under 35 U.S.C. 134:

                  By a micro entity (§ 1.29)
                  $325.00

                  By a small entity (§ 1.27(a))
                  650.00

                  By other than a small or micro entity
                  1,300.00

              (4) In addition to the fee for filing a notice of appeal, for forwarding an appeal in an application or ex parte reexamination proceeding to the Board:

                  By a micro entity (§ 1.29 of this chapter)
                  $560.00

                  By a small entity (§ 1.27(a)) of this chapter)
                  1,120.00

                  By other than a small or micro entity
                  2,240.00

              [78 FR 4290, Jan. 18, 2013, as amended at 82 FR 52817, Nov. 14, 2017]

            Subpart B—Ex Parte Appeals

              § 41.30
              Definitions.
              In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart unless otherwise clear from the context:

                Applicant means either the applicant in a national application for a patent or the applicant in an application for reissue of a patent.

                Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited before the Board.

                Owner means the owner of the patent undergoing ex parte reexamination under § 1.510 of this title.

                Proceeding means either a national application for a patent, an application for reissue of a patent, an ex parte reexamination proceeding, or a trial before the Patent Trial and Appeal Board. Appeal to the Board in an inter partes reexamination proceeding is controlled by subpart C of this part.

                Record means the items listed in the content listing of the Image File Wrapper of the official file of the application or reexamination proceeding on appeal or the official file of the Office if other than the Image File Wrapper, excluding amendments, Evidence, and other documents that were not entered. In the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined.
              [69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011; 77 FR 46630, Aug. 6, 2012]

              § 41.31
              Appeal to Board.
              (a) Who may appeal a
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