Part II - United States Patent and Trademark Office€¦ · October 4, 1999 Part II Department of Commerce Patent and Trademark Office 37 CFR Parts 1, 3, 5, and 10 Changes to Implement

fede

ral r

egiste

r

53771

MondayOctober 4, 1999

Part II

Department ofCommercePatent and Trademark Office

37 CFR Parts 1, 3, 5, and 10Changes to Implement the PatentBusiness Goals; Proposed Rule

VerDate 22-SEP-99 13:37 Oct 01, 1999 Jkt 183247 PO 00000 Frm 00001 Fmt 4717 Sfmt 4717 E:\FR\FM\A04OC2.001 pfrm02 PsN: 04OCP2

53772 Federal Register / Vol. 64, No. 191 / Monday, October 4, 1999 / Proposed Rules

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3, 5, and 10

[Docket No.: 980826226–9185–02]

RIN 0651–AA98

Changes To Implement the PatentBusiness Goals

AGENCY: Patent and Trademark Office,Commerce.ACTION: Notice of proposed rulemaking.

SUMMARY: The Patent and TrademarkOffice (Office) has established businessgoals for the organizations reporting tothe Assistant Commissioner for Patents(Patent Business Goals). The focus of thePatent Business Goals is to increase thelevel of service to the public by raisingthe efficiency and effectiveness of theOffice’s business processes. Infurtherance of the Patent BusinessGoals, the Office is proposing changes tothe rules of practice to eliminateunnecessary formal requirements,streamline the patent applicationprocess, and simplify and clarify theirprovisions.DATES: Comment Deadline Date: To beensured of consideration, writtencomments must be received on or beforeDecember 3, 1999. While commentsmay be submitted after this date, theOffice cannot ensure that considerationwill be given to such comments. Nopublic hearing will be held.ADDRESSES: Comments should be sentby electronic mail message over theInternet addressed [email protected]. Comments mayalso be submitted by mail addressed to:Box Comments—Patents, AssistantCommissioner for Patents, Washington,D.C. 20231, or by facsimile to (703) 308–6916, marked to the attention of HiramH. Bernstein. Although comments maybe submitted by mail or facsimile, theOffice prefers to receive comments viathe Internet. Where comments aresubmitted by mail, the Office wouldprefer that the comments be submittedon a DOS formatted 31⁄4 inch diskaccompanied by a paper copy.

The comments will be available forpublic inspection at the Special ProgramLaw Office, Office of the DeputyAssistant Commissioner for PatentPolicy and Projects, located at Room 3–C23 of Crystal Plaza 4, 2201 South ClarkPlace, Arlington, Virginia, and will beavailable through anonymous filetransfer protocol (ftp) via the Internet(address: ftp.uspto.gov). Sincecomments will be made available forpublic inspection, information that is

not desired to be made public, such asan address or phone number, should notbe included in the comments.FOR FURTHER INFORMATION CONTACT:Hiram H. Bernstein or Robert W. Bahr,by telephone at (703) 305–9285, or bymail addressed to: Box Comments—Patents, Assistant Commissioner forPatents, Washington, DC 20231, or byfacsimile to (703) 308–6916, marked tothe attention of Mr. Bernstein.SUPPLEMENTARY INFORMATION: Theorganizations reporting to the AssistantCommissioner for Patents haveestablished five business goals (PatentBusiness Goals) to meet the Office’sYear 2000 commitments. The PatentBusiness Goals have been adopted aspart of the Fiscal Year 1999 CorporatePlan Submission of the President. Thefive Patent Business Goals are:Goal 1: Reduce Office processing time

(cycle time) to twelve months or lessfor all inventions.

Goal 2: Establish fully-supported andintegrated Industry Sectors.

Goal 3: Receive applications andpublish patents electronically.

Goal 4: Exceed our customers’ qualityexpectations, through thecompetencies and empowerment ofour employees.

Goal 5: Align fees commensurate withresource utilization and customerefficiency.This rulemaking proposes changes to

the regulations to support the PatentBusiness Goals. A properly reengineeredor reinvented system eliminates theredundant or unnecessary steps thatslow down processing and frustratecustomers. In furtherance of the PatentBusiness Goals, these proposed changesto the rules of practice take a fresh viewof the business end of issuing patents,and continue a process ofsimplification. Formal requirements ofrules that are no longer useful would beeliminated. When the intent of anapplicant is understood, the Officewould simply go forward with theprocessing. The essentials aremaintained, while formalities are greatlyreduced. The object is to focus on thesubstance of examination and decreasethe time that an application for patentis sidelined with unnecessaryprocedural issues.

Additionally, the Office desires tocontinue to make its rules moreunderstandable, such as by using plainlanguage instead of legalese. The Officeis seeking efficiency by improving theclarity of the wording of the regulationsso that applicants and Office employeesunderstand unequivocally what isrequired at each stage of the prosecutionand can get it right on the first try. The

Office welcomes comments andsuggestions on this effort.

In streamlining this process, theOffice will be able to issue a patent ina shorter time by eliminating formalrequirements that must be performed bythe applicant, his or her representativesand the Office itself. Applicants willbenefit from a reduced overall cost tothem for receiving patent protection andfrom a faster receipt of their patents.

Finally, these proposed changes areintended to improve the Office’sbusiness processes in the context of thecurrent legal and technologicalenvironment. Should theseenvironments change (e.g., by adoptionof an international Patent Law Treaty,enactment of patent legislation, orimplementation of new automationcapabilities), the Office would have toreconsider its business processes andmake such further changes to the rulesof practice as are necessary.

Advance Notice of ProposedRulemaking

The Office published an advancenotice of proposed rulemaking(Advance Notice) presenting a numberof changes to patent practice andprocedure under consideration toimplement the Patent Business Goals.See Changes to Implement the PatentBusiness Goals; Advance Notice ofProposed Rulemaking, 63 FR 53497(October 5, 1998), 1215 Off. Gaz. Pat.Office 87 (October 27, 1998). TheAdvance Notice set forth twenty-onetopics on which the Office specificallyrequested public input:

Topic (1) Simplifying requests forsmall entity status;

Topic (2) Requiring separatesurcharges and supplying filing receipts;

Topic (3) Permitting delayedsubmission of an oath or declaration,and changing time period forsubmission of the basic filing fee andEnglish translation;

Topic (4) Limiting the number ofclaims in an application;

Topic (5) Harmonizing standards forpatent drawings;

Topic (6) Printing patents in color;Topic (7) Reducing time for filing

corrected or formal drawings;Topic (8) Permitting electronic

submission of voluminous material;Topic (9) Imposing limits/

requirements on information disclosurestatement submissions;

Topic (10) Refusing informationdisclosure statement considerationunder certain circumstances;

Topic (11) Providing no causesuspension of action;

Topic (12) Requiring a handling feefor preliminary amendments andsupplemental replies;


53773Federal Register / Vol. 64, No. 191 / Monday, October 4, 1999 / Proposed Rules

Topic (13) Changing amendmentpractice to replacement by paragraphs/claims;

Topic (14) Providing for presumptiveelections;

Topic (15) Creating a rocket docket fordesign applications;

Topic (16) Requiring identification ofbroadening in a reissue application;

Topic (17) Changing multiple reissueapplication treatment;

Topic (18) Creating alternative reviewprocedures for applications underappeal;

Topic (19) Eliminatingpreauthorization of payment of the issuefee;

Topic (20) Reevaluating theDisclosure Document Program; and

Topic (21) Creating a Patent andTrademark Office review service forapplicant-created forms.See Changes to Implement the PatentBusiness Goals, 63 FR at 53499, 1215Off. Gaz. Pat. Office at 89.

Changes Set Forth in the AdvanceNotice Included in This Notice ofProposed Rulemaking (Notice)

This notice proposes changes to therules of practice based upon thefollowing topics in the Advance Notice:

(1) Simplifying request for smallentity status (Topic 1—§§ 1.9, 1.27, and1.28);

(2) Harmonizing standards for patentdrawings (Topic 5—§ 1.84);

(3) Printing patents in color (Topic6—§ 1.84);

(4) Reducing time for filing correctedor formal drawings (Topic 7—§§ 1.85and 1.136);

(5) Permitting electronic submissionof voluminous material (Topic 8—§§ 1.96, 1.821, 1.823, and 1.825);

(6) Imposing limits/requirements oninformation disclosure statementsubmissions (Topic 9—§§ 1.97 and1.98);

(7) Requiring a handling fee forpreliminary amendments andsupplemental replies (Topic 12—§§ 1.111 and 1.115);

(8) Changing amendment practice toreplacement by paragraphs/claims(Topic 13—§§ 1.52 and 1.121);

(9) Creating a rocket docket for designapplications (Topic 15—§ 1.155);

(10) Changing multiple reissueapplication treatment (Topic 17—§ 1.177); and

(11) Eliminating preauthorization ofpayment of the issue fee (Topic 19—§§ 1.25 and 1.311).

The Office has taken into account thecomments submitted in reply to theAdvance Notice in arriving at thespecific changes to the rules of practicebeing proposed in this notice. These

comments are addressed with therelevant proposed rule change in thesection-by-section discussion portion ofthis notice.

This notice also includes a number ofproposed changes to the rules ofpractice that are not based uponproposals set forth in the AdvanceNotice. This notice proposes changes tothe following sections of title 37 of theCode of Federal Regulations: 1.4, 1.6,1.9, 1.12, 1.14, 1.17, 1.19, 1.22, 1.25,1.26, 1.27, 1.28, 1.33, 1.41, 1.47, 1.48,1.51, 1.52, 1.53, 1.55, 1.56, 1.59, 1.63,1.64, 1.67, 1.72, 1.77, 1.78, 1.84, 1.85,1.91, 1.96, 1.97, 1.98, 1.102, 1.103,1.111, 1.112, 1.121, 1.125, 1.131, 1.132,1.133, 1.136, 1.137, 1.138, 1.152, 1.154,1.155, 1.163, 1.173, 1.176, 1.177, 1.178,1.193, 1.303, 1.311, 1.312, 1.313, 1.314,1.322, 1.323, 1.324, 1.366, 1.446, 1.497,1.510, 1.530, 1.550, 1.666, 1.720, 1.730,1.740, 1.741, 1.780, 1.809, 1.821, 1.823,1.825, 3.27, 3.71, 3.73, 3.81, 5.1, 5.2,5.12, and 10.23. Additionally, thisnotice proposes to amend title 37 of theCode of Federal Regulations byremoving §§ 1.44 and 1.174, and adding§§ 1.76, 1.105, and 1.115.

Changes Set Forth in the AdvanceNotice That Are NOT Included in ThisNotice

This notice does not include proposedchanges to the rules of practice basedupon the following topics in theAdvance Notice:

(1) Requiring separate surcharges andsupplying filing receipts (Topic 2);

(2) Permitting delayed submission ofan oath or declaration, and changing thetime period for submission of the basicfiling fee and English translation (Topic3);

(3) Limiting the number of claims inan application (Topic 4);

(4) Refusing information disclosurestatement consideration under certaincircumstances (Topic 10);

(5) Providing no cause suspension ofaction (Topic 11);

(6) Providing for presumptiveelections (Topic 14);

(7) Requiring identification ofbroadening in a reissue application(Topic 16);

(8) Creating alternative reviewprocedures for applications underappeal (Topic 18);

(9) Reevaluating the DisclosureDocument Program (Topic 20); and (10)Creating a Patent and Trademark Officereview service for applicant-createdforms (Topic 21).

Comments received in response to theAdvance Notice on these topics areaddressed below.

Requiring Separate Surcharges andSupplying Filing Receipts (Topic 2)

The Office indicated that it wasconsidering charging separatesurcharges in a nonprovisionalapplication under 35 U.S.C. 111(a) for(a) the delayed submission of an oath ordeclaration, and (b) the delayedsubmission of the basic filing fee. Thatis, a single surcharge (currently $130)would be required if one of (a) the oathor declaration or (b) the basic filing feewere not present on filing. Twosurcharges (totaling $260) would berequired if both the oath or declarationand the basic filing fee were not presenton filing. Therefore, the absence (onfiling) of the oath or declaration or thebasic filing fee would have necessitateda separate surcharge. The Office alsoindicated that it was considering issuinganother filing receipt, without charge, tocorrect any errors or to update filinginformation, as needed.

While a few comments supported theproposal (indicating that the additionalservices were worth the additional fees),a majority of comments opposedcharging separate surcharges. Theseincluded arguments that: (1) theproposal is simply a fee increase withno advantage to applicants; and (2) aseparate surcharge should be requiredonly if the oath or declaration and thebasic filing fee are submitted separatelybecause there is no additional cost tothe Office to process both the oath ordeclaration and the basic filing fee inthe same submission.

Response: This notice does notpropose changing § 1.53 to chargeseparate surcharges in a nonprovisionalapplication under 35 U.S.C. 111(a) forthe delayed submission of an oath ordeclaration, and for the delayedsubmission of the basic filing fee.

Permitting Delayed Submission of anOath or Declaration, and Changing theTime Period for Submission of the BasicFiling Fee and English Translation(Topic 3)

The Office indicated that it wasconsidering: (1) Amending § 1.53 toprovide that an executed oath ordeclaration for a nonprovisionalapplication would not be required untilthe expiration of a period that would beset in a ‘‘Notice of Allowability’’(PTOL–37); and (2) amending §§ 1.52and 1.53 to provide that the basic filingfee and an English translation (ifnecessary) for a nonprovisionalapplication must be submitted withinone month (plus any extensions under§ 1.136) from the filing date of theapplication. The Office was specificallyconsidering amending § 1.53 to provide



that an executed oath or declaration fora nonprovisional application would notbe required until the applicant isnotified that it must be submittedwithin a one-month period that wouldbe set in a ‘‘Notice of Allowability,’’provided that the following aresubmitted within one month (plus anyextensions under § 1.136) from the filingdate of the application: (1) The name(s),residence(s), and citizenship(s) of theperson(s) believed to be the inventor(s);(2) all foreign priority claims; and (3) astatement submitted by a registeredpractitioner that: (a) an inventorshipinquiry has been made, (b) thepractitioner has sent a copy of theapplication (as filed) to each of theperson(s) believed to be the inventor(s),(c) the practitioner believes that theinventorship of the application is asindicated by the practitioner, and (d) thepractitioner has given the person(s)believed to be the inventor(s) notice oftheir obligations under § 1.63(b). TheOffice was also specifically consideringamending §§ 1.52 and 1.53 to provide,by rule, that the basic filing fee and anEnglish translation (if the applicationwas filed in a language other thanEnglish) for a nonprovisionalapplication must be submitted withinone month (plus any extensions under§ 1.136) from the filing date of theapplication. Applicants would not begiven a notice (e.g., a ‘‘Notice To FileMissing Parts of Application’’ (PTO–1533)) that the basic filing fee is missingor insufficient, unless the application isfiled with an insufficient basic filing feethat at least equals the basic filing feethat was in effect the previous fiscalyear. The filing receipt, however, wouldindicate the amount of filing feereceived. Further, the filing receiptwould remind applicants that the basicfiling fee must be submitted within onemonth (plus any extensions under§ 1.136) from the filing date of theapplication.

While some comments supported thisproposed change, a majority ofcomments opposed permitting delayedsubmission of an oath or declaration;and changing the time period forsubmission of the basic filing fee andEnglish translation.

The reasons given for opposition tothe proposed change to permit delayedsubmission of an oath or declarationincluded arguments that: (1) Theproposed inventorship inquiry andnotification requirements forpractitioners who submitted anapplication without an executed oath ordeclaration would be too onerous; (2) anapplication should not be examineduntil inventorship is settled and theinventors have acknowledged their duty

of disclosure; (3) the delayedsubmission of an oath or declarationwould cause confusion as to ownershipof the application, which would causeconfusion as to who is authorized toappoint a representative in theapplication; (4) the delayed submissionof an oath or declaration would increasethe difficulty in acquiring the inventor’ssignatures on an oath or declaration,which would lead to an increase in thenumber of petitions under § 1.47, aswell as an increase in the number ofoaths or declarations signed by the legalrepresentatives of deceased inventors;and (5) the delayed submission of anoath or declaration would increase thenumber of certified copies of anapplication not having a copy of theexecuted oath or declaration(considered undesirable). Somecomments suggested that the Office seeklegislation to eliminate the oathrequirement of 35 U.S.C. 115.

The reasons given for opposition tothe proposed change to the time periodfor submission of the basic filing fee andEnglish translation included argumentsthat: (1) A one-month period forsubmitting the basic filing fee or Englishtranslation is too short becauseapplicants may not know the assignedapplication number within one monthof the application filing date (i.e., thisperiod should be two or three months);(2) the period for submitting the basicfiling fee or English translation shouldbe tied to the mail date of the FilingReceipt; and (3) the public relies uponthe current Notice to File Missing Partsof Application practice to informapplicants as to whether the filing feeand the oath or declaration has beenreceived by the Office (i.e., verifywhether the Office has received thebasic filing fee and oath or declaration),and to inform applicants of the periodfor reply for supplying the missing basicfiling fee and/or oath or declaration.

Response: This notice does notpropose changing §§ 1.52 and 1.53 toprovide that: (1) An executed oath ordeclaration for a nonprovisionalapplication would not be required untilthe expiration of a period that would beset in a ‘‘Notice of Allowability’’(PTOL–37); or (2) the basic filing fee andan English translation (if necessary) fora nonprovisional application must besubmitted within one month (plus anyextensions under § 1.136) from the filingdate of the application.

Limiting the Number of Claims in anApplication (Topic 4)

The Office indicated in the AdvanceNotice that it was considering a changeto § 1.75 to limit the number of total andindependent claims that will be

examined (at one time) in anapplication. The Office was specificallyconsidering a change to the rules ofpractice to: (1) Limit the number of totalclaims that will be examined (at onetime) in an application to forty; and (2)limit the number of independent claimsthat will be examined (at one time) inan application to six. In the event thatan applicant presented more than fortytotal claims or six independent claimsfor examination at one time, the Officewould withdraw the excess claims fromconsideration, and require the applicantto cancel the excess claims.

While the comments includedsporadic support for this proposedchange, the vast majority of commentsincluded strong opposition to placinglimits on the number of claims in anapplication. The reasons given foropposition to the proposed changeincluded arguments that: (1) Decisionsby the Court of Appeals for the FederalCircuit (Federal Circuit) leave suchuncertainty as to how claims will beinterpreted that additional claims arenecessary to adequately protect theinvention; (2) the applicant (and not theOffice) should be permitted to decidehow many claims are necessary toadequately protect the invention; (3)there are situations in which anapplicant justifiably needs more thansix independent and forty total claims toadequately protect an invention; (4) theproposed change exceeds theCommissioner’s rule making authority;(5) the change will simply result inmore continuing applications and is justa fee raising scheme; (6) the Officecurrently abuses restriction practice andthis change will further that abuse; and(7) since only five percent of allapplicants exceed the proposed claimceiling, there is no problem. Severalcomments which opposed the proposedchange offered the followingalternatives: (1) Charge higher fees (or asurcharge) for applications containingan excessive number of claims; (2)charge fees for an application basedupon what it costs (e.g., number ofclaims, pages of specification,technology, IDS citations) to examinethe application; and (3) credit examinersbased upon the number of claims in theapplication. Several comments whichindicated that the proposed changewould be acceptable, placed thefollowing conditions on that indication:(1) That a multiple dependent claim betreated as a single claim for countingagainst the cap; (2) that a multipledependent claim be permitted todepend upon a multiple dependentclaim; (3) that a Markush claim betreated as a single claim for counting



against the cap; (4) that any additionalapplications are taken up by the sameexaminer in the same time frame; (5)that allowed dependent claims rewrittenin independent form do not countagainst the independent claim limit; (6)that the Office permit rejoinder ofdependent claims upon allowance; and(7) that higher claim limits are used.

Response: This notice does notpropose changing § 1.75 to place a limiton the number of claims that will beexamined in a single application.

Refusing Information DisclosureStatement Consideration Under CertainCircumstances (Topic 10)

The Office indicated in the AdvanceNotice that it was considering revising§ 1.98 to reserve the Office’s authority tonot consider submissions of anInformation Disclosure Statement (IDS)in unduly burdensome circumstances,even where all the stated requirementsof § 1.98 are met. The Office wasspecifically considering an amendmentto § 1.98 to permit the Office to refuseconsideration of an unduly burdensomeIDS submission (e.g., extremely largedocuments and compendiums), and givethe applicant an opportunity to modifythe submission to eliminate theburdensome aspect of the IDS.

While the proposal received supportfrom a significant minority of thecomments, the large majority ofcomments included strong opposition tothe proposal to revise § 1.98. Thereasons given for opposition to theproposed change included argumentsthat: (1) The term ‘‘unduly burdensome’’is not defined objectively; thus,decisions as to whether a submission istoo burdensome for consideration willbe subjective; (2) without a cleardefinition of ‘‘unduly burdensome’’ (toprovide a standard), the proposal wouldnot pass the Administrative ProcedureAct tests of scrutiny; (3) the Office willhave to expend time and effort indeciding the petitions and defending, incourt, its subjective decisions not toconsider ‘‘unduly burdensome’’ IDSs(thus, the proposal will cost the Officetime in the long run); (4) the proposalgives the examiner unlimited ability tonot consider art submitted due to theambiguous standard for refusal of anIDS submission coupled with theexaminer’s discretion to advance thestatus of the application to a pointwhere the IDS would not be timely eventhough it is corrected; (5) the Office’srefusal to examine unduly burdensomeIDS submissions despite compliancewith the rules (other than theburdensome aspect) would impose ahuge financial and time burden uponapplicants to fix what the examiner

deems as unduly burdensome; (6)imposing this new financial and timeburden would be contrary to the statedpurpose of the Office to expediteprosecution and to relieve the burdenson the examination process; (7)burdensome IDS situations exist, andthe Office should learn to deal withthem as a service to its customers andin order to meet its mission of issuingvalid patents (the Office cannotrealistically ignore situations where theIDS documents cited are complex orlengthy, and nothing can be done aboutthe complexity or length by applicant);(8) the burdensome IDS problem is notfrequent and the rare undulyburdensome IDS submissions should beaddressed on a case-by-case basis (thus,no rule change is needed); (9) no datahas been presented to show the problemis wide-spread, and more facts areneeded to show the extent and nature ofthe unduly burdensome IDS problem;(10) citations should not be discardedfrom the record where the undulyburdensome IDS has not been correctedsince an original and only copy of thecitation (which is submitted so theexaminer can more fully appreciate thecitation) may be very expensive or evenimpossible to replace; (11) reducing thesize of a citation can make it lessvaluable, the submitted ‘‘relevantportions’’ (the partial citation) may betaken out-of-context of the entirecitation, and the excerpt containing therelevant portion would not provideadditional assistance to the examiner asto background, terminology, andalternative subject matter which maybear on the examination.

Response: This notice does notpropose changing § 1.98 to reserve theOffice’s authority to not considersubmissions of an IDS in undulyburdensome circumstances, even whereall the stated requirements of § 1.98 aremet.

Providing No Cause Suspension ofAction (Topic 11)

The Office indicated that it wasconsidering adding an additionalsuspension of action practice, underwhich an applicant may requestdeferred examination of an applicationwithout a showing of ‘‘good andsufficient cause,’’ and for an extendedperiod of time, provided that theapplicant waived the confidential statusof the application under 35 U.S.C. 122,and agreed to publication of theapplication. The Office was specificallyconsidering a procedure under whichthe applicant may (prior to the firstOffice action) request deferredexamination for a period not to exceedthree years, provided that: (1) The

application is entitled to a filing date;(2) the filing fee has been paid; (3) anyneeded English-language translation ofthe application has been filed; and (4)all ‘‘outstanding requirements’’ havebeen satisfied (except that the oath ordeclaration need not be submitted if thenames of all of the persons believed tobe the inventors are identified).

The comments included support andopposition in roughly equal measure tothe proposed extended suspension ofaction procedure. The reasons given foropposition to the proposal includedarguments that: (1) The ‘‘deferredexamination’’ of application under anextended suspension of action and thepublication of an application undersuch suspension of action would createuncertainty over legal rights; and (2) thepublication provisions of such asuspension of action procedure amountto an eighteen-month publicationsystem that is not authorized by 35U.S.C. 122.

Response: This notice does notpropose changing § 1.103 to provide forextended suspension of action.

Providing for Presumptive Elections(Topic 14)

The Office indicated in the AdvanceNotice that it was considering a changeto the restriction practice to eliminatethe need for a written restrictionrequirement and express election inmost restriction situations. The Officewas specifically considering a change tothe restriction practice to provide: (1)That if more than one independent anddistinct invention is claimed in anapplication, the applicant is consideredto have constructively elected theinvention first presented in the claims;(2) for rejoinder of certain processclaims in an application containingallowed product claims; and (3) forrejoinder of certain combination claimsin an application containing allowedsubcombination claims.

While some comments supported thisproposed change, a large majority ofcomments opposed providing forpresumptive elections. The reasonsgiven for opposition to the proposedchange included arguments that: (1) Thecommercially important invention maychange (or is not known until) after theapplication is prepared and filed; (2) thechange will increase cost of preparingan application since the order of claimsmust be carefully considered; (3)examiners aggressively applyrestriction, and presumptive electionswill increase the number of restrictions;and (4) the loss of the ability to contestimproper restrictions prior toexamination on the merits will lead toless likelihood of success in persuading



examiner to withdraw an improperrestriction. Several comments whichopposed the proposed change offered asan alternative that the Office adopt thePCT unity of invention standard inconsidering restriction. Severalcomments which indicated that theproposed change would be acceptableplaced the following conditions on thatindication: (1) That any presumptiveelection practice not apply to anelection of species; and (2) that anelection by presumption apply only ifan attempted telephone restrictionrequirement is not successful.

Response: This notice does notpropose changing § 1.141 et seq. toprovide for a presumptive election. TheOffice is considering the impact ofapplying the ‘‘unity of invention’’standard of the PCT, rather than the‘‘independent and distinct’’ standard of35 U.S.C. 121, in restriction practice.Nevertheless, this change to restrictionpractice, without a correspondingchange to other patent fees, would havea negative impact on the Office’s abilityto obtain the necessary operatingfunding.

Requiring Identification of Broadeningin a Reissue Application (Topic 16)

The Office indicated in the AdvanceNotice that it was considering a changeto § 1.173 to require reissue applicantsto identify all occurrences of broadeningof the patent claims in a reissueapplication. As proposed, reissueapplicants would have to point out alloccurrences of broadening in the claimsas an aid to examiners who shouldconsider issues involving broadeningrelative to the two-year limit and therecapture doctrine.

While a few comments supported thisproposed change, a large majority ofcomments strongly opposed theconcept. A number of those commentingwere wary of the consequences in courtresulting from their failure to identifyall issues of broadening in a reissueapplication. Several of the commentersexpressed concerns that patent ownerscould have their patent claims put atrisk in litigation if they unintentionallyfailed to identify all occurrences ofbroadening, which they feared could bea basis for charging patentees withinequitable conduct. Some wereconcerned about saddling applicantswith yet another burden which moreproperly should be left with the Officeand the examiner. Others felt that anyunintentional omission of a broadeningidentification could raise problems forthe practitioner, which problems are notoffset by any increase in benefitsderived by presenting this informationto the Office.

Response: This notice does notpropose changing § 1.173 to require anidentification of all occurrences ofbroadening in reissue claims. In view ofthe comments received, the Office willcontinue to rely on the examiner toidentify any occurrences of broadeningduring the examination of the reissueapplication, and not impose anyadditional burden on the reissueapplicants. The Office does not wish toundo the benefits of the recentlyliberalized reissue oath/declarationrequirements by proposing additionalrule changes which may add burdens aswell as possible unforeseen risks.

Creating Alternative Review Proceduresfor Applications Under Appeal (Topic18)

The Office indicated in the AdvanceNotice that it was consideringalternative review procedures to reducethe number of appeals forwarded to theBoard of Patent Appeals andInterferences. The Office wasspecifically considering two alternativereview procedures to reduce the numberof appeals having to be forwarded to theBoard of Patent Appeals andInterferences for decision. Both reviewprocedures would have involved areview that would be available uponrequest and payment of a fee by theappellant, and would have involvedreview by at least one other Officeofficial. The first review would haveoccurred after the filing of a notice ofappeal but before the filing of an appealbrief and have involved a review of allrejections of a single claim beingappealed to see whether any rejectionplainly fails to establish a prima faciecase of unpatentability. The secondreview would have occurred after thefiling of an appeal brief and haveinvolved a review of all rejections onappeal.

The comments were split betweensupporting and opposing the appealreview procedures under consideration.Most comments opposing the appealreview procedures under considerationsupported the concept of screening thetenability of rejections in applicationsbefore they are forwarded to the Boardof Patent Appeals and Interferences, butargued that: (1) The proposed appealreview amounts to quality control forwhich the applicant should not berequired to pay (appeal fees should beraised if appropriate); (2) an appealreview is meaningless (only advisory)unless the decision is binding on theexaminer; (3) the Board of PatentAppeals and Interferences may giveundue deference to a rejection that hasbeen through an appeal review; and (4)the proposed appeal review will delay

ultimate review by the Board of PatentAppeals and Interferences. Severalcomments indicated that the proposedchange would be acceptable, butincluded the following conditions withthat indication: (1) That the applicantneed not pay for either review; (2) thatthe reviewer be someone outside thenormal chain of review for anapplication being forwarded to theBoard of Patent Appeals andInterferences for decision; (3) that thereviewer be someone who has at leastfull signatory authority; (4) that thereport gives a detailed explanation ofthe results of the appeal review(especially if a position is changed/application allowed); (5) that fees(appeal or appeal review) be refunded ifthe review results in the allowance ofthe application; (6) that the pre-briefreview involve review of the applicationby more than one person; (7) that thepre-brief review also determine whetherany prima facie case of unpatentabilityhas been overcome; and (8) that theappeal process should be revised tomodel the German Patent Office.

Response: This notice does notpropose changing § 1.191 et seq. toprovide for appeal reviews. The Officeintends to increase the use of thecurrent appeal conference procedures asset forth in section 1208 of the Manualof Patent Examining Procedure (7th ed.1998)(MPEP).

Reevaluating the Disclosure DocumentProgram (Topic 20):

The Office indicated in the AdvanceNotice that it was reevaluating theDisclosure Document Program (DDP)because this program has been thesubject of numerous abuses by so-called‘‘invention development companies’’resulting in complaints from individualinventors, and therefore may bedetrimental to the interests of itscustomers. At the same time, thedistinctly different provisionalapplications provide a viable alternateroute whereby, for the basic small entityfiling fee of $75 (§ 1.16(k)), a provisionalapplication may be filed by a smallentity. A provisional application doesnot require a claim in compliance with35 U.S.C. 112, ¶ 2, or an inventor’s oathunder 35 U.S.C. 115. Althoughabandoned after one year, provisionalapplications are retained by the Officefor at least twenty years, or longer if itis referenced in a patent. A provisionalapplication is considered a constructivereduction to practice of an invention asof the filing date accorded theprovisional application if it describesthe invention in sufficient detail toenable a person of ordinary skill in theart to make and use the invention and



discloses the best mode known by theinventor for carrying out the invention.Unlike the DDP, a provisionalapplication may be used under the ParisConvention to establish a priority datefor foreign filing. In other words, exceptfor adding the best mode requirement,the disclosure requirements for aprovisional application are identical tothe disclosure requirements for aDisclosure Document and a provisionalapplication provides users with a filingdate without starting the patent termperiod. Thus, almost any paper filedtoday as a proper Disclosure Documentcan now be filed as a provisionalapplication with the necessary coversheet.

For these reasons, the Office posed inthe Advance Notice several questionsdirected to whether the DDP served auseful function. Only one commentpresented evidence of a single instancewhere a disclosure document was usedin conjunction with an interference, butthis person was an extensive user of theDDP and cautioned that independentinventors fail to keep records of the dateof their invention. The same commentersuggested that if the attorney signing theprovisional application could also claimsmall entity status for his client, thiswould diminish the need for the DDP.This appears likely to be adopted since,contemporaneously with this proposal,under Topic 1 (relating to thesimplification of the request for smallentity status), it is being proposed thatapplicant or applicant’s attorney mayassert entitlement to small entity status.This proposal will make it easier forboth attorneys or applicants to assertsmall entity status when filingprovisional applications. See discussionof proposed changes to §§ 1.9, 1.27 and1.28 relating to small entity status forfurther details.

Six commenters felt that the programshould be eliminated because there isno value to applicants in light of theprovisional application procedure.Some felt that the program creates adangerous situation in that applicantsmay assume they are getting some typeof patent protection or that the statutorybar provision in 35 U.S.C. 102(b) hasbeen avoided. One commentercharacterized the DDP as an ‘‘unwittingvehicle and accomplice for fraud anddelusion of small inventors by so-called‘‘invention development companies’’, orself-delusions of independent inventors,who have been mailing thousands ofthese ‘Disclosure Documents’ to thePTO * * *.’’ Another commenter,however, postulated that if the onlydifference between the DDP andprovisional applications was the cost,then the cancellation of the DDP would

only result in the abuse of theprovisional patent applications at ahigher cost to unsuspecting inventors.

Four commenters confused the DDPwith defensive publications as theirresponses wrongfully indicated a beliefthat the DDP involved publication of thedisclosures. One commenter suggestedthat before the program is eliminatedthat the Office should engage in aneducational program (with a survey) toexplain the questionable value of theprogram and alternative proceduresavailable to the public. The commenterfurther stated that the educationprogram should focus on thoseindividuals who use the DDP and couldinclude a survey of those individuals todetermine the benefit to the public. Asecond commenter supported theconcept of contacting the independentinventors. At least one other commentsuggested that elimination might bedetrimental to individual inventors.

Response: A review of the commentson this proposal reveals that theindependent inventor communitysubmitted only a few of the responses.The Office considers it inappropriate toproceed with this proposal in theabsence of greater input from theindependent inventor community.Therefore, this notice does not proposechanges to the rules of practiceconcerning the Disclosure DocumentProgram. The Office will continue tostudy the Disclosure Document Programand seek greater input from theindependent inventor community beforeany further action is taken. In thisregard, the matter will be referred to theOffice of Independent InventorPrograms, headed by Director DonaldGrant Kelly. The Office of IndependentInventor Programs was established onMarch 15, 1999. Reporting directly tothe Commissioner, this new office wasestablished to provide assistance toindependent inventors, particularly interms of improved communications,educational outreach, and Office-basedsupport. In addition, the Office ofIndependent Inventor Programs willwork to establish or strengthencooperative efforts with the FederalTrade Commission, the Department ofJustice, and various Bar Associations toaddress the growing problem ofinvention development companymarketing scams.

Creating a Patent and Trademark OfficeReview Service for Applicant-CreatedForms (Topic 21)

The Office indicated that it wasconsidering establishing a new service,under which the Office would (for a fee)review applicant-created forms intendedto be used for future correspondence to

the Office. After the review iscompleted, the Office would provide awritten report, including comments andsuggestions (if any), but the Officewould not formally ‘‘approve’’ any form.If a (reviewed) form is modified in viewof a Office written report, commentsand/or suggestion, the revised formcould be resubmitted to the Office for afollow up review for an additionalcharge (roughly estimated atapproximately $50). After a form hasbeen reviewed and revised, as may beneeded, to comply with the Office’swritten report, it would be acceptablefor the form to indicate if it is asubstitute for an Office form, and that ithas been ‘‘reviewed by the Patent andTrademark Office.’’

The Office received few comments onthis proposal. Of those commentsreceived on this proposal, mostsupported this new service. Thecomments included the followingspecific concerns and suggestions: (1)That the form review service be optionaland not mandatory; (2) that there be onefee per form, regardless of the numberof submissions needed to have the formreviewed; (3) the service had little valueunless the Office would be willing toapprove a form; and (4) the time hascome to require the use of mandatoryforms.

Response: The Office indicated in theAdvance Notice that this new servicewould involve significant start-up costs,and, absent positive feedback on thematter, the Office does not intend toimplement this new service. SeeChanges to Implement the PatentBusiness Goals, 63 FR at 53530, 1215Off. Gaz. Pat. Office at 117. In view ofthe limited interest shown by thecomments in this new service, theOffice has decided not to proceed withthe proposal to provide a review servicefor applicant-created forms.

Discussion of Specific RulesTitle 37 of the Code of Federal

Regulations, Parts 1, 3, 5, and 10, areproposed to be amended as follows:

Part 1Section 1.4: Section 1.4(b) is proposed

to be amended to refer to a patent ortrademark application, patent file,trademark registration file, or otherproceeding, rather than only anapplication file. Section 1.4(b) is alsoproposed to be amended to provide thatthe filing of duplicate copies ofcorrespondence in a patent or trademarkapplication, patent file, trademarkregistration file, or other proceedingshould be avoided (except in situationsin which the Office requires the filing ofduplicate copies), and that the Office



may dispose of duplicate copies ofcorrespondence in a patent or trademarkapplication, patent file, trademarkregistration file, or other proceeding.Finally, § 1.4(b) and § 1.4(c) are alsoproposed to be amended to change‘‘should’’ to ‘‘must’’ because the Officeneeds separate copies of papers directedto two or more files, or of papers dealingwith different subjects.

Section 1.6: Section 1.6(d)(9) isproposed to be amended to delete thereference to recorded answers under§ 1.684(c), as § 1.684(c) has beenremoved and reserved.

Section 1.9: Section 1.9(f) is proposedto be amended to provide the definitionof who can qualify to pay small entityfees, and paragraphs (c) through (e) of§ 1.9 are proposed to be removed andreserved.

Paragraph (f) of § 1.9 is proposed to:(1) Be reformatted, (2) define a ‘‘person’’to include inventors and alsononinventors holding rights in theinvention, (3) explain that qualificationdepends on whether any rights in theinvention were transferred and towhom, and (4) provide that a license bya person to the Government undercertain situations does not barentitlement to small entity status.

Section 1.9 paragraph (f) is proposedto be reformatted to place the subjectmatter relating to definitions of smallentities: (1) Persons, (2) small businessconcerns; and (3) nonprofitorganizations, in one paragraph ratherthan as currently in paragraphs (c)through (e). The expression‘‘independent inventor’’ of currentparagraph (c) is proposed to be replacedwith the term ‘‘person’’ in paragraph(f)(1) (and other paragraphs of thissection). The term ‘‘person’’ inparagraph (f) is proposed to be definedto include individuals who areinventors and also individuals who arenot inventors but who have beentransferred some right or rights in theinvention. This would clarify thatindividuals who are not inventors butwho have rights in the invention arecovered by the provisions of §§ 1.9 and1.27.

Paragraphs (f)(2)(i) and (f)(3)(i) of § 1.9are proposed to be added to clarify thatin order for small entity businesses andnonprofit organizations to remainentitled to small entity status, they mustnot in some manner transfer or be underan obligation to transfer any rights inthe invention to any party that wouldnot qualify for small entity status.Current § 1.27 paragraphs (b), (f)(1)(iii),and (f)(1)(iii) make clear that this rightstransfer requirement applies to allparties (independent inventors, smallbusinesses and nonprofit organizations,

respectively). The absence of thisrequirement however, from current § 1.9paragraphs (d) and (e) (small businessand nonprofit organization,respectively), notwithstanding itspresence in § 1.9 paragraph (c)(independent inventor), has lead toconfusion as to the existence of such arequirement for small businesses andnonprofit organizations. In view of theappearance of the rights transferrequirement in § 1.9, it is proposed to beremoved from all paragraphs of § 1.27.

Paragraph (f)(4)(i) of § 1.9 is proposedto be added to provide a new exceptionrelating to the granting of a license tothe U.S. Government by a person, thatresults from a particular rightsdetermination. Such a license would notbar entitlement to small entity status.Similarly paragraph (f)(4)(ii) of § 1.9 isproposed to be added to havetransferred to it (from current § 1.27paragraphs (c)(2) and (d)(2)) the currentexceptions relating to a licence to aFederal agency by a small business or anonprofit organization resulting from aparticular funding agreement. Again,such a license would not barentitlement to small entity status.

For additional proposed changes tosmall entity requirements see §§ 1.27and 1.28.

Section 1.9(i) is proposed to be addedto define ‘‘national security classified.’’Section 1.9(i), as proposed, defines‘‘national security classified’’ as used in37 CFR Chapter 1 as meaning‘‘specifically authorized under criteriaestablished by an Act of Congress orExecutive order to be kept secret in theinterest of national defense or foreignpolicy and, in fact, properly classifiedpursuant to Act of Congress orExecutive order.’’

Section 1.12: Section 1.12(c)(1) isproposed to be amended to change thereference to the fee set forth in‘‘§§ 1.17(i)’’ to the fee set forth in‘‘§ 1.17(h).’’ This change is forconsistency with the changes to§ 1.17(h) and § 1.17(i). See discussion ofchanges to § 1.17(h) and § 1.17(i).

Section 1.14: Section 1.14 is proposedto be amended to make it easier tounderstand. Section 1.14 is alsoproposed to be amended to provide thatthe Office will no longer give statusinformation or access in certainsituations where applicants have anexpectation of confidentiality.

Section 1.14(a) is proposed to beamended to define ‘‘status information’’and ‘‘access.’’ ‘‘Status information’’ isproposed to be defined as informationthat the application is pending,abandoned, or patented, as well as theapplication numeric identifier. Anapplication’s numeric identifier is (a)

the application number, or (b) the serialnumber and filing date, or date of entryinto the national stage. If aninternational application has not beenassigned a U.S. application number, nosuch application number can beprovided by the Office.

Section 1.14 as proposed would alsoeliminate the provisions makingavailable data on any continuing casesof an application identified in a patent.(The provisions of current § 1.14(a)(1)(ii)are proposed to be deleted.)

Section 1.14(b) is proposed to beamended to state when statusinformation may be supplied, retainingthe reasons set forth in current§ 1.14(a)(1)(i). Section 1.14(b)(3) isproposed to be simplified so as toindicate that status information will begiven for international applications inwhich the United States is designated,even if that application has not yetentered the national stage.

Section 1.14(c) is proposed to beamended to contain the provisions ofcurrent § 1.14(a)(2).

The provisions of current§§ 1.14(a)(3)(i), 1.14(a)(3)(iv)(C) and1.14(a)(3)(iv)(D) are proposed to bedeleted, and the remaining provisions of§ 1.14(a)(3) are proposed to be separatedinto § 1.14(d) and 1.14(e).

Section 1.14(d), as proposed,substantially corresponds to current§ 1.14(a)(3)(iii) with additional text fromcurrent § 1.14(e)(2). Section 1.14(d), asproposed, states that an applicant, anattorney or agent of record, or anapplicant’s assignee may have access toan application by filing a power toinspect. In addition, § 1.14(d), asproposed, provides that if an executedoath or declaration has not been filed,a registered attorney or agent named inthe papers filed with the applicationmay have access, or authorize anotherperson to have access, to an applicationby filing a power to inspect. The formfor a power to inspect is PTO/SB/67.

Section 1.14(e), as proposed,substantially corresponds to current§ 1.14(a)(3) and states that any personmay obtain access to an application bysubmitting a request for access if certainconditions apply. Access tointernational phase application files isgoverned by the provisions of the PCTand not by § 1.14. The form for a requestfor access to an abandoned applicationis PTO/SB/68. Section 1.14(e)(1), asproposed, corresponds to current§ 1.14(a)(3)(ii). Section 1.14(e)(2)(i)corresponds to current§ 1.14(a)(3)(iv)(A). Section 1.14(e)(2)(ii),as proposed, corresponds to current§ 1.14(a)(3)(iv)(B).



Current § 1.14 (b), (c), (d), (f), and (g)are proposed to be redesignated § 1.14(f), (g), (h), (i) and (j), respectively.

Current § 1.14(e) is proposed to beredesignated § 1.14(k) and to beamended to explain the requirements ofa petition for access and include theprovisions of current § 1.14(e)(1).Current § 1.14(e)(2) is proposed to bemoved to proposed § 1.14(d).

Section 1.14(k) is also proposed toindicate that the Office may provideaccess or copies of an application ifnecessary to carry out an Act ofCongress or if warranted by otherspecial circumstances. The Office may,for example, provide access to, or copiesof, applications to another federalgovernment agency, such as a lawenforcement agency, whether the Officeis acting on its own initiative or inresponse to a petition from the otheragency when access is needed for acriminal investigation. The Office mayadditionally provide access or copieswithout requiring the other federalagency to file a petition including ashowing that access to the application isnecessary to carry out an Act ofCongress or that special circumstancesexist which warrant petitioner beinggranted access to the application.

Section 1.17: Section 1.17(h) and§ 1.17(i) are proposed to be amended tocharacterize the fee set forth in § 1.17(h)as a petition fee, and the fee set forth in§ 1.17(i) as a processing fee. Section1.17(h) is proposed to be amended tolist only those matters that require theexercise of judgment or discretion indetermining whether the request/petition will be granted or denied (e.g.,1.47, 1.53, 1.182, 1.183, 1.313). Section1.17(i) is proposed to be amended to listthose matters that do not require theexercise of judgment or discretion, butwhich are routinely granted once theapplicant has complied with the statedrequirements (e.g., 1.41, 1.48, 1.55).Thus, the Office proposes to amend§ 1.17(h) and § 1.17(i) to locate mattersrequiring a petition in § 1.17(h), andthose matters that do not require apetition, but only a processing fee, in§ 1.17(i). Section 1.17(i) is also proposedto be amended to provide a processingfee for: (1) Filing a nonprovisionalapplication in a language other thanEnglish (§ 1.52(d)), now in § 1.17(k); and(2) filing an oath or declaration pursuantto 35 U.S.C. 371(c)(4) naming aninventive entity different from theinventive entity set forth in theinternational stage (§ 1.497(d)).

Section 1.17(k) is proposed to beamended to provide a $200 fee forprocessing an application containingcolor drawings or photographs.

Section 1.17 (l) and (m) are proposedto be amended for clarity and toeliminate unassociated text.

Section 1.17(q) is proposed to beamended for consistency with § 1.17(h)and § 1.17(i), as the matters listedtherein apply to provisionalapplications.

Section 1.17(t) is proposed to beadded to provide a fee for filing arequest for expedited examinationunder § 1.155(a).

Section 1.19: Section 1.19(a) isproposed to be amended to clarify thatthe fees set forth in § 1.19(a)(1) do notapply to patents containing a colorphotograph or drawing, that the fee in§ 1.19(a)(2) applies to plant patents incolor, and that the fee in § 1.19(a)(3)applies to patents (other than plantpatents) containing a color drawing.

Section 1.19(b)(2) is proposed to beamended to provide a fee of $250 for acertified or uncertified copy of a patent-related file wrapper and contents of 400or fewer pages, and an additional fee of$25 for each additional 100 pages orportion thereof. Due to increases in thenumber of pages in the contents ofpatent, patent application, and patent-related interference files, the Office isadjusting the fee specified in § 1.19(b)(2)to recover its cost of providing copies ofthese files. To better allocate costs, theOffice is proposing to charge a ‘‘flat’’rate of $250 for a copy of a patent-related file wrapper and contents of 400or fewer pages (which includes mostpatent-related files), but charge anadditional fee of $25 for each additional100 pages or portion thereof to makepersons requesting copies of patent-related files having contents containinga large number of pages (e.g.,interference proceedings) bear the costof making copies of such files. Since theOffice cannot ascertain the exactnumber of pages of the contents of apatent-related file, the Office expects todetermine the additional fee inproposed § 1.19(b)(2)(ii) by estimating(e.g., by measuring file thickness) ratherthan actually counting pages.

Section 1.19(h) is proposed to beremoved. The $25 fee under § 1.19(h) forobtaining a corrected or duplicate filingreceipt is no longer necessary as theOffice is now performing that servicewithout charge. Consequently, where afiling receipt has an error in it,applicants no longer need to provide ashowing that the error was due to Officemistake or pay a $25 fee for thecorrected receipt. See Changes InPractice In Supplying Certified CopiesAnd Filing Receipts, Notice, 1199 Off.Gaz. Pat. Office 38 (June 10, 1997).

Section 1.22: Section 1.22(b) isproposed to be amended to change

‘‘should’’ to ‘‘must’’ because the Officeneeds fees to be submitted in such amanner that it is clear for whichpurpose the fees are paid. Section1.22(b) is also proposed to be amendedto provide that the Office may returnfees that are not itemized as required by§ 1.22(b), and that the provisions of§ 1.5(a) do not apply to the resubmissionof fees returned pursuant to § 1.22.

Section 1.22(c) is proposed to beadded to define, based upon currentOffice practice, when a fee is consideredpaid. Section 1.22(c)(1)(i) is proposed toprovide that a fee paid by anauthorization to charge such fee to adeposit account containing sufficientfunds to cover the applicable feeamount (§ 1.25) is considered paid onthe date the paper for which the fee ispayable is received in the Office (§ 1.6),if the paper including the depositaccount charge authorization was filedprior to or concurrently with suchpaper. Section 1.22(c)(1)(ii) is proposedto provide that a fee paid by anauthorization to charge such fee to adeposit account containing sufficientfunds to cover the applicable feeamount (§ 1.25) is considered paid onthe date the paper including the depositaccount charge authorization is receivedin the Office (§ 1.6), if the depositaccount charge authorization is filedafter the filing of the paper for whichthe fee is payable. The provision of§ 1.22(c)(1)(ii) would apply, forexample, in the following situation: Inreply to an Office action setting a three-month shortened statutory period forreply, a paper is filed three and one-halfmonths after the mail date of the Officeaction without payment of the fee for aone-month extension of time.Thereafter, the applicant discovers thelack of payment and files a secondpaper including an authorization tocharge the appropriate fee for anyextension of time required, but thesecond paper is received in the Office(§ 1.6) four and one-half months fromthe mail date of the Office action. Thefee required for the reply to the Officeaction to be timely is considered paidwhen the second paper was received(§ 1.6) in the Office. Section1.22(c)(1)(iii) is proposed to provide thata fee paid by an authorization to chargesuch fee to a deposit account containingsufficient funds to cover the applicablefee amount (§ 1.25) is considered paidon the date of the agreement, if thedeposit account charge authorization isthe result of an agreement between theapplicant and an Office employee aslong as the agreement is reduced to awriting. That is, the fee is consideredpaid on the date of the agreement (e.g.,



the date of the interview), and the datethe agreement is subsequently reducedto writing (e.g., the mail date of theinterview summary) is not relevant tothe date the fee is considered paid.

Section 1.22(c)(2) is proposed toprovide that a fee paid other than by anauthorization to charge such fee to adeposit account is considered paid onthe date the applicable fee amount isreceived in the Office (§ 1.6). Section1.22(c)(3) is proposed to provide thatthe applicable fee amount is determinedby the fee in effect on the date such feeis paid in full. When fees change (dueto a CPI increase under 35 U.S.C. 41(f)or other legislative change), the Officegenerally accords fee payments thebenefit of the provisions of § 1.8 vis-a-vis the applicable fee amount eventhough the fee is not considered paiduntil it is received in the Office (§ 1.6).See Revision of Patent Fees for FiscalYear 1999, Final Rule Notice, 63 FR67578, 67578–79 (December 8, 1998),1217 Off. Gaz. Pat. Office 148, 148(December 29, 1998). This treatment offee payments is an ‘‘exception’’ to theprovisions of § 1.22(c) as proposed, inthat such fee would be not be entitledto any benefit under § 1.8 vis-a-vis theapplicable fee amount but for theexpress exception provided in the feechange rulemaking. Of course, a fee isconsidered timely if the fee is submittedto the Office under the procedure setforth in § 1.8(a) (unless excluded under§ 1.8(a)(2)), even though the fee is notconsidered paid until it is actuallyreceived in the Office (§ 1.6).

Section 1.25: Section 1.25(b) isproposed to be amended to provide thatan authorization to charge fees under§ 1.16 in an application submitted under§ 1.494 or § 1.495 will be treated as anauthorization to charge fees under§ 1.492. There are many instances inwhich papers filed for the purpose ofentering the national stage under 35U.S.C. 371 and § 1.494 or § 1.495include an authorization to charge feesunder § 1.16 (rather than fees under§ 1.492). In such instances, the Officetreats the authorization as anauthorization to charge fees under§ 1.492 since: (1) Timely payment of theappropriate national fee under § 1.492 isnecessary to avoid abandonment of theapplication as to the United States; and(2) the basic filing fee under § 1.16 is notapplicable to such papers orapplications. Therefore, the Office isproposing to change § 1.25(b) to placepersons filing papers to enter thenational stage under 35 U.S.C. 371 and§ 1.494 or § 1.495 on notice as to howan authorization to charge fees under§ 1.16 will be treated.

Section 1.25(b) is also proposed to beamended to provide that anauthorization to charge fees set forth in§ 1.18 to a deposit account is subject tothe provisions of § 1.311(b).

Section 1.26: The Office is proposingto amend the rules of practice to providethat all requests for refund must be filedwithin specified time periods. The rulesof practice do not (other than in thesituation in which a request for refundis based upon subsequent entitlement tosmall entity status) set any time period(other than ‘‘a reasonable time’’) withinwhich a request for refund must befiled. In the absence of such a timeperiod, Office fee record keepingsystems and business planning mustaccount for the possibility that a requestfor refund may be filed at any time,including many years after payment ofthe fee at issue.

It is a severe burden on the Office totreat a request for refund filed yearsafter payment of the fee at issue. SinceOffice fee record keeping systemschange over time, the Office must checkany system on which fees for theapplication, patent or trademarkregistration have been posted todetermine what fees were in fact paid.In addition, changes in fee amounts,which usually occur on October 1 ofeach year, make it difficult to determinewith certainty whether a fee paid yearsago was the correct fee at the time andunder the condition it was paid.

It also causes business planningproblems to account for the possibilitythat a request for refund may be filedyears after payment of the fee at issue.Without any set time period withinwhich a request for refund must befiled, the Office must maintain feerecords, in any automated fee recordkeeping system ever used by the Office,in perpetuity. Finally, as the Office cannever be absolutely certain that asubmitted fee was not paid by mistakeor in excess of that required, the absenceof such a time period subjects the Officeto unending and uncertain financialobligations.

Accordingly, the Office is proposingto amend § 1.26 to provide non-extendable time periods within whichany request for refund must be filed tobe timely.

Section 1.26(a) is proposed to beamended by dividing its first sentenceinto two sentences. Section 1.26(a) isfurther amended for consistency with 35U.S.C. 42(d) (‘‘[t]he Commissioner mayrefund a fee paid by mistake or anyamount paid in excess of thatrequired’’). Under 35 U.S.C. 42(d), theOffice may refund: (1) a fee paid whenno fee is required (a fee paid bymistake); or (2) any fee paid in excess

of the amount of fee that is required. SeeEx parte Grady, 59 USPQ 276, 277(Comm’r Pats. 1943) (the statutoryauthorization for the refund of feesunder the ‘‘by mistake’’ clause isapplicable only to a mistake relating tothe fee payment). In the situation inwhich an applicant or patentee takes anaction ‘‘by mistake’’ (e.g., files anapplication or maintains a patent inforce ‘‘by mistake’’), the submission offees required to take that action (e.g., afiling fee submitted with suchapplication or a maintenance feesubmitted for such patent) is not a ‘‘feepaid by mistake’’ within the meaning of35 U.S.C. 42(d). Section 1.26(a) is alsoproposed to be amended to revise the‘‘change of purpose’’ provisions to read‘‘[a] change of purpose after thepayment of a fee, as when a partydesires to withdraw a patent ortrademark filing for which the fee waspaid, including an application, anappeal, or a request for an oral hearing,will not entitle a party to a refund ofsuch fee.’’

Section 1.26(a) is also proposed to beamended to change the sentence‘‘[a]mounts of twenty-five dollars or lesswill not be returned unless specificallyrequested within a reasonable time, norwill the payer be notified of suchamount; amounts over twenty-fivedollars may be returned by check or, ifrequested, by credit to a depositaccount’’ to ‘‘[t]he Office will not refundamounts of twenty-five dollars or lessunless a refund is specifically requested,and will not notify the payor of suchamounts.’’ Except as discussed below,the Office intends to continue to reviewsubmitted fees to determine that theyhave not been paid by mistake or inexcess of that required, and to suasponte refund fees (of amounts overtwenty-five dollars) determined to havebeen paid by mistake or in excess of thatrequired. Section 1.26(a), however, isproposed to be amended to eliminatelanguage that appears to obligate theOffice to sua sponte refund fees to beconsistent with the provisions of§ 1.26(b) which requires that any requestfor refund be filed within a specifiedtime period.

Section 1.26(a) is also proposed to beamended to facilitate refunds byelectronic funds transfer. Section31001(x) of the Omnibus ConsolidatedRescissions and Appropriations Act of1996, Pub. L. 104–134, 110 Stat. 1321(1996) (the Debt CollectionImprovement Act of 1996), amended 31U.S.C. 3332 to require that alldisbursements by Federal agencies(subject to certain exceptions andwaivers) be made by electronic fundstransfer. The Department of the



Treasury has implemented thislegislation at 31 CFR Part 208. SeeManagement of Federal AgencyDisbursements, Final Rule Notice, 63 FR51489 (September 25, 1998). Thus,§ 1.26(a) is proposed to be amended toenable the Office to obtain the bankinginformation necessary for makingrefunds by electronic funds transfer inaccordance with 31 U.S.C. 3332 and 31CFR Part 208.

Specifically, § 1.26(a) is also proposedto be amended such that if a partypaying a fee or requesting a refund doesnot instruct that refunds be credited toa deposit account, the Office willattempt to make any refund byelectronic funds transfer. If such partydoes not provide the bankinginformation necessary for makingrefunds by electronic funds transfer, theCommissioner may either require suchbanking information or use the bankinginformation on the payment instrumentto make a refund. This provision willauthorize the Office to: (1) Use thebanking information on the paymentinstrument (e.g., a personal check issubmitted to pay the fee) when makinga refund due to an excess payment; or(2) require such banking information inother situations (e.g., a refund isrequested or a money order or certifiedbank check is submitted containing anexcess payment). The purpose of thisproposed change to § 1.26(a) is toencourage parties to submit the bankinginformation necessary for makingrefunds by electronic funds transfer (ifnot on the payment instrument) up-front, and not to add a step (requiringsuch banking information) to the refundprocess. If it is not cost-effective torequire the banking informationnecessary for making refunds byelectronic funds transfer, the Office maysimply issue any refund by treasurycheck. See 31 CFR 208.4(f).

Section 1.26(b) is proposed to beadded to provide that any request forrefund must be filed within two yearsfrom the date the fee was paid, exceptas otherwise provided in § 1.26(b) or in§ 1.28(a). See the discussion of proposed§ 1.22(c) concerning the date a fee isconsidered paid.

Section 1.26(b) is also proposed toprovide that if the Office charges adeposit account by an amount otherthan an amount specifically indicated inan authorization (§ 1.25(b)), any requestfor refund based upon such charge mustbe filed within two years from the dateof the deposit account statementindicating such charge, and that suchrequest must be accompanied by a copyof that deposit account statement. Thisprovision of § 1.26(b) would apply, forexample, in the following types of

situations: (1) A deposit account ischarged for an extension of time as aresult of there being a prior generalauthorization in the application(§ 1.136(a)(3)); or (2) a deposit accountis charged for the outstanding balance ofa fee as a result of an insufficient feebeing submitted with an authorizationto charge the deposit account for anyadditional fees that are due. In thesesituations, the party providing theauthorization is not in a position toknow the exact amount by which thedeposit account will be charged untilthe date of the deposit accountstatement indicating the amount of thecharge.

Finally, § 1.26(b) is proposed toprovide that the time periods set forthin § 1.26(b) are not extendable.

Section 1.27: The Office isconsidering simplifying applicant’srequest for small entity status under§ 1.27. The currently used small entitystatement forms are proposed to beeliminated as they would no longer beneeded. Some material in § 1.28 isproposed to be reorganized into § 1.27.

Small entity status would beestablished at any time by a simpleassertion of entitlement to small entitystatus. The currently requiredstatements, which include a formalisticreference to § 1.9, would no longer berequired. Payment of an exact smallentity basic filing or national fee wouldalso be considered an assertion of smallentity status. This would be so even ifthe wrong exact basic filing or nationalfee was selected. To establish smallentity status after payment of the basicfiling fee as a non-small entity, a writtenassertion of small entity status would berequired to be submitted. The partieswho could assert small entity statuswould be liberalized to include one ofseveral inventors or a partial assignee.

Other clarifying changes are proposedto be made including a transfer ofmaterial into § 1.27 from § 1.28 drawntowards: (1) Assertions in related,continuing and reissue applications; (2)notification of loss of entitlement tosmall entity status; and (3) fraud on theOffice in regard to establishing smallentity status or paying small entity fees.

While there would be no change inthe current requirement to make aninvestigation in order to determineentitlement to small entity status, arecitation would be added noting theneed for a determination of entitlementprior to an assertion of status; the Officewould only be changing the ease withwhich small entity status could beclaimed once it has been determinedthat a claim to such status isappropriate.

For additional proposed changes tosmall entity requirements see §§ 1.9 and1.28.

Problem and BackgroundSection 1.27 currently requires that a

request for small entity status beaccompanied by submission of anappropriate statement that the partyseeking small entity status qualifies inaccordance with § 1.9. Either a referenceto § 1.9 or a specific statement relatingto the provisions of § 1.9 is mandatory.For a small business, the small businessmust either state that exclusive rightsremain with the small business, or ifnot, identify the party to which somerights have been transferred so that theparty to which rights have beentransferred can submit its own smallentity statement (current§ 1.27(c)(1)(iii)). This can lead to thesubmission of multiple small entitystatements for each request for smallentity status where rights in theinvention are split. The request forsmall entity status and reference/statement may be submitted prior topaying, or, at the latest, at the time ofpaying, any small entity fee. In part, toensure that at least the reference to § 1.9is complied with, the Office hasproduced four types of small entitystatement forms (including ones for theinventors, small businesses and non-profit organizations) that include therequired reference to § 1.9 and specificstatements as to exclusive rights in theinvention. Where an application has notbeen assigned and there are multipleinventors, each inventor must actuallysign a small entity statement, theexecution of which must all becoordinated and submitted at the sametime. Similarly, coordination ofexecution and submission of statementsis needed where there is more than oneassignee. Additionally, the statementforms relating to small businesses andnon-profit organizations need to besigned by an appropriate officialempowered to act on behalf of the smallbusiness or non-profit organization.Refunds of non-small entity fees canonly be obtained if a refund isspecifically requested within twomonths of the payment of the full (non-small entity) fee and is supported by allrequired small entity statements. Seecurrent § 1.28(a)(1). The current two-month refund window under § 1.28 isnot extendable.

The rigid requirements of §§ 1.27 and1.28 have led to a substantial number ofproblems. Applicants, particularly prose applicants, do not always recognizethat a particular reference to § 1.9 isrequired in their request to establishsmall entity status. They believe that all



they have to do is pay the small entityfee and state that they are a small entity.Further, the time required to ascertainwho are the appropriate officials to signthe statement and to have the statements(referring to § 1.9) signed and collected(where more than one is necessary),results, in many instances, in having topay the higher non-small entity fees andthen seek a refund. These situationsresult in: (1) Small entity applicants alsohaving to pay additional fees (e.g.,surcharges and extension(s) of time feesfor the delayed submission of the smallentity statement form); (2) additionalcorrespondence with the office toperfect a claim for small entity status;and (3) the filing of petitions withpetition fees to revive abandonedapplications. This increases thependency of the prosecution of theapplication in the Office and, in somecases, results in loss of patent term. Forexample, under current procedures, if apro se applicant files a new applicationwith small entity fees but without asmall entity statement, the office mailsa notice to the pro se applicant requiringthe full basic filing fee of a non-smallentity. Even if the applicant timely filesa small entity statement, the applicantmust still timely pay the small entitysurcharge for the delayed submission ofthe small entity statement to avoidabandonment of the application. Asecond example is a non-profitorganization paying the basic filing feeas a non-small entity because ofdifficulty in obtaining the non-profitsmall entity statement form signed by anappropriate official. In this situation, arefund pursuant to § 1.26, based onestablishing status as a small entity, mayonly be obtained if a statement under§ 1.27 and the request for a refund of theexcess amount are filed within the non-extendable two-month period from thedate of the timely payment of the fullfee. A third example is an applicationfiled without the basic filing fee onbehalf of a small business by apractitioner who includes the standardauthorization to pay additional fees. TheOffice will immediately charge the non-small entity basic filing fee withoutspecific notification thereof at the timeof the charge. By the time the depositaccount statement is received andreviewed, the two-month period forrefund may have expired.

Accordingly, a simpler procedure toestablish small entity status wouldreduce processing time within theOffice (Patent Business Goal 1) andwould be a tremendous benefit to smallentity applicants as it would eliminatethe time-consuming and aggravatingprocessing requirements that are

mandated by the current rules. Thus,the proposed simplification would helpsmall entity applicants to receivepatents sooner with fewer expendituresin fees and resources and the officecould issue the patent with fewerresources (Patent Business Goals 4 and5).

Assertion as to Entitlement to SmallEntity Status; Assertion by Writing

The Office is proposing to allow smallentity status to be established by thesubmission of a simple written assertionof entitlement to small entity status. Thecurrent formal requirements of § 1.27,which include a reference to either§ 1.9, or to the exclusive rights in theinvention, would be eliminated.

The written assertion would not berequired to be presented in anyparticular form. Written assertions ofsmall entity status or references to smallentity fees would be liberallyinterpreted to represent the requiredassertion. The written assertion could bemade in any paper filed in or with theapplication and need be no more thana simple sentence or a box checked onan application transmittal letter or replycover sheet. It is the intent of the Officeto modify its application transmittalforms to provide for such a check box.Accordingly, small entity status couldbe established without submission ofany of the current small entity statementforms (PTO/SB/09–12) that embody andcomply with the current requirements of§ 1.27 and which are now used toestablish small entity status.

Assertion by Payment of Small EntityBasic Filing or National Fee

The payment of an exact small entitybasic filing or national fee will also beconsidered to be a sufficient assertion ofentitlement to small entity status. Anapplicant filing a patent application andpaying an exact small entity basic filingor national fee would automaticallyestablish small entity status for theapplication even without any furtherwritten assertion of small entity status.This is so even if an applicant were toinadvertently select the wrong type ofsmall entity basic filing or national feefor the application being filed. If smallentity status was not established whenthe basic filing fee was paid, such as bypayment of a large entity basic filing ornational fee, a later claim to small entitystatus would require a written assertion.Payment of a small entity fee other thana small entity basic filing or national fee(e.g., extension of time, or issue fee)without inclusion of a written assertionwould not be sufficient.

Even though applicants can assertsmall entity status by payment of an

exact small entity basic filing ornational fee, the Office stronglyencourages applicants to file a writtenassertion of small entity status. Awritten assertion would guarantee theapplicant that the application will havesmall entity status even if applicant failsto pay the exact small entity basic filingor national fee. The limited provisionproviding for small entity status bypayment of an exact small entity basicfiling or national fee is only intended toact as a safety net to avoid possiblefinancial loss to inventors or smallbusinesses that can qualify for smallentity status.

Caution: Even though small entitystatus would be accorded where thewrong type of small entity basic filingfee or national fee were selected but theexact amount of the fee were paid,applicant would still need to pay thecorrect small entity amount for the basicfiling or national fee where selection ofthe wrong type of fee results in adeficiency. While an accompanyinggeneral authorization to charge anyadditional fees would suffice to pay thebalance due of the proper small entitybasic filing or national fee, specificauthorizations to charge fees under §1.17 or extension of time fees would notsuffice to pay any balance due of theproper small entity basic filing ornational fee because they do notactually authorize payment of smallentity amounts.

Examples: Applications under 35U.S.C. 111: If an applicant were to filea utility application under 35 U.S.C. 111yet only pay the exact small entityamount for a design application(currently the small entity filing fees forutility and design applications are $380and $155, respectively), small entitystatus for the utility application wouldbe accorded. See the followingexamples:

(1) Where the utility application was filedinadvertently with the exact small entitybasic filing fee for a design application ratherthan for a utility application and anauthorization to charge the filing fee was notpresent, the Office would accord small entitystatus and mail a Notice to File Missing Partsof Application, requiring the $225 differencebetween the small entity utility applicationfiling fee owed and the small entity designapplication filing fee actually paid plus asmall entity surcharge (of $65) for the latesubmission of the correct filing fee.

(2) Where the utility application was filedwithout any filing fee but the $155 exactsmall entity filing fee for a design applicationwas inadvertently paid in response to aNotice to File Missing Parts of Application,small entity status would be established eventhough the correct small entity filing fee fora utility application was not fully paid.While the Office will notify applicant of the



remaining amount due, the period for replyto pay the correct small entity utility basicfiling fee would, however, continue to run.Small entity extensions of time under§ 1.136(a) would be needed for the latersubmission of the $225 difference betweenthe $380 small entity utility basic filing feeowed and the $155 small entity design filingfee inadvertently paid. If there was anauthorization to charge a deposit account inthe response to the Notice, the $225difference would have been charged alongwith the small entity $65 surcharge and theperiod for response to the Notice to FileMissing Parts of Application would notcontinue to run.

Applications entering that nationalstage under 35 U.S.C. 371: Section1.492(a) sets forth five (5) different basicnational fee amounts which apply todifferent situations. If an applicant paysa basic national fee which is the exactsmall entity amount for one of the feesset forth in § 1.492(a), but not theparticular fee which applies to thatapplication, the applicant will beconsidered to have made an assertion ofsmall entity status. This is true whetherthe fee paid is higher or lower than theactual fee required. See the followingexamples.

(1) An applicant pays $485 (the smallentity amount due under § 1.492(a)(3), wherethe United States was neither theInternational Searching Authority (ISA) northe International Preliminary ExaminingAuthority (IPEA) and the search report wasnot prepared by the European Patent Office(EPO) or Japanese Patent Office (JPO)) whenin fact the required small entity fee is $420under § 1.492(a)(5), because the JPO or EPOprepared the search report. The applicantwill be considered to have made the assertionof small entity status. The office will apply$420 to the payment of the basic national feeand refund the overpayment of $65.

(2) An applicant pays $420 (the smallentity fee due under § 1.492(a)(5) where thesearch report was prepared by the EPO orJPO). In fact, the search report was preparedby the Australian Patent Office and nopreliminary examination fee was paid to thePatent and Trademark Office. Thus, therequired small entity fee is $485 under§ 1.492(a)(3). The applicant will beconsidered to have made the assertion ofsmall entity status. If the applicant hasauthorized payment of fee deficiencies to adeposit account, the Office will charge the$65 to the deposit account and apply it andthe $420 to the basic national fee. If there isno authorization or there are insufficient feesin the deposit account, the basic national feepayment is insufficient. If the balance is notprovided before 20 or 30 months from thepriority date has expired, the application isabandoned.

If payment is attempted to be made ofthe proper type of basic filing ornational fee, but it is not the exact smallentity fee required (an incorrect feeamount is supplied) and a writtenassertion of small entity status is not

present, small entity status would not beaccorded. The Office would mail anotice of insufficient basic filing ornational fee with a surcharge due as incurrent practice if an authorization tocharge the basic filing or national feewere not present. The Office would notconsider a basic filing or national feesubmitted in an amount above thecorrect fee amount, but below the non-small entity fee amount, as a request toestablish small entity status unless anadditional written assertion is alsopresent. Of course, the submission of abasic filing or national fee below thecorrect fee amount would not serve toestablish small entity status.

Where an application is originallyfiled by a party, who is in fact a smallentity, with an authorization to chargefees (including basic filing or nationalfees) and there is no indication(assertion) of entitlement to small entitystatus present, that authorization wouldnot be sufficient to establish small entitystatus unless the authorization wasspecifically directed to small entitybasic filing or national fees. The generalauthorization to charge fees wouldcontinue to be acted upon immediatelyand the full (not small entity) basicfiling or national fees would be chargedwith applicant having three months torequest a refund by assertingentitlement to small entity status. Thiswould be so even if the application werea continuing application where smallentity status had been established in theprior application.

Parties Who Could Assert Entitlement toSmall Entity Status by Writing

The parties who could submit awritten assertion of entitlement to smallentity status would be any partypermitted by Office regulations,§ 1.33(b), to file a paper in anapplication. This eliminates theadditional requirement of obtaining thesignature of an appropriate party otherthan the party prosecuting theapplication. By way of example, in thecase of three pro se inventors for aparticular application, the threeinventors upon filing the applicationcould submit a written assertion ofentitlement to small entity status andthereby establish small entity status forthe application. For small businessconcerns and non-profit organizations,the practitioner could supply theassertion rather than the currentrequirement for an appropriate officialof the organization to execute a smallentity statement form. In addition, awritten assertion of entitlement to smallentity status would be able to be madeby one of several inventors or a partialassignee. Current practice does not

require an assignee asserting smallentity status to submit a § 3.73(b)certification, and such certificationswould not be required under theproposed revision either for partialassignees or for an assignee of the entireright, title, and interest.

Parties who Could Assert Entitlement toSmall Entity Status by Payment of BasicFiling or National Fee

Where small entity status is sought byway of payment of the basic filing ornational fee, any party may submitpayment, such as by check, and smallentity status would be accorded.

Inventors Asserting Small Entity StatusAny inventor would be permitted to

submit a written assertion of smallentity status, including inventors whoare not officially named of record untilan executed oath/declaration issubmitted. See § 1.41(a)(1). Where anapplication is filed without an executedoath/declaration pursuant to § 1.53(f),the Office will accept the writtenassertion of an individual who hasmerely been identified as an inventor onfiling of the application (e.g.,application transmittal letter) asopposed to being named as an inventor.Sections 1.4(d)(2) and 10.18(b) are seenas sufficient basis to permit anyindividual to provide a written assertionso long as the individual identifieshimself or herself as an inventor. Wherea § 1.63 oath or declaration is later filed,any original written assertion as to smallentity status will remain unless changedby an appropriate party under§ 1.27(f)(2). Where a later filed § 1.63oath or declaration sets forth aninventive entity that does not includethe person who initially was identifiedas an inventor and who asserted smallentity status, small entity status willalso remain. Where small entity status isasserted by payment of the small entitybasic filing, or national fee any partymay submit such fee, including aninventor who was not identified in theapplication transmittal letter, or a thirdparty.

Caution: The fact that certain partiescan execute a written assertion ofentitlement to small entity status, suchas one of several inventors, or a partialassignee, does not entitle that writtenassertion to be entered in the Officialfile record and become an effectivepaper unless the person submitting thepaper is authorized to do so under§ 1.33(b). In other words, the fact thatone of several inventors can sign awritten assertion of entitlement to smallentity status does not also imply that thesame inventor can submit the paper tothe Office and have it entered of record.



The written assertion, even thougheffective once entered in the Official filerecord, must still be submitted by aparty entitled to file a paper under§ 1.33(b). Payment of the small entitybasic filing or national stage fee wouldnot be subject to such submissionrequirement and any payment thereofwould be accepted and treated as aneffective assertion of small entity status.

Policy ConsiderationsOffice policy and procedures already

permit establishment of small entitystatus in certain applications throughsimplified procedures. For example,small entity status may be established ina continuing or reissue applicationsimply by payment of the small entitybasic filing fee if the priorapplication/patent had small entitystatus. See current § 1.28(a)(2). Theinstant concept of payment of the smallentity basic statutory filing fee toestablish small entity status in a newapplication is merely a logical extensionof that practice.

There may be some concern thatelimination of the small entity statementforms will result in applicants who arenot actually entitled to small entitystatus requesting such status. Onbalance, it seems that more errors occurwhere small entity applicants who areentitled to such status run afoul ofprocedural hurdles created by therequirements of § 1.27 than therequirements help to prevent statusclaims for those who are not in factentitled to such status.

Continued Obligations for ThoroughInvestigation of Small Entity Status

Applicants should not confuse thefact that the Office is making it easier toqualify for small entity status with theneed to do a complete and thoroughinvestigation before an assertion is madethat they do, in fact, qualify for smallentity status. It should be clearlyunderstood that, even though it wouldbe much easier to assert and therebyestablish small entity status, applicantswould continue to need to make a fulland complete investigation of all factsand circumstances before making adetermination of actual entitlement tosmall entity status. Where entitlement tosmall entity status is uncertain it shouldnot be claimed. See MPEP 509.03. Theassertion of small entity status (even bymere payment of the exact small entitybasic filing fee) is not appropriate untilsuch an investigation has beencompleted. Thus, in the previousexample of the three pro se inventors,before one of the inventors could paythe small entity basic filing or nationalfee to establish small entity status, the

single inventor asserting entitlement tosmall entity status would need to checkwith the other two inventors todetermine whether small entity statuswas appropriate.

The intent of § 1.27 is that the personmaking the assertion of entitlement tosmall entity status is the person in aposition to know the facts aboutwhether or not status as a small entitycan be properly established. Thatperson, thus, has a duty to investigatethe circumstances surroundingentitlement to small entity status to thefullest extent. Therefore, while theOffice is interested in making it easierto claim small entity status, it isimportant to note that small entitystatus must not be claimed unless theperson or persons can unequivocallymake the required self-certification.Section 1.27(g) would recite currentprovisions in § 1.28(d)(1) and (2)relating to fraud practiced on the Office.

Consistent with § 1.4(d)(2), thepayment of a small entity basic filing ornational fee, would constitute acertification under § 10.18(b). Thus, asimple payment of the small entity basicfiling or national fee, without a specificwritten assertion, will activate theprovisions of § 1.4(d)(2) and, by that,invoke the self-certification requirementset forth in § 10.18(b), regardless ofwhether the party is a practitioner ornon-practitioner.

Clarification of Need for InvestigationSection 1.27 is proposed to be

clarified (paragraph (e)) by explicitlyproviding that a determination ‘‘should’’be made of entitlement to small entitystatus according to the requirement setforth in § 1.9 prior to asserting smallentity status. The need for such adetermination of entitlement to smallentity status prior to assertion of smallentity status is set forth in terms of thatthere ‘‘should’’ be such a determination,rather than there ‘‘must’’ be such adetermination. In view of the ease withwhich small entity status would now beobtainable, it is deemed advisable toprovide an explicit direction that adetermination of entitlement to smallentity status pursuant to § 1.9 be madebefore its assertion. Consideration wasgiven to making the need for adetermination a requirement rather thanadvisory; however, the decision wasmade to make it advisory, particularlyin view of the following possiblescenario: One of three inventors submitsa written assertion of entitlement tosmall entity status without making anydetermination of entitlement to suchstatus, such as by checking with theother two inventors to see if they haveassigned any rights in the invention.

Small entity status was proper at thetime asserted notwithstanding the lackof a proper determination. If thedetermination is set forth as arequirement (‘‘must’’), the lack of sucha determination might act to cause anunduly harsh result where small entitystatus was in fact appropriate and thefailure to check prior to assertion wasinnocent. It is recognized that the use of‘‘should’’ may cause concern that acavalier approach to assertingentitlement to small entity status may betaken by encouraging some who areasserting status not to make a completedetermination as the determination isnot set forth as being mandatory. Onbalance, it is thought that the use of‘‘should’’ would lead to more equitableresults. The danger of encouraging theassertion of small entity status withouta prior determination as to qualificationfor small entity status is thought to besmall, because, should status turn out tobe improper, the lack of a priordetermination may result in a failure tomeet the lack of deceptive intentrequirements under § 1.27(g) or§ 1.28(c). The Office has noted that anyattempt to improperly establish status asa small entity will be viewed as aserious matter. See MPEP 509.03.

Removal of StatusSection 1.27 is also proposed to be

clarified (paragraph (f)(2)) that oncesmall entity status is established in anapplication, any change in status fromsmall to large, would also require aspecific written assertion to that extent,rather than only payment of a largeentity fee, similar to current practice.For example, when paying the issue feein an application that has previouslybeen accorded small entity status andthe required new determination ofcontinued entitlement to small entitystatus reveals that status has been lost,applicant should not just simply pay thelarge issue fee or cross out the recitationof small entity status on the returnedcopy of the notice of allowance (PTOL–85(b)), but submit a separate paperrequesting removal of small entity statuspursuant to proposed § 1.27(f)(2).

Correction of any inadvertent andincorrect establishment of small entitystatus would be by way of a paper underproposed § 1.28(c) as in current practice.

Response to CommentsMany comments supported the

proposal without qualification. Onlytwo, however, explicitly mentioned thepayment option for obtaining smallentity status with one recognizing thatany error is now easier to correct under§ 1.28(c). Others would eliminate thepossibility of obtaining small entity



status based on payment of the exactsmall entity basic filing (or national fee)due to possible error in paying anunintended small entity basic filing (ornational fee) and being accorded anunwanted small entity status. There wasonly one total opposition to theproposal as a ‘‘bad’’ idea.

Comment: Several commentssupported the proposal as a positivechange that is both helpful to applicantsand attorneys and one that will reducethe cost of establishing small entitystatus, particularly where there aremultiple forms required due to jointownership or licensing of multiplerights. It was noted that the proposaleliminates the time-consumingrequirement for obtaining a signature ofa person, such as an officer of thecompany, who may not have beeninvolved in the application draftingprocess. It was also stated that the needto withhold the filing fee on filing anoriginal application would beeliminated where the current smallentity statement cannot be signed intime.

Response: The comments wereadopted. The proposal from theAdvance Notice is being carried forwardin the instant notice. The particularparties who may assert entitlement tosmall entity status is being furtherliberalized over the Advance Notice toinclude only one of the inventors or apartial assignee.

Comment: One individual opposedthe proposal because the submission ofa paper is the only effective way anattorney can be certain that a client iscomplying with the requirements forsmall entity status. Eliminating the formremoves the incentive of the client toprovide the attorney with neededinformation, particularly with respect toforeign clients.

Response: A copy of §§ 1.9 and 1.27can be supplied to a client as easily asthe form and should be just as effectivewith foreign clients. It is not seen thatthe requirement of signing the formwould be a more certain means thatcompliance exists than if the clientwould have to state to the attorney,either orally or in a letter, that the clientcomplies with the requirements forasserting entitlement to small entitystatus. The form itself does not providethe underlying factual basis forentitlement to small entity status. Itmerely recites the requirement of § 1.9and that the party executing it seekssmall entity status. The attorney is notnow required to confirm that a client isin compliance once the form is signedby the client and would not be requiredto make such confirmation under theproposal. It would continue to be up to

the client to determine whether itwishes to assume whatever risk theremay be should it decide to do the smallentity determination by itself ratherthan rely on the attorney for aid.

Comment: A few comments wouldeliminate the option of asserting smallentity status by payment of the basicfiling (or national fee) due to possibleerrors in fee payments thereby obtainingunwanted small entity status. Onecomment recognized that the Office’sadoption in the last rulemaking of astraightforward approach to correctionunder § 1.28(c) would make correctionof improper status for good faith errorsa simple procedure.

Response: The comment seekingelimination of the payment option is notadopted. The comment noting theprevious easing of correction for goodfaith errors so that the possibility ofinadvertent errors should not be a bar tothe payment option is adopted. It isexpected that this would occur veryinfrequently if at all in that the exactsmall entity amount must be submitted.Only errors in amounts paid where theerror was the exact small entity amountfor the basic filing (or national fee)would trigger small entity status. Inview of the continued need for anaffirmative determination of entitlementto small entity status to be made, theerror would mostly occur by amisreading of a fee chart. Such type oferror if it inadvertently leads to theestablishment of small entity statuswould be easily correctable by thecurrent § 1.28(c).

Comment: Some comments sought toensure that the written assertion wouldbe easy to make by adding a check boxto provide for an assertion on: Officeforms, the § 1.63 declaration, on theapplication, or on the transmittal sheet.

Response: The comments are adoptedto the extent that this is animplementation issue to be addressedwhen a final rule is issued. The Officeintends at this time to at least supply acheck box on its application transmittalforms.

Paragraph by Paragraph AnalysisSection 1.27 is proposed to be

amended in its title to recognize a newmeans of establishing small entity statusby replacing ‘‘statement’’ with‘‘assertion,’’ to indicate that an assertionof small entity status would permit thepayment of small entity fees, and toreflect transfer of subject matter from§ 1.28 relating to determination ofentitlement to and notification of loss ofentitlement to small entity status, andfraud on the Office.

Paragraphs (a) through (d) of § 1.27 isproposed to be reformatted and

amended to recite ‘‘assertion’’ as a newmeans for establishing small entitystatus to replace ‘‘statement’’, and newparagraphs (e), (f)(1) and (f)(2), and (g)are proposed to be added.

Paragraph (b) of § 1.27 is proposed tobe reformatted to add paragraphs (b)(1)through (b)(4) of § 1.27. Paragraph (b) (1)of § 1.27 would permit assertion ofsmall entity status by a writing that isclearly identifiable as present ((b)(1)(i)),signed ((b)(1)(ii)), and convey theconcept of small entity status withoutthe need for specific words but with aclear indication of an intent to assertentitlement to small entity status((b)(1)(iii)). Paragraph (b)(2) of § 1.27would make submission of a writtenassertion to obtain small entity statuseasier in view of increased categories ofparties who could submit such a paper.The parties who could sign the writtenassertion are identified as: one of theparties who can currently submit apaper under § 1.33(b) ((b)(2)(i) of § 1.27),at least one of the inventors ((b)(2)(ii) of§ 1.27) rather than all the inventors(applicants) as required by § 1.33(b)(4)for other types of papers, or a partialassignee ((b)(2)(iii) of § 1.27) rather thanall the partial assignees and anyapplicant retaining an interest asrequired by § 1.33(b)(3) for other typesof papers. A § 3.73(b) certificationwould not be required for an assigneeunder either paragraphs (b)(2)(i) or (iii).Paragraph (b)(3) of § 1.27 would permitthe payment, by any party, of an exactamount of one of the small entity basicfiling or national fees set forth in§ 1.16(a), (f), (g), (h), or (k), or§ 1.492(a)(1) through (a)(5) to be treatedas a written assertion of entitlement tosmall entity status even where anincorrect type of basic filing or nationalfee is inadvertently selected in error.Paragraph (b)(3)(i) would provide thatwhere small entity status was accordedbased on the payment of a wrong typeof small entity basic filing or nationalfee, the correct small entity amountwould still be owed. Paragraph (b)(3)(ii)would provide that payment of a smallentity fee in its exact amount for a feeother than what is provided for inparagraph (b)(3) would not be sufficientto establish small entity status absent aconcomitant written assertion ofentitlement to small entity status. Aftera basic filing or national fee is paid asa large entity, a refund under § 1.28(a)of the large entity portion can only beobtained by establishing small entitystatus by a written assertion and not bypaying a second basic filing or nationalfee in a small entity amount. Paymentof a large entity basic filing or nationalfee precludes paying a second basic



filing or national fee in a small entityamount to establish small entity status.Paragraph (b)(4) of § 1.27 recitesmaterial transferred from current§ 1.28(a)(2).

Paragraph (c) of § 1.27 is proposed tobe amended to provide that fees otherthan the basic filing and national feescan only be paid in small entityamounts if submitted with orsubsequent to a written assertion ofentitlement to small entity status. Theparagraph would clarify that anexception exists under § 1.28(a) forrefunds of the large entity portion of afee within three months of paymentthereof if the refund request isaccompanied by a written assertion ofentitlement to small entity status.

Paragraph (d)(1) of § 1.27 is proposedto be amended to reference § 1.28(b) asthe means of changing small entitystatus. It would be clarified that whererights in an invention are assigned, orthere is an obligation to assign, to asmall entity subsequent to an assertionof entitlement to small entity status, asecond assertion is not required.Paragraph (d)(2) would clarify that oncesmall entity status is withdrawn a newwritten assertion would be required toagain obtain small entity status.

Paragraph (e) of § 1.27 is proposed tobe added to clarify the need to do adetermination of entitlement to smallentity status prior to asserting smallentity status, and that the Officegenerally does not question assertions ofentitlement to small entity status.

Paragraph (f)(1) of § 1.27 is proposedto be added to contain materialtransferred from current § 1.28.Paragraph (f)(2) is proposed to be addedto revise the current reference to theparty who can sign a notification of lossof entitlement to small entity status torequire a party identified in § 1.33(b).

Paragraph (g) of § 1.27 is proposed tobe added to contain material transferredfrom paragraphs (d)(1) and (d)(2) ofcurrent § 1.28 relating to fraudattempted or committed on the Office inregard to paying small entity fees.

Section 1.28: Section 1.28 is proposedto be amended to be entirely reformattedwith some material transferred to § 1.27.

Section 1.28(a) is proposed to beamended to allow a three-month period(presently a two-month period) forrefunds based on later establishment ofsmall entity status. See furtherdiscussion in § 1.28(b)(1).

Section 1.28(b)(1) is proposed to beamended to refer to § 1.22(c). Section1.22(c) sets forth that the filing date foran authorization to charge fees starts theperiod for refunds under § 1.28(a). Thecurrent time period for a refund requestis two months from payment of the full

fee and the date of payment for refundpurposes can vary depending on themeans the applicant used to pay therequired fee. For example, if theapplicant paid the required fee bycheck, the date of payment is the dateon which the fee paper, including thecheck, was filed in the Office. If theapplicant authorized a charge to adeposit account, however, the date ofpayment is the date the Office debitedthe deposit account. In view of theproposed change in practice under§§ 1.22(c) and 1.28(b)(1) to accord thesame date of payment for checks andauthorizations to charge depositaccounts, the refund period would beextended to three months in order to in-part offset any shortening of the refundtime period that may result in startingthe time period from the filing date ofthe fee paper instead of the debit datefor an authorization to charge a depositaccount. Additionally, in view ofchanges in practice under § 1.27 to easethe claiming of small entity status, theneed for refunds should diminish, andthe different payment date of anauthorization to charge a depositaccount for small entity refund purposesshould not cause much inconvenienceto applicants.

Section 1.28(b)(2) is proposed to beamended to state that the deficiencyamount owed under § 1.28(c) iscalculated by using the date on whichthe deficiency was paid in full.

Section 1.28(c) is proposed to beamended to require that deficiencypayments must be submitted separatelyfor each file (§ 1.28(c)(1)) and mustinclude the itemization of the deficiencypayment by identifying: type of feealong with the current fee amount(§ 1.28(c)(2)(ii)(A)), the small entityamount paid and when (§ 1.28(c)(2)((ii)(B)), the deficiency owed foreach individual fee paid in error(§ 1.28(c)(2)(ii)(C)), the total deficiencypayment owed (§ 1.28(c)(2)(ii)(D)), andthat any failure to comply with theseparate payment and itemizationrequirements would allow the Office atits option to charge a processing fee orset a non-extendable one month periodfor compliance to avoid return of thepaper (§ 1.28(c)(3)).

Paragraph by Paragraph AnalysisThe title of § 1.28 is proposed to be

revised to focus on refunds and on howerrors in status are excused in view oftransfer of material to § 1.27.

Paragraphs (a)–(c) of § 1.28 areproposed to be reformatted.

Paragraph (a)(1) of § 1.28 is proposedto be amended as paragraph (a).

Paragraph (a) of § 1.28 is proposed tobe amended to clarify that the period for

a refund runs from payment of the ‘‘fullfee,’’ and that it is the payment of thefull fee that is considered the significantevent relative to establishing status fora particular fee. Additionally, paragraph(a) would amend the time period forrequesting a refund based upon laterestablishment of small entity status. Theproposed time period would be threemonths measured from the filing date ofthe fee paper.

Paragraph (a)(2) of § 1.28 is proposedto be amended to have some subjectmatter transferred to § 1.27(b)(4). Thenext to last sentence, relating to filing acontinuing or reissue application andreferencing a small entity statement inthe prior application or patent, wouldbe deleted as unnecessary. Thecurrently required reference to status inthe prior application or patent would bereplaced by the equally easily writtenassertion of § 1.27(b)(1). Writtenreferences to small entity status in aprior application, including submissionof a copy of the small entity statementin a prior application, submitted in acontinuing application subsequent tothe effective date of any final rule,would be liberally construed under theproposed § 1.27(b)(1)(iii). Similarly, thelast sentence of current paragraph (a)(2)would be deleted as the payment optionfor establishing small entity status incontinuing or reissue applications hasbeen expanded in § 1.27(b)(3) to includeall applications.

Caution: Although the Office intendsto liberally construe what is deemed tobe an assertion of small entity status, theconcept of entitlement must be clearlyconveyed.

Example: A prior application has beenaccorded small entity status. A continuedprosecution application (CPA) under§ 1.53(d) is filed with a general authorizationto charge fees that does not state that the feesto be charged are small entity fees. Eventhough the CPA contains the sameapplication number as its prior application(and the small entity statement), it would notbe accorded small entity status and largeentity filing fees would be immediatelycharged. This would be so because a newdetermination of entitlement to small entitystatus must be made upon filing of a newapplication, such as a CPA. Accordingly, infiling the CPA there must be some affirmativeact to indicate that the determination hasbeen done anew and small entity status isstill appropriate. Where a copy of the smallentity statement from the prior application,or a written assertion in the CPA applicationtransmittal letter, or an authorization tocharge small entity fees were present, theresult would be reversed and small entitystatus would be accorded the CPAapplication on filing.

Paragraph (a)(3) of § 1.28 is proposedto be amended to have its subject mattertransferred to § 1.27(d)(1).



Paragraph (b) of § 1.28 is proposed tobe amended to have its subject mattertransferred to § 1.27(f)(1) and (2). Newparagraphs (b)(1) and (b)(2) areproposed to be added. Paragraph (b)(1)of § 1.28 would refer to § 1.22(c) todefine the date a fee is paid for thepurpose of starting the three-monthperiod for refund. Current practice forauthorizations to charge depositaccounts is to give benefit of the datethat the deposit account is actuallydebited by the Office, which is a latertime than when the paper authorizingcharge of the fee to a deposit account isfiled with the Office. Current practicewould therefore be changed so that it isthe date the paper is filed, not the dateof debit of the fee, that would start thethree-month refund period. Paragraph(b)(2) of § 1.28 would refer to § 1.22(c)to define the date when a deficiencypayment is paid in full, which is thedate that determines the amount ofdeficiency that is due.

Example: A small entity issue fee has beenpaid in error in January and a paper under§ 1.28(c) was submitted the following Junewith the deficiency payment. The deficiencypayment of the issue fee was incorrectlydetermined so that the full amount owed (forthe issue fee) was not submitted in June. Ifthe mistake in the June payment is notdiscovered until the following November, theextra amount owed must be recalculated totake into account any October 1 increase inthe issue fee.

Paragraph (c) of § 1.28 is proposed tobe amended to recite that separatesubmissions, including separatepayments and itemizations, are requiredfor any deficiency payment. Paragraph(c)(1) would require that a deficiencypaper/submission be limited to oneapplication or patent file. Where, forexample, the same set of facts hascaused errors in payment in more thanone application and/or patent file, aseparate paper would need to besubmitted in each file for which an erroris to be excused. Paragraph (c)(2) wouldnow require that for each fee that waserroneously paid in error the followingitemization be provided: The particularfee (e.g., basic filing fee, extension oftime fee) (paragraph (c)(2)(ii)((A)), thesmall entity fee amount actually paidand when (for example, distinguishingbetween two one-month extension oftime fees erroneously paid on twodifferent dates) (paragraph (c)(2)(ii)(B)),the actual deficiency owed for each feepreviously paid in error (paragraph(c)(2)(ii)(C)), and the total deficiencyowed that is the sum of the individualdeficiencies owed (paragraph(c)(2)(ii)(D)). Paragraph (c)(3) wouldaddress the failure to comply with theseparate submission, including separate

payment and itemization requirementsof paragraph (c)(1) and (2) of thissection. Paragraph (c)(3), upon failure tocomply, would permit the Office at itsoption either to charge a processing fee(§ 1.17(i) would be suitably amended) toprocess the paper or require compliancewithin a one-month non-extendabletime period to avoid return of the paper.

Paragraphs (d) (1) and (2) of § 1.28, areproposed to be amended to have thematerial relating to fraud attempted orcommitted on the Office as to paying ofsmall entity fees, transferred to § 1.27(g).New paragraph (d) of § 1.28 is proposedto be added to clarify that any papersubmitted under paragraph (c) of § 1.28would also be treated as a notificationof loss of small entity status underparagraph (f)(2) of § 1.27.

Section 1.33: Paragraph (a) of § 1.33would be reformatted to createadditional paragraphs (a)(1) and (a)(2) toseparately identify the parties who canchange a correspondence addressdepending upon the presence orabsence of a § 1.63 oath/declaration. Therevision is intended to make clear whatmay be a confusing practice toapplicants as to which parties can setforth or change a correspondenceaddress when an application does notyet have a § 1.63 oath or declaration byany of the inventors. See § 1.14(d)(4) fora similar change regarding status andaccess information. References to a§ 1.63 oath/declaration are intended tomean an executed oath/declaration byany inventor, but not necessarily all theinventors.

Paragraph (a) of § 1.33 is proposed tobe amended to provide that in a patentapplication the applicant must, either inan application data sheet (§ 1.76) or ina clearly identifiable manner elsewherein any papers submitted with anapplication filing, specify acorrespondence address to which theOffice will send notices, letters andother communications in or about theapplication. It is now stated that wheremore than one correspondence addressis specified, the Office would determinewhich one to establish as thecorrespondence address. This isintended to cover the situation where anunexecuted application is submittedwith conflicting correspondenceaddresses in the application transmittalletter and in an unexecuted oath/declaration, or other similar situations.

Paragraph (a) of § 1.33 would requestthe submission of a daytime telephonenumber of the party to whomcorrespondence is to be addressed.While business is to be conducted onthe written record, § 1.2, a daytimetelephone number would be useful ininitiating contact that could later be

reduced to a writing. The phone numberwould be changeable by any party whocould change the correspondenceaddress.

Paragraph (a)(1) of § 1.33 wouldprovide that any party filing theapplication and setting forth acorrespondence address could laterchange the correspondence addressprovided that a § 1.63 oath/declarationby any of the inventors has not beensubmitted. The parties who may sochange the correspondence addresswould include only the one inventorfiling the application even if more thanone inventor was identified on theapplication transmittal letter. If two ofthree inventors filed the application, thetwo inventors filing the applicationwould be needed to change thecorrespondence address. Additionally,any registered practitioner named in theapplication transmittal letter, or aperson who has the authority to act onbehalf of the party that will be theassignee (if the application was filed bythe party that will be the assignee),could change the correspondenceaddress. A registered practitioner namedin a letterhead would not be sufficient,but rather a clear identification of theindividual as being a representativewould be required. The intent is topermit a company (to whom theinvention has been assigned, or towhom there is an obligation to assignthe invention) who files an application,to designate the correspondenceaddress, and to change thecorrespondence address, until such timeas a (first) § 1.63 oath/declaration isfiled. The mere filing of a § 1.63 oath/declaration, that does not include acorrespondence address, includingwhen the company is only a potentialpartial assignee would not affect anycorrespondence address previouslyestablished on filing of the application,or changed per paragraph (a)(1) of thissection. The expression ‘‘party that willbe the assignee’’ rather than assignee isused in that until a declaration issubmitted, inventors have only beenidentified and any attemptedassignment, or partial assignment,cannot operate for Office purposes untilthe declaration is supplied. Hence, themere identification of a party as a partythat will be an assignee or assigneewould be sufficient for it to change thecorrespondence address without resortto § 3.73(b).

Paragraph (a)(2) of § 1.33 would retainthe current requirements for changing acorrespondence address when a § 1.63oath/declaration by any of the inventorshas been filed. Where a correspondenceaddress was set forth or changedpursuant to paragraph (a)(1) (prior to the



filing of a § 1.63 oath or declaration),that correspondence address remains ineffect upon filing of a § 1.63 declarationand can then only be changed pursuantto paragraph (a)(2).

Paragraph (b) of § 1.33 would besimplified to make it easier tounderstand who are appropriate partiesto file papers, particularly in view of theproposed change under § 3.71(b).

Paragraph (b)(3) of § 1.33 is proposedto be amended to add a reference to§ 3.71.

Section 1.41: Section 1.41(a)(1) isproposed to be amended to indicate thata paper including the processing fee setforth in § 1.17(i) is required forsupplying or changing the name(s) ofthe inventor(s) where an oath ordeclaration prescribed in § 1.63 is notfiled during pendency of anonprovisional application, rather thana petition including a petition fee, forconsistency with the proposedamendment to § 1.17(i). Section1.41(a)(2) is proposed to be amended toindicate that a paper including theprocessing fee set forth in § 1.17(q) isrequired for supplying or changing thename(s) of the inventor(s) where a coversheet prescribed by § 1.53(c)(1) is notfiled during the pendency of aprovisional application, rather than apetition including a petition fee, forconsistency with the proposedamendment to § 1.17(q). Section1.41(a)(3) is proposed to be amended todelete the language concerning analphanumeric identifier, and to providethat the name, residence, andcitizenship of each person believed tobe an actual inventor should beprovided when the application paperspursuant to § 1.53(b) are filed withoutan oath or declaration or applicationpapers pursuant to § 1.53(c) are filedwithout a cover sheet. Section 1.41(a)(4)is proposed to be added to set forth thatthe inventors who submitted anapplication under § 1.494 or § 1.495 arethe inventors in the internationalapplication designating the UnitedStates.

Section 1.44: Section 1.44 is proposedto be removed and reserved to eliminatethe requirement that proof of the poweror authority of the legal representativebe recorded in the Office or filed in anapplication under §§ 1.42 or 1.43.

Section 1.47: Section 1.47 is proposedto be amended to refer to ‘‘the fee setforth in § 1.17(h)’’ for consistency withthe proposed amendment to § 1.17(h)and (i). See discussion of the proposedamendment to § 1.17. Section 1.47 isalso proposed to be amended to add anew paragraph (c) providing that theOffice will send notice of the filing ofthe application to all inventors who

have not joined in the application at theaddress(es) provided in the petitionunder § 1.47, and will publish notice ofthe filing of the application in theOfficial Gazette. This provision iscurrently included in each of § 1.47(a)and § 1.47(b). Section 1.47(c) is alsoproposed to provide that the Office maydispense with such notice provisions ina continuation or divisional applicationwhere notice regarding the filing of theprior application has already been sentto the nonsigning inventor(s). Thepatent statute gives the Office greatlatitude as to the notice that must begiven to an inventor who has not joinedin an application for patent. See 35U.S.C. 116, ¶2 (‘‘after such notice to theomitted inventor as [the Commissioner]prescribes’’), and 118 (upon such noticeto [the inventor] as the Commissionerdeems sufficient’’). Providing notice to anon-joined inventor in a continuation ordivisional application places asignificant burden on the Office,especially when such continuation ordivisional application is filed using acopy of the oath or declaration from aprior application under § 1.63(d). Inaddition, providing additional notice tothe non-joined inventor in thecontinuation or divisional applicationprovides little (if any) actual benefit tothe non-joined inventor, as identicalnotice was previously given during theprocessing of the prior application.Thus, the Office considers it appropriateto dispense with notice under § 1.47 insituations (continuations or divisionalsof an application accorded status under§ 1.47) in which the non-joined inventorwas previously given such notice in aprior application.

Section 1.48: Section 1.48 is proposedto be amended to have the title revisedto reference the statutory basis for therule, 35 U.S.C. 116.

Section 1.48 paragraphs (a) through(c) are proposed to be amended to:delete the recitation of ‘‘other than areissue application’’ as such words areunnecessary in view of the indication inthe title of the section that the sectiondoes not apply to reissue applicationsand the revision to paragraph (a)(discussed below), to change ‘‘When’’ to‘‘If,’’ and to add ‘‘nonprovisional’’before ‘‘application’’ where it does notalready appear.

Sections 1.48 paragraphs (a)(1)through (e)(1) would be revised toreplace the reference to a ‘‘petition’’with a reference to a ‘‘request.’’ What ismeant to be encompassed by the term‘‘petition,’’ as it is currently used in thesection, may be better defined by theterm ‘‘request.’’ The presence of‘‘petition’’ currently in the section ismisleading to the extent that it may

indicate to applicants that papers underthis section have to be filed with theOffice of Petitions when in factamendments to correct the inventorshipunder § 1.48 are to be decided by theprimary examiners in the TechnologyCenters and should be submitted there.See MPEP 1002.02(e). The requirementsfor a statement currently in § 1.48paragraphs (a)(1), (c)(1), and (e)(1)would be placed in § 1.48 paragraphs(a)(2), (c)(2), and (e)(2) andcorresponding changes made insubsequent paragraphs.

Section 1.48 paragraphs (b) and (d)are proposed to be revised to indicatethat a request to correct the inventorshipthereunder must be signed by a party asset forth in § 1.33(b) (which wouldenable a practitioner alone to sign allthe needed papers). The inventors,whether being added, deleted orretained, are not required to participatein a correction under these paragraphs.Thus, the inventor(s) to be deletedpursuant to paragraph (b) in anonprovisional application, or addedpursuant to paragraph (d) in aprovisional application, and thoseinventors that are retained in eithersituation, are not required to participatein the inventorship correction, such asby signing a statement of facts, or a newoath or declaration under § 1.63.

Section 1.48 paragraphs (a) through(e) are proposed to be revised to definethe fee required as a ‘‘processing’’ fee,to delete the reference to a ‘‘petition,’’and to indicate that amendment of theapplication to correct the inventorshipwould require the filing of a request tocorrect the inventorship along withother items, as set forth in the respectiveparagraphs of this section. The latterchange is not one of substance but aclarification that the amendmentrequirement of the statute, 35 U.S.C.116, merely refers to the change inOffice records (face of the applicationfile wrapper corrected, notation on apreviously submitted § 1.63 oath/declaration, change in PatentApplication Location and Monitoring(PALM) data, and a corrected filingreceipt issued) that would be madeupon the grant of a § 1.48 request. Thus,amendment of the inventorship in anapplication is not made as anamendment under § 1.121. Where thereis a need to make an actual § 1.121(a)(1)amendment, such as when a cover pageof the specification recites the inventiveentity, that should also be submitted. Inthe absence of such an amendment, theOffice may, at its option, correct theinventor’s names on the cover sheet orin the specification. Where anapplication needs correction ofinventorship under § 1.48 and a paper is



submitted with a title that does not setforth the paper as a request under § 1.48,but it is clear from the papers submittedthat an inventorship correction isdesired, a request for a correction ofinventorship under § 1.48 will beinferred from the papers submitted andwill be treated under § 1.48.

A request for a corrected filing receiptcorrecting a typing or office error in thenames of the inventors will notordinarily be treated under § 1.48. Anyrequest to correct inventorship shouldbe presented as a separate paper. Forexample, placing a request under§ 1.48(b) to correct the inventorship inthe remarks section of an amendmentmay cause the Office to overlook therequest and not act on it.

Paragraph (f)(1) of § 1.48 is proposedto be clarified to recite that its provisionfor changing the inventorship onlyapplies if an oath or declaration under§ 1.63 has not been submitted by any ofthe inventors, and that submission of anoath or declaration under § 1.63 by anyof the inventors is sufficient to correctan earlier identification of theinventorship.

Example 1: An unexecuted application isfiled identifying A, B, and C as the inventors.A § 1.63 declaration is also submitted signedonly by A and naming A, B, and C as theinventors. To complete the application(§ 1.53(f)) a § 1.63 oath or declaration by Band C is needed. In attempting to reply to aNotice to File Missing Parts of Applicationrequiring the missing oath or declaration byB and C it is discovered that D is also aninventor. A declaration by A, B, C, and D ifsubmitted without a petition under § 1.48(a)to correct the inventorship to A–D from A–C will not be accepted as a reply to theNotice to File Missing Parts of Application.

Thus, it should be clear that a firstoath or declaration under § 1.63completed by less than all the inventorsinitially identified, when the oath ordeclaration is submitted when theapplication is filed (or after), will under§ 1.48(f)(1) lock in the inventorship, andthe later filing of another declaration bya different but complete inventive entitywill not be effective under § 1.48(f)(1) tocorrect the inventorship.

Example 2: An application is filedidentifying A, B, and C as the inventors inthe application transmittal letter, and a § 1.63declaration is concomitantly submitted onlyby A naming only A as the sole inventor. Theinventorship of the application is A (becauseof the declaration of A). A later submitted§ 1.63 declaration by A, B, and C wouldrequire a petition under § 1.48(a) to correctthe inventorship to A, B, and C before thedeclaration by A, B, and C could be accepted.

Paragraph (f)(1) of § 1.48 is proposedto be amended to reference § 1.497(d)for submission of an executed oath ordeclaration naming an inventive entity

different from the inventive entity setforth in the international stage whenentering the national stage under 35U.S.C. 371 and §§ 1.494 or 1.495.

Section 1.48(h) is proposed to beadded to indicate that the provisions ofthis section do not apply to reissueapplications, and referencing §§ 1.171and 1.175 for correction of inventorshipin reissue applications.

Section 1.48(i) is proposed to beadded to reference §§ 1.324 and 1.634for corrections of inventorship inpatents and interference proceedings,respectively.

Section 1.48 paragraphs (a) through (i)are proposed to have titles added tomake locating the appropriate paragrapheasier.

Section 1.51: Section 1.51(b) isproposed to be amended to include areference to § 1.53(d), as a propercontinued prosecution applicationunder § 1.53(d) in which the basic filingfee has been paid is a completeapplication under § 1.51(b).

Section 1.52: Section 1.52(a) and (b)are proposed to be amended to clarifythe paper standard requirements forpapers submitted as part of the recordof a patent application. Section 1.52(a)sets forth the paper standardrequirements for all papers which are tobecome a part of the permanent recordsof the Office, and § 1.52(b) sets forth thepaper standard requirements for theapplication (specification, including theclaims, drawings, and oath ordeclaration) and any amendments orcorrections to the application. Papersmaking up the application or anamendment or correction to theapplication must meet the requirementsof § 1.52 (a) and (b), but paperssubmitted for the record that do notmake up the application (e.g., adeclaration under § 1.132) need notmeet the requirements of § 1.52(b).

The Office is proposing in § 1.52(b)(6)an optional procedure for numberingthe paragraphs of the specification, butnot including the claims or the abstract.Although not required to do so,applicants would be stronglyencouraged to present, at the time offiling, each paragraph of thespecification as individually andconsecutively numbered. Thepresentation of numbered paragraphs atthe time of filing would facilitate theentry of amendments (in compliancewith proposed § 1.121) during theprosecution of the application. If theparagraphs of the specification are notnumbered at the time of filing,applicants would be urged, when thefirst response to an Office action issubmitted, to supply a substitutespecification including numbered

paragraphs, consistent with therequirement of § 1.121 for amending thespecification. Thereafter, amendmentswould be made through the use ofnumbered paragraph replacement.

The proposal to include paragraphnumbering is to provide a consistentand uniform basis for the amendmentpractice being proposed in § 1.121 andas an aid to transitioning into totalelectronic filing. The proposed rulelanguage establishes a procedure fornumbering the paragraphs of thespecification at the time of filing. Thisprocedure would facilitate the entry ofamendments by providing a uniformmethod for identifying paragraphs in thespecification, thus overcoming anydifferences created by word processorformatting and pagination variations.Concurrently proposed changes to§ 1.121 for amendment practice wouldadditionally require the submission ofclean copies of numbered replacementparagraphs, which would eliminatemuch of the red ink associated withhand entry of amendments and expeditethe Optical Character Recognition (OCR)scanning and reading employed in thepatent printing process, ultimatelyresulting in patents containing fewererrors.

The Office will neither number theparagraphs or sections of thespecification, nor accept anyinstructions from applicants to do thesame.

The proposed procedure forparagraph numbering, in the interest ofuniformity, encourages applicants to usefour digit Arabic numerals enclosedwithin square brackets and includingleading zeroes as the first element of theparagraph. The numbers and bracketsshould be highlighted in bold (e.g.,[0001], [0002]), and should appear asthe first part of the paragraphimmediately to the right of the leftmargin. Approximately four characterspaces should follow the bracketednumber before the beginning of theactual text of the paragraph. Paragraph(or section) headers, such as‘‘Description of the Invention’’ or‘‘Example 3,’’ are not considered part ofany paragraph and should not benumbered. Nontext elements, such astables, mathematical formulae, etc., areconsidered part of the paragraph aroundor above the element, and should not benumbered separately. All portions ofany nontext elements should be keptfrom extending to the left margin.

Response to Comments: Althoughparagraph numbering (as it appears inproposed § 1.52) was not anindependent topic in the AdvanceNotice, the proposal did appear inconjunction with the replacement



paragraph concept as part of Topic 13.While there was some opposition toparagraph numbering in the commentsreceived relative to Topic 13 as beingburdensome and inconsistent with therequirements of other countries, theOffice proposes to move forward withthis concept as the most effective plancurrently under consideration foridentifying paragraphs of thespecification. The JPO and EPO havealready begun to use paragraphnumbering in their application andpublication processing.

Some of the comments received inresponse to Topic 13 suggestedidentification of paragraphs by page andline number. Inasmuch as the Officeproposal must be consistent with futureelectronic requirements, this suggestionof identification by page and linenumber could not be adopted in thatfixed pages do not exist in documentscreated on a computer. Page and linenumbering are affected by font size, linespacing and formatting and can varybetween different hardware andsoftware components. Once eachparagraph has been individuallyidentified and tagged with a number,however, all future processing of theapplication, whether by paper orelectronic version, may be doneuniformly and accurately by both theOffice and the applicant.

Section 1.52(b)(7) is proposed to beadded to provide that if paperssubmitted as part of the application donot comply with § 1.52 (b)(1) through(b)(5), the Office may require theapplicant to provide substitute papersthat comply with § 1.52(b)(1) through(b)(5), or the Office may convert thepapers submitted by applicant intopapers that do comply with § 1.52(b)(1)through (b)(5) and charge the applicantfor the costs incurred by the Office indoing so (§ 1.21(j)).

Section 1.52(c) is proposed to beamended to provide that: (1) Alterationsto the application papers must (ratherthan ‘‘should’’) be made before the oathor declaration is signed; (2) a substitutespecification (§ 1.125) is required if theapplication papers do not comply with§ 1.52(a) and (b) due to interlineations,erasures, cancellations or otheralterations of the application papers;and (3) if an oath or declaration is acopy of the oath or declaration from aprior application, the application forwhich such copy is submitted maycontain alterations that do not introducematter that would have been new matterin the prior application.

Section 1.52(d) is proposed to beamended to provide separately fornonprovisional applications andprovisional applications filed in a

language other than English. Section1.52(d)(1) is proposed to be added toprovide that: (1) If a nonprovisionalapplication is filed in a language otherthan English, an English languagetranslation of the non-English-languageapplication, a statement that thetranslation is accurate, and theprocessing fee set forth in § 1.17(i) arerequired; and (2) if these items are notfiled with the application, applicantwill be notified and given a period oftime within which they must be filed inorder to avoid abandonment. Section1.52(d)(2) is proposed to be added toprovide that: (1) If a provisionalapplication is filed in a language otherthan English, an English languagetranslation of the non-English-languageprovisional application will not berequired in the provisional application;but (2) if a nonprovisional applicationclaims the benefit of such provisionalapplication, an English-languagetranslation of the non-English-languageprovisional application and a statementthat the translation is accurate must besupplied if the nonprovisionalapplication is involved in aninterference (§ 1.630), or whenspecifically required by the examiner.

Section 1.53: Section 1.53(c)(1) isproposed to be amended to clearlyprovide that the cover sheet required by§ 1.51(c)(1) may be an application datasheet (§ 1.76).

Section 1.53(c)(2) is proposed to beamended for clarity and to refer to ‘‘theprocessing fee set forth in § 1.17(q)’’ forconsistency with the proposedamendment to § 1.17(q).

Section 1.53(d)(4) is proposed to beamended to eliminate the reference to apetition under § 1.48 for consistencywith the proposed amendment to § 1.48.Section 1.53(d) is also proposed to beamended to add a new § 1.53(d)(10) toprovide a reference to § 1.103(b) forrequesting a limited suspension ofaction in a continued prosecutionapplication (CPA) under § 1.53(d).

Section 1.53(e)(2) is proposed to beamended to require that a petition under§ 1.53(e) be accompanied by the fee setforth in § 1.17(h), regardless of whetherthe application is filed under § 1.53(b),§ 1.53(c), or § 1.53(d). While provisionalapplications filed under § 1.53(c) are notsubject to examination under 35 U.S.C.131 (35 U.S.C. 111(b)(8)), petitionsunder § 1.53(e) in provisionalapplications under § 1.53(c) are asburdensome as petitions under § 1.53(e)in nonprovisional applications under§ 1.53(b) or § 1.53(d). Therefore, it isappropriate to charge the petition fee setforth in § 1.17(h) for petitions under§ 1.53(e) in applications filed under§ 1.53(b), § 1.53(c), or § 1.53(d).

Section 1.53(f) and (g) are proposed tobe amended for clarity and to include areference to ‘‘or reissue’’ in theparagraph heading to clarify that theprovisions of § 1.53(f) apply to allnonprovisional applications, whichinclude continuation, divisional, andcontinuation-in-part applications, aswell as reissue applications andcontinued prosecution applications.Section 1.53(f) is also proposed to beamended to provide that if applicantdoes not pay one of either the basicfiling fee or the processing and retentionfee set forth in § 1.21(l) during thependency of the application (rather thanwithin one year of the mailing of aNotice to File Missing Parts ofApplication), the Office may dispose ofthe application.

Section 1.55: Section 1.55(a) isproposed to be amended to refer to ‘‘theprocessing fee set forth in § 1.17(i)’’ forconsistency with the proposedamendment to § 1.17(h) and (i). Seediscussion of the proposed amendmentto § 1.17.

Section 1.55(a)(2)(i) through (iii) isproposed to clarify the current Officepractice concerning when the claim forpriority and the certified copy of theforeign application specified in 35U.S.C. 119(b) must be filed. Specifically§ 1.55(a)(2)(i) clarifies current Officepractice that in an application filedunder 35 U.S.C. 111(a) that the Officerequires the claim for priority and thecertified copy of the foreign applicationbe filed before a patent is granted.Section 1.55(a)(2)(ii) clarifies currentOffice practice that in an applicationthat entered the national stage of aninternational application aftercompliance with 35 U.S.C. 371, the timelimits set in the PCT and theRegulations under the PCT control thetime limit for making the claim forpriority, while the certified copy of theforeign application must be filed beforethe patent is granted if the certified copywas not filed in accordance with thePCT and the Regulation under the PCT.Section 1.55(a)(2)(iii) clarifies currentOffice practice that the Office mayrequire both the claim for priority andcertified copy of the foreign applicationbe filed at an earlier time than in§§ 1.55(a)(2)(i) or 1.55(a)(2)(ii) undercertain circumstances.

Section 1.55(a)(2)(iv) is also proposedto provide that priority claims anddocuments may be submitted afterpayment of the issue fee but with nofurther review by the Office other thanplacement in the application file.Changes to the patent printing processwill dramatically reduce the periodbetween the date of issue fee paymentand the date a patent is issued. See



Filing of Continuing Applications,Amendments, or Petitions after Paymentof Issue Fee, Notice, 1221 Off. Gaz. Pat.Office 14 (April 6, 1999); and Patents toIssue More Quickly After Issue FeePayment, Notice, 1220 Off. Gaz. Pat.Office 42 (March 9, 1999). Thus, it isnow difficult for the Office to match apetition containing a priority claim orcertified priority document filed afterpayment of the issue fee with anapplication file, and determine whetherthe applicant has met the conditions of35 U.S.C. 119(a)–(d) to make the priorityclaim, before the date the applicationwill issue as a patent. Nevertheless, it isalso undesirable to prohibit applicantsfrom filing a priority claim or certifiedpriority document between the date theissue fee is paid and the date a patentis issued. Therefore, the Office willpermit applicants to file a priority claimor certified priority document (with theprocessing fee set forth in § 1.17(i))between the date the issue fee is paidand the date a patent is issued. TheOffice will, however, merely place suchsubmission in the application file butwill not attempt to determine whetherthe applicant has met the conditions of35 U.S.C. 119(a)–(d) to make the priorityclaim nor include the priority claiminformation in the text of the patent. Insuch a situation (as is currently thesituation when a petition under § 1.55 isgranted), the patent will not contain thepriority claim information, and thepatentee may request a certificate ofcorrection under 35 U.S.C. 255 and§ 1.323 at which point a determinationof entitlement for such priority will bemade.

Section 1.56: Section 1.56 is proposedto be amended to add a new § 1.56(e) toprovide that in any continuation-in-partapplication, the duty under § 1.56includes the duty to disclose to theOffice all information known to theperson to be material to patentabilitywhich became available between thefiling date of the prior application andthe national or PCT international filingdate of the continuation-in-partapplication. Section 1.63(e) currentlyrequires that the oath or declaration ina continuation-in-part applicationacknowledge that the duty under § 1.56includes the duty to disclose to theOffice all information known to theperson to be material to patentability (asdefined in § 1.56(b)) which becameavailable between the filing date of theprior application and the national orPCT international filing date of thecontinuation-in-part application. Thus,the examiner must object to an oath ordeclaration in a continuation-in-partthat does not contain this statement. By

amending § 1.56 to expressly providethat the duty under § 1.56 includes thisduty, an acknowledgment of the duty ofdisclosure under § 1.56 is anacknowledgment of this duty in acontinuation-in-part application, and anexpress statement to that effect in theoath or declaration will no longer berequired.

Section 1.59: Section 1.59 is proposedto be amended to refer ‘‘the fee set forthin § 1.17(h)’’ for consistency with theproposed amendment to § 1.17(h) and(i). See discussion of the proposedamendment to § 1.17.

Section 1.63: Section 1.63 is proposedto be amended for clarity andsimplicity. Section 1.63(a) is proposedto be amended to set forth the oath ordeclaration requirements that arerequirements of 35 U.S.C. 115 (and thuscannot be waived by the Office pursuantto § 1.183). Specifically, § 1.63(a) isproposed to be amended to provide thatan oath or declaration filed under§ 1.51(b)(2) as a part of a nonprovisionalapplication must: (1) Be executed (i.e.,signed) in accordance with either § 1.66or § 1.68; (2) identify each inventor andcountry of citizenship of each inventor;and (3) state that the person making theoath or declaration believes the namedinventor or inventors to be the originaland first inventor or inventors of thesubject matter which is claimed and forwhich a patent is sought.

Section 1.63(b) is proposed to beamended to provide that in addition tomeeting the requirements of § 1.63(a),the oath or declaration must also: (1)Identify the application to which it isdirected; (2) state that the personmaking the oath or declaration hasreviewed and understands the contentsof the application, including the claims,as amended by any amendmentspecifically referred to in the oath ordeclaration; and (3) state that the personmaking the oath or declarationacknowledges the duty to disclose to theOffice all information known to theperson to be material to patentability asdefined in § 1.56. These requirementsare currently located at § 1.63(a)(2),(b)(1), and (b)(3).

Section 1.63(c) is proposed to providethat an applicant may provideidentifying information either in anapplication data sheet (§ 1.76) or in theoath or declaration. Permittingapplicants to provide such identifyinginformation in an application data sheet(rather than in the oath or declaration)should result in: (1) An increase in theuse of application data sheets; and (2) adecrease in the need for supplementaloaths or declarations (providing omittedinformation) for applications in which

an application data sheet wassubmitted.

Section 1.63(e) is proposed to beamended to eliminate the requirementthat an oath or declaration in acontinuation-in-part application statethat the person making the oath ordeclaration also acknowledge that theduty under § 1.56 includes the duty todisclose to the Office all informationknown to the person to be material topatentability (as defined in § 1.56(b))which became available between thefiling date of the prior application andthe national or PCT international filingdate of the continuation-in-partapplication. See discussion of theproposed amendment to § 1.56(e).

Section 1.64: Section 1.64 is proposedto be amended to also refer to anysupplemental oath or declaration(§ 1.67). In addition, § 1.64(b) isproposed to be amended to provide thatif the person making the oath ordeclaration is the legal representative,the oath or declaration shall state thatthe person is the legal representativeand shall also state the citizenship,residence and mailing address of thelegal representative.

Section 1.67: Section 1.67(a) isproposed to be amended to also refer to§ 1.162, and to provide that if theearlier-filed oath or declarationcomplied with § 1.63(a), the Office maypermit the supplemental oath ordeclaration to be made by fewer than allof the inventors or by an applicant otherthan the inventor.

Section 1.67(c) is proposed to bedeleted as unnecessary because itsimply reiterates other provisions of therules of practice. If the application wasaltered after the oath or declaration wassigned (except as permitted by§ 1.52(c)), § 1.52(c) requires asupplemental oath or declaration under§ 1.67. If the oath or declaration wassigned in blank (while incomplete),without review thereof by the personmaking the oath or declaration, orwithout review of the specification,including the claims, the oath ordeclaration does not meet therequirements of § 1.63. In this situation,§ 1.67(a) requires a supplemental oath ordeclaration.

Section 1.72: Section 1.72(a) isproposed to be amended to state‘‘[u]nless the title is supplied in anapplication data sheet (§ 1.76)’’ to clarifythat the title is not requested to be aheading on the first page of thespecification if supplied in anapplication data sheet. Section 1.72(b) isproposed to be amended to provide that‘‘[t]he abstract in an application filedunder 35 U.S.C. 111 may not exceed 150



words in length’’ to harmonize withPCT guidelines.

Section 1.76: A new § 1.76 isproposed to be added to provide for theinclusion of an application data sheet inan application. Section 1.76(a) isproposed to: (1) Explain that anapplication data sheet is a sheet or setof sheets containing bibliographicinformation concerning the associatedpatent application, which is arranged ina specified format; and (2) when anapplication data sheet is provided, theapplication data sheet becomes part ofthe application. While the use of anapplication data sheet is optional, theOffice would prefer its use to helpfacilitate the machine reading of thisimportant information. Entry of theinformation in this manner is moretimely and accurate than the currentpractice of presenting the informationon numerous other documents.Applicants benefit from the use ofapplication data sheets by beingprovided with more accurate and timelyfiling receipts, by reducing the timerequired to collect bibliographicinformation and by having suchinformation printed on the grantedpatents. The applicant also benefits byreceiving an official notice of the receiptof papers from the Office at an earlierstage of the processing.

Section 1.76(b) is proposed to providethat bibliographic data as used in§ 1.76(a) includes: (1) applicantinformation; (2) correspondenceinformation; (3) specified applicationinformation; (4) representativeinformation; (5) domestic priorityinformation; and (6) foreign priorityinformation. Section 1.76(b) as proposedalso reminds applicants that thecitizenship of each inventor must beprovided in the oath or declarationunder § 1.63 (as is required by 35 U.S.C.115) even if this information is providedin the application data sheet.

Applicant information includes thename, residence, mailing address, andcitizenship of each applicant (§ 1.41(b)).The name of each applicant mustinclude the family name, and at leastone given name without abbreviationtogether with any other given name orinitial. If the applicant is not aninventor, this information also includesthe applicant’s authority (§§ 1.42, 1.43and 1.47) to apply for the patent onbehalf of the inventor.

Correspondence information includesthe correspondence address, which maybe indicated by reference to a customernumber, to which correspondence is tobe directed (see § 1.33(a)).

Application information includes thetitle of the invention, the total numberof drawing sheets, whether the drawings

are formal, any docket number assignedto the application, the type (e.g., utility,plant, design, reissue utility,provisional) of application. Applicationinformation also indicates whether theapplication discloses any significantpart of the subject matter of anapplication under a secrecy orderpursuant to § 5.2 of this chapter (see§ 5.2(c)).

Representative information includesthe registration number of eachpractitioner, or the customer number,appointed with a power of attorney orauthorization of agent in theapplication. Section 1.76(b)(4) isproposed to state that providing thisinformation in the application datasheet does not constitute a power ofattorney or authorization of agent in theapplication (see § 1.34(b)). This isbecause the Office does not expect theapplication data sheet to be executed(signed) by the party (applicant orassignee) who may appoint a power ofattorney or authorization of agent in theapplication.

Domestic priority informationincludes the application number (seriescode and serial number), the filing date,the status (including patent number ifavailable), and relationship of eachapplication for which a benefit isclaimed under 35 U.S.C. 119(e), 120,121, or 365(c). Providing thisinformation in the application datasheet constitutes the specific referencerequired by 35 U.S.C. 119(e) or 120.While the rules of practice (§ 1.78(a)(2)or § 1.78(a)(4)) require that this claim orspecific reference be in the first line ofthe specification the patent statuterequires that a claim to the benefit of(specific reference to) a provisional (35U.S.C. 119(e)(1)) or nonprovisional (35U.S.C. 120) be in the application. Sincethe application data sheet (if provided)is considered part of the application, thespecific reference to an earlier filedprovisional or nonprovisionalapplication in the application data sheetmeets the ‘‘specific reference’’requirement of 35 U.S.C. 119(e)(1) or120.

Foreign priority information includesthe application number, country, andfiling date of each foreign applicationfor which priority is claimed, as well asany foreign application having a filingdate before that of the application forwhich priority is claimed. Providingthis information in the application datasheet constitutes the claim for priorityas required by 35 U.S.C. 119(b) and§ 1.55(a). The patent statute (35 U.S.C.119(b)) does not require that a claim tothe benefit of a prior foreign applicationtake any particular form.

Section 1.76(c) as proposed indicatesthat inconsistencies between theinformation in the application datasheet (if provided) and the oath ordeclaration under § 1.63 will beresolved in favor of the application datasheet. This is because the applicationdata sheet (and not the oath ordeclaration) is intended as the means bywhich applicants will provideinformation to the Office. Section1.76(c) is also proposed to provide thata supplemental application data sheetmay be submitted to correct or updateinformation provided in a previousapplication data sheet.

Section 1.77: Section 1.77(a) isproposed to be separated into sections1.77(a) and 1.77(b). New § 1.77(a) wouldlist the order of the papers in a utilitypatent application, including theproposed application data sheet (see§ 1.76). New § 1.77(b) would list theorder of the sections in the specificationof a utility patent application. Current§ 1.77(b) is proposed to be redesignated1.77(c).

Section 1.78: Section 1.78(a)(2) isproposed to be amended to provide thatthe specification must contain or beamended to contain a specific referencerequired by 35 U.S.C. 120 in the firstsentence following the title, unless thereference is included in an applicationdata sheet. Section 1.78(a)(4) isproposed to be amended to provide thatthe specification must contain or beamended to contain a specific referencerequired by 35 U.S.C. 119(e)(1) in thefirst sentence following the title, unlessthe reference is included in anapplication data sheet. See discussion ofproposed § 1.76(b)(5).

Section 1.78(c) is proposed to beamended for consistency with § 1.110and for clarity.

Section 1.84: Section 1.84 is proposedto be amended to delete somerequirements that are more stringentthan the requirements of the PCT, whileretaining the provisions related toacceptance of color drawings/photographs which are, at this time,more lenient.

The Office is proposing to delete thepetition requirements in § 1.84(a)(2) and§ 1.84(b)(1) and the requirement forthree copies of black and whitephotographs. This change would make§ 1.84 consistent with current Officepractice. See Interim Waiver of 37 CFR§ 1.84(b)(1) for Petitions to Accept Blackand White Photographs and AdvanceNotice of Change to M.P.E.P. § 608.02,Notice, 1213 Off. Gaz. Pat. Office 108(August 4, 1998); and Interim Waiver of37 CFR 1.84(b)(1) for Petitions to AcceptBlack and White Photographs Filed withonly One Set of Photographs, Notice,



1211 Off. Gaz. Pat. Office 34 (June 9,1998). In addition, paragraphs (d), (h),(i), (j), (k)(1) and (3), (m), (n), (p), (r), (s),and (x) of § 1.84 are proposed to bedeleted for simplification. Theseparagraphs describe characteristics ofpatent drawings which are desirablebecause they assist in clearlycommunicating the disclosed invention,but which are not necessary for thereproduction of drawings. Therequirements set forth in paragraphs (d),(h), (i), (j), (k)(l) and (3), (m), (n), (p), (r),(s), and (x) of § 1.84 will continue to bedescribed in the MPEP and/orpublications such as the Guide for thePreparation of Patent Drawings.

Section 1.84(g) is proposed to bechanged to 1.84(f). In addition, thedimensions of sight on 21.6 cm by 27.9cm (81⁄2 by 11 inch) drawing sheets areproposed to be changed 17.0 cm by 24.4cm (63⁄4 by 95⁄8 inches) to standardizethe sight with that for A4 paper.

In Topic 5 of the Advance Notice theOffice proposed to harmonize patentdrawing standards with those of thePCT. The Office received a number ofcomments. The majority of thecomments welcomed a single standardfor patent drawings in PCT and UnitedStates patent applications so long asapplicants do not lose their ability tofile color drawings/photographs or touse 81⁄2 by 11 paper. Some expressedconfusion about the exact requirementsof the PCT and its regulations.Furthermore, many commented thatdrawing standards should be enforcedin the same manner, and that drawingsshould not be objected to in the nationalstage if they were not objected to in theinternational stage. In this vein, severalargued that only the patent examinersshould be allowed to review the patentdrawings. If the examiners couldunderstand the invention from thedrawings, no draftsperson should bepermitted to make ‘‘petty objections’’unrelated to how well the invention isdisclosed in the drawings. On the otherhand, several people commented thatthe standards for PCT applications aretoo low, since many PCT applicationsare published with illegible drawings ordrawings that do not adequatelycommunicate the invention. Severalobserved that the PCT rules do notpermit color drawings or photographsand stated that the requirements of thetwo systems should be the same. Othersobserved that the PCT rules essentiallyrequire formal drawings on filing, whichis contrary to U.S. practice, and arguedthat such a policy would beunnecessarily expensive to applicants.

Careful consideration of thecomments and the business practice ofdrawing review has led the Office to

conclude that, in general, drawingsshould only be objected to by the Officeif they cannot be reproduced or there isan error in the drawings. The Officeshould accept drawings that would beacceptable under the PCT rules, butshould not copy PCT rules solely for thesake of uniformity. A proper applicationof a low standard for drawing reviewwill result in fewer drawings beingobjected to and fewer corrected orformal drawings being filed afterallowance of a patent application. Thisshould reduce delays during theprinting cycle (during which time theOffice waits for corrected or formaldrawings to be filed). Applicants whosubmit informal drawings on filing willbe unlikely to encounter adraftsperson’s objection because fewdrawings will fail to meet the reducedstandards. Any formal drawings filedafter allowance which were not requiredby the Office, however, are unlikely tobe included in the printed patentbecause the printing process will havebegun before payment of the issue feeand the formal drawings are unlikely tocatch up to the application file in timeto be included in the printed patent.

Patents printed with high qualitydrawings look better and should beeasier to understand. Applicantsinterested in having their patentsprinted with good quality drawingsshould be motivated by their owninterests to submit good qualitydrawings. However, the Office shouldnot spend resources to insist upon high-quality drawings when lesser qualitydrawings would suffice to communicatethe invention and to meet the printer’srequirements. Accordingly, if applicantssubmit drawings which are of inferiorquality, but acceptable to the Office,applicants should not be surprisedwhen a patent issues with those verysame drawings.

Section 1.84 is also proposed toprovide for a fee for processing andprinting patents with color drawings orphotographs in color rather than inblack and white. The petition fee setforth in § 1.84(a)(2)(i) is proposed to bedeleted and a fee commensurate withthe Office costs of handling and printingcolor photographs will be chargedinstead.

Many comments were receivedwelcoming printing of patents in color,and stating that applicants would bewilling to pay any required fees for theirpatent to be printed in color.

When filing international applicationsunder the PCT, applicants mustremember to consult the PCT and itsregulations regarding requirements ofdrawings, especially the provisionsrelated to amendment or correction of

drawings. While color drawings arepermitted in U.S. patent applications,submission of color drawings ininternational applications is notpermitted and may cause difficulties ininternational processing which cannotbe overcome. Black and white drawingssubmitted after the international filingdate to overcome objections to colordrawings may be refused if they do notcomply with the requirements of PCTRule 91.1, which could result insignificant loss to applicants.

Section 1.85: Section 1.85 is proposedto be amended to make the period forfiling corrected or formal drawings inresponse to a Notice of Allowability anon-extendable period.

In Topic 7 of the Advance Notice theOffice proposed to reduce the time forfiling corrected or formal drawings afterthe mailing date of the ‘‘Notice ofAllowability’’ from three months to onemonth. In response, many commentswere received which explained that onemonth was too short of a period of timein which to make the necessary changesto the drawings. In addition, manystated that having two different timeperiods running against the applicantmakes docketing of the required repliestoo complicated. Several commentsreceived indicated that corrected orformal drawings should be required atthe same time as the issue fee, with noopportunity for the drawings to be filedlater. Others indicated that, while onemonth was too short of a period of time,two months would be adequate.

After consideration of the commentsand the Office’s business goal ofdecreasing cycle time for all inventions,the Office is proposing to amend§ 1.85(c) to provide that corrected orformal drawings must be filed withinthree months of the date of mailing ofthe ‘‘Notice of Allowability’’ requiringsuch drawings, and that no extensionsof time under § 1.136(a) or (b) will bepermitted. Refusing to permit anextension of time when formal orcorrected drawings cannot be filedwithin the three-month period andsufficient cause exists for an extensionmay appear to be harsh. A strong policyis considered necessary, however, toensure that the drawings are filedwithin the set period. The Office hasalso considered that many applicantsare in the habit of filing formal orcorrected drawings with an extension oftime and may, out of habit andignorance of the rule change, continueto do so. These applicants will have tofile a petition to revive under § 1.137(b)as the failure to timely file any formaldrawings that were required will causethe application to go abandoned.



The Office is taking positive steps tomake it easier for applicants to submitdrawings which will be approved. Seethe changes proposed in § 1.84. Thus,the instances where formal drawingswill be required when the case isallowable will be reduced as moredrawings will be approved as submitted.

If the amendment to § 1.85 is adopted,the time period for filing any requiredsupplemental oath or declaration incompliance with § 1.63 will be set to bethe same non-extendable time period ofthree months from the date of mailingof the Notice of Allowability requiringthe supplemental oath or declaration.

Section 1.91: Section 1.91(a)(3)(i) isproposed to be amended to refer to‘‘[t]he fee set forth in § 1.17(h)’’ forconsistency with the changes to§ 1.17(h) and § 1.17(i). See discussion ofchanges to § 1.17(h) and § 1.17(i).

Section 1.96: The Office indicated inthe Advance Notice that the submissionof computer program listings onmicrofiche placed a burden onapplicants and the Office, and that itwas considering changes to § 1.96 topermit machine readable computerprogram listings to be submitted onelectronic media in lieu of microfiche.See Changes to Implement the PatentBusiness Goals, 63 FR at 53510–12,1215 Off. Gaz. Pat. Office at 99–100.

Section 1.96 is proposed to beamended to provide for voluminousprogram listings to be submitted onarchival electronic media instead ofmicrofiche. Section 1.96(b) is proposedto be amended to limit computerprogram listings that may be submittedas drawings or part of the specificationto computer program listings that arecontained on one sheet.

Under § 1.96 as proposed, anycomputer program listing may, and anycomputer program listing that would becontained on more than one sheet must,be submitted as a computer programlisting appendix pursuant to § 1.96(c)(subject to the ‘‘transitional’’ practicediscussed below).

Section 1.96(c) is specificallyproposed to provide that a ‘‘computerprogram listing appendix’’ be submittedon a Compact Disk-Read Only Memory(CD–ROM) or Compact Disk-Recordable(CD–R). A CD–ROM is the only practicalelectronic medium of archival qualityunder the current standards of theNational Archives and RecordsAdministration (NARA). See 36 CFR1228.188(c) and (d) and 1234.30. TheOffice considers CD–R to be anelectronic medium having an archivalquality equivalent to the archivalquality of CD–ROM. The information sosubmitted will be considered a‘‘computer program listing appendix’’

(rather than a microfiche appendix).Section 1.96(c) will continue to requirea reference at the beginning of thespecification as itemized in § 1.77(b)(4).As with a microfiche appendix, thecontents of the ‘‘computer programlisting appendix’’ on a CD–ROM or CD–R will not be printed with the publishedpatent, but will be available at the Officeon a medium to be specified by theOffice. The contents of a ‘‘computerprogram listing appendix’’ on a CD–ROM or CD–R may not be amendedpursuant to § 1.121, but must besubmitted on a substitute CD–ROM orCD–R. Section 1.96(c) does not apply tointernational applications filed in theUnited States Receiving Office.

Section 1.96(c)(1) is proposed toprovide that the availability of thecomputer program will be directlyanalogous to that of the microfiche. TheOffice will make the contents availablefor inspection, for example at electronicworkstations in the Public Search Room.If needed, multiple CD–ROMs or CD–Rsmay be used for the submissionspertaining to a single patent application,but each application with an electronicmedium appendix must be suppliedwith its own copy of the medium ormedia. Section 1.96(c)(2) is proposed toprovide submission requirements thatrefer to the relevant NARA standards in36 CFR Part 1228 for submissions ofGovernment electronic records toNARA. Section 1.96(c)(2) is alsoproposed to provide that a CD–ROM orCD–R ‘‘computer program listingappendix’’ must be labeled with thefollowing information: (1) The name ofeach inventor (if known); (2) title of theinvention; and (3) the docket numberused by the person filing the applicationto identify the application (ifapplicable).

Even after adoption of this proposedchange to § 1.96, the Office willcontinue to accept a computer programlisting that complies with current § 1.96(i.e., a computer program listingcontained on ten or fewer sheets asdrawings or part of the specification, ora ‘‘computer program listing appendix’’on microfiche) for some period of time(e.g., two years) that will be specified inany final rule notice adopting thisproposed change to § 1.96. Should theseprovisions be adopted, conformingchanges may be made in the regulationsto accommodate internationalapplications in the national stage.

Comments: The comments (almostwithout exception) were supportive ofthis proposal. Comments specificallyindicated that this proposal was ‘‘longoverdue,’’ and that the proposal shouldinclude provisional applications andother technologies including chemical

and manufacturing processes requiringprecise computer control. Thecomments provided advice includingthe concepts of safeguarding theinformation from alteration, of makingthe public access and examiner accesseasy, and of assuring the submissionsare readable. The only negativecomment was an expression of disbeliefthat the Office was equipped to handleelectronic media submissions.

Response: The Office is proposingchanges to § 1.96 to provide forvoluminous program listings to besubmitted on archival electronic mediainstead of microfiche. The effective dateof the proposed change will be linked tothe development and deployment ofelectronic systems at the Office tocapture, store and retrieve informationsubmitted on archival electronic mediain a manner to assure the integrity andauthenticity of the information, andprovide its display as needed for theOffice, the patentee (and applicants),and the public.

The proposed change to § 1.96 and§ 1.821 et seq. (discussed below)contemplated for computer programlistings and sequence listings wouldeliminate the need for submissions ofhard to handle and reproducemicrofiche computer program listingsand voluminous paper sequencelistings. To focus specifically on theOffice’s difficult paper handlingproblem, and to simplify this project soit can be deployed in a short time span,only the computer program listings andthe nucleotide and/or amino acidsequences would be accepted inmachine readable format.

Relationship to Office automationplans: These changes being proposedare understood to be the initial stepstowards solutions to difficult Officepaper-handling problems. The Office isplanning for full electronic submissionof applications and related documentsby fiscal year 2003. The changesproposed in this notice are an initialstep in that direction, permitting certainapplication and related material to besubmitted on an acceptable archivalmedium.

Sections 1.97 and 1.98: The Officeproposes to go forward, at the presenttime, with only one aspect of the planfor information disclosure statement(IDS) revision that was set forth in theAdvance Notice: the proposal to requirethat an IDS include a legible copy ofeach cited pending U.S. application.The proposed IDS rules are also beingrevised for consistency and grammar,and to tie up a number of loose ends,as will be discussed below.

Other than the proposed requirementfor a copy of each cited U.S. application,



the IDS proposals as set forth in Topics9 and 10 of the Advance Notice havebeen withdrawn. Accordingly, there isno proposal at this time for a statementof personal review nor for a uniquedescription as were called for in theAdvance Notice, and the amount ofcitations that may be submitted is notpresently proposed to be limited. TheOffice issued a notice of hearing andrequest for public comments to obtainviews of the public on issues associatedwith the identification andconsideration of prior art duringpatentability determinations. See Noticeof Public Hearing and Request forComments on Issues Related to theIdentification of Prior Art During theExamination of a Patent Application,Notice of Hearing and Request forPublic Comments, 64 FR 28803 (May 27,1999), 1223 Off. Gaz. Pat. Office 91(June 15, 1999). Pursuant to that notice,the Office held public hearings on June28th and July 14th of 1999 on the issues.These prior art issues are related to thechanges presently being considered bythe Office to impose requirements/limitson IDS submissions. Thus, it would bepremature to go forward with acomprehensive new IDS alternativeuntil the results of the hearings andcomments submitted in response to thenotice have been appropriatelyevaluated. It is contemplated that anynew IDS alternatives will be advancedin any rulemaking notice which mayresult from the evaluation of the resultsof the public hearings and commentssubmitted in response to the notice.

The Office recently issued guidelinesfor reviewing requests forreexaminations and ongoingreexaminations for compliance with Inre Portola Packaging, Inc., 110 F.3d 786,42 USPQ2d 1295 (Fed. Cir. 1997). SeeGuidelines for Reexamination of Casesin View of In re Portola Packaging, Inc.,110 F.3d 786, 42 USPQ2d 1295 (Fed.Cir. 1997), Notice, 64 FR 15346 (March31, 1999), 1223 Off. Gaz. Pat. Office 124(June 22, 1999). These guidelines arepertinent to the consideration given IDScitations, stating:

Where the IDS citations are submitted butnot described, the examiner is onlyresponsible for cursorily reviewing thereferences. The initials of the examiner onthe PTOL–1449 indicate only that degree ofreview unless the reference is either appliedagainst the claims, or discussed by theexaminer as pertinent art of interest, in asubsequent office action.

See Guidelines for Reexamination ofCases in View of In re PortolaPackaging, Inc., 110 F.3d 786, 42USPQ2d 1295 (Fed. Cir. 1997), 64 FR at15347, 1223 Off. Gaz. Pat. Office at 125(response to comment 6).

The public should thus be aware thatfull consideration of all citationssubmitted in compliance with §§ 1.97and 1.98 is not required on the part ofthe examiner. The examiner performs acursory review of each IDS citation tothe extent that he/she needs in order todetermine whether he/she will evaluatethe citation further. If the cursoryreview reveals the citation not to beuseful, the examiner will simply stoplooking at it. The examiner will beunderstood to have provided fullconsideration only where the examinerapplies the IDS citation as a referenceagainst the claims in the applicationbeing examined, or otherwise deems thecitation useful to the examination anddiscusses that use. Further, the applyingof the IDS citation as a reference, or thediscussion of the use of the citation(where the citation is not applied as areference), must be in writing:

[T]he Office cannot presume that a prior artreference was previously relied upon to rejector discussed in a prior PTO proceeding ifthere is no basis in the written record to soconclude other than the examiner’s initials ora check mark on a PTO 1449 form, orequivalent, submitted with an informationdisclosure statement. Thus, any discussion ofprior art must appear on the record of a priorrelated PTO proceeding.

See Guidelines for Reexamination ofCases in View of In re PortolaPackaging, Inc., 110 F.3d 786, 42USPQ2d 1295 (Fed. Cir. 1997), 64 FR at15349, 1223 Off. Gaz. Pat. Office at 127(endnote 7).

It is also noted that the Office intendsto issue a notice dealing with printingof IDS citations on the face of the patent.Currently, all IDS citations which arelisted on a PTO–1449 form, or anequivalent of the PTO–1449, and areinitialed by the examiner, are printed onthe face of the patent together with artcited by the examiner. In the notice, thepublic would be informed that IDScitations printed on the face of thepatent will be distinguished fromcitations made by the examiner, using aseparate printing field, markings, orsome other means.

Specifics of the contemplated IDSrevisions: The specifics of thecontemplated revisions to § 1.97 and§ 1.98 will now be discussed as to theone Advance Notice proposed changethat is being retained, as to newlyadvanced changes, and as to AdvanceNotice proposed changes that are beingdropped. The discussion is presented inthe following twelve parts whichseparately address identifiable portionsof the subject matter: (1) Deletion ofunassociated text; (2) items cited incontinued prosecution applications(CPAs); (3) filing the IDS before the mail

date of final Office actions; (4) requiredfee and statement for IDS submissionmade after close of prosecution; (5)newly cited item in foreign office mustbe cited for the first time; (6) IDS thatdoes not comply with either § 1.97 or§ 1.98; (7) copies of cited U.S.applications required; (8) how toidentify a cited U.S. application; (9)citation was previously made in parentapplication; (10) grammar andconsistency; (11) aspects of Topic 9 inthe Advance Notice not being pursuedin this notice; and (12) commentsgenerally directed at revision of the IDSrules.

Part (1) Deletion of Unassociated TextThe phrase ‘‘whichever event occurs

last’’ appears at the end of paragraph(b)(3) of § 1.97, and thus it physicallyappears to apply only to paragraph(b)(3). In reality, ‘‘whichever eventoccurs last’’ should be associated witheach of paragraphs (b)(1), (b)(2) and(b)(3). Accordingly, it is proposed todelete ‘‘whichever event occurs last’’from paragraph (b)(3), and to insert‘‘within any one of the following timeperiods’’ in paragraph (b). This wouldeliminate the unassociated text‘‘whichever event occurs last’’ fromparagraph (b)(3), while, at the sametime, making it clear that the IDS willbe entered if it is filed within any of thetime periods of paragraphs (b)(1), (b)(2)or (b)(3). Additionally, paragraph (c) of§ 1.97 is proposed to be revised, inconformance with paragraph (b), todelete ‘‘whichever occurs first.’’

Part (2) Items Cited in ContinuedProsecution Applications (CPAs)

Section 1.97(b)(1) is proposed to beamended to insert ‘‘other than anapplication under § 1.53(d)’’ toeliminate the three-month window forfiling an IDS in a CPA. Because of thestreamlined processing for CPAs, it isexpected that the examiner will issue anaction on the merits before three monthsfrom the filing date. Under the currentrule, should an examiner issue an actionon the merits prior to three months fromthe filing date and an IDS is submittedafter the Office action is mailed butwithin the three-month window, theexaminer must redo the action toconsider the IDS. A CPA is a continuingapplication, and, thus, applicant shouldhave had ample opportunity to file anIDS. In addition, as pointed out below,it is being proposed to revise § 1.103 toprovide for a request of a three-monthsuspension of action upon filing of aCPA; thus, in an unusual instancewhere a need to file an IDS newly arises,applicant can request the three-monthsuspension based upon that need. In



view of the above, it is deemedappropriate to require that any IDS befiled before filing the CPA, orconcurrently with the filing of the CPA.

Part (3) Filing the IDS Before the MailDate of Final Office Actions

Paragraph (c) of § 1.97 would berevised to include, in addition to a finalaction under § 1.113 and a notice ofallowance under § 1.311, other Officeactions which close prosecution in theapplication. This would typically occurwhen an Office action under Ex parteQuayle, 1935 Dec. Comm’r Pat. 11(1935), is issued. No reason is seen forincluding only two of the types ofactions which close prosecution (thatunder § 1.113, and that under § 1.311),while not including other types.

Part (4) Required Fee and Statement forIDS Submission Made After Close ofProsecution:

Paragraph(d)(3) of § 1.97 would berevised to delete reference to the fee asa petition fee under § 1.17(i) and insteadmake reference to the fee as an IDS feeunder § 1.17(p). There is no reason forthe reduced fee of $130 that is currentlyrecited by paragraph (d), as opposed tothe larger $240 IDS fee set forth inparagraph (c). On the contrary, theparagraph (d) submission is made laterin the prosecution than that ofparagraph (c), and thus interrupts theprocess at least as much as theparagraph (c) submission. Therefore, thefee for the paragraph (d) submissionshould be at least as much the $240 IDSfee required for the paragraph (c)submission.

In addition, paragraph(d)(2) of § 1.97has been deleted in its entirety, toremove all reference to the filing of apetition. A petition unduly complicatesthe matter, while there is really no issueto be decided other than the entry of theIDS, which issue is ordinarily decidedby the patent examiner. As it iscontemplated to be amended, paragraph(d) of § 1.97 would simply require (foran IDS submitted after the close ofprosecution and before payment of theissue fee) the combination of the IDS feeand a statement as is specified inparagraph (e) of § 1.97.

Part (5) Newly Cited Item in Foreignoffice Must Be Cited for the First Time

Section 1.97(e)(1) is proposed to beamended to specify that an item firstcited in a communication from a foreignpatent office in a counterpart foreignapplication not more than three monthsprior to the filing of the statement isentitled to special consideration forentry into the record. An item first citedby a foreign patent office (for example)

a year before in a communication fromthat foreign patent office, which item isonce again cited by another foreignpatent office within three months priorto the filing of the statement in theOffice, is not entitled to specialconsideration for entry, since applicantwas aware of the item a year ago, yet didnot submit that item.

Part (6) IDS That Does Not Comply WithEither § 1.97 or § 1.98

Paragraph (i) of § 1.97 is proposed forrevision to delete ‘‘filed before the grantof a patent.’’ This phrase is surplusagesince there can be no informationdisclosure statement after the grant ofthe patent. A submission of informationitems after the patent grant is a ‘‘priorart citation’’ which is made, and treated,under § 501.

Paragraph (i) of § 1.97 would also berevised to make it a little clearer as towhat sections must be complied with,and to change the paragraph (i) pluralrecitation of information disclosurestatements to a singular recitation,which would be in conformance withthe rest of § 1.97.

Part (7) Copies of Cited U.S.Applications Required

The Office proposes to go forward, atthe present time, with one aspect of theAdvance Notice IDS proposal. Section1.98(a)(2) would be revised to requirethat an IDS include a legible copy ofeach cited pending U.S. application.Thus, the current exception to therequirement for supplying citationcopies set forth in § 1.98(a)(2)(ii) forpending U.S. applications would beeliminated.

The Office noted, in the AdvanceNotice, its concern that current § 1.98does not require applicant to supplycopies of U.S. application citations. Itwas pointed out that there is a realburden on the examiner to locate andcopy one or more pending applications,thus delaying the examination of theapplication being examined (in whichthe U.S. application citation is made).Further, copying a cited application hasthe potential for interfering with theprocessing and examination of the citedapplication itself. Accordingly,§ 1.98(a)(2) is proposed for revision torequire, for each U.S. applicationcitation listed, that applicant submiteither a copy of the applicationspecification, including the claims, andany drawing of the application, or as aminimum, the portion of the applicationwhich caused it to be listed, includingany claims directed to the portionwhich caused it to be listed. Thisproposed revision would, additionally,be a benefit to the public since the copy

of the application would be readilyavailable upon issuance of theapplication as a patent.

Comments Received in Response tothe Advance Notice: In response to theAdvance Notice, a significant number ofcomments were in favor of adopting therequirement for copies of U.S.applications, and indicated that thereshould be no problem with requiringsubmission of copies. Comments notedthat the submission of copies of citedapplications will speed up theapplication process. It will decrease thetime burden on examiners in obtainingand copying such applications. It willalso avoid interruption of theexamination of the application beingcited, as otherwise, papers in theoriginal file of the cited applicationmust be removed and copied in order tobe reviewed. Even further, it was notedthat this revision of the rule shouldreduce risks of application papers in thecited cases being misplaced or lost.

A number of comments wereconcerned that submission of copies ofmultiple U.S. patent applications in anIDS will overwhelm the Office with anincreased volume of paper. Somecomments opposed the requirement forcopies of U.S. patent applications on thegrounds that it will place a difficultburden on counsel/applicants toprovide the Office with a copy of eachcited U.S. application. An example wasgiven, where the client has an extensivepatent portfolio distributed amongseveral patent firms (e.g., the result oflicensing agreements or other conflictsof interest which require differentcounsel to be responsible for differentcases in a portfolio). In such a scenario,counsel may not be able to receive/viewcopies of related applications due toconstraints imposed by applicableethical rules and thus may not be ableto supply copies. Another example wasgiven, where a practitioner may beaware that a pending application isrelevant and may not have access to thatpending application, since it is that ofanother party.

With respect to these grounds foropposition to the requirement, it shouldinitially be noted that citation of anotherapplication in an IDS is relatively rareand, as such, should not significantlyincrease the volume of paper the Officemust deal with. Also, in those fewsituations where U.S. applications arecited and counsel cannot provide copiesof the applications, a petition could besubmitted for waiver of the rules, andthe petition would be decided on a case-by-case basis. In addition, if apractitioner is not permitted, due toethical considerations, to reviewmaterial that may be of significance in



the prosecution of a particularapplication, it is not clear why thepractitioner would be involved in theprosecution of that application. As tothe comment relating to lack of accessby practitioner, such lack of access mayresult from the fact that the applicationto be cited is that of a third party andis not available to the public, whichincludes the practitioner or thepractitioner’s client; the patent rulesshould not be a means whereby theOffice will provide practitioner with acopy of a pending U.S. applicationmerely because the practitioner or theclient thereof has come across theapplication number.

It was suggested in the comments thatreview of the Office file is better thanreview of a supplied copy; i.e., it is moreuseful for the examiner to review theOffice file, which is morecomprehensive, than to review thecopies that applicant would send. As tothis concern, the benefits of eliminatingthe Office’s burden of obtaining andcopying such applications, as well asavoiding interruption of examination ofthe cases being cited, are deemed to begreater than the possible benefitassociated with the review of the Officefile. If the submitted copy of a cited U.S.patent application is found by theexaminer to be of sufficient relevancefor further review of the application, atthat point in time, the examiner canexpend the extra effort to obtain andreview the file. On the other hand, forthe majority of the cited applicationsthat are not worthy of looking intofurther, this extra expenditure of timeand effort will be saved.

The comments further urged that if acited U.S. application supplied with anIDS is later abandoned, a petition toexpunge the copy of the citedapplication must be submitted toremove the application from the file,and the Office would then need toconsider if the U.S. application isimmaterial to patentability of theinvention such that it can be expunged(see MPEP 724.05). This concern isnoted; however, it should be theexception rather than the rule. The timeexpended in deciding the relatively fewpetitions to expunge that are filedshould more than be counterbalancedby the reduction of the burden to obtainand copy applications and theavoidance of interruption ofexamination of the application beingcited. In addition, even under thecurrent system where application-citation copies are not required, apetition to expunge is still needed toexpunge the listed application number,in cases where the content of thatapplication citation is sufficiently

identified in the record. Thus, theincrease in petitions to expunge(generated by the proposal) should bevery small indeed.

It was suggested that the examiner’stime in obtaining U.S. application filescould be saved by providing clericalsupport in the groups, which wouldfunction to assist the examiner withobtaining the cited application files.This, however, would be a large drainon Office resources, which are limited,and would still result in undesirableinterruptions of examination of theapplication being cited.

It was suggested that, instead ofrequiring copies of all cited applicationswith the IDS, the Office should reservethe right to later request copies fromapplicant where specific applicationfiles are not easily available. As to thissuggestion, it is first noted that it wouldnot at all reduce the time that the citedapplication would be away from theexaminer of the cited application, andthus does not deal with the problem ofinterruption of the examination of theapplication being cited. In addition,making a requirement from applicant forthe application after the IDS is received(for difficult-to-obtain cases) slows theexamination process since the examinermust wait for the copy, while if the copywere submitted with the IDS, theexaminer could immediately begin theexamination. Furthermore, a largeexpenditure of time would have beenmade in finding out that the applicationfile is not easily available. Even after theapplication is obtained and reviewed, itis, at times, found that some portion ismissing. At that time, the effort wouldalready have been expended, and onlythen would the copy of the applicationfirst be required from applicant.

Part (8) How To Identify a Cited U.S.Application

Section 1.98(b) is proposed to beamended to require that each listed U.S.application to be identified by theinventors, application number and filingdate.

Part (9) Citation Was Previously Made inParent Application

Paragraph (d) of § 1.98 is proposed tobe revised to make it clear that the meresubmission of the citation in the parentapplication (by applicant) is not enoughto take advantage of paragraph (d) whensubmitting the citation in the ‘‘child’’application. A copy of the citation musthave been submitted in the parent, andthe submission of the citation made inthe parent must have complied with§ 1.97, except for an application filedunder § 1.53(d).

A situation might arise whereapplicant would establish continuitywith an existing application havinglisted U.S. applications for which copieswere not supplied (under the currentpractice, i.e., before the changesproposed in this notice would go intoeffect), and applicant would therebytake advantage of paragraph (d) of § 1.98to have the cited applications reviewedin the newly filed ‘‘continuation’’ (i.e.,filed after the changes proposed in thisnotice would go into effect) withoutsubmitting copies. To deal with thispossibility, paragraph (d) of § 1.98would be revised to require that wherethe cited U.S. application (the listedinformation) was not cited ‘‘by * * *the Office’’ (i.e., not cited by theexaminer in the parent), the informationsubmission made in the priorapplication must have been incompliance with paragraphs (a) through(c) of § 1.98 as they are drafted in thisnotice. In other words, if the copy of theapplication papers (for the citedapplication) was not present in theparent, it must now be submitted in thecontinuation.

It might be argued that because a copyof the citation was submitted in theparent, paragraph (d) is satisfied eventhough the submission of the citationmade in the parent did not comply with§ 1.97. Paragraph (d) of § 1.98 asproposed for revision deals with thisargument.

Part (10) Grammar and ConsistencyAll changes which are proposed in

§§ 1.97 and 1.98 other than thoseexplicitly identified above would bemade for grammar and consistencywithin the sections. This includes, forexample, deleting the last sentence of§ 1.98(c) and inserting it as the lastsentence of § 1.98(a)(3) where it moreappropriately belongs.

Part (11) Aspects of Topic 9 in theAdvance Notice Not Being PursuedFurther

Statement of Personal Review: In theAdvance Notice, it was proposed thatthe IDS submitter be required to statethat he/she personally reviewed eachsubmitted IDS citation to determinewhether or not that citation is relevantto the claimed invention(s) and isappropriate to cite to the Office in theIDS. This statement of personal reviewwould have to be made by a registeredpractitioner (where applicant isrepresented by a practitioner), or by atleast one of the inventors (whereapplicant is not represented).

A large majority of the comments (inresponse to the Advance Notice)opposed requiring the statement of



personal review as proposed in theAdvance Notice. Opposition was basedupon the following: (1) The requiredstatement of personal review asproposed in the Advance Notice wouldgreatly increase prosecution costs; (2)the impact of the cost burden imposedwould be extremely hard on smallentities and independent inventors, andmay be contrary to the Office’sIndependent Inventor Initiative; (3) theproposed review by the practitioner(where applicant is represented) willresult in a duplication of the priorefforts of inventors, in-house counsel(not representing the inventor before theOffice), or foreign associates whoinitially provided the information (thepractitioner must ‘‘second guess’’ theinventor, etc. as to whether the citationis relevant and how it is relevant; (4) theproposed practitioner review wouldprovide new grounds for allegations ofinequitable conduct (whether thesubjective requirements of the personalreview statement were complied with),and the possibility of malpractice as tothe review conducted; (5) the statementof review is already inherent in any IDS(§ 10.18(b)(2), § 1.56), and an explicitstatement is not needed; (6) theproposed practitioner review wouldraise problems as to attorney-clientrelations, e.g., conflict of interest, andpotentially a breach of attorney-clientprivilege as to the review of thedocuments made; and (7) the statementof personal review would not beeffective (it will not prevent marginallyrelated and unrelated citations frombeing submitted), since one could makea cursory personal review of a citation,reach no decision, and simply submitthe citation, with minimal comment.

There was some limited support foradoption of the proposal requiring astatement of personal review (at least inpart); however, a substantial majority ofthe comments expressed opposition tothe statement of personal review. TheOffice has taken note of the duplicationof review effort, the potential increasedcosts, the subjectivity of the statement,the resulting potential for charges ofinequitable conduct, and the conflict-of-interest problems that could be broughtabout by going forward with theproposed requirement for a statement ofpersonal review. Accordingly, adecision has been made to not goforward with the requirement for astatement of personal review at thistime.

Citations To Be Uniquely Described:The Advance Notice proposed thatapplicant be required to compare eachof the citations to each of theindependent claims, or specificdependent claim(s), in a meaningful

way unique to each citation. Thedescription of each citation would haveto point out why applicant believes thecitation to be unique in its teaching/showing relative to the claimedinvention(s). Description would not berequired for any ten citations, and forcitations in a corresponding applicationby a foreign patent office, PCTinternational searching authority, orPCT international preliminaryexamining authority, provided thesearch report or office action in theEnglish language is also submitted.

The comments in opposition to theunique description proposal were bothnumerous and varied as to the reasonsfor opposition. Reasons for oppositionare summarized: (1) A potential foradverse future litigation implications,and for admissions which otherwiseneed not be made, would result from theproposal; (2) the proposal would imposean unreasonable cost and time burdenupon the public; (3) the impact of theburden imposed would be extremelyhard on small entities and independentinventors, and may be contrary to theOffice’s Independent Inventor Initiative;(4) the proposed description of thecitations is unduly burdensome, and themany possible description permutationsimpose an impossible task (descriptionwould be needed to cover all claimmeanings, art settings and potential artcombinations, and would need to beupdated each time the claims areamended); (5) reasonable minds willdiffer on which portions of a citation aresignificant, which citations arecumulative, and the relevant teachingsof any particular citation; (6) theappropriate standard for determining ifan item should be considered is whetherthe item is material, not whether it iscumulative (so, explanation of why thecitation is not cumulative should not beimposed); (7) the description proposaldiscriminates against foreignapplications and U.S. practitionersrepresenting foreign applicants, sincethe U.S. practitioner, who is not theauthor of the case, is not completelyfamiliar with the technology; (8) theproposed unique descriptionrequirement is not fair since examinersdo not have this burden; (9) experiencehas shown that the submitteddescription may not be a useful tool tothe examiner, and some examiners do/did not even read the descriptions; (10)the description proposal would providea ‘‘role reversal’’ where applicant doesthe examiner’s job of evaluating thecitations but not as well, i.e., theproposal appears to force applicant’srepresentative to ‘‘play’’ examiner,review each of the citations, and

essentially make a rejection for theexaminer in an IDS; (11) there is nostatute or case law that requires theapplicant to comment on citationssubmitted to satisfy the duty to disclose(thus, applicant should not be chargedwith that responsibility); (12) it shouldtake no longer for the examiner toevaluate IDS art than the time it takeshim/her to review art when searchingthrough shoes of patents; (13) no data/facts have been presented to show aneed for the description of the citations;(14) the pre-set number of ten ‘‘free’’citations (without description) proposedin the Advance Notice is an artificialand arbitrary number, and it would bedifficult to decide which ten to choose(it encourages gamesmanship andplanning in selecting which citations todescribe); (15) the proposed selection ofan arbitrary ten free citations opens upa ‘‘Pandora’s Box’’ regarding inferencesas to the particular ten citationsselected; and (16) the number ‘‘ten’’ forthe free citations is too small, and thenumber actually needed depends uponmany factors surrounding theapplication such as complexity,technology, and number of claims.

Conclusion: The overwhelmingmajority of the comments expressedopposition to the unique descriptionproposal of the Advance Notice. TheOffice has taken note of the large burdenthat would be imposed on applicantsand attorneys by the descriptionproposal of the Advance Notice, thepotential for future adverseconsequences stemming from doing thedescription or the choice not todescribe, and the applicant’s rolereversal that would be imposed by thedescription proposal. Accordingly, adecision has been made to not goforward with the unique descriptionproposal at this time.

Suggestions Regarding Topic 9: Asubstantial number of suggestions weresubmitted for modification of theAdvance Notice Topic 9 proposal as tothe required statement of personalreview and the unique descriptionrequirement and its exceptions. It wasalso widely suggested that the Officecharge fees for consideration andevaluation of an excessive number ofsubmitted citations. These suggestionshave not been accepted in view of thedecision not to go forward with theTopic 9 proposal other than therequirement for copies of applications(as discussed above).

Part (12) Comments Generally Directedat Revision of the IDS Rules

Some comments on the AdvanceNotice IDS proposals were not directedto specific aspects of Topics 9 and 10,



but commented on the IDS proposals onthe whole. Those comments noted: (1)No reason nor incentive has beenprovided to the public to give up thecurrent IDS system; (2) the proposedAdvance Notice IDS changes do notserve the public nor applicant’s interest,and would eliminate a significantnumber of application filings each year;(3) the current IDS submission ruleswork well and should not be changed(the Office should not over-react byadopting a drastic cure that would bemore harmful than the disease); (4) it isnot an excessive burden on the Office toreview large numbers of submitteddocuments, but actually helps theprocess (this issue was previouslyvisited during the promulgation of thecurrent § 1.98, and the Office found thatexaminers’ review of all submitteddocuments would not constitute anexcessive burden); (5) the IDS proposalsset forth in the Advance Notice will notbe effective to discourage submissionsto the point that the Office problem issolved since the duty of disclosureremains in effect, and on the other hand,the proposals will discourage pre-searches and other mechanisms fordisclosure that strengthen patents; (6)the proposal imposes significant newlimitations on the practitioner’s abilityto freely disclose information to theOffice due to cost accountability toclients and potential adverse litigationconsequences; (7) the Office desire toreduce application processing time viathe IDS proposals would be expected toreduce the quality of examination, andthat is an undesirable trade-off; (8) theIDS proposals conflict with worldpatent harmonization (the U.S. is theonly patent-granting body in the worldthat requires citations of relevant art,and it runs counter to world patentharmonization that applicant’s burdenin this regard should now be increasedby the proposals to further imposerequirements on applicant not requiredby other patent granting bodies); (9) theIDS proposals are complicated; and (10)the Office’s IDS problem is at leastpartly generated by MPEP 2004 whichcalls for citation of even questionable ormarginal items.

Summary: The overall support for theIDS proposals as set forth in theAdvance Notice was relatively limited,and, for the most part, where supportwas advanced, it was advanced as aqualified support. On the other hand, alarge majority of the comments opposedthe Advance Notice IDS proposals, oftenstating their objection to the proposalsusing strong language. Accordingly, theIDS proposals as set forth in Topics 9and 10 of the Advance Notice have been

withdrawn at this time (with theexception of the proposed requirementfor a copy of each cited U.S. application,which did have some support and isbeing retained for reasons discussedboth below and above).

The present IDS proposal addressesthe major concerns of the comments inthat it does not call for a statement ofpersonal review, nor a uniquedescription, as were called for in theAdvance Notice. It also does notpropose to limit the number of citationsthat may be submitted. As noted, thepresent IDS proposal does in fact retainone aspect of the Advance Notice IDSproposal—applicant would be requiredto provide a copy of the specificationincluding the claims (and any drawing)of each U.S. application cited in theIDS, or the portion of the applicationwhich caused it to be listed, includingany claims directed to that portion ofthe application. Any increase inapplicant’s burden due to this oneretained aspect should be minor since:(1) The citation of U.S. applicationsrepresents a very small minority ofdocuments cited, and (2) the original ofthe application is usually readilyavailable to the applicant as a relatedapplication (and where not so, a petitioncan be filed requesting that a copy notbe required in that isolated and rarecase). The need for any such minorincrease in burden is, however, heavilyoutweighed by the many benefitsobtained. As pointed out above, thepresence of the application copies withthe IDS will (1) decrease the timeburden on examiners in obtaining andcopying the applications, (2) avoidinterruption of examination of the citedcases, (3) reduce risks of applicationpapers in the actual file of the citedapplications being misplaced or lost,and (4) be advantageous to the public assuch copies being in the application filewould be readily available to the publicupon issuance of the application as apatent.

The presently proposed IDS rules alsoinclude a number of revisions forconsistency and grammar, and to tie upa number of loose ends as discussedabove. These proposed revisions shouldnot, however, represent any significantburden on the public.

Section 1.102: Section 1.102(d) isproposed to be amended to refer to ‘‘thefee set forth in § 1.17(h)’’ for consistencywith the changes to § 1.17(h) and§ 1.17(i). See discussion of changes to§ 1.17(h) and § 1.17(i).

Section 1.103: Section 1.103 isproposed to be revised for clarity and toprovide a procedure for obtaining alimited suspension of action in acontinued prosecution application

(CPA) under § 1.53(d). The heading of§ 1.103 is proposed to be amended toadd the phrase ‘‘by the Office’’ to clarifythat this section does not apply torequests for suspension of action (orreply) by the applicant.

Section 1.103(a) is proposed toprovide for suspension of action forcause. Specifically, § 1.103(a) isproposed to provide that on request ofthe applicant, the Office may grant asuspension of action under thisparagraph for good and sufficient cause.Section 1.103(a) is also proposed toprovide that: (1) The Office will notsuspend action if reply by applicant toan Office action is outstanding; and (2)any petition for suspension of actionunder § 1.103(a) must specify a periodof suspension not exceeding six months.Section 1.103(a) is proposed tospecifically provide that any petition forsuspension of action under § 1.103(a)must also include: (1) A showing ofgood and sufficient cause for suspensionof action; and (2) the fee set forth in§ 1.17(h), unless such cause is the faultof the Office. If an additionalsuspension period is desired applicantmay submit another petition under§ 1.103(a) requesting same.

Section 1.103(b) is proposed toprovide for a limited suspension ofaction in a continued prosecutionapplication (CPA) under § 1.53(d).Section 1.103(b) is specifically proposedto provide that on request of theapplicant, the Office may grant asuspension of action under § 1.103(b) ina CPA for a period not exceeding threemonths. Section 1.103(b) is proposed tospecifically provide that any request forsuspension of action under § 1.103(b)must be filed with the request for a CPAand include the processing fee set forthin § 1.17(i).

Section 1.103(c) is proposed toprovide that the Office will notifyapplicant if the Office suspends actionon an application on its own initiative.

Section 1.103(d) is proposed toprovide for suspension of action forpublic safety or defense. Section1.103(b) is specifically proposed toprovide that the Office may suspendaction by order of the Commissioner ifthe following conditions are met: (1)The application is owned by the UnitedStates; (2) publication of the inventionmay be detrimental to the public safetyor defense; and (3) the appropriatedepartment or agency requests suchsuspension.

Section 1.103(e) is proposed toprovide that the Office will suspendaction for the entire pendency of anapplication if the Office has accepted arequest to publish a statutory inventionregistration in the application, except



for purposes relating to patentinterference proceedings under SubpartE.

Section 1.105: Section 1.105 would bea new section containing paragraphs (a)through (c), relating to requirements bythe Office that certain information besupplied.

Paragraph (a)(1) of § 1.105 wouldprovide examiners or other Officeemployees explicit authority to requiresubmission of such information as maybe reasonably necessary for the Office toproperly examine or treat a matter beingaddressed in an application under 35U.S.C. 111 or 371, in a patent, or in areexamination proceeding. Abandonedapplications would also fall within thescope of the rule to provide for handlingof petition matters. New § 1.105 issimply an explicit recitation of inherentauthority that exists pursuant to 35U.S.C. 131 and 132, and continues thepractice of providing explicit authorityto Office employees as was done withthe Board of Patent Appeals andInterferences under § 1.196(d) and withtrademark examiners under § 2.61.

The use of the authority underproposed paragraph (a)(1) of § 1.105would be encouraged so that the Officecan perform the best qualityexamination possible. The authority isnot intended to be used by examinerswithout a reasonable basis, but toaddress legitimate concerns that mayarise during the examination of anapplication or consideration of somematter. Any abuse in implementation ofthe authority, such as a requirement forinformation that is not in factreasonably necessary to properlyexamine the application, would beaddressed by way of petition under§ 1.181. For example, the Office may,under appropriate circumstances, desirethe authority to ask for:

1. The existence of any particularlyrelevant commercial data base thatcould be searched for a particular aspectof an invention, in certain technologieswhere pertinent prior art is highly likelyto be found in a commercial data base.

2. Information that may not berequired to be submitted by § 1.56, butthat the examiner would deem useful onan application-by-application basis(which could be done prior to theapplication being taken up forexamination, such as when theapplication is assigned to an examiner):(a) Submission of any publishedarticles, authored by any of theinventors, that relate to a claimedinvention, and (b) any non-patentliterature or patents that were used todraft the application or in the inventionprocess, such as where the invention is

an improvement over the priorinformation.

3. A reply to a matter raised in aprotest under § 1.291.

4. An explanation of technicalmaterial in a publication, such as one ofthe inventors’ publications.

5. The identification of changes madein a reformatted continuing applicationfiled under § 1.53(b).

6. A mark-up for a continuation-in-part application showing the new matterwhere there is an intervening reference.

7. Comments on a new Federal Circuitdecision that appears on point.

The proposed § 1.105 is not intendedto change current Office practice inregard to questions of fraud under§ 1.56, and inquiries relating theretowould not be authorized. See MPEP2010.

Paragraph (a)(2) of § 1.105 wouldprovide a safety net by specificallyrecognizing that where the informationrequired to be submitted is unknownand/or is not available, a completeresponse to the requirement forinformation would be a statement tothat effect. There would be norequirement for a showing that in factthe information was unknown or notavailable such as by way of disclosingwhat was done to attempt to satisfy therequirement for information.Nonetheless, it should be understoodthat a good faith attempt must be madeto obtain the information and areasonable inquiry made once theinformation is requested even thoughthe Office will not look behind theanswer given. An Office employeeshould not continue to question thescope of a specific answer merelybecause it is not as complete as theOffice employee desires.

Example: In a first action on themerits of an application with aneffective filing date of May 1, 1999, theexaminer notes the submission of aprotest under § 1.291 relating to a publicsale of the subject matter of theinvention and requests a date ofpublication for a business circularauthored by the assignee of theinvention, which circular was submittedwith the protest. It is expected that theattempt to respond to the requirementfor information would involvecontacting the assignee who would thenmake a good faith attempt to determinethe publication date of the circular. Theresponse to the requirement states thatthe publication date of the circular is‘‘around May 1, 1998.’’ As ‘‘around May1, 1998’’ covers dates both prior andsubsequent to May 1, 1998, a primafacie case under 35 U.S.C. 102(b) wouldnot exist. The examiner cannot requirethat the response be more specific or

hold the response to be incompletebased on such reply. The examiner can,however, in the next Office action seekconfirmation that this is the mostspecific date that was obtained or can beobtained based on a reasonable inquirybeing made if that is not already clearfrom the response to the initialrequirement for information.

Paragraph (b) of § 1.105 wouldprovide that the requirement forinformation may be included in anOffice action, which would include arestriction requirement if appropriate, orcan be sent as a separate letterindependent of an Office action on themerits such as when the informationrequired is critical to an issue or issuesthat need to be addressed in asubsequent Office action. It is expectedthat due to cycle time concerns the useof a requirement for informationindependent of an Office action on themerits would be limited.

Paragraph (c) of § 1.105 wouldprovide that a response to a requirementfor information or failure to respondthereto would be governed by §§ 1.135and 1.136. Note the Example providedin the discussion of paragraph (a)(2) of§ 1.105.

Section 1.111: The heading of § 1.111is proposed to be amended to clarifythat it applies to a reply by the applicantor patent owner to a non-final Officeaction. Section 1.111 is proposed to beamended to: (1) Provide a reference to§ 1.104 concerning the first examinationof an application; (2) change thereference to § 1.135 and § 1.136 (for timefor reply to avoid abandonment) fromparagraph (c) to paragraph (a); and (3)add the sentence ‘‘[a] second orsubsequent supplemental reply will beentered unless disapproved by theCommissioner.’’

The Office indicated in the AdvanceNotice that it was considering charginga handling fee for all supplementalreplies. The Office was specificallyconsidering replacing the currentpractice of allowing unlimitedsupplemental replies to be filed withoutrequiring any fee with a new practice inwhich a handling fee would be chargedfor each supplemental reply that is filedafter the initial reply to an Office actionhas been filed.

While some comments supported thisproposed change, a majority ofcomments opposed charging a handlingfee for supplemental replies. Thereasons given for opposition to theproposal included arguments that: (1)The proposal was simply a revenue-raising proposition; (2) the primarycause of supplemental replies crossingwith an Office action is Office mailroom delay and paper processing



delays; (3) applicants may need to filea supplemental amendment due to later-discovered prior art. The comments alsosuggested that: (1) The PALM system beenhanced to flag supplemental replies toavoid issuing an Office action until anysupplemental reply is matched with theapplication; and (2) examiners callapplicants two weeks prior to acting onan application to determine whether asupplemental reply has been filed.

This notice does not proposechanging the rules of practice to chargea handling fee for supplemental replies.Based upon the comments and its ownevaluation, the Office has concludedthat the proposed handling chargewould not discourage the filing ofsupplemental replies, but would onlyresult in such replies being filed withthe handling fee.

The Office, however, is proposing achange to the rules of practice toprovide that the entry of second orsubsequent supplemental replies may bedisapproved by the Commissioner. It isexpected that disapproval of a second orsubsequent supplemental amendmentwill be delegated to the appropriateTechnology Center Group Directorunder MPEP 1002.02(c). As mostsupplemental replies cause only a minorinconvenience to the Office, the Officeis not inclined to propose a change thatwould affect the ability to file asupplemental reply when such iswarranted. There are, however, someapplicants who routinely filepreliminary or supplementalamendments that place a significantburden on the Office by: (1) Cancelingthe pending claims and adding manynew claims; (2) adding numerous newclaims; (3) being filed approximatelytwo months from the date the originalreply was filed (i.e., when the examineris likely to be preparing an Office actionresponsive to the original reply). Theseapplicants also tend to be those havingmany applications simultaneously onfile in the Office.

The provision that the entry of asecond or subsequent supplementalreply may be disapproved by theCommissioner would give the Office thelatitude to permit entry of thosesupplemental replies that do not undulyinterfere with the preparation of anOffice action, but would also give theOffice the latitude to refuse entry ofthose supplemental replies that dounduly interfere with the preparation ofan Office action. The factors that wouldbe taken into consideration whendeciding whether to disapprove entry ofsuch a supplemental reply are: (1) Thestate of preparation of an Office actionresponsive to the initial reply; and (2)the nature of the change to the pending

claims that would result from entry ofthe supplemental reply. That is, if theexaminer has devoted a significantamount of time to preparing an Officeaction before such a supplementalamendment is matched with theapplication, it would be appropriate forthe Office to disapprove entry of thesupplemental amendment. If, however,such a supplemental amendment merelycancels claims (as opposed to cancelingclaims and adding claims, or simplyadding claims), it would not beappropriate to disapprove entry of sucha supplemental amendment even if theexaminer has devoted a significantamount of time to preparing an Officeaction before such a supplementalamendment is matched with theapplication.

Obviously, if a supplemental reply isreceived in the Office (§ 1.6) after themail date of the Office action responsiveto the original reply and is notresponsive to that Office action, theOffice will continue the current practiceof not mailing a new Office actionresponsive to that supplemental reply,but simply advising the applicant thatthe supplemental reply is non-responsive to such Office action andthat a responsive reply (under § 1.111 or1.113 as the situation may be) must betimely filed to avoid abandonment. Putsimply, the mailing of an Office actionresponsive to the original reply willcontinue to cut off the applicant’s rightto have any later-filed supplementalreply considered by the Office.

The proposed change to § 1.111(a) inthis notice: (1) Is not a revenue-raisingproposition; and (2) will not affect thevast majority of supplemental replies. Itwill only apply to a supplemental replyif: (1) the applicant has already filed one(a first) supplemental reply; and (2) thesupplemental reply is not matched withthe application until after the examinerhas devoted a significant amount of timeto preparing an Office action.

The suggestion regardingenhancement to the PALM system isbeing taken under advisement. Such anenhancement, however, would notdiscourage the filing of thesupplemental replies that place aburden on the Office, but would onlyinform the examiner that such a replyhas not yet been matched with theapplication. In the absence of aprocedure for disapproving the entry ofsuch burdensome replies, the so-enhanced PALM system would simplyadvise the Office not to act on theaffected application for extendedperiods of time, which would have anadverse effect on the Office’s efforts toreduce cycle time.

The suggestion that examiners callapplicants two weeks prior to acting onan application to determine whether asupplemental reply has been filed is notpracticable. The Office issues hundredsof thousands of Office actions each year.Thus, implementing this suggestionwould require the Office (examiners) tomake hundreds of thousands ofadditional telephone calls to applicantseach year.

Section 1.112: Section 1.112 isproposed to be amended to provide areference to § 1.104 concerning the firstexamination of an application. Section1.112 is proposed to be amended to addthe phrase ‘‘or an appeal (§ 1.191) hasbeen taken’’ to the last sentence. Thisaddition is to clarify that once an appealhas been taken in an application, anyamendment is subject to the provisionsof § 1.116 (b) and (c), even if the appealis in reply to a non-final Office action.

Section 1.115: A new § 1.115 isproposed to be added to provide forpreliminary amendments. The Officeindicated in the Advance Notice that itwas considering charging a handling feefor certain preliminary amendments.The Office was specifically consideringreplacing the current practice ofallowing unlimited preliminaryamendments to be filed withoutrequiring any fee with a new practice inwhich a handling fee would be chargedfor each preliminary amendment filedlater than a specified time period (onemonth) after the filing date of theapplication.

While some comments supported thisproposed change, a majority ofcomments opposed charging a handlingfee for certain preliminary amendments.The reasons given for opposition to theproposal included arguments that: (1)The proposal was simply a revenue-raising proposition; (2) the primarycause of preliminary amendmentscrossing with an Office action is Officemail room delay and paper processingdelays; (3) applicants should not beforced to file preliminary amendmentsand other papers until after receiving afiling receipt and application number;and (4) applicants may need to file apreliminary amendment due to later-discovered prior art. The comments alsosuggested that: (1) The PALM system beenhanced to flag preliminaryamendments to avoid issuing an Officeaction until the preliminary amendmentis matched with the application; (2)examiners call applicants two weeksprior to acting on an application todetermine whether a preliminaryamendment has been filed; and (3)applicants filing a continuedprosecution application under § 1.53(d)



(CPA) be given a few weeks to file anynecessary preliminary amendment.

The Office is not proposing a changeto the rules of practice to charge ahandling fee for certain preliminaryamendments. Based upon the commentsand its own evaluation, the Office hasconcluded the proposed handlingcharge would not discourage the filingof preliminary amendments, but wouldonly result in such amendments beingfiled with the handling fee. The Office,however, is proposing a change to therules of practice to provide that theentry of certain preliminaryamendments may be disapproved by theCommissioner. See the discussion of§ 1.111 for an explanation of the needfor this change to the rules of practice.

Section 1.115(a) as proposed providesthat a preliminary amendment is anamendment that is received in theOffice (§ 1.6) on or before the mail dateof the first Office action under § 1.104.That is, an amendment received in theOffice (§ 1.6) after the mail date of thefirst Office action is not a preliminaryamendment, even if it is non-responsiveto the first Office action and seeks toamend the application prior to the firstexamination.

Section 1.115(b) is proposed toprovide that a preliminary amendmentwill be entered unless disapproved bythe Commissioner, and also provide thata preliminary amendment will not bedisapproved if it is filed no later than:(1) Three months from the filing date ofan application under § 1.53(b); (2) thefiling date of a continued prosecutionapplication under § 1.53(d); or (3) threemonths from the date the national stageis entered as set forth in § 1.491 in aninternational application. Thus, theentry of a preliminary amendment willnot be disapproved under § 1.115(b) if itis filed within one of the periodsspecified in § 1.115(b)(1) through (b)(3).Nevertheless, if a ‘‘preliminary’’amendment is filed after the mail dateof the first Office action, it is not apreliminary amendment under§ 1.115(a). If a (‘‘preliminary’’)amendment is received in the Office(§ 1.6) after the mail date of the firstOffice action and is not responsive tothe first Office action, the Office willcontinue the current practice of notmailing a new Office action responsiveto that amendment, but simply advisingthe applicant that the amendment isnon-responsive to first Office action andthat a responsive reply must be timelyfiled to avoid abandonment. Put simply,the mailing of the first Office action willcontinue to cut off the applicant’s rightto have any later-filed preliminaryamendment considered by the Office,even if that amendment is filed within

the time periods specified in proposed§ 1.115(b).

Section 1.115(c) is proposed toprovide that the time periods specifiedin § 1.115(b) are not extendable.

It is expected that disapproval of apreliminary amendment filed outsidethe period specified in § 1.115(b) will bedelegated to the appropriate TechnologyCenter Group Director under MPEP1002.02(c). The provision that the entryof a preliminary amendment filedoutside the period specified in§ 1.115(b) may be disapproved by theCommissioner would give the Office thelatitude to permit entry of thosepreliminary amendments filed outsidethe period specified in § 1.115(b) that donot unduly interfere with thepreparation of an Office action, butwould also give the Office the latitudeto refuse entry of those preliminaryamendments filed outside the periodspecified in § 1.115(b) that do undulyinterfere with the preparation of anOffice action. As with the proposedchange to § 1.111(a), the factors thatwould be taken into consideration whendeciding whether to disapprove entry ofsuch a preliminary amendment are: (1)The state of preparation of the firstOffice action; and (2) the nature of thechange to the pending claims thatwould result from entry of thepreliminary amendment.

The proposed change to § 1.115 inthis notice: (1) Is not a revenue-raisingproposition; and (2) will not affect thevast majority of preliminaryamendments. It will only apply to apreliminary amendment if: (1) Thepreliminary amendment is filed outsidethe time periods specified in§ 1.115(b)(1) through (b)(3); and (2) thepreliminary amendment is not matchedwith the application until after theexaminer has devoted a significantamount of time to preparing an Officeaction. The suggestions that the PALMsystem be enhanced and that examinerscall applicants two weeks prior to actingon an application are addressed abovein the discussion of § 1.111(a).

In an application filed under 35U.S.C. 111(a) and § 1.53(b) or a PCTinternational application entering thenational stage under § 1.491, the timeperiods specified in § 1.115(b) shouldgive the applicant time between themailing of a filing receipt and themailing of a first Office action to file anynecessary preliminary amendment. CPApractice under § 1.53(d), however, isdesigned to provide a first Office actionsooner than if the application had beenfiled as a continuation under § 1.53(b)(or under former §§ 1.60 or 1.62). SeeContinued Prosecution Application(CPA) Practice, Notice, 1214 Off. Gaz.

Pat. Office 32, 32 (September 8, 1998).An applicant filing a CPA under§ 1.53(d) who needs time to prepare apreliminary amendment should file arequest for suspension of action under§ 1.103(b) with the CPA request. Seediscussion of § 1.103(b).

Section 1.121: Section 1.121 isproposed to be amended to change themanner of making amendments in non-reissue applications. The proposedpractice to amend the specification byreplacement of a section or paragraph(or claim) would eliminate the need forthe Office to enter changes byhandwriting in red ink. This changewould result in a specification(including claims) in clean-copy formthat can be Optical CharacterRecognition (OCR) scanned during thepatent publishing process. Theproposed practice also requires theapplicant to provide a marked-up copyof the changed section or paragraphs (orclaims), using the applicant’s choice ofmarking system, which will aid theexaminer in ascertaining the changes tothe specification.

The proposed change to § 1.121involves concurrent changes to § 1.52(b)(see discussion of § 1.52(b)(6)) toprovide for numbering of the paragraphsof the specification, except for theclaims. If the paragraphs of thespecification are numbered as proposedin § 1.52, the applicant will be able toamend the specification by merelysubmitting a replacement paragraph(with the same number) with thedesired changes made in thereplacement paragraph.

As discussed above, the adoption ofthe proposed changes to § 1.121 willresult in relatively clean (e.g., withoutunderlining, bracketing, or red ink)application specifications that can beOCR scanned as part of the printingprocess in the Office of PatentPublications, which will result in ahigher quality of printed patents.Complete OCR scanning of the amendedportions of the specification and claimsis not possible today because insertionsof words, phrases or sentences made byhandwriting in red ink and deletionsmade by words which have been linedthrough with red ink are ignored by thescanner. Further, while text markedwith underlining and bracketing can bescanned, extra processing is required todelete the brackets and the text withinthe brackets and to correct misreading ofletters caused by the underlining. Thus,using clean replacement sections orparagraphs and claims will permitcomplete OCR scanning which is afaster and more accurate method ofcapturing the application for printingwhile eliminating an extensive amount



of key-entry of subject matter. Thisshould result in patents with fewererrors in need of correction bycertificate of correction, which will be aclear benefit to the patentees andconserve Office resources.

In addition to submitting areplacement section or paragraph/claimto make an amendment, applicantwould also be required to submit amarked-up copy of the section orparagraph/claim to show the differencesbetween the original and thereplacement. The marked-up copy maybe created by any method applicantchooses, such as underlining andbracketing, redlining, or by any systemdesigned to provide text comparison.

The proposed change to § 1.121 willmake the amendment process simpler,reduce processing time and operatingcosts, and reduce the opportunity forerror associated with amendment entry.In addition, it is consistent withstandardizing processing ofamendments in both paper andelectronic format in anticipation of atotal Electronic File Wrapper (EFW)environment, which is currently underdevelopment. Further, the changesbeing proposed are consistent with theOffice’s efforts to harmonize with PCTpractice and any changes beingcontemplated for that system.

Section 1.121(a) is specificallyproposed to be amended by replacingparagraphs (a)(1) through (a)(6) withnew paragraphs (a)(1) through (a)(5),which treat the manner of makingamendments in nonprovisionalapplications other than reissueapplications. Section 1.121(b) relates toamendments in reissue applications and§ 1.121(c) relates to amendments inreexamination proceedings.

Section 1.121(a)(1)(i) is proposed toprovide procedures to delete, replace oradd a paragraph to the specification ofan application by requiring instructionsfor such accompanied by thereplacement or added paragraph(s). Byfollowing the four-digit numberingsystem concurrently proposed in§ 1.52(b)(6), applicants can easily referto a specific paragraph by number andpresent an amendment thereto.Proposed § 1.121(a) requires that thereplacement or added paragraph(s) notinclude any markings to indicate thechanges that have been made. A copy ofthe replacement or added paragraph(s)marked-up to show the changes wouldbe required to accompany theamendment as an aid to the examiner.

If a numbered paragraph is to bereplaced by a single paragraph, theadded replacement paragraph bearingthe same number as the paragraph beingreplaced should be submitted. If more

than one paragraph is to replace a singleparagraph, the numbering of the addedreplacement paragraphs must begin firstwith the number of the paragraph beingreplaced, then subsequently by thenumber of the replaced paragraphtogether with a single decimal andsequential integers (e.g., paragraph[0071] is replaced by [0071], [0071.1]and [0071.2]). Any paragraphs beingadded between existing paragraphsmust take the number of the precedingparagraph followed by a decimal andsequential integers (e.g., [0071.1] and[0071.2] are being inserted betweenparagraphs [0071] and [0072]).Unaffected paragraphs would retaintheir original numbers. Once anamendment is entered, subsequentamendments would be made vis-a-visthe numbering created by the previousamendment. Amendments to titles orheaders, which are not consideredparagraphs and thus not numbered,would be identified by reference to theirlocation relative to a numberedparagraph (e.g., ‘‘the title appearing afterparagraph [0062]’’).

Section 1.121(a)(1)(ii) as proposedalso permits applicants to amend thespecification by replacement sections(e.g., as provided in §§ 1.77(a), 1.154(a)or 1.163(c)). As with replacementparagraphs, the amended version of areplacement section would be requiredto be provided in clean form and notinclude any markings to show thechanges which have been made. Amarked-up version showing the changesmust accompany the actual amendmentas an aid to the examiner.

Section 1.121(a)(1)(ii) as proposedalso permits applicants to amend thespecification by submitting a substitutespecification. Sections 1.52, 1.77, 1.154,1.163 and 1.121(a) as proposed do notrequire applicants to number theparagraphs of the specification(§ 1.52(b)(6)) or provide sectionheadings (§§ 1.77, 1.154, 1.163).Without numbered paragraphs of thespecification or section headings,however, an applicant will be limited toamending the application by submittinga substitute specification. Thus,applicants submitting a substitutespecification as a means of amendingthe application (including ‘‘transitionapplications’’ filed before but amendedafter this proposed change to § 1.121(a)is adopted) are urged to includenumbered paragraphs in the substitutespecification (in the manner proposedin § 1.52(b)(6)), so that furtheramendments may be made byreplacement paragraphs in accordancewith § 1.121(a)(1)(i). An accompanyingmarked-up copy showing amendedportions of the specification would be

required. The addition of paragraphnumbers in a substitute specification,however, need not be considered as anamendment to the specificationrequiring a marked-up showing.

Further, in applications not havingnumbered paragraphs, even if noamendments to the specification arebeing made, applicants are urged tosupply a substitute specificationincluding numbered paragraphs(consistent with § 1.52 (b)(6)) as part ofthe response to the first Office action, sothat any future amendments to thespecification may be made by numberedparagraph replacement. As statedimmediately above, a marked-up copy,showing paragraph numbers as the onlychange, is not required.

The Office will not, upon request ofapplicants, number the paragraphs orsections of the specification, or acceptany instructions to do the same. TheOffice reserves the right, however, tonumber or renumber the paragraphs inthe printed patent as part of thepublication process.

Section 1.121(a)(1)(iv) as proposedrequires that matter deleted byamendment pursuant to any of theearlier paragraphs of § 1.121 could onlybe reinstated by a subsequentamendment presenting the previouslydeleted subject matter. No unentering ofpreviously entered amendments will bepermitted.

Section 1.121(a)(2) as proposedrequires that all amendments to theclaims be presented as totally rewrittenclaims. Any rewriting of a claim will beconstrued as a direction to cancel theprevious version of the claim. See In reByers, 230 F.2d 451, 455, 109 USPQ 53,55 (CCPA 1956) (amendment of a claimby inclusion of an additional limitationhad exactly the same effect as if theclaim as originally presented had beencanceled and replaced by a new claim).The new (or rewritten) claim must besubmitted in clean form with nomarkings showing the changes whichhave been made. A marked-up versionof any amended claim must besubmitted on pages separate from theamendment showing the changes whichhave been made by way of brackets (fordeleted matter) and underlining (foradded matter), or by any other suitablemethod of comparison, in order toclearly indicate the changes made by theamendment in a form that will assist theexaminer in the examination process.

Section 1.121(a)(3) is proposed to beamended to clarify the requirements foramending figures of drawing in anapplication. A sketch showing changesin red must be filed for approval by theexaminer before new drawings incompliance with § 1.84 can be filed.



Sections 1.121(a)(5) and (a)(6) will beredesignated without change as new §1.121(a)(4) and (a)(5).

Section 1.121(b) is proposed to beamended to transfer the provisions foramending reissue applications to § 1.173(see discussion of § 1.173). Section1.121(b) is specifically proposed tosimply include a reference to § 1.173 foramendment of reissue applications.

Most of the comments received werein support of the proposed change toamendment practice. Some criticismsand suggestions are addressed below.

Comment: A concern was raised by anumber of commenters that replacementparagraphs would make theidentification of changes more obscurethan the present system of usingbracketing and underlining, wouldplace an extra burden on practitionersand their staffs, and would work againstreducing paper submissions ifapplicants were required to submitmarked-up copies of the desiredchanges.

Response: The proposed replacementparagraph requirement is necessary tofacilitate the publication of patents moreexpeditiously and with fewer errors.The Office’s goal is to eliminate the useof red ink and bracketing/underlining inthe amendment of patent applications,since OCR techniques now employed inthe preparation of patents forpublication can best accommodate‘‘clean copy’’ insertions of amendedsubject matter.

The submission of marked-up copieswould, for a time, increase file size butwould provide the examiner with aneasy way to compare the most recentamendments with earlier versions in theapplication files. While it may bepossible for examiners to compare theclean copy with the previous version inorder to detect changes, in the interestof reduced cycle time, a review of amarked-up copy of an amendment hasbeen determined to be most effective inthe examination process. The proposedrequirements would provide the neededcomparative basis (for paper copies)during the transition phase into an EFWenvironment.

Comment: A number of commentswere received which expressed concernabout the harmonization of the Office’samendment requirements with those ofPCT and/or other foreign countries.

Response: While PCT practicecurrently provides for the use ofreplacement pages, it appears thatparagraph or section replacement isbeing considered worldwide aselectronic filing requirements are beingdeveloped. Both the JPO and the EPOcurrently employ paragraph numberingin their application requirements and

publication procedures. No other patentexamining authority has yet developedprocedures for transitioning intoelectronic filing and practice.

Comment: Several comments receivedquestioned the ability of wordprocessing software to handle paragraphnumbering and renumbering withoutextensive clerical intervention.

Response: The objective of theproposed amendment practice and theconcept of paragraph numbering is toeasily identify a paragraph in thespecification and to not disturb thenumbering of the paragraphs precedingand following the amendments/insertions. It is being concurrentlyproposed that § 1.52 provide forparagraph numbering according to afour digit Arabic numeral arrangementenclosed in bold brackets to be placedat the beginning of each paragraphimmediately to the right of the leftmargin, and followed by approximatelyfour spaces, before beginning theparagraph text (e.g., [0071]). If,according to the proposed changes to§ 1.121, for example, paragraph [0071] isto be replaced, another paragraph of thesame number should be inserted in itsplace. If several paragraphs are toreplace a single deleted paragraph,[0071] should, for example, be replacedby [0071], [0071.1], and [0071.2]. Theability of word processing software torenumber the remaining paragraphsshould not be necessary.

Comment: Several commentssuggested identifying the replacementparagraphs by page number and linenumber, or through the use ofreplacement pages.

Response: The proposed changes to§ 1.121 are intended, in part, to servethe Office and its customers during atransition into an EFW environment.Accordingly, paragraph replacement viaparagraph numbering will mosteffectively achieve the desired results.Identification of paragraphs by page andline number does not consistently anduniformly refer to the same section ofthe specification due to formatting andpagination differences among variousword processing programs.

Comment: Several comments receivedsuggested that the Office moreaggressively pursue total electronicfiling.

Response: A total EFW environmentis still several years away. The proposedchanges must be workable during atransition into electronic filing, and, atthe same time, serve all customersadequately, including those not yet ableto adapt to word processing andadvanced computer techniques.

Section 1.125: Section 1.125(b)(2) isproposed to be amended to require that

all the changes to the specification(rather than simply all additions anddeletions) be shown in a marked-upcopy. Section 1.125(b)(2) is alsoproposed to be amended to provide thatnumbering the paragraphs of thespecification of record is not considereda change that must be shown. Thus, themarked-up copy of the substitutespecification need not show thenumbering the paragraphs of thespecification of record, and no marked-up copy of the substitute specification isrequired if the only change isnumbering of the paragraph of thespecification of record. Section 1.125(c)is proposed to be amended to encouragethat the paragraphs of any substitutespecification be numbered in a mannerconsistent with § 1.52(b)(6).

Section 1.131: The heading of § 1.131is proposed to be amended to clarifythat it applies to overcoming otheractivities in addition to cited patents orpublication. Section 1.131(a) isproposed to be amended for simplicity.

Section 1.131(a) is specificallyproposed to be amended to provide thatwhen any claim of an application or apatent under reexamination is rejected,the inventor of the subject matter of therejected claim, the owner of the patentunder reexamination, or the partyqualified under §§ 1.42, 1.43, or 1.47,may submit an appropriate oath ordeclaration to establish invention of thesubject matter of the rejected claim priorto the effective date of the reference oractivity on which the rejection is based.Section 1.131(a) as proposed wouldeliminate the provisions that specifywhich bases for rejection must beapplicable for § 1.131 to apply. Instead,the approach would be that § 1.131 isapplicable unless the rejection is basedupon a U.S. patent to another or otherswhich claims the same patentableinvention as defined in § 1.601(n) or astatutory bar. This avoids the situationin which the basis for rejection is not astatutory bar (under 35 U.S.C. 102(a)based upon prior use by others in theUnited States) and should be capable ofbeing antedated, but the rejection is notspecified as a basis for rejection thatmust be applicable for § 1.131 to apply.

Section 1.131(a) is also proposed to beamended to provide that the effectivedate of a U.S. patent is the date thatsuch U.S. patent is effective as areference under 35 U.S.C. 102(e). MPEP2136.03 provides a general discussion ofthe date a U.S. patent is effective as areference under 35 U.S.C. 102(e).Finally, § 1.131(a) is proposed to beamended to provide that prior inventionmay not be established under § 1.131 ifeither: (1) The rejection is based upona U.S. patent to another or others which



claims the same patentable invention asdefined in § 1.601(n); or (2) the rejectionis based upon a statutory bar.

Section 1.132: Section 1.132 isproposed to be amended to eliminatethe provisions that specify which basesfor rejection must be applicable for§ 1.132 to apply. Instead, the approachwould be that § 1.132 is applicableunless the rejection is based upon a U.S.patent to another or others which claimsthe same patentable invention asdefined in § 1.601(n). Section 1.132 isspecifically proposed to be amended tostate that: (1) when any claim of anapplication or a patent underreexamination is rejected or objected to,an oath or declaration may be submittedto traverse the rejection or objection;and (2) an oath or declaration may notbe submitted under this section totraverse a rejection if the rejection isbased upon a U.S. patent to another orothers which claims the same patentableinvention as defined in § 1.601(n).

Sections 1.131 and 1.132 areprocedural in nature that they providemechanisms for the submission ofevidence to antedate or otherwisetraverse a rejection; however, they donot address the substantive effect of thesubmission of such evidence on theobjection or rejection at issue. See, e.g.,In re Zletz, 893 F.2d 319, 322–33, 13USPQ2d 1320, 1322–23 (Fed. Cir.1990)(§ 1.131 provides an ex partemechanism whereby a patent applicantmay antedate subject matter in areference); Newell Cos. v. Kenney Mfg.,864 F.2d 757, 768–69, 9 USPQ2d 1417,1426–27 (Fed. Cir. 1988)(the meresubmission of evidence under § 1.132does not mandate a conclusion ofpatentability). An applicant’scompliance with §§ 1.131 or 1.132means that the applicant is entitled tohave the evidence considered indetermining the patentability of theclaim(s) at issue. It does not mean thatthe applicant is entitled as a matter ofright to have the rejection or objectionof the claim(s) withdrawn.

Section 1.133: Section 1.133(a) isproposed to be amended to provide thatinterviews must be conducted on‘‘Office premises’’ (rather than ‘‘in theexaminer’s rooms’’). The purpose of thisproposed change is to account forinterviews conducted in conferencerooms or by video conference.

Section 1.136: Section 1.136(c) isproposed to be added to provide that ifan applicant is notified in a ‘‘Notice ofAllowability’’ that an application isotherwise in condition for allowance,the following time periods are notextendable if set in the ‘‘Notice ofAllowability’’ or in an Office actionhaving a mail date on or after the mail

date of the ‘‘Notice of Allowability’’: (1)The period for submitting an oath ordeclaration in compliance with § 1.63;(2) the period for submitting formaldrawings set under § 1.85(c); and (3) theperiod for making a deposit set under§ 1.809(c). See discussion of the changeto § 1.85(c).

Section 1.137: Section 1.137(c) isproposed to be amended to provide thatany petition under § 1.137 in either autility or plant application filed beforeJune 8, 1995, must be accompanied bya terminal disclaimer and fee as set forthin § 1.321 dedicating to the public aterminal part of the term of any patentgranted thereon equivalent to the lesserof: (1) The period of abandonment of theapplication; or (2) the period extendingbeyond twenty years from the date onwhich the application for the patent wasfiled in the United States or, if theapplication contains a specific referenceto an earlier filed application(s) under35 U.S.C. 120, 121, or 365(c), from thedate on which the earliest suchapplication was filed. This proposedchange will further harmonize effectivetreatment under the patent termprovisions of 35 U.S.C. 154(b) and (c) ofutility and plant applications filedbefore June 8, 1995, with utility andplant applications filed on or after June8, 1995. Section 1.137(c) is alsoproposed to provide that its terminaldisclaimer requirement does not applyto applications for which revival issought solely for purposes ofcopendency with a utility or plantapplication filed on or after June 8,1995, or to lapsed patents.

Section 1.138: Section 1.138 isproposed to be amended to clarify thesignature requirement for a letter (orwritten declaration) of expressabandonment. Section 1.138(a) isproposed to provide that: (1) Anapplication may be expresslyabandoned by filing in the Patent andTrademark Office a written declarationof abandonment identifying theapplication; and (2) expressabandonment of the application may notbe recognized by the Office unless it isactually received by appropriateofficials in time to act thereon before thedate of issue. Section 1.138(b) isproposed to provide that a writtendeclaration of abandonment must besigned by a party authorized under§ 1.33(b)(1), (b)(3), or (b)(4) to sign apaper in the application, except that aregistered attorney or agent not of recordwho acts in a representative capacityunder the provisions of § 1.34(a) whenfiling a continuing application mayexpressly abandon the prior applicationas of the filing date granted to thecontinuing application.

Section 1.152: Section 1.152 isproposed to be revised to be consistentwith the proposed changes to § 1.84(deletion of the petition requirement forcolor photographs and color drawings).Section 1.152 was amended in 1997 toclarify Office practice that detailsdisclosed in the drawings orphotographs filed with a designapplication are considered to be anintegral part of the disclosed andclaimed design, unless disclaimed. SeeChanges to Patent Practice andProcedure, Final Rule Notice, 62 FR53131, 53164 (October 10, 1997), 1203Off. Gaz. Pat. Office 63, 91 (October 21,1997). A recent decision by the FederalCircuit, however, has called thispractice into question. See In re Daniels,144 F.3d 1452, 46 USPQ2d 1788 (Fed.Cir. 1998), rev’g, Ex parte Daniels, 40USPQ2d 1394 (BPAI 1996).Accordingly, the Office is proposing toamend § 1.152 to eliminate theseprovisions. See Removal of SurfaceTreatment From Design DrawingsPermitted, Notice, 1217 Off. Gaz. Pat.Office 19 (December 1, 1998).

Section 1.154: Section 1.154(a) isproposed to be separated into §§1.154(a) and 1.154(b) and the materialclarified. The order of the papers in adesign patent application, including theproposed application data sheet (see§ 1.76), is proposed to be listed in§ 1.154(a). The order of the sections inthe specification of a design patentapplication is proposed to be listed in§ 1.154(b). New § 1.154(c) correspondsto § 1.77(c) and provides that the sectionheading should be in uppercase letterswithout underlining or bold type.

Section 1.155: Current § 1.155 isproposed to be eliminated as beingunnecessarily duplicative of theprovisions of §§ 1.311(a) and 1.316,which apply to the issuance of allpatents, including designs. In its place,proposed § 1.155 is proposed to beredrafted to establish a procedure tocreate a ‘‘rocket docket’’ for designapplications. The procedure will beavailable to all design applicants whofirst conduct a preliminary examinationsearch and file a request for expeditedtreatment accompanied by a feecommensurate with the Office cost ofthe expedited treatment and handling(§ 1.17(t)). The Office will require astatement that a preexamination searchwas conducted which must alsoindicate the field of search and includean information disclosure statement incompliance with § 1.98. Formaldrawings in compliance with § 1.84 arerequired. The applications will beindividually examined with priority andthe clerical processing will beconducted and/or monitored by



specially designated personnel toachieve expeditious processing throughinitial application processing and theDesign Examining Group. The Officewill not examine an application that isnot in condition for examination even ifthe applicant files a request forexpedited examination under thissection. The requirements announced inthe Advance Notice relating toconstructive election of the firstpresented invention have been dropped.

General CommentsOf the comments received in response

to the proposal to creating a ‘‘RocketDocket’’ for design applications, most ofthe comments generally favored theproposal, by roughly a two-to-onemargin.

Comment: One commenter opinedthat the ‘‘ultra expedited’’ procedure isa much needed avenue for patenteesconcerned with the design andmarketing of seasonal, high volumeconsumer goods and that the procedurewould attract new customers and fulfilla critical need in many industries forpatent protection to stop infringementand to deter would-be infringers.Moreover, the commenter opined thatrecent court interpretations of themarking provisions require patentedproducts to be marked with the patentnumber no matter what monetaryremedy the patentee pursues and thathaving all of the products marked withthe patent number will maximize apatentee’s protection by synchronizingprotection with the retail market launch.

Response: The Office envisions thatthese provisions will fulfill a particularneed by affording rapid designprotection on an expedited basis so thatdesigns may be readily patented andmarked with a patent number beforemarketing. At the same time, a fee willbe charged to recoup estimated expectedcosts incurred by the Office.

Comment: Two comments opposedthe idea of giving one applicant priorityover others based on a fee, or theopportunity to ‘‘buy a place in line,’’further reasoning that the granting ofpriority should be based on need.

Response: The applicant is not buyinga place in line, but instead is merelycompensating for the extra costs forexpediting the examination of thedesign applications. Also, if prioritywere to be granted based upon need, apetition would be required to determinewhether the standards for awardingpriority had been met. By eliminatingthe determination of a petition (which isrequired to determine need orcompliance in Petitions to MakeSpecial), the significant time required tomake the determination is eliminated.

Comment: Another comment statedthat the fee was unjustified in view ofthe fact that the current ‘‘Petition toMake Special’’ is available at a reducedfee.

Response: Although the currentsystem of making cases special bypetition fulfills the needs of someapplicants, an additional expeditedprocess is necessary for a quicker,streamlined filing-to-issuance procedurethat does not involve the lengthyprocess of deciding a petition basedupon need or some other type ofshowing. Moreover, the Petition to MakeSpecial procedure requires a petition tobe decided once the application reachesthe Design Group, whereas theexpedited procedure is instituted oncethe fee is paid and the application isready for examination. Further, the‘‘Petition to Make Special’’ willcontinue to be made available. Althoughthe § 1.155 expedited examination ismore costly, the cost is warranted dueto more comprehensive expeditedprocedures to reduce processing time.

Comment: One commenter alsosuggested that if the Office procedurefor dealing with a petition to makespecial is too complex, then the answershould be to simplify the Petition toMake Special procedure.

Response: The Petition to MakeSpecial procedures are adopted fortreating a variety of types of cases forwhich a determination must be made asto whether the subject matter qualifiesunder the procedure; e.g., whether ‘‘theinvention will materially enhance thequality of the environment.’’ On theother hand, the expedited procedure of§ 1.155 is an entirely different rulewhich is fee-based and which may bereadily decided as part of a clericalfunction, thereby reducing processingtime and costs since the applicationdoes not need to be reviewed by a highlevel official.

Comment: Two comments weredirected to the amount of time theexaminers spend on the searching ofdesign applications. One commenterwas alarmed by the belief that designapplications were examined in groupsof ten or twenty and questioned thefairness of not examining theapplication in the order of filing and ofdelaying examination until a group isfilled. The same commenter reasonedthat design applications are easy tosearch and therefore hiring additionaldesign applications examiners shouldallow each design application to beexamined in the order of filing. Thesame commenter postulated thatapplicants should not have to pay asurcharge and perform their own searchin order to obtain the examination for

which they have already paid. Anothercommenter stated that the examinerswill require additional time forsearching expedited cases.

Response: Only the search phase ofthe examination of design applicationsis conducted in groups. Generally, theremainder of the examination process isdone individually, unless the subjectmatter is so close as to involve doublepatenting. However, the most timeconsuming part of the design patentapplication examination is the searchfor prior art. Unlike the utility patentexaminer, the design examiner is notconcerned about claim language, but isfocusing on visual characteristics thatcan be readily evaluated and searched.To employ economies of scale,searching is best done in groups.Generally, the size of group depends onthe clustering of filing dates andsimilarities in subject matter. Cases arenot delayed since design examiners arerequired to work on the ‘‘oldest-date’’case. Moreover, even though a groupsearch may be conducted, theexamination is done in order of filingand the cases are not delayed to fill agroup. Typically, the examiner picks theoldest date case for examination andthen tries to create a group of designapplications with similar subject matterfor efficiency in searching. As to thecomment directed to increasing thenumber of examiners, to dramaticallyincrease the number of examiners mightresult in less efficiency due tooverlapping subject matter and is notnecessarily an option available based onOffice priorities and budget. As to thecomment regarding the payment of a‘‘surcharge,’’ this is to cover the costsassociated with expediting the search. Itis recognized that more time is requiredto search cases individually than thatrequired if the searching is done ingroups. As to the requirement of asearch performed by the applicant, thiswill not only enhance the quality of thesearch but also ensure that applicant isprudently filing for expedited status andmaking an informed choice. As to theimpact of the processing time forexpedited cases on those regularly filed,enough resources are being provided sothat the handling of expedited cases willnot influence the examination of othercases.

Comment: Two comments suggestedthat the concept be extended to bothutility and design applications.

Response: This suggestion is not beingadopted at this time, since due tolimited resources, the idea is bestlimited to design applications wheredue to the relative ease of copying, thereis often a need for rapid patentprotection.

VerDate 22-SEP-99 18:16 Oct 01, 1999 Jkt 183247 PO 00000 Frm 00036 Fmt 4701 Sfmt 4702 E:\FR\FM\04OCP2.XXX pfrm01 PsN: 04OCP2


Comment: One comment supportedthe measure but asked for a quid-pro-quo short time goal of four months.

Response: The Design Group hasindicated that they will set as anobjective three months cycle-time forexamination and one month cycle-timefor printing and guidelines for theprogram shall be explained to the publicin the MPEP.

Comment: One comment stated therewas no need for an expedited proceduresince design applications ‘‘are beingexamined as of late relatively quickly.’’

Response: Nonetheless, the proposalis responsive to public need for thoseapplicants who are willing to pay anincreased, cost-offsetting fee in view ofthe benefits arising from furtherdecreases in patent prosecution time.

Comment: A few comments stated inopposition to the proposal that the bestsolution is to hire more examiners.

Response: Although additionalmanpower conceivably would reducecycle time, the Office faces certainconstraints on its ability to hire moreexaminers and it must utilize itsresources as best it can in order to meetall of the Office’s goals.

Comment: Several commentssupportive in concept also had specificrecommendations for streamlining theapplication process, includingprepayment or preauthorization of theissue fee, and faxing and/or telephoningall communications.

Response: As to the prepayment orpreauthorization of the issue fee, thissuggestion is not being adopted forreasons similar to those presented inconjunction with the proposal toeliminate preauthorization of paymentof the issue fee (§ 1.311). As to makingall communications by facsimile orphone, this will be encouraged wherepracticable and when the applicant’srepresentative supplies a facsimilenumber. Multiple references, however,may prove too cumbersome fortransmission by facsimile.

Comment: One comment suggestedthat automatic refunds be given if shorttime goals were not met and that a‘‘Public Advisory Committee’’ beestablished to monitor progress and tobe a point of contact for suggestionsfrom the public.

Response: The suggestion as toautomatic refunds is not being adoptedin view of the unpredictability ofunforeseen circumstances which mightjustify the failure to achieve the goal aswell as lack of statutory authority togive a refund because a processing goalis not met in time. As to the ‘‘PublicAdvisory Committee,’’ the Office doesnot foresee the need for such acommittee, and the most practical point

of contact would be with the designgroup itself, which is always open tosuggestions from the public.

Section 1.163: Section 1.163(b) isproposed to be eliminated to delete therequirement for two copies of thespecification for consistency with thecurrent Office practice. See InterimWaiver of 37 C.F.R. § 1.163(b) for TwoCopies of a Specification of anApplication for a Plant Patent, Notice,1213 Off. Gaz. Pat. Office 109 (August4, 1998). Section 1.163(c) is proposed tobe separated into §§ 1.163(b) and1.163(c). The order of the papers in aplant patent application, including theproposed application data sheet (see§ 1.76) is proposed to be listed in§ 1.163(b). The order of the sections inthe specification of a plant patentapplication is proposed to be listed in§ 1.163(c). New § 1.163(d) correspondsto § 1.77(c) and provides that the sectionheadings should be in uppercase letterswithout underlining or bold type.

New sections 1.163(c)(4) and1.163(c)(5) require the plant patentapplicant to state the Latin name andthe variety denomination for the plantclaimed. The Latin name and the varietydenomination of the claimed plant areusually included in the specification ofthe plant patent application. The Office,pursuant to the ‘‘InternationalConvention for the Protection of NewVarieties of Plants’’ (generally known byits French acronym as the UPOVconvention), has been asked to compilea database of the plants patented andthe database must include the Latinname and the variety denomination ofeach patented plant. Having thisinformation in separate sections of theplant patent application will make theprocess of compiling this database moreefficient.

Current §§ 1.163(c)(5) through1.163(c)(10) are proposed to beredesignated §§ 1.163(c)(6) through1.163 (c)(11), respectfully.

Section 1.163(c)(14) and 1.163(d) areproposed to be eliminated to delete thereference to a plant patent color codingsheet. The color codes and the colorcoding system are generally included inthe specification. Repeating the colorcoding information in a color codingsheet increases the risk of error andinconsistencies.

Section 1.173: The proposed changesto § 1.173 regarding identifying alloccurrences of claim broadening in areissue application, which werepublished in the Advance Notice (Topic16), have been dropped in view ofcomments received. A number ofcomments were directed to the undueburden which the rule change wouldplace on applicants and the potential for

future issues in litigation re § 1.56violations.

It is now being proposed that § 1.173be amended to consolidate therequirements for the filing of reissueapplications currently in § 1.173, therequirements for amending reissueapplications currently in § 1.121, andthe requirements for reissue drawings,currently in § 1.174. It is proposed that§ 1.174 be eliminated as therequirements for filing drawings wouldbe moved to § 1.173. The proposedlanguage consolidates many proceduraland formal requirements for reissueapplications into a single section.Paragraphs for separate items withinthis section have been proposed, inorder to set forth the requirements forthe specification, claims and drawingsin a format which is clearer and easierto understand.

The title § 1.173 is proposed to bechanged to ‘‘Reissue specification,drawings, and amendments’’ to moreaptly describe the inclusion of all filingand amendment requirements for thespecification, including the claims, andthe drawings of reissue applications ina single section.

Section 1.173(a), as proposed, setsforth the current requirements for thecontents of a reissue application atfiling, and the existing prohibitionagainst new matter in a reissueapplication.

It is proposed in § 1.173(a)(1) to nowrequire that the specification, includingthe claims, be furnished in the form ofa copy of the printed patent with asingle column of the patent appearingon each individual page of thespecification of the reissue application.This format for submitting a reissueapplication is currently set out in MPEP1411. Paragraph (a)(1) would alsoprovide that amendments made to thespecification at filing must be madeaccording to paragraph (b) of thissection.

Proposed paragraph (a)(2) of § 1.173sets forth the requirements for thedrawings at the time the reissueapplication is filed. If clean copies (i.e.,good quality photocopies free of anyextraneous markings) of the drawingsfrom the original patent are supplied byapplicant at the time of filing theapplication and the copies meet therequirements of § 1.84, no further(formal) drawings would be required.The current provision of § 1.174requiring temporary drawings would beeliminated in view of this proposedchange to § 1.173. The Office will beable to print a reissue patent using cleancopies of the patent drawings. Howchanges to the patent drawings may bemade at the time of filing of the reissue



application, or during the prosecution,would now be specifically set forth andmust be made in accordance with therequirements of proposed paragraph(b)(3) of this section (which areessentially the requirements of current§ 1.121(b)(3)(i) and (ii)). If applicant hasfailed to provide clean copies of thepatent drawings, or if changes are madeto the drawings during the reissueprosecution, drawings in compliancewith § 1.84 would continue to berequired at the time of allowance. It isalso proposed to eliminate the practiceof transferring drawings from the patentfile since clean copies of patentdrawings will be acceptable for use inthe printing of the reissue patent.

Section 1.173(b), as proposed, nowsets out that amendments in a reissueapplication made at the time of filingmay be made either by physicallyincorporating the amendments withinthe body of the specification (includingthe claims) as filed, or by a preliminaryamendment (separate paper).

Paragraphs (b)(1) and (b)(2) of § 1.173incorporate the provisions of current§ 1.121(b)(1) and (b)(2) as to the mannerof amending the specification andclaims, respectively.

Proposed § 1.173(b)(3) wouldincorporate the provisions currently setforth in § 1.121(b)(3) as to amendingreissue drawings.

Paragraph (c) of § 1.173, as proposed,would now require, that whenever anamendment is made to the claims, eitherat the time of filing or during theprosecution, the amendment must beaccompanied by a statement as to thestatus of all patent claims and all addedclaims, and an explanation as to thesupport in the disclosure for anyconcurrently made changes to theclaims.

Paragraph (d), as proposed, wouldincorporate the provisions currently setforth in § 1.121(b)(1)(iii) and (b)(2)(i)(C)as to how changes in reissueapplications are shown in thespecification and claims, respectively.

Paragraphs (e), (f) and (g), asproposed, merely reiterate requirementsfor retaining original claim numbering,amending the disclosure when required,and making amendments relative to theoriginal patent, as are set out currentlyin § 1.121(b)(2)(B), (b)(4), and (b)(6),respectively.

The current requirement of§ 1.121(b)(5) prohibiting enlarging thescope of the claims more than two yearsafter the patent grant has beeneliminated from proposed § 1.173 asbeing redundant to existing statutorylanguage in 35 U.S.C. 251.

Section 1.174: It is proposed that§ 1.174 be eliminated (and reserved) in

view of the inclusion of all filing andamendment requirements for reissuedrawings into proposed § 1.173. Thus,in addition to the reissue filingrequirements of current § 1.173, thereissue amendment requirements ofcurrent § 1.121(b) and the reissuedrawing requirements of current § 1.174would all be included in a single rule,proposed § 1.173. The proposed changesconsolidating several current rules intoa single section should make all reissuefiling and amendment requirementsquicker to locate and easier tounderstand.

Section 1.176: Section 1.176 isproposed to be amended to eliminatethe prohibition against requiringdivision in a reissue application. TheFederal Circuit has indicated that 35U.S.C. 251 does not, under certaincircumstances, prohibit an applicant ina reissue application from adding claimsdirected to an invention which isseparate and distinct from the inventiondefined by the original patent claims.See In re Amos, 953 F.2d 613, 21USPQ2d 1271 (Fed. Cir. 1991). Section1.176, however, presently prohibits theOffice from making a restrictionrequirement in a reissue application.This prohibition in § 1.176, incombination with the Federal Circuit’sdecision in Amos, frequently places anunreasonable burden on the Office inrequiring the examination of multipleinventions in a single reissueapplication.

Section 1.176 as proposed wouldallow the Office to make a restrictionrequirement in a reissue applicationbetween claims added in a reissueapplication and the original patentclaims, where the added claims aredirected to an invention which isseparate and distinct from theinvention(s) defined by the originalpatent claims. The criteria for making arestriction requirement in a reissueapplication between added claims andoriginal claims would be the same asthat applied in an original application.See MPEP 806 through 806.05(i). Seethe discussion of § 1.177 concerning theproposed treatment of multiple reissueapplications and procedures following arestriction requirement in a reissue.

The Office would continue to notrequire restriction among originalclaims of the patent (i.e., among claimsthat were in the patent prior to filing thereissue application). In order forrestriction to be required between theoriginal patent claims and added claims,the added claims must be directedtoward inventions which are separateand distinct from the invention(s)defined by the original patent claims.Restriction between multiple inventions

in the added claims would also bepossible provided the added claims aredrawn to several separate and distinctinventions.

The changes being considered are notintended to affect the type of errors thatare or are not appropriate for correctionunder 35 U.S.C. 251 (e.g., applicant’sfailure to timely file a divisionalapplication is not considered to be thetype of error that can be corrected by areissue). See In re Watkinson, 900 F.2d230, 14 USPQ2d 1407 (Fed. Cir. 1990);In re Mead, 581 F.2d 251, 198 USPQ 412(CCPA 1978); and In re Orita, 550 F.2d1277, 193 USPQ 145 (CCPA 1977).

Section 1.11(b) currently exemptsreissue continued prosecutionapplications (CPAs) under § 1.53(d)from the announcement of reissue filingin the Official Gazette. The proposedlanguage of § 1.176(b) further clarifiesthat the examination of a CPA reissue isnot subject to a two-month examinationdelay following its filing.

Section 1.177: It is proposed that§ 1.177 be modified to eliminate currentrequirements that divisional reissues belimited to separate and distinct parts ofthe thing patented, and that they beissued simultaneously unless orderedby the Commissioner. It is proposed thatthe rule be expanded to includecontinuations of reissues as well asdivisionals. As a result of commentsreceived following publication in theAdvance Notice (Topic 17), none ofwhich were opposed to the proposedchanges to § 1.177, the Office is movingforward with the changes proposed.

The Federal Circuit has indicated that35 U.S.C. 251, ¶ 2, does not placestricter limitations on the filing ofcontinuation or divisional reissueapplications than is placed by 35 U.S.C.120 and 121 on the filing ofcontinuation or divisional non-reissueapplications. See In re Graff, 111 F.3d874, 876, 42 USPQ2d 1471, 1473 (Fed.Cir. 1997). The Federal Circuitspecifically stated:* * * [35 U.S.C. 251, ¶ 3,] provides that thegeneral rules for patent applications applyalso to reissue applications, and [35 U.S.C.251, ¶ 2,] expressly recognizes that there maybe more than one reissue patent for distinctand separate parts of the thing patented. [35U.S.C. 251] does not prohibit divisional orcontinuation reissue applications, and doesnot place stricter limitations on suchapplications when they are presented byreissue, provided of course that the statutoryrequirements specific to reissue applicationsare met. See [35 U.S.C. 251, ¶ 3].* * * [35 U.S.C. 251, ¶ 2,] is plainlyintended as enabling, not limiting. [35 U.S.C.251, ¶ 2,] has the effect of assuring that adifferent burden is not placed on divisionalor continuation reissue applications,compared with divisions and continuations



of original applications, by codifying [TheCorn-Planter Patent, 90 U.S. 181 (1874),]which recognized that more than one patentcan result from a reissue proceeding. Thus,[35 U.S.C. 251, ¶ 2,] places no greater burdenon [a] continuation reissue application thanupon a continuation of an originalapplication; [35 U.S.C. 251, ¶ 2,] neitheroverrides, enlarges, nor limits the statementin [35 U.S.C. 251, ¶ 3,] that the provisionsof Title 35 apply to reissues.

Graff, 111 F.3d at 876–77, 42 USPQ2dat 1473. Thus, the Federal Circuit hasindicated that a continuation ordivisional reissue application is notsubject to any greater burden other thanthe burden imposed by 35 U.S.C. 120and 121 on a continuation or divisionalnon-reissue application, except that acontinuation or divisional reissueapplication must also comply with thestatutory requirements specific toreissue applications (e.g., the ‘‘errorwithout any deceptive intention’’requirement of 35 U.S.C. 251, ¶ 1).

Following Graff, the Office hasadopted a policy of treatingcontinuations/divisionals of reissueapplications in much the same manneras continuations/divisionals of non-reissue applications. Accordingly, it isproposed that the current requirementsof § 1.177 as to petitioning for non-simultaneous issuance of multiplereissues, suspending prosecution in anallowable reissue while the other isprosecuted, and limiting the content ofeach reissue to separate and distinctparts of the thing patented, all beeliminated. These requirements areconsidered unique to reissuecontinuations/divisionals, imposeadditional burdens on reissueapplicants, and are not consistent withthe Federal Circuit’s discussion of 35U.S.C. 251, ¶ 2, in Graff.

It is proposed that § 1.177(a) bechanged to require that all multiplereissue applications from a single patentinclude as the first line of the respectivespecifications a cross reference to theother reissue application(s). Thestatement would provide the publicwith notice that more than one reissueapplication has been filed to correct anerror (or errors) in a single patent. If onereissue has already issued without theappropriate cross reference, a certificateof correction would be issued to providethe cross reference in the issued reissue.

In § 1.177(b), it is proposed that all ofthe claims of the patent be presented ineach application as amended,unamended or canceled, and that thesame claim not be presented forexamination in more than oneapplication in its original unamendedversion. Any added claims would haveto be numbered beginning with the next

highest number following the last patentclaim.

If the same or similar claims werepresented in more than one of themultiple reissue applications, statutorydouble patenting (35 U.S.C. 101) or non-statutory (judicially created doctrine)double patenting considerations wouldbe given by the examiner duringexamination, and appropriate rejectionsmade. If needed to overcome therejections, terminal disclaimers wouldbe required in order to ensure commonownership of any non-distinct claimsthroughout each of the patents’lifetimes.

It is also being proposed concurrentlythat restriction between the originalpatent claims and any added claims toseparate and distinct subject matter bepermitted in reissue applications (seethe proposed change to § 1.176). If oneor more divisional applications are filedafter such a restriction requirement, it isproposed in § 1.177(c) that the resultingmultiple reissue applications would beissued alone or together, but each of thereissue applications would be requiredto include changes which correct anerror in the original patent before it canbe issued as a reissue patent. If one ofthe applications resulting from therestriction requirement was found to beallowable without any changes relativeto the patent (i.e., it includes only all theoriginal patent claims), further actionwould be suspended until one otherreissue application was allowable; then,the two would be recombined andissued as a single reissue patent. If theseveral reissue applications resultingfrom the restriction each includedchanges correcting some error in theoriginal patent, the reissue applicationscould be issued separately, with anappropriate cross-reference to theother(s) in each of the respectivespecifications.

Section 1.178: Section 1.178 isproposed to be amended to no longerrequire an offer to surrender the originalpatent at the time of filing as part of thereissue application filing requirements.The inclusion of a sentence regardingthe ‘‘offer’’ is frequently overlooked byreissue applicants at the time of filingand results in the Office sending out aNotice to File Missing Parts ofApplication (Missing Parts Notice). Thetime spent by the Office in preparing theMissing Parts Notice, the time neededby applicant to reply, and the furthertime needed by the Office to processapplicant’s ‘‘offer’’ reply, can all besaved by the proposed change. Therequirement for actual surrender of theoriginal patent (or a ‘‘statement’’ of itsloss, as set out below) before the reissue

application is allowed, however, isretained.

It is also proposed that § 1.178 beamended to change ‘‘affidavit ordeclaration’’ (attesting to the loss orinaccessibility of the original patent) to‘‘statement.’’ This proposed changewould eliminate the verificationrequirements of the current rule, whichare formalities covered by §§ 1.4 and10.18. This change is in conformancewith other similar changes to the patentrules which were effective on December1, 1997, to ease the verificationrequirements of applicants. See Changesto Patent Practice and Procedure, 62 FRat 53175–78, 1203 Off. Gaz. Pat. Officeat 100–03.

Section 1.193: Section 1.193(b)(1) isproposed to be amended to provide thatappellant may file a reply brief to anexaminer’s answer ‘‘or a supplementalexaminer’s answer.’’ The purpose of thisproposed amendment is to clarify thecurrent practice that the appellant mayfile a (or another) reply brief within twomonths of a supplemental examiner’sanswer (§ 1.193), but the appellant mustfile any request for an oral hearingwithin two months of the examiner’sanswer (§ 1.194).

Section 1.303: Section 1.303(a) isproposed to be amended to add thephrase ‘‘to an interference’’ between‘‘any party’’ and ‘‘dissatisfied with thedecision of the Board of Patent Appealsand Interferences’’ to correct aninadvertent omission.

Section 1.311: Section 1.311(b) isproposed to be amended to provide thatan authorization to charge the issue fee(§ 1.18) to a deposit account may befiled in an individual application onlyafter mailing of the notice of allowance(PTOL–85).

The suggestion of eliminatingpreauthorization of payment of the issuefee was discussed in Topic 19 of theAdvance Notice and received agenerally favorable response. Manypatent attorneys stated that theyconsidered preauthorization adangerous practice that they would notuse. Others thought thatpreauthorization was an importantsafety feature, and that the Office shouldfix the internal clerical problems whichwere motivating the change.

After considering all of the comments,the Office has decided to go forwardwith the proposal to eliminate theability of applicants to preauthorizepayment of the issue fee. Section1.311(b), as currently written, causesproblems for the Office that tend toincrease Office processing time. Thelanguage used by applicants toauthorize that fees be charged to adeposit account often varies from one



application to another. As a result,conflicts arise between the Office andapplicants as to the properinterpretation of authorizing languagefound in their applications. Forexample, some applicants are not awarethat it is current Office policy tointerpret broad language to ‘‘charge anyadditional fees which may be requiredat any time during the prosecution ofthe application’’ as authorization tocharge the issue fee on applicationsfiled on or after October 1, 1982. SeeDeposit Account Authorization toCharge Issue Fee, Notice 1095 Off. Gaz.Pat. Office 44 (October 25, 1988),reprinted at 1206 Off. Gaz. Pat. Office 95(January 6, 1998).

Even when the languagepreauthorizing payment of the issue feeis clear, the preauthorization canpresent problems for both the Office andpractitioners. One problem is because itmay not be clear to the Office whethera preauthorization is still valid after thepractitioner withdraws or thepractitioner’s authority to act as arepresentative is revoked. If the Officecharges the issue fee to the practitioner’sdeposit account, the practitioner mayhave difficulty getting reimbursementfrom the practitioner’s former client.Another problem is that when the issuefee is actually charged at the time thenotice of allowance is mailed, a noticeto that effect is printed on the notice ofallowance (PTOL–85) and applicant isgiven one month to submit/return thePTOL–85B with information to beprinted on the patent. Applicants aresometimes confused, however, by theusual three-month time period providedfor paying the issue fee and do not,therefore, return the PTOL–85B untilthe end of the normal three-monthperiod. As the Office does not wait forthe PTOL–85B to be returned to beginelectronic capture of the data to beprinted as a patent, any PTOL–85Breceived more than a month after theissue fee has been paid may not bematched with the application file intime for the information thereon to beincluded on the patent.

Clerical problems are not the mainreason for proposing to eliminate thepractice. The Office would like all of theinformation necessary for printing apatent to be in the application when theissue fee is paid. Thus, the Office isproposing to eliminate petitions under§ 3.81(b), see below, and intends to nolonger print any assignee data that issubmitted after payment of the issue fee.As explained in the Advance Notice, itis not generally in applicant’s bestinterest to pay the issue fee at the timethe notice of allowance is mailed, sinceit is much easier to have a necessary

amendment or an informationdisclosure statement considered if filedbefore the issue fee is paid rather thanafter the issue fee is paid. See current§ § 1.97 and 1.312(b). Also, once theissue fee has been paid, applicant’swindow of opportunity for filing acontinuing application is reduced andthe applicant no longer has the optionof filing a continuation or divisionalapplication as a continued prosecutionapplication (CPA) under § 1.53(d). SeePatents to Issue More Quickly AfterIssue Fee Payment, 1220 Off. Gaz. Pat.Office at 42, and Filing of ContinuingApplications, Amendments, or Petitionsafter Payment of Issue Fee, 1221 Off.Gaz. Pat. Office at 14. Many applicantsfind the time period between themailing date of the notice of allowanceand the due date for paying the issue feeuseful for re-evaluating the scope ofprotection afforded by the allowedclaim(s) and for deciding whether to paythe issue fee and/or to file one or morecontinuing applications.

If prompt issuance of the patent is ahigh priority, after receipt of the noticeof allowance applicant may promptlyreturn the PTOL–85B (supplying anydesired assignee and attorneyinformation) and pay the issue fee. Inthis way, the Office will be able toprocess the payment of the issue fee andthe information on the PTOL–85B as apart of a single processing step. Further,no time would be saved even if the issuefee was preauthorized for payment asthe Office would still not have theassignee and attorney data which istaken from the PTOL–85B. Thus, it isnot seen that the proposal to eliminatethe preauthorization to pay the issue feewould have any adverse effects on ourcustomers.

Section 1.312: Section 1.312(a) isproposed to be amended to change‘‘case’’ to ‘‘application’’ for clarity.Section 1.312(b) is proposed to beamended to replace the requiredshowing of good and sufficient reason ofwhy the amendment is needed and wasnot earlier presented, to provide thatany amendment pursuant to § 1.312filed after the date the issue fee is paidmust be accompanied by: (1) A petitionunder § 1.313(c)(1) to withdraw theapplication from issue; (2) anunequivocal statement that one or moreclaims are unpatentable; and (3) anexplanation as to how the amendment isnecessary to render such claim or claimspatentable. The proposed change to§ 1.312(b) is necessary because thechange in the patent printing process(discussed above with respect to § 1.55)will dramatically reduce the periodbetween the date of issue fee paymentand the date a patent is issued. In view

of the brief period between the date ofissue fee payment and the date a patentis issued, the Office must limitamendments under § 1.312 to thosenecessary to avoid the issuance of apatent containing an unpatentable claimor claims. Other amendments must befiled prior to payment of the issue fee(preferably within one month of themailing of a notice of allowance), or besought in a continuing application (see§ 1.313(c)(2)) or by certificate ofcorrection under 35 U.S.C. 255 and§ 1.323.

Section 1.313: Section 1.313(a) isproposed to be amended to provide that:(1) Applications may be withdrawnfrom issue for further action at theinitiative of the Office or upon petitionby the applicant; (2) to request that theOffice withdraw an application fromissue, the applicant must file a petitionunder this section including the fee setforth in § 1.17(h) and a showing of goodand sufficient reasons why withdrawalof the application is necessary; and (3)if the Office withdraws the applicationfrom issue, the Office will issue a newnotice of allowance if the Office againallows the application. The changesproposed to separate the languagedirected to actions by applicants andthose actions by the Office are alsoproposed to increase the clarity of thesection.

Section 1.313(b) is proposed to beamended to provide that once the issuefee has been paid, the Office will notwithdraw the application from issue atits own initiative for any reason except:(1) a mistake on the part of the Office;(2) a violation of § 1.56 or illegality inthe application; (3) unpatentability ofone or more claims; or (4) forinterference. Section 1.313(c) isproposed to provide that once the issuefee has been paid, the application willnot be withdrawn from issue uponpetition by the applicant for any reasonexcept: (1) Unpatentability of one ormore claims (see § 1.312(b)); or (2) forexpress abandonment (which expressabandonment may be in favor of acontinuing application). As discussedabove, changes in the patent printingprocess will dramatically reduce theperiod between the date of issue feepayment and the date a patent is issued.The Office must streamline theprovisions of current § 1.313(b) or theOffice will not be able to renderdecisions on such petitions before theapplication is issued as a patent.

It is the Office’s experience thatpetitions under current § 1.313(b) arerarely filed (and even more rarelygranted) on the basis of: (1) A mistakeon the part of the Office; (2) a violationof § 1.56 or illegality in the application;



(3) unpatentability of one or moreclaims; or (4) for interference. Therefore,the Office is proposing to provide thatthe Office may withdraw applicationsfrom issue after payment of the issue feeat its own initiative for these bases, butlimit petitions under current § 1.313(b)(§ 1.313(c) as proposed) to: (1)unpatentability of one or more claims;or (2) for express abandonment, (whichexpress abandonment may be in favor ofa continuing application). If a petitionunder § 1.313(c) filed on the basis ofunpatentability of one or more claims(§ 1.313(c)(1)), that petition must (inaddition to meeting the requirements of§ 1.313(a)) be accompanied by anamendment (pursuant to § 1.312), anunequivocal statement that one or moreclaims are unpatentable, and anexplanation as to how the amendment isnecessary to render such claim or claimspatentable. See discussion of § 1.312(b).

Obviously, if an applicant believesthat an application should bewithdrawn from issue (after payment ofthe issue fee) on the basis of a mistakeon the part of the Office, a violation of§ 1.56 or illegality in the application, orfor interference, the applicant maycontact the examiner and suggest thatthe examiner request the Group Directorto withdraw the application from issueat the initiative of the Office. Theapplicant, however, cannot insist thatthe Office withdraw an application fromissue (after payment of the issue fee) forthese reasons.

Section 1.313(d) is proposed toprovide that a petition under § 1.313will not be effective to withdraw theapplication from issue unless it isactually received and granted by theappropriate officials before the date ofissue. Section 1.313(d) is also proposedto advise applicants that withdrawal ofan application from issue after paymentof the issue fee may not be effective toavoid publication of applicationinformation. While the Office takesreasonable steps to stop the publicationand dissemination of applicationinformation (e.g., the patent document)once an application has been withdrawnfrom issue, withdrawal from issue afterpayment of the issue fee often occurstoo late in the patent printing process tocompletely maintain the application inconfidence. How much of theapplication information is actuallydisseminated depends upon how closeto the issue date the application iswithdrawn from issue. The change inthe patent printing process (discussedabove with respect to § 1.55) will makeit less likely that the Office cancompletely stop the publication anddissemination of applicationinformation in an application

withdrawn from issue under § 1.313after payment of the issue fee.

Section 1.314: Section 1.314 isproposed to be amended to change thereference to the fee set forth in‘‘§ 1.17(i)’’ to the fee set forth in‘‘§ 1.17(h).’’ This change is forconsistency with the changes to§ 1.17(h) and § 1.17(i). See discussion ofchanges to § 1.17(h) and § 1.17(i).

Section 1.322: Section 1.322(a) isproposed to be amended to provide that:(1) The Office may issue a certificate ofcorrection under the conditionsspecified in 35 U.S.C. 254 at the requestof the patentee or the patentee’sassignee or at its own initiative; and (2)the Office will not issue such acertificate at its own initiative withoutfirst notifying the patentee (includingany assignee of record) at thecorrespondence address of record andaffording the patentee an opportunity tobe heard. Section 1.322 as proposedwould continue to provide that if therequest relates to a patent involved in aninterference, the request must complywith the requirements of this sectionand be accompanied by a motion under§ 1.635. The current language of§ 1.322(a) permits a third party requestfor a certificate for correction (a party‘‘not owning an interest in the patent’’),which has led third parties to concludethat they have standing to demand thatthe Office issue, or refuse to issue, acertificate of correction. Third parties donot have standing to demand that theOffice issue, or refuse to issue, acertificate of correction. See HallmarkCards, Inc. v. Lehman, 959 F. Supp. 539,543–44, 42 USPQ2d 1134, 1138 (D.D.C.1997). Since the burden on the Officecaused by such third-party requests nowoutweighs the benefit such informationprovides to the Office, the Office isproposing to amend § 1.322 such that acertificate of correction will be issuedonly at the request of the patentee or atthe initiative of the Office.

Section 1.323: Section 1.323 isproposed to be amended to provide thatthe Office may issue a certificate ofcorrection under the conditionsspecified in 35 U.S.C. 255 at the requestof the patentee or the patentee’sassignee, upon payment of the fee setforth in § 1.20(a). The language from 35U.S.C. 255 currently in § 1.323 thatprovides the specific conditions underwhich a certificate of correction under§ 1.323 will be issued is proposed to beeliminated for consistency with § 1.322and because it is redundant to repeat thelanguage of the statute in the rule.Section 1.323 as proposed wouldcontinue to provide that if the requestrelates to a patent involved in aninterference, the request must comply

with the requirements of this sectionand be accompanied by a motion under§ 1.635.

Section 1.324: Section 1.324 wouldhave the title revised to reference thestatutory basis for the rule, 35 U.S.C.256. It is particularly important torecognize that 35 U.S.C. 256, thestatutory basis for corrections ofinventorship in patents under § 1.324, isstricter than 35 U.S.C. 116, the statutorybasis for corrections of inventorship inapplications under § 1.48. 35 U.S.C. 256requires ‘‘on application of all theparties and assignees,’’ while 35 U.S.C.116 does not have the samerequirement. Thus, the flexibility under35 U.S.C. 116, and § 1.48, whereinwaiver requests under § 1.183 may besubmitted (e.g., MPEP 201.03, page 200–6, Statement of Lack of DeceptiveIntention), is not possible under 35U.S.C. 256, and § 1.324.

Section 1.324(b)(1) would be revisedto eliminate the requirement for astatement from an inventor beingdeleted stating that the inventorshiperror occurred without deceptive intent.The revision would be made to conformOffice practice to judicial practice asenunciated in Stark v. AdvancedMagnetics, Inc., 119 F.3d 1551, 43USPQ2d 1321 (Fed. Cir. 1997), whichheld that 35 U.S.C. 256 only requires aninquiry into the intent of a nonjoinedinventor. The clause stating ‘‘such errorarose without deceptive intent on hispart’’ was interpreted by the court asbeing applicable only when there is anerror where an inventor is not named,and not when there is an error where aperson is named as an inventor. Whilethe decision recognized that the Office’sadditional inquiry as to inventorsnamed in error was appropriate under35 U.S.C. 256 when read in conjunctionwith inequitable conduct standards, theOffice no longer wishes to conduct aninquiry broader in scope than whatwould be conducted had the matterbeen raised in a court proceeding ratherthan under § 1.324.

Section 1.324(b)(2), which requires astatement from the current namedinventors either agreeing to therequested change or stating that theyhave no disagreement to the requestedchange, would not be revised. Paragraph(b)(2) in combination with paragraph(b)(1) ensures compliance with therequirement of the statute forapplication by all the parties, whichrequirement is separate from therequirement that certain parties addressthe lack of deceptive intent in theinventorship error.

Section 1.324(c) would be a newlyadded paragraph to reference §§ 1.48,1.497 and 1.634 for corrections of



inventorship in national applications,international applications andinterferences, respectively.

Section 1.366: Section 1.366(c) isproposed to be amended to continue toprovide that a maintenance fee paymentmust include the patent number and theapplication number of the United Statesapplication for the patent on which themaintenance fee is being paid, but tofurther provide that if the paymentincludes identification of only thepatent number (i.e., does not identifythe application number for the patent onwhich the maintenance fee is beingpaid), the Office may apply the paymentto the patent identified by patentnumber in the payment or may returnthe payment. The Office requires theapplication number to detect situationsin which a maintenance payment issubmitted for the incorrect patent (e.g.,due to a transposition error in the patentnumber). Nevertheless, a significantnumber of maintenance fee paymentscontain only the patent number and notthe application number for the patent onwhich the maintenance fee is beingpaid.

The proposed change to § 1.366(c)will permit the Office to streamlineprocessing of maintenance fee paymentsthat lack the application number for thepatent on which the maintenance fee isbeing paid. The Office intends to treatpayments that do not contain both apatent number and application numberas follows: First, a reasonable attemptwill be made to contact the person whosubmitted the payment (patentee oragent) by telephone to confirm thepatent number and application numberof the patent for which the maintenancefee is being paid. Second, if such anattempt is not successful but thepayment includes at least a patentnumber, the payment will be processedas a maintenance fee paid for the patentnumber provided, and the person whosubmitted the payment will be sent aletter informing him or her of the patentnumber and application number of thepatent to which the maintenance feewas posted and given a period of timewithin which to file a petition under§ 1.377 (and $130) if the maintenancefee was not posted to the patent forwhich the payment was intended. If thepayment does not include a patentnumber (e.g., includes only anapplication number), the payment willbe returned to the person whosubmitted the payment.

Section 1.446: Section 1.446 isproposed to be amended in such that itsrefund provisions are consistent withthe refund provisions of § 1.26. Seediscussion of § 1.26.

Section 1.497: Section 1.497(b)(2) hasbeen proposed to be amended in amanner consistent with § 1.64(b).Therefore, § 1.497(b)(2) is proposed tobe amended to refer to anysupplemental oath or declaration and toprovide that if the person making theoath or declaration is the legalrepresentative, the oath or declarationshall state that the person is the legalrepresentative and shall state thecitizenship, residence, and mailingaddress of the legal representative. Inaddition, § 1.497(b)(2) is proposed to beamended to clarify that facts submittedunder §§ 1.42, 1.43, and 1.47 are notrequired to be in the § 1.497 oath ordeclaration. Section 1.497(d) isproposed to provide for the situation inwhich an oath or declaration filedpursuant to 35 U.S.C. 371(c)(4) and§ 1.497 names an inventive entitydifferent from the inventive entity setforth in the international stage. Section1.497(d) is proposed to be added toprovide that such an oath or declarationmust be accompanied by: (1) Astatement from each person being addedas an inventor and from each personbeing deleted as an inventor that anyerror in inventorship in theinternational stage occurred withoutdeceptive intention on his or her part;(2) the processing fee set forth in§ 1.17(i); and (3) if an assignment hasbeen executed by any of the originalnamed inventors, the written consent ofthe assignee (see § 3.73(b)). Thus,naming a different inventive entity in anoath or declaration filed to enter thenational stage under 35 U.S.C. 371 in aninternational application is notanalogous to the filing of an oath ordeclaration to complete an applicationunder 35 U.S.C. 111(a) (which operatesitself to name the new inventive entityunder §§ 1.41(a)(1) and 1.48(f)(1)), but isanalogous to correction of inventorshipunder § 1.48(a).

Section 1.510: Paragraph (b)(4) of§ 1.510 is proposed to be revised tocorrespond to paragraph (a) of § 1.173 asrevised by the present notice, see thediscussion as to the revision of § 1.173.It is considered advantageous for thereexamination and reissue provisions tocorrespond with each other to themaximum extent possible, in order toeliminate confusion.

Section 1.530: Paragraph (d) of § 1.530is proposed to be revised, andparagraphs (e)–(i) are proposed to beadded, to correspond to paragraph (b) etseq. of § 1.173 as revised by the presentnotice, see the discussion as to therevision of § 1.173. It is consideredadvantageous for the reexamination andreissue provisions to correspond witheach other to the maximum extent

possible, in order to eliminateconfusion. Paragraphs (d)(3) and (d)(4)of § 1.530 are proposed to beredesignated as paragraphs (j) and (k) of§ 1.530.

Section 1.530(l) is proposed to beadded to make it clear that where theinventorship of a patent beingreexamined is to be corrected, a petitionfor correction of inventorship whichcomplies with § 1.324 must besubmitted during the prosecution of thereexamination proceeding. If thepetition under § 1.324 is granted, acertificate of correction indicating thechange of inventorship will not beissued, because the reexaminationcertificate that will ultimately issue willcontain the appropriate change-of-inventorship information (i.e., thecertificate of correction is in effectmerged with the reexaminationcertificate). In the rare instances wherethe reexamination proceedingterminates but does not result in areexamination certificate under § 1.570(reexamination is vacated or the orderfor reexamination is denied), patenteemay then request that the inventorshipbe corrected by a certificate ofcorrection indicating the change ofinventorship.

Section 1.550: Where an applicationhas become abandoned for failure totimely respond, the application can berevived under 35 U.S.C. 133 upon anappropriate showing of unavoidabledelay via petition for revival and apetition fee. Analogously, where areexamination proceeding becomesterminated for failure to timely respond,the proceeding can be restored topendency under 35 U.S.C. 133 upon anappropriate showing of unavoidabledelay, again via a petition and fee. SeeIn re Katrapat, AG, 6 USPQ2d 1863,1865–66 (Comm’r Pat. 1988).

In a situation where an appropriateshowing of unavoidable delay cannot bemade, an abandoned application can berevived upon an appropriate showingthat the delay was unintentional via apetition and fee. The showing that thedelay was unintentional is a lesserstandard than that of unavoidable delay;however, the required petition fee for anunintentional delay petition issubstantially larger than that of anunavoidable delay petition. Thisunintentional delay alternative has beenfound to be highly desirable to deal withsituations where the higher standard forrevival cannot be met; to eliminatepaperwork, time, and effort in makingthe unavoidable delay showing; and toeliminate the need to requestreconsideration if the initial petition forrevival is dismissed or denied.



Despite the advantages of relief topetitioners via the unintentional delayalternative, there is no such alternativein reexamination proceedings. SeeKatrapat, 6 USPQ2d at 1866–67. Itwould be desirable to provide anunintentional delay alternative byrulemaking. Unfortunately, the statutedoes not provide a basis forunintentional delay relief inreexamination proceedings that isanalogous to that for an application. Thestatutory basis for revival of anapplication based upon theunintentional delay standard is 35U.S.C. 41(a)(7). There is no suchstatutory basis for restoring areexamination proceeding to pendencybased upon the unintentional delaystandard.

Section 1.550(c) is proposed to berevised to provide the reexaminationpatentee with unintentional delay relieffor any reply filed within the fullstatutory time period for submission ofthe papers that were unintentionallydelayed. This relief would be providedin the form of an extension of timeunder § 1.550(c), which would begranted when unintentional delay isestablished and the appropriateextension of time fee is paid.

This avenue of unintentional delayrelief is expected to deal with themajority of reexamination proceedingsterminated for untimely response. Thereason for this is as follows. Lateresponses are most often generatedbecause of one of three reasons: (1) Thepatentee does not realize that anextension must be requested prior to theresponse due date and thus, files theresponse after the due date togetherwith an extension request; (2) thepatentee files the extension requestshortly prior to the due date but fails togive reasons for the extension, and thetime expires before a properreexamination extension request cansubsequently be provided and (3) thepatentee is aware of the need for givingreasons and for filing of the requestprior to the due date, however, thereminder docket system is not set up forthe reexamination type of extensionrequest and the request is not timely orproperly made. In all three of thesesituations, the extension generallyreaches the Office prior to the full six-month statutory period for submissionof the response, especially given the factthat a one- or two-month shortenedstatutory period is set for response inreexamination. If there is timeremaining in the statutory period, theOffice can notify the patentee that anextension in accordance with§ 1.550(c)(2) is needed to maintainpendency.

It is understood that the proposedrevision will not provide relief topatentees in all cases with anunintentional termination ofreexamination proceedings. However, inthe absence of a statutory amendment toproviding unintentional delay reliefanalogous to that of 35 U.S.C. 41(a)(7)for an application, the present rulechange is believed to be the best avenueavailable to give patentees unintentionaldelay relief in reexaminationproceedings.

Section 1.666: Section 1.666(b) isproposed to be amended to change thereference to the fee set forth in‘‘§ 1.17(i)’’ to the fee set forth in‘‘§ 1.17(h).’’ This change is forconsistency with the changes to§ 1.17(h) and § 1.17(i). See discussion ofchanges to § 1.17(h) and § 1.17(i).

Section 1.720: Section 1.720(b) isproposed to be amended to clarify thata patent extended under § 1.701 or§ 1.790 would also be eligible for patentterm extension. Section 1.720(g) isproposed to be amended to clarify thatan application for patent term extensionmay be timely filed during the period ofan interim extension under § 1.790.

Section 1.730: Section 1.730 isproposed to be amended to add newparagraphs (b), (c) and (d) which statewho should sign the patent termextension application and what proof ofauthority may be required of the personsigning the application. 35 U.S.C. 156provides that an application for patentterm extension must be filed by thepatent owner of record or an agent of thepatent owner. The Office interprets anagent of a patent owner to be either alicensee of the patent owner (forexample, the party that soughtpermission from the Food and DrugAdministration for permission tocommercially use or sell a product, i.e.,the marketing applicant), or a registeredattorney or agent. Proposed § 1.730(b)explains that, if the application issubmitted by the patent owner, thecorrespondence must be signed by thepatent owner or a registeredpractitioner. Proposed § 1.730(c) statesthat, if the application is submitted byan agent of the patent owner, thecorrespondence must be signed by aregistered practitioner, and that theOffice may require proof that the agentis authorized to act on behalf of thepatent owner. Lastly, proposed§ 1.730(d) states that the Office mayrequire proof of authority of a registeredpractitioner who signs the applicationfor patent term extension on behalf ofthe patent owner or the agent of thepatent owner.

Section 1.740: Currently, for eachproduct claim, method of use claim, and

method of manufacturing claim whichreads on the approved product, ashowing is required demonstrating themanner in which each applicable claimreads on the approved product. Section1.740(a)(9) is proposed to be amended toprovide that the application for patentterm extension only needs to explainhow one product claim claims theapproved product, if there is a claim tothe product. In addition, the applicationwould only need to explain how onemethod of use claim claims the methodof use of the approved product, if thereis a claim to the method of use of theproduct. Lastly, the application wouldonly need to explain how one claimclaims the method of manufacturing theapproved product, if there is a claim tothe method of manufacturing theapproved product. With this proposedchange, applicants for patent termextension should be able to reduce thetime required to prepare the applicationsince at the most only three claimswould have to be addressed rather thanall the claims that read on the threecategories. Each claim that claims theapproved product, the method of use ofthe approved product, or the method ofmanufacturing the approved productwould still be required to be listed. See35 U.S.C. 156(d)(1)(B).

Section 1.740(a)(10) is proposed to beamended to separate the text intoparagraphs (A), (B) and (C) to aid incomprehension of the text.

Section 1.740(a)(14) is proposed to beamended to add ‘‘and’’ after thesemicolon since the paragraph is nowthe next to last paragraph.

Section 1.740(a)(15) is proposed to beamended to change the semicolon to aperiod.

Section 1.740(a)(16) is proposed to bemoved to § 1.740(b), the number ofcopies changed from two to three, andto eliminate the express ‘‘certification’’requirement.

Section 1.740(a)(17) is proposed to bedeleted as the requirement for an oathor declaration is being deleted in§ 1.740(b).

Section 1.740(b) is proposed to beamended to delete the requirement foran oath or declaration since theaverments set forth in § 1.740(b) areimplicit in the submission of anapplication for patent term extensionand the signature to the application.

Section 1.740(c) is proposed to beamended to increase the time period forresponse to a notice of informality for anapplication for patent term extensionfrom one month to two months, wherethe notice of informality does not set atime period.

Section 1.741: Section 1.741(a) isproposed to be amended to clarify the



language to reference §§ 1.8 and 1.10instead of referencing the rules and thetitles of the rules. Section 1.741(a)(5) isproposed to be amended to correct theformat of the citation of the statute.Section 1.741(b) is proposed to beamended to provide that requests forreview of a decision that the applicationfor patent term extension is incomplete,or review of the filing date accorded tothe application, must be filed as apetition under § 1.741 accompanied bythe fee set forth in § 1.17(h), rather thana petition under § 1.181, and that thepetition must be filed within twomonths of the date of the notice, andthat the extension of time provisions of§ 1.136 apply.

Section 1.780: Section 1.780,including the title, is proposed to beamended to use terminology consistentwith current practice by inserting theterm ‘‘order.’’

Section 1.809: Section 1.809(b) isproposed to be amended to change‘‘respond’’ to ‘‘reply’’ (see § 1.111), and§ 1.809(b)(1) is proposed to be amendedto eliminate the language discussingpayment of the issue fee. Section1.809(c) is proposed to be amended toprovide that if an application for patentis otherwise in condition for allowanceexcept for a needed deposit and theOffice has received a written assurancethat an acceptable deposit will be made,applicant will be notified and given aperiod of time within which the depositmust be made in order to avoidabandonment. Section 1.809(c) is alsoproposed to be amended to provide thatthis time period is not extendable under§ 1.136 (a) or (b) (see § 1.136(c)). Section1.809(c) is also proposed to be amendedto eliminate the language stating thatfailure to make a needed deposit willresult in abandonment for failure toprosecute because abandonment forfailure to prosecute occurs by operationof law when an applicant fails to timelycomply with such a requirement (see 35U.S.C. 133).

Section 1.821: The Office indicated inthe Advance Notice that the submissionof sequence listings on paper is asignificant burden on the applicants andthe Office, and that it was consideringchanges to § 1.821 et seq. to: (1) Permita machine-readable submission of thenucleotide and/or amino acid sequencelistings to be submitted in anappropriate archival medium; and (2) nolonger require the voluminous papersubmission of nucleotide and/or aminoacid sequence listings. See Changes toImplement the Patent Business Goals,63 FR at 53510–12, 1215 Off. Gaz. Pat.Office at 99–100.

Unlike a computer program listingappendix under § 1.96(c), a sequence

listing under § 1.821 is part of thedisclosure of the application. TheOffice, however, may acceptelectronically filed material in a patentapplication, regardless of whether it isconsidered ‘‘essential’’ or‘‘nonessential.’’ The patent statuterequires that ‘‘[a]n application for patentshall be made * * * in writing to theCommissioner.’’ 35 U.S.C. 111(a)(1)(emphasis added). With regard to themeaning of the ‘‘in writing’’ requirementof 35 U.S.C. 111(a)(1), ‘‘[i]n determiningany Act of Congress, unless the contextindicates otherwise * * *, ‘‘writing’’includes printing and typewriting andreproduction of visual symbols byphotographing, multigraphing,mimeographing, manifolding, orotherwise.’’ 1 U.S.C. 1 (emphasisadded); see also Fed. R. Evid. 1001(1)(writing defined as including magneticimpulse and electronic recording) andtitle XVII of the Omnibus Consolidatedand Emergency SupplementalAppropriations Act, 1999, Pub. L. 105–277, 112 Stat. 2681 (1998) (theGovernment Paperwork EliminationAct). An electronic document (or anelectronic transmission of a document)is a ‘‘reproduction of visual symbols,’’and the ‘‘in writing’’ requirement of 35U.S.C. 111(a)(1) does not preclude theOffice from accepting an electronicallyfiled document. Likewise, there isnothing in the patent statute thatprecludes the Office from designating an‘‘electronic’’ record of an applicationfile as the Office’s ‘‘official’’ copy of theapplication.

As discussed with regard to theproposed change to § 1.96, CD–ROMand CD–R are the only practicalelectronic media of archival quality. TheCD–ROM or CD–R sequence listingwould serve as the ‘‘original’’ of thesequence listing, yet still offer theconveniences of small size and ease inviewing. Thus, the Office is specificallyconsidering revising § 1.821 et seq. topermit applicants to submit the officialcopy of the sequence listing either onpaper or on CD–ROM or CD–R.

Section 1.821(c) is proposed to beamended to provide that a ‘‘SequenceListing’’ must be submitted either: (1) onpaper in compliance with § 1.823(a)(1)and (b); or (2) as a CD–ROM or CD–R incompliance with § 1.823(a)(2) and (b)that will be retained with the paper file.Section 1.821 is also proposed to beamended to provide that applicant maysubmit a second copy of the CD–ROMor CD–R ‘‘Sequence Listing’’ to satisfythe requirement for a ‘‘SequenceListing’’ in a computer readable formatpursuant to § 1.821(e), provided that theCD–ROM or CD–R ‘‘Sequence Listing’’meets the requirements of § 1.824(c)(4).

However, in order for a sequence listingto be a part of an internationalapplication, it must be filed in paper.

Section 1.821(e) and § 1.821(f) areproposed to be amended for consistencywith the provisions in § 1.821(c) thatpermit the official copy of the‘‘Sequence Listing’’ required by§ 1.821(c) to be a paper or a CD–ROMor CD–R copy. Should these provisionsbe adopted, conforming changes may bemade in the regulations to accommodateinternational applications in thenational stage.

Section 1.823: The heading of § 1.823is proposed to be amended forconsistency with the provisions in§ 1.821(c) that permit the official copy ofthe ‘‘Sequence Listing’’ required by§ 1.821(c) to be a paper or a CD–ROMor CD–R copy. Section 1.823(a) isproposed to be amended to be dividedinto a paragraph (a)(1) that sets forth itscurrent requirement as applying if the‘‘Sequence Listing’’ submitted pursuantto § 1.821(c) is on paper, and aparagraph (a)(2) setting forth therequirements if the ‘‘Sequence Listing’’submitted pursuant to § 1.821(c) is on aCD–ROM or CD–R. Section 1.823(a)(2) isproposed to provide that: (1) a‘‘Sequence Listing’’ submitted on a CD–ROM or CD–R must be a text file in theAmerican Standard Code forInformation Interchange (ASCII) inaccordance with the standards for thatmedium set forth in 36 CFR1228.188(c)(2)(i) (no other formatallowed); (2) the CD–ROM or CD–R‘‘Sequence Listing’’ must beaccompanied by documentation onpaper that contains the machine format(e.g., IBM–PC, Macintosh (etc.)), theoperating system (e.g., MS–DOS,Macintosh, Unix) and any other specialinformation that is necessary to identify,maintain, and interpret the electronic‘‘Sequence Listings’’; and (3) a notationthat ‘‘Sequence Listing’’ is submitted ona CD–ROM or CD–R must be placedconspicuously in the specification (see§ 1.77(b)(11)). Section 1.823(a)(2) is alsoproposed to provide that the CD–ROMor CD–R ‘‘Sequence Listing’’ must belabeled with the following information:(1) The name of each inventor (ifknown); (2) title of the invention; (3) thesequence identifiers of the ‘‘SequenceListings’’ on that CD–ROM or CD–R; and(4) the docket number used by theperson filing the application to identifythe application (if applicable). Finally,§ 1.823(c)(4) is proposed to be amendedto refer to CD–R (as well as the CD–ROM currently provided for). Shouldthese provisions be adopted, conformingchanges may be made in the regulationsto accommodate internationalapplications in the national stage.



Section 1.825: Section 1.825(a) isproposed to be amended to provide thatany amendment to the CD–ROM or CD–R copy of the ‘‘Sequence Listing’’submitted pursuant to § 1.821 must bemade by submission of a new CD–ROMor CD–R containing a substitute‘‘Sequence Listing,’’ and that suchamendments must be accompanied by astatement that indicates support for theamendment in the application-as-filed,and a statement that the new CD–ROMor CD–R includes no new matter.Section 1.825(b) is proposed to beamended to provide that anyamendment to the CD–ROM or CD–Rcopy of the ‘‘Sequence Listing’’pursuant to § 1.825(a) must beaccompanied by a substitute copy of thecomputer readable form of the‘‘Sequence Listing’’ required pursuant to§ 1.821(e), including all previouslysubmitted data with the amendmentincorporated therein, and accompaniedby a statement that the computerreadable form copy is the same as thenew CD–ROM or CD–R copy of the‘‘Sequence Listing.’’ Should theseprovisions be adopted, conformingchanges may be made in the regulationsto accommodate internationalapplications in the national stage.

The comments are addressed above inthe discussion of the proposed changeto § 1.96. See discussion of § 1.96.

Part 3Section 3.27: Section 3.27 is proposed

to be amended to eliminate thereference to petitions under § 3.81(b)and the reference to a documentrequired by Executive Order 9424 whichdoes not affect title. See discussion of§ 3.81(b).

Section 3.71: It is proposed that § 3.71be revised as discussed immediatelybelow. In conjunction with theproposed revision, the section would bebroken into paragraphs (a) through (d),with each paragraph being given aheading, in order to more clearlydelineate the topics of the paragraphs.

Proposed paragraph (a) of § 3.71would clarify that the assignee must beof record in a U.S. national patentapplication in order to conductprosecution in place of the inventiveentity (the inventors of the application)or any previous assignee that wasentitled to conduct prosecution.

Paragraph (b) of § 3.71 has beenproposed in order to clarify and definewhat is meant by the § 3.71(a) assigneewhich may conduct the prosecution ofa U.S. national application for a patent.

A national patent application isowned by the inventor(s), an assignee orassignees of the inventor(s), or somecombination of the two. All parties

having a portion of the ownership mustact together in order to be entitled toconduct the prosecution.

If there is an assignee of the entireright, title and interest in the patentapplication, § 3.71(b)(1) (as proposed)states that the single assignee may actalone to conduct the prosecution of anapplication.

If there is no assignee of the entireright, title and interest of the patentapplication, then two possibilities exist:

(1) The application has not beenassigned; thus, ownership resides solelyin the inventor(s) (i.e., the applicant(s)).In this situation, § 3.71 does not apply(since there is no assignee), and thesingle inventor, or the combination ofall the joint inventors, is needed toconduct the prosecution of anapplication.

(2) The application has been assigned;thus, there is at least one ‘‘partialassignee.’’ As pointed out in § 3.71(b)(2),a partial assignee is any assignee ofrecord who has less than the entireright, title and interest in theapplication. The application will beowned by the combination of all partialassignees and all inventors who havenot assigned away their right, title andinterest in the application. As proposed,§ 3.71(b)(2) points out that where atleast one inventor retains an ownershipinterest together with the partialassignee(s), the combination of allpartial assignees and inventors retainingownership interest is needed to conductthe prosecution of an application.Where no inventor retains an ownershipinterest, the combination of all partialassignees is needed to conduct theprosecution of an application.

To illustrate this, note as follows.Inventors A and B invent a process andfile their application. Inventors A and Btogether may conduct prosecution.Inventor A then assigns his/her rights inthe application to Corporation X. Assoon as Corporation X (now a partialassignee) is made of record in theapplication as a partial assignee (byfiling a statement pursuant to § 3.73(b)stating fifty percent ownership),Corporation X and Inventor B togethermay conduct prosecution. CorporationX and Inventor B then both assign theirrights in the application to CorporationY. As soon as Corporation Y (now anassignee of the entire right, title andinterest) is made of record in theapplication as the assignee (by filing astatement pursuant to § 3.73(b) statingone-hundred percent ownership),Corporation Y may, by itself, conductprosecution.

This definition of the assignee wouldapply wherever the assignee is

permitted to take action in theprosecution of an application for patent.

Proposed paragraph (c) of § 3.71defines the meaning of the term ‘‘ofrecord’’ used in proposed paragraph (b)of § 3.71. An assignee is made of recordin an application by filing a statementwhich is in compliance with § 3.73(b).Note that the assignee being made ‘‘ofrecord’’ in an application is differentthan the recording of an assignment inthe assignment records of the Officepursuant to § 3.11.

Proposed paragraphs (a) through (c) of§ 3.71 have been drafted to allow for thesituation where an assignee takes actionin the prosecution of a reexaminationproceeding (in addition to that where apatent application is involved). In areexamination, the assignee has theentire right, title and interest in thepatent upon which reexamination isbased.

Proposed paragraph (d) of § 3.71,concerning trademarks, expands the listof actions an assignee may take orrequest. Specifically, an assignee mayalso rely on its federal trademarkapplication or registration when filingpapers against a third party. Thissubsection also corrects theinappropriate use of the term‘‘prosecution’’ when referring tomaintaining a registered trademark.

In various places in proposed § 3.71,‘‘national’’ has been added before‘‘application.’’ Section 3.71 is directedto national applications as defined in§ 1.9(a)(1) and not to international (PCT)applications. In an international (PCT)application the assignee is often theapplicant for some, or all, of thedesignated states (except the U.S.) andmay control prosecution as theapplicant. Section 3.71 would apply tointernational applications after entryinto the U.S. national stage under 35U.S.C. 371.

Section 3.73: In Paragraph (a) of§ 3.73, it is proposed to revise thesecond sentence to include a trademarkregistration, in addition to a trademarkapplication which is currently recited.The sentence would read: ‘‘The originalapplicant is presumed to be the ownerof a trademark application orregistration, unless there is anassignment.’’

Under the proposal, paragraph (b) of§ 3.73 would be revised for clarity andparagraph formatting. Additionally,paragraph (b) of § 3.73 is proposed to berevised to clarify that the statementestablishing ownership must explicitlyidentify the assignee (by adding thelanguage ‘‘a signed statementidentifying the assignee * * *’’).Paragraph (b) of § 3.73 is furtherproposed to be revised to make it clear



that while the submission establishingownership is separate from, and inaddition to, the specific action taken bythe assignee (e.g., appointing a newattorney), the two may be presentedtogether as part of the same paper. Thiswould be done by adding that ‘‘Theestablishment of ownership by theassignee may be combined with thepaper that requests or takes the action.’’

Currently, paragraph (b) of § 3.73requires that the submission (statement)establishing ownership ‘‘must be signedby a party authorized to act on behalf ofthe assignee.’’ Under the proposal, thislanguage would be expanded upon bynewly added paragraph (b)(2) of § 3.73which would clarify what is acceptableto show that the party signing thesubmission is authorized to act onbehalf of the assignee. (1) Thesubmission could include a statementthat the party signing the submission isauthorized to act on behalf of theassignee. (2) Alternatively, thesubmission could be signed by a personhaving apparent authority to sign onbehalf of the assignee, e.g., an officer ofthe assignee.

In the first case, the statement that theparty signing the submission isauthorized to act on behalf of theassignee could be an actual statementincluded in the text of the submissionthat the signing person ‘‘is authorized toact on behalf of the assignee.’’Alternatively, it could be in the form ofa resolution by the organization owningthe property (e.g., a corporateresolution, a partnership resolution)included with the submission.

In the second case, the title of theperson signing must be given in thesubmission, and it must be one whichempowers the person to act on behalf ofthe assignee. The president, vice-president, secretary, treasurer, andchairman of the board of directors arepresumed to have authority to act onbehalf of the organization. Modificationsof these basic titles are acceptable, suchas vice-president for sales, executivevice-president, assistant treasurer, vice-chairman of the board of directors. Atitle such as manager, director,administrator, or general counsel doesnot clearly set forth that the person is anofficer of the organization, and as such,does not provide a presumption ofauthority to sign the statement on behalfof the assignee. A power of attorneyfrom the inventors or the assignee to apractitioner to prosecute an applicationdoes not make that practitioner anofficial of an assignee and does notempower the practitioner to sign thestatement on behalf of the assignee.

Proposed new paragraph (c)(1) of§ 3.73 would require that the

submission establishing ownership bythe assignee must be submitted prior to,or at the same time, that the paperrequesting or taking action is submitted.If the submission establishingownership is not present, the actionsought to be taken will not be giveneffect.

Proposed new paragraph (c)(2) of§ 3.73 would point out that for patents,if an assignee of less than the entireright, title and interest (i.e., a partialassignee) fails to indicate in thesubmission the extent (e.g., bypercentage) of its ownership interest,the Office may refuse to accept thesubmission.

Section 3.81: Section 3.81 is proposedto be amended to eliminate theprovisions of § 3.81(b). As discussedabove, changes in the patent printingprocess will dramatically reduce theperiod between the date of issue feepayment and the date a patent is issued.This change will eliminate theopportunity for providing an assigneename after the date the issue fee is paid.

Part 5Section 5.1: Section 5.1 is proposed to

be amended to locate its current text in§ 5.1(a).

Section 5.1 is also proposed to beamended to add a § 5.1(b) to clarify thatapplication as used in Part 5 includesprovisional applications filed under 35U.S.C. 111(b) (§ 1.9(a)(2)),nonprovisional applications filed under35 U.S.C. 111(a) or entering the nationalstage from an international applicationafter compliance with 35 U.S.C. 371(§ 1.9(a)(3)), or internationalapplications filed under the PatentCooperation Treaty prior to entering thenational stage of processing (§ 1.9(b)).

Section 5.1 is also proposed to beamended to add a § 5.1(c) to statecurrent practice that: (1) Patentapplications and documents relatingthereto that are national securityclassified (see § 1.9(i)) and containauthorized national security markings(e.g., ‘‘Confidential,’’ ‘‘Secret’’ or ‘‘TopSecret’’) are accepted by the Office; and(2) national security classifieddocuments filed in the Office must beeither hand-carried to Licensing andReview or mailed to the Office incompliance with § 5.1(a).

Section 5.1 is also proposed to beamended to add a § 5.1(d) to providethat: (1) The applicant in a nationalsecurity classified patent applicationmust obtain a secrecy order pursuant to§ 5.2(a); (2) if a national securityclassified patent application is filedwithout a notification pursuant to§ 5.2(a), the Office will set a time periodwithin which either the application

must be declassified, or the applicationmust be placed under a secrecy orderpursuant to § 5.2(a), or the applicantmust submit evidence of a good faitheffort to obtain a secrecy order pursuantto § 5.2(a) from the relevant departmentor agency in order to preventabandonment of the application; and (3)if evidence of a good faith effort toobtain a secrecy order pursuant to§ 5.2(a) from the relevant department oragency is submitted by the applicantwithin the time period set by the Office,but the application has not beendeclassified or placed under a secrecyorder pursuant to § 5.2(a), the Officewill again set a time period withinwhich either the application must bedeclassified, or the application must beplaced under a secrecy order pursuantto § 5.2(a), or the applicant must submitevidence of a good faith effort to againobtain a secrecy order pursuant to§ 5.2(a) from the relevant department oragency in order to prevent abandonmentof the application. Section 5.1(d) asproposed sets forth the treatment ofnational security classified applicationsthat is currently set forth in MPEP 130.

Section 5.1 is also proposed to beamended to add a § 5.1(e) to providethat a national security classified patentapplication will not be allowedpursuant to § 1.311 of this chapter untilthe application is declassified and anysecrecy order pursuant to § 5.2(a) hasbeen rescinded.

Section 5.1 is also proposed to beamended to add a § 5.1(f) to clarify thatapplications on inventions not made inthe United States and on inventions inwhich a U.S. Government defenseagency has a property interest will notbe made available to defense agencies.

Section 5.2: Section 5.2(c) is proposedto be added to provide that: (1) Anapplication disclosing any significantpart of the subject matter of anapplication under a secrecy orderpursuant to § 5.2(a) also falls within thescope of such secrecy order; (2) anysuch application that is pending beforethe Office must be promptly brought tothe attention of Licensing and Review,unless such application is itself under asecrecy order pursuant to § 5.2(a); and(3) any subsequently filed applicationcontaining any significant part of thesubject matter of an application under asecrecy order pursuant to § 5.2(a) musteither be hand-carried to Licensing andReview or mailed to the Office incompliance with § 5.1(a).

Section 5.12: Section 5.12(b) isproposed to be amended to require thatthe fee set forth in § 1.17(h) is requiredfor any petition under § 5.12 for aforeign filing license. As a practicalmatter, all petitions under § 5.12 are



treated on an expedited basis. Therefore,it is appropriate to require the fee setforth in § 1.17(h) for all petitions under§ 5.12.

Part 10Section 10.23: Section 10.23(c)(11) is

proposed to be amended to add thephrase ‘‘[e]xcept as permitted by§ 1.52(c)’’ for consistency with theproposed amendment to § 1.52(c).

Review Under the PaperworkReduction Act of 1995 and OtherConsiderations

This notice is in conformity with therequirements of the RegulatoryFlexibility Act (5 U.S.C. 601 et seq.),Executive Order 12612 (October 26,1987), and the Paperwork Reduction Actof 1995 (44 U.S.C. 3501 et seq.). It hasbeen determined that this rulemaking isnot significant for the purposes ofExecutive Order 12866 (September 30,1993).

This notice involves informationcollection requirements which aresubject to review by the Office ofManagement and Budget (OMB) underthe Paperwork Reduction Act of 1995(44 U.S.C. 3501 et seq.). The collectionsof information involved in this noticehave been reviewed and previouslyapproved by OMB under the followingcontrol numbers: 0651–0016, 0651–0020, 0651–0021, 0651–0022, 0651–0024, 0651–0027, 0651–0031, 0651–0032, 0651–0033, 0651–0034, 0651–0035, and 0651–0037.

As required by the PaperworkReduction Act of 1995 (44 U.S.C.3507(d)), the Patent and TrademarkOffice has submitted an informationcollection package to OMB for its reviewand approval of the proposedinformation collections under OMBcontrol numbers 0651–0031, 0651–0032,and 0651–0035. The Patent andTrademark Office is submittinginformation collection packages to OMBfor its review and approval of theseinformation collections because thefollowing changes proposed in thisnotice do affect the informationcollection requirements associated withthe information collections under OMBcontrol numbers 0651–0031, 0651–0032,and 0651–0035: (1) The proposedchange to §§ 1.27 and 1.28 will permitan applicant to establish small entitystatus in an application by a simpleassertion of entitlement to small entitystatus (without a statement having aformalistic reference to § 1.9 or astandard form (PTO/SB/09/10/11/12));(2) the proposed change to §§ 1.55, 1.63and 1.78 would eliminate the need foran applicant using the application datasheet (§ 1.76) to provide priority claims

in the oath or declaration orspecification; (3) the proposed change to§ 1.96 would require applicants tosubmit lengthy computer listings on aCD–ROM or CD–R (rather thanmicrofiche); (4) the proposed change to§§ 1.821, 1.823, and 1.825 would permitapplicants to submit sequence listingson a CD–ROM or CD–R (rather thanpaper); and (5) the proposed change to§ 1.155 would allow an applicant toseek expedited examination of a designapplication by filing a request forexpedited examination.

As discussed above, the notice alsoinvolves currently approvedinformation collections under OMBcontrol numbers: 0651–0016, 0651–0020, 0651–0021, 0651–0022, 0651–0024, 0651–0027, 0651–0033, 0651–0034, and 0651–0037. The Patent andTrademark Office is not resubmittinginformation collection packages to OMBfor its review and approval of theseinformation collections because thechanges proposed in this notice do notaffect the information collectionrequirements associated with theinformation collections under theseOMB control numbers.

The title, description and respondentdescription of each of the informationcollections are shown below with anestimate of each of the annual reportingburdens. Included in each estimate isthe time for reviewing instructions,gathering and maintaining the dataneeded, and completing and reviewingthe collection of information. Anycollections of information whoserequirements will be revised as a resultof the proposed rule changes discussedin this notice will be submitted to OMBfor approval. The principal impact ofthe changes under consideration in thisnotice is to raise the efficiency andeffectiveness of the Patent andTrademark Office’s business processesto make the Patent and TrademarkOffice a more business-like agency andincrease the level of the Patent andTrademark Office’s service to the public.

OMB Number: 0651–0016.Title: Rules for Patent Maintenance

Fees.Form Numbers: PTO/SB/45/47/65/66.Type of Review: Approved through

July of 1999.Affected Public: Individuals or

Households, Business or Other For-Profit, Not-for-Profit Institutions andFederal Government.

Estimated Number of Respondents:273,800.

Estimated Time Per Response: 0.08hour.

Estimated Total Annual BurdenHours: 22,640 hours.

Needs and Uses: Maintenance fees arerequired to maintain a patent, except fordesign or plant patents, in force under35 U.S.C. 41(b). Payment ofmaintenance fees are required at 31⁄2,71⁄2 and 111⁄2 years after the grant of thepatent. A patent number andapplication number of the patent onwhich maintenance fees are paid arerequired in order to ensure propercrediting of such payments.

OMB Number: 0651–0020.Title: Patent Term Extension.Form Numbers: None.Type of Review: Approved through

September of 2001.Affected Public: Individuals or

households, businesses or other for-profit, not-for-profit institutions, farms,Federal Government, and state, local, ortribal governments.

Estimated Number of Respondents:57.



Needs and Uses: The informationsupplied to the PTO by an applicantseeking a patent term extension is usedby the Patent and Trademark Office, theDepartment of Health and HumanServices, and the Department ofAgriculture to determine the eligibilityof a patent for extension and todetermine the period of any suchextension. The applicant can apply forpatent term and interim extensions,petition the Patent and TrademarkOffice to review final eligibilitydecisions, and withdraw patent termextensions. If there are multiple patents,the applicant can designate whichpatents should be extended. Anapplicant can also declare theireligibility to apply for a patent termextension.

OMB Number: 0651–0021.Title: Patent Cooperation Treaty.Form Numbers: PCT/RO/101,ANNEX/

134/144, PTO–1382, PCT/IPEA/401,PCT/IB/328.

Type of Review: Approved throughMay of 2000.

Affected Public: Individuals orHouseholds, Business or Other For-Profit, Federal Agencies or Employees,Not-for-Profit Institutions, SmallBusinesses or Organizations.




Needs and Uses: The informationcollected is required by the PatentCooperation Treaty (PCT). The general



purpose of the PCT is to simplify thefiling of patent applications on the sameinvention in different countries. Itprovides for a centralized filingprocedure and a standardizedapplication format.

OMB Number: 0651–0022.Title: Deposit of Biological Materials

for Patent Purposes.Form Numbers: None.Type of Review: Approved through

December of 2000.Affected Public: Individuals or

Households, State or LocalGovernments, Farms, Business or OtherFor-Profit, Federal Agencies orEmployees, Not-for-Profit Institutions,Small Businesses or Organizations.




Needs and Uses: Information ondepositing of biological materials indepositories is required for (1) Officedetermination of compliance with thepatent statute where the inventionsought to be patented relies onbiological material subject to depositrequirement, which includes notifyinginterested members of the public whereto obtain samples of deposits, and (2)depositories desiring to be recognized assuitable by the Office.

OMB Number: 0651–0024.Title: Requirements for Patent

Applications Containing NucleotideSequence and/or Amino Acid SequenceDisclosures.

Form Numbers: None.Type of Review: Approved through

November of 1999.Affected Public: Individuals or

households, business or other for-profitinstitutions, not-for-profit institutions,and Federal Government.


Estimated Time Per Response: 80minutes.


Needs and Uses: This information isused by the Office during theexamination process, the public and thepatent bar. The Patent and TrademarkOffice also participates with the EPOand JPO in a Trilateral SequenceExchange project, to facilitate theinternational exchange of publishedsequence data.

OMB Number: 0651–0027.Title: Changes in Patent and

Trademark Assignment Practices.Form Numbers: PTO–1618 and PTO–

1619, PTO/SB/15/41.

Type of Review: Approved throughMay of 2002.

Affected Public: Individuals orHouseholds and Businesses or OtherFor-Profit.




Needs and Uses: The Office recordsabout 209,040 assignments ordocuments related to ownership ofpatent and trademark cases each year.The Office requires a cover sheet toexpedite the processing of thesedocuments and to ensure that they areproperly recorded.

OMB Number: 0651–0031.Title: Patent Processing (Updating).Form Numbers: PTO/SB/08/21–27/

31/42/43/61/62/63/64/67/68/91/92/96/97.

Type of Review: Approved throughSeptember of 2000.

Affected Public: Individuals orHouseholds, Business or Other For-Profit Institutions, Not-for-ProfitInstitutions and Federal Government.

Estimated Number of Respondents:2,040,630.

Estimated Time Per Response: 0.39hours.


Needs and Uses: During theprocessing for an application for apatent, the applicant/agent may berequired or desire to submit additionalinformation to the Office concerning theexamination of a specific application.The specific information required orwhich may be submitted includes:Information Disclosure Statements;Terminal Disclaimers; Petitions toRevive; Express Abandonments; AppealNotices; Petitions for Access; Powers toInspect; Certificates of Mailing orTransmission; Statements under§ 3.73(b); Amendments, Petitions andtheir Transmittal Letters; and DepositAccount Order Forms.

OMB Number: 0651–0032.Title: Initial Patent Application.Form Number: PTO/SB/01–07/

13PCT/17–19/29/101–110.Type of Review: Approved through




Estimated Time Per Response: 8.7hours.

Estimated Total Annual BurdenHours: 2,994,160 hours.

Needs and Uses: The purpose of thisinformation collection is to permit theOffice to determine whether anapplication meets the criteria set forthin the patent statute and regulations.The standard Fee Transmittal form, NewUtility Patent Application Transmittalform, New Design Patent ApplicationTransmittal form, New Plant PatentApplication Transmittal form,Declaration, and Plant PatentApplication Declaration will assistapplicants in complying with therequirements of the patent statute andregulations, and will further assist theOffice in processing and examination ofthe application.

OMB Number: 0651–0033.Title: Post Allowance and Refiling.Form Numbers: PTO/SB/13/14/44/

50–57; PTOL–85b.Type of Review: Approved through






Needs and Uses: This collection ofinformation is required to administerthe patent laws pursuant to title 35,U.S.C., concerning the issuance ofpatents and related actions includingcorrecting errors in printed patents,refiling of patent applications,requesting reexamination of a patent,and requesting a reissue patent tocorrect an error in a patent. The affectedpublic includes any individual orinstitution whose application for apatent has been allowed or who takesaction as covered by the applicablerules.

OMB Number: 0651–0034.Title: Secrecy/License to Export.Form Numbers: None.Type of Review: Approved through

January of 2001.Affected Public: Individuals or





Needs and Uses: In the interest ofnational security, patent laws andregulations place certain limitations onthe disclosure of information containedin patents and patent applications and



on the filing of applications for patentin foreign countries.

OMB Number: 0651–0035.Title: Address-Affecting Provisions.Form Numbers: PTO/SB/81–84/121–

125.Type of Review: Approved through

June of 1999.Affected Public: Individuals or





Needs and Uses: Under existing law,a patent applicant or assignee mayappoint, revoke or change arepresentative to act in a representativecapacity. Also, an appointedrepresentative may withdraw fromacting in a representative capacity. Thiscollection includes the informationneeded to ensure that Officecorrespondence reaches the appropriateindividual.

OMB Number: 0651–0037.Title: Provisional Applications.Form Numbers: PTO/SB/16.Type of Review: Approved through

January of 2001.Affected Public: Individuals or





Needs and Uses: The informationincluded on the provisional applicationcover sheet is needed by the Office toidentify the submission as a provisionalapplication and not some other kind ofsubmission, to promptly and properlyprocess the provisional application, toprepare the provisional applicationfiling receipt which is sent to theapplicant, and to identify thoseprovisional applications which must bereviewed by the Office for foreign filinglicenses.

Notwithstanding any other provisionof law, no person is required to respondto nor shall a person be subject to apenalty for failure to comply with acollection of information subject to therequirements of the PaperworkReduction Act unless that collection ofinformation displays a currently validOMB control number.

As required by the PaperworkReduction Act of 1995 (44 U.S.C.

3507(d)), the Patent and TrademarkOffice has submitted an informationcollection package to OMB for its reviewand approval of the proposedinformation collections under OMBcontrol numbers 0651–0031, 0651–0032,and 0651–0035. As discussed above, thenotice also involves currently approvedinformation collections under OMBcontrol numbers: 0651–0016, 0651–0020, 0651–0021, 0651–0022, 0651–0024, 0651–0027, 0651–0033, 0651–0034, and 0651–0037. The Patent andTrademark Office is not resubmittinginformation collection packages to OMBfor its review and approval of theseinformation collections because thechanges proposed in this notice do notmaterially affect, or change the burdenhours associated with, these informationcollections.

Interested persons are requested tosend comments regarding theseinformation collections, includingsuggestions for reducing this burden, toRobert J. Spar, Director, Special ProgramLaw Office, Patent and TrademarkOffice, Washington, D.C. 20231, or tothe Office of Information and RegulatoryAffairs of OMB, New Executive OfficeBuilding, 725 17th Street, NW, room10235, Washington, DC 20503,Attention: Desk Officer for the Patentand Trademark Office.

The Chief Counsel for Regulation ofthe Department of Commerce certifiedto the Chief Counsel for Advocacy,Small Business Administration, that thechanges proposed in this rule, ifadopted, would not have a significantimpact on a substantial number of smallentities (Regulatory Flexibility Act, 5U.S.C. 605(b)). In furtherance of thePatent Business Goals, the Office isproposing changes to the rules ofpractice to eliminate unnecessary formalrequirements, streamline the patentapplication process, and simplify andclarify procedures. In streamlining thisprocess, the Office will be able to issuea patent in a shorter time by eliminatingformal requirements that must beperformed by the applicant, his or herrepresentatives and the Office. Allapplicants will benefit from a reducedoverall cost to them for receiving patentprotection and from a faster receipt oftheir patents. In addition, small entitieswill benefit from the proposed changesto the requirements for establishingsmall entity status under § 1.27 forpurposes of paying reduced patent feesunder 35 U.S.C. 41(h). The currentlyused small entity statement forms areproposed to be eliminated. Small entitystatus would be established at any timeby a simple assertion of entitlement tosmall entity status. A simpler procedureto establish small entity status would

reduce processing time with the Officeand would be a benefit to small entityapplicants as it would eliminate thetime-consuming and aggravatingprocessing requirements that aremandated by the current rules.

The Patent and Trademark Office hasdetermined that this notice has noFederalism implications affecting therelationship between the NationalGovernment and the States as outlinedin Executive Order 12612.

List of Subjects

37 CFR Part 1Administrative practice and

procedure, Courts, Freedom ofinformation, Inventions and patents,Reporting and recordkeepingrequirements, Small businesses.


procedure, Inventions and patents,Reporting and record keepingrequirements.

37 CFR Part 5Classified information, Foreign

relations, Inventions and patents.


procedure, Inventions and patents,Lawyers, Reporting and recordkeepingrequirements.

For the reasons set forth in thepreamble, 37 CFR parts 1, 3, 5, and 10are proposed to be amended as follows:

PART 1—RULES OF PRACTICE INPATENT CASES

1. The authority citation for 37 CFRpart 1 is revised to read as follows:

Authority: 35 U.S.C. 6, unless otherwisenoted.

2. Section 1.4 is proposed to beamended by revising paragraphs (b) and(c) to read as follows:

§ 1.4 Nature of correspondence andsignature requirements.

* * * * *(b) Since each file must be complete

in itself, a separate copy of every paperto be filed in a patent or trademarkapplication, patent file, trademarkregistration file, or other proceedingmust be furnished for each file to whichthe paper pertains, even though thecontents of the papers filed in two ormore files may be identical. The filingof duplicate copies of correspondence inthe file of an application, patent,trademark registration file, or otherproceeding should be avoided, except insituations in which the Office requiresthe filing of duplicate copies. The Office



may dispose of duplicate copies ofcorrespondence in the file of anapplication, patent, trademarkregistration file, or other proceeding.

(c) Since different matters may beconsidered by different branches orsections of the Patent and TrademarkOffice, each distinct subject, inquiry ororder must be contained in a separatepaper to avoid confusion and delay inanswering papers dealing with differentsubjects.* * * * *

3. Section 1.6 is proposed to beamended by revising paragraph (d)(9) toread as follows:

§ 1.6 Receipt of correspondence.

* * * * *(d) * * *(9) Correspondence to be filed in an

interference proceeding which consistsof a preliminary statement under§ 1.621; a transcript of a depositionunder § 1.676 or of interrogatories, orcross-interrogatories; or an evidentiaryrecord and exhibits under § 1.653.* * * * *

4. Section 1.9 is proposed to beamended by removing and reservingparagraphs (c), (d) and (e), and revisingparagraph (f) and adding a newparagraph (i) to read as follows:

§ 1.9 Definitions.* * * * *

(f) Small entities. A small entity asused in this chapter means any party(person, small business concern, ornonprofit organization) underparagraphs (f)(1) through (f)(3) of thissection.

(1) Person: A person, as used in§ 1.27(b), means any inventor or otherindividual (e.g., an individual to whoman inventor has transferred some rightsin the invention), who has not assigned,granted, conveyed, or licensed, and isunder no obligation under contract orlaw to assign, grant, convey, or license,any rights in the invention. An inventoror other individual who has transferredsome rights, or is under an obligation totransfer some rights in the invention toone or more parties, can also qualify forsmall entity status if all the parties whohave had rights in the inventiontransferred to them also qualify forsmall entity status either as a person,small business concern, or nonprofitorganization under this section.

(2) Small business concern: A smallbusiness concern, as used in § 1.27(b),means any business concern that:

(i) Has not assigned, granted,conveyed, or licensed, and is under noobligation under contract or law toassign, grant, convey, or license, anyrights in the invention to any person,

concern, or organization which wouldnot qualify under this section for smallentity status as a person, small businessconcern, or nonprofit organization.

(ii) Meets the size standards set forthin 13 CFR part 121 to be eligible forreduced patent fees. Questions relatedto size standards for a small businessconcern may be directed to: SmallBusiness Administration, SizeStandards Staff, 409 Third Street, SW,Washington, DC 20416.

(3) Nonprofit organization. Anonprofit organization, as used in§ 1.27(b), means any nonprofitorganization that:

(i) Has not assigned, granted,conveyed, or licensed, and is under noobligation under contract or law toassign, grant, convey, or license, anyrights in the invention to any personwho could not qualify for small entitystatus, or to any concern or organizationwhich would not qualify as a smallbusiness concern, or a nonprofitorganization under this section, 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 theInternal Revenue Code of 1986 (26U.S.C. 501(c)(3)) and exempt fromtaxation under section 501(a) of theInternal Revenue Code (26 U.S.C.501(a));

(C) Any nonprofit scientific oreducational organization qualifiedunder a nonprofit organization statute ofa state of this country (35 U.S.C. 201(i));or

(D) Any nonprofit organizationlocated in a foreign country whichwould qualify as a nonprofitorganization under paragraphs(f)(3)(ii)(B) or (f)(3)(ii)(C) of this sectionif it were located in this country.

(4) License to a Federal Agency. (i)For persons under paragraph (f)(1) ofthis section, a license to the Governmentresulting from a rights determinationunder Executive Order 10096 does notconstitute a license so as to prohibitclaiming small entity status.

(ii) For small business concerns andnonprofit organizations underparagraphs (f)(2) and (f)(3) of thissection, a license to a Federal agencyresulting from a funding agreement withthat agency pursuant to 35 U.S.C.202(c)(4) does not constitute a license.* * * * *

(i) National security classified as usedin this chapter means specificallyauthorized under criteria established byan Act of Congress or Executive order tobe kept secret in the interest of nationaldefense or foreign policy and, in fact,

properly classified pursuant to such Actof Congress or Executive order.

5. Section 1.12 is proposed to beamended by revising paragraph (c)(1) toread as follows:

§ 1.12 Assignment records open to publicinspection.

* * * * *(c) * * *(1) Be in the form of a petition

including the fee set forth in § 1.17(h);or* * * * *

6. Section 1.14 is proposed to berevised to read as follows:

§ 1.14 Patent applications preserved inconfidence.

(a) Confidentiality of patentapplication information. Patentapplications are generally preserved inconfidence pursuant to 35 U.S.C. 122.Information concerning the filing,pendency, or subject matter of anapplication for patent, including statusinformation, and access to theapplication, will only be given to thepublic as set forth in § 1.11 or in thissection.

(1) Status information is:(i) Whether the application is

pending, abandoned, or patented; and(ii) The application ‘‘numerical

identifier’’ which may be:(A) The eight digit application

number (the two digit series code plusthe six digit serial number); or

(B) The six digit serial number plusany of the filing date of the nationalapplication, the international filing date,or date of entry into the national stage.

(2) Access is defined as providing theapplication file for review and copyingof any material.

(b) When status information may besupplied. Status information of anapplication may be supplied by theOffice to the public if any of thefollowing apply:

(1) Access to the application isavailable pursuant to paragraph (e) ofthis section;

(2) The application is referred to by itsnumerical identifier in a publishedpatent document (e.g., a U.S. patent ora published international application) orin a U.S. application open to publicinspection (§ 1.11(b) or paragraph(e)(2)(i) of this section); or

(3) The application is a publishedinternational application in which theUnited States of America has beenindicated as a designated state.

(c) Copy of application-as-filed. If apending or abandoned application isincorporated by reference in a U.S.patent, a copy of that application-as-filed may be provided to any person

VerDate 22-SEP-99 18:16 Oct 01, 1999 Jkt 183247 PO 00000 Frm 00050 Fmt 4701 Sfmt 4702 E:\FR\FM\04OCP2.XXX pfrm01 PsN: 04OCP2


upon written request including the feeset forth in § 1.19(b)(1).

(d) Power to inspect a pending orabandoned application may be grantedby a party named in the application file.Access to an application may beprovided to any person if theapplication file is available, and theapplication contains written authority(e.g., a power to inspect) in thatparticular application granting access tosuch person that is signed by:

(1) An applicant;(2) An attorney or agent of record;(3) An authorized official of an

assignee of record (made of recordpursuant to § 3.71 of this chapter); or

(4) A registered attorney or agentnamed in papers accompanying theapplication papers filed under § 1.53 orthe national stage documents filedunder §§ 1.494 or 1.495, if an executedoath or declaration pursuant to § 1.63 or§ 1.497 has not been filed.

(e) Public access to a pending orabandoned application may beprovided. Access to an application maybe provided to any person if a writtenrequest for access is submitted, theapplication file is available, and any ofthe following apply:

(1) The application is open to publicinspection pursuant to § 1.11(b); or

(2) The application is abandoned, it isnot within the file jacket of a pendingapplication under § 1.53(d), and it isreferred to:

(i) In a U.S. patent; or(ii) In another U.S. application which

is open to public inspection eitherpursuant to § 1.11(b) or paragraph(e)(2)(i) of this section.

(f) Applications that may bedestroyed. Applications that areabandoned or for which proceedings areotherwise terminated may be destroyed,and thus may not be available for accessas permitted by paragraphs (d) or (e) of

this section, after twenty years fromtheir filing or deposit date. Exceptionsmay be made for applications to whichparticular attention has been called andwhich have been marked forpreservation.

(g) Applications reported toDepartment of Energy. Applications forpatents which appear to disclose,purport to disclose or do discloseinventions or discoveries relating toatomic energy are reported to theDepartment of Energy, whichDepartment will be given access to theapplications. Such reporting does notconstitute a determination that thesubject matter of each application soreported is in fact useful or is aninvention or discovery, or that suchapplication in fact discloses subjectmatter in categories specified by 42U.S.C. 2181 (c) and (d).

(h) Decisions by the Commissioner orthe Board of Patent Appeals andInterferences. Any decision by theCommissioner or the Board of PatentAppeals and Interferences which wouldnot otherwise be open to publicinspection may be published or madeavailable for public inspection if:

(1) The Commissioner believes thedecision involves an interpretation ofpatent laws or regulations that would beof precedential value; and

(2) The applicant, or a party involvedin an interference for which a decisionwas rendered, is given notice and anopportunity to object in writing withintwo months on the ground that thedecision discloses a trade secret or otherconfidential information. Any objectionmust identify the deletions in the text ofthe decision considered necessary toprotect the information, or explain whythe entire decision must be withheldfrom the public to protect suchinformation. An applicant or party willbe given time, not less than twenty days,

to request reconsideration and seekcourt review before any portions of adecision are made public under thisparagraph over his or her objection.

(i) Publication pursuant to § 1.47.Information as to the filing of anapplication will be published in theOfficial Gazette in accordance with§ 1.47 (a) and (b).

(j) International applications. Copiesof an application file for which theUnited States acted as the InternationalPreliminary Examining Authority, orcopies of a document in such anapplication file, will be furnished inaccordance with Patent CooperationTreaty (PCT) Rule 94.2 or 94.3, uponpayment of the appropriate fee(§ 1.19(b)(2) or § 1.19(b)(3)).

(k) Access or copies in othercircumstances. The Office, either suasponte or on petition, may also provideaccess or copies of an application ifnecessary to carry out an Act ofCongress or if warranted by otherspecial circumstances. Any petition bya member of the public seeking accessto, or copies of, any pending orabandoned application preserved inconfidence pursuant to paragraph (a) ofthis section, or any related papers, mustinclude:

(1) The fee set forth in § 1.17(h); and(2) A showing that access to the

application is necessary to carry out anAct of Congress or that specialcircumstances exist which warrantpetitioner being granted access to theapplication.

7. Section 1.17 is proposed to beamended by revising paragraphs (h), (i),(k), (l), (m), and (q) and addingparagraph (t) to read as follows:

§ 1.17 National application processingfees.

* * * * *

(h) For filing a petition to the Commissioner under a section listed below which refers to this paragraph ................................... $130.00§ 1.12—for access to an assignment record.§ 1.14—for access to an application.§ 1.47—for filing by other than all the inventors or a person not the inventor.§ 1.53(e)—to accord a filing date.§ 1.59—for expungement and return of information.§ 1.91—for entry of a model or exhibit.§ 1.102—to make an application special.§ 1.103(a)—to suspend action in application.§ 1.182—for decision on a question not specifically provided for.§ 1.183—to suspend the rules.§ 1.295—for review of refusal to publish a statutory invention registration.§ 1.313—to withdraw an application from issue.§ 1.314—to defer issuance of a patent.§ 1.377—for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a

patent.§ 1.378(e)—for reconsideration of decision on petition refusing to accept delayed payment of maintenance fee in an ex-

pired patent.§ 1.550(c)(2)—for a petition for an extension of time to accept an unintentionally delayed response in a reexamination

proceeding.§ 1.644(e)—for petition in an interference.§ 1.644(f)—for request for reconsideration of a decision on petition in an interference.



§ 1.666(b)—for access to an interference settlement agreement.§ 1.666(c)—for late filing of interference settlement agreement.§ 1.741(b)—to accord a filing date to an application for extension of a patent term.§ 5.12—for expedited handling of a foreign filing license.§ 5.15—for changing the scope of a license.§ 5.25—for retroactive license.

(i) Processing fee for taking action under a section listed below which refers to this paragraph .................................................... 130.00§ 1.28(c)(3)—for processing a non-itemized fee deficiency based on an error in small entity status.§ 1.41—for supplying the name or names of the inventor or inventors after the filing date without an oath or declaration

as prescribed by § 1.63, 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.§ 1.55—for entry of late priority papers.§ 1.103(b)—for requesting limited suspension of action in continued prosecution application.§ 1.497(d)—for filing an oath or declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity different from the

inventive entity set forth in the international stage.

* * * * * * *(k) For accepting color drawings or color photographs (§ 1.84(a)) ...................................................................................................... 200.00(l) For filing a petition for the revival of an unavoidably abandoned application under 35 U.S.C. 111, 133, 364, or 371, or the

unavoidably delayed payment of the issue fee under 35 U.S.C. 151 (§ 1.137(a)):By a small entity (§ 1.9(f)) 55.00By other than a small entity 110.00

(m) For filing a petition for the revival of an unintentionally abandoned application or the unintentionally delayed paymentof the issue fee under 35 U.S.C. 41(a)(7) (§ 1.137(b)):

By a small entity (§ 1.9(f)) 605.00By other than a small entity 1,210.00

* * * * * *(q) Processing fee for taking action under a section listed below 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 prescribedby § 1.51(c)(1) in a provisional application.

§ 1.48—for correction of inventorship in a provisional application.§ 1.53(c)—to convert a nonprovisional application filed under § 1.53(b) to a provisional application under § 1.53(c).

* * * * * *(t) For filing a request for expedited examination under § 1.155(a) ................................................................................................... 900.00

8. Section 1.19 is proposed to beamended by revising its introductorytext and paragraphs (a) and (b) andremoving paragraph (h) to read asfollows:

§ 1.19 Document supply fees.

The Patent and Trademark Office willsupply copies of the followingdocuments upon payment of the fees

indicated. The copies will be in blackand white unless the original documentis in color, a color copy is requested andthe fee for a color copy is paid.

(a) Uncertified copies of patents:(1) Printed copy of a patent, including a design patent, statutory invention registration, or defensive publication docu-

ment:(i) Regular service .................................................................................................................................................................... $3.00(ii) Overnight delivery to PTO Box or overnight facsimile ................................................................................................... 6.00(iii) Expedited service for copy ordered by expedited mail or facsimile delivery service and delivered to the cus-

tomer within two workdays ................................................................................................................................................. 25.00(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) Certified and uncertified copies of Office documents:(1) Certified or uncertified copy of patent application as filed:

(i) Regular service .................................................................................................................................................................... 15.00(ii) Expedited regular service .................................................................................................................................................. 30.00

(2) Certified or uncertified copy of patent-related file wrapper and contents:(i) File wrapper and contents of 400 or fewer pages ............................................................................................................. 250.00(ii) Additional fee for each additional 100 pages or portion thereof .................................................................................... 25.00

(3) Certified or uncertified copy of Office records, per document except as otherwise provided in this section ................... 25.00(4) For assignment records, abstract of title and certification, per patent ................................................................................... 25.00

* * * * * *

9. Section 1.22 is proposed to beamended by revising paragraph (b) andadding paragraph (c) to read as follows:

§ 1.22 Fee payable in advance.

* * * * *

(b) All fees paid to the Patent andTrademark Office must be itemized ineach individual application, patent,trademark registration file, or otherproceeding in such a manner that it isclear for which purpose the fees arepaid. The Office may return fees that are

not itemized as required by thisparagraph. The provisions of § 1.5(a) donot apply to the resubmission of feesreturned pursuant to this paragraph.

(c)(1) A fee paid by an authorizationto charge such fee to a deposit accountcontaining sufficient funds to cover the



applicable fee amount (§ 1.25) isconsidered paid:

(i) On the date the paper for which thefee is payable is received in the Office(§ 1.6), if the paper including thedeposit account charge authorizationwas filed prior to or concurrently withsuch paper;

(ii) On the date the paper includingthe deposit account chargeauthorization is received in the Office(§ 1.6), if the paper including thedeposit account charge authorization isfiled after the filing of the paper forwhich the fee is payable; and

iii) On the date of the agreement, ifthe deposit account chargeauthorization is the result of anagreement between the applicant and anOffice employee that is reduced to awriting.

(2) A fee paid other than by anauthorization to charge such fee to adeposit account is considered paid onthe date the applicable fee amount isreceived in the Office (§ 1.6).

(3) The applicable fee amount isdetermined by the fee in effect on thedate such fee is paid in full.

10. Section 1.25 is proposed to beamended by revising paragraph (b) toread as follows:

§ 1.25 Deposit accounts.

* * * * *(b) Filing, issue, appeal, international-

type search report, internationalapplication processing, petition, andpost-issuance fees may be chargedagainst these accounts if sufficient fundsare on deposit to cover such fees. Ageneral authorization to charge all fees,or only certain fees, set forth in § 1.16to § 1.18 to a deposit account containingsufficient funds may be filed in anindividual application, either for theentire pendency of the application orwith respect to a particular paper filed.An authorization to charge fees under§ 1.16 in an application submitted under§ 1.494, or § 1.495 will be treated as anauthorization to charge fees under§ 1.492. An authorization to charge feesset forth in § 1.18 to a deposit accountis subject to the provisions of § 1.311(b).An authorization to charge to a depositaccount the fee for a request forreexamination pursuant to § 1.510 andany other fees required in areexamination proceeding in a patentmay also be filed with the request forreexamination. An authorization tocharge a fee to a deposit account willnot be considered payment of the fee onthe date the authorization to charge thefee is effective as to the particular fee tobe charged unless sufficient funds arepresent in the account to cover the fee.

11. Section 1.26 is proposed to beamended by revising paragraph (a) andadding paragraph (b) to read as follows:

§ 1.26 Refunds.(a) The Commissioner may refund a

fee paid by mistake or in excess of thatrequired. A change of purpose after thepayment of a fee, as when a partydesires to withdraw a patent ortrademark filing for which the fee waspaid, including an application, anappeal, or a request for an oral hearing,will not entitle a party to a refund ofsuch fee. The Office will not refundamounts of twenty-five dollars or lessunless a refund is specifically requested,and will not notify the payor of suchamounts. If a party paying a fee orrequesting a refund does not instruct theOffice that refunds are to be credited toa deposit account, and does not providethe banking information necessary formaking refunds by electronic fundstransfer, the Commissioner may eitherrequire such banking information or usethe banking information on the paymentinstrument to make a refund.

(b) Any request for refund must befiled within two years from the date thefee was paid, except as otherwiseprovided in this paragraph or in§ 1.28(a). If the Office charges a depositaccount by an amount other than anamount specifically indicated in anauthorization (§ 1.25(b)), any request forrefund based upon such charge must befiled within two years from the date ofthe deposit account statement indicatingsuch charge, and include a copy of thatdeposit account statement. The timeperiods set forth in this paragraph arenot extendable.* * * * *


§ 1.27 Establishing status as small entityto permit payment of small entity fees;when a determination of entitlement tosmall entity status and notification of lossof entitlement to small entity status arerequired; fraud on the Office.

(a) Establishment of small entitystatus permits payment of reduced fees.A small entity, as defined in § 1.9(f),who has properly asserted entitlementto small entity status pursuant toparagraph (b) of this section will beaccorded small entity status by theOffice in the particular application orpatent in which entitlement to smallentity status was asserted.Establishment of small entity statusallows the payment of certain reducedpatent fees pursuant to 35 U.S.C. 41(h).

(b) Assertion of small entity status.Any party (person, small businessconcern or nonprofit organization) who

has made a determination, pursuant toparagraph (e) of this section, ofentitlement to be accorded small entitystatus pursuant to § 1.9(f) must, in orderto establish small entity status for thepurpose of paying small entity fees,make an assertion of entitlement tosmall entity status, pursuant toparagraph (b)(1) or (b)(3) of this section,in the application or patent in whichsuch small entity fees are to be paid.

(1) Assertion by writing. Small entitystatus may be established by a writtenassertion of entitlement to small entitystatus. A written assertion must:

(i) Be clearly identifiable;(ii) Be signed; and(iii) Convey the concept of

entitlement to small entity status, suchas by stating that applicant is a smallentity, or that small entity status isentitled to be asserted for theapplication or patent. While no specificwords or wording are required to assertsmall entity status, the intent to assertsmall entity status must be clearlyindicated in order to comply with theassertion requirement.

(2) Parties who can sign the writtenassertion. The written assertion can besigned by:

(i) One of the parties identified in§ 1.33(b) (e.g., an attorney or agentregistered with the Office), § 3.73(b) ofthis chapter notwithstanding;

(ii) At least one of the inventors,§ 1.33(b)(4) notwithstanding; or

(iii) An assignee of an undivided partinterest, §§ 1.33(b)(3) and 3.73(b) of thischapter notwithstanding.

(3) Assertion by payment of the smallentity basic filing or national fee. Thepayment, by any party, of the exactamount of one of the small entity basicfiling fees set forth in § 1.16(a), (f), (g),(h), or (k), or one of the small entitynational fees set forth in § 1.492(a)(1),(a)(2), (a)(3), (a)(4), or (a)(5), will betreated as a written assertion ofentitlement to small entity status even ifthe type of basic filing or national fee isinadvertently selected in error.

(i) If the Office accords small entitystatus based on payment of a smallentity fee that is not applicable to thatapplication, any balance of the smallentity fee that is applicable to thatapplication will be due.

(ii) The payment of any small entityfee other than those set forth inparagraph (b)(3) (whether in the exactfee amount or not) of this section willnot be treated as a written assertion ofentitlement to small entity status andwill not be sufficient to establish smallentity status in an application or apatent.

(4) Assertion required in related,continuing, and reissue applications.



Status as a small entity must bespecifically established by an assertionin each related, continuing and reissueapplication in which status isappropriate and desired. Status as asmall entity in one application or patentdoes not affect the status of any otherapplication or patent, regardless of therelationship of the applications orpatents. The refiling of an applicationunder § 1.53 as a continuation,divisional, or continuation-in-partapplication (including a continuedprosecution application under§ 1.53(d)), or the filing of a reissueapplication, requires a new assertion asto continued entitlement to small entitystatus for the continuing or reissueapplication.

(c) When small entity fees can bepaid. Any fee, other than the smallentity basic filing fees and the smallentity national fees of paragraph (b)(3)of this section, can be paid in the smallentity amount only if it is submittedwith, or subsequent to, the submissionof a written assertion of entitlement tosmall entity status, except when refundsare permitted by § 1.28(a).

(d) Only one assertion required. (1)An assertion of small entity status needonly be filed once in an application orpatent. Small entity status, onceestablished, remains in effect untilchanged pursuant to § 1.28(b) of thispart. Where an assignment of rights oran obligation to assign rights to otherparties who are small entities occurssubsequent to an assertion of smallentity status, a second assertion is notrequired.

(2) Once small entity status iswithdrawn pursuant to paragraph (f)(2)of this section, a new written assertionis required to again obtain small entitystatus.

(e) Assertion requires a determinationof entitlement to pay small entity fees.Prior to submitting an assertion ofentitlement to small entity status in anapplication, including a related,continuing, or reissue application, adetermination of such entitlementshould be made pursuant to therequirements of § 1.9(f). It should bedetermined that all parties holdingrights in the invention qualify for smallentity status. The Office will generallynot question any assertion of smallentity status that is made in accordancewith the requirements of this section,but note paragraph (g) of this section.

(f)(1) New determination ofentitlement to small entity status isneeded when issue and maintenancefees are due. Once status as a smallentity has been established in anapplication or patent, fees as a smallentity may thereafter be paid in that

application or patent without regard toa change in status until the issue fee isdue or any maintenance fee is due.

(2) Notification of loss of entitlementto small entity status is required whenissue and maintenance fees are due.Notification of a loss of entitlement tosmall entity status must be filed in theapplication or patent prior to paying, orat the time of paying, the earliest of theissue fee or any maintenance fee dueafter the date on which status as a smallentity as defined in § 1.9(f) is no longerappropriate. The notification that smallentity status is no longer appropriatemust be signed by a party identified in§ 1.33(b). Payment of a fee in other thanthe small entity amount is not sufficientnotification that small entity status is nolonger appropriate.

(g) Fraud attempted or practiced onthe Office. (1) Any attempt tofraudulently establish status as a smallentity, or to pay fees as a small entity,shall be considered as a fraud practicedor attempted on the Office.

(2) Improperly, and with intent todeceive, establishing status as a smallentity, or paying fees as a small entity,shall be considered as a fraud practicedor attempted on the Office.


§ 1.28 Refunds when small entity status islater established; how errors in small entitystatus are excused.

(a) Refunds based on laterestablishment of small entity status: Arefund pursuant to § 1.26 of this part,based on establishment of small entitystatus, of a portion of fees timely paidin full prior to establishing status as asmall entity may only be obtained if anassertion under § 1.27(b) and a requestfor a refund of the excess amount arefiled within three months of the date ofthe timely payment of the full fee. Thethree-month time period is notextendable under § 1.136. Status as asmall entity is waived for any fee by thefailure to establish the status prior topaying, at the time of paying, or withinthree 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 beenpaid as defined in § 1.22(c);

(2) The date when a deficiencypayment is paid in full determines theamount of deficiency that is due,pursuant to paragraph (c) of this section,and is defined in § 1.22(c).

(c) How errors in small entity statusare excused. If status as a small entityis established in good faith, and fees asa small entity are paid in good faith, in

any application or patent, and it is laterdiscovered that such status as a smallentity was established in error, or thatthrough error the Office was not notifiedof a loss of entitlement to small entitystatus as required by § 1.27(f)(2), theerror will be excused upon: compliancewith the separate submission anditemization requirements of paragraphs(c)(1) and (c)(2) of this section, and thedeficiency payment requirement ofparagraph (c)(2) of this section:

(1) Separate submission required foreach application or patent. Any papersubmitted under this paragraph must belimited to the deficiency payment (allfees paid in error), required byparagraph (c)(2) of this section, for oneapplication or one patent. Where morethan one application or patent isinvolved, separate submissions ofdeficiency payments (e.g., checks) anditemizations are required for eachapplication or patent. See § 1.4(b).

(2) Payment of deficiency owed. Thedeficiency owed, resulting from theprevious erroneous payment of smallentity fees, must be paid.

(i) Calculation of the deficiency owed.The deficiency owed for each previousfee erroneously paid as a small entity isthe difference between the current feeamount (for other than a small entity) onthe date the deficiency is paid in fulland the amount of the previouserroneous (small entity) fee payment.The total deficiency payment owed isthe sum of the individual deficiencyowed amounts for each fee amountpreviously erroneously paid as a smallentity;

(ii) Itemization of the deficiencypayment. An itemization of the totaldeficiency payment is required. Theitemization must include the followinginformation:

(A) Each particular type of fee thatwas erroneously paid as a small entity,(e.g., basic statutory filing fee, two-month extension of time fee) along withthe current fee amount for a non-smallentity;

(B) The small entity fee actually paid,and when. This will permit the Officeto differentiate, for example, betweentwo one-month extension of time feeserroneously paid as a small entity buton different dates;

(C) The deficiency owed amount (foreach fee erroneously paid); and

(D) The total deficiency paymentowed, which is the sum or total of theindividual deficiency owed amounts setforth in paragraph (c)(2)(ii)(C) of thissection.

(3) Failure to comply withrequirements. If the requirements ofparagraphs (c)(1) and (c)(2) of thissection are not complied with, such



failure will either: be treated as anauthorization for the Office to processthe deficiency payment and charge theprocessing fee set forth in § 1.17(i), orresult in a requirement for compliancewithin a one-month non-extendabletime period to avoid the return of the feedeficiency paper, at the option of theOffice.

(d) Payment of deficiency operates asnotification of loss of status. Anypayment submitted under paragraph (c)of this section will be treated under§ 1.27(f)(2) as a notification of a loss ofentitlement to small entity status.

14. Section 1.33 is proposed to beamended by revising paragraphs (a) and(b) to read as follows:

§ 1.33 Correspondence respecting patentapplications, reexamination proceedings,and other proceedings.

(a) Correspondence address anddaytime telephone number. When filingan application, a correspondenceaddress must be set forth in either anapplication data sheet (§ 1.76), orelsewhere in a clearly identifiablemanner in any paper submitted with anapplication filing. If no correspondenceaddress is specified, the Office may treatthe mailing address of the first namedinventor (if provided, see § 1.76(b)(1)and § 1.63(c)(2)) as the correspondenceaddress. The Office will direct allnotices, official letters, and othercommunications relating to theapplication to the correspondenceaddress. The Office will not engage indouble correspondence with anapplicant and an attorney or agent, orwith more than one attorney or agentexcept as deemed necessary by theCommissioner. If more than onecorrespondence address is specified, theOffice will establish one as thecorrespondence address. For the partyto whom correspondence is to beaddressed, a daytime telephone numbershould be supplied in a clearlyidentifiable manner and may bechanged by any party who may changethe correspondence address. Thecorrespondence address may bechanged as follows:

(1) Prior to filing of a § 1.63 oath ordeclaration by any of the inventors. If a§ 1.63 oath or declaration has not beenfiled by any of the inventors, thecorrespondence address may bechanged by the party who filed theapplication. If the application was filedby a registered attorney or agent, anyother registered practitioner named inthe transmittal papers may also changethe correspondence address. Thus, theinventor(s), any registered practitionernamed in the transmittal papersaccompanying the original application,

or a party that will be the assignee whofiled the application, may change thecorrespondence address in thatapplication under this paragraph.

(2) Where a § 1.63 oath or declarationhas been filed by any of the inventors.If a § 1.63 oath or declaration has beenfiled, or is filed concurrent with thefiling of an application, by any of theinventors, the correspondence addressmay be changed by the parties set forthin paragraph (b) of this section, exceptfor (b)(2).

(b) Amendments and other papers:Amendments and other papers filed inthe application must be signed by:

(1) An attorney or agent of recordappointed in compliance with § 1.34(b);

(2) A registered attorney or agent notof record who acts in a representativecapacity under the provisions of§ 1.34(a);

(3) An assignee as provided for under§ 3.71(b) of this chapter; or

(4) All of the applicants (§ 1.41(b)) forpatent, unless there is an assignee of theentire interest and such assignee hastaken action in the application inaccordance with § 3.71 of this chapter.* * * * *

15. Section 1.41 is proposed to beamended by revising paragraph (a) toread as follows:

§ 1.41 Applicant for patent.(a) A patent is applied for in the name

or names of the actual inventor orinventors.

(1) The inventorship of anonprovisional application is thatinventorship set forth in the oath ordeclaration as prescribed by § 1.63,except as provided for in § 1.53(d)(4)and § 1.63(d). If an oath or declarationas prescribed by § 1.63 is not filedduring the pendency of anonprovisional application, theinventorship is that inventorship setforth in the application papers filedpursuant to § 1.53(b), unless applicantfiles a paper including the processingfee set forth in § 1.17(i) and supplyingor changing the name or names of theinventor or inventors.

(2) The inventorship of a provisionalapplication is that inventorship set forthin the cover sheet as prescribed by§ 1.51(c)(1). If a cover sheet asprescribed by § 1.51(c)(1) is not filedduring the pendency of a provisionalapplication, the inventorship is thatinventorship set forth in the applicationpapers filed pursuant to § 1.53(c), unlessapplicant files a paper including theprocessing fee set forth in § 1.17(q) andsupplying or changing the name ornames of the inventor or inventors.

(3) In a nonprovisional applicationfiled without an oath or declaration as

prescribed by § 1.63 or a provisionalapplication filed without a cover sheetas prescribed by § 1.51(c)(1), the name,residence, and citizenship of eachperson believed to be an actual inventorshould be provided when theapplication papers pursuant to § 1.53(b)or (c) are filed.

(4) The inventors who submitted anapplication under §§ 1.494 or 1.495 arethe inventors in the internationalapplication designating the UnitedStates.* * * * *

§ 1.44 [Removed and reserved]16. Section 1.44 is proposed to be

removed and reserved.17. Section 1.47 is proposed to be

revised to read as follows:

§ 1.47 Filing when an inventor refuses tosign or cannot be reached.

(a) If a joint inventor refuses to joinin an application for patent or cannot befound or reached after diligent effort,the application may be made by theother inventor on behalf of himself orherself and the nonsigning inventor.The oath or declaration in such anapplication must be accompanied by apetition including proof of the pertinentfacts, the fee set forth in § 1.17(h), andthe last known address of thenonsigning inventor. The nonsigninginventor may subsequently join in theapplication on filing an oath ordeclaration complying with § 1.63.

(b) Whenever all of the inventorsrefuse to execute an application forpatent, or cannot be found or reachedafter diligent effort, a person to whoman inventor has assigned or agreed inwriting to assign the invention, or whootherwise shows sufficient proprietaryinterest in the matter justifying suchaction, may make application for patenton behalf of and as agent for all theinventors. The oath or declaration insuch an application must beaccompanied by a petition includingproof of the pertinent facts, a showingthat such action is necessary to preservethe rights of the parties or to preventirreparable damage, the fee set forth in§ 1.17(h), and the last known address ofall of the inventors. An inventor maysubsequently join in the application onfiling an oath or declaration complyingwith § 1.63.

(c) The Office will send notice of thefiling of the application to all inventorswho have not joined in the applicationat the address(es) provided in thepetition under this section, and publishnotice of the filing of the application inthe Official Gazette. The Office maydispense with this notice provision in acontinuation or divisional application,



if notice regarding the filing of the priorapplication was given to the nonsigninginventor(s).


§ 1.48 Correction of inventorship in apatent application, other than a reissueapplication, pursuant to 35 U.S.C. 116.

(a) Nonprovisional application afteroath/declaration filed. If the inventiveentity is set forth in error in an executed§ 1.63 oath or declaration in anonprovisional application, and sucherror arose without any deceptiveintention on the part of the personnamed as an inventor in error or on thepart of the person who through errorwas not named as an inventor, theinventorship of the nonprovisionalapplication may be amended to nameonly the actual inventor or inventors. Ifthe nonprovisional application isinvolved in an interference, theamendment must comply with therequirements of this section and must beaccompanied by a motion under § 1.634.Amendment of the inventorshiprequires:

(1) A request to correct theinventorship that sets forth the desiredinventorship change;

(2) A statement from each personbeing added as an inventor and fromeach person being deleted as aninventor that the error in inventorshipoccurred without deceptive intention onhis or her part;

(3) An oath or declaration by theactual inventor or inventors as requiredby § 1.63 or as permitted by §§ 1.42, 1.43or 1.47;

(4) The processing fee set forth in§ 1.17(i); and

(5) If an assignment has been executedby any of the original named inventors,the written consent of the assignee (see§ 3.73(b) of this chapter).

(b) Nonprovisional application—fewerinventors due to amendment orcancellation of claims. If the correctinventors are named in a nonprovisionalapplication, and the prosecution of thenonprovisional application results inthe amendment or cancellation ofclaims so that fewer than all of thecurrently named inventors are the actualinventors of the invention being claimedin the nonprovisional application, anamendment must be filed requestingdeletion of the name or names of theperson or persons who are not inventorsof the invention being claimed. If theapplication is involved in aninterference, the amendment mustcomply with the requirements of thissection and must be accompanied by amotion under § 1.634. Amendment ofthe inventorship requires:

(1) A request, signed by a party setforth in § 1.33(b), to correct theinventorship that identifies the namedinventor or inventors being deleted andacknowledges that the inventor’sinvention is no longer being claimed inthe nonprovisional application; and

(2) The processing fee set forth in§ 1.17(i).

(c) Nonprovisional application—inventors added for claims to unclaimedsubject matter. If a nonprovisionalapplication discloses unclaimed subjectmatter by an inventor or inventors notnamed in the application, theapplication may be amended to addclaims to the subject matter and namethe correct inventors for the application.If the application is involved in aninterference, the amendment mustcomply with the requirements of thissection and must be accompanied by amotion under § 1.634. Amendment ofthe inventorship requires:


(2) A statement from each personbeing added as an inventor that theaddition is necessitated by amendmentof the claims and that the inventorshiperror occurred without deceptiveintention on his or her part;

(3) An oath or declaration by theactual inventors as required by § 1.63 oras permitted by §§ 1.42, 1.43 or 1.47;



(d) Provisional application—addingomitted inventors. If the name or namesof an inventor or inventors were omittedin a provisional application througherror without any deceptive intentionon the part of the omitted inventor orinventors, the provisional applicationmay be amended to add the name ornames of the omitted inventor orinventors. Amendment of theinventorship requires:

(1) A request, signed by a party setforth in § 1.33(b), to correct theinventorship that identifies the inventoror inventors being added and states thatthe inventorship error occurred withoutdeceptive intention on the part of theomitted inventor or inventors; and

(2) The processing fee set forth in§ 1.17(q).

(e) Provisional application—deletingthe name or names of the inventor orinventors. If a person or persons werenamed as an inventor or inventors in aprovisional application through errorwithout any deceptive intention on thepart of such person or persons, an

amendment may be filed in theprovisional application deleting thename or names of the person or personswho were erroneously named.Amendment of the inventorshiprequires:


(2) A statement by the person orpersons whose name or names are beingdeleted that the inventorship erroroccurred without deceptive intention onthe part of such person or persons;

(3) The processing fee set forth in§ 1.17(q); and


(f)(1) Nonprovisional application—filing executed oath/declaration correctsinventorship. If the correct inventor orinventors are not named on filing anonprovisional application under§ 1.53(b) without an executed oath ordeclaration under § 1.63 by any of theinventors, the first submission of anexecuted oath or declaration under§ 1.63 by any of the inventors during thependency of the application will act tocorrect the earlier identification ofinventorship. See § 1.497(d) forsubmission of an executed oath ordeclaration to enter the national stageunder 35 U.S.C. 371 and § 1.494 or§ 1.495 naming an inventive entitydifferent from the inventive entity setforth in the international stage.

(2) Provisional application—filingcover sheet corrects inventorship. If thecorrect inventor or inventors are notnamed on filing a provisionalapplication without a cover sheet under§ 1.51(c)(1), the later submission of acover sheet under § 1.51(c)(1) during thependency of the application will act tocorrect the earlier identification ofinventorship.

(g) Additional information may berequired. The Office may require suchother information as may be deemedappropriate under the particularcircumstances surrounding thecorrection of inventorship.

(h) Reissue applications not covered.The provisions of this section do notapply to reissue applications. See§§ 1.171 and 1.175 for correction ofinventorship in a patent via a reissueapplication.

(i) Correction of inventorship inpatent or interference. See § 1.324 forcorrection of inventorship in a patent,and § 1.634 for correction ofinventorship in an interference.




§ 1.51 General requisites of an application.

* * * * *(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) An oath or declaration, see §§ 1.63and 1.68;

(3) Drawings, when necessary, see§§ 1.81 to 1.85; and

(4) The prescribed filing fee, see§ 1.16.* * * * *


§ 1.52 Language, paper, writing, margins.

(a) Papers which are to become a partof the permanent Patent and TrademarkOffice records in the file of a patentapplication. (1) All papers, other thandrawings, which are to become a part ofthe permanent Patent and TrademarkOffice records in the file of a patentapplication must be on sheets of paperthat are:

(i) Flexible, strong, smooth, non-shiny, durable, and white;

(ii) Either 21.0 cm by 29.7 cm (DINsize A4) or 21.6 cm by 27.9 cm (8 1⁄2 by11 inches), with each sheet including atop margin of at least 2.0 cm (3⁄4 inch),a left side margin of at least 2.5 cm (1inch), a right side margin of at least 2.0cm (3⁄4 inch), and a bottom margin of atleast 2.0 cm (3⁄4 inch);

(iii) Written on only one side inportrait orientation;

(iv) Plainly and legibly written eitherby a typewriter or machine printer inpermanent dark ink or its equivalent;and

(v) Presented in a form havingsufficient clarity and contrast betweenthe paper and the writing thereon topermit the direct reproduction of readilylegible copies in any number by use ofphotographic, electrostatic, photo-offset,and microfilming processes andelectronic capture by use of digitalimaging and optical characterrecognition.

(2) All papers which are to become apart of the permanent records of thePatent and Trademark Office shouldhave no holes in the sheets assubmitted.

(3) The provisions of this paragraphand paragraph (b) of this section do notapply to the pre-printed information onforms provided by the Office.

(4) See § 1.58 for chemical andmathematical formulae and tables, and§ 1.84 for drawings.

(5) If papers are submitted as part ofthe permanent record, other than thedrawings, that do not comply with

paragraph (a)(1) of this section theOffice may at its option:

(i) Convert the papers submitted byapplicant into papers that do complywith paragraph (a)(1) of this section andcharge the applicant the costs incurredby the Office in doing so (§ 1.21(j)); or

(ii) Require that the applicant providesubstitute papers that comply withparagraph (a)(1) of this section within aset time period.

(b) The application (specification,including the claims, drawings, andoath or declaration) and anyamendments or corrections to theapplication. (1) The application and anyamendments or corrections to theapplication (including any translationsubmitted pursuant to paragraph (d) ofthis section), except as provided for in§ 1.69 and paragraph (d) of this section,must:

(i) Comply with the requirements ofparagraph (a) of this section; and

(ii) Be in the English language or beaccompanied by a translation of anycorrections or amendments into theEnglish language together with astatement that the translation isaccurate.

(2) The specification (including theabstract and claims), and anyamendments to the specification, musthave:

(i) Lines that are 1 1⁄2 or doublespaced;

(ii) Text written in a block (nonscript)type font or lettering style having capitalletters which are at least 0.21 cm (0.08inch) high; and

(iii) No more than a single column oftext.

(3) The claim or claims mustcommence on a separate sheet(§ 1.75(h)).

(4) The abstract must commence on aseparate sheet (§ 1.72(b)).

(5) The pages of the specificationincluding claims and abstract must benumbered consecutively, starting with1, the numbers being centrally locatedabove or preferably, below, the text.

(6) Paragraphs in the specification,other than in the claims or abstract,should be individually andconsecutively numbered using Arabicnumerals, so as to unambiguouslyidentify each paragraph. The numbershould consist of at least four numeralscontained in square brackets, includingleading zeros (e.g., [0001]). The numbersand enclosing brackets should appear tothe right of the left margin as the firstitem in each paragraph, before the firstword of the paragraph, and should behighlighted in bold. A gap, equivalent toapproximately four spaces, shouldfollow the number. Nontext elements(e.g., tables, mathematical or chemical

formulas, chemical structures, andsequence data) are considered part ofthe numbered paragraph around orabove the elements, and should not beindependently numbered. Even if anontext element extends to the leftmargin, it should not be numbered as aseparate and independent paragraph. Alist is also treated as part of theparagraph around or above the list, andshould not be independently numbered.Paragraph or section headers (titles),whether abutting the left margin orcentered on the page, are not consideredparagraphs and should not benumbered.

(7) If papers are submitted as part ofthe application that do not comply withparagraphs (b)(1) through (b)(5) of thissection, the Office may at its option:

(i) Convert the papers submitted byapplicant into papers that do complywith paragraphs (b)(1) through (b)(5) ofthis section and charge the applicant thecosts incurred by the Office in doing so(§ 1.21(j)); or

(ii) Require that the applicant providesubstitute papers that comply withparagraphs (b)(1) through (b)(5) of thissection within a set time period.

(c)(1) Any interlineation, erasure,cancellation or other alteration of theapplication papers filed must be madebefore the signing of any accompanyingoath or declaration pursuant to § 1.63referring to those application papers andshould be dated and initialed or signedby the applicant on the same sheet ofpaper. Application papers containingalterations made after the signing of anoath or declaration referring to thoseapplication papers must be supportedby a supplemental oath or declarationunder § 1.67. In either situation, asubstitute specification (§ 1.125) isrequired if the application papers do notcomply with paragraphs (a) and (b) ofthis section.

(2) After the signing of the oath ordeclaration referring to the applicationpapers, amendments may only be madein the manner provided by § 1.121.

(3) Notwithstanding the provisions ofthis paragraph, if an oath or declarationis a copy of the oath or declaration froma prior application, the application forwhich such copy is submitted maycontain alterations that do not introducematter that would have been new matterin the prior application.

(d) A nonprovisional or provisionalapplication may be filed in a languageother than English.

(1) Nonprovisional application. If anonprovisional application is filed in alanguage other than English, an Englishlanguage translation of the non-Englishlanguage application, a statement thatthe translation is accurate, and the



processing fee set forth in § 1.17(i) arerequired. If these items are not filedwith the application, applicant will benotified and given a period of timewithin which they must be filed inorder to avoid abandonment.

(2) Provisional application: If aprovisional application is filed in alanguage other than English, an Englishlanguage translation of the non-Englishlanguage provisional application willnot be required in the provisionalapplication. If a nonprovisionalapplication claims the benefit of suchprovisional application, however, anEnglish language translation of the non-English language provisionalapplication and a statement that thetranslation is accurate must be suppliedif the nonprovisional application isinvolved in an interference (§ 1.630), orwhen specifically required by theexaminer.

21. Section 1.53 is proposed to beamended by revising paragraphs (c)(1),(c)(2), (d)(4), (e)(2), (f) and (g) andadding paragraph (d)(10) to read asfollows:

§ 1.53 Application number, filing date, andcompletion of application.

* * * * *(c) * * *(1) A provisional application must

also include the cover sheet required by§ 1.51(c)(1), which may be anapplication data sheet (§ 1.76), or acover letter identifying the applicationas a provisional application. Otherwise,the application will be treated as anapplication filed under paragraph (b) ofthis section.

(2) An application for patent filedunder paragraph (b) of this section maybe converted to a provisionalapplication and be accorded the originalfiling date of the application filed underparagraph (b) of this section. The grantof such a request for conversion will notentitle applicant to a refund of the feeswhich were properly paid in theapplication filed under paragraph (b) ofthis section. Such a request forconversion must be accompanied by theprocessing fee set forth in § 1.17(q) andbe filed prior to the earliest of:

(i) Abandonment of the applicationfiled under paragraph (b) of this section;

(ii) Payment of the issue fee on theapplication filed under paragraph (b) ofthis section;

(iii) Expiration of twelve months afterthe filing date of the application filedunder paragraph (b) of this section; or

(iv) The filing of a request for astatutory invention registration under§ 1.293 in the application filed underparagraph (b) of this section.* * * * *

(d) * * *(4) An application filed under this

paragraph may be filed by fewer than allthe inventors named in the priorapplication, provided that the requestfor an application under this paragraphwhen filed is accompanied by astatement requesting deletion of thename or names of the person or personswho are not inventors of the inventionbeing claimed in the new application.No person may be named as an inventorin an application filed under thisparagraph who was not named as aninventor in the prior application on thedate the application under thisparagraph was filed, except by way ofcorrection of inventorship under § 1.48.* * * * *

(10) See § 1.103(b) for requesting alimited suspension of action in anapplication filed under this paragraph.

(e) * * *(2) Any request for review of a

notification pursuant to paragraph (e)(1)of this section, or a notification that theoriginal application papers lack aportion of the specification ordrawing(s), must be by way of a petitionpursuant to this paragraph accompaniedby the fee set forth in § 1.17(h). In theabsence of a timely (§ 1.181(f)) petitionpursuant to this paragraph, the filingdate of an application in which theapplicant was notified of a filing errorpursuant to paragraph (e)(1) of thissection will be the date the filing erroris corrected.* * * * *

(f) Completion of applicationsubsequent to filing—Nonprovisional(including continued prosecution andreissue) application. (1) If anapplication which has been accorded afiling date pursuant to paragraph (b) or(d) of this section does not include thebasic filing fee, or if an applicationwhich has been accorded a filing datepursuant to paragraph (b) of this sectiondoes not include an oath or declarationby the applicant pursuant to §§ 1.63,1.162 or 1.175, and applicant hasprovided a correspondence address(§ 1.33(a)), applicant will be notifiedand given a period of time within whichto pay the filing fee, file an oath ordeclaration in an application underparagraph (b) of this section, and paythe surcharge required by § 1.16(e) toavoid abandonment.

(2) If an application which has beenaccorded a filing date pursuant toparagraph (b) of this section does notinclude the basic filing fee or an oath ordeclaration by the applicant pursuant to§§ 1.63, 1.162 or 1.175, and applicanthas not provided a correspondenceaddress (§ 1.33(a)), applicant has two

months from the filing date of theapplication within which to pay thebasic filing fee, file an oath ordeclaration, and pay the surchargerequired by § 1.16(e) to avoidabandonment.

(3) This paragraph applies tocontinuation or divisional applicationsunder paragraphs (b) or (d) of thissection and to continuation-in-partapplications under paragraph (b) of thissection.

(4) See § 1.63(d) concerning thesubmission of a copy of the oath ordeclaration from the prior applicationfor a continuation or divisionalapplication under paragraph (b) of thissection.

(5) If applicant does not pay one ofthe basic filing fee or the processing andretention fee set forth in § 1.21(l) duringthe pendency of the application, theOffice may dispose of the application.

(g) Completion of applicationsubsequent to filing—provisionalapplication. (1) If a provisionalapplication which has been accorded afiling date pursuant to paragraph (c) ofthis section does not include the coversheet required by § 1.51(c)(1) or thebasic filing fee (§ 1.16(k)), and applicanthas provided a correspondence address(§ 1.33(a)), applicant will be notifiedand given a period of time within whichto pay the basic filing fee, file a coversheet (§ 1.51(c)(1)), and pay thesurcharge required by § 1.16(l) to avoidabandonment.

(2) If a provisional application whichhas been accorded a filing date pursuantto paragraph (c) of this section does notinclude the cover sheet required by§ 1.51(c)(1) or the basic filing fee(§ 1.16(k)), and applicant has notprovided a correspondence address(§ 1.33(a)), applicant has two monthsfrom the filing date of the applicationwithin which to pay the basic filing fee,file a cover sheet (§ 1.51(c)(1)), and paythe surcharge required by § 1.16(l) toavoid abandonment.

(3) If applicant does not pay the basicfiling fee during the pendency of theapplication, the Office may dispose ofthe application.* * * * *


§ 1.55 Claim for foreign priority.(a) An applicant in a nonprovisional

application may claim the benefit of thefiling date of one or more prior foreignapplications under the conditionsspecified in 35 U.S.C. 119(a) through(d), 172, and 365(b).

(1) The claim for priority mustidentify the foreign application for



which priority is claimed, as well as anyforeign application for the same subjecthaving a filing date before that of theapplication for which priority isclaimed, by specifying the applicationnumber, country (or intergovernmentalorganization), day, month, and year ofits filing.

(2)(i) In an application filed under 35U.S.C. 111(a), the claim for priority andthe certified copy of the foreignapplication specified in 35 U.S.C. 119(b)must be filed before the patent isgranted.

(ii) In an application that entered thenational stage from an internationalapplication after compliance with 35U.S.C. 371, the claim for priority mustbe made within the time limit set forthin the PCT and the Regulations underthe PCT. If the certified copy of theforeign application has not been filed inaccordance with the PCT and theRegulations under the PCT, it must befiled before the patent is granted.

(iii) When the application becomesinvolved in an interference (§ 1.630),when necessary to overcome the date ofa reference relied upon by the examiner,or when deemed necessary by theexaminer, the Office may require thatthe claim for priority and the certifiedcopy of the foreign application be filedearlier than provided in paragraph(a)(2)(i) or (a)(2)(ii) of this section.

(iv) If the claim for priority or thecertified copy of the foreign applicationis filed after the date the issue fee ispaid, it must be accompanied by theprocessing fee set forth in § 1.17(i) butthe patent will not include the priorityclaim unless corrected by a certificate ofcorrection under 35 U.S.C. 255 and§ 1.323 of this part.

(3) An English-language translation ofa non-English-language foreignapplication is not required except whenthe application is involved in aninterference (§ 1.630), when necessary toovercome the date of a reference reliedupon by the examiner, or whenspecifically required by the examiner. Ifan English-language translation isrequired, it must be filed together witha statement that the translation of thecertified copy is accurate.* * * * *

23. Section 1.56 is proposed to beamended by adding a new paragraph (e)to read as follows:

§ 1.56 Duty to disclose informationmaterial to patentability.* * * * *

(e) In any continuation-in-partapplication, the duty under this sectionincludes the duty to disclose to theOffice all information known to theperson to be material to patentability, as

defined in paragraph (b) of this section,which became available between thefiling date of the prior application andthe national or PCT international filingdate of the continuation-in-partapplication.


§ 1.59 Expungement of information orcopy of papers in application file.* * * * *

(b) An applicant may request that theOffice expunge and return information,other than what is excluded byparagraph (a)(2) of this section, by filinga petition under this paragraph. Anypetition to expunge and returninformation from an application mustinclude the fee set forth in § 1.17(h) andestablish to the satisfaction of theCommissioner that the return of theinformation is appropriate.* * * * *

25. Section 1.63 is proposed to beamended by revising paragraphs (a), (b),(c) and (e) to read as follows:

§ 1.63 Oath or declaration.(a) An oath or declaration filed under

§ 1.51(b)(2) as a part of a nonprovisionalapplication must:

(1) Be executed (i.e., signed) inaccordance with either § 1.66 or § 1.68;

(2) Identify each inventor and countryof citizenship of each inventor; and

(3) State that the person making theoath or declaration believes the namedinventor or inventors to be the originaland first inventor or inventors of thesubject matter which is claimed and forwhich a patent is sought.

(b) In addition to meeting therequirements of paragraph (a), the oathor declaration must also:

(1) Identify the application to whichit is directed;

(2) State that the person making theoath or declaration has reviewed andunderstands the contents of theapplication, including the claims, asamended by any amendmentspecifically referred to in the oath ordeclaration; and

(3) State that the person making theoath or declaration acknowledges theduty to disclose to the Office allinformation known to the person to bematerial to patentability as defined in§ 1.56.

(c) Unless such information issupplied on an application data sheet inaccordance with § 1.76, the oath ordeclaration must also identify:

(1) Each inventor, by full name,including the family name, and at leastone given name without abbreviationtogether with any other given name orinitial;

(2) The mailing address and residence(if different from the mailing address) ofeach inventor; and

(3) Any foreign application for patent(or inventor’s certificate) for which aclaim for priority is made pursuant to§ 1.55, and any foreign applicationhaving a filing date before that of theapplication on which priority isclaimed, by specifying the applicationnumber, country, day, month, and yearof its filing.* * * * *

(e) A newly executed oath ordeclaration must be filed in anycontinuation-in-part application, whichapplication may name all, more, orfewer than all of the inventors named inthe prior application.


§ 1.64 Person making oath or declaration.(a) The oath or declaration (§ 1.63),

including any supplemental oath ordeclaration (§ 1.67), must be made by allof the actual inventors except asprovided for in §§ 1.42, 1.43, 1.47 or1.67.

(b) If the person making the oath ordeclaration or any supplemental oath ordeclaration is not the inventor (§§ 1.42,1.43, 1.47 or 1.67), the oath ordeclaration shall state the relationshipof the person to the inventor, and, uponinformation and belief, the facts whichthe inventor is required to state. If theperson signing the oath or declaration isthe legal representative of a deceasedinventor, the oath or declaration shallalso state that the person is a legalrepresentative and the citizenship,residence and mailing address of thelegal representative.

27. Section 1.67 is proposed to beamended by revising paragraph (a) andremoving paragraph (c) to read asfollows:

§ 1.67 Supplemental oath or declaration.(a) The Office may require a

supplemental oath or declarationmeeting the requirements of § 1.63 or§ 1.162 to correct any deficiencies orinaccuracies present in the earlier filedoath or declaration. If the earlier filedoath or declaration complied with§ 1.63(a), the Office may permit thesupplemental oath or declaration to bemade by fewer than all of the inventorsor by an applicant other than theinventor.* * * * *


§ 1.72 Title and abstract.(a) Unless the title is supplied in an

application data sheet (§ 1.76), the title



of the invention, which should be asshort and specific as possible, shouldappear as a heading on the first page ofthe specification.

(b) A brief abstract of the technicaldisclosure in the specification mustcommence on a separate sheet,preferably following the claims, underthe heading ‘‘Abstract’’ or ‘‘Abstract ofthe Disclosure.’’ The abstract in anapplication filed under 35 U.S.C. 111may not exceed 150 words in length.The purpose of the abstract is to enablethe Patent and Trademark Office and thepublic generally to determine quicklyfrom a cursory inspection the natureand gist of the technical disclosure. Theabstract will not be used for interpretingthe scope of the claims.

29. A new § 1.76 is proposed to beadded to read as follows:

§ 1.76 Application data sheet.

(a) An application data sheet is asheet or sheets containing bibliographicdata concerning a patent applicationarranged in a specified format. If anapplication data sheet is provided, theapplication data sheet is part of theapplication.

(b) Bibliographic data as used inparagraph (a) of this section includes:

(1) Applicant information. Thisinformation includes the name,residence, mailing address, andcitizenship of each applicant (§ 1.41(b)).The name of each applicant mustinclude the family name, and at leastone given name without abbreviationtogether with any other given name orinitial. If the applicant is not aninventor, this information also includesthe applicant’s authority (§§ 1.42, 1.43and 1.47) to apply for the patent onbehalf of the inventor. The citizenshipof each inventor must be provided inthe oath or declaration under § 1.63even if it is provided in the applicationdata sheet (35 U.S.C. 115).

(2) Correspondence information. Thisinformation includes thecorrespondence address, which may beindicated by reference to a customernumber, to which correspondence is tobe directed (see § 1.33(a)).

(3) Application information. Thisinformation includes the title of theinvention, the total number of drawingsheets, whether the drawings are formal,any docket number assigned to theapplication, and the type (e.g., utility,plant, design, reissue utility,provisional) of application, and whetherthe application discloses any significantpart of the subject matter of anapplication under a secrecy orderpursuant to § 5.2 of this chapter (see§ 5.2(c)).

(4) Representative information. Thisinformation includes the registrationnumber of each practitioner, or thecustomer number, having a power ofattorney or authorization of agent in theapplication. Providing this informationin the application data sheet does notconstitute a power of attorney orauthorization of agent in the application(see § 1.34(b)).

(5) Domestic priority information.This information includes theapplication number, the filing date, thestatus (including patent number ifavailable), and relationship of eachapplication for which a benefit isclaimed under 35 U.S.C. 119(e), 120,121, or 365(c). Providing thisinformation in the application datasheet constitutes the specific referencerequired by 35 U.S.C. 119(e) or 120 and§ 1.78(a)(2) or § 1.78(a)(4) of this part.

(6) Foreign priority information. Thisinformation includes the applicationnumber, country, and filing date of eachforeign application for which priority isclaimed, as well as any foreignapplication having a filing date beforethat of the application for which priorityis claimed. Providing this informationin the application data sheet constitutesthe claim for priority as required by 35U.S.C. 119(b) and § 1.55(a) of this part.

(c) If an application contains anapplication data sheet, anyinconsistency between the informationprovided in the application data sheetand the oath or declaration under § 1.63will be resolved in favor of theinformation provided in the applicationdata sheet. A supplemental applicationdata sheet may be submitted to corrector update information provided in aprevious application data sheet.


§ 1.77 Arrangement of applicationelements.

(a) The elements of the application, ifapplicable, should appear in thefollowing order:

(1) Utility application transmittalform.

(2) Fee transmittal form.(3) Application data sheet (see § 1.76).(4) Specification.(5) Drawings.(6) Executed oath or declaration.(b) The specification should include

the following sections in order:(1) Title of the invention, which may

be accompanied by an introductoryportion stating the name, citizenshipand residence of the applicant.

(2) Cross-reference to relatedapplications (unless included in theapplication data sheet).

(3) Statement regarding federallysponsored research or development.

(4) Reference to a ‘‘computer programlisting appendix’’ (see § 1.96 (c)).

(5) Background of the invention.(6) Brief summary of the invention.(7) Brief description of the several

views of the drawing.(8) Detailed description of the

invention.(9) A claim or claims.(10) Abstract of the disclosure.(11) Sequence listing (see §§ 1.821

through 1.825).(c) The text of the specification

sections defined in paragraphs (b)(1)through (b)(3) and (b)(5) through (b)(11)of this section, if applicable, should bepreceded by a section heading inuppercase and without underlining orbold type.

31. Section 1.78 is proposed to beamended by revising paragraphs (a)(2),(a)(4) and (c) to read as follows:

§ 1.78 Claiming benefit of earlier filing dateand cross-references to other applications.

(a) * * *(2) Except for a continued prosecution

application filed under § 1.53(d), anynonprovisional application claiming thebenefit of one or more prior filedcopending nonprovisional applicationsor international applications designatingthe United States of America mustcontain a reference to each such priorapplication, identifying it by applicationnumber (consisting of the series codeand serial number) or internationalapplication number and internationalfiling date and indicating therelationship of the applications. Unlessthe reference required by this paragraphis included in an application data sheet(§ 1.76), the specification must containor be amended to contain such referencein the first sentence following the title.The request for a continued prosecutionapplication under § 1.53(d) is thespecific reference required by 35 U.S.C.120 to the prior application. Theidentification of an application byapplication number under this section isthe specific reference required by 35U.S.C. 120 to every application assignedthat application number. Cross-references to other related applicationsmay be made when appropriate (see§ 1.14).* * * * *

(4) Any nonprovisional applicationclaiming the benefit of one or more priorfiled copending provisional applicationsmust contain a reference to each suchprior provisional application,identifying it as a provisionalapplication, and including theprovisional application number(consisting of series code and serialnumber). Unless the reference requiredby this paragraph is included in an



application data sheet (§ 1.76), thespecification must contain or beamended to contain such reference inthe first sentence following the title.* * * * *

(c) If an application or a patent underreexamination and at least one otherapplication naming different inventorsare owned by the same party andcontain conflicting claims, and there isno statement of record indicating thatthe claimed inventions were commonlyowned or subject to an obligation ofassignment to the same person at thetime the later invention was made, theOffice may require the assignee to statewhether the claimed inventions werecommonly owned or subject to anobligation of assignment to the sameperson at the time the later inventionwas made, and, if not, indicate whichnamed inventor is the prior inventor.


§ 1.84 Standards for drawings.

(a) Drawings. There are twoacceptable categories for presentingdrawings in utility patent applications:

(1) Black ink. Black and whitedrawings are normally required. Indiaink, or its equivalent that secures solidblack lines, must be used for drawings,or

(2) Color. On rare occasions, colordrawings may be necessary as the onlypractical medium by which to disclosethe subject matter sought to be patentedin a utility patent application or thesubject matter of a statutory inventionregistration. The Patent and TrademarkOffice will accept color drawings inutility patent applications and statutoryinvention registrations only if colordrawings are necessary for theunderstanding of the claimed inventionand upon payment of the fee set forthin § 1.17(k) and submission of three setsof the color drawings. Color drawingsare not permitted in internationalapplications (see PCT Rule 11.13). If thesubject matter of the application admitsof illustration by a black and whitedrawing, the examiner may require ablack and white drawing in place of thecolor drawing. The color drawings mustbe of sufficient quality so that all detailsin the drawings are reproducible in theprinted patent. If color drawings aresubmitted, the specification mustcontain or be amended to contain thefollowing language as the first paragraphof the brief description of the drawings:

The file of this patent contains at least onedrawing executed in color. Copies of thispatent with color drawing(s) will be providedby the Patent and Trademark Office uponrequest and payment of the necessary fee.

(b)(1) Photographs. Photographs arenot ordinarily permitted in utility patentapplications. The Office will acceptphotographs in utility patentapplications, however, if photographsare the only practicable medium forillustrating the claimed invention. If thesubject matter of the application admitsof illustration by a drawing, theexaminer may require a drawing inplace of the photograph. Thephotographs must be of sufficientquality so that all details in thephotographs are reproducible in theprinted patent.

(2) Color photographs. Colorphotographs will be accepted in utilitypatent applications if the conditions foraccepting color drawings andphotographs have been satisfied. Seeparagraphs (a)(2) and (b)(1) of thissection.

(c) Identification of drawings.Identifying indicia, if provided, shouldinclude the title of the invention,inventor’s name, and applicationnumber, or docket number (if any) if anapplication number has not beenassigned to the application. If thisinformation is provided, it must beplaced on the front of each sheet andcentered within the top margin.

(d) Type of paper. Drawingssubmitted to the Office must be made onpaper which is flexible, strong, white,smooth, non-shiny, and durable. Allsheets must be reasonably free fromcracks, creases, and folds. Only one sideof the sheet may be used for thedrawing. Each sheet must be reasonablyfree from erasures and must be free fromalterations, overwritings, andinterlineations. Photographs must bedeveloped on paper or be permanentlymounted on Bristol board meeting thesheet-size requirements of paragraph (e)of this section and the marginrequirements of paragraph (f) of thissection. See paragraph (b) of this sectionfor other requirements for photographs.

(e) Size of paper. All drawing sheetsin an application must be the same size.One of the shorter sides of the sheet isregarded as its top. The size of thesheets on which drawings are mademust be:

(1) 21.0 cm by 29.7 cm (DIN size A4);or

(2) 21.6 cm by 27.9 cm (81⁄2 by 11inches).

(f) Margins. The sheets must notcontain frames around the sight (i.e., theusable surface), but should have scantarget points (i.e., cross-hairs) printed ontwo catercorner margin corners. Eachsheet must include a top margin of atleast 2.5 cm (1 inch), a left side marginof at least 2.5 cm (1 inch), a right sidemargin of at least 1.5 cm (5⁄8 inch), and

a bottom margin of at least 1.0 cm (3⁄8inch), and must leave a sight no greaterthan 17.0 cm by 26.2 cm on 21.0 cm by29.7 cm (DIN size A4) drawing sheets,and a sight no greater than 17.0 cm by24.4 cm (63⁄4 by 95⁄8 inches) on 21.6 cmby 27.9 cm (81⁄2 by 11 inch) drawingsheets.

(g) Scale. The scale to which adrawing is made must be large enoughto show the mechanism withoutcrowding when the drawing is reducedin size to two-thirds in reproduction.Indications such as ‘‘actual size’’ or‘‘scale 1⁄2’’ on the drawings are notpermitted since these lose their meaningwith reproduction in a different format.

(h) Character of lines, numbers, andletters. All drawings must be made by aprocess which will give themsatisfactory reproduction characteristics.Every line, number, and letter must bedurable, clean, black (except for colordrawings), sufficiently dense and dark,and uniformly thick and well-defined.The weight of all lines and letters mustbe heavy enough to permit adequatereproduction. This requirement appliesto all lines however fine, to shading,and to lines representing cut surfaces insectional views. Lines and strokes ofdifferent thicknesses may be used in thesame drawing where differentthicknesses have a different meaning.

(i) Legends. Suitable descriptivelegends may be used subject to approvalby the Office, or may be required by theexaminer where necessary forunderstanding of the drawing. Theyshould contain as few words aspossible.

(j) Numbers, letters, and referencecharacters. (1) Reference characters(numerals are preferred), sheet numbers,and view numbers must be plain andlegible, and must not be used inassociation with brackets or invertedcommas, or enclosed within outlines,e.g., encircled. They must be oriented inthe same direction as the view so as toavoid having to rotate the sheet.

(2) The English alphabet must be usedfor letters, except where anotheralphabet is customarily used, such asthe Greek alphabet to indicate angles,wavelengths, and mathematicalformulas.

(3) Numbers, letters, and referencecharacters must measure at least 0.32cm (1⁄8 inch) in height.

(4) The same part of an inventionappearing in more than one view of thedrawing must always be designated bythe same reference character, and thesame reference character must never beused to designate different parts.

(5) Only reference charactersmentioned in the description mayappear in the drawings. Reference



characters mentioned in the descriptionmust appear in the drawings.

(k) Lead lines. Lead lines are thoselines between the reference charactersand the details to which they refer. Suchlines may be straight or curved andshould be as short as possible. Theymust originate in the immediateproximity of the reference character andextend to the feature indicated. Leadlines must not cross each other. Leadlines are required for each referencecharacter except for those whichindicate the surface or cross section onwhich they are placed. Such a referencecharacter must be underlined to make itclear that a lead line has not been leftout by mistake. Lead lines must beexecuted in the same way as lines in thedrawing. See paragraph (h) of thissection.

(l) Numbering of sheets of drawings.The sheets of drawings should benumbered in consecutive Arabicnumerals, starting with 1, within thesight as defined in paragraph (g) of thissection. These numbers, if present, mustbe placed in the middle of the top of thesheet, but not in the margin. Thenumbers can be placed on the right-hand side if the drawing extends tooclose to the middle of the top edge ofthe usable surface. The drawing sheetnumbering must be clear and larger thanthe numbers used as referencecharacters to avoid confusion. Thenumber of each sheet may be shown bytwo Arabic numerals placed on eitherside of an oblique line, with the firstbeing the sheet number and the secondbeing the total number of sheets ofdrawings, with no other marking.

(m) Numbering of views. (1) Thedifferent views must be numbered inconsecutive Arabic numerals, startingwith 1, independent of the numbering ofthe sheets and, if possible, in the orderin which they appear on the drawingsheet(s). Partial views intended to formone complete view, on one or severalsheets, must be identified by the samenumber followed by a capital letter.View numbers must be preceded by theabbreviation ‘‘FIG.’’ Where only a singleview is used in an application toillustrate the claimed invention, it mustnot be numbered and the abbreviation‘‘FIG.’’ must not appear.

(2) Numbers and letters identifyingthe views must be simple and clear andmust not be used in association withbrackets, circles, or inverted commas.The view numbers must be larger thanthe numbers used for referencecharacters.

(n) Security markings. Authorizedsecurity markings may be placed on thedrawings provided they are outside the

sight, preferably centered in the topmargin.

(o) Corrections. Any corrections ondrawings submitted to the Office mustbe durable and permanent.

(p) See § 1.152 for design drawings,§ 1.165 for plant drawings, and § 1.173for reissue drawings.


§ 1.85 Corrections to drawings.(a) If a drawing meets the

requirements of § 1.84(d), (e) and (f) andis suitable for reproduction, but is nototherwise in compliance with § 1.84, thedrawing may be admitted forexamination.

(b) The Office will not releasedrawings for purposes of correction. Ifcorrections are necessary, new correcteddrawings must be submitted within thetime set by the Office.

(c) If a corrected drawing is requiredor if a drawing does not comply with§ 1.84 at the time an application isallowed, the Office may notify theapplicant and set a three month periodof time from the mail date of the noticeof allowability within which theapplicant must file a corrected or formaldrawing in compliance with § 1.84 toavoid abandonment. This time period isnot extendable under § 1.136(a) or (b).

34. Section 1.91 is proposed to beamended by revising paragraph (a)(3)(i)to read as follows:

§ 1.91 Models or exhibits not generallyadmitted as part of application or patent.

(a) * * *(3) * * *(i) The fee set forth in § 1.17(h); and

* * * * *35. Section 1.96 is proposed to be

amended by revising paragraphs (b) and(c) to read as follows:

§ 1.96 Submission of computer programlistings.

* * * * *(b) Material which will be printed in

the patent. If the computer programlisting is contained on one sheet, it maybe submitted either as a drawing or aspart of the specification.

(1) Drawings. If the listing issubmitted as a drawing, it must besubmitted in the manner and complyingwith the requirements for drawings asprovided in § 1.84. At least one figurenumeral is required on the sheet ofdrawing.

(2) Specification. (i) If the listing issubmitted as part of the specification, itmust be submitted in accordance withthe provisions of § 1.52, at the end of thedescription but before the claims.

(ii) Any listing submitted as part ofthe specification must be a direct

printout (i.e., not a copy) from thecomputer’s printer with dark solid blackletters not less than 0.21 cm high, onwhite, unshaded and unlined paper,and the sheet should be submitted in aprotective cover. Any amendments mustbe made by way of submission of asubstitute sheet.

(c) As an appendix which will not beprinted. Any computer program listingmay, and any computer program listingthat would be contained on more thanone sheet must, be submitted on aCompact Disk-Read Only Memory (CD–ROM) or Compact Disk-Recordable (CD–R), which must be referred to in thespecification (see § 1.77(b)(4)). A CD–ROM or CD–R containing such acomputer program listing is to bereferred to as a ‘‘computer programlisting appendix.’’ The ‘‘computerprogram listing appendix’’ will not bepart of the printed patent. Reference inthe application to the ‘‘computerprogram listing appendix’’ must bemade at the location indicated in§ 1.77(b)(4). Any amendment to the‘‘computer program listing appendix’’must be by way of a new CD–ROM orCD–R containing a substitute computerprogram listing.

(1) Availability of appendix. Such‘‘computer program listing appendix’’will be available to the public forinspection, and copies thereof will beavailable for purchase with the filewrapper and contents, after a patentbased on such application is granted orthe application is otherwise madepublicly available.

(2) Submission requirements—(i) A‘‘computer program listing appendix’’must be submitted on a CD–ROM orCD–R in accordance with the standardsset forth in 36 CFR 1228.188(c) and (d).

(ii) The computer program listingmust be written in American StandardCode for Information Interchange(ASCII) in the form of textual documentfiles on a disk that complies with§ 1.824(b). No other format shall beallowed. The CD–ROM or CD–R must beaccompanied by documentation onpaper in accordance with § 1.52(a) thatcontains the machine format (e.g., IBM–PC, Macintosh)), the operating system(e.g., MS–DOS, Macintosh, Unix) andany other special information that isnecessary to identify, maintain, andinterpret the ‘‘computer program listingappendix.’’

(iii) Multiple computer programlistings for a single application may beplaced on a single CD–ROM or CD–R.Multiple CD–ROMs or CD–Rs may besubmitted for a single application ifnecessary. A separate CD–ROM or CD–R is required for each applicationcontaining a computer program listing



that must be submitted on a ‘‘computerprogram listing appendix.’’

(iv) A CD–ROM or CD–R ‘‘computerprogram listing appendix’’ must belabeled with the following information:

(A) The name of each inventor (ifknown);

(B) Title of the invention;(C) The docket number used by the

person filing the application to identifythe application (if applicable).

36. Section 1.97 is proposed to beamended by revising paragraphs (a)through (e) to read as follows:

§ 1.97 Filing of information disclosurestatement.

(a) In order for an applicant for apatent or for a reissue of a patent to havean information disclosure statement incompliance with § 1.98 considered bythe Office during the pendency of theapplication, it must satisfy one ofparagraphs (b), (c), or (d) of this section.

(b) An information disclosurestatement shall be considered by theOffice if filed by the applicant withinany one of the following time periods:

(1) Within three months of the filingdate of a national application other thana continued prosecution applicationunder § 1.53(d);

(2) Within three months of the date ofentry of the national stage as set forth in§ 1.491 in an international application;or

(3) Before the mailing date of a firstOffice action on the merits.

(c) An information disclosurestatement shall be considered by theOffice if filed after the period specifiedin paragraph (b) of this section,provided that the information disclosurestatement is filed before the mailingdate of any of a final action under§ 1.113, a notice of allowance under§ 1.311, or an action that otherwisecloses prosecution in the application,and it is accompanied by one of:

(1) A statement as specified inparagraph (e) of this section; or

(2) The fee set forth in § 1.17(p).(d) An information disclosure

statement shall be considered by theOffice if filed by the applicant after theperiod specified in paragraph (c) of thissection, provided that the informationdisclosure statement is filed on or beforepayment of the issue fee and isaccompanied by:

(1) A statement as specified inparagraph (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 disclosurestatement was first cited in acommunication from a foreign patent

office in a counterpart foreignapplication not more than three monthsprior to the filing of the informationdisclosure statement; or

(2) That no item of informationcontained in the information disclosurestatement was cited in a communicationfrom a foreign patent office in acounterpart foreign application, and, tothe knowledge of the person signing thecertification after making reasonableinquiry, no item of informationcontained in the information disclosurestatement was known to any individualdesignated in § 1.56(c) more than threemonths prior to the filing of theinformation disclosure statement.* * * * *


§ 1.98 Content of information disclosurestatement.

(a) Any information disclosurestatement filed under § 1.97 shallinclude:

(1) A list of all patents, publicationsor other information submitted forconsideration by the Office;

(2) A legible copy of:(i) Each U.S. and foreign patent;(ii) Each publication or that portion

which caused it to be listed;(iii) For each cited pending U.S.

application, the applicationspecification including the claims, andany drawing of the application, or thatportion of the application which causedit to be listed including any claimsdirected to that portion; and

(iv) All other information or thatportion which caused it to be listed; and

(3) A concise explanation of therelevance, as it is presently understoodby the individual designated in § 1.56(c)most knowledgeable about the contentof the information, of each patent,publication, or other information listedthat is not in the English language. Theconcise explanation may be eitherseparate from the specification orincorporated therein. If a writtenEnglish-language translation of a non-English-language document, or portionthereof, is within the possession,custody, or control of, or is readilyavailable to any individual designatedin § 1.56(c), a copy of the translationshall accompany the informationdisclosure statement.

(b) Each U.S. patent listed in aninformation disclosure statement shallbe identified by patentee, patent numberand issue date. Each listed U.S.application shall be identified by theinventor, application number and filingdate. Each listed foreign patent orpublished foreign patent applicationshall be identified by the country or

patent office which issued the patent orpublished the application, anappropriate document number, and thepublication date indicated on the patentor published application. Each listedpublication shall be identified by author(if any), title, relevant pages of thepublication, date, and place ofpublication.

(c) When the disclosures of two ormore patents or publications listed in aninformation disclosure statement aresubstantively cumulative, a copy of oneof the patents or publications may besubmitted without copies of the otherpatents or publications provided that astatement is made that these otherpatents or publications are cumulative.

(d) A copy of any patent, publication,application, or other information listedin an information disclosure statementis not required to be provided if it waspreviously cited by or submitted to theOffice in a prior application, providedthat:

(1) The prior application is properlyidentified in the statement and relied onfor an earlier filing date under 35 U.S.C.120; and

(2) Where the listed information wasnot cited by the Office, the informationsubmission made in the priorapplication complied with paragraphs(a) through (c) of this section, andexcept for an application filed under§ 1.53(d) the submission made in theprior application complied with § 1.97.

38. Section 1.102 is proposed to beamended by revising paragraph (d) toread as follows:

§ 1.102 Advancement of examination.

* * * * *(d) A petition to make an application

special on grounds other than thosereferred to in paragraph (c) of thissection must be accompanied by the feeset forth in § 1.17(h).


§ 1.103 Suspension of action by the Office.(a) Suspension for cause. On request

of the applicant, the Office may grant asuspension of action under thisparagraph for good and sufficient cause.The Office will not suspend action if areply by applicant to an Office action isoutstanding. Any petition forsuspension of action under thisparagraph must specify a period ofsuspension not exceeding six months.Any petition for suspension of actionunder this paragraph must also include:

(1) A showing of good and sufficientcause for suspension of action; and

(2) The fee set forth in § 1.17(h),unless such cause is the fault of theOffice.



(b) Limited suspension of action in acontinued prosecution application(CPA) under § 1.53(d). On request of theapplicant, the Office may grant asuspension of action under thisparagraph in a continued prosecutionapplication under § 1.53(d) for a periodnot exceeding three months. Anyrequest for suspension of action underthis paragraph must be filed with therequest for an application under§ 1.53(d), specify the period ofsuspension, and include the processingfee set forth in § 1.17(i).

(c) Notice of suspension on initiativeof the Office. The Office will notifyapplicant if the Office suspends actionby the Office on an application on itsown initiative.

(d) Suspension of action for publicsafety or defense. The Office maysuspend action by the Office by order ofthe Commissioner if the followingconditions are met:

(1) The application is owned by theUnited States;

(2) Publication of the invention maybe detrimental to the public safety ordefense; and

(3) The appropriate department oragency requests such suspension.

(e) Statutory invention registration.The Office will suspend action for theentire pendency of an application if theOffice has accepted a request to publisha statutory invention registration in theapplication, except for purposes relatingto patent interference proceedings undersubpart E of this part.


§ 1.105 Requirements for information.

(a)(1) In the course of examining ortreating a matter in a pending orabandoned application filed under 35U.S.C. 111 or 371 (including a reissueapplication), in a patent, or in areexamination proceeding, the examineror other Office employee may requirethe submission of such information asmay be reasonably necessary to properlyexamine or treat the matter.

(2) Any reply that states that theinformation required to be submitted isunknown and/or is not available will beaccepted as a complete reply.

(b) The requirement for information ofparagraph (a)(1) of this section may beincluded in an Office action, or sentseparately.

(c) A reply, or a failure to reply, to arequirement for information under thisrule will be governed by §§ 1.135 and1.136.

41. Section 1.111 is proposed to beamended by revising the heading andparagraphs (a) and (c) to read as follows:

§ 1.111 Reply by applicant or patent ownerto a non-final Office action.

(a) If the Office action after the firstexamination (§ 1.104) is adverse in anyrespect, the applicant or patent owner,if he or she persists in his or herapplication for a patent orreexamination proceeding, must replythereto and request reconsideration orfurther examination, with or withoutamendment. See § 1.135 and § 1.136 fortime for reply to avoid abandonment. Asecond or subsequent supplementalreply will be entered unlessdisapproved by the Commissioner.* * * * *

(c) In amending in reply to a rejectionof claims in an application or patentunder reexamination, the applicant orpatent owner must clearly point out thepatentable novelty which he or shethinks the claims present in view of thestate of the art disclosed by thereferences cited or the objections made.The applicant or patent owner must alsoshow how the amendments avoid suchreferences or objections.


§ 1.112 Reconsideration before finalaction.

After reply by applicant or patentowner (§ 1.111) to a non-final action, theapplication or patent underreexamination will be reconsidered andagain examined. The applicant or patentowner will be notified if claims arerejected, or objections or requirementsmade, in the same manner as after thefirst examination (§ 1.104). Applicant orpatent owner may reply to such Officeaction in the same manner provided in§ 1.111, with or without amendment,unless such Office action indicates thatit is made final (§ 1.113) or an appeal(§ 1.191) has been taken.


§ 1.115 Preliminary amendments.

(a) A preliminary amendment is anamendment that is received in theOffice (§ 1.6) on or before the mail dateof the first Office action under § 1.104.

(b) A preliminary amendment will beentered unless disapproved by theCommissioner. A preliminaryamendment will not be disapproved ifit is filed no later than:

(1) Three months from the filing dateof an application under § 1.53(b);

(2) The filing date of a continuedprosecution application under § 1.53(d);or

(3) Three months from the date thenational stage is entered as set forth in§ 1.491 in an international application.

(c) The time periods specified inparagraph (b) of this section are notextendable.


§ 1.121 Manner of making amendments.(a) Amendments in applications,

other than reissue applications.Amendments in applications, excludingreissue applications, are made by filinga paper, in compliance with § 1.52,directing that specified amendments bemade.

(1) Specification other than theclaims—(i) Amendment by instructionto delete, replace or add a paragraph: Ifthe paragraphs of the specification arenumbered as provided in § 1.52(b)(6),amendments to the specification, otherthan the claims, may be made bysubmitting an instruction, referencingthe paragraph number, to delete one ormore paragraphs of the specification, toreplace a deleted paragraph with one ormore replacement paragraphs, or to addone or more paragraphs, along with thereplacement or added paragraph(s). Thereplacement or added paragraph(s) mustnot include any markings to indicate thechanges that have been made. Theamendment must be accompanied by acopy of any replacement paragraph(s),on one or more pages separate from theamendment, marked-up to show all thechanges made by brackets (for deletedmatter) or underlining (for addedmatter), or by any equivalent markingsystem. If a deleted paragraph isreplaced by a single paragraph, thereplacement paragraph must retain thesame number as the deleted paragraph.If a deleted paragraph is replaced bymore than one paragraph, thenumbering of the replacementparagraphs must begin with the numberof the deleted paragraph with followingparagraphs beginning with the numberof the deleted paragraph followed by asingle decimal and sequential integers(e.g., paragraph 0071 is replaced by0071, 0071.1, and 0071.2). Anyparagraph(s) added between existingparagraphs must have the same numberas the paragraph immediately above theadded one, followed by a period and anew sequential number series (e.g.,0071.1, 0071.2). When numberedparagraphs are added or deleted byamendment, the numbering of anyunaffected paragraphs must remainunchanged. Subsequent amendmentswhich may involve further replacementparagraphs are added in the samemanner using existing paragraphnumbers along with increasing numbersfollowing a decimal. For clarity, a totalrenumbering of all previously added



paragraphs or the submission of asubstitute specification with totallyrenumbered paragraphs may berequired.

(ii) Amendment by replacementsection. If the sections of thespecification contain section headingsas provided in § 1.77(b), § 1.154(b), or§ 1.163(c), amendments to thespecification, other than the claims, maybe made by referring to the sectionheading along with an instruction todelete that section of the specificationand to replace such deleted section witha replacement section. The replacementsection must be in clean form and mustnot include any markings to indicate thechanges that have been made. Theamendment must be accompanied by acopy of the replacement section, on oneor more pages separate from theamendment, marked-up to show allchanges made by brackets (for deletedmatter) or underlining (for addedmatter), or by any equivalent markingsystem.

(iii) Amendment by substitutespecification. The specification, otherthan the claims, may also be amendedby submission of a substitutespecification in compliance with§ 1.125. If the paragraphs of thespecification are not numbered asprovided in § 1.52(b)(6), and thesections of the specification do notcontain section headings as provided in§ 1.77(b), § 1.154(b), or § 1.163(c), thespecification, other than the claims, maybe amended only by submission of asubstitute specification in compliancewith § 1.125. The paragraphs of thesubstitute specification, other than theclaims, should be individuallynumbered in Arabic numerals so thatany further amendment to thespecification may be made byreplacement paragraph(s) in accordancewith paragraph (a)(1)(i) of this section.The amendment must be accompaniedby a copy of the substitute specificationmarked-up to show all changes made bybrackets (for deleted matter), orunderlining (for added matter), or byany equivalent marking system.

(iv) Matter deleted by amendmentpursuant to paragraph (a)(1) of thissection can be reinstated only by asubsequent amendment presenting thepreviously deleted matter.

(2) Claims. Amendments to a claimmust be made by rewriting such claimwith all changes (e.g., additions,deletions, modifications) includedtherein, or by directions to cancel ordelete such claim. The rewriting of aclaim (with the same or a new number)will be construed as directing thedeletion of the previous version of thatclaim. A rewritten or newly added claim

must be in clean form without markingsas to the changes from the previousversion of the claim or a canceled claim.If a claim is amended by rewriting suchclaim with the same number, theamendment must be accompanied by acopy of the rewritten claim, on one ormore pages separate from theamendment, marked-up to show all thechanges made by brackets (for deletedmatter) or underlining (for addedmatter) or by any equivalent markingsystem, relative to the previous versionof that claim. A claim canceled byamendment (deleted in its entirety) canbe reinstated only by a subsequentamendment presenting the claim as anew claim with a new claim number.

(3) Drawings. Application drawingsare amended in the following manner:Any change to the patent drawings mustbe submitted as a sketch on a separatepaper showing the proposed changes inred for approval by the examiner. Uponapproval by the examiner, newdrawings in compliance with § 1.84including the changes must be filed.

(4) Disclosure consistency. Thedisclosure must be amended, whenrequired by the Office, to correctinaccuracies of description anddefinition, and to secure substantialcorrespondence between the claims, theremainder of the specification, and thedrawings.

(5) No new matter. No amendmentmay introduce new matter into thedisclosure of an application.

(b) Amendments in reissueapplications. Any amendment to thedescription and claims of a reissueapplication must be made in accordancewith § 1.173.* * * * *

45. Section 1.125 is proposed to beamended by revising paragraphs (b)(2)and (c) to read as follows:

§ 1.125 Substitute specification.* * * * *

(b) * * *(2) A marked-up copy of the

substitute specification showing all thechanges to (including the matter beingadded to and the matter being deletedfrom) the specification of record.Numbering the paragraphs of thespecification of record is not considereda change that must be shown pursuantto this paragraph.

(c) A substitute specificationsubmitted under this section must besubmitted in clean form withoutmarkings as to amended material. Theparagraphs of any substitutespecification, other than the claims,should be individually numbered inArabic numerals so that any amendmentto the specification may be made by

replacement paragraph in accordancewith § 1.121(a)(1)(i).* * * * *

46. Section 1.131 is proposed to beamended by revising its heading andparagraph (a) to read as follows:

§ 1.131 Affidavit or declaration of priorinvention.

(a) When any claim of an applicationor a patent under reexamination isrejected, the inventor of the subjectmatter of the rejected claim, the ownerof the patent under reexamination, orthe party qualified under §§ 1.42, 1.43,or 1.47, may submit an appropriate oathor declaration to establish invention ofthe subject matter of the rejected claimprior to the effective date of thereference or activity on which therejection is based. The effective date ofa U.S. patent is the date that such U.S.patent is effective as a reference under35 U.S.C. 102(e). Prior invention maynot be established under this section inany country other than the UnitedStates, a NAFTA country, or a WTOmember country. Prior invention maynot be established under this sectionbefore December 8, 1993, in a NAFTAcountry other than the United States, orbefore January 1, 1996, in a WTOmember country other than a NAFTAcountry. Prior invention may not beestablished under this section if either:

(1) The rejection is based upon a U.S.patent to another or others which claimsthe same patentable invention asdefined in § 1.601(n); or

(2) The rejection is based upon astatutory bar.* * * * *


§ 1.132 Affidavits or declarationstraversing rejections or objections.

When any claim of an application ora patent under reexamination is rejectedor objected to, the inventor of thesubject matter of the rejected claim, anoath or declaration may be submitted totraverse the rejection or objection. Anoath or declaration may not besubmitted under this section to traversea rejection if the rejection is based upona U.S. patent to another or others whichclaims the same patentable invention asdefined in § 1.601(n).


§ 1.133 Interviews.(a) Interviews with examiners

concerning applications and othermatters pending before the Office mustbe conducted on Office premises andwithin office hours, as the respective



examiners may designate. Interviewswill not be permitted at any other timeor place without the authority of theCommissioner. Interviews for thediscussion of the patentability ofpending applications will not occurbefore the first Office action. Theexaminer may require that an interviewbe scheduled in advance.* * * * *

49. Section 1.136 is proposed to beamended by adding paragraph (c) toread as follows:

§ 1.136 Extensions of time.

* * * * *(c) If an applicant is notified in a

‘‘Notice of Allowability’’ that anapplication is otherwise in condition forallowance, the following time periodsare not extendable if set in the ‘‘Noticeof Allowability’’ or in an Office actionhaving a mail date on or after the maildate of the ‘‘Notice of Allowability’’:

(1) The period for submitting an oathor declaration in compliance with§ 1.63;

(2) The period for submitting formaldrawings set under § 1.85(c); and

(3) The period for making a depositset under § 1.809(c).

50. Section 1.137 is proposed to beamended by revising paragraph (c) toread as follows:

§ 1.137 Revival of abandoned applicationor lapsed patent.

* * * * *(c)(1) Any petition to revive pursuant

to this section in a design applicationmust be accompanied by a terminaldisclaimer and fee as set forth in § 1.321dedicating to the public a terminal partof the term of any patent grantedthereon equivalent to the period ofabandonment of the application. Anypetition to revive pursuant to thissection in either a utility or plantapplication filed before June 8, 1995,must be accompanied by a terminaldisclaimer and fee as set forth in § 1.321dedicating to the public a terminal partof the term of any patent grantedthereon equivalent to the lesser of:

(i) The period of abandonment of theapplication; or

(ii) The period extending beyondtwenty years from the date on which theapplication for the patent was filed inthe United States or, if the applicationcontains a specific reference to anearlier filed application(s) under 35U.S.C. 120, 121, or 365(c), from the dateon which the earliest such applicationwas filed.

(2) Any terminal disclaimer pursuantto paragraph (c)(1) of this section mustalso apply to any patent granted on acontinuing utility or plant application

filed after June 8, 1995, or a continuingdesign application, that contains aspecific reference under 35 U.S.C. 120,121, or 365(c) to the application forwhich revival is sought.

(3) The provisions of paragraph (c)(1)of this section do not apply toapplications for which revival is soughtsolely for purposes of copendency witha utility or plant application filed on orafter June 8, 1995, or to lapsed patents.* * * * *


§ 1.138 Express abandonment.

(a) An application may be expresslyabandoned by filing in the Patent andTrademark Office a written declarationof abandonment identifying theapplication. Express abandonment ofthe application may not be recognizedby the Office unless it is actuallyreceived by appropriate officials in timeto act thereon before the date of issue.

(b) A written declaration ofabandonment must be signed by a partyauthorized under § 1.33(b)(1), (b)(3) or(b)(4) to sign a paper in the application,except as otherwise provided in thisparagraph. A registered attorney oragent not of record who acts in arepresentative capacity under theprovisions of § 1.34(a) when filing acontinuing application may expresslyabandon the prior application as of thefiling date granted to the continuingapplication.


§ 1.152 Design drawings.

The design must be represented by adrawing that complies with therequirements of § 1.84, and mustcontain a sufficient number of views toconstitute a complete disclosure of theappearance of the design. Appropriateand adequate surface shading should beused to show the character or contour ofthe surfaces represented. Solid blacksurface shading is not permitted exceptwhen used to represent the color blackas well as color contrast. Broken linesmay be used to show visibleenvironmental structure, but may not beused to show hidden planes andsurfaces which cannot be seen throughopaque materials. Alternate positions ofa design component, illustrated by fulland broken lines in the same view arenot permitted in a design drawing.Photographs and ink drawings are notpermitted to be combined as formaldrawings in one application.Photographs submitted in lieu of inkdrawings in design patent applicationsmust not disclose environmental

structure but must be limited to thedesign for the article claimed.


§ 1.154 Arrangement of applicationelements.

(a) The elements of the designapplication, if applicable, should appearin the following order:

(1) Design application transmittalform.

(2) Fee transmittal form.(3) Application data sheet (see § 1.76).(4) Specification.(5) Drawings or photographs.(6) Executed oath or declaration (see

§ 1.153(b)).(b) The specification should include

the following sections in order:(1) Preamble, stating name of the

applicant, title of the design, and a briefdescription of the nature and intendeduse of the article in which the design isembodied.



(4) Description of the figure or figuresof the drawing.

(5) Feature description.(6) A single claim.(c) The text of the specification

sections defined in paragraph (b) of thissection, if applicable, should bepreceded by a section heading inuppercase and without underlining orbold type.


§ 1.155 Expedited examination of designpatents.

(a) The applicant may request that theOffice expedite the examination of adesign application. To qualify forexpedited examination:

(1) The application must includedrawings in compliance with § 1.84;

(2) The applicant must haveconducted a preexamination search; and

(3) The applicant must file a requestfor expedited examination including:

(i) The fee set forth in § 1.17(t); and(ii) A statement that a preexamination

search was conducted. The statementmust also indicate the field of searchand include an information disclosurestatement in compliance with § 1.98.

(b) The Office will not examine anapplication that is not in condition forexamination (e.g., missing basic filingfee) even if the applicant files a requestfor expedited examination under thissection.




§ 1.163 Specification and arrangement ofapplication elements.

(a) The specification must contain asfull and complete a disclosure aspossible of the plant and thecharacteristics thereof that distinguishthe same over related known varieties,and its antecedents, and mustparticularly point out where and inwhat manner the variety of plant hasbeen asexually reproduced. For a newlyfound plant, the specification mustparticularly point out the location andcharacter of the area where the plantwas discovered.

(b) The elements of the plantapplication, if applicable, should appearin 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) Executed 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 statingthe name, citizenship, and residence ofthe applicant.



(4) Latin name of the genus andspecies 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 thissection, if applicable, should bepreceded by a section heading in uppercase, without underlining or bold type.


§ 1.173 Reissue specification, drawings,and amendments.

(a) Contents of a reissue application.An application for reissue must containthe entire specification, including theclaims, and the drawings of the patent.No new matter shall be introduced intothe application.

(1) Specification, including claims.The entire specification, including theclaims, of the patent for which reissueis requested must be furnished in theform of a copy of the printed patent, butwith only a single column of the printedpatent securely mounted, or otherwisereproduced in permanent form, on a

single page. If an amendment of thereissue application is to be included, itmust be made pursuant to paragraph (b)of this section.

(2) Drawings. Applicant must submita clean copy of each drawing sheet ofthe printed patent at the time the reissueapplication is filed. If such copycomplies with § 1.84, no furtherdrawings will be required. Where adrawing of the reissue application is toinclude any changes relative to thepatent being reissued, the changes to thedrawing must be made in accordancewith paragraph (b)(3) of this section.The Office will not transfer thedrawings from the patent file to thereissue application.

(b) Making amendments in a reissueapplication. An amendment in a reissueapplication is made either upon filing,by incorporating the changes physicallywithin the specification, including theclaims, using markings pursuant toparagraph (d) of this section, or by filingan amendment paper as a preliminaryamendment or during prosecutiondirecting that specified changes be madeto the application specification,including the claims, or to the drawings.

(1) Specification other than theclaims. Changes to the specification,other than to the claims, must be madeby submission of the entire text of anadded or rewritten paragraph, includingmarkings pursuant to paragraph (d) ofthis section, except that an entireparagraph may be deleted by astatement deleting the paragraphwithout presentation of the text of theparagraph. The precise point in thespecification must be identified whereany added or rewritten paragraph islocated.

(2) Claims. An amendment papermust include the entire text of eachclaim being changed by suchamendment paper and of each claimbeing added by such amendment paper.For any claim changed by theamendment paper, a parentheticalexpression ‘‘amended,’’ ‘‘twiceamended,’’ etc., should follow the claimnumber. Each changed patent claim andeach added claim must includemarkings pursuant to paragraph (d) ofthis section, except that a patent claimor added claim should be canceled bya statement canceling the claim withoutpresentation of the text of the claim.

(3) Drawings. Any change to thepatent drawings must be submitted as asketch on a separate paper showing theproposed changes in red for approval bythe examiner. Upon approval by theexaminer, new drawings in compliancewith § 1.84 including the approvedchanges must be filed. Amended figuresmust be identified as ‘‘Amended,’’ and

any added figure must be identified as‘‘New.’’ In the event that a figure iscanceled, the figure must be surroundedby brackets and identified as‘‘Canceled.’’

(c) Status of claims and support forclaim changes. Whenever there is anamendment to the claims pursuant toparagraph (b) of this section, there mustalso be supplied, on pages separate fromthe pages containing the changes, thestatus (i.e., pending or canceled), as ofthe date of the amendment, of all patentclaims and of all added claims, and anexplanation of the support in thedisclosure of the patent for the changesto the claims made by the amendmentpaper.

(d) Changes shown by markings. Anychanges relative to the patent beingreissued which are made to thespecification, including the claims,upon filing, or by an amendment paperin the reissue application, must includethe following markings:

(1) The matter to be omitted byreissue must be enclosed in brackets;and

(2) The matter to be added by reissuemust be underlined.

(e) Numbering of patent claimspreserved. Patent claims may not berenumbered. The numbering of anyclaims added in the reissue applicationmust follow the number of the highestnumbered patent claim.

(f) Amendment of disclosure may berequired. The disclosure must beamended, when required by the Office,to correct inaccuracies of descriptionand definition, and to secure substantialcorrespondence between the claims, theremainder of the specification, and thedrawings.

(g) Amendments made relative topatent. All amendments must be maderelative to the patent specification,including the claims, and drawings,which are in effect as of the date offiling of the reissue application.

§ 1.174 [Removed and Reserved]57. Section 1.174 is proposed to be

removed and reserved.58. Section 1.176 is proposed to be

revised to read as follows:

§ 1.176 Examination of reissue.(a) A reissue application will be

examined in the same manner as a non-reissue nonprovisional application, andwill be subject to all the requirements ofthe rules related to non-reissueapplications. Restriction betweensubject matter of the original patentclaims and previously unclaimedsubject matter may be required.

(b) The examiner will act onapplications for reissue in advance of



other nonprovisional applications. Anapplication for reissue, other than acontinued prosecution applicationunder § 1.53(d), will not be acted onsooner than two months after theannouncement of the filing of thereissue application in the OfficialGazette.


§ 1.177 Issuance of multiple reissuepatents.

(a) The Office may reissue a patent asmultiple reissue patents. If applicantfiles more than one application for thereissue of a single patent, each suchapplication must contain or be amendedto contain in the first sentence of thespecification a notice stating that morethan one reissue application has beenfiled and identifying each of the reissueapplications by relationship, applicationnumber and filing date. The Office maycorrect any reissue patent resulting froman application to which this paragraphapplies and not containing the requirednotice by certificate of correction under§ 1.322.

(b) If applicant files more than oneapplication for the reissue of a singlepatent, each claim of the patent beingreissued must be presented in each ofthe reissue applications as an amended,unamended, or canceled (shown inbrackets) claim, with each such claimbearing the same number as in thepatent being reissued. The same claimof the patent being reissued may not bepresented in its original unamendedform for examination in more than oneof such multiple reissue applications.The numbering of any added claims inany of the multiple reissue applicationsmust follow the number of the highestnumbered original patent claim.

(c) If any one of the several reissueapplications by itself fails to correct anerror in the original patent as requiredby 35 U.S.C. 251, but is otherwise incondition for allowance, the Office maysuspend action in the allowableapplication until all issues are resolvedas to at least one of the remainingreissue applications. The Office mayalso merge two or more of the multiplereissue applications into a single reissueapplication. No reissue applicationcontaining only unamended patentclaims and not correcting an error in theoriginal patent will be passed to issueby itself.


§ 1.178 Original patent.The application for a reissue should

be accompanied by an offer to surrenderthe original patent. The application

should also be accompanied by theoriginal patent, or if the original is lostor inaccessible, by a statement to thateffect. The application may be acceptedfor examination in the absence of theoriginal patent or the statement, but oneor the other must be supplied before theapplication is allowed. If a reissue isrefused, the original patent will bereturned to applicant upon request.

61. Section 1.193 is proposed to beamended by revising paragraph (b)(1) toread as follows:

§ 1.193 Examiner’s answer and reply brief.

* * * * *(b)(1) Appellant may file a reply brief

to an examiner’s answer or asupplemental examiner’s answer withintwo months from the date of suchexaminer’s answer or supplementalexaminer’s answer. See § 1.136(b) forextensions of time for filing a reply briefin a patent application and § 1.550(c) forextensions of time for filing a reply briefin a reexamination proceeding. Theprimary examiner must eitheracknowledge receipt and entry of thereply brief or withdraw the finalrejection and reopen prosecution torespond to the reply brief. Asupplemental examiner’s answer is notpermitted, unless the application hasbeen remanded by the Board of PatentAppeals and Interferences for suchpurpose.* * * * *


§ 1.303 Civil action under 35 U.S.C. 145,146, 306.

(a) Any applicant or any owner of apatent involved in a reexaminationproceeding dissatisfied with thedecision of the Board of Patent Appealsand Interferences, and any party to aninterference dissatisfied with thedecision of the Board of Patent Appealsand Interferences may, instead ofappealing to the U.S. Court of Appealsfor the Federal Circuit (§ 1.301), haveremedy by civil action under 35 U.S.C.145 or 146, as appropriate. Such civilaction must be commenced within thetime specified in § 1.304.* * * * *


§ 1.311 Notice of allowance.

* * * * *(b) An authorization to charge the

issue fee (§ 1.18) to a deposit accountmay be filed in an individualapplication only after mailing of thenotice of allowance.


§ 1.312 Amendments after allowance.(a) No amendment may be made as a

matter of right in an application afterthe mailing of the notice of allowance.Any amendment pursuant to thisparagraph filed before the payment ofthe issue fee may be entered on therecommendation of the primaryexaminer, approved by theCommissioner, without withdrawing theapplication from issue.

(b) Any amendment pursuant toparagraph (a) of this section filed afterthe date the issue fee is paid must beaccompanied by a petition under§ 1.313(c)(1) to withdraw theapplication from issue, an unequivocalstatement that one or more claims areunpatentable, and an explanation as tohow the amendment is necessary torender such claim or claims patentable.


§ 1.313 Withdrawal from issue.(a) Applications may be withdrawn

from issue for further action at theinitiative of the Office or upon petitionby the applicant. To request that theOffice withdraw an application fromissue, the applicant must file a petitionunder this section including the fee setforth in § 1.17(h) and a showing of goodand sufficient reasons why withdrawalof the application is necessary. If theOffice withdraws the application fromissue, the Office will issue a new noticeof allowance if the Office again allowsthe application.

(b) Once the issue fee has been paid,the Office will not withdraw theapplication from issue at its owninitiative 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 interference.(c) Once the issue fee has been paid,

the application will not be withdrawnfrom issue upon petition by theapplicant for any reason except:

(1) Unpatentability of one of moreclaims, which petition must beaccompanied by a statement of suchunpatentability and an amendment incompliance with § 1.312(b); or

(2) Express abandonment of theapplication. Such express abandonmentmay be in favor of a continuingapplication.

(d) A petition under this section willnot be effective to withdraw theapplication from issue unless it isactually received and granted by the



appropriate officials before the date ofissue. Withdrawal of an applicationfrom issue after payment of the issue feemay not be effective to avoidpublication of application information.


§ 1.314 Issuance of patent.If applicant timely pays the issue fee,

the Office will issue the patent inregular course unless the application iswithdrawn from issue (§ 1.313), or theOffice defers issuance of the patent. Torequest that the Office defer issuance ofa patent, applicant must file petitionunder this section including the fee setforth in § 1.17(h) and a showing of goodand sufficient reasons why it isnecessary to defer issuance of thepatent.


§ 1.322 Certificate of correction of Officemistake.

(a) The Office may issue a certificateof correction under the conditionsspecified in 35 U.S.C. 254 at the requestof the patentee or the patentee’sassignee or on its own initiative. If therequest relates to a patent involved in aninterference, the request must complywith the requirements of this sectionand be accompanied by a motion under§ 1.635. The Office will not issue sucha certificate on its own initiativewithout first notifying the patentee(including any assignee of record) at thecorrespondence address of record asspecified in § 1.33(a) and affording thepatentee an opportunity to be heard.* * * * *


§ 1.323 Certificate of correction ofapplicant’s mistake.

The Office may issue a certificate ofcorrection under the conditionsspecified in 35 U.S.C. 255 at the requestof the patentee or the patentee’sassignee, upon payment of the fee setforth in § 1.20(a). If the request relatesto a patent involved in an interference,the request must comply with therequirements of this section and beaccompanied by a motion under § 1.635.

69. Section 1.324 is proposed to beamended by revising its heading andparagraph (b)(1) and adding paragraph(c) to read as follows:

§ 1.324 Correction of inventorship inpatent, pursuant to 35 U.S.C. 256.* * * * *

(b) * * *(1) Where one or more persons are

being added, a statement from each

person who is being added as aninventor that the inventorship erroroccurred without any deceptiveintention on his or her part;* * * * *

(c) For correction of inventorship inan application see §§ 1.48 and 1.497,and in an interference see § 1.634.

70. Section 1.366 is proposed to beamended by revising paragraph (c) toread as follows:

§ 1.366 Submission of maintenance fees.* * * * *

(c) In submitting maintenance feesand any necessary surcharges,identification of the patents for whichmaintenance fees are being paid mustinclude the patent number, and theapplication number of the United Statesapplication for the patent on which themaintenance fee is being paid. If thepayment includes identification of onlythe patent number (i.e., does notidentify the application number of theUnited States application for the patenton which the maintenance fee is beingpaid), the Office may apply the paymentto the patent identified by patentnumber in the payment or may returnthe payment.* * * * *


§ 1.446 Refund of international applicationfiling and processing fees.

(a) Money paid for internationalapplication fees, where paid by actualmistake or in excess, such as a paymentnot required by law or Treaty and itRegulations, may be refunded. A merechange of purpose after the payment ofa fee will not entitle a party to a refundof such fee. The Office will not refundamounts of twenty-five dollars or lessunless a refund is specifically requested,and will not notify the payor of suchamounts. If the payor or partyrequesting a refund does not provide thebanking information necessary formaking refunds by electronic fundstransfer, the Office may use the bankinginformation provided on the paymentinstrument to make any refund byelectronic funds transfer.

(b) Any request for refund underparagraph (a) must be filed within twoyears from the date the fee was paid. Ifthe Office charges a deposit account byan amount other than an amountspecifically indicated in anauthorization under § 1.25(b), anyrequest for refund based upon suchcharge must be filed within two yearsfrom the date of the deposit accountstatement indicating such charge, andinclude a copy of that deposit account

statement. The time periods set forth inthis paragraph are not extendable.* * * * *

72. Section 1.497 is proposed to beamended by revising paragraph (b)(2)and adding paragraph (d) to read asfollows:

§ 1.497 Oath or declaration under 35U.S.C. 371(c)(4).

* * * * *(b) * * *(2) If the person making the oath or

declaration or any supplemental oath ordeclaration is not the inventor (§§ 1.42,1.43, or 1.47), the oath or declarationshall state the relationship of the personto the inventor, and, upon informationand belief, the facts which the inventorwould have been required to state. If theperson signing the oath or declaration isthe legal representative of a deceasedinventor, the oath or declaration shallalso state that the person is a legalrepresentative and the citizenship,residence and mailing address of thelegal representative.* * * * *

(d) If the oath or declaration filedpursuant to 35 U.S.C. 371(c)(4) and thissection names an inventive entitydifferent from the inventive entity setforth in the international stage, the oathor declaration must be accompanied by:

(1) A statement from each personbeing added as an inventor and fromeach person being deleted as aninventor that any error in inventorshipin the international stage occurredwithout deceptive intention on his orher part;


(3) If an assignment has been executedby any of the original named inventors,the written consent of the assignee (see§ 3.73(b)).

73. Section 1.510 is proposed to beamended by revising paragraph (b)(4) toread as follows:

§ 1.510 Request for reexamination.

* * * * *(b) * * *(4) The entire specification, including

the claims, of the patent for whichreexamination is requested, in the formof a copy of the printed patent, but withonly a single column of the printedpatent securely mounted, or otherwisereproduced in permanent form, on asingle sheet. A clean copy of eachdrawing sheet of the printed patentmust also be furnished. Additionally, acopy of any disclaimer, certificate ofcorrection, or reexamination certificateissued in the patent must be included.* * * * *



74. Section 1.530 is proposed to beamended by revising its heading andparagraph (d), and adding paragraphs (e)through (l) to read as follows:

§ 1.530 Statement; amendment by patentowner; inventorship change.* * * * *

(d) Making amendments in areexamination proceeding. A proposedamendment in a reexaminationproceeding is made by filing a paperdirecting that proposed specifiedchanges be made to the patentspecification, including the claims, or tothe drawings. An amendment paperdirecting that proposed specifiedchanges be made in a reexaminationproceeding may be submitted as anaccompaniment to a request filed by thepatent owner in accordance with§ 1.510(e), as part of a patent ownerstatement in accordance with paragraph(b) of this section, or, where permitted,during the conduct of the reexaminationproceeding pursuant to § 1.550(a).

(1) Specification other than theclaims. Changes to the specification,other than to the claims, must be madeby submission of the entire text of anadded or rewritten paragraph includingmarkings pursuant to paragraph (f) ofthis section, except that an entireparagraph may be deleted by astatement deleting the paragraph,without presentation of the text of theparagraph. The precise point in thespecification must be identified whereany added or rewritten paragraph islocated.

(2) Claims. An amendment papermust include the entire text of eachpatent claim which is being proposed tobe changed by such amendment paperand of each new claim being proposedto be added by such amendment paper.For any claim changed by theamendment paper, a parentheticalexpression ‘‘amended,’’ ‘‘twiceamended,’’ etc., should follow the claimnumber. Each patent claim proposed tobe changed and each proposed addedclaim must include markings pursuantto paragraph (f) of this section, exceptthat a patent claim or proposed addedclaim should be canceled by a statementcanceling the claim, withoutpresentation of the text of the claim.

(3) Drawings. Any change to thepatent drawings must be submitted as asketch on a separate paper showing theproposed changes in red for approval bythe examiner. Upon approval of thechanges by the examiner, only newsheets of drawings including thechanges and in compliance with § 1.84must be filed. Amended figures must beidentified as ‘‘Amended,’’ and anyadded figure must be identified as

‘‘New.’’ In the event a figure is canceled,the figure must be surrounded bybrackets and identified as ‘‘Canceled.’’

(e) Status of claims and support forclaim changes. Whenever there is anamendment to the claims pursuant toparagraph (d) of this section, there mustalso be supplied, on pages separate fromthe pages containing the changes, thestatus (i.e., pending or canceled), as ofthe date of the amendment, of all patentclaims and of all added claims, and anexplanation of the support in thedisclosure of the patent for the changesto the claims made by the amendmentpaper.

(f) Changes shown by markings. Anychanges relative to the patent beingreexamined which are made to thespecification, including the claims,must include the following markings:

(1) The matter to be omitted by thereexamination proceeding must beenclosed in brackets; and

(2) The matter to be added by thereexamination proceeding must beunderlined.

(g) Numbering of patent claimspreserved. Patent claims may not berenumbered. The numbering of anyclaims added in the reexaminationproceeding must follow the number ofthe highest numbered patent claim.

(h) Amendment of disclosure may berequired. The disclosure must beamended, when required by the Office,to correct inaccuracies of descriptionand definition, and to secure substantialcorrespondence between the claims, theremainder of the specification, and thedrawings.

(i) Amendments made relative topatent. All amendments must be maderelative to the patent specification,including the claims, and drawings,which are in effect as of the date offiling the request for reexamination.

(j) No enlargement of claim scope. Noamendment may enlarge the scope ofthe claims of the patent or introducenew matter. No amendment may beproposed for entry in an expired patent.Moreover, no amendment, other thanthe cancellation of claims, will beincorporated into the patent by acertificate issued after the expiration ofthe patent.

(k) Amendments not effective untilcertificate. Although the Office actionswill treat proposed amendments asthough they have been entered, theproposed amendments will not beeffective until the reexaminationcertificate is issued.

(l) Correction of inventorship inreexamination proceedings. (1) When itappears that the correct inventor orinventors were not named in a patentbeing reexamined through error without

deceptive intention on the part of theactual inventor or inventors, theCommissioner may, on petition of allthe parties and the assignees andsatisfactory proof of the facts andpayment of the fee set forth in § 1.20(b),or on order of a court before which suchmatter is called in question, include inthe reexamination certificate to beissued under § 1.570 an amendmentnaming only the actual inventor orinventors. The petition must besubmitted as part of the reexaminationproceeding, and must satisfy therequirements of § 1.324.

(2) Notwithstanding paragraph (l)(1)of this section, if a petition to correctinventorship satisfying the requirementsof § 1.324 is filed in a reexaminationproceeding, and the reexaminationproceeding is terminated other than ina reexamination certificate under§ 1.570, a certificate of correctionindicating the change of inventorshipstated in the petition will be issuedupon request by the patentee.

75. Section 1.550 is proposed to beamended by revising paragraphs (a)through (c) to read as follows:

§ 1.550 Conduct of reexaminationproceedings.

(a) All reexamination proceedings,including any appeals to the Board ofPatent Appeals and Interferences, willbe conducted with special dispatchwithin the Office. After issuance of thereexamination order and expiration ofthe time for submitting any responsesthereto, the examination will beconducted in accordance with §§ 1.104,1.105, 1.110–1.113, 1.115, and 1.116and will result in the issuance of areexamination certificate under § 1.570.

(b) The patent owner will be given atleast thirty days to respond to any Officeaction. Such response may includefurther statements in response to anyrejections and/or proposed amendmentsor new claims to place the patent in acondition where all claims, if amendedas proposed, would be patentable.

(c)(1) On or before the day on whichan action by the patent owner is due ina reexamination proceeding, the time fortaking action by a patent owner will beextended only for sufficient cause, andfor a reasonable time specified. Anyrequest for such extension must be filedon or before the day on which action bythe patent owner is due, but in no casewill the mere filing of a request effectany extension. See § 1.304(a) forextensions of time for filing a notice ofappeal to the U.S. Court of Appeals forthe Federal Circuit or for commencing acivil action.

(2) After the day on which an actionby the patent owner is due in a



reexamination proceeding, the time fortaking action by a patent owner will beextended only upon the granting of apetition for extension of time to acceptlate papers on the grounds thatsubmission of the papers wasunintentionally delayed. A petitionmust be:

(i) Accompanied by papers effectingthe action by the patent owner requiredto continue prosecution of thereexamination proceeding;

(ii) Accompanied by the petition feeas set forth in § 1.17(h);

(iii) Accompanied by a statement thatthe delay was unintentional. TheCommissioner may require additionalinformation where there is a questionwhether the delay was unintentional;and

(iv) Filed as a complete petitionwithin the full statutory time period forsubmission of the papers that wereunintentionally delayed.* * * * *


§ 1.666 Filing of interference settlementagreements.

* * * * *(b) If any party filing the agreement or

understanding under paragraph (a) ofthis section so requests, the copy will bekept separate from the file of theinterference, and made available only toGovernment agencies on writtenrequest, or to any person upon petitionaccompanied by the fee set forth in§ 1.17(h) and on a showing of goodcause.* * * * *

77. Section 1.720 is proposed to beamended by revising paragraphs (b) and(g) to read as follows:

§ 1.720 Conditions for extension of patentterm.

* * * * *(b) The term of the patent has never

been previously extended, except forextensions issued pursuant to § 1.701,§ 1.760, or § 1.790;* * * * *

(g) The term of the patent, includingany interim extension issued pursuantto § 1.790, has not expired before thesubmission of an application incompliance with § 1.741; and* * * * *


§ 1.730 Applicant for extension of patentterm; signature requirements.

(a) Any application for extension of apatent term must be submitted by theowner of record of the patent or its agent

and must comply with the requirementsof § 1.740.

(b) If the application is submitted bythe patent owner, the application mustbe signed either by:

(1) The patent owner in compliancewith § 3.73(b) of this chapter; or

(2) A registered practitioner on behalfof the patent owner.

(c) If the application is submitted onbehalf of the patent owner by an agentof the patent owner (e.g., a licensee ofthe patent owner), the application mustbe signed by a registered practitioner onbehalf of the agent. The Office mayrequire proof that the agent isauthorized to act on behalf of the patentowner.

(d) If the application is signed by aregistered practitioner, the Office mayrequire proof that the practitioner isauthorized to act on behalf of the patentowner or agent of the patent owner.

79. Section 1.740 is proposed to beamended by revising its heading, theintroductory text of paragraph (a), andparagraphs (a)(9), (a)(10), (a)(14), (a)(15),(b) and (c) to read as follows:

§ 1.740 Formal requirements forapplication for extension of patent term;correction of informalities.

(a) An application for extension ofpatent term must be made in writing tothe Commissioner. A formal applicationfor the extension of patent term mustinclude:* * * * *

(9) A statement that the patent claimsthe approved product or a method ofusing or manufacturing the approvedproduct, and a showing which lists eachapplicable patent claim anddemonstrates the manner in which atleast one such patent claim reads on:

(i) The approved product, if the listedclaims include any claim to theapproved product;

(ii) The method of using the approvedproduct, if the listed claims include anyclaim to the method of using theapproved product; and

(iii) The method of manufacturing theapproved product, if the listed claimsinclude any claim to the method ofmanufacturing the approved product;

(10) A statement beginning on a newpage, of the relevant dates andinformation pursuant to 35 U.S.C. 156(g)in order to enable the Secretary ofHealth and Human Services or theSecretary of Agriculture, as appropriate,to determine the applicable regulatoryreview period as follows:

(i) For a patent claiming a humandrug, antibiotic, or human biologicalproduct:

(A) The effective date of theinvestigational new drug (IND)application and the IND number;

(B) The date on which a new drugapplication (NDA) or a Product LicenseApplication (PLA) was initiallysubmitted and the NDA or PLA number;and

(C) The date on which the NDA wasapproved or the Product License issued;

(ii) For a patent claiming a newanimal drug:

(A) The date a major health orenvironmental effects test on the drugwas initiated, and any availablesubstantiation of that date, or the dateof an exemption under subsection (j) ofsection 512 of the Federal Food, Drug,and Cosmetic Act became effective forsuch animal drug;

(B) The date on which a new animaldrug application (NADA) was initiallysubmitted and the NADA number; and

(C) The date on which the NADA wasapproved;

(iii) For a patent claiming a veterinarybiological product:

(A) The date the authority to preparean experimental biological productunder the Virus-Serum-Toxin Actbecame effective;

(B) The date an application for alicense 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 theadditive was initiated and any availablesubstantiation of that date;

(B) The date on which a petition forproduct approval under the FederalFood, Drug and Cosmetic Act wasinitially submitted and the petitionnumber; and

(C) The date on which the FDApublished a Federal Register noticelisting the additive for use;

(v) For a patent claiming a medicaldevice:

(A) The effective date of theinvestigational device exemption (IDE)and the IDE number, if applicable, orthe date on which the applicant beganthe first clinical investigation involvingthe device if no IDE was submitted andany available substantiation of that date;

(B) The date on which the applicationfor product approval or notice ofcompletion of a product developmentprotocol under section 515 of theFederal Food, Drug and Cosmetic Actwas initially submitted and the numberof the application; and

(C) The date on which the applicationwas approved or the protocol declaredto be completed;* * * * *

(14) The prescribed fee for receivingand acting upon the application forextension (see § 1.20(j)); and



(15) The name, address, andtelephone number of the person towhom inquiries and correspondencerelating to the application for patentterm extension are to be directed.

(b) The application under this sectionmust be accompanied by two additionalcopies of such application.

(c) If an application for extension ofpatent term is informal under thissection, the Office will so notify theapplicant. The applicant has twomonths 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 underthe provisions of § 1.136.

80. Section 1.741 is proposed to beamended by revising its heading, theintroductory text of paragraph (a) andparagraphs (a)(5) and (b) to read asfollows:

§ 1.741 Complete application given a filingdate; petition procedure.

(a) The filing date of an applicationfor extension of a patent term is the dateon which a complete application isreceived in the Office or filed pursuantto the procedures set forth in § 1.8 or§ 1.10. A complete application mustinclude:* * * * *

(5) Sufficient information to enablethe Commissioner to determine undersubsections (a) and (b) of 35 U.S.C. 156the eligibility of a patent for extensionand the rights that will be derived fromthe extension and information to enablethe Commissioner and the Secretary ofHealth and Human Services or theSecretary of Agriculture to determinethe length of the regulatory reviewperiod; and* * * * *

(b) If an application for extension ofpatent term is incomplete under thissection, the Office will so notify theapplicant. If applicant requests reviewof a notice that an application isincomplete, or review of the filing dateaccorded an application under thissection, applicant must file a petitionpursuant to this paragraph accompaniedby the fee set forth in § 1.17(h) withintwo months of the mail date of thenotice that the application isincomplete, or the notice according thefiling date complained of. Unless thenotice indicates otherwise, this timeperiod may be extended under theprovisions of § 1.136.


§ 1.780 Certificate or order of extension ofpatent term.

If a determination is made pursuant to§ 1.750 that a patent is eligible forextension and that the term of the patentis to be extended, a certificate ofextension, under seal, or an ordergranting interim extension under 35U.S.C. 156(d)(5), will be issued to theapplicant for the extension of the patentterm. Such certificate or order will berecorded in the official file of the patentand will be considered as part of theoriginal patent. Notification of theissuance of the certificate or order ofextension will be published in theOfficial Gazette of the Patent andTrademark Office. Notification of theissuance of the order granting an interimextension under 35 U.S.C. 156(d)(5),including the identity of the productcurrently under regulatory review, willbe published in the Official Gazette ofthe Patent and Trademark Office and inthe Federal Register. No certificate of,or order granting, an extension will beissued if the term of the patent cannotbe extended, even though the patent isotherwise determined to be eligible forextension. In such situations, the finaldetermination made pursuant to § 1.750will indicate that no certificate or orderwill issue.

82. Section 1.809 is proposed to beamended by revising paragraphs (b)introductory text, (b)(1) and (c) to readas follows:

§ 1.809 Examination procedures.

* * * * *(b) The applicant for patent or patent

owner shall reply to a rejection underparagraph (a) of this section by—

(1) In the case of an applicant forpatent, making an acceptable original orreplacement or supplemental deposit orassuring the Office in writing that anacceptable deposit will be made, or, inthe case of a patent owner, requesting acertificate of correction of the patentwhich meets the terms of paragraphs (b)and (c) of § 1.805, or* * * * *

(c) If an application for patent isotherwise in condition for allowanceexcept for a needed deposit and theOffice has received a written assurancethat an acceptable deposit will be made,applicant will be notified and given aperiod of time within which the depositmust be made in order to avoidabandonment. This time period is notextendable under § 1.136(a) or (b) (see§ 1.136(c)).* * * * *

83. Section 1.821 is proposed to beamended by revising paragraphs (c), (e)and (f) to read as follows:

§ 1.821 Nucleotide and/or amino acidsequence disclosures in patentapplications.* * * * *

(c) Patent applications which containdisclosures of nucleotide and/or aminoacid sequences must contain suchnucleotide and/or amino acid sequencesdisclosure and associated information asa separate part of the disclosure usingthe symbols and format in accordancewith the requirements of §§ 1.822 and1.823. This disclosure is hereinafterreferred to as the ‘‘Sequence Listing.’’Each sequence disclosed must appearseparately in the ‘‘Sequence Listing.’’Each sequence set forth in the‘‘Sequence Listing’’ shall be assigned aseparate sequence identifier. Thesequence identifiers shall begin with 1and increase sequentially by integers. Ifno sequence is present for a sequenceidentifier, the code ‘‘000’’ shall be usedin place of the sequence. The responsefor the numeric identifier <160> (see§ 1.823(b)) shall include the totalnumber of SEQ ID NOs, whetherfollowed by a sequence or by the code‘‘000.’’ The ‘‘Sequence Listing’’ must besubmitted either on:

(1) Paper in compliance with § 1.823;or

(2) A Compact Disk-Read OnlyMemory (CD–ROM) or Compact Disk-Recordable (CD–R) in compliance with§ 1.823. Applicant may submit a secondcopy of such a CD–ROM or CD–R‘‘Sequence Listing’’ to satisfy therequirement for a ‘‘Sequence Listing’’ ina computer readable format pursuant toparagraph (e) of this section, providedthat the CD–ROM or CD–R ‘‘SequenceListing’’ meets the requirements of§ 1.824(b) and (c)(4).* * * * *

(e) In addition to the submission ofthe ‘‘Sequence Listing’’ referred to inparagraph (c) of this section, a copy ofthis ‘‘Sequence Listing’’ must also besubmitted in computer readable form inaccordance with the requirements of§ 1.824. The computer readable formsubmitted pursuant to this paragraphmust be a copy of the ‘‘SequenceListing’’ submitted pursuant toparagraph (c) of this section and will notnecessarily be retained as a part of thepatent application file. If the computerreadable form of a new application is tobe identical with the computer readableform of another application of theapplicant on file in the Patent andTrademark Office, reference may bemade to the other application andcomputer readable form in lieu of filinga duplicate computer readable form inthe new application if the computerreadable form in the other applicationwas compliant with all of the



requirements of this subpart. The newapplication shall be accompanied by aletter making such reference to the otherapplication and computer readableform, both of which shall be completelyidentified. In the new application,applicant must also request the use ofthe compliant computer readable form(CRF) ‘‘Sequence Listing’’ that is alreadyon file for the other application andmust state that the paper or CD–ROM orCD–R copy of the ‘‘Sequence Listing’’ inthe new application is identical to thecomputer readable (CRF) copy filed forthe other application.

(f) In addition to the paper or CD–ROM or CD–R copy required byparagraph (c) of this section and thecomputer readable form required byparagraph (e) of this section, a statementthat the content of the paper, CD–ROM,or CD–R submission under paragraph (c)of this section and the computerreadable (CRF) copy under paragraph (e)of this section are the same must besubmitted with the computer readableform (e.g., a statement that ‘‘theinformation recorded in computerreadable form is identical to the paper(or CD–ROM or CD–R) copy of thesequence listing submitted under§ 1.821(c)’’ submitted under § 1.821(c)).* * * * *

84. Section 1.823 is proposed to beamended by revising its heading andparagraph (a) to read as follows:

§ 1.823 Requirements for nucleotide and/or amino acid sequences as part of theapplication.

(a)(1) If the ‘‘Sequence Listing’’required by § 1.821(c) is submitted onpaper: The ‘‘Sequence Listing,’’ settingforth the nucleotide and/or amino acidsequence and associated information inaccordance with paragraph (b) of thissection, must begin on a new page andmust be titled ‘‘Sequence Listing.’’ The‘‘Sequence Listing’’ preferably should benumbered independently of thenumbering of the remainder of theapplication. Each page of the ‘‘SequenceListing’’ should contain no more than 66lines and each line should contain nomore than 72 characters. A fixed-widthfont should be used exclusivelythroughout the ‘‘Sequence Listing.’’

(2) If the ‘‘Sequence Listing’’ requiredby § 1.821(c) is submitted on a CD–ROMor CD–R: The ‘‘Sequence Listing’’ mustbe submitted as a text file in theAmerican Standard Code forInformation Interchange (ASCII) inaccordance with the standards for thatmedium set forth in 36 CFR 1228.188(c)and (d). No other format shall beallowed. The CD–ROM or CD–R‘‘Sequence Listing’’ must also beaccompanied by documentation on

paper that is adequate to identify,maintain, and interpret the electronic‘‘Sequence Listing.’’ A notation that a‘‘Sequence Listing’’ is submitted on aCD–ROM or CD–R must be placedconspicuously in the specification (see§ 1.77(b)(11)). The CD–ROM or CD–R‘‘Sequence Listing’’ also must be labeledwith the following information:

(i) The name of each inventor (ifknown);

(ii) The title of the invention;(iii) The sequence identifiers of the

‘‘Sequence Listings’’ on that CD–ROMor CD–R; and

(iv) The docket number used by theperson filing the application to identifythe application (if applicable).* * * * *

84a. Section 1.824 is proposed to beamended by revising paragraph (c)(4) toread as follows:

§ 1.824 Form and format for nucleotideand/or amino acid sequence submissions incomputer readable form.

* * * * *(c) * * *(4) CD–ROM or CD–R: Format ISO

9660 or High Sierra Format.* * * * *


§ 1.825 Amendments to or replacement ofsequence listing and computer readablecopy thereof.

(a) Any amendment to the paper copyof the ‘‘Sequence Listing’’ submittedpursuant to § 1.821 must be made bysubmission of substitute sheets. Anyamendment to the CD–ROM or CD–Rcopy of the ‘‘Sequence Listing’’submitted pursuant to § 1.821 must bemade by submission of a new CD–ROMor CD–R containing a substitute‘‘Sequence Listing.’’ Amendments mustbe accompanied by a statement thatindicates support for the amendment inthe application-as-filed, and a statementthat the substitute sheets or new CD–ROM or CD–R includes no new matter.

(b) Any amendment to the paper, CD–ROM, or CD–R copy of the ‘‘SequenceListing’’ pursuant to paragraph (a) ofthis section must be accompanied by asubstitute copy of the computerreadable form of the ‘‘Sequence Listing’’required pursuant to § 1.821(e),including all previously submitted datawith the amendment incorporatedtherein, and accompanied by astatement that the computer readableform copy is the same as the substitutepaper or new CD–ROM or CD–R copy ofthe ‘‘Sequence Listing.’’* * * * *

PART 3—ASSIGNMENT, RECORDINGAND RIGHTS OF ASSIGNEE

86. The authority citation for 37 CFRpart 3 continues to read as follows:

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


§ 3.27 Mailing address for submittingdocuments to be recorded.

Documents and cover sheets to berecorded should be addressed to theCommissioner of Patents andTrademarks, Box Assignment,Washington, D.C. 20231, unless they arefiled together with new applications.


§ 3.71 Prosecution by assignee.(a) Patents—Conducting of

prosecution. One or more assignees asdefined in paragraph (b) of this sectionmay, after becoming of record pursuantto paragraph (c) of this section, conductprosecution of a national patentapplication or a reexaminationproceeding to the exclusion of either theinventive entity, or the assignee(s)previously entitled to conductprosecution.

(b) Patents—Assignee(s) who canprosecute. The assignee(s) who mayconduct either the prosecution of anational application for patent or areexamination proceeding are:

(1) A single assignee. An assignee ofthe entire right, title and interest in theapplication or patent being reexaminedwho is of record, or

(2) Partial assignee(s) together or withinventor(s). All partial assignees, or allpartial assignees and inventors whohave not assigned their right, title andinterest in the application or patentbeing reexamined, who together ownthe entire right, title and interest in theapplication or patent being reexamined.A partial assignee is any assignee ofrecord having less than the entire right,title and interest in the application orpatent being reexamined.

(c) Patents—Becoming of record. Anassignee becomes of record either in anational patent application or areexamination proceeding by filing astatement in compliance with § 3.73(b).

(d) Trademarks. The assignee of atrademark application or registrationmay prosecute a trademark application;submit documents to maintain atrademark registration; or file papersagainst a third party in reliance on theassignee’s trademark application orregistration, to the exclusion of theoriginal applicant or previous assignee.The assignee must establish ownershipin compliance with § 3.73(b).




§ 3.73 Establishing right of assignee totake action.

(a) The inventor is presumed to be theowner of a patent application, and anypatent that may issue therefrom, unlessthere is an assignment. The originalapplicant is presumed to be the ownerof a trademark application orregistration, unless there is anassignment.

(b)(1) In order to request or take actionin a patent or trademark matter, theassignee must establish its ownership ofthe patent or trademark property to thesatisfaction of the Commissioner. Theestablishment of ownership by theassignee may be combined with thepaper that requests or takes the action.Ownership is established by submittingto the Office a signed statementidentifying the assignee, accompaniedby either:

(i) Documentary evidence of a chainof title from the original owner to theassignee (e.g., copy of an executedassignment). The documents submittedto establish ownership may be requiredto be recorded pursuant to § 3.11 in theassignment records of the Office as acondition to permitting the assignee totake action in a matter pending beforethe Office; or

(ii) A statement specifying wheredocumentary evidence of a chain of titleis recorded in the assignment records ofthe Office (e.g., reel and frame number).

(2) The submission establishingownership must show that the partysigning the submission is a partyauthorized to act on behalf of theassignee by:

(i) Including a statement that the partysigning the submission is authorized toact on behalf of the assignee; or

(ii) Being signed by a person havingapparent authority to sign on behalf ofthe assignee, e.g., an officer of theassignee.

(c) For patent matters only:(1) Establishment of ownership by the

assignee must be submitted prior to, orat the same time as, the paper requestingor taking action is submitted.

(2) If the submission under thissection is by an assignee of less than theentire right, title and interest, suchassignee must indicate the extent (bypercentage) of its ownership interest orthe Office may refuse to accept thesubmission.


§ 3.81 Issue of patent to assignee.For a patent application, if an

assignment of the entire right, title, and

interest is recorded before the issue feeis paid, the patent may issue in thename of the assignee. If the assigneeholds an undivided part interest, thepatent may issue jointly to the inventorand the assignee. If the patent is to issuesolely or jointly to that assignee, thename of the assignee must be providedat the time the issue fee is paid.

PART 5—SECRECY OF CERTAININVENTIONS AND LICENSES TOEXPORT AND FILE APPLICATIONS INFOREIGN COUNTRIES

91. The authority citation for 37 CFRpart 5 would continue to read asfollows:

Authority: 35 U.S.C. 6, 41, 181–188, asamended by the Patent Law Foreign FilingAmendments Act of 1988, Pub. L. 100–418,102 Stat. 1567; the Arms Export Control Act,as amended, 22 U.S.C. 2751 et seq.; theAtomic Energy Act of 1954, as amended, 42U.S.C. 2011 et seq.; and the Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 3201 etseq.; and the delegations in the regulationsunder these Acts to the Commissioner (15CFR 370.10(j), 22 CFR 125.04, and 10 CFR810.7).


§ 5.1 Applications and correspondenceinvolving national security.

(a) All correspondence in connectionwith this part, including petitions,should be addressed to ‘‘AssistantCommissioner for Patents (AttentionLicensing and Review), Washington,D.C. 20231.’’

(b) Application as used in this partincludes provisional applications filedunder 35 U.S.C. 111(b) (§ 1.9(a)(2) ofthis chapter), nonprovisionalapplications filed under 35 U.S.C.111(a) or entering the national stagefrom an international application aftercompliance with 35 U.S.C. 371(§ 1.9(a)(3)), or internationalapplications filed under the PatentCooperation Treaty prior to entering thenational stage of processing (§ 1.9(b)).

(c) Patent applications and documentsrelating thereto that are nationalsecurity classified (see § 1.9(i) of thischapter) and contain authorizednational security markings (e.g.,‘‘Confidential,’’ ‘‘Secret’’ or ‘‘TopSecret’’) are accepted by the Office.National security classified documentsfiled in the Office must be either hand-carried to Licensing and Review ormailed to the Office in compliance withparagraph (a) of this section.

(d) The applicant in a nationalsecurity classified patent applicationmust obtain a secrecy order pursuant to§ 5.2(a). If a national security classifiedpatent application is filed without a

notification pursuant to § 5.2(a), theOffice will set a time period withinwhich either the application must bedeclassified, or the application must beplaced under a secrecy order pursuantto § 5.2(a), or the applicant must submitevidence of a good faith effort to obtaina secrecy order pursuant to § 5.2(a) fromthe relevant department or agency inorder to prevent abandonment of theapplication. If evidence of a good faitheffort to obtain a secrecy order pursuantto § 5.2(a) from the relevant departmentor agency is submitted by the applicantwithin the time period set by the Office,but the application has not beendeclassified or placed under a secrecyorder pursuant to § 5.2(a), the Officewill again set a time period withinwhich either the application must bedeclassified, or the application must beplaced under a secrecy order pursuantto § 5.2(a), or the applicant must submitevidence of a good faith effort to againobtain a secrecy order pursuant to§ 5.2(a) from the relevant department oragency in order to prevent abandonmentof the application.

(e) A national security classifiedpatent application will not be allowedpursuant to § 1.311 of this chapter untilthe application is declassified and anysecrecy order pursuant to § 5.2(a) hasbeen rescinded.

(f) Applications on inventions madeoutside the United States and oninventions in which a U.S. Governmentdefense agency has a property interestwill not be made available to defenseagencies.

93. Section 5.2 is proposed to beamended by adding a new paragraph (c)to read as follows:

§ 5.2 Secrecy order.

* * * * *(c) An application disclosing any

significant part of the subject matter ofan application under a secrecy orderpursuant to paragraph (a) of this sectionalso falls within the scope of suchsecrecy order. Any such application thatis pending before the Office must bepromptly brought to the attention ofLicensing and Review, unless suchapplication is itself under a secrecyorder pursuant to paragraph (a) of thissection. Any subsequently filedapplication containing any significantpart of the subject matter of anapplication under a secrecy orderpursuant to paragraph (a) of this sectionmust either be hand-carried to Licensingand Review or mailed to the Office incompliance with § 5.1(a).

94. Section 5.12 is amended byrevising paragraph (b) to read as follows:



§ 5.12 Petition for license.* * * * *

(b) A petition for license must includethe fee set forth in § 1.17(h), thepetitioner’s address, and fullinstructions for delivery of therequested license when it is to bedelivered to other than the petitioner.The petition should be presented inletter form.

PART 10—REPRESENTATION OFOTHERS BEFORE THE PATENT ANDTRADEMARK OFFICE

95. The authority citation for 37 CFRpart 10 would continue to read asfollows:

Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35U.S.C. 6, 31, 32, 41.

96. Section 10.23 is proposed to beamended by revising paragraph (c)(11)to read as follows:

§ 10.23 Misconduct.

* * * * *(c) * * *(11) Except as permitted by § 1.52(c)

of this chapter, knowingly filing orcausing to be filed an applicationcontaining any material alteration madein the application papers after thesigning of the accompanying oath ordeclaration without identifying the

alteration at the time of filing theapplication papers.* * * * *

Dated: September 17, 1999.

Q. Todd Dickinson,Acting Assistant Secretary of Commerce andActing Commissioner of Patents andTrademarks.[FR Doc. 99–24922 Filed 10–1–99; 8:45 am]

BILLING CODE 3510–16–P
