[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 2000 Edition]
[From the U.S. Government Printing Office]



[[Page i]]

          

                    37

                         Revised as of July 1, 2000

Patents, Trademarks, and Copyrights





          Containing a Codification of documents of general 
          applicability and future effect
          As of July 1, 2000
          With Ancillaries
          Published by
          Office of the Federal Register
          National Archives and Records
          Administration

As a Special Edition of the Federal Register



[[Page ii]]

                                      




                     U.S. GOVERNMENT PRINTING OFFICE
                            WASHINGTON : 2000



               For sale by U.S. Government Printing Office
 Superintendent of Documents, Mail Stop: SSOP, Washington, DC 20402-9328



[[Page iii]]




                            Table of Contents



                                                                    Page
  Explanation.................................................       v

  Title 37:
          Chapter I--Patent and Trademark Office, Department 
          of Commerce                                                3
          Chapter II--Copyright Office, Library of Congress        343
          Chapter IV--Assistant Secretary for Technology 
          Policy, Department of Commerce                           535
          Chapter V--Under Secretary for Technology, 
          Department of Commerce                                   501
  Finding Aids:
      Material Approved for Incorporation by Reference........     567
      Table of CFR Titles and Chapters........................     569
      Alphabetical List of Agencies Appearing in the CFR......     587
      List of CFR Sections Affected...........................     597



[[Page iv]]


      


                     ----------------------------

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

                     ----------------------------

[[Page v]]



                               EXPLANATION

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

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

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

LEGAL STATUS

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

HOW TO USE THE CODE OF FEDERAL REGULATIONS

    The Code of Federal Regulations is kept up to date by the individual 
issues of the Federal Register. These two publications must be used 
together to determine the latest version of any given rule.
    To determine whether a Code volume has been amended since its 
revision date (in this case, July 1, 2000), consult the ``List of CFR 
Sections Affected (LSA),'' which is issued monthly, and the ``Cumulative 
List of Parts Affected,'' which appears in the Reader Aids section of 
the daily Federal Register. These two lists will identify the Federal 
Register page number of the latest amendment of any given rule.

EFFECTIVE AND EXPIRATION DATES

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

OMB CONTROL NUMBERS

    The Paperwork Reduction Act of 1980 (Pub. L. 96-511) requires 
Federal agencies to display an OMB control number with their information 
collection request.

[[Page vi]]

Many agencies have begun publishing numerous OMB control numbers as 
amendments to existing regulations in the CFR. These OMB numbers are 
placed as close as possible to the applicable recordkeeping or reporting 
requirements.

OBSOLETE PROVISIONS

    Provisions that become obsolete before the revision date stated on 
the cover of each volume are not carried. Code users may find the text 
of provisions in effect on a given date in the past by using the 
appropriate numerical list of sections affected. For the period before 
January 1, 1986, consult either the List of CFR Sections Affected, 1949-
1963, 1964-1972, or 1973-1985, published in seven separate volumes. For 
the period beginning January 1, 1986, a ``List of CFR Sections 
Affected'' is published at the end of each CFR volume.

INCORPORATION BY REFERENCE

    What is incorporation by reference? Incorporation by reference was 
established by statute and allows Federal agencies to meet the 
requirement to publish regulations in the Federal Register by referring 
to materials already published elsewhere. For an incorporation to be 
valid, the Director of the Federal Register must approve it. The legal 
effect of incorporation by reference is that the material is treated as 
if it were published in full in the Federal Register (5 U.S.C. 552(a)). 
This material, like any other properly issued regulation, has the force 
of law.
    What is a proper incorporation by reference? The Director of the 
Federal Register will approve an incorporation by reference only when 
the requirements of 1 CFR part 51 are met. Some of the elements on which 
approval is based are:
    (a) The incorporation will substantially reduce the volume of 
material published in the Federal Register.
    (b) The matter incorporated is in fact available to the extent 
necessary to afford fairness and uniformity in the administrative 
process.
    (c) The incorporating document is drafted and submitted for 
publication in accordance with 1 CFR part 51.
    Properly approved incorporations by reference in this volume are 
listed in the Finding Aids at the end of this volume.
    What if the material incorporated by reference cannot be found? If 
you have any problem locating or obtaining a copy of material listed in 
the Finding Aids of this volume as an approved incorporation by 
reference, please contact the agency that issued the regulation 
containing that incorporation. If, after contacting the agency, you find 
the material is not available, please notify the Director of the Federal 
Register, National Archives and Records Administration, Washington DC 
20408, or call (202) 523-4534.

CFR INDEXES AND TABULAR GUIDES

    A subject index to the Code of Federal Regulations is contained in a 
separate volume, revised annually as of January 1, entitled CFR Index 
and Finding Aids. This volume contains the Parallel Table of Statutory 
Authorities and Agency Rules (Table I). A list of CFR titles, chapters, 
and parts and an alphabetical list of agencies publishing in the CFR are 
also included in this volume.
    An index to the text of ``Title 3--The President'' is carried within 
that volume.
    The Federal Register Index is issued monthly in cumulative form. 
This index is based on a consolidation of the ``Contents'' entries in 
the daily Federal Register.
    A List of CFR Sections Affected (LSA) is published monthly, keyed to 
the revision dates of the 50 CFR titles.

[[Page vii]]


REPUBLICATION OF MATERIAL

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

INQUIRIES

    For a legal interpretation or explanation of any regulation in this 
volume, contact the issuing agency. The issuing agency's name appears at 
the top of odd-numbered pages.
    For inquiries concerning CFR reference assistance, call 202-523-5227 
or write to the Director, Office of the Federal Register, National 
Archives and Records Administration, Washington, DC 20408 or e-mail 
info@fedreg.nara.gov.

SALES

    The Government Printing Office (GPO) processes all sales and 
distribution of the CFR. For payment by credit card, call 202-512-1800, 
M-F, 8 a.m. to 4 p.m. e.s.t. or fax your order to 202-512-2233, 24 hours 
a day. For payment by check, write to the Superintendent of Documents, 
Attn: New Orders, P.O. Box 371954, Pittsburgh, PA 15250-7954. For GPO 
Customer Service call 202-512-1803.

ELECTRONIC SERVICES

    The full text of the Code of Federal Regulations, The United States 
Government Manual, the Federal Register, Public Laws, Public Papers, 
Weekly Compilation of Presidential Documents and the Privacy Act 
Compilation are available in electronic format at www.access.gpo.gov/
nara (``GPO Access''). For more information, contact Electronic 
Information Dissemination Services, U.S. Government Printing Office. 
Phone 202-512-1530, or 888-293-6498 (toll-free). E-mail, 
gpoaccess@gpo.gov.
    The Office of the Federal Register also offers a free service on the 
National Archives and Records Administration's (NARA) World Wide Web 
site for public law numbers, Federal Register finding aids, and related 
information. Connect to NARA's web site at www.nara.gov/fedreg. The NARA 
site also contains links to GPO Access.

                              Raymond A. Mosley,
                                    Director,
                          Office of the Federal Register.

July 1, 2000.



[[Page ix]]



                               THIS TITLE

    Title 37--Patents, Trademarks and Copyrights is composed of one 
volume. The contents of this volume represent all current regulations 
codified under this title of the CFR as of July 1, 2000.

    In this revision, the parts in chapter I, subchapter A are regrouped 
according to subject matter. All parts pertaining to patents--parts 1 
and 5--appear sequentially. All parts pertaining to trademarks--parts 2 
and 6--follow, also in sequence. Part 3 which pertains to both patents 
and trademarks follows part 1. Appropriate notes are inserted in the 
text to guide the user.

    For this volume, Melanie L. Marcec was Chief Editor. The Code of 
Federal Regulations publication program is under the direction of 
Frances D. McDonald, assisted by Alomha S. Morris.

[[Page x]]





[[Page 1]]



                     TITLE 37--PATENTS, TRADEMARKS,
                             AND COPYRIGHTS




  --------------------------------------------------------------------
                                                                    Part

chapter i--Patent and Trademark Office, Department of 
  Commerce..................................................           1

chapter ii--Copyright Office, Library of Congress...........         201

chapter iv--Assistant Secretary for Technology Policy, 
  Department of Commerce....................................         401

chapter v--Under Secretary for Technology, Department of 
  Commerce..................................................         501

[[Page 3]]



                 CHAPTER I--PATENT AND TRADEMARK OFFICE,
                         DEPARTMENT OF COMMERCE




  --------------------------------------------------------------------


  Editorial Note: Chapter I--Patent and Trademark Office, Department of 
Commerce, Subchapter A--General, contains patent and trademark 
regulations. Subchapter A has been restructured to allow parts 
pertaining to patent regulations and trademark regulations to be grouped 
separately.

                          SUBCHAPTER A--GENERAL

                                 PATENTS

Part                                                                Page
1               Rules of practice in patent cases...........           5
3               Assignment, recording and rights of assignee         182
4               Complaints regarding invention promoters....         187
5               Secrecy of certain inventions and licenses 
                    to export and file applications in 
                    foreign countries.......................         188
7               [Reserved]

                Index I--Rules relating to patents..........         197

                               TRADEMARKS

2               Rules of practice in trademark cases........         221
6               Classification of goods and services under 
                    the Trademark Act.......................         279
7               [Reserved]

                Index II--Rules relating to trademarks......         283

             PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

10              Representation of others before the Patent 
                    and Trademark Office....................         303
15-15a          [Reserved]

                Index III--Rules relating to practice before 
                    the Patent and Trademark Office.........         333
            SUBCHAPTER B--GOVERNMENT INVENTIONS JURISDICTION
100-102         [Reserved]

             SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150             Requests for Presidential proclamations 
                    pursuant to 17 U.S.C. 902(a)(2).........         340


[[Page 5]]





                          SUBCHAPTER A--GENERAL


                                 PATENTS



PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents




                      Subpart A--General Provisions

                 General Information and Correspondence

Sec.
1.1  Addresses for correspondence with the Patent and Trademark Office.
1.2  Business to be transacted in writing.
1.3  Business to be conducted with decorum and courtesy.
1.4  Nature of correspondence and signature requirements.
1.5  Identification of application, patent or registration.
1.6  Receipt of correspondence.
1.7  Times for taking action; Expiration on Saturday, Sunday or Federal 
          holiday.
1.8  Certificate of mailing or transmission.
1.9  Definitions.
1.10  Filing of correspondence by ``Express Mail.''

          Records and Files of the Patent and Trademark Office

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

                        Fees and Payment of Money

1.16  National application filing fees.
1.17  Patent application processing fees.
1.18  Patent issue fees.
1.19  Document supply fees.
1.20  Post issuance fees.
1.21  Miscellaneous fees and charges.
1.22  Fees payable in advance.
1.23  Methods of payment.
1.24  Coupons.
1.25  Deposit accounts.
1.26  Refunds.
1.27  Statement of status as small entity.
1.28  Effect on fees of failure to establish status, or change status, 
          as a small entity.

                Subpart B--National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent

1.31  Applicants may be represented by a registered attorney or agent.
1.32  [Reserved]
1.33  Correspondence respecting patent applications, reexamination 
          proceedings, and other proceedings.
1.34  Recognition for representation.
1.36  Revocation of power of attorney or authorization; withdrawal of 
          attorney or agent.

                       Who May Apply for a Patent

1.41  Applicant for patent.
1.42  When the inventor is dead.
1.43  When the inventor is insane or legally incapacitated.
1.44  Proof of authority.
1.45  Joint inventors.
1.46  Assigned inventions and patents.
1.47  Filing when an inventor refuses to sign or cannot be reached.
1.48  Correction of inventorship in a patent application, other than a 
          reissue application.

                             The Application

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

                           Oath or Declaration

1.63  Oath or declaration.
1.64  Person making oath or declaration.
1.66  Officers authorized to administer oaths.
1.67  Supplemental oath or declaration.
1.68  Declaration in lieu of oath.
1.69  Foreign language oaths and declarations.
1.70  [Reserved]

                              Specification

1.71  Detailed description and specification of the invention.
1.72  Title and abstract.
1.73  Summary of the invention.
1.74  Reference to drawings.
1.75  Claim(s).
1.77  Arrangement of application elements.
1.78  Claiming benefit of earlier filing date and cross-references to 
          other applications.
1.79  Reservation clauses not permitted.

[[Page 6]]

                              The Drawings

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

                       Models, Exhibits, Specimens

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

                    Information Disclosure Statement

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

                       Examination of Applications

1.101  [Reserved]
1.102  Advancement of examination.
1.103  Suspension of action.
1.104  Nature of examination.
1.105-1.109  [Reserved]
1.110  Inventorship and date of invention of the subject matter of 
          individual claims.

              Action by Applicant and Further Consideration

1.111  Reply by applicant or patent owner.
1.112  Reconsideration before final action.
1.113  Final rejection or action.
1.114  Request for continued examination.

                               Amendments

1.115  [Reserved]
1.116  Amendments after final action or appeal.
1.117-1.119  [Reserved]
1.121  Manner of making amendments.
1.122-1.124  [Reserved]
1.125  Substitute specification.
1.126  Numbering of claims.
1.127  Petition from refusal to admit amendment.

                         Transitional Provisions

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

                    Affidavits Overcoming Rejections

1.130  Affidavit or declaration to disqualify commonly owned patent as 
          prior art.
1.131  Affidavit or declaration of prior invention to overcome cited 
          patent or publication.
1.132  Affidavits or declarations traversing grounds of rejection.

                               Interviews

1.133  Interviews.

         Time for Reply by Applicant; Abandonment of Application

1.134  Time period for reply to an Office action.
1.135  Abandonment for failure to reply within time period.
1.136  Extensions of time.
1.137  Revival of abandoned application or lapsed patent.
1.138  Express abandonment.
1.139  [Reserved]

          Joinder of Inventions in One Application; Restriction

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

                             Design Patents

1.151  Rules applicable.
1.152  Design drawings.
1.153  Title, description and claim, oath or declaration.
1.154  Arrangement of application elements.
1.155  Issue of design patents.

                              Plant Patents

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

                                Reissues

1.171  Application for reissue.
1.172  Applicants, assignees.
1.173  Specification.
1.174  Drawings.
1.175  Reissue oath or declaration.
1.176  Examination of reissue.
1.177  Reissue in divisions.
1.178  Original patent.
1.179  Notice of reissue application.

                Petitions and Action by the Commissioner

1.181  Petition to the Commissioner.
1.182  Questions not specifically provided for.
1.183  Suspension of rules.
1.184  [Reserved]

[[Page 7]]

         Appeal to the Board of Patent Appeals and Interferences

1.191  Appeal to Board of Patent Appeals and Interferences.
1.192  Appellant's brief.
1.193  Examiner's answer and reply brief.
1.194  Oral hearing.
1.195  Affidavits or declarations after appeal.
1.196  Decision by the Board of Patent Appeals and Interferences.
1.197  Action following decision.
1.198  Reopening after decision.

                        Miscellaneous Provisions

1.248  Service of papers; manner of service; proof of service in cases 
          other than interferences.

                   Protests and Public Use Proceedings

1.291  Protests by the public against pending applications.
1.292  Public use proceedings.
1.293  Statutory invention registration.
1.294  Examination of request for publication of a statutory invention 
          registration and patent application to which the request is 
          directed.
1.295  Review of decision finally refusing to publish a statutory 
          invention registration.
1.296  Withdrawal of request for publication of statutory invention 
          registration.
1.297  Publication of statutory invention registration.

        Review of Patent and Trademark Office Decisions by Court

1.301  Appeal to U.S. Court of Appeals for the Federal Circuit.
1.302  Notice of appeal.
1.303  Civil action under 35 U.S.C. 145, 146, 306.
1.304  Time for appeal or civil action.

                      Allowance and Issue of Patent

1.311  Notice of allowance.
1.312  Amendments after allowance.
1.313  Withdrawal from issue.
1.314  Issuance of patent.
1.315  Delivery of patent.
1.316  Application abandoned for failure to pay issue fee.
1.317  Lapsed patents; delayed payment of balance of issue fee.
1.318  [Reserved]

                               Disclaimer

1.321  Statutory disclaimers, including terminal disclaimers.

                     Correction of Errors in Patent

1.322  Certificate of correction of Office mistake.
1.323  Certificate of correction of applicant's mistake.
1.324  Correction of inventorship in patent.
1.325  Other mistakes not corrected.

                           Arbitration Awards

1.331-1.334  [Reserved]
1.335  Filing of notice of arbitration awards.

                           Amendment of Rules

1.351  Amendments to rules will be published.
1.352  [Reserved]

                            Maintenance Fees

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

             Subpart C--International Processing Provisions

                           General Information

1.401  Definitions of terms under the Patent Cooperation Treaty.
1.412  The United States Receiving Office.
1.413  The United States International Searching Authority.
1.414  The United States Patent and Trademark Ofice as a Designated 
          Office or Elected Office.
1.415  The International Bureau.
1.416  The United States International Preliminary Examining Authority.
1.419  Display of currently valid control number under the Paperwork 
          Reduction Act.

                Who May File an International Application

1.421  Applicant for international application.
1.422  When the inventor is dead.
1.423  When the inventor is insane or legally incapacitated.
1.424  Joint inventors.
1.425  Filing by other than inventor.

                      The International Application

1.431  International application requirements.
1.432  Designation of States and payment of designation and confirmation 
          fees.
1.433  Physical requirements of international application.
1.434  The request.
1.435  The description.
1.436  The claims.
1.437  The drawings.

[[Page 8]]

1.438  The abstract.

                                  Fees

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

                                Priority

1.451  The priority claim and priority document in an international 
          application.

                             Representation

1.455  Representation in international applications.

                       Transmittal of Record Copy

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

                                 Timing

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

                               Amendments

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

                           Unity of Invention

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

                  International Preliminary Examination

1.480  Demand for international preliminary examination.
1.481  Payment of international preliminary examination fees.
1.482  International preliminary examination fees.
1.484  Conduct of international preliminary examination.
1.485  Amendments by applicant during international preliminary 
          examination.
1.488  Determination of unity of invention before the International 
          Preliminary Examining Authority.
1.489  Protest to lack of unity of invention before the International 
          Preliminary Examining Authority.

                             National Stage

1.491  Entry into the national stage.
1.492  National stage fees.
1.494  Entering the national stage in the United States of America as a 
          Designated Office.
1.495  Entering the national stage in the United States of America as an 
          Elected Office.
1.496  Examination of international applications in the national stage.
1.497  Oath or declaration under 35 U.S.C. 371(c)(4).
1.499  Unity of invention during the national stage.

                   Subpart D--Reexamination of Patents

                          Citation of Prior Art

1.501  Citation of prior art in patent files.

                        Request for Reexamination

1.510  Request for reexamination.
1.515  Determination of the request for reexamination.
1.520  Reexamination at the initiative of the Commissioner.

                              Reexamination

1.525  Order to reexamine.
1.530  Statement; amendment by patent owner.
1.535  Reply by requester.
1.540  Consideration of responses.
1.550  Conduct of reexamination proceedings.
1.552  Scope of reexamination in reexamination proceedings.
1.555  Information material to patentability in reexamination 
          proceedings.
1.560  Interviews in reexamination proceedings.
1.565  Concurrent office proceedings.

                               Certificate

1.570  Issuance of reexamination certificate after reexamination 
          proceedings.

                        Subpart E--Interferences

1.601  Scope of rules, definitions.
1.602  Interest in applications and patents involved in an interference.
1.603  Interference between applications; subject matter of the 
          interference.
1.604  Request for interference between applications by an applicant.
1.605  Suggestion of claim to applicant by examiner.
1.606  Interference between an application and a patent; subject matter 
          of the interference.
1.607  Request by applicant for interference with patent.
1.608  Interference between an application and a patent; prima facie 
          showing by applicant.
1.609  Preparation of interference papers by examiner.

[[Page 9]]

1.610  Assignment of interference to administrative patent judge, time 
          period for completing interference.
1.611  Declaration of interference.
1.612  Access to applications.
1.613  Lead attorney, same attorney representing different parties in an 
          interference, withdrawal of attorney or agent.
1.614  Jurisdiction over interference.
1.615  Suspension of ex parte prosecution.
1.616  Sanctions for failure to comply with rules or order or for taking 
          and maintaining a frivolous position.
1.617  Summary judgment against applicant.
1.618  Return of unauthorized papers.
1.621  Preliminary statement, time for filing, notice of filing.
1.622  Preliminary statement, who made invention, where invention made.
1.623  Preliminary statement; invention made in United States, a NAFTA 
          country, or a WTO member country.
1.624  Preliminary statement; invention made in a place other than the 
          United States, a NAFTA country, or a WTO member country.
1.625  Preliminary statement; derivation by an opponent.
1.626  Preliminary statement; earlier application.
1.627  Preliminary statement; sealing before filing, opening of 
          statement.
1.628  Preliminary statement; correction of error.
1.629  Effect of preliminary statement.
1.630  Reliance on earlier application.
1.631  Access to preliminary statement, service of preliminary 
          statement.
1.632  Notice of intent to argue abandonment, suppression, or 
          concealment by opponent.
1.633  Preliminary motions.
1.634  Motion to correct inventorship.
1.635  Miscellaneous motions.
1.636  Motions, time for filing.
1.637  Content of motions.
1.638  Opposition and reply; time for filing opposition and reply.
1.639  Evidence in support of motion, opposition, or reply.
1.640  Motions, hearing and decision, redeclaration of interference, 
          order to show cause.
1.641  Unpatentability discovered by administrative patent judge.
1.642  Addition of application or patent to interference.
1.643  Prosecution of interference by assignee.
1.644  Petitions in interferences.
1.645  Extension of time, late papers, stay of proceedings.
1.646  Service of papers, proof of service.
1.647  Translation of document in foreign language.
1.651  Setting times for discovery and taking testimony, parties 
          entitled to take testimony.
1.652  Judgment for failure to take testimony or file record.
1.653  Record and exhibits.
1.654  Final hearing.
1.655  Matters considered in rendering a final decision.
1.656  Briefs for final hearing.
1.657  Burden of proof as to date of invention.
1.658  Final decision.
1.659  Recommendation.
1.660  Notice of reexamination, reissue, protest, or litigation.
1.661  Termination of interference after judgment.
1.662  Request for entry of adverse judgment; reissue filed by patentee.
1.663  Status of claim of defeated applicant after interference.
1.664  Action after interference.
1.665  Second interference.
1.666  Filing of interference settlement agreements.
1.671  Evidence must comply with rules.
1.672  Manner of taking testimony.
1.673  Notice of examination of witness.
1.674  Persons before whom depositions may be taken.
1.675  Examination of witness, reading and signing transcript of 
          deposition.
1.676  Certification and filing by officer, marking exhibits.
1.677  Form of an affidavit or a transcript of deposition.
1.678  Time for filing transcript of deposition.
1.679  Inspection of transcript.
1.682  Official records and printed publications.
1.683  Testimony in another interference, proceeding, or action.
1.684  [Reserved]
1.685  Errors and irregularities in depositions.
1.687  Additional discovery.
1.688  Use of discovery.
1.690  Arbitration of interferences.

                   Subpart F--Extension of Patent Term

1.701  Extension of patent term due to prosecution delay.
1.710  Patents subject to extension of the patent term.
1.720  Conditions for extension of patent term.
1.730  Applicant for extension of patent term.
1.740  Application for extension of patent term.
1.741  Filing date of application.
1.750  Determination of eligibility for extension of patent term.

[[Page 10]]

1.760  Interim extension of patent term under 35 U.S.C. 156(e)(2).
1.765  Duty of disclosure in patent term extension proceedings.
1.770  Express withdrawal of application for extension of patent term.
1.775  Calculation of patent term extension for a human drug, antibiotic 
          drug or human biological product.
1.776  Calculation of patent term extension for a food additive or color 
          additive.
1.777  Calculation of patent term extension for a medical device.
1.778  Calculation of patent term extension for an animal drug product.
1.779  Calculation of patent term extension for a veterinary biological 
          product.
1.780  Certificate of extension of patent term.
1.785  Multiple applications for extension of term of the same patent or 
          of different patents for the same regulatory review period for 
          a product.
1.790  Interim extension of patent term under 35 U.S.C. 156(d)(5).
1.791  Termination of interim extension granted prior to regulatory 
          approval of a product for commercial marketing or use.

             Subpart G--Biotechnology Invention Disclosures

                     Deposit of Biological Material

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

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

1.821  Nucleotide and/or amino acid sequence disclosures in patent 
          applications.
1.822  Symbols and format to be used for nucleotide and/or amino acid 
          sequence data.
1.823  Requirements for nucleotide and/or amino acid sequences as part 
          of the application papers.
1.824  Form and format for nucleotide and/or amino acid sequence 
          submissions in computer readable form.
1.825  Amendments to or replacement of sequence listing and computer 
          readable copy thereof.

Appendix A to Subpart G to Part 1--Sample Sequence Listing

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

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

    Editorial Note: In Patent and Trademark Office publications and 
usage the part number is omitted from the numbers of Secs. 1.1 to 1.352 
and the numbers to the right of the decimal point correspond with the 
respective rule numbers.



                      Subpart A--General Provisions

                 General Information and Correspondence



Sec. 1.1  Addresses for correspondence with the Patent and Trademark Office.

    (a) Except for Sec. 1.1(a)(3) (i) and (ii), all correspondence 
intended for the Patent and Trademark Office must be addressed to either 
``Commissioner of Patents and Trademarks, Washington, DC 20231'' or to 
specific areas within the Office as set out in paragraphs (a) (1), (2) 
and (3)(iii) of this section. When appropriate, correspondence should 
also be marked for the attention of a particular office or individual.
    (1) Patent correspondence. All correspondence concerning patent 
matters processed by organizations reporting to the Assistant 
Commissioner for Patents should be addressed to ``Assistant Commissioner 
for Patents, Washington, DC 20231.''
    (2) Trademark correspondence. (i) Send all trademark filings and 
correspondence, except as specified below or unless submitting 
electronically, to: Assistant Commissioner for Trademarks, 2900 Crystal 
Drive, Arlington, Virginia 22202-3513.
    (ii) Send trademark-related documents for the Assignment Division to 
record to: Commissioner of Patents and Trademarks, Box Assignment, 
Washington, DC 20231.
    (iii) Send requests for certified or uncertified copies of trademark 
applications and registrations, other than coupon orders for uncertified 
copies of registrations, to: Commissioner of Patents and Trademarks, Box 
10, Washington, DC 20231.
    (iv) Send requests for coupon orders for uncertified copies of 
registrations to: Commissioner of Patents and Trademarks, Box 9, 
Washington, DC 20231.

[[Page 11]]

    (v) An applicant may transmit an application for trademark 
registration electronically, but only if the applicant uses the Patent 
and Trademark Office's electronic form.
    (3) Office of Solicitor correspondence. (i) Correspondence relating 
to pending litigation required by court rule or order to be served on 
the Solicitor shall be hand-delivered to the Office of the Solicitor or 
shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington, 
Virginia 22215; or such other address as may be designated in writing in 
the litigation. See Secs. 1.302(c) and 2.145(b)(3) for filing a notice 
of appeal to the U.S. Court of Appeals for the Federal Circuit.
    (ii) Correspondence relating to disciplinary proceedings pending 
before an Administrative Law Judge or the Commissioner shall be mailed 
to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
    (iii) All other correspondence to the Office of the Solicitor shall 
be addressed to: Box 8, Commissioner of Patents and Trademarks, 
Washington, DC 20231.
    (iv) Correspondence improperly addressed to a Post Office Box 
specified in paragraphs (a)(3) (i) and (ii) of this section will not be 
filed elsewhere in the Patent and Trademark Office, and may be returned.
    (b) Letters and other communications relating to international 
applications during the international stage and prior to the assignment 
of a national serial number should be additionally marked ``Box PCT.''
    (c) Requests for reexamination should be additionally marked ``Box 
Reexam.''
    (d) Payments of maintenance fees in patents and other communications 
relating thereto should be additionally marked ``Box M. Fee.''
    (e) Communications relating to interferences and applications or 
patents involved in an interference should be additionally marked ``BOX 
INTERFERENCE.''
    (f) All applications for extension of patent term and any 
communications relating thereto intended for the Patent and Trademark 
Office should be additionally marked ``Box Patent Ext.'' When 
appropriate, the communication should also be marked to the attention of 
a particular individual, as where a decision has been rendered.
    (g) [Reserved]
    (h) In applications under section 1(b) of the Trademark Act, 15 
U.S.C. 1051(b), all statements of use filed under section 1(d) of the 
Act, and requests for extensions of time therefor, should be 
additionally marked ``Box ITU.''
    (i) The filing of all provisional applications and any 
communications relating thereto should be additionally marked ``Box 
Provisional Patent Application.''
    Note: Sections 1.1 to 1.26 are applicable to trademark cases as well 
as to national and international patent cases except for provisions 
specifically directed to patent cases. See Sec. 1.9 for definitions of 
``national application'' and ``international application.''

(Pub. L. 94-131, 89 Stat. 685)

[46 FR 29181, May 29, 1981, as amended at 49 FR 34724, Aug. 31, 1984; 49 
FR 48451, Dec. 12, 1984; 52 FR 9394, Mar. 24, 1987; 53 FR 16413, May 9, 
1988; 54 FR 37588, Sept. 11, 1989; 60 FR 20220, Apr. 25, 1995; 61 FR 
56446, Nov. 1, 1996; 64 FR 48917, Sept. 8, 1999]



Sec. 1.2  Business to be transacted in writing.

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



Sec. 1.3  Business to be conducted with decorum and courtesy.

    Applicants and their attorneys or agents are required to conduct 
their business with the Patent and Trademark Office with decorum and 
courtesy. Papers presented in violation of this requirement will be 
submitted to the Commissioner and will be returned by the Commissioner's 
direct order. Complaints against examiners and other employees must be 
made in correspondence separate from other papers.

[61 FR 56446, Nov. 1, 1996]

[[Page 12]]



Sec. 1.4  Nature of correspondence and signature requirements.

    (a) Correspondence with the Patent and Trademark Office comprises:
    (1) Correspondence relating to services and facilities of the 
Office, such as general inquiries, requests for publications supplied by 
the Office, orders for printed copies of patents or trademark 
registrations, orders for copies of records, transmission of assignments 
for recording, and the like, and
    (2) Correspondence in and relating to a particular application or 
other proceeding in the Office. See particularly the rules relating to 
the filing, processing, or other proceedings of national applications in 
subpart B, Secs. 1.31 to 1.378; of international applications in subpart 
C, Secs. 1.401 to 1.499; of reexamination of patents in subpart D, 
Secs. 1.501 to 1.570; of interferences in subpart E, Secs. 1.601 to 
1.690; of extension of patent term in subpart F, Secs. 1.710 to 1.785; 
and of trademark applications and registrations, Secs. 2.11 to 2.186.
    (b) Since each application file should be complete in itself, a 
separate copy of every paper to be filed in an application should be 
furnished for each application to which the paper pertains, even though 
the contents of the papers filed in two or more applications may be 
identical.
    (c) Since different matters may be considered by different branches 
or sections of the Patent and Trademark Office, each distinct subject, 
inquiry or order should be contained in a separate letter to avoid 
confusion and delay in answering letters dealing with different 
subjects.
    (d)(1) Each piece of correspondence, except as provided in 
paragraphs (e) and (f) of this section, filed in an application, patent 
file, trademark registration file, or other proceeding in the Office 
which requires a person's signature, must:
    (i) Be an original, that is, have an original signature personally 
signed in permanent ink by that person; or
    (ii) Be a direct or indirect copy, such as a photocopy or facsimile 
transmission(Sec. 1.6(d)), of an original. In the event that a copy of 
the original is filed, the original should be retained as evidence of 
authenticity. If a question of authenticity arises, the Office may 
require submission of the original; or
    (iii) Where an electronically transmitted trademark filing is 
permitted, the person who signs the filing must either:
    (A) Place a symbol comprised of numbers and/or letters between two 
forward slash marks in the signature block on the electronic submission; 
and print, sign and date in permanent ink, and maintain a paper copy of 
the electronic submission; or
    (B) Sign the verified statement using some other form of electronic 
signature specified by the Commissioner.
    (2) The presentation to the Office (whether by signing, filing, 
submitting, or later advocating) of any paper by a party, whether a 
practitioner or non-practitioner, constitutes a certification under 
Sec. 10.18(b) of this chapter. Violations of Sec. 10.18(b)(2) of this 
chapter by a party, whether a practitioner or non-practitioner, may 
result in the imposition of sanctions under Sec. 10.18(c) of this 
chapter. Any practitioner violating Sec. 10.18(b) may also be subject to 
disciplinary action. See Secs. 10.18(d) and 10.23(c)(15).
    (e) Correspondence requiring a person's signature and relating to 
registration to practice before the Patent and Trademark Office in 
patent cases, enrollment and disciplinary investigations, or 
disciplinary proceedings must be submitted with an original signature 
personally signed in permanent ink by that person.
    (f) When a document that is required by statute to be certified must 
be filed, a copy, including a photocopy or facsimile transmission, of 
the certification is not acceptable.
    (g) An applicant who has not made of record a registered attorney or 
agent may be required to state whether assistance was received in the 
preparation or prosecution of the patent application, for which any 
compensation or consideration was given or charged, and if so, to 
disclose the name or names of the person or persons providing such 
assistance. Assistance includes the preparation for the applicant of the 
specification and amendments or other papers to be filed in the Patent 
and Trademark Office, as well as other assistance in such matters,

[[Page 13]]

but does not include merely making drawings by draftsmen or stenographic 
services in typing papers.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2707, Jan. 20, 1982; 49 
FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 1988; 58 FR 54501, Oct. 
22, 1993; 62 FR 53180, Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999]



Sec. 1.5  Identification of application, patent or registration.

    (a) No correspondence relating to an application should be filed 
prior to receipt of the application number from the Patent and Trademark 
Office. When a letter directed to the Patent and Trademark Office 
concerns a previously filed application for a patent, it must identify 
on the top page in a conspicuous location, the application number 
(consisting of the series code and the serial number; e.g., 07/123,456), 
or the serial number and filing date assigned to that application by the 
Patent and Trademark Office, or the international application number of 
the international application. Any correspondence not containing such 
identification will be returned to the sender where a return address is 
available. The returned correspondence will be accompanied by a cover 
letter which will indicate to the sender that if the returned 
correspondence is resubmitted to the Patent and Trademark Office within 
two weeks of the mailing date on the cover letter, the original date of 
receipt of the correspondence will be considered by the Patent and 
Trademark Office as the date of receipt of the correspondence. 
Applicants may use either the Certificate of Mailing or Transmission 
procedure under Sec. 1.8 or the Express Mail procedure under Sec. 1.10 
for resubmissions of returned correspondence if they desire to have the 
benefit of the date of deposit with the United States Postal Service. If 
the returned correspondence is not resubmitted within the two-week 
period, the date of receipt of the resubmission will be considered to be 
the date of receipt of the correspondence. The two-week period to 
resubmit the returned correspondence will not be extended. In addition 
to the application number, all letters directed to the Patent and 
Trademark Office concerning applications for patents should also state 
the name of the applicant, the title of the invention, the date of 
filing the same, and, if known, the group art unit or other unit within 
the Patent and Trademark Office responsible for considering the letter 
and the name of the examiner or other person to which it has been 
assigned.
    (b) When the letter concerns a patent other than for purposes of 
paying a maintenance fee, it should state the number and date of issue 
of the patent, the name of the patentee, and the title of the invention. 
For letters concerning payment of a maintenance fee in a patent, see the 
provisions of Sec. 1.366(c).
    (c)(1) A letter about a trademark application should identify the 
serial number, the name of the applicant, and the mark.
    (2) A letter about a registered trademark should identify the 
registration number, the name of the registrant, and the mark.
    (d) A letter relating to a reexamination proceeding should identify 
it as such by the number of the patent undergoing reexamination, the 
reexamination request control number assigned to such proceeding and, if 
known, the group art unit and name of the examiner to which it has been 
assigned.
    (e) When a paper concerns an interference, it should state the names 
of the parties and the number of the interference. The name of the 
examiner-in-chief assigned to the interference (Sec. 1.610) and the name 
of the party filing the paper should appear conspicuously on the first 
page of the paper.
    (f) When a paper concerns a provisional application, it should 
identify the application as such and include the application number.


(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49 
FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 
1988; 58 FR 54501, Oct. 22, 1993;61 FR 42802, Aug. 19, 1996; 61 FR 
56446, Nov. 1, 1996; 64 FR 48917, Sept. 8, 1999]

[[Page 14]]



Sec. 1.6  Receipt of correspondence.

    (a) Date of receipt and Express Mail date of deposit. Correspondence 
received in the Patent and Trademark Office is stamped with the date of 
receipt except as follows:
    (1) The Patent and Trademark Office is not open for the filing of 
correspondence on any day that is a Saturday, Sunday, or Federal holiday 
within the District of Columbia. Except for correspondence transmitted 
by facsimile under paragraph (a)(3) of this section, or filed 
electronically under paragraph (a)(4) of this section, no correspondence 
is received in the Office on Saturdays, Sundays, or Federal holidays 
within the District of Columbia.
    (2) Correspondence filed in accordance with Sec. 1.10 will be 
stamped with the date of deposit as ``Express Mail'' with the United 
States Postal Service.
    (3) Correspondence transmitted by facsimile to the Patent and 
Trademark Office will be stamped with the date on which the complete 
transmission is received in the Patent and Trademark Office unless that 
date is a Saturday, Sunday, or Federal holiday within the District of 
Columbia, in which case the date stamped will be the next succeeding day 
which is not a Saturday, Sunday, or Federal holiday within the District 
of Columbia.
    (4) Trademark-related correspondence transmitted electronically will 
be stamped with the date on which the Office receives the transmission.
    (b) Patent and Trademark Office Post Office pouch. Mail placed in 
the Patent and Trademark Office pouch up to midnight on any day, except 
Saturdays, Sundays and Federal holidays within the District of Columbia, 
by the post office at Washington, DC, serving the Patent and Trademark 
Office, is considered as having been received in the Patent and 
Trademark Office on the day it was so placed in the pouch by the U.S. 
Postal Service.
    (c) Correspondence delivered by hand. In addition to being mailed, 
correspondence may be delivered by hand during hours the Office is open 
to receive correspondence.
    (d) Facsimile transmission. Except in the cases enumerated below, 
correspondence, including authorizations to charge a deposit account, 
may be transmitted by facsimile. The receipt date accorded to the 
correspondence will be the date on which the complete transmission is 
received in the Patent and Trademark Office, unless that date is a 
Saturday, Sunday, or Federal holiday within the District of Columbia. 
See Sec. 1.6(a)(3). To facilitate proper processing, each transmission 
session should be limited to correspondence to be filed in a single 
application or other proceeding before the Patent and Trademark Office. 
The application number of a patent or trademark application, the control 
number of a reexamination proceeding, the interference number of an 
interference proceeding, the patent number of a patent, or the 
registration number of a trademark should be entered as a part of the 
sender's identification on a facsimile cover sheet. Facsimile 
transmissions are not permitted and if submitted, will not be accorded a 
date of receipt, in the following situations:
    (1) Correspondence as specified in Sec. 1.4(e), requiring an 
original signature;
    (2) Certified documents as specified in Sec. 1.4(f);
    (3) Correspondence which cannot receive the benefit of the 
certificate of mailing or transmission as specified in Sec. 1.8(a)(2)(i) 
(A) through (D) and (F), Sec. 1.8(a)(2)(ii)(A), and 
Sec. 1.8(a)(2)(iii)(A), except that a continued prosecution application 
under Sec. 1.53(d) may be transmitted to the Office by facsimile;
    (4) Drawings submitted under Secs. 1.81, 1.83 through 1.85, 1.152, 
1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
    (5) A request for reexamination under Sec. 1.510;
    (6) Correspondence to be filed in a patent application subject to a 
secrecy order under Secs. 5.1 through 5.5 of this chapter and directly 
related to the secrecy order content of the application;
    (7) Requests for cancellation or amendment of a registration under 
section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates 
of registration surrendered for cancellation or amendment under section 
7(e) of the Trademark Act, 15 U.S.C. 1057(e);
    (8) Correspondence to be filed with the Trademark Trial and Appeal 
Board, except the notice of ex parte appeal;
    (9) Correspondence to be filed in an interference proceeding which 
consists

[[Page 15]]

of a preliminary statement under Sec. 1.621; a transcript of a 
deposition under Sec. 1.676 or of interrogatories, cross-
interrogatories, or recorded answers under Sec. 1.684(c); or an 
evidentiary record and exhibits under Sec. 1.653.
    (e) Interruptions in U.S. Postal Service. If interruptions or 
emergencies in the United States Postal Service which have been so 
designated by the Commissioner occur, the Patent and Trademark Office 
will consider as filed on a particular date in the Office any 
correspondence which is:
    (1) Promptly filed after the ending of the designated interruption 
or emergency; and
    (2) Accompanied by a statement indicating that such correspondence 
would have been filed on that particular date if it were not for the 
designated interruption or emergency in the United States Postal 
Service.
    (f) Facsimile transmission of a patent application under 
Sec. 1.53(d). In the event that the Office has no evidence of receipt of 
an application under Sec. 1.53(d) (a continued prosecution application) 
transmitted to the Office by facsimile transmission, the party who 
transmitted the application under Sec. 1.53(d) may petition the 
Commissioner to accord the application under Sec. 1.53(d) a filing date 
as of the date the application under Sec. 1.53(d) is shown to have been 
transmitted to and received in the Office,
    (1) Provided that the party who transmitted such application under 
Sec. 1.53(d):
    (i) Informs the Office of the previous transmission of the 
application under Sec. 1.53(d) promptly after becoming aware that the 
Office has no evidence of receipt of the application under Sec. 1.53(d);
    (ii) Supplies an additional copy of the previously transmitted 
application under Sec. 1.53(d); and
    (iii) Includes a statement which attests on a personal knowledge 
basis or to the satisfaction of the Commissioner to the previous 
transmission of the application under Sec. 1.53(d) and is accompanied by 
a copy of the sending unit's report confirming transmission of the 
application under Sec. 1.53(d) or evidence that came into being after 
the complete transmission and within one business day of the complete 
transmission of the application under Sec. 1.53(d).
    (2) The Office may require additional evidence to determine if the 
application under Sec. 1.53(d) was transmitted to and received in the 
Office on the date in question.

[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56447, 
Nov. 1, 1996; 62 FR 53180, Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999]



Sec. 1.7  Times for taking action; Expiration on Saturday, Sunday or Federal holiday.

    (a) Whenever periods of time are specified in this part in days, 
calendar days are intended. When the day, or the last day fixed by 
statute or by or under this part for taking any action or paying any fee 
in the United States Patent and Trademark Office falls on Saturday, 
Sunday, or on a Federal holiday within the District of Columbia, the 
action may be taken, or the fee paid, on the next succeeding business 
day which is not a Saturday, Sunday, or a Federal holiday. See 
Sec. 1.304 for time for appeal or for commencing civil action.
    (b) If the day that is twelve months after the filing date of a 
provisional application under 35 U.S.C. 111(b) and Sec. 1.53(c) falls on 
Saturday, Sunday, or on a Federal holiday within the District of 
Columbia, the period of pendency shall be extended to the next 
succeeding secular or business day which is not a Saturday, Sunday, or a 
Federal holiday.

[65 FR 14871, Mar. 20, 2000]



Sec. 1.8  Certificate of mailing or transmission.

    (a) Except in the cases enumerated in paragraph (a)(2) of this 
section, correspondence required to be filed in the Patent and Trademark 
Office within a set period of time will be considered as being timely 
filed if the procedure described in this section is followed. The actual 
date of receipt will be used for all other purposes.
    (1) Correspondence will be considered as being timely filed if:
    (i) The correspondence is mailed or transmitted prior to expiration 
of the set period of time by being:
    (A) Addressed as set out in Sec. 1.1(a) and deposited with the U.S. 
Postal

[[Page 16]]

Service with sufficient postage as first class mail; or
    (B) Transmitted by facsimile to the Patent and Trademark Office in 
accordance with Sec. 1.6(d); and
    (ii) The correspondence includes a certificate for each piece of 
correspondence stating the date of deposit or transmission. The person 
signing the certificate should have reasonable basis to expect that the 
correspondence would be mailed or transmitted on or before the date 
indicated.
    (2) The procedure described in paragraph (a)(1) of this section does 
not apply to, and no benefit will be given to a Certificate of Mailing 
or Transmission on the following:
    (i) Relative to Patents and Patent Applications--
    (A) The filing of a national patent application specification and 
drawing or other correspondence for the purpose of obtaining an 
application filing date, including a request for a continued prosecution 
application under Sec. 1.53(d);
    (B) The filing of correspondence in an interference which an 
examiner-in-chief orders to be filed by hand or ``Express Mail'';
    (C) The filing of agreements between parties to an interference 
under 35 U.S.C. 135(c);
    (D) The filing of an international application for patent;
    (E) The filing of correspondence in an international application 
before the U.S. Receiving Office, the U.S. International Searching 
Authority, or the U.S. International Preliminary Examining Authority;
    (F) The filing of a copy of the international application and the 
basic national fee necessary to enter the national stage, as specified 
in Sec. 1.494(b) or Sec. 1.495(b).
    (ii) Relative to Trademark Registrations and Trademark 
Applications--
    (A) The filing of a trademark application.
    (B)-(F) [Reserved]
    (iii) Relative to Disciplinary Proceedings--
    (A) Correspondence filed in connection with a disciplinary 
proceeding under part 10 of this chapter.
    (B) [Reserved]
    (b) In the event that correspondence is considered timely filed by 
being mailed or transmitted in accordance with paragraph (a) of this 
section, but not received in the Patent and Trademark Office, and the 
application is held to be abandoned or the proceeding is dismissed, 
terminated, or decided with prejudice, the correspondence will be 
considered timely if the party who forwarded such correspondence:
    (1) Informs the Office of the previous mailing or transmission of 
the correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence;
    (2) Supplies an additional copy of the previously mailed or 
transmitted correspondence and certificate; and
    (3) Includes a statement which attests on a personal knowledge basis 
or to the satisfaction of the Commissioner to the previous timely 
mailing or transmission. If the correspondence was sent by facsimile 
transmission, a copy of the sending unit's report confirming 
transmission may be used to support this statement.
    (c) The Office may require additional evidence to determine if the 
correspondence was timely filed.

[58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993, as amended at 61 
FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997]



Sec. 1.9  Definitions.

    (a)(1) A national application as used in this chapter means a U.S. 
application for patent which was either filed in the Office under 35 
U.S.C. 111, or which entered the national stage from an international 
application after compliance with 35 U.S.C. 371.
    (2) A provisional application as used in this chapter means a U.S. 
national application for patent filed in the Office under 35 U.S.C. 
111(b).
    (3) A nonprovisional application as used in this chapter means a 
U.S. national application for patent which was either filed in the 
Office under 35 U.S.C. 111(a), or which entered the national stage from 
an international application after compliance with 35 U.S.C. 371.
    (b) An international application as used in this chapter means an 
international application for patent filed under the Patent Cooperation 
Treaty prior to entering national processing at the Designated Office 
stage.

[[Page 17]]

    (c) An independent inventor as used in this chapter means any 
inventor who (1) has not assigned, granted, conveyed, or licensed, and 
(2) is under no obligation under contract or law to assign, grant, 
convey, or license, any rights in the invention to any person who could 
not likewise be classified as an independent inventor if that person had 
made the invention, or to any concern which would not qualify as a small 
business concern or a nonprofit organization under this section.
    (d) A small business concern as used in this chapter means any 
business concern meeting the size standards set forth in 13 CFR Part 121 
to be eligible for reduced patent fees. Questions related to size 
standards for a small business concern may be directed to: Small 
Business Administration, Size Standards Staff, 409 Third Street, SW, 
Washington, DC 20416.
    (e) A nonprofit organization as used in this chapter means (1) a 
university or other institution of higher education located in any 
country; (2) an organization of the type described in section 501(c)(3) 
of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt 
from taxation under section 501(a) of the Internal Revenue Code (26 
U.S.C. 501(a)); (3) any nonprofit scientific or educational organization 
qualified under a nonprofit organization statute of a state of this 
country (35 U.S.C. 201(i)); or (4) any nonprofit organization located in 
a foreign country which would qualify as a nonprofit organization under 
paragraphs (e)(2) or (3) of this section if it were located in this 
country.
    (f) A small entity as used in this chapter means an independent 
inventor, a small business concern, or a non-profit organization 
eligible for reduced patent fees.
    (g) For definitions in interferences see Sec. 1.601.
    (h) A Federal holiday within the District of Columbia as used in 
this chapter means any day, except Saturdays and Sundays, when the 
Patent and Trademark Office is officially closed for business for the 
entire day.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982; 
47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, 
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997]



Sec. 1.10  Filing of correspondence by ``Express Mail.''

    (a) Any correspondence received by the Patent and Trademark Office 
(Office) that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed in the Office on the date of deposit with the USPS. The 
date of deposit with the USPS is shown by the ``date-in'' on the 
``Express Mail'' mailing label or other official USPS notation. If the 
USPS deposit date cannot be determined, the correspondence will be 
accorded the Office receipt date as the filing date. See Sec. 1.6(a).
    (b) Correspondence should be deposited directly with an employee of 
the USPS to ensure that the person depositing the correspondence 
receives a legible copy of the ``Express Mail'' mailing label with the 
``date-in'' clearly marked. Persons dealing indirectly with the 
employees of the USPS (such as by deposit in an ``Express Mail'' drop 
box) do so at the risk of not receiving a copy of the ``Express Mail'' 
mailing label with the desired ``date-in'' clearly marked. The paper(s) 
or fee(s) that constitute the correspondence should also include the 
``Express Mail'' mailing label number thereon. See paragraphs (c), (d) 
and (e) of this section.
    (c) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that there is a 
discrepancy between the filing date accorded by the Office to the 
correspondence and the date of deposit as shown by the ``date-in'' on 
the ``Express Mail'' mailing label or other

[[Page 18]]

official USPS notation, may petition the Commissioner to accord the 
correspondence a filing date as of the ``date-in'' on the ``Express 
Mail'' mailing label or other official USPS notation, provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date other than 
the USPS deposit date;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail;'' and
    (3) The petition includes a true copy of the ``Express Mail'' 
mailing label showing the ``date-in,'' and of any other official 
notation by the USPS relied upon to show the date of deposit.
    (d) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that the ``date-in'' on 
the ``Express Mail'' mailing label or other official notation entered by 
the USPS was incorrectly entered or omitted by the USPS, may petition 
the Commissioner to accord the correspondence a filing date as of the 
date the correspondence is shown to have been deposited with the USPS, 
provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date based upon 
an incorrect entry by the USPS;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail''; and
    (3) The petition includes a showing which establishes, to the 
satisfaction of the Commissioner, that the requested filing date was the 
date the correspondence was deposited in the ``Express Mail Post Office 
to Addressee'' service prior to the last scheduled pickup for that day. 
Any showing pursuant to this paragraph must be corroborated by evidence 
from the USPS or that came into being after deposit and within one 
business day of the deposit of the correspondence in the ``Express Mail 
Post Office to Addressee'' service of the USPS.
    (e) Any person mailing correspondence addressed as set out in 
Sec. 1.1(a) to the Office with sufficient postage utilizing the 
``Express Mail Post Office to Addressee'' service of the USPS but not 
received by the Office, may petition the Commissioner to consider such 
correspondence filed in the Office on the USPS deposit date, provided 
that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has no evidence of receipt of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail'';
    (3) The petition includes a copy of the originally deposited 
paper(s) or fee(s) that constitute the correspondence showing the number 
of the ``Express Mail'' mailing label thereon, a copy of any returned 
postcard receipt, a copy of the ``Express Mail'' mailing label showing 
the ``date-in,'' a copy of any other official notation by the USPS 
relied upon to show the date of deposit, and, if the requested filing 
date is a date other than the ``date-in'' on the ``Express Mail'' 
mailing label or other official notation entered by the USPS, a showing 
pursuant to paragraph (d)(3) of this section that the requested filing 
date was the date the correspondence was deposited in the ``Express Mail 
Post Office to Addressee'' service prior to the last scheduled pickup 
for that day; and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Commissioner, the original deposit of the 
correspondence and that the copies of the correspondence, the copy of 
the ``Express Mail'' mailing label, the copy of any returned postcard 
receipt, and any official notation entered by the USPS are true copies 
of the originally mailed correspondence, original ``Express Mail'' 
mailing label, returned postcard receipt, and official notation entered 
by the USPS.
    (f) The Office may require additional evidence to determine if the 
correspondence was deposited as ``Express

[[Page 19]]

Mail'' with the USPS on the date in question.

[61 FR 56447, Nov. 1, 1996 as amended at 62 FR 53181, Oct. 10, 1997]

          Records and Files of the Patent and Trademark Office



Sec. 1.11  Files open to the public.

    (a) After a patent has been issued or a statutory invention 
registration has been published, the specification, drawings and all 
papers relating to the case in the file of the patent or statutory 
invention registration are open to inspection by the public, and copies 
may be obtained upon paying the fee therefor. See Sec. 2.27 for 
trademark files.
    (b) All reissue applications, all applications in which the Office 
has accepted a request to open the complete application to inspection by 
the public, and related papers in the application file, are open to 
inspection by the public, and copies may be furnished upon paying the 
fee therefor. The filing of reissue applications, other than continued 
prosecution applications under Sec. 1.53(d) of reissue applications, 
will be announced in the Official Gazette. The announcement shall 
include at least the filing date, reissue application and original 
patent numbers, title, class and subclass, name of the inventor, name of 
the owner of record, name of the attorney or agent of record, and 
examining group to which the reissue application is assigned.
    (c) All requests for reexamination for which the fee under 
Sec. 1.20(c) has been paid, will be announced in the Official Gazette. 
Any reexaminations at the initiative of the Commissioner pursuant to 
Sec. 1.520 will also be announced in the Official Gazette. The 
announcement shall include at least the date of the request, if any, the 
reexamination request control number or the Commissioner initiated order 
control number, patent number, title, class and subclass, name of the 
inventor, name of the patent owner of record, and the examining group to 
which the reexamination is assigned.
    (d) All papers or copies thereof relating to a reexamination 
proceeding which have been entered of record in the patent or 
reexamination file are open to inspection by the general public, and 
copies may be furnished upon paying the fee therefor.
    (e) The file of any interference involving a patent, a statutory 
invention registration, a reissue application, or an application on 
which a patent has been issued or which has been published as a 
statutory invention registration, is open to inspection by the public, 
and copies may be obtained upon paying the fee therefor, if:
    (1) The interference has terminated or
    (2) An award of priority or judgment has been entered as to all 
parties and all counts.


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[46 FR 29181, May 29, 1981, as amended at 47 FR 41272, Sept. 17, 1982; 
50 FR 9378, Mar. 7, 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, Oct. 
10, 1997]



Sec. 1.12  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the Patent and 
Trademark Office for patents and trademarks. The assignment records, 
relating to original or reissue patents, including digests and indexes, 
for assignments recorded on or after May 1, 1957, and assignment records 
relating to pending or abandoned trademark applications and to trademark 
registrations, for assignments recorded on or after January 1, 1955, are 
open to public inspection at the Patent and Trademark Office, and copies 
of those assignment records may be obtained upon request and payment of 
the fee set forth in Secs. 1.19 and 2.6 of this chapter.
    (2) All records of assignments of patents recorded before May 1, 
1957, and all records of trademark assignments recorded before January 
1, 1955, are maintained by the National Archives and Records 
Administration (NARA). The records are open to public inspection. 
Certified and uncertified copies of those assignment records are 
provided by NARA upon request and payment of the fees required by NARA.
    (b) Assignment records, digests, and indexes, relating to any 
pending or abandoned patent application are not available to the public. 
Copies of any

[[Page 20]]

such assignment records and information with respect thereto shall be 
obtainable only upon written authority of the applicant or applicant's 
assignee or attorney or agent or upon a showing that the person seeking 
such information is a bona fide prospective or actual purchaser, 
mortgagee, or licensee of such application, unless it shall be necessary 
to the proper conduct of business before the Office or as provided by 
these rules.
    (c) Any request by a member of the public seeking copies of any 
assignment records of any pending or abandoned patent application 
preserved in confidence under Sec. 1.14, or any information with respect 
thereto, must:
    (1) Be in the form of a petition accompanied by the petition fee set 
forth in Sec. 1.17(i); or
    (2) Include written authority granting access to the member of the 
public to the particular assignment records from the applicant or 
applicant's assignee or attorney or agent of record.
    (d) An order for a copy of an assignment or other document should 
identify the reel and frame number where the assignment or document is 
recorded. If a document is identified without specifying its correct 
reel and frame, an extra charge as set forth in Sec. 1.21(j) will be 
made for the time consumed in making a search for such assignment.


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989; 
56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641, 
July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996]



Sec. 1.13  Copies and certified copies.

    (a) Non-certified copies of patents and trademark registrations and 
of any records, books, papers, or drawings within the jurisdiction of 
the Patent and Trademark Office and open to the public, will be 
furnished by the Patent and Trademark Office to any person, and copies 
of other records or papers will be furnished to persons entitled 
thereto, upon payment of the fee therefor.
    (b) Certified copies of the patents and trademark registrations and 
of any records, books, papers, or drawings within the jurisdiction of 
the Patent and Trademark Office and open to the public or persons 
entitled thereto will be authenticated by the seal of the Patent and 
Trademark Office and certified by the Commissioner, or in his name 
attested by an officer of the Patent and Trademark Office authorized by 
the Commissioner, upon payment of the fee for the certified copy.

[58 FR 54508, Oct. 22, 1993]



Sec. 1.14  Patent applications preserved in confidence.

    (a) Patent applications are generally preserved in confidence 
pursuant to 35 U.S.C. 122. No information will be given concerning the 
filing, pendency, or subject matter of any application for patent, and 
no access will be given to, or copies furnished of, any application or 
papers relating thereto, except as set forth in this section.
    (1) Status information includes information such as whether the 
application is pending, abandoned, or patented, as well as the 
application number and filing date (or international filing date or date 
of entry into the national stage).
    (i) Status information concerning an application may be supplied:
    (A) When copies of, or access to, the application may be provided 
pursuant to paragraph (a)(3) of this section;
    (B) When the application is identified by application number or 
serial number and filing date in a published patent document or in a 
U.S. application open to public inspection; or
    (C) When the application is the national stage of an international 
application in which the United States of America has been indicated as 
a Designated State.
    (ii) Status information concerning an application may also be 
supplied when the application claims the benefit of the filing date of 
an application for which status information may be provided pursuant to 
paragraph (a)(1)(i) of this section.
    (2) Copies of an application-as-filed may be provided to any person, 
upon written request accompanied by the fee set forth in 
Sec. 1.19(b)(1), without notice to the applicant, if the application is 
incorporated by reference in a U.S. patent.

[[Page 21]]

    (3) Copies of (upon payment of the fee set forth in 
Sec. 1.19(b)(2)), and access to, an application file wrapper and 
contents may be provided to any person, upon written request, without 
notice to the applicant, when the application file is available and:
    (i) It has been determined by the Commissioner to be necessary for 
the proper conduct of business before the Office or warranted by other 
special circumstances;
    (ii) The application is open to the public as provided in 
Sec. 1.11(b);
    (iii) Written authority in that application from the applicant, the 
assignee of the application, or the attorney or agent of record has been 
granted; or
    (iv) The application is abandoned, but not if the application is in 
the file jacket of a pending application under Sec. 1.53(d), and is:
    (A) Referred to in a U.S. patent;
    (B) Referred to in a U.S. application open to public inspection;
    (C) An application which claims the benefit of the filing date of a 
U.S. application open to public inspection; or
    (D) An application in which the applicant has filed an authorization 
to lay open the complete application to the public.
    (b) Complete applications (Sec. 1.51(a)) which are abandoned may be 
destroyed and hence may not be available for access or copies as 
permitted by paragraph (a)(3)(iv) of this section after 20 years from 
their filing date, except those to which particular attention has been 
called and which have been marked for preservation.
    (c) Applications for patents which disclose, or which appear to 
disclose, or which purport to disclose, inventions or discoveries 
relating to atomic energy are reported to the Department of Energy, 
which Department will be given access to such applications, but such 
reporting does not constitute a determination that the subject matter of 
each application so reported is in fact useful or an invention or 
discovery or that such application in fact discloses subject matter in 
categories specified by sections 151(c) and 151(d) of the Atomic Energy 
Act of 1954, 68 Stat. 919; 42 U.S.C. 2181 (c) and (d).
    (d) Any decision of the Board of Patent Appeals and Interferences, 
or any decision of the Commissioner on petition, not otherwise open to 
public inspection shall be published or made available for public 
inspection if:
    (1) The Commissioner believes the decision involves an 
interpretation of patent laws or regulations that would be of important 
precedent value; and
    (2) The applicant, or any party involved in the interference, does 
not within one month after being notified of the intention to make the 
decision public, object in writing on the ground that the decision 
discloses a trade secret or other confidential information.

If a decision discloses such information, the applicant or party shall 
identify the deletions in the text of the decision considered necessary 
to protect the information. If it is considered the entire decision must 
be withheld from the public to protect such information, the applicant 
or party must explain why. Applicants or parties will be given time, not 
less than twenty days, to request reconsideration and seek court review 
before any portions of decisions are made public over their objection. 
See Sec. 2.27 for trademark applications.
    (e) Any request by a member of the public seeking access to, or 
copies of, any pending or abandoned application preserved in confidence 
pursuant to paragraph (a) of this section, or any papers relating 
thereto, must:
    (1) Be in the form of a petition and be accompanied by the petition 
fee set forth in Sec. 1.17(i); or
    (2) Include written authority granting access to the member of the 
public in that particular application from the applicant or the 
applicant's assignee or attorney or agent of record.
    (f) Information as to the filing of an application will be published 
in the Official Gazette in accordance with Sec. 1.47(a) and (b).
    (g) Copies of an application file for which the United States acted 
as the International Preliminary Examining Authority, or copies of a 
document in such an application file, will be furnished in accordance 
with Patent Cooperation Treaty (PCT) Rule 94.2 or 94.3, upon payment of 
the appropriate fee (Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).

[[Page 22]]

    Note: See Sec. 1.612(a) for access by an interference party to a 
pending or abandoned application.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[42 FR 5593, Jan. 28, 1977, as amended at 43 FR 20462, May 11, 1978; 49 
FR 48451, Dec. 12, 1984; 50 FR 9378, Mar. 7, 1985; 54 FR 6900, Feb. 15, 
1989; 56 FR 55461, Oct. 28, 1991; 58 FR 54509, Oct. 22, 1993; 60 FR 
20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996; 62 FR 53182, Oct. 10, 
1997; 63 FR 29617, June 1, 1998]



Sec. 1.15  Requests for identifiable records.

    (a) Requests for records, not disclosed to the public as part of the 
regular informational activity of the Patent and Trademark Office and 
which are not otherwise dealt with in the rules in this part, shall be 
made in writing, with the envelope and the letter clearly marked 
``Freedom of Information Request.'' Each such request, so marked, should 
be submitted by mail addressed to the ``Patent and Trademark Office, 
Freedom of Information Request Control Desk, Box 8, Washington, DC 
20231,'' or hand delivered to the Office of the Solicitor, Patent and 
Trademark Office, Arlington, Virginia. The request will be processed in 
accordance with the procedures set forth in part 4 of title 15, Code of 
Federal Regulations.
    (b) Any person whose request for records has been initially denied 
in whole or in part, or has not been timely determined, may submit a 
written appeal as provided in Sec. 4.8 of title 15, Code of Federal 
Regulations.
    (c) Procedures applicable in the event of service of process or in 
connection with testimony of employees on official matters and 
production of official documents of the Patent and Trademark Office in 
civil legal proceedings not involving the United States shall be those 
established in parts 15 and 15a of title 15, Code of Federal 
Regulations.

[53 FR 47686, Nov. 25, 1988]

                        Fees and Payment of Money



Sec. 1.16  National application filing fees.

    (a) Basic fee for filing each application for an original patent, 
except provisional, design or plant applications:

By a small entity (Sec. 1.9(f))--$345.00
By other than a small entity--$690.00

    (b) In addition to the basic filing fee in an original application, 
except provisional applications, for filing or later presentation of 
each independent claim in excess of 3:

By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00

    (c) In addition to the basic filing fee in an original application, 
except provisional applications, for filing or later presentation of 
each claim in excess of 20 (Note that Sec. 1.75(c) indicates how 
multiple dependent claims are considered for fee purposes.):

By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00

    (d) In addition to the basic filing fee in an original application, 
except provisional applications, if the application contains, or is 
amended to contain, a multiple dependent claim(s), per application:

By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00

    (e) Surcharge for filing the basic filing fee or oath or declaration 
on a date later than the filing date of the application, except 
provisional applications:

By a small entity (Sec. 1.9(f))--$65.00
By other than a small entity--$130.00

    (f) Basic fee for filing each design application:
By a small entity (Sec. 1.9(f))--$155.00
By other than a small entity--$310.00
    (g) Basic fee for filing each plant application, except provisional 
applications:
By a small entity (Sec. 1.9(f))--$240.00
By other than a small entity--$480.00
    (h) Basic fee for filing each reissue application:

By a small entity (Sec. 1.9(f))--$345.00
By other than a small entity--$690.00

    (i) In addition to the basic filing fee in a reissue application, 
for filing or later presentation of each independent claim which is in 
excess of the number of independent claims in the original patent:
By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00
    (j) In addition to the basic filing fee in a reissue application, 
for filing or later presentation of each claim (whether independent or 
dependent) in excess of 20 and also in excess of the number of claims in 
the original patent

[[Page 23]]

(Note that Sec. 1.75(c) indicates how multiple dependent claims are 
considered for fee purposes.):
By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00
    (k) Basic fee for filing each provisional application:

By a small entity (Sec. 1.9(f))--$75.00
By other than a small entity--$150.00
    (l) Surcharge for filing the basic filing fee or cover sheet 
(Sec. 1.51(c)(1)) on a date later than the filing date of the 
provisional application:
By a small entity (Sec. 1.9(f))--$25.00
By other than a small entity--$50.00
    (m) If the additional fees required by paragraphs (b), (c), (d), (i) 
and (j) of this section are not paid on filing or on later presentation 
of the claims for which the additional fees are due, they must be paid 
or the claims must be canceled by amendment, prior to the expiration of 
the time period set for reply by the Office in any notice of fee 
deficiency.
    Note: See Secs. 1.445, 1.482 and 1.492 for international application 
filing and processing fees.

[56 FR 65151, Dec. 13, 1991, as amended at 57 FR 38194, Aug. 21, 1992; 
60 FR 20221, Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39587, 
July 30, 1996; 61 FR 43400, Aug. 22, 1996; 62 FR 40452, July 29, 1997; 
62 FR 53182, Oct. 10, 1997; 63 FR 67579, Dec. 8, 1998; 64 FR 67777, Dec. 
3, 1999]



Sec. 1.17  Patent application processing fees.

    (a) Extension fees pursuant to Sec. 1.136(a):
    (1) For reply within first month:

By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00

    (2) For reply within second month:

By a small entity (Sec. 1.9(f))--$190.00
By other than a small entity--$380.00

    (3) For reply within third month:

By a small entity (Sec. 1.9(f))--$435.00
By other than a small entity--$870.00

    (4) For reply within fourth month:

By a small entity (Sec. 1.9(f))--$680.00
By other than a small entity--$1,360.00

    (5) For reply within fifth month:

By a small entity (Sec. 1.9(f))--$925.00
By other than a small entity--$1,850.00

    (b) For filing a notice of appeal from the examiner to the Board of 
Patent Appeals and Interferences:

By a small entity (Sec. 1.9(f))--$150.00
By other than a small entity--$300.00

    (c) In addition to the fee for filing a notice of appeal, for filing 
a brief in support of an appeal:

By a small entity (Sec. 1.9 (f))--$150.00
By other than a small entity--$300.00

    (d) For filing a request for an oral hearing before the Board of 
Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:

By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00

    (e) To request continued examination pursuant to Sec. 1.114:

By a small entity--$345.00
By other than a small entity--$690.00

    (f)-(g) [Reserved]
    (h) For filing a petition to the Commissioner under a section listed 
below which refers to this paragraph--$130.00

Sec. 1.182--For decision on a question not specifically provided for.
Sec. 1.183--To suspend the rules.
Sec. 1.295--For review of refusal to publish a statutory invention 
registration.
Sec. 1.377--For review of decision refusing to accept and record payment 
of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--For reconsideration of decision on petition refusing to 
accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(e)--For petition in an interference.
Sec. 1.644(f)--For request for reconsideration of a decision on petition 
in an interference.
Sec. 1.666(c)--For late filing of interference settlement agreement.
Sec. 5.12--For expedited handling of a foreign filing license.
Sec. 5.15--For changing the scope of a license.
Sec. 5.25--For retroactive license.

    (i) For filing a petition to the Commissioner under one of the 
following sections which refers to this paragraph--$130.00

Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.41--to supply the name or names of the inventor or inventors 
after the filing date without an oath or declaration as prescribed by 
Sec. 1.63, except in provisional applications.
Sec. 1.47--for filing by other than all the inventors or a person not 
the inventor.
Sec. 1.48--for correction of inventorship, except in provisional 
applications.
Sec. 1.53--to accord a filing date, except in provisional applications.
Sec. 1.53(c)--to convert a provisional application filed under 
Sec. 1.53(c) to a nonprovisional application under Sec. 1.53(b).

[[Page 24]]

Sec. 1.55--for entry of late priority papers.
Sec. 1.59--for expungement and return of information.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.97(d)--to consider an information disclosure statement.
    Sec. 1.102--to make an application special.
Sec. 1.103--to suspend action in application.
Sec. 1.177--for divisional reissues to issue separately.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.666(b)--for access to an interference settlement agreement.
Sec. 3.81--for a patent to issue to assignee, assignment submitted after 
payment of the issue fee.

    (j) For filing a petition to institute a public use proceeding under 
Sec. 1.292--$1,510.00
    (k) For processing an application filed with a specification in a 
non-English language (Sec. 1.52(d))--$130.00
    (l) For filing a petition:
    (1) For the revival of an unavoidably abandoned application under 35 
U.S.C. 111, 133, 364, or 371, or
    (2) For delayed payment of the issue fee under 35 U.S.C. 151 
(Sec. 1.137(a)):

By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00

    (m) For filing a petition:
    (1) For revival of an unintentionally abandoned application, or
    (2) For the unintentionally delayed payment of the fee for issuing a 
patent (Sec. 1.137(b)):

By a small entity (Sec. 1.9(f))--$605.00
By other than a small entity--$1,210.00

    (n) For requesting publication of a statutory invention registration 
prior to the mailing of the first examiner's action pursuant to 
Sec. 1.104--$920.00 reduced by the amount of the application basic 
filing fee paid.
    (o) For requesting publication of a statutory invention registration 
after the mailing of the first examiner's action pursuant to 
Sec. 1.104--$1,840.00 reduced by the amount of the application basic 
filing fee paid.
    (p) For submission of an information disclosure statement under 
Sec. 1.97(c)--$240.00
    (q) For filing a petition to the Commissioner under a section listed 
below which refers to this paragraph--$50.00.

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

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

By a small entity (Sec. 1.9(f))--$345.00
By other than a small entity--$690.00

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

By a small entity (Sec. 1.9(f))--$345.00
By other than a small entity--$690.00

[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 2033, Jan 17, 1992; 57 
FR 32439, July 22, 1992; 58 FR 38723, July 20, 1993; 58 FR 45841, Aug. 
31, 1993; 60 FR 20221, Apr. 25, 1995; 62 FR 40452, July 29, 1997; 62 FR 
53182, Oct. 10, 1997; 62 FR 61235, Nov. 17, 1997; 63 FR 67580, Dec. 8, 
1998; 64 FR 67777, Dec. 3, 1999; 65 FR 14871, Mar. 20, 2000]



Sec. 1.18  Patent issue fees.

    (a) Issue fee for issuing each original or reissue patent, except a 
design or plant patent:

By a small entity (Sec. 1.9(f))--$605.00
By other than a small entity--$1,210.00

    (b) Issue fee for issuing a design patent:

By a small entity (Sec. 1.9(f))--$215.00
By other than a small entity--$430.00

    (c) Issue fee for issuing a plant patent:

By a small entity (Sec. 1.9(f))--$290.00
By other than a small entity--$580.00

[63 FR 67580, Dec. 8, 1998]



Sec. 1.19  Document supply fees.

    The Patent and Trademark Office will supply copies of the following 
documents upon payment of the fees indicated:
    (a) Uncertified copies of patents:
    (1) Printed copy of a patent, including a design patent, statutory 
invention registration, or defensive publication document, except patent 
or statutory invention registration containing color drawing:
    (i) Regular service, which includes preparation of copies by the PTO 
within 2-3 business days and delivery by United States Postal Service or 
to a

[[Page 25]]

PTO Box; and preparation of copies by the PTO within one business day of 
receipt and delivery by electronic means (e.g., fax, electronic mail)--
$3.00.
    (ii) Next business day delivery to PTO Box--$6.00.
    (iii) Expedited delivery by commercial delivery service--$25.00.
    (2) Printed copy of a plant patent in color--$15.00
    (3) Copy of a utility patent or statutory invention registration 
containing color drawing (see Sec. 1.84(a)(2))--$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--$150.00
    (3) Certified or uncertified copies 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
    (c) Library service (35 U.S.C. 13): For providing to libraries 
copies of all patents issued annually, per annum--$50.00
    (d) For list of all United States patents and statutory invention 
registrations in a subclass--$3.00
    (e) Uncertified statement as to status of the payment of maintenance 
fees due on a patent or expiration of a patent--$10.00
    (f) Uncertified copy of a non-United States patent document, per 
document--$25.00
    (g) To compare and certify copies made from Patent and Trademark 
Office records, but not prepared by the Patent and Trademark Office, per 
copy of document--$25.00
    (h) Additional filing receipts; duplicate; or corrected due to 
applicant error--$25.00

[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
58 FR 38723, July 20, 1993; 60 FR 41022, Aug. 11, 1995; 62 FR 40452, 
July 29, 1997; 64 FR 67486, Dec. 2, 1999]



Sec. 1.20  Post issuance fees.

    (a) For providing a certificate of correction for applicant's 
mistake:

(Sec. 1.323)--$100.00

    (b) Petition for correction of inventorship in patent (Sec. 1.324)--
$130.00
    (c) For filing a request for reexamination (Sec. 1.510(a))--
$2,520.00
    (d) For filing each statutory disclaimer (Sec. 1.321):

By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00

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

By a small entity (Sec. 1.9(f))--$415.00
By other than a small entity--$830.00

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

By a small entity (Sec. 1.9(f))--$950.00
By other than a small entity--$1,900.00

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

By a small entity (Sec. 1.9(f))--$1,455.00
By other than a small entity--$2,910.00

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

By a small entity (Sec. 1.9(f))--$65.00
By other than a small entity--$130.00

    (i) Surcharge for accepting a maintenance fee after expiration of a 
patent for non-timely payment of a maintenance fee where the delay in 
payment is shown to the satisfaction of the Commissioner to have been--
    (1) Unavoidable--$700.00
    (2) Unintentional--$1,640.00
    (j) For filing an application for extension of the term of a patent 
(Sec. 1.740)--$1,060.00
    (1) Application for extension under Sec. 1.740--$1,120.00

[[Page 26]]

    (2) Initial application for interim extension under Sec. 1.790--
$420.00
    (3) Subsequent application for interim extension under Sec. 1.790--
$220.00

[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
57 FR 56450, Nov. 30, 1992; 58 FR 44280, Aug. 20, 1993; 60 FR 41022, 
Aug. 11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997; 
63 FR 67580, Dec. 8, 1998; 64 FR 67777, Dec. 3, 1999]



Sec. 1.21  Miscellaneous fees and charges.

    The Patent and Trademark Office has established the following fees 
for the services indicated:
    (a) Registration of attorneys and agents:
    (1) For admission to examination for registration to practice:
    (i) Application Fee (non-refundable)--$40.00
    (ii) Registration examination fee--$310.00
    (2) On registration to practice--$100.00
    (3) For reinstatement to practice--$40.00
    (4) For certificate of good standing as an attorney or agent--$10.00

Suitable for framing--$20.00

    (5) For review of a decision of the Director of Enrollment and 
Discipline under Sec. 10.2(c)--$130.00
    (6) For requesting regrading of an examination under Sec. 10.7(c):
    (i) Regrading of morning section (PTO Practice and Procedure)--
$230.00
    (ii) Regrading of afternoon section (Claim Drafting)--$230.00
    (b) Deposit accounts:
    (1) For establishing a deposit account--$10.00
    (2) Service charge for each month when the balance at the end of the 
month is below $1,000--$25.00
    (3) Service charge for each month when the balance at the end of the 
month is below $300 for restricted subscription deposit accounts used 
exclusively for subscription order of patent copies as issued--$25.00
    (c) Disclosure document: For filing a disclosure document--$10.00
    (d) Delivery box: Local delivery box rental, per annum--$50.00
    (e) International type search reports: For preparing an 
international type search report of an international type search made at 
the time of the first action on the merits in a national patent 
application--$40.00
    (f) [Reserved]
    (g) Self-service copy charge, per page--$0.25
    (h) For recording each assignment, agreement or other paper relating 
to the property in a patent or application, per property--$40.00
    (i) Publication in Official Gazette: For publication in the Official 
Gazette of a notice of the availability of an application or a patent 
for licensing or sale:

Each application or patent--$25.00

    (j) Labor charges for services, per hour or fraction thereof--$40.00
    (k) For items and services that the Commissioner finds may be 
supplied, for which fees are not specified by statute or by this part, 
such charges as may be determined by the Commissioner with respect to 
each such item or service--Actual Cost
    (l) For processing and retaining any application abandoned pursuant 
to Sec. 1.53(f), unless the required basic filing fee (Sec. 1.16)has 
been paid--$130.00
    (m) For processing each payment refused (including a check returned 
``unpaid'') or charged back by a financial institution--$50.00.
    (n) For handling an application in which proceedings are terminated 
pursuant to Sec. 1.53(e)--$130.00
    (o) Marginal cost, paid in advance, for each hour of terminal 
session time, including print time, using Automated Patent System full-
text search capabilities, prorated for the actual time used. The 
Commissioner may waive the payment by an individual for access to the 
Automated Patent System full-text search capability (APS-Text) upon a 
showing of need or hardship, and if such waiver is in the public 
interest--$40.00  

[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
57 FR 40493, Sept. 3, 1992; 59 FR 43741, Aug. 25, 1994; 60 FR 20222, 
Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39588, July 30, 1996; 
61 FR 43400, Aug. 22, 1996; 62 FR 40453, July 29, 1997; 62 FR 53183, 
Oct. 10, 1997; 63 FR 67580, Dec. 8, 1998; 65 FR 33455, May 24, 2000]

    Effective Date Note: At 65 FR 33455, May 24, 2000, Sec. 1.21 was 
amended by revising paragraph (m), effective July 24, 2000. For your 
convenience, the superseded text follows:

[[Page 27]]

Sec. 1.21  Miscellaneous fees and charges.

                                * * * * *

    (m) For processing each check returned ``unpaid'' by a bank--$50.00

                                * * * * *



Sec. 1.22  Fees payable in advance.

    (a) Patent and trademark fees and charges payable to the Patent and 
Trademark Office are required to be paid in advance, that is, at the 
time of requesting any action by the Office for which a fee or charge is 
payable with the exception that under Sec. 1.53 applications for patent 
may be assigned a filing date without payment of the basic filing fee.
    (b) All patent and trademark fees paid to the Patent and Trademark 
Office should be itemized in each individual application, patent or 
other proceeding in such a manner that it is clear for which purpose the 
fees are paid.


(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2708, Jan. 20, 1983]



Sec. 1.23  Methods of payment.

    (a) All payments of money required for United States Patent and 
Trademark Office fees, including fees for the processing of 
international applications (Sec. 1.445), shall be made in U.S. dollars 
and in the form of a cashier's or certified check, Treasury note, 
national bank notes, or United States Postal Service money order. If 
sent in any other form, the Office may delay or cancel the credit until 
collection is made. Checks and money orders must be made payable to the 
Director of the United States Patent and Trademark Office. (Checks made 
payable to the Commissioner of Patents and Trademarks will continue to 
be accepted.) Payments from foreign countries must be payable and 
immediately negotiable in the United States for the full amount of the 
fee required. Money sent to the Office by mail will be at the risk of 
the sender, and letters containing money should be registered with the 
United States Postal Service.
    (b) Payments of money required for United States Patent and 
Trademark Office fees may also be made by credit card. Payment of a fee 
by credit card must specify the amount to be charged to the credit card 
and such other information as is necessary to process the charge, and is 
subject to collection of the fee. The Office will not accept a general 
authorization to charge fees to a credit card. If credit card 
information is provided on a form or document other than a form provided 
by the Office for the payment of fees by credit card, the Office will 
not be liable if the credit card number becomes public knowledge.

[65 FR 33455, May 24, 2000]



Sec. 1.24  Coupons.

    Coupons in denominations of three dollars, for the purchase of 
patents, designs, defensive publications, statutory invention 
registrations, and trademark registrations are sold by the Patent and 
Trademark Office for the convenience of the general public; these 
coupons may not be used for any other purpose. The three-dollar coupons 
are sold individually and in books of 50 for $150.00. These coupons are 
good until used; they may be transferred but cannot be redeemed.

[56 FR 65153, Dec. 13, 1991]



Sec. 1.25  Deposit accounts.

    (a) For the convenience of attorneys, and the general public in 
paying any fees due, in ordering services offered by the Office, copies 
of records, etc., deposit accounts may be established in the Patent and 
Trademark Office upon payment of the fee for establishing a deposit 
account (Sec. 1.21(b)(1)). A minimum deposit of $1,000 is required for 
paying any fees due or in ordering any services offered by the Office. 
However, a minimum deposit of $300 may be paid to establish a restricted 
subscription deposit account used exclusively for subscription order of 
patent copies as issued. At the end of each month, a deposit account 
statement will be rendered. A remittance must be made promptly upon 
receipt of the statement to cover the value of items or services charged 
to the account and thus restore the account to its established normal 
deposit. An amount sufficient to cover all fees, services, copies, etc.,

[[Page 28]]

requested must always be on deposit. Charges to accounts with 
insufficient funds will not be accepted. A service charge 
(Sec. 1.21(b)(2)) will be assessed for each month that the balance at 
the end of the month is below $1,000. For restricted subscription 
deposit accounts, a service charge (Sec. 1.21(b)(3)) will be assessed 
for each month that the balance at the end of the month is below $300.
    (b) Filing, issue, appeal, international-type search report, 
international application processing, petition, and post-issuance fees 
may be charged against these accounts if sufficient funds are on deposit 
to cover such fees. A general authorization to charge all fees, or only 
certain fees, set forth in Secs. 1.16 to 1.18 to a deposit account 
containing sufficient funds may be filed in an individual application, 
either for the entire pendency of the application or with respect to a 
particular paper filed. An authorization to charge to a deposit account 
the fee for a request for reexamination pursuant to Sec. 1.510 and any 
other fees required in a reexamination proceeding in a patent may also 
be filed with the request for reexamination. An authorization to charge 
a fee to a deposit account will not be considered payment of the fee on 
the date the authorization to charge the fee is effective as to the 
particular fee to be charged unless sufficient funds are present in the 
account to cover the fee.


(35 U.S.C. 6, Pub. L. 97-247)

[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985]



Sec. 1.26  Refunds.

    (a) Any fee paid by actual mistake or in excess of that required 
will be refunded, but a mere change of purpose after the payment of 
money, as when a party desires to withdraw an application, an appeal, or 
a request for oral hearing, will not entitle a party to demand such a 
return. Amounts of twenty-five dollars or less will not be returned 
unless specifically requested within a reasonable time, nor will the 
payer be notified of such amounts; amounts over twenty-five dollars may 
be returned by check or, if requested, by credit to a deposit account.
    (b) [Reserved]
    (c) If the Commissioner decides not to institute a reexamination 
proceeding, a refund of $1,690 will be made to the requester of the 
proceeding. Reexamination requesters should indicate whether any refund 
should be made by check or by credit to a deposit account.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985; 
54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 
21, 1992; 62 FR 53183, Oct. 10, 1997]



Sec. 1.27  Statement of status as small entity.

    (a) Any person seeking to establish status as a small entity 
(Sec. 1.9(f) of this part) for purposes of paying fees in an application 
or a patent must file a statement in the application or patent prior to 
or with the first fee paid as a small entity. Such a statement need only 
be filed once in an application or patent and remains in effect until 
changed.
    (b) When establishing status as a small entity pursuant to paragraph 
(a) of this section, any statement filed on behalf of an independent 
inventor must be signed by the independent inventor except as provided 
in Sec. 1.42, Sec. 1.43, or Sec. 1.47 of this part and must state that 
the inventor qualifies as an independent inventor in accordance with 
Sec. 1.9(c) of this part. Where there are joint inventors in an 
application, each inventor must file a statement establishing status as 
an independent inventor in order to qualify as a small entity. Where any 
rights have been assigned, granted, conveyed, or licensed, or there is 
an obligation to assign, grant, convey, or license, any rights to a 
small business concern, a nonprofit organization, or any other 
individual, a statement must be filed by the individual, the owner of 
the small business concern, or an official of the small business concern 
or nonprofit organization empowered to act on behalf of the small 
business concern or nonprofit organization identifying their status. For 
purposes of a statement under this paragraph, a license to a Federal 
agency resulting from a funding agreement with that agency pursuant to 
35 U.S.C. 202(c)(4) does not constitute a license as set forth in 
Sec. 1.9 of this part.

[[Page 29]]

    (c)(1) Any statement filed pursuant to paragraph (a) of this section 
on behalf of a small business concern must:
    (i) Be signed by the owner or an official of the small business 
concern empowered to act on behalf of the concern;
    (ii) State that the concern qualifies as a small business concern as 
defined in Sec. 1.9(d); and
    (iii) State that the exclusive rights to the invention have been 
conveyed to and remain with the small business concern or, if the rights 
are not exclusive, that all other rights belong to small entities as 
defined in Sec. 1.9.
    (2) Where the rights of the small business concern as a small entity 
are not exclusive, a statement must also be filed by the other small 
entities having rights stating their status as such. For purposes of a 
statement under this paragraph, a license to a Federal agency resulting 
from a funding agreement with that agency pursuant to 35 U.S.C. 
202(c)(4) does not constitute a license as set forth in Sec. 1.9 of this 
part.
    (d)(1) Any statement filed pursuant to paragraph (a) of this section 
on behalf of a nonprofit organization must:
    (i) Be signed by an official of the nonprofit organization empowered 
to act on behalf of the organization;
    (ii) State that the organization qualifies as a nonprofit 
organization as defined in Sec. 1.9(e) of this part specifying under 
which one of Sec. 1.9(e) (1), (2), (3), or (4) of this part the 
organization qualifies; and
    (iii) State that exclusive rights to the invention have been 
conveyed to and remain with the organization or if the rights are not 
exclusive that all other rights belong to small entities as defined in 
Sec. 1.9 of this part.
    (2) Where the rights of the nonprofit organization as a small entity 
are not exclusive, a statement must also be filed by the other small 
entities having rights stating their status as such. For purposes of a 
statement under this paragraph, a license to a Federal agency pursuant 
to 35 U.S.C. 202(c)(4) does not constitute a conveyance of rights as set 
forth in this paragraph.

[62 FR 53183, Oct. 10, 1997]



Sec. 1.28  Effect on fees of failure to establish status, or change status, as a small entity.

    (a)(1) The failure to establish status as a small entity 
(Secs. 1.9(f) and 1.27 of this part) in any application or patent prior 
to paying, or at the time of paying, any fee precludes payment of the 
fee in the amount established for small entities. A refund pursuant to 
Sec. 1.26 of this part, based on establishment of small entity status, 
of a portion of fees timely paid in full prior to establishing status as 
a small entity may only be obtained if a statement under Sec. 1.27 and a 
request for a refund of the excess amount are filed within two months of 
the date of the timely payment of the full fee. The two-month time 
period is not extendable under Sec. 1.136. Status as a small entity is 
waived for any fee by the failure to establish the status prior to 
paying, at the time of paying, or within two months of the date of 
payment of, the fee.
    (2) Status as a small entity must be specifically established in 
each application or patent in which the status is available and desired. 
Status as a small entity in one application or patent does not affect 
any other application or patent, including applications or patents which 
are directly or indirectly dependent upon the application or patent in 
which the status has been established. The refiling of an application 
under Sec. 1.53 as a continuation, division, or continuation-in-part 
(including a continued prosecution application under Sec. 1.53(d)), or 
the filing of a reissue application requires a new determination as to 
continued entitlement to small entity status for the continuing or 
reissue application. A nonprovisional application claiming benefit under 
35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application, or a 
reissue application may rely on a statement filed in the prior 
application or in the patent if the nonprovisional application or the 
reissue application includes a reference to the statement in the prior 
application or in the patent or includes a copy of the statement in the 
prior application or in the patent and status as a small entity is still 
proper and desired. The payment of the small entity

[[Page 30]]

basic statutory filing fee will be treated as such a reference for 
purposes of this section.
    (3) Once status as a small entity has been established in an 
application or patent, the status remains in that application or patent 
without the filing of a further statement pursuant to Sec. 1.27 of this 
part unless the Office is notified of a change in status.
    (b) Once status as a small entity has been established in an 
application or patent, fees as a small entity may thereafter be paid in 
that application or patent without regard to a change in status until 
the issue fee is due or any maintenance fee is due. Notification of any 
change in status resulting in loss of entitlement to small entity status 
must be filed in the application or patent prior to paying, or at the 
time of paying, the earliest of the issue fee or any maintenance fee due 
after the date on which status as a small entity is no longer 
appropriate pursuant to Sec. 1.9 of this part. The notification of 
change in status may be signed by the applicant, any person authorized 
to sign on behalf of the assignee, or an attorney or agent of record or 
acting in a representative capacity pursuant to Sec. 1.34(a) of this 
part.
    (c) If status as a small entity is established in good faith, and 
fees as a small entity are paid in good faith, in any application or 
patent, and it is later discovered that such status as a small entity 
was established in error or that through error the Office was not 
notified of a change in status as required by paragraph (b) of this 
section, the error will be excused upon payment of the deficiency 
between the amount paid and the amount due. The deficiency is based on 
the amount of the fee, for other than a small entity, in effect at the 
time the deficiency is paid in full.
    (d)(1) Any attempt to fraudulently (i) establish status as a small 
entity or (ii) pay fees as a small entity shall be considered as a fraud 
practiced or attempted on the Office.
    (2) Improperly and with intent to deceive
    (i) Establishing status as a small entity, or
    (ii) Paying fees as a small entity shall be considered as a fraud 
practiced or attempted on the Office.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[47 FR 40140, Sept. 10, 1982, as amended at 49 FR 553, Jan. 4, 1984; 57 
FR 2033, Jan. 17, 1992; 58 FR 54509, Oct. 22, 1993; 60 FR 20222, Apr. 
25, 1995; 62 FR 53183, Oct. 10, 1997]



                Subpart B--National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent



Sec. 1.31  Applicants may be represented by a registered attorney or agent.

    An applicant for patent may file and prosecute his or her own case, 
or he or she may be represented by a registered attorney, registered 
agent, or other individual authorized to practice before the Patent and 
Trademark Office in patent cases. See Secs. 10.6 and 10.9 of this 
subchapter. The Patent and Trademark Office cannot aid in the selection 
of a registered attorney or agent.

[50 FR 5171, Feb. 6, 1985]



Sec. 1.32  [Reserved]



Sec. 1.33  Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

    (a) The applicant, the assignee(s) of the entire interest (see 
Secs. 3.71 and 3.73) or an attorney or agent of record (see 
Sec. 1.34(b)) may specify a correspondence address to which 
communications about the application are to be directed. All notices, 
official letters, and other communications in the application will be 
directed to the correspondence address or, if no such correspondence 
address is specified, to an attorney or agent of record (see 
Sec. 1.34(b)), or, if no attorney or agent is of record, to the 
applicant, so long as a post office address has been furnished in the 
application. Double correspondence with an applicant and an attorney or 
agent, or with more than one attorney or agent, will not be undertaken. 
If more than one attorney or agent is made of record and a 
correspondence address has not been specified, correspondence will be 
held with the one last made of record.

[[Page 31]]

    (b) Amendments and other papers filed in the application must be 
signed by:
    (1) An attorney or agent of record appointed in compliance with 
Sec. 1.34(b);
    (2) A registered attorney or agent not of record who acts in a 
representative capacity under the provisions of Sec. 1.34(a);
    (3) The assignee of record of the entire interest, if there is an 
assignee of record of the entire interest;
    (4) An assignee of record of an undivided part interest, and any 
assignee(s) of the remaining interest and any applicant retaining an 
interest, if there is an assignee of record of an undivided part 
interest; or
    (5) All of the applicants (Secs. 1.42, 1.43 and 1.47) for patent, 
unless there is an assignee of record of the entire interest and such 
assignee has taken action in the application in accordance with 
Secs. 3.71 and 3.73.
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed to 
the attorney or agent of record (see Sec. 1.34(b)) in the patent file at 
the address listed on the register of patent attorneys and agents 
maintained pursuant to Secs. 10.5 and 10.11 or, if no attorney or agent 
is of record, to the patent owner or owners at the address or addresses 
of record. Amendments and other papers filed in a reexamination 
proceeding on behalf of the patent owner must be signed by the patent 
owner, or if there is more than one owner by all the owners, or by an 
attorney or agent of record in the patent file, or by a registered 
attorney or agent not of record who acts in a representative capacity 
under the provisions of Sec. 1.34(a). Double correspondence with the 
patent owner or owners and the patent owner's attorney or agent, or with 
more than one attorney or agent, will not be undertaken. If more than 
one attorney or agent is of record and a correspondence address has not 
been specified, correspondence will be held with the last attorney or 
agent made of record.
    (d) A ``correspondence address'' or change thereto may be filed with 
the Patent and Trademark Office during the enforceable life of the 
patent. The ``correspondence address'' will be used in any 
correspondence relating to maintenance fees unless a separate ``fee 
address'' has been specified. See Sec. 1.363 for ``fee address'' used 
solely for maintenance fee purposes.

[36 FR 12617, July 2, 1971, as amended at 46 FR 29181, May 29, 1981; 49 
FR 34724, Aug. 31, 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10, 
1997]



Sec. 1.34  Recognition for representation.

    (a) When a registered attorney or agent acting in a representative 
capacity appears in person or signs a paper in practice before the 
Patent and Trademark Office in a patent case, his or her personal 
appearance or signature shall constitute a representation to the Patent 
and Trademark Office that under the provisions of this subchapter and 
the law, he or she is authorized to represent the particular party in 
whose behalf he or she acts. In filing such a paper, the registered 
attorney or agent should specify his or her registration number with his 
or her signature. Further proof of authority to act in a representative 
capacity may be required.
    (b) When an attorney or agent shall have filed his or her power of 
attorney, or authorization, duly executed by the person or persons 
entitled to prosecute an application or a patent involved in a 
reexamination proceeding, he or she is a principal attorney of record in 
the case. A principal attorney or agent, so appointed, may appoint an 
associate attorney or agent who shall also then be of record.

[46 FR 29181, May 29, 1981, as amended at 50 FR 5171, Feb. 6, 1985]



Sec. 1.36  Revocation of power of attorney or authorization; withdrawal of attorney or agent.

    A power of attorney or authorization of agent may be revoked at any 
stage in the proceedings of a case, and an attorney or agent may 
withdraw, upon application to and approval by the Commissioner. An 
attorney or agent, except an associate attorney or agent whose address 
is the same as that of the principal attorney or agent, will be notified 
of the revocation of the power of attorney or authorization, and the 
applicant or patent owner will be notified of the withdrawal of the 
attorney

[[Page 32]]

or agent. An assignment will not of itself operate as a revocation of a 
power or authorization previously given, but the assignee of the entire 
interest may revoke previous powers and be represented by an attorney or 
agent of the assignee's own selection. See Sec. 1.613(d) for withdrawal 
of an attorney or agent of record in an interference.

[49 FR 48452, Dec. 12, 1984]

                       Who May Apply for a Patent



Sec. 1.41  Applicant for patent.

    (a) A patent is applied for in the name or names of the actual 
inventor or inventors.
    (1) The inventorship of a nonprovisional application is that 
inventorship set forth in the oath or declaration as prescribed by 
Sec. 1.63, except as provided for in Sec. 1.53(d)(4) and Sec. 1.63(d). 
If an oath or declaration as prescribed by Sec. 1.63 is not filed during 
the pendency of a nonprovisional application, the inventorship is that 
inventorship set forth in the application papers filed pursuant to 
Sec. 1.53(b), unless a petition under this paragraph accompanied by the 
fee set forth in Sec. 1.17(i) is filed supplying or changing the name or 
names of the inventor or inventors.
    (2) The inventorship of a provisional application is that 
inventorship set forth in the cover sheet as prescribed by 
Sec. 1.51(c)(1). If a cover sheet as prescribed by Sec. 1.51(c)(1) is 
not filed during the pendency of a provisional application, the 
inventorship is that inventorship set forth in the application papers 
filed pursuant to Sec. 1.53(c), unless a petition under this paragraph 
accompanied by the fee set forth in Sec. 1.17(q) is filed supplying or 
changing the name or names of the inventor or inventors.
    (3) In a nonprovisional application filed without an oath or 
declaration as prescribed by Sec. 1.63 or a provisional application 
filed without a cover sheet as prescribed by Sec. 1.51(c)(1), the name 
or names of person or persons believed to be the actual inventor or 
inventors should be provided for identification purposes when the 
application papers pursuant to Sec. 1.53(b) or (c) are filed. If no name 
of a person believed to be an actual inventor is so provided, the 
application should include an applicant identifier consisting of 
alphanumeric characters.
    (b) Unless the contrary is indicated the word ``applicant'' when 
used in these sections refers to the inventor or joint inventors who are 
applying for a patent, or to the person mentioned in Secs. 1.42, 1.43, 
or 1.47 who is applying for a patent in place of the inventor.
    (c) Any person authorized by the applicant may file an application 
for patent on behalf of the inventor or inventors, but an oath or 
declaration for the application (Sec. 1.63) can only be made in 
accordance with Sec. 1.64.
    (d) A showing may be required from the person filing the application 
that the filing was authorized where such authorization comes into 
question.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 62 
FR 53184, Oct. 10, 1997]



Sec. 1.42  When the inventor is dead.

    In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the deceased inventor may make the 
necessary oath or declaration, and apply for and obtain the patent. 
Where the inventor dies during the time intervening between the filing 
of the application and the granting of a patent thereon, the letters 
patent may be issued to the legal representative upon proper 
intervention.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2709, Jan. 20, 1983]



Sec. 1.43  When the inventor is insane or legally incapacitated.

    In case an inventor is insane or otherwise legally incapacitated, 
the legal representative (guardian, conservator, etc.) of such inventor 
may make the necessary oath or declaration, and apply for and obtain the 
patent.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2709, Jan. 20, 1983]



Sec. 1.44  Proof of authority.

    In the cases mentioned in Secs. 1.42 and 1.43, proof of the power or 
authority of the legal representative must be recorded in the Patent and 
Trademark

[[Page 33]]

Office or filed in the application before the grant of a patent.

(35 U.S.C. 6, 111, 116, 117, 118)



Sec. 1.45  Joint inventors.

    (a) Joint inventors must apply for a patent jointly and each must 
make the required oath or declaration: neither of them alone, nor less 
than the entire number, can apply for a patent for an invention invented 
by them jointly, except as provided in Sec. 1.47.
    (b) Inventors may apply for a patent jointly even though
    (1) They did not physically work together or at the same time,
    (2) Each inventor did not make the same type or amount of 
contribution, or
    (3) Each inventor did not make a contribution to the subject matter 
of every claim of the application.
    (c) If multiple inventors are named in a nonprovisional application, 
each named inventor must have made a contribution, individually or 
jointly, to the subject matter of at least one claim of the application 
and the application will be considered to be a joint application under 
35 U.S.C. 116. If multiple inventors are named in a provisional 
application, each named inventor must have made a contribution, 
individually or jointly, to the subject matter disclosed in the 
provisional application and the provisional application will be 
considered to be a joint application under 35 U.S.C. 116.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2709, Jan. 20, 1983, as amended at 50 FR 9379, Mar. 7, 1985; 60 
FR 20222, Apr. 25, 1995]



Sec. 1.46  Assigned inventions and patents.

    In case the whole or a part interest in the invention or in the 
patent to be issued is assigned, the application must still be made or 
authorized to be made, and an oath or declaration signed, by the 
inventor or one of the persons mentioned in Sec. 1.42, 1.43, or 1.47. 
However, the patent may be issued to the assignee or jointly to the 
inventor and the assignee as provided in Sec. 3.81.

(35 U.S.C. 6, Pub. L. 97-247)

[57 FR 29642, July 6, 1992]



Sec. 1.47  Filing when an inventor refuses to sign or cannot be reached.

    (a) If a joint inventor refuses to join in an application for patent 
or cannot be found or reached after diligent effort, the application may 
be made by the other inventor on behalf of himself or herself and the 
nonsigning inventor. The oath or declaration in such an application must 
be accompanied by a petition including proof of the pertinent facts, the 
fee set forth in Sec. 1.17(i) and the last known address of the 
nonsigning inventor. The Patent and Trademark Office shall, except in a 
continued prosecution application under Sec. 1.53(d), forward notice of 
the filing of the application to the nonsigning inventor at said address 
and publish notice of the filing of the application in the Official 
Gazette. The nonsigning inventor may subsequently join in the 
application on filing an oath or declaration complying with Sec. 1.63.
    (b) Whenever all of the inventors refuse to execute an application 
for patent, or cannot be found or reached after diligent effort, a 
person to whom an inventor has assigned or agreed in writing to assign 
the invention or who otherwise shows sufficient proprietary interest in 
the matter justifying such action may make application for patent on 
behalf of and as agent for all the inventors. The oath or declaration in 
such an application must be accompanied by a petition including proof of 
the pertinent facts, a showing that such action is necessary to preserve 
the rights of the parties or to prevent irreparable damage, the fee set 
forth in Sec. 1.17(i), and the last known address of all of the 
inventors. The Office shall, except in a continued prosecution 
application under Sec. 1.53(d), forward notice of the filing of the 
application to all of the inventors at the addresses stated in the 
application and publish notice of the filing of the application in the 
Official Gazette. An inventor may subsequently join in the application 
on filing an oath or declaration complying with Sec. 1.63.

[62 FR 53184, Oct. 10, 1997]

[[Page 34]]



Sec. 1.48  Correction of inventorship in a patent application, other than a reissue application.

    (a) If the inventive entity is set forth in error in an executed 
Sec. 1.63 oath or declaration in an application, other than a reissue 
application, and such error arose without any deceptive intention on the 
part of the person named as an inventor in error or on the part of the 
person who through error was not named as an inventor, the application 
may be amended to name only the actual inventor or inventors. When the 
application is involved in an interference, the amendment must comply 
with the requirements of this section and must be accompanied by a 
motion under Sec. 1.634. Such amendment must be accompanied by:
    (1) A petition including a statement from each person being added as 
an inventor and from each person being deleted as an inventor that the 
error in inventorship occurred without deceptive intention on his or her 
part;
    (2) An oath or declaration by the actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
    (3) The fee set forth in Sec. 1.17(i); and
    (4) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b)).
    (b) If the correct inventors are named in a nonprovisional 
application, other than a reissue application, and the prosecution of 
the application results in the amendment or cancellation of claims so 
that fewer than all of the currently named inventors are the actual 
inventors of the invention being claimed in the application, an 
amendment must be filed deleting the name or names of the person or 
persons who are not inventors of the invention being claimed. When the 
application is involved in an interference, the amendment must comply 
with the requirements of this section and must be accompanied by a 
motion under Sec. 1.634. Such amendment must be accompanied by:
    (1) A petition including a statement identifying each named inventor 
who is being deleted and acknowledging that the inventor's invention is 
no longer being claimed in the application; and
    (2) The fee set forth in Sec. 1.17(i).
    (c) If a nonprovisional application, other than a reissue 
application, discloses unclaimed subject matter by an inventor or 
inventors not named in the application, the application may be amended 
to add claims to the subject matter and name the correct inventors for 
the application. When the application is involved in an interference, 
the amendment must comply with the requirements of this section and must 
be accompanied by a motion under Sec. 1.634. Such amendment must be 
accompanied by:
    (1) A petition including a statement from each person being added as 
an inventor that the amendment is necessitated by amendment of the 
claims and that the inventorship error occurred without deceptive 
intention on his or her part;
    (2) An oath or declaration by the actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
    (3) The fee set forth in Sec. 1.17(i); and
    (4) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b)).
    (d) If the name or names of an inventor or inventors were omitted in 
a provisional application through error without any deceptive intention 
on the part of the omitted inventor or inventors, the provisional 
application may be amended to add the name or names of the omitted 
inventor or inventors. Such amendment must be accompanied by:
    (1) A petition including a statement that the inventorship error 
occurred without deceptive intention on the part of the omitted inventor 
or inventors; and
    (2) The fee set forth in Sec. 1.17(q).
    (e) If a person or persons were named as an inventor or inventors in 
a provisional application through error without any deceptive intention 
on the part of such person or persons, an amendment may be filed in the 
provisional application deleting the name or names of the person or 
persons who were erroneously named. Such amendment must be accompanied 
by:
    (1) A petition including a statement by the person or persons whose 
name

[[Page 35]]

or names are being deleted that the inventorship error occurred without 
deceptive intention on the part of such person or persons;
    (2) The fee set forth in Sec. 1.17(q); and
    (3) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b)).
    (f)(1) If the correct inventor or inventors are not named on filing 
a nonprovisional application under Sec. 1.53(b) without an executed oath 
or declaration under Sec. 1.63, the later submission of an executed oath 
or declaration under Sec. 1.63 during the pendency of the application 
will act to correct the earlier identification of inventorship.
    (2) If the correct inventor or inventors are not named on filing a 
provisional application without a cover sheet under Sec. 1.51(c)(1), the 
later submission of a cover sheet under Sec. 1.51(c)(1) during the 
pendency of the application will act to correct the earlier 
identification of inventorship.
    (g) The Office may require such other information as may be deemed 
appropriate under the particular circumstances surrounding the 
correction of inventorship.

[62 FR 53185, Oct. 10, 1997]

                             The Application



Sec. 1.51  General requisites of an application.

    (a) Applications for patents must be made to the Commissioner of 
Patents and Trademarks.
    (b) A complete application filed under Sec. 1.53(b) comprises:
    (1) A specification as prescribed by 35 U.S.C. 112, including a 
claim or claims, see Secs. 1.71 to 1.77;
    (2) An oath or declaration, see Sec. 1.63 and Sec. 1.68;
    (3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (4) The prescribed filing fee, see Sec. 1.16.
    (c) A complete provisional application filed under Sec. 1.53(c) 
comprises:
    (1) A cover sheet identifying:
    (i) The application as a provisional application,
    (ii) The name or names of the inventor or inventors, (see 
Sec. 1.41(a)(2)),
    (iii) The residence of each named inventor,
    (iv) The title of the invention,
    (v) The name and registration number of the attorney or agent (if 
applicable),
    (vi) The docket number used by the person filing the application to 
identify the application (if applicable),
    (vii) The correspondence address, and
    (viii) The name of the U.S. Government agency and Government 
contract number (if the invention was made by an agency of the U.S. 
Government or under a contract with an agency of the U.S. Government);
    (2) A specification as prescribed by the first paragraph of 35 
U.S.C. 112, see Sec. 1.71;
    (3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (4) The prescribed filing fee, see Sec. 1.16.
    (d) Applicants are encouraged to file an information disclosure 
statement in nonprovisional applications. See Sec. 1.97 and Sec. 1.98. 
No information disclosure statement may be filed in a provisional 
application.

[62 FR 53185, Oct. 10, 1997]



Sec. 1.52  Language, paper, writing, margins.

    (a) The application, any amendments or corrections thereto, and the 
oath or declaration must be in the English language except as provided 
for in Sec. 1.69 and paragraph (d) of this section, or be accompanied by 
a translation of the application and a translation of any corrections or 
amendments into the English language together with a statement that the 
translation is accurate. All papers which are to become a part of the 
permanent records of the Patent and Trademark Office must be legibly 
written either by a typewriter or mechanical printer in permanent dark 
ink or its equivalent in portrait orientation on flexible, strong, 
smooth, non-shiny, durable, and white paper. All of the application 
papers must be presented in a form having sufficient clarity and 
contrast between the paper and the writing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes 
and electronic reproduction by use of digital

[[Page 36]]

imaging and optical character recognition. If the papers are not of the 
required quality, substitute typewritten or mechanically printed papers 
of suitable quality will be required. See Sec. 1.125 for filing 
substitute typewritten or mechanically printed papers constituting a 
substitute specification when required by the Office.
    (b) Except for drawings, the application papers (specification, 
including claims, abstract, oath or declaration, and papers as provided 
for in this part) and also papers subsequently filed, must have each 
page plainly written on only one side of a sheet of paper, with the 
claim or claims commencing on a separate sheet and the abstract 
commencing on a separate sheet. See Secs. 1.72(b) and 1.75(h). The 
sheets of paper must be the same size and either 21.0 cm. by 29.7 cm. 
(DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches). Each sheet 
must include a top margin of at least 2.0 cm. (\3/4\ inch), a left side 
margin of at least 2.5 cm. (1 inch), a right side margin of at least 2.0 
cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm. (\3/4\ inch), 
and no holes should be made in the sheets as submitted. The lines of the 
specification, and any amendments to the specification, must be 1\1/2\ 
or double spaced. The pages of the specification including claims and 
abstract must be numbered consecutively, starting with 1, the numbers 
being centrally located above or preferably, below, the text. See 
Sec. 1.84 for drawings.
    (c) Any interlineation, erasure, cancellation or other alteration of 
the application papers filed should be made on or before the signing of 
any accompanying oath or declaration pursuant to Sec. 1.63 referring to 
those application papers and should be dated and initialed or signed by 
the applicant on the same sheet of paper. Application papers containing 
alterations made after the signing of an oath or declaration referring 
to those application papers must be supported by a supplemental oath or 
declaration under Sec. 1.67(c). After the signing of the oath or 
declaration referring to the application papers, amendments may only be 
made in the manner provided by Sec. 1.121.
    (d) An application may be filed in a language other than English. An 
English translation of the non-English-language application, a statement 
that the translation is accurate, and the fee set forth in Sec. 1.17(k) 
are required to be filed with the application or within such time as may 
be set by the Office.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[43 FR 20462, May. 11, 1978, as amended at 47 FR 41275, Sept. 17, 1982; 
48 FR 2709, Jan. 20, 1983; 49 FR 554, Jan. 4, 1984; 57 FR 2033, Jan. 17, 
1992; 61 FR 42803, Aug. 19, 1996; 62 FR 53186, Oct. 10, 1997]



Sec. 1.53  Application number, filing date, and completion of application.

    (a) Application number. Any papers received in the Patent and 
Trademark Office which purport to be an application for a patent will be 
assigned an application number for identification purposes.
    (b) Application filing requirements--Nonprovisional application. The 
filing date of an application for patent filed under this section, 
except for a provisional application under paragraph (c) of this section 
or a continued prosecution application under paragraph (d) of this 
section, is the date on which a specification as prescribed by 35 U.S.C. 
112 containing a description pursuant to Sec. 1.71 and at least one 
claim pursuant to Sec. 1.75, and any drawing required by Sec. 1.81(a) 
are filed in the Patent and Trademark Office. No new matter may be 
introduced into an application after its filing date. A continuing 
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35 
U.S.C. 120, 121 or 365(c) and Sec. 1.78(a).
    (1) A continuation or divisional application that names as inventors 
the same or fewer than all of the inventors named in the prior 
application may be filed under this paragraph or paragraph (d) of this 
section.
    (2) A continuation-in-part application (which may disclose and claim 
subject matter not disclosed in the prior application) or a continuation 
or divisional application naming an inventor not named in the prior 
application must be filed under this paragraph.
    (c) Application filing requirements--Provisional application. The 
filing date of a provisional application is the date

[[Page 37]]

on which a specification as prescribed by the first paragraph of 35 
U.S.C. 112, and any drawing required by Sec. 1.81(a) are filed in the 
Patent and Trademark Office. No amendment, other than to make the 
provisional application comply with the patent statute and all 
applicable regulations, may be made to the provisional application after 
the filing date of the provisional application.
    (1) A provisional application must also include the cover sheet 
required by Sec. 1.51(c)(1) or a cover letter identifying the 
application as a provisional application. Otherwise, the application 
will be treated as an application filed under paragraph (b) of this 
section.
    (2) An application for patent filed under paragraph (b) of this 
section may be converted to a provisional application and be accorded 
the original filing date of the application filed under paragraph (b) of 
this section,
    (i) Provided that a petition requesting the conversion, with the fee 
set forth in Sec. 1.17(q), is filed prior to the earliest of:
    (A) Abandonment of the application filed under paragraph (b) of this 
section;
    (B) Payment of the issue fee on the application filed under 
paragraph (b) of this section;
    (C) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) of this section; or
    (D) The filing of a request for a statutory invention registration 
under Sec. 1.293 in the application filed under paragraph (b) of this 
section.
    (ii) The grant of any such petition will not entitle applicant to a 
refund of the fees which were properly paid in the application filed 
under paragraph (b) of this section.
    (3) A provisional application filed under paragraph (c) of this 
section may be converted to a nonprovisional application filed under 
paragraph (b) of this section and accorded the original filing date of 
the provisional application. The conversion of a provisional application 
to a nonprovisional application will not result in either the refund of 
any fee properly paid in the provisional application or the application 
of any such fee to the filing fee, or any other fee, for the 
nonprovisional application. A request to convert a provisional 
application to a nonprovisional application must be accompanied by the 
fee set forth in Sec. 1.17(i) and an amendment including at least one 
claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the 
provisional application under paragraph (c) of this section otherwise 
contains at least one claim as prescribed by the second paragraph of 35 
U.S.C. 112. A request to convert a provisional application to a 
nonprovisional application must also be filed prior to the earliest of:
    (i) Abandonment of the provisional application filed under paragraph 
(c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under paragraph (c) of this section.
    (4) A provisional application is not entitled to the right of 
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or 
Sec. 1.78 of any other application. No claim for priority under 
Sec. 1.78(a)(3) may be made in a design application based on a 
provisional application. No request under Sec. 1.293 for a statutory 
invention registration may be filed in a provisional application. The 
requirements of Secs. 1.821 through 1.825 regarding application 
disclosures containing nucleotide and/or amino acid sequences are not 
mandatory for provisional applications.
    (d) Application filing requirements--Continued prosecution 
(nonprovisional) application. (1) A continuation or divisional 
application (but not a continuation-in-part) of a prior nonprovisional 
application may be filed as a continued prosecution application under 
this paragraph, provided that:
    (i) The prior nonprovisional application is:
    (A) A utility or plant application that was filed under 35 U.S.C. 
111(a) before May 29, 2000, and is complete as defined by Sec. 1.51(b);
    (B) A design application that is complete as defined by 
Sec. 1.51(b); or
    (C) The national stage of an international application that was 
filed under 35 U.S.C. 363 before May 29, 2000, and is in compliance with 
35 U.S.C. 371; and

[[Page 38]]

    (ii) The application under this paragraph is filed before the 
earliest of:
    (A) Payment of the issue fee on the prior application, unless a 
petition under Sec. 1.313(c) is granted in the prior application;
    (B) Abandonment of the prior application; or
    (C) Termination of proceedings on the prior application.
    (2) The filing date of a continued prosecution application is the 
date on which a request on a separate paper for an application under 
this paragraph is filed. An application filed under this paragraph:
    (i) Must identify the prior application;
    (ii) Discloses and claims only subject matter disclosed in the prior 
application;
    (iii) Names as inventors the same inventors named in the prior 
application on the date the application under this paragraph was filed, 
except as provided in paragraph (d)(4) of this section;
    (iv) Includes the request for an application under this paragraph, 
will utilize the file jacket and contents of the prior application, 
including the specification, drawings and oath or declaration from the 
prior application, to constitute the new application, and will be 
assigned the application number of the prior application for 
identification purposes; and
    (v) Is a request to expressly abandon the prior application as of 
the filing date of the request for an application under this paragraph.
    (3) The filing fee for a continued prosecution application filed 
under this paragraph is:
    (i) The basic filing fee as set forth in Sec. 1.16; and
    (ii) Any additional Sec. 1.16 fee due based on the number of claims 
remaining in the application after entry of any amendment accompanying 
the request for an application under this paragraph and entry of any 
amendments under Sec. 1.116 unentered in the prior application which 
applicant has requested to be entered in the continued prosecution 
application.
    (4) An application filed under this paragraph may be filed by fewer 
than all the inventors named in the prior application, provided that the 
request for an application under this paragraph when filed is 
accompanied by a statement requesting deletion of the name or names of 
the person or persons who are not inventors of the invention being 
claimed in the new application. No person may be named as an inventor in 
an application filed under this paragraph who was not named as an 
inventor in the prior application on the date the application under this 
paragraph was filed, except by way of a petition under Sec. 1.48.
    (5) Any new change must be made in the form of an amendment to the 
prior application as it existed prior to the filing of an application 
under this paragraph. No amendment in an application under this 
paragraph (a continued prosecution application) may introduce new matter 
or matter that would have been new matter in the prior application. Any 
new specification filed with the request for an application under this 
paragraph will not be considered part of the original application 
papers, but will be treated as a substitute specification in accordance 
with Sec. 1.125.
    (6) The filing of a continued prosecution application under this 
paragraph will be construed to include a waiver of confidentiality by 
the applicant under 35 U.S.C. 122 to the extent that any member of the 
public, who is entitled under the provisions of Sec. 1.14 to access to, 
copies of, or information concerning either the prior application or any 
continuing application filed under the provisions of this paragraph, may 
be given similar access to, copies of, or similar information concerning 
the other application or applications in the file jacket.
    (7) A request for an application under this paragraph is the 
specific reference required by 35 U.S.C. 120 to every application 
assigned the application number identified in such request. No amendment 
in an application under this paragraph may delete this specific 
reference to any prior application.
    (8) In addition to identifying the application number of the prior 
application, applicant should furnish in the request for an application 
under this paragraph the following information relating to the prior 
application to the best of his or her ability:
    (i) Title of invention;

[[Page 39]]

    (ii) Name of applicant(s); and
    (iii) Correspondence address.
    (9) Envelopes containing only requests and fees for filing an 
application under this paragraph should be marked ``Box CPA.'' Requests 
for an application under this paragraph filed by facsimile transmission 
should be clearly marked ``Box CPA.''
    (e) Failure to meet filing date requirements. (1) If an application 
deposited under paragraph (b), (c), or (d) of this section does not meet 
the requirements of such paragraph to be entitled to a filing date, 
applicant will be so notified, if a correspondence address has been 
provided, and given a time period within which to correct the filing 
error.
    (2) Any request for review of a notification pursuant to paragraph 
(e)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by way 
of a petition pursuant to this paragraph. Any petition under this 
paragraph must be accompanied by the fee set forth in Sec. 1.17(i) in an 
application filed under paragraphs (b) or (d) of this section, and the 
fee set forth in Sec. 1.17(q) in an application filed under paragraph 
(c) of this section. In the absence of a timely (Sec. 1.181(f)) petition 
pursuant to this paragraph, the filing date of an application in which 
the applicant was notified of a filing error pursuant to paragraph 
(e)(1) of this section will be the date the filing error is corrected.
    (3) If an applicant is notified of a filing error pursuant to 
paragraph (e)(1) of this section, but fails to correct the filing error 
within the given time period or otherwise timely (Sec. 1.181(f)) take 
action pursuant to this paragraph, proceedings in the application will 
be considered terminated. Where proceedings in an application are 
terminated pursuant to this paragraph, the application may be disposed 
of, and any filing fees, less the handling fee set forth in 
Sec. 1.21(n), will be refunded.
    (f) Completion of application subsequent to filing--Nonprovisional 
(including continued prosecution) application. If an application which 
has been accorded a filing date pursuant to paragraph (b) of this 
section, including a continuation, divisional, or continuation-in-part 
application, does not include the appropriate filing fee or an oath or 
declaration by the applicant pursuant to Sec. 1.63 or Sec. 1.175, or, if 
an application which has been accorded a filing date pursuant to 
paragraph (d) of this section does not include the appropriate filing 
fee, applicant will be so notified, if a correspondence address has been 
provided, and given a period of time within which to file the fee, oath 
or declaration, and the surcharge as set forth in Sec. 1.16(e) in order 
to prevent abandonment of the application. See Sec. 1.63(d) concerning 
the submission of a copy of the oath or declaration from the prior 
application for a continuation or divisional application. If the 
required filing fee is not timely paid, or if the processing and 
retention fee set forth in Sec. 1.21(l) is not paid within one year of 
the date of mailing of the notification required by this paragraph, the 
application may be disposed of. The notification pursuant to this 
paragraph may be made simultaneously with any notification pursuant to 
paragraph (e) of this section. If no correspondence address is included 
in the application, applicant has two months from the filing date to 
file the basic filing fee, the oath or declaration in an application 
under paragraph (b) of this section, and the surcharge as set forth in 
Sec. 1.16(e) in order to prevent abandonment of the application; or, if 
no basic filing fee has been paid, one year from the filing date to pay 
the processing and retention fee set forth in Sec. 1.21(l) to prevent 
disposal of the application.
    (g) Completion of application subsequent to filing--Provisional 
application. If a provisional application which has been accorded a 
filing date pursuant to paragraph (c) of this section does not include 
the appropriate filing fee or the cover sheet required by 
Sec. 1.51(c)(1), applicant will be so notified, if a correspondence 
address has been provided, and given a period of time within which to 
file the fee, cover sheet, and the surcharge as set forth in 
Sec. 1.16(l) in order to prevent abandonment of the application. If the 
required filing fee is not timely paid, the application may be disposed 
of. The notification pursuant to this paragraph may be made 
simultaneously with any notification

[[Page 40]]

pursuant to paragraph (e) of this section. If no correspondence address 
is included in the application, applicant has two months from the filing 
date to file the basic filing fee, cover sheet, and the surcharge as set 
forth in Sec. 1.16(l) in order to prevent abandonment of the 
application.
    (h) Subsequent treatment of application--Nonprovisional (including 
continued prosecution) application. An application for a patent filed 
under paragraphs (b) or (d) of this section will not be placed on the 
files for examination until all its required parts, complying with the 
rules relating thereto, are received, except that certain minor 
informalities may be waived subject to subsequent correction whenever 
required.
    (i) Subsequent treatment of application--Provisional application. A 
provisional application for a patent filed under paragraph (c) of this 
section will not be placed on the files for examination and will become 
abandoned no later than twelve months after its filing date pursuant to 
35 U.S.C. 111(b)(1).
    (j) Filing date of international application. The filing date of an 
international application designating the United States of America is 
treated as the filing date in the United States of America under PCT 
Article 11(3), except as provided in 35 U.S.C. 102(e).

[62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998; 65 
FR 14871, Mar. 20, 2000]



Sec. 1.54  Parts of application to be filed together; filing receipt.

    (a) It is desirable that all parts of the complete application be 
deposited in the Office together; otherwise, a letter must accompany 
each part, accurately and clearly connecting it with the other parts of 
the application. See Sec. 1.53 (f) and (g) with regard to completion of 
an application.
    (b) Applicant will be informed of the application number and filing 
date by a filing receipt, unless the application is an application filed 
under Sec. 1.53(d).

[62 FR 53188, Oct. 10, 1997]



Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119 (a) through (d) and 172. 
The claim to priority need be in no special form and may be made by the 
attorney or agent if the foreign application is referred to in the oath 
or declaration as required by Sec. 1.63. The claim for priority and the 
certified copy of the foreign application specified in 35 U.S.C. 119(b) 
must be filed in the case of an interference (Sec. 1.630), when 
necessary to overcome the date of a reference relied upon by the 
examiner, when specifically required by the examiner, and in all other 
situations, before the patent is granted. If the claim for priority or 
the certified copy of the foreign application is filed after the date 
the issue fee is paid, it must be accompanied by a petition requesting 
entry and by the fee set forth in Sec. 1.17(i). If the certified copy is 
not in the English language, a translation need not be filed except in 
the case of interference; or when necessary to overcome the date of a 
reference relied upon by the examiner; or when specifically required by 
the examiner, in which event an English language translation must be 
filed together with a statement that the translation of the certified 
copy is accurate.
    (b) An applicant in a nonprovisional application may under certain 
circumstances claim priority on the basis of one or more applications 
for an inventor's certificate in a country granting both inventor's 
certificates and patents. To claim the right of priority on the basis of 
an application for an inventor's certificate in such a country under 35 
U.S.C. 119(d), the applicant when submitting a claim for such right as 
specified in paragraph (a) of this section, shall include an affidavit 
or declaration. The affidavit or declaration must include a specific 
statement that, upon an investigation, he or she is satisfied that to 
the best of his or her knowledge, the applicant, when filing the 
application for the inventor's certificate, had the option to file an 
application for either a patent or an inventor's certificate as to the 
subject matter of the identified claim or claims forming the basis for 
the claim of priority.

[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997]

[[Page 41]]



Sec. 1.56  Duty to disclose information material to patentability.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective patent 
examination occurs when, at the time an application is being examined, 
the Office is aware of and evaluates the teachings of all information 
material to patentability. Each individual associated with the filing 
and prosecution of a patent application has a duty of candor and good 
faith in dealing with the Office, which includes a duty to disclose to 
the Office all information known to that individual to be material to 
patentability as defined in this section. The duty to disclose 
information exists with respect to each pending claim until the claim is 
cancelled or withdrawn from consideration, or the application becomes 
abandoned. Information material to the patentability of a claim that is 
cancelled or withdrawn from consideration need not be submitted if the 
information is not material to the patentability of any claim remaining 
under consideration in the application. There is no duty to submit 
information which is not material to the patentability of any existing 
claim. The duty to disclose all information known to be material to 
patentability is deemed to be satisfied if all information known to be 
material to patentability of any claim issued in a patent was cited by 
the Office or submitted to the Office in the manner prescribed by 
Secs. 1.97(b)-(d) and 1.98. However, no patent will be granted on an 
application in connection with which fraud on the Office was practiced 
or attempted or the duty of disclosure was violated through bad faith or 
intentional misconduct. The Office encourages applicants to carefully 
examine:
    (1) Prior art cited in search reports of a foreign patent office in 
a counterpart application, and
    (2) The closest information over which individuals associated with 
the filing or prosecution of a patent application believe any pending 
claim patentably defines, to make sure that any material information 
contained therein is disclosed to the Office.
    (b) Under this section, information is material to patentability 
when it is not cumulative to information already of record or being made 
of record in the application, and
    (1) It establishes, by itself or in combination with other 
information, a prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the applicant 
takes in:
    (i) Opposing an argument of unpatentability relied on by the Office, 
or
    (ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the 
information compels a conclusion that a claim is unpatentable under the 
preponderance of evidence, burden-of-proof standard, giving each term in 
the claim its broadest reasonable construction consistent with the 
specification, and before any consideration is given to evidence which 
may be submitted in an attempt to establish a contrary conclusion of 
patentability.
    (c) Individuals associated with the filing or prosecution of a 
patent application within the meaning of this section are:
    (1) Each inventor named in the application;
    (2) Each attorney or agent who prepares or prosecutes the 
application; and
    (3) Every other person who is substantively involved in the 
preparation or prosecution of the application and who is associated with 
the inventor, with the assignee or with anyone to whom there is an 
obligation to assign the application.
    (d) Individuals other than the attorney, agent or inventor may 
comply with this section by disclosing information to the attorney, 
agent, or inventor.

[57 FR 2034, Jan. 17, 1992]



Sec. 1.57  [Reserved]



Sec. 1.58  Chemical and mathematical formulae and tables.

    (a) The specification, including the claims, may contain chemical 
and mathematical formulas, but shall not contain drawings or flow 
diagrams. The description portion of the specification

[[Page 42]]

may contain tables; claims may contain tables either if necessary to 
conform to 35 U.S.C. 112 or if otherwise found to be desirable.
    (b) [Reserved]
    (c) Chemical and mathematical formulae and tables must be presented 
in compliance with Sec. 1.52 (a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape orientation 
if they cannot be presented satisfactorily in a portrait orientation. 
Typewritten characters used in such formulae and tables must be chosen 
from a block (nonscript) type font or lettering style having capital 
letters which are at least 0.21 cm. (0.08 inch) high (e.g., elite type). 
A space at least 0.64 cm. (\1/4\ inch) high should be provided between 
complex formulae and tables and the text. Tables should have the lines 
and columns of data closely spaced to conserve space, consistent with a 
high degree of legibility.


(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20463, May 11, 1978, as amended at 61 FR 42803, Aug. 19, 1996]



Sec. 1.59  Expungement of information or copy of papers in application file.

    (a)(1) Information in an application will not be expunged and 
returned, except as provided in paragraph (b) of this section. See 
Sec. 1.618 for return of unauthorized and improper papers in 
interferences.
    (2) Information forming part of the original disclosure (i.e., 
written specification including the claims, drawings, and any 
preliminary amendment specifically incorporated into an executed oath or 
declaration under Secs. 1.63 and 1.175) will not be expunged from the 
application file.
    (b) Information, other than what is excluded by paragraph (a)(2) of 
this section, may be requested to be expunged and returned to applicant 
upon petition under this paragraph and payment of the petition fee set 
forth in Sec. 1.17(i). Any petition to expunge and return information 
from an application must establish to the satisfaction of the 
Commissioner that the return of the information is appropriate.
    (c) Upon request by an applicant and payment of the fee specified in 
Sec. 1.19(b), the Office will furnish copies of an application, unless 
the application has been disposed of (see Sec. 1.53 (e), (f) and (g)). 
The Office cannot provide or certify copies of an application that has 
been disposed of.

[62 FR 53188, Oct. 10, 1997]



Secs. 1.60-1.62  [Reserved]

                           Oath or Declaration



Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of 
an application must:
    (1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;
    (2) Identify the specification to which it is directed;
    (3) Identify each inventor by: full name, including the family name, 
and at least one given name without abbreviation together with any other 
given name or initial, and the residence, post office address and 
country of citizenship of each inventor; and
    (4) State whether the inventor is a sole or joint inventor of the 
invention claimed.
    (b) In addition to meeting the requirements of paragraph (a), the 
oath or declaration must state that the person making the oath or 
declaration:
    (1) Has reviewed and understands the contents of the specification, 
including the claims, as amended by any amendment specifically referred 
to in the oath or declaration;
    (2) Believes the named inventor or inventors to be the original and 
first inventor or inventors of the subject matter which is claimed and 
for which a patent is sought; and
    (3) Acknowledges the duty to disclose to the Office all information 
known to the person to be material to patentability as defined in 
Sec. 1.56.
    (c) In addition to meeting the requirements of paragraphs (a) and 
(b) of this section, the oath or declaration in any application in which 
a claim for foreign priority is made pursuant to Sec. 1.55 must identify 
the foreign application for patent or inventor's certificate on which 
priority is claimed, and any foreign application having a filing date 
before that of the application on which priority is claimed, by 
specifying the

[[Page 43]]

application number, country, day, month and year of its filing.
    (d)(1) A newly executed oath or declaration is not required under 
Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional 
application, provided that:
    (i) The prior nonprovisional application contained an oath or 
declaration as prescribed by paragraphs (a) through (c) of this section;
    (ii) The continuation or divisional application was filed by all or 
by fewer than all of the inventors named in the prior application;
    (iii) The specification and drawings filed in the continuation or 
divisional application contain no matter that would have been new matter 
in the prior application; and
    (iv) A copy of the executed oath or declaration filed in the prior 
application, showing the signature or an indication thereon that it was 
signed, is submitted for the continuation or divisional application.
    (2) The copy of the executed oath or declaration submitted under 
this paragraph for a continuation or divisional application must be 
accompanied by a statement requesting the deletion of the name or names 
of the person or persons who are not inventors in the continuation or 
divisional application.
    (3) Where the executed oath or declaration of which a copy is 
submitted for a continuation or divisional application was originally 
filed in a prior application accorded status under Sec. 1.47, the copy 
of the executed oath or declaration for such prior application must be 
accompanied by:
    (i) A copy of the decision granting a petition to accord Sec. 1.47 
status to the prior application, unless all inventors or legal 
representatives have filed an oath or declaration to join in an 
application accorded status under Sec. 1.47 of which the continuation or 
divisional application claims a benefit under 35 U.S.C. 120, 121, or 
365(c); and
    (ii) If one or more inventor(s) or legal representative(s) who 
refused to join in the prior application or could not be found or 
reached has subsequently joined in the prior application or another 
application of which the continuation or divisional application claims a 
benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently 
executed oath(s) or declaration(s) filed by the inventor or legal 
representative to join in the application.
    (4) Where the power of attorney (or authorization of agent) or 
correspondence address was changed during the prosecution of the prior 
application, the change in power of attorney (or authorization of agent) 
or correspondence address must be identified in the continuation or 
divisional application. Otherwise, the Office may not recognize in the 
continuation or divisional application the change of power of attorney 
(or authorization of agent) or correspondence address during the 
prosecution of the prior application.
    (5) A newly executed oath or declaration must be filed in a 
continuation or divisional application naming an inventor not named in 
the prior application.
    (e) A newly executed oath or declaration must be filed in any 
continuation-in-part application, which application may name all, more, 
or fewer than all of the inventors named in the prior application. The 
oath or declaration in any continuation-in-part application must also 
state that the person making the oath or declaration acknowledges the 
duty to disclose to the Office all information known to the person to be 
material to patentability as defined in Sec. 1.56 which became available 
between the filing date of the prior application and the national or PCT 
international filing date of the continuation-in-part application.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2711, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 57 
FR 2034, Jan. 17, 1992; 60 FR 20225, Apr. 25, 1995; 62 FR 53188, Oct. 
10, 1997]



Sec. 1.64  Person making oath or declaration.

    (a) The oath or declaration must be made by all of the actual 
inventors except as provided for in Sec. 1.42, 1.43, or 1.47.
    (b) If the person making the oath or declaration is not the inventor 
(Sec. 1.42, 1.43, or 1.47), the oath or declaration

[[Page 44]]

shall state the relationship of the person to the inventor and, upon 
information and belief, the facts which the inventor is required to 
state.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2711, Jan. 20, 1983]



Sec. 1.66  Officers authorized to administer oaths.

    (a) The oath or affirmation may be made before any person within the 
United States authorized by law to administer oaths. An oath made in a 
foreign country may be made before any diplomatic or consular officer of 
the United States authorized to administer oaths, or before any officer 
having an official seal and authorized to administer oaths in the 
foreign country in which the applicant may be, whose authority shall be 
proved by a certificate of a diplomatic or consular officer of the 
United States, or by an apostille of an official designated by a foreign 
country which, by treaty or convention, accords like effect to 
apostilles of designated officials in the United States. The oath shall 
be attested in all cases in this and other countries, by the proper 
official seal of the officer before whom the oath or affirmation is 
made. Such oath or affirmation shall be valid as to execution if it 
complies with the laws of the State or country where made. When the 
person before whom the oath or affirmation is made in this country is 
not provided with a seal, his official character shall be established by 
competent evidence, as by a certificate from a clerk of a court of 
record or other proper officer having a seal.
    (b) When the oath is taken before an officer in a country foreign to 
the United States, any accompanying application papers, except the 
drawings, must be attached together with the oath and a ribbon passed 
one or more times through all the sheets of the application, except the 
drawings, and the ends of said ribbon brought together under the seal 
before the latter is affixed and impressed, or each sheet must be 
impressed with the official seal of the officer before whom the oath is 
taken. If the papers as filed are not properly ribboned or each sheet 
impressed with the seal, the case will be accepted for examination, but 
before it is allowed, duplicate papers, prepared in compliance with the 
foregoing sentence, must be filed.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41275, Sept. 17, 1982]



Sec. 1.67  Supplemental oath or declaration.

    (a) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 may be required to be filed to correct any deficiencies or 
inaccuracies present in an earlier filed oath or declaration.
    (b) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 must be filed when a claim is presented for matter originally 
shown or described but not substantially embraced in the statement of 
invention or claims originally presented or when an oath or declaration 
submitted in accordance with Sec. 1.53(f) after the filing of the 
specification and any required drawings specifically and improperly 
refers to an amendment which includes new matter. No new matter may be 
introduced into a nonprovisional application after its filing date even 
if a supplemental oath or declaration is filed. In proper situations, 
the oath or declaration here required may be made on information and 
belief by an applicant other than the inventor.
    (c) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 must also be filed if the application was altered after the 
oath or declaration was signed or if the oath or declaration was signed:
    (1) In blank;
    (2) Without review thereof by the person making the oath or 
declaration; or
    (3) Without review of the specification, including the claims, as 
required by Sec. 1.63(b)(1).

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2711, Jan. 20, 1983, as amended at 57 FR 2034, Jan. 17, 1992; 60 
FR 20225, Apr. 25, 1995; 62 FR 53189, Oct. 10, 1997]



Sec. 1.68  Declaration in lieu of oath.

    Any document to be filed in the Patent and Trademark Office and 
which is required by any law, rule, or other regulation to be under oath 
may be subscribed to by a written declaration.

[[Page 45]]

Such declaration may be used in lieu of the oath otherwise required, if, 
and only if, the declarant is on the same document, warned that willful 
false statements and the like are punishable by fine or imprisonment, or 
both (18 U.S.C. 1001) and may jeopardize the validity of the application 
or any patent issuing thereon. The declarant must set forth in the body 
of the declaration that all statements made of the declarant's own 
knowledge are true and that all statements made on information and 
belief are believed to be true.

[49 FR 48452, Dec. 12, 1984]



Sec. 1.69  Foreign language oaths and declarations.

    (a) Whenever an individual making an oath or declaration cannot 
understand English, the oath or declaration must be in a language that 
such individual can understand and shall state that such individual 
understands the content of any documents to which the oath or 
declaration relates.
    (b) Unless the text of any oath or declaration in a language other 
than English is a form provided or approved by the Patent and Trademark 
Office, it must be accompanied by an English translation together with a 
statement that the translation is accurate, except that in the case of 
an oath or declaration filed under Sec. 1.63, the translation may be 
filed in the Office no later than two months from the date applicant is 
notified to file the translation.

(35 U.S.C. 6, Pub. L. 97-247)

[42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62 
FR 53189, Oct. 10, 1997]



Sec. 1.70  [Reserved]

                              Specification

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



Sec. 1.71  Detailed description and specification of the invention.

    (a) The specification must include a written description of the 
invention or discovery and of the manner and process of making and using 
the same, and is required to be in such full, clear, concise, and exact 
terms as to enable any person skilled in the art or science to which the 
invention or discovery appertains, or with which it is most nearly 
connected, to make and use the same.
    (b) The specification must set forth the precise invention for which 
a patent is solicited, in such manner as to distinguish it from other 
inventions and from what is old. It must describe completely a specific 
embodiment of the process, machine, manufacture, composition of matter 
or improvement invented, and must explain the mode of operation or 
principle whenever applicable. The best mode contemplated by the 
inventor of carrying out his invention must be set forth.
    (c) In the case of an improvement, the specification must 
particularly point out the part or parts of the process, machine, 
manufacture, or composition of matter to which the improvement relates, 
and the description should be confined to the specific improvement and 
to such parts as necessarily cooperate with it or as may be necessary to 
a complete understanding or description of it.
    (d) A copyright or mask work notice may be placed in a design or 
utility patent application adjacent to copyright and mask work material 
contained therein. The notice may appear at any appropriate portion of 
the patent application disclosure. For notices in drawings, see 
Sec. 1.84(s). The content of the notice must be limited to only those 
elements provided for by law. For example, ``1983 
John Doe'' (17 U.S.C. 401) and `` *M* John Doe'' (17 U.S.C. 909) would 
be properly limited and, under current statutes, legally sufficient 
notices of copyright and mask work, respectively. Inclusion of a 
copyright or mask work notice will be permitted only if the 
authorization language set forth in paragraph (e) of this section is 
included at the beginning (preferably as the first paragraph) of the 
specification.
    (e) The authorization shall read as follows:

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

[[Page 46]]

otherwise reserves all (copyright or mask work) rights whatsoever.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988; 
58 FR 38723, July 20, 1993]



Sec. 1.72  Title and abstract.

    (a) The title of the invention, which should be as short and 
specific as possible, should appear as a heading on the first page of 
the specification, if it does not otherwise appear at the beginning of 
the application.
    (b) A brief abstract of the technical disclosure in the 
specification must commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract of the Disclosure.'' The 
purpose of the abstract is to enable the Patent and Trademark Office and 
the public generally to determine quickly from a cursory inspection the 
nature and gist of the technical disclosure. The abstract shall not be 
used for interpreting the scope of the claims.

(Pub. L. 94-131, 89 Stat. 685)

[31 FR 12922, Oct. 4, 1966, as amended at 43 FR 20464, May 11, 1978; 61 
FR 42803, Aug. 19, 1996]



Sec. 1.73  Summary of the invention.

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



Sec. 1.74  Reference to drawings.

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



Sec. 1.75  Claim(s).

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

[[Page 47]]

of the claimed combination which the applicant considers as the new or 
improved portion.
    (f) If there are several claims, they shall be numbered 
consecutively in Arabic numerals.
    (g) The least restrictive claim should be presented as claim number 
1, and all dependent claims should be grouped together with the claim or 
claims to which they refer to the extent practicable.
    (h) The claim or claims must commence on a separate sheet.
    (i) Where a claim sets forth a plurality of elements or steps, each 
element or step of the claim should be separated by a line indentation.

(35 U.S.C. 6; 15 U.S.C. 1113, 1126)

[31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37 
FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 
17, 1982; 61 FR 42803, Aug. 19, 1996]



Sec. 1.77  Arrangement of application elements.

    (a) The elements of the application, if applicable, should appear in 
the following order:
    (1) Utility Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Title of the invention; or an introductory portion stating the 
name, citizenship, and residence of the applicant, and the title of the 
invention.
    (4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or development.
    (6) Reference to a ``Microfiche appendix.'' (See Sec. 1.96 (c)). The 
total number of microfiche and total number of frames should be 
specified.
    (7) Background of the invention.
    (8) Brief summary of the invention.
    (9) Brief description of the several views of the drawing.
    (10) Detailed description of the invention.
    (11) Claim or claims.
    (12) Abstract of the Disclosure.
    (13) Drawings.
    (14) Executed oath or declaration.
    (15) Sequence Listing (See Secs. 1.821 through 1.825).
    (b) The elements set forth in paragraphs (a)(3) through (a)(5), 
(a)(7) through (a)(12) and (a)(15) of this section should appear in 
upper case, without underlining or bold type, as section headings. If no 
text follows the section heading, the phrase ``Not Applicable'' should 
follow the section heading.

[61 FR 42803, Aug. 19, 1996]



Sec. 1.78  Claiming benefit of earlier filing date and cross-references to other applications.

    (a)(1) A nonprovisional application may claim an invention disclosed 
in one or more prior filed copending nonprovisional applications or 
copending international applications designating the United States of 
America. In order for a nonprovisional application to claim the benefit 
of a prior filed copending nonprovisional application or copending 
international application designating the United States of America, each 
prior application must name as an inventor at least one inventor named 
in the later filed nonprovisional application and disclose the named 
inventor's invention claimed in at least one claim of the later filed 
nonprovisional application in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition, each prior application must be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) Complete as set forth in Sec. 1.51(b); or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b) or 
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16; or
    (iv) Entitled to a filing date as set forth in Sec. 1.53(b) and have 
paid therein the processing and retention fee set forth in Sec. 1.21(l) 
within the time period set forth in Sec. 1.53(f).
    (2) Except for a continued prosecution application filed under 
Sec. 1.53(d), any nonprovisional application claiming the benefit of one 
or more prior filed copending nonprovisional applications or 
international applications designating the United States of America must 
contain or be amended to contain in the first sentence of the 
specification following the title a reference to each such prior 
application, identifying it by application number (consisting of the 
series code and serial number) or international application number and

[[Page 48]]

international filing date and indicating the relationship of the 
applications. The request for a continued prosecution application under 
Sec. 1.53(d) is the specific reference required by 35 U.S.C. 120 to the 
prior application. The identification of an application by application 
number under this section is the specific reference required by 35 
U.S.C. 120 to every application assigned that application number. Cross-
references to other related applications may be made when appropriate 
(see Sec. 1.14(a)).
    (3) A nonprovisional application other than for a design patent may 
claim an invention disclosed in one or more prior filed provisional 
applications. In order for a nonprovisional application to claim the 
benefit of one or more prior filed provisional applications, each prior 
provisional application must name as an inventor at least one inventor 
named in the later filed nonprovisional application and disclose the 
named inventor's invention claimed in at least one claim of the later 
filed nonprovisional application in the manner provided by the first 
paragraph of 35 U.S.C. 112. In addition, each prior provisional 
application must be entitled to a filing date as set forth in 
Sec. 1.53(c), have any required English-language translation filed 
therein within the time period set forth in Sec. 1.52(d), and have paid 
therein the basic filing fee set forth in Sec. 1.16(k) within the time 
period set forth in Sec. 1.53(g).
    (4) Any nonprovisional application claiming the benefit of one or 
more prior filed copending provisional applications must contain or be 
amended to contain in the first sentence of the specification following 
the title a reference to each such prior provisional application, 
identifying it as a provisional application, and including the 
provisional application number (consisting of series code and serial 
number).
    (b) Where two or more applications filed by the same applicant 
contain conflicting claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient reason 
for their retention during pendency in more than one application.
    (c) Where an application or a patent under reexamination and at 
least one other application naming different inventors are owned by the 
same party and contain conflicting claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person at the time 
the later invention was made, the assignee may be called upon to state 
whether the claimed inventions were commonly owned or subject to an 
obligation of assignment to the same person at the time the later 
invention was made, and if not, indicate which named inventor is the 
prior inventor.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[36 FR 7312, Apr. 17, 1971, as amended at 50 FR 9380, Mar. 7, 1985; 50 
FR 11366, Mar. 21, 1985; 58 FR 54509, Oct. 22, 1993; 60 FR 20225, Apr. 
25, 1995; 61 FR 42804, Aug. 19, 1996; 62 FR 53189, Oct. 10, 1997; 65 FR 
14872, Mar. 20, 2000]



Sec. 1.79  Reservation clauses not permitted.

    A reservation for a future application of subject matter disclosed 
but not claimed in a pending application will not be permitted in the 
pending application, but an application disclosing unclaimed subject 
matter may contain a reference to a later filed application of the same 
applicant or owned by a common assignee disclosing and claiming that 
subject matter.

                              The Drawings

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



Sec. 1.81  Drawings required in patent application.

    (a) The applicant for a patent is required to furnish a drawing of 
his or her invention where necessary for the understanding of the 
subject matter sought to be patented; this drawing, or a high quality 
copy thereof, must be filed with the application. Since corrections are 
the responsibility of the applicant, the original drawing(s) should be 
retained by the applicant for any necessary future correction.
    (b) Drawings may include illustrations which facilitate an 
understanding

[[Page 49]]

of the invention (for example, flow sheets in cases of processes, and 
diagrammatic views).
    (c) Whenever the nature of the subject matter sought to be patented 
admits of illustration by a drawing without its being necessary for the 
understanding of the subject matter and the applicant has not furnished 
such a drawing, the examiner will require its submission within a time 
period of not less than two months from the date of the sending of a 
notice thereof.
    (d) Drawings submitted after the filing date of the application may 
not be used to overcome any insufficiency of the specification due to 
lack of an enabling disclosure or otherwise inadequate disclosure 
therein, or to supplement the original disclosure thereof for the 
purpose of interpretation of the scope of any claim.

[43 FR 4015, Jan. 31, 1978, as amended at 53 FR 47808, Nov. 28, 1988]



Sec. 1.83  Content of drawing.

    (a) The drawing in a nonprovisional application must show every 
feature of the invention specified in the claims. However, conventional 
features disclosed in the description and claims, where their detailed 
illustration is not essential for a proper understanding of the 
invention, should be illustrated in the drawing in the form of a 
graphical drawing symbol or a labeled representation (e.g., a labeled 
rectangular box).
    (b) When the invention consists of an improvement on an old machine 
the drawing must when possible exhibit, in one or more views, the 
improved portion itself, disconnected from the old structure, and also 
in another view, so much only of the old structure as will suffice to 
show the connection of the invention therewith.
    (c) Where the drawings in a nonprovisional application do not comply 
with the requirements of paragraphs (a) and (b) of this section, the 
examiner shall require such additional illustration within a time period 
of not less than two months from the date of the sending of a notice 
thereof. Such corrections are subject to the requirements of 
Sec. 1.81(d).

[31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60 
FR 20226, Apr. 25, 1995]



Sec. 1.84  Standards for drawings.

    (a) Drawings. There are two acceptable categories for presenting 
drawings in utility patent applications:
    (1) Black ink. Black and white drawings are normally required. India 
ink, or its equivalent that secures solid black lines, must be used for 
drawings, or
    (2) Color. On rare occasions, color drawings may be necessary as the 
only practical medium by which to disclose the subject matter sought to 
be patented in a utility patent application or the subject matter of a 
statutory invention registration. The Patent and Trademark Office will 
accept color drawings in utility patent applications and statutory 
invention registrations only after granting a petition filed under this 
paragraph explaining why the color drawings are necessary. Any such 
petition must include the following:
    (i) The fee set forth in Sec. 1.17(i);
    (ii) Three (3) sets of color drawings; and
    (iii) The specification must contain the following language as the 
first paragraph in that portion of the specification relating to the 
brief description of the drawing:

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


If the language is not in the specification, a proposed amendment to 
insert the language must accompany the petition.
    (b) Photographs--(1) Black and white. Photographs are not ordinarily 
permitted in utility patent applications. However, the Office will 
accept photographs in utility patent applications only after the 
granting of a petition filed under this paragraph which requests that 
photographs be accepted. Any such petition must include the following:
    (i) The fee set forth in Sec. 1.17(i); and
    (ii) Three (3) sets of photographs. Photographs must either be 
developed on double weight photographic paper or be permanently mounted 
on bristol board. The photographs must be of sufficient quality so that 
all details in the

[[Page 50]]

drawings are reproducible in the printed patent.
    (2) Color. Color photographs will be accepted in utility patent 
applications if the conditions for accepting color drawings have been 
satisfied. See paragraph (a)(2) of this section.
    (c) Identification of drawings. Identifying indicia, if provided, 
should include the application number or the title of the invention, 
inventor's name, docket number (if any), and the name and telephone 
number of a person to call if the Office is unable to match the drawings 
to the proper application. This information should be placed on the back 
of each sheet of drawings a minimum distance of 1.5 cm. (\5/8\ inch) 
down from the top of the page. In addition, a reference to the 
application number, or, if an application number has not been assigned, 
the inventor's name, may be included in the left-hand corner, provided 
that the reference appears within 1.5 cm. (\5/8\ inch) from the top of 
the sheet.
    (d) Graphic forms in drawings. Chemical or mathematical formulae, 
tables, and waveforms may be submitted as drawings, and are subject to 
the same requirements as drawings. Each chemical or mathematical formula 
must be labeled as a separate figure, using brackets when necessary, to 
show that information is properly integrated. Each group of waveforms 
must be presented as a single figure, using a common vertical axis with 
time extending along the horizontal axis. Each individual waveform 
discussed in the specification must be identified with a separate letter 
designation adjacent to the vertical axis.
    (e) Type of paper. Drawings submitted to the Office must be made on 
paper which is flexible, strong, white, smooth, non-shiny, and durable. 
All sheets must be free from cracks, creases, and folds. Only one side 
of the sheet shall be used for the drawing. Each sheet must be 
reasonably free from erasures and must be free from alterations, 
overwritings, and interlineations. Photographs must either be developed 
on double weight photographic paper or be permanently mounted on bristol 
board. See paragraph (b) of this section for other requirements for 
photographs.
    (f) Size of paper. All drawing sheets in an application must be the 
same size. One of the shorter sides of the sheet is regarded as its top. 
The size of the sheets on which drawings are made must be:
    (1) 21.0 cm. by 29.7 cm. (DIN size A4), or
    (2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).
    (g) Margins. The sheets must not contain frames around the sight 
(i.e., the usable surface), but should have scan target points (i.e., 
cross-hairs) printed on two catercorner margin corners. Each sheet must 
include a top margin of at least 2.5 cm. (1 inch), a left side margin of 
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (\5/
8\ inch), and a bottom margin of at least 1.0 cm. (\3/8\ inch), thereby 
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. 
by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ 
by 11 inch) drawing sheets.
    (h) Views. The drawing must contain as many views as necessary to 
show the invention. The views may be plan, elevation, section, or 
perspective views. Detail views of portions of elements, on a larger 
scale if necessary, may also be used. All views of the drawing must be 
grouped together and arranged on the sheet(s) without wasting space, 
preferably in an upright position, clearly separated from one another, 
and must not be included in the sheets containing the specifications, 
claims, or abstract. Views must not be connected by projection lines and 
must not contain center lines. Waveforms of electrical signals may be 
connected by dashed lines to show the relative timing of the waveforms.
    (1) Exploded views. Exploded views, with the separated parts 
embraced by a bracket, to show the relationship or order of assembly of 
various parts are permissible. When an exploded view is shown in a 
figure which is on the same sheet as another figure, the exploded view 
should be placed in brackets.
    (2) Partial views. When necessary, a view of a large machine or 
device in its entirety may be broken into partial views on a single 
sheet, or extended over several sheets if there is no loss in

[[Page 51]]

facility of understanding the view. Partial views drawn on separate 
sheets must always be capable of being linked edge to edge so that no 
partial view contains parts of another partial view. A smaller scale 
view should be included showing the whole formed by the partial views 
and indicating the positions of the parts shown. When a portion of a 
view is enlarged for magnification purposes, the view and the enlarged 
view must each be labeled as separate views.
    (i) Where views on two or more sheets form, in effect, a single 
complete view, the views on the several sheets must be so arranged that 
the complete figure can be assembled without concealing any part of any 
of the views appearing on the various sheets.
    (ii) A very long view may be divided into several parts placed one 
above the other on a single sheet. However, the relationship between the 
different parts must be clear and unambiguous.
    (3) Sectional views. The plane upon which a sectional view is taken 
should be indicated on the view from which the section is cut by a 
broken line. The ends of the broken line should be designated by Arabic 
or Roman numerals corresponding to the view number of the sectional 
view, and should have arrows to indicate the direction of sight. 
Hatching must be used to indicate section portions of an object, and 
must be made by regularly spaced oblique parallel lines spaced 
sufficiently apart to enable the lines to be distinguished without 
difficulty. Hatching should not impede the clear reading of the 
reference characters and lead lines. If it is not possible to place 
reference characters outside the hatched area, the hatching may be 
broken off wherever reference characters are inserted. Hatching must be 
at a substantial angle to the surrounding axes or principal lines, 
preferably 45 deg.. A cross section must be set out and drawn to show 
all of the materials as they are shown in the view from which the cross 
section was taken. The parts in cross section must show proper 
material(s) by hatching with regularly spaced parallel oblique strokes, 
the space between strokes being chosen on the basis of the total area to 
be hatched. The various parts of a cross section of the same item should 
be hatched in the same manner and should accurately and graphically 
indicate the nature of the material(s) that is illustrated in cross 
section. The hatching of juxtaposed different elements must be angled in 
a different way. In the case of large areas, hatching may be confined to 
an edging drawn around the entire inside of the outline of the area to 
be hatched. Different types of hatching should have different 
conventional meanings as regards the nature of a material seen in cross 
section.
    (4) Alternate position. A moved position may be shown by a broken 
line superimposed upon a suitable view if this can be done without 
crowding; otherwise, a separate view must be used for this purpose.
    (5) Modified forms. Modified forms of construction must be shown in 
separate views.
    (i) Arrangement of views. One view must not be placed upon another 
or within the outline of another. All views on the same sheet should 
stand in the same direction and, if possible, stand so that they can be 
read with the sheet held in an upright position. If views wider than the 
width of the sheet are necessary for the clearest illustration of the 
invention, the sheet may be turned on its side so that the top of the 
sheet, with the appropriate top margin to be used as the heading space, 
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top 
becomes the right side, except for graphs utilizing standard scientific 
convention to denote the axis of abscissas (of X) and the axis of 
ordinates (of Y).
    (j) View for Official Gazette. One of the views should be suitable 
for publication in the Official Gazette as the illustration of the 
invention.
    (k) Scale. (1) The scale to which a drawing is made must be large 
enough to show the mechanism without crowding when the drawing is 
reduced in size to two-thirds in reproduction. Views of portions of the 
mechanism on a larger scale should be used when necessary to show 
details clearly. Two or more sheets may be used if one does not give 
sufficient room. The number of sheets should be kept to a minimum.

[[Page 52]]

    (2) When approved by the examiner, the scale of the drawing may be 
graphically represented. Indications such as ``actual size'' or ``scale 
\1/2\'' on the drawings, are not permitted, since these lose their 
meaning with reproduction in a different format.
    (3) Elements of the same view must be in proportion to each other, 
unless a difference in proportion is indispensable for the clarity of 
the view. Instead of showing elements in different proportion, a 
supplementary view may be added giving a larger-scale illustration of 
the element of the initial view. The enlarged element shown in the 
second view should be surrounded by a finely drawn or ``dot-dash'' 
circle in the first view indicating its location without obscuring the 
view.
    (l) Character of lines, numbers, and letters. All drawings must be 
made by a process which will give them satisfactory reproduction 
characteristics. Every line, number, and letter must be durable, clean, 
black (except for color drawings), sufficiently dense and dark, and 
uniformly thick and well-defined. The weight of all lines and letters 
must be heavy enough to permit adequate reproduction. This requirement 
applies to all lines however fine, to shading, and to lines representing 
cut surfaces in sectional views. Lines and strokes of different 
thicknesses may be used in the same drawing where different thicknesses 
have a different meaning.
    (m) Shading. The use of shading in views is encouraged if it aids in 
understanding the invention and if it does not reduce legibility. 
Shading is used to indicate the surface or shape of spherical, 
cylindrical, and conical elements of an object. Flat parts may also be 
lightly shaded. Such shading is preferred in the case of parts shown in 
perspective, but not for cross sections. See paragraph (h)(3) of this 
section. Spaced lines for shading are preferred. These lines must be 
thin, as few in number as practicable, and they must contrast with the 
rest of the drawings. As a substitute for shading, heavy lines on the 
shade side of objects can be used except where they superimpose on each 
other or obscure reference characters. Light should come from the upper 
left corner at an angle of 45 deg.. Surface delineations should 
preferably be shown by proper shading. Solid black shading areas are not 
permitted, except when used to represent bar graphs or color.
    (n) Symbols. Graphical drawing symbols may be used for conventional 
elements when appropriate. The elements for which such symbols and 
labeled representations are used must be adequately identified in the 
specification. Known devices should be illustrated by symbols which have 
a universally recognized conventional meaning and are generally accepted 
in the art. Other symbols which are not universally recognized may be 
used, subject to approval by the Office, if they are not likely to be 
confused with existing conventional symbols, and if they are readily 
identifiable.
    (o) Legends. Suitable descriptive legends may be used, or may be 
required by the Examiner, where necessary for understanding of the 
drawing, subject to approval by the Office. They should contain as few 
words as possible.
    (p) Numbers, letters, and reference characters. (1) Reference 
characters (numerals are preferred), sheet numbers, and view numbers 
must be plain and legible, and must not be used in association with 
brackets or inverted commas, or enclosed within outlines, e.g., 
encircled. They must be oriented in the same direction as the view so as 
to avoid having to rotate the sheet. Reference characters should be 
arranged to follow the profile of the object depicted.
    (2) The English alphabet must be used for letters, except where 
another alphabet is customarily used, such as the Greek alphabet to 
indicate angles, wavelengths, and mathematical formulas.
    (3) Numbers, letters, and reference characters must measure at least 
.32 cm. (\1/8\ inch) in height. They should not be placed in the drawing 
so as to interfere with its comprehension. Therefore, they should not 
cross or mingle with the lines. They should not be placed upon hatched 
or shaded surfaces. When necessary, such as indicating a surface or 
cross section, a reference character may be underlined and a blank space 
may be left in the hatching or shading where the character occurs so 
that it appears distinct.

[[Page 53]]

    (4) The same part of an invention appearing in more than one view of 
the drawing must always be designated by the same reference character, 
and the same reference character must never be used to designate 
different parts.
    (5) Reference characters not mentioned in the description shall not 
appear in the drawings. Reference characters mentioned in the 
description must appear in the drawings.
    (q) Lead lines. Lead lines are those lines between the reference 
characters and the details referred to. Such lines may be straight or 
curved and should be as short as possible. They must originate in the 
immediate proximity of the reference character and extend to the feature 
indicated. Lead lines must not cross each other. Lead lines are required 
for each reference character except for those which indicate the surface 
or cross section on which they are placed. Such a reference character 
must be underlined to make it clear that a lead line has not been left 
out by mistake. Lead lines must be executed in the same way as lines in 
the drawing. See paragraph (l) of this section.
    (r) Arrows. Arrows may be used at the ends of the lines, provided 
that their meaning is clear, as follows:
    (1) On a lead line, a freestanding arrow to indicate the entire 
section towards which it points;
    (2) On a lead line, an arrow touching a line to indicate the surface 
shown by the line looking along the direction of the arrow; or
    (3) To show the direction of movement.
    (s) Copyright or Mask Work Notice. A copyright or mask work notice 
may appear in the drawing, but must be placed within the sight of the 
drawing immediately below the figure representing the copyright or mask 
work material and be limited to letters having a print size of .32 cm. 
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be 
limited to only those elements provided for by law. For example, 
``1983 John Doe'' (17 U.S.C. 401) and ``*M* John 
Doe'' (17 U.S.C. 909) would be properly limited and, under current 
statutes, legally sufficient notices of copyright and mask work, 
respectively. Inclusion of a copyright or mask work notice will be 
permitted only if the authorization language set forth in Sec. 1.71(e) 
is included at the beginning (preferably as the first paragraph) of the 
specification.
    (t) Numbering of sheets of drawings. The sheets of drawings should 
be numbered in consecutive Arabic numerals, starting with 1, within the 
sight as defined in paragraph (g) of this section. These numbers, if 
present, must be placed in the middle of the top of the sheet, but not 
in the margin. The numbers can be placed on the right-hand side if the 
drawing extends too close to the middle of the top edge of the usable 
surface. The drawing sheet numbering must be clear and larger than the 
numbers used as reference characters to avoid confusion. The number of 
each sheet should be shown by two Arabic numerals placed on either side 
of an oblique line, with the first being the sheet number, and the 
second being the total number of sheets of drawings, with no other 
marking.
    (u) Numbering of views. (1) The different views must be numbered in 
consecutive Arabic numerals, starting with 1, independent of the 
numbering of the sheets and, if possible, in the order in which they 
appear on the drawing sheet(s). Partial views intended to form one 
complete view, on one or several sheets, must be identified by the same 
number followed by a capital letter. View numbers must be preceded by 
the abbreviation ``FIG.'' Where only a single view is used in an 
application to illustrate the claimed invention, it must not be numbered 
and the abbreviation ``FIG.'' must not appear.
    (2) Numbers and letters identifying the views must be simple and 
clear and must not be used in association with brackets, circles, or 
inverted commas. The view numbers must be larger than the numbers used 
for reference characters.
    (v) Security markings. Authorized security markings may be placed on 
the drawings provided they are outside the sight, preferably centered in 
the top margin.
    (w) Corrections. Any corrections on drawings submitted to the Office 
must be durable and permanent.

[[Page 54]]

    (x) Holes. No holes should be made by applicant in the drawing 
sheets. (See Sec. 1.152 for design drawings, Sec. 1.165 for plant 
drawings, and Sec. 1.174 for reissue drawings.)

[58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as 
amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997]



Sec. 1.85  Corrections to drawings.

    (a) The requirements of Sec. 1.84 relating to drawings will be 
strictly enforced. A drawing not executed in conformity thereto, if 
suitable for reproduction, may be admitted for examination but in such 
case a new drawing must be furnished.
    (b) The Patent and Trademark Office will not release drawings in 
applications having a filing date after January 1, 1989, or any drawings 
from any applications after January 1, 1991, for purposes of correction. 
If corrections are necessary, new corrected drawings must be submitted 
within the time set by the Office.
    (c) When corrected drawings are required to be submitted at the time 
of allowance, the applicant is required to submit acceptable drawings 
within three months from the mailing of the ``Notice of Allowability.'' 
Within that three-month period, two weeks should be allowed for review 
of the drawings by the Drafting Branch. If the Office finds that 
correction is necessary, the applicant must submit a new corrected 
drawing to the Office within the original three-month period to avoid 
the necessity of obtaining an extension of time and paying the extension 
fee. Therefore, the applicant should file corrected drawings as soon as 
possible following the receipt of the Notice of Allowability. The 
provisions with respect to obtaining an extension of time relates only 
to the late filing of corrected drawings. The time limit for payment of 
the issue fee is a fixed three-month period which cannot be extended as 
set forth in 35 U.S.C. 151.

[53 FR 47810, Nov. 28, 1988]



Sec. 1.88  [Reserved]

                       Models, Exhibits, Specimens

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



Sec. 1.91  Models or exhibits not generally admitted as part of application or patent.

    (a) A model or exhibit will not be admitted as part of the record of 
an application unless it:
    (1) Substantially conforms to the requirements of Sec. 1.52 or 
Sec. 1.84;
    (2) Is specifically required by the Office; or
    (3) Is filed with a petition under this section including:
    (i) The petition fee as set forth in Sec. 1.17(i); and
    (ii) An explanation of why entry of the model or exhibit in the file 
record is necessary to demonstrate patentability.
    (b) Notwithstanding the provisions of paragraph (a) of this section, 
a model, working model, or other physical exhibit may be required by the 
Office if deemed necessary for any purpose in examination of the 
application.

[62 FR 53190, Oct. 10, 1997]



Sec. 1.92  [Reserved]



Sec. 1.93  Specimens.

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



Sec. 1.94  Return of models, exhibits or specimens.

    Models, exhibits, or specimens in applications which have become 
abandoned, and also in other applications on conclusion of the 
prosecution, may be returned to the applicant upon demand and at his 
expense, unless it be deemed necessary that they be preserved in the 
Office. Such physical exhibits in contested cases may be returned to the 
parties at their expense. If not claimed within a reasonable time, they 
may be disposed of at the discretion of the Commissioner.



Sec. 1.95  Copies of exhibits.

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

[[Page 55]]

the Office specially authorized by the Commissioner.



Sec. 1.96  Submission of computer program listings.

    (a) General. Descriptions of the operation and general content of 
computer program listings should appear in the description portion of 
the specification. A computer program listing for the purpose of this 
section is defined as a printout that lists in appropriate sequence the 
instructions, routines, and other contents of a program for a computer. 
The program listing may be either in machine or machine-independent 
(object or source) language which will cause a computer to perform a 
desired procedure or task such as solve a problem, regulate the flow of 
work in a computer, or control or monitor events. Computer program 
listings may be submitted in patent applications as set forth in 
paragraphs (b) and (c) of this section.
    (b) Material which will be printed in the patent. If the computer 
program listing is contained on ten printout pages or less, it must be 
submitted either as drawings or as part of the specification.
    (1) Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for drawings 
as provided in Sec. 1.84. At least one figure numeral is required on 
each sheet of drawing.
    (2) Specification. (i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with the provisions of 
Sec. 1.52, at the end of the description but before the claims.
    (ii) Any listing submitted as part of the specification must be 
direct printouts (i.e., not copies) from the computer's printer with 
dark solid black letters not less than 0.21 cm. high, on white, unshaded 
and unlined paper, and the sheets should be submitted in a protective 
cover. Any amendments must be made by way of submission of substitute 
sheets.
    (c) As an appendix which will not be printed. If a computer program 
listing printout is eleven or more pages long, applicants must submit 
such listing in the form of microfiche, referred to in the specification 
(see Sec. 1.77(a)(6)). Such microfiche filed with a patent application 
is to be referred to as a ``microfiche appendix.'' The ``microfiche 
appendix'' will not be part of the printed patent. Reference in the 
application to the ``microfiche appendix'' must be made at the beginning 
of the specification at the location indicated in Sec. 1.77(a)(6). Any 
amendments thereto must be made by way of revised microfiche.
    (1) Availability of appendix. Such computer program listings on 
microfiche will be available to the public for inspection, and 
microfiche copies thereof will be available for purchase with the file 
wrapper and contents, after a patent based on such application is 
granted or the application is otherwise made publicly available.
    (2) Submission requirements. Except as modified or clarified in this 
paragraph (c)(2), computer-generated information submitted as a 
``microfiche appendix'' to an application shall be in accordance with 
the standards set forth in 36 CFR part 1230 (Micrographics).
    (i) Film submitted shall be a first generation (camera film) 
negative appearing microfiche (with emulsion on the back side of the 
film when viewed with the images right-reading).
    (ii) Reduction ratio of microfiche submitted should be 24:1 or a 
similar ratio where variation from said ratio is required in order to 
fit the documents into the image area of the microfiche format used.
    (iii) At least the left-most third (50 mm. x 12 mm.) of the header 
or title area of each microfiche submitted shall be clear or positive 
appearing so that the Patent and Trademark Office can apply an 
application number and filing date thereto in an eye-readable form. The 
middle portion of the header shall be used by applicant to apply an eye-
readable application identification such as the title and/or the first 
inventor's name. The attorney's docket number may be included. The final 
right-hand portion of the microfiche shall contain sequence information 
for the microfiche, such as 1 of 4, 2 of 4, etc.
    (iv) Additional requirements which apply specifically to microfiche 
of filmed paper copy:

[[Page 56]]

    (A) The first frame of each microfiche submitted shall contain a 
test target.
    (B) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (C) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (D) Pagination of the microfiche frames shall be from left to right 
and from top to bottom.
    (E) At a reduction of 24:1, resolution of the original microfilm 
shall be at least 120 lines per mm. (5.0 target).
    (F) An index, when included, should appear in the last frame (lower 
right-hand corner when data is right-reading) of each microfiche.
    (v) Microfiche generated by Computer Output Microfilm.
    (A) The first frame of each microfiche submitted should contain a 
resolution test frame.
    (B) The second frame of each microfiche submitted must contain a 
fully descriptive title and the inventor's name as filed.
    (C) The pages or lines appearing on the microfiche frames should be 
consecutively numbered.
    (D) It is preferred that pagination of the microfiche frames be from 
left to right and top to bottom but the alternative, i.e., from top to 
bottom and from left to right, is also acceptable.
    (E) An index, when included, should appear on the last frame (lower 
right-hand corner when data is right-reading) of each microfiche.

[61 FR 42804, Aug. 19, 1996]

                    Information Disclosure Statement



Sec. 1.97  Filing of information disclosure statement.

    (a) In order for an applicant for a patent or for a reissue of a 
patent to have an information disclosure statement in compliance with 
Sec. 1.98 considered by the Office during the pendency of the 
application, it must satisfy paragraph (b), (c), or (d) of this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant within any one of the following time 
periods:
    (1) Within three months of the filing date of a national 
application;
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application;
    (3) Before the mailing of a first Office action on the merits; or
    (4) Before the mailing of a first Office action after the filing of 
a request for continued examination under Sec. 1.114.
    (c) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph 
(b) of this section, provided that the information disclosure statement 
is filed before the mailing date of either a final action under 
Sec. 1.113, or a notice of allowance under Sec. 1.311, whichever occurs 
first, and is accompanied by either:
    (1) A statement as specified in paragraph (e) of this section; or
    (2) The fee set forth in Sec. 1.17(p).
    (d) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph 
(c) of this section, provided that the information disclosure statement 
is filed on or before payment of the issue fee and is accompanied by:
    (1) A statement as specified in paragraph (e) of this section;
    (2) A petition requesting consideration of the information 
disclosure statement; and
    (3) The petition fee set forth in Sec. 1.17(i).
    (e) A statement under this section must state either:
    (1) That each item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application not more than three months 
prior to the filing of the information disclosure statement; or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of 
the person signing the statement after making reasonable inquiry, no 
item of information contained in the information disclosure statement 
was known to any individual

[[Page 57]]

designated in Sec. 1.56(c) more than three months prior to the filing of 
the information disclosure statement.
    (f) No extensions of time for filing an information disclosure 
statement are permitted under Sec. 1.136. If a bona fide attempt is made 
to comply with Sec. 1.98, but part of the required content is 
inadvertently omitted, additional time may be given to enable full 
compliance.
    (g) An information disclosure statement filed in accordance with 
this section shall not be construed as a representation that a search 
has been made.
    (h) The filing of an information disclosure statement shall not be 
construed to be an admission that the information cited in the statement 
is, or is considered to be, material to patentability as defined in 
Sec. 1.56(b).
    (i) Information disclosure statements, filed before the grant of a 
patent, which do not comply with this section and Sec. 1.98 will be 
placed in the file, but will not be considered by the Office.

[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 
FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct. 
10, 1997; 65 FR 14872, Mar. 20, 2000]



Sec. 1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed under Sec. 1.97 shall 
include:
    (1) A list of all patents, publications, or other information 
submitted for consideration 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; 
and
    (iii) All other information or that portion which caused it to be 
listed, except that no copy of a U.S. patent application need be 
included; and
    (3) A concise explanation of the relevance, as it is presently 
understood by the individual designated in Sec. 1.56(c) most 
knowledgeable about the content of the information, of each patent, 
publication, or other information listed that is not in the English 
language. The concise explanation may be either separate from the 
specification or incorporated therein.
    (b) Each U.S. patent listed in an information disclosure statement 
shall be identified by patentee, patent number and issue date. Each 
foreign patent or published foreign patent application shall be 
identified by the country or patent office which issued the patent or 
published the application, an appropriate document number, and the 
publication date indicated on the patent or published application. Each 
publication shall be identified by author (if any), title, relevant 
pages of the publication, date and place of publication.
    (c) When the disclosures of two or more patents or publications 
listed in an information disclosure statement are substantively 
cumulative, a copy of one of the patents or publications may be 
submitted without copies of the other patents or publications provided 
that a statement is made that these other patents or publications are 
cumulative. If a written English-language translation of a non-English 
language document, or portion thereof, is within the possession, custody 
or control of, or is readily available to any individual designated in 
Sec. 1.56(c), a copy of the translation shall accompany the statement.
    (d) A copy of any patent, publication or other information listed in 
an information disclosure statement is not required to be provided if it 
was previously cited by or submitted to the Office in a prior 
application, provided that the prior application is properly identified 
in the statement and relied upon for an earlier filing date under 35 
U.S.C. 120.

[57 FR 2035, Jan. 17, 1992]



Sec. 1.99  [Reserved]

                       Examination of Applications

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



Sec. 1.101  [Reserved]



Sec. 1.102  Advancement of examination.

    (a) Applications will not be advanced out of turn for examination or 
for further action except as provided by this part, or upon order of the 
Commissioner to expedite the business of the Office, or upon filing of a 
request under

[[Page 58]]

paragraph (b) of this section or upon filing a petition under paragraphs 
(c) or (d) of this section with a showing which, in the opinion of the 
Commissioner, will justify so advancing it.
    (b) Applications wherein the inventions are deemed of peculiar 
importance to some branch of the public service and the head of some 
department of the Government requests immediate action for that reason, 
may be advanced for examination.
    (c) A petition to make an application special may be filed without a 
fee if the basis for the petition is the applicant's age or health or 
that the invention will materially enhance the quality of the 
environment or materially contribute to the development or conservation 
of energy resources.
    (d) A petition to make an application special on grounds other than 
those referred to in paragraph (c) of this section must be accompanied 
by the petition fee set forth in Sec. 1.17(i).

(36 U.S.C. 6; 15 U.S.C. 1113, 1123)

[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 
54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct. 
10, 1997]



Sec. 1.103  Suspension of action.

    (a) Suspension of action by the Office will be granted for good and 
sufficient cause and for a reasonable time specified upon petition by 
the applicant and, if such cause is not the fault of the Office, the 
payment of the fee set forth in Sec. 1.17(i). Action will not be 
suspended when a reply by the applicant to an Office action is required.
    (b) If action by the Office on an application is suspended when not 
requested by the applicant, the applicant shall be notified of the 
reasons therefor.
    (c) Action by the examiner may be suspended by order of the 
Commissioner in the case of applications owned by the United States 
whenever publication of the invention by the granting of a patent 
thereon might be detrimental to the public safety or defense, at the 
request of the appropriate department or agency.
    (d) Action on applications in which the Office has accepted a 
request to publish a defensive publication will be suspended for the 
entire pendency of these applications except for purposes relating to 
patent interference proceedings under subpart E.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 
50 FR 9381, Mar. 7, 1985; 54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 
25, 1995; 62 FR 53191, Oct. 10, 1997]



Sec. 1.104  Nature of examination.

    (a) Examiner's action. (1) On taking up an application for 
examination or a patent in a reexamination proceeding, the examiner 
shall make a thorough study thereof and shall make a thorough 
investigation of the available prior art relating to the subject matter 
of the claimed invention. The examination shall be complete with respect 
both to compliance of the application or patent under reexamination with 
the applicable statutes and rules and to the patentability of the 
invention as claimed, as well as with respect to matters of form, unless 
otherwise indicated.
    (2) The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified of the 
examiner's action. The reasons for any adverse action or any objection 
or requirement will be stated and such information or references will be 
given as may be useful in aiding the applicant, or in the case of a 
reexamination proceeding the patent owner, to judge the propriety of 
continuing the prosecution.
    (3) An international-type search will be made in all national 
applications filed on and after June 1, 1978.
    (4) Any national application may also have an international-type 
search report prepared thereon at the time of the national examination 
on the merits, upon specific written request therefor and payment of the 
international-type search report fee set forth in Sec. 1.21(e). The 
Patent and Trademark Office does not require that a formal report of an 
international-type search be prepared in order to obtain a search fee 
refund in a later filed international application.
    (5) Copending applications will be considered by the examiner to be 
owned by, or subject to an obligation of assignment to, the same person 
if:
    (i) The application files refer to assignments recorded in the 
Patent and

[[Page 59]]

Trademark Office in accordance with part 3 of this chapter which convey 
the entire rights in the applications to the same person or 
organization; or
    (ii) Copies of unrecorded assignments which convey the entire rights 
in the applications to the same person or organization are filed in each 
of the applications; or
    (iii) An affidavit or declaration by the common owner is filed which 
states that there is common ownership and states facts which explain why 
the affiant or declarant believes there is common ownership, which 
affidavit or declaration may be signed by an official of the corporation 
or organization empowered to act on behalf of the corporation or 
organization when the common owner is a corporation or other 
organization; or
    (iv) Other evidence is submitted which establishes common ownership 
of the applications.
    (b) Completeness of examiner's action. The examiner's action will be 
complete as to all matters, except that in appropriate circumstances, 
such as misjoinder of invention, fundamental defects in the application, 
and the like, the action of the examiner may be limited to such matters 
before further action is made. However, matters of form need not be 
raised by the examiner until a claim is found allowable.
    (c) Rejection of claims. (1) If the invention is not considered 
patentable, or not considered patentable as claimed, the claims, or 
those considered unpatentable will be rejected.
    (2) In rejecting claims for want of novelty or for obviousness, the 
examiner must cite the best references at his or her command. When a 
reference is complex or shows or describes inventions other than that 
claimed by the applicant, the particular part relied on must be 
designated as nearly as practicable. The pertinence of each reference, 
if not apparent, must be clearly explained and each rejected claim 
specified.
    (3) In rejecting claims the examiner may rely upon admissions by the 
applicant, or the patent owner in a reexamination proceeding, as to any 
matter affecting patentability and, insofar as rejections in 
applications are concerned, may also rely upon facts within his or her 
knowledge pursuant to paragraph (d)(2) of this section.
    (4) Subject matter which is developed by another person which 
qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) may be 
used as prior art under 35 U.S.C. 103 against a claimed invention unless 
the entire rights to the subject matter and the claimed invention were 
commonly owned by the same person or organization or subject to an 
obligation of assignment to the same person or organization at the time 
the claimed invention was made.
    (5) The claims in any original application naming an inventor will 
be rejected as being precluded by a waiver in a published statutory 
invention registration naming that inventor if the same subject matter 
is claimed in the application and the statutory invention registration. 
The claims in any reissue application naming an inventor will be 
rejected as being precluded by a waiver in a published statutory 
invention registration naming that inventor if the reissue application 
seeks to claim subject matter:
    (i) Which was not covered by claims issued in the patent prior to 
the date of publication of the statutory invention registration; and
    (ii) Which was the same subject matter waived in the statutory 
invention registration.
    (d) Citation of references. (1) If domestic patents are cited by the 
examiner, their numbers and dates, and the names of the patentees must 
be stated. If foreign published applications or patents are cited, their 
nationality or country, numbers and dates, and the names of the 
patentees must be stated, and such other data must be furnished as may 
be necessary to enable the applicant, or in the case of a reexamination 
proceeding, the patent owner, to identify the published applications or 
patents cited. In citing foreign published applications or patents, in 
case only a part of the document is involved, the particular pages and 
sheets containing the parts relied upon must be identified. If printed 
publications are cited, the author (if any), title, date, pages or 
plates, and place of publication, or place where a copy can be found, 
shall be given.

[[Page 60]]

    (2) When a rejection in an application is based on facts within the 
personal knowledge of an employee of the Office, the data shall be as 
specific as possible, and the reference must be supported, when called 
for by the applicant, by the affidavit of such employee, and such 
affidavit shall be subject to contradiction or explanation by the 
affidavits of the applicant and other persons.
    (e) Reasons for allowance. If the examiner believes that the record 
of the prosecution as a whole does not make clear his or her reasons for 
allowing a claim or claims, the examiner may set forth such reasoning. 
The reasons shall be incorporated into an Office action rejecting other 
claims of the application or patent under reexamination or be the 
subject of a separate communication to the applicant or patent owner. 
The applicant or patent owner may file a statement commenting on the 
reasons for allowance within such time as may be specified by the 
examiner. Failure to file such a statement does not give rise to any 
implication that the applicant or patent owner agrees with or acquiesces 
in the reasoning of the examiner.

[62 FR 53191, Oct. 10, 1997, as amended at 65 FR 14872, Mar. 20, 2000]



Secs. 1.105-1.109  [Reserved]



Sec. 1.110  Inventorship and date of invention of the subject matter of individual claims.

    When more than one inventor is named in an application or patent, 
the Patent and Trademark Office, when necessary for purposes of an 
Office proceeding, may require an applicant, patentee, or owner to 
identify the inventive entity of the subject matter of each claim in the 
application or patent. Where appropriate, the invention dates of the 
subject matter of each claim and the ownership of the subject matter on 
the date of invention may be required of the applicant, patentee or 
owner. See also Secs. 1.78(c) and 1.130.

[61 FR 42805, Aug. 19, 1996]

              Action by Applicant and Further Consideration

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



Sec. 1.111  Reply by applicant or patent owner.

    (a) After the Office action, if adverse in any respect, the 
applicant or patent owner, if he or she persists in his or her 
application for a patent or reexamination proceeding, must reply thereto 
and may request reconsideration or further examination, with or without 
amendment.
    (b) In order to be entitled to reconsideration or further 
examination, the applicant or patent owner must reply to the Office 
action. The reply by the applicant or patent owner must be reduced to a 
writing which distinctly and specifically points out the supposed errors 
in the examiner's action and must reply to every ground of objection and 
rejection in the prior Office action. The reply must present arguments 
pointing out the specific distinctions believed to render the claims, 
including any newly presented claims, patentable over any applied 
references. If the reply is with respect to an application, a request 
may be made that objections or requirements as to form not necessary to 
further consideration of the claims be held in abeyance until allowable 
subject matter is indicated. The applicant's or patent owner's reply 
must appear throughout to be a bona fide attempt to advance the 
application or the reexamination proceeding to final action. A general 
allegation that the claims define a patentable invention without 
specifically pointing out how the language of the claims patentably 
distinguishes them from the references does not comply with the 
requirements of this section.
    (c) In amending in response to a rejection of claims in an 
application or patent undergoing reexamination, the applicant or patent 
owner must clearly point out the patentable novelty which he or she 
thinks the claims present in view of the state of the art disclosed by 
the references cited or the objections made. He or she must also show 
how

[[Page 61]]

the amendments avoid such references or objections. (See Secs. 1.135 and 
1.136 for time for reply.)

[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997]



Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111) to a non-final 
action, the application or patent under reexamination will be 
reconsidered and again examined. The applicant or patent owner will be 
notified if claims are rejected, or objections or requirements made, in 
the same manner as after the first examination. Applicant or patent 
owner may reply to such Office action in the same manner provided in 
Sec. 1.111, with or without amendment, unless such Office action 
indicates that it is made final (Sec. 1.113).

[62 FR 53192, Oct. 10, 1997]



Sec. 1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration by 
the examiner the rejection or other action may be made final, whereupon 
applicant's or patent owner's reply is limited to appeal in the case of 
rejection of any claim (Sec. 1.191), or to amendment as specified in 
Sec. 1.114 or Sec. 1.116. Petition may be taken to the Commissioner in 
the case of objections or requirements not involved in the rejection of 
any claim (Sec. 1.181). Reply to a final rejection or action must comply 
with Sec. 1.114 or paragraph (c) of this section.
    (b) In making such final rejection, the examiner shall repeat or 
state all grounds of rejection then considered applicable to the claims 
in the application, clearly stating the reasons in support thereof.
    (c) Reply to a final rejection or action must include cancellation 
of, or appeal from the rejection of, each rejected claim. If any claim 
stands allowed, the reply to a final rejection or action must comply 
with any requirements or objections as to form.

[65 FR 14872, Mar. 20, 2000]



Sec. 1.114  Request for continued examination.

    (a) An applicant may request continued examination of the 
application by filing a submission and the fee set forth in Sec. 1.17(e) 
prior to the earliest of:
    (1) Payment of the issue fee, unless a petition under Sec. 1.313 is 
granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals 
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a 
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated.
    (b) A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new evidence 
in support of patentability. If reply to an Office action under 35 
U.S.C. 132 is outstanding, the submission must meet the reply 
requirements of Sec. 1.111.
    (c) If an applicant timely files a submission and fee set forth in 
Sec. 1.17(e), the Office will withdraw the finality of any Office action 
and the submission will be entered and considered. If an applicant files 
a request for continued examination under this section after appeal, but 
prior to a decision on the appeal, it will be treated as a request to 
withdraw the appeal and to reopen prosecution of the application before 
the examiner. An appeal brief under Sec. 1.192 or a reply brief under 
Sec. 1.193(b), or related papers, will not be considered a submission 
under this section.
    (d) The provisions of this section do not apply in any application 
in which the Office has not mailed at least one of an Office action 
under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151. The 
provisions of this section also do not apply to:
    (1) A provisional application;
    (2) An application for a utility or plant patent filed under 35 
U.S.C. 111(a) before June 8, 1995;
    (3) An international application filed under 35 U.S.C. 363 before 
June 8, 1995;
    (4) An application for a design patent; or
    (5) A patent under reexamination.

[65 FR 14872, Mar. 20, 2000]

                               Amendments

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

[[Page 62]]



Sec. 1.115  [Reserved]



Sec. 1.116  Amendments after final action or appeal.

    (a) An amendment after final action or appeal must comply with 
Sec. 1.114 or this section.
    (b) After a final rejection or other final action (Sec. 1.113), 
amendments may be made canceling claims or complying with any 
requirement of form expressly set forth in a previous Office action. 
Amendments presenting rejected claims in better form for consideration 
on appeal may be admitted. The admission of, or refusal to admit, any 
amendment after final rejection, and any related proceedings, will not 
operate to relieve the application or patent under reexamination from 
its condition as subject to appeal or to save the application from 
abandonment under Sec. 1.135.
    (c) If amendments touching the merits of the application or patent 
under reexamination are presented after final rejection, or after appeal 
has been taken, or when such amendment might not otherwise be proper, 
they may be admitted upon a showing of good and sufficient reasons why 
they are necessary and were not earlier presented.
    (d) No amendment can be made as a matter of right in appealed cases. 
After decision on appeal, amendments can only be made as provided in 
Sec. 1.198, or to carry into effect a recommendation under Sec. 1.196.

[65 FR 14873, Mar. 20, 2000]



Secs. 1.117-1.119  [Reserved]



Sec. 1.121  Manner of making amendments.

    (a) Amendments in nonprovisional applications, other than reissue 
applications: Amendments in nonprovisional applications, excluding 
reissue applications, are made by filing a paper, in compliance with 
Sec. 1.52, directing that specified amendments be made.
    (1) Specification other than the claims. Except as provided in 
Sec. 1.125, amendments to add matter to, or delete matter from, the 
specification, other than to the claims, may only be made as follows:
    (i) Instructions for insertions: The precise point in the 
specification must be indicated where an insertion is to be made, and 
the matter to be inserted must be set forth.
    (ii) Instructions for deletions: The precise point in the 
specification must be indicated where a deletion is to be made, and the 
matter to be deleted must be set forth or otherwise indicated.
    (iii) Matter deleted by amendment can be reinstated only by a 
subsequent amendment presenting the previously deleted matter as a new 
insertion.
    (2) Claims. Amendments to the claims may only be made as follows:
    (i) Instructions for insertions and deletions: A claim may be 
amended by specifying only the exact matter to be deleted or inserted by 
an amendment and the precise point where the deletion or insertion is to 
be made, where the changes are limited to:
    (A) Deletions and/or
    (B) The addition of no more than five (5) words in any one claim; or
    (ii) Claim cancellation or rewriting: A claim may be amended by 
directions to cancel the claim or by rewriting such claim with 
underlining below the matter added and brackets around the matter 
deleted. The rewriting of a claim in this form will be construed as 
directing the deletion of the previous version of that claim. If a 
previously rewritten claim is again rewritten, underlining and 
bracketing will be applied relative to the previous version of the 
claim, with the parenthetical expression ``twice amended,'' ``three 
times amended,'' etc., following the original claim number. The original 
claim number followed by that parenthetical expression must be used for 
the rewritten claim. No interlineations or deletions of any prior 
amendment may appear in the currently submitted version of the claim. A 
claim canceled by amendment (not deleted and rewritten) can be 
reinstated only by a subsequent amendment presenting the claim as a new 
claim with a new claim number.
    (3) Drawings. (i) Amendments to the original application drawings 
are not permitted. Any change to the application drawings must be by way 
of a substitute sheet of drawings for each sheet changed submitted in 
compliance with Sec. 1.84.

[[Page 63]]

    (ii) Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a 
separate paper.
    (4) [Reserved]
    (5) The disclosure must be amended, when required by the Office, to 
correct inaccuracies of description and definition, and to secure 
substantial correspondence between the claims, the remainder of the 
specification, and the drawings.
    (6) No amendment may introduce new matter into the disclosure of an 
application.
    (b) Amendments in reissue applications: Amendments in reissue 
applications are made by filing a paper, in compliance with Sec. 1.52, 
directing that specified amendments be made.
    (1) Specification other than the claims. Amendments to the 
specification, other than to the claims, may only be made as follows:
    (i) Amendments must be made by submission of the entire text of a 
newly added or rewritten paragraph(s) with markings pursuant to 
paragraph (b)(1)(iii) of this section, except that an entire paragraph 
may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph.
    (ii) The precise point in the specification must be indicated where 
the paragraph to be amended is located.
    (iii) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made.
    (2) Claims. Amendments to the claims may only be made as follows:
    (i)(A) The amendment must be made relative to the patent claims in 
accordance with paragraph (b)(6) of this section and must include the 
entire text of each claim which is being amended by the current 
amendment and of each claim being added by the current amendment with 
markings pursuant to paragraph (b)(2)(i)(C) of this section, except that 
a patent claim or added claim should be cancelled by a statement 
cancelling the patent claim or added claim without presentation of the 
text of the patent claim or added claim.
    (B) Patent claims must not be renumbered and the numbering of any 
claims added to the patent must follow the number of the highest 
numbered patent claim.
    (C) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made. If a claim is amended pursuant 
to paragraph (b)(2)(i)(A) of this section, a parenthetical expression 
``amended,'' ``twice amended,'' etc., should follow the original claim 
number.
    (ii) Each amendment submission must set forth the status (i.e., 
pending or cancelled) as of the date of the amendment, of all patent 
claims and of all added claims.
    (iii) Each amendment when originally submitted must be accompanied 
by an explanation of the support in the disclosure of the patent for the 
amendment along with any additional comments on page(s) separate from 
the page(s) containing the amendment.
    (3) Drawings. (i) Amendments to the original patent drawings are not 
permitted. Any change to the patent drawings must be by way of a new 
sheet of drawings with the amended figures identified as ``amended'' and 
with added figures identified as ``new'' for each sheet changed 
submitted in compliance with Sec. 1.84.
    (ii) Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a 
separate paper.
    (4) The disclosure must be amended, when required by the Office, to 
correct inaccuracies of description and definition, and to secure 
substantial correspondence between the claims, the remainder of the 
specification, and the drawings.
    (5) No reissue patent shall be granted enlarging the scope of the 
claims of the original patent unless applied for within two years from 
the grant of the original patent, pursuant to 35 U.S.C. 251. No 
amendment to the patent may introduce new matter or be made in an 
expired patent.

[[Page 64]]

    (6) All amendments must be made relative to the patent 
specification, including the claims, and drawings, which is in effect as 
of the date of filing of the reissue application.
    (c) Amendments in reexamination proceedings: Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings must be made in accordance with Sec. 1.530(d).

[62 FR 53192, Oct. 10, 1997; 62 FR 61235, Nov. 17, 1997]



Secs. 1.122-1.24  [Reserved]



Sec. 1.125  Substitute specification.

    (a) If the number or nature of the amendments or the legibility of 
the application papers renders it difficult to consider the application, 
or to arrange the papers for printing or copying, the Office may require 
the entire specification, including the claims, or any part thereof, be 
rewritten.
    (b) A substitute specification, excluding the claims, may be filed 
at any point up to payment of the issue fee if it is accompanied by:
    (1) A statement that the substitute specification includes no new 
matter; and
    (2) A marked-up copy of the substitute specification showing the 
matter being added to and the matter being deleted from the 
specification of record.
    (c) A substitute specification submitted under this section must be 
submitted in clean form without markings as to amended material.
    (d) A substitute specification under this section is not permitted 
in a reissue application or in a reexamination proceeding.

[62 FR 53193, Oct. 10, 1997]



Sec. 1.126  Numbering of claims.

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

[62 FR 53194, Oct. 10, 1997]



Sec. 1.127  Petition from refusal to admit amendment.

    From the refusal of the primary examiner to admit an amendment, in 
whole or in part, a petition will lie to the Commissioner under 
Sec. 1.181.

                         Transitional Provisions



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

    (a) An applicant in an application, other than for reissue or a 
design patent, that has been pending for at least two years as of June 
8, 1995, taking into account any reference made in such application to 
any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is 
entitled to have a first submission entered and considered on the merits 
after final rejection under the following circumstances: The Office will 
consider such a submission, if the first submission and the fee set 
forth in Sec. 1.17(r) are filed prior to the filing of an appeal brief 
and prior to abandonment of the application. The finality of the final 
rejection is automatically withdrawn upon the timely filing of the 
submission and payment of the fee set forth in Sec. 1.17(r). If a 
subsequent final rejection is made in the application, applicant is 
entitled to have a second submission entered and considered on the 
merits after the subsequent final rejection under the following 
circumstances: The Office will consider such a submission, if the second 
submission and a second fee set forth in Sec. 1.17(r) are filed prior to 
the filing of an appeal brief and prior to abandonment of the 
application. The finality of the subsequent final rejection is 
automatically withdrawn upon the timely filing of the submission and 
payment of the second fee set forth in Sec. 1.17(r). Any submission 
filed after a final rejection made in an application subsequent to the 
fee set forth in Sec. 1.17(r) having been twice paid will be treated as 
set forth

[[Page 65]]

in Sec. 1.116. A submission as used in this paragraph includes, but is 
not limited to, an information disclosure statement, an amendment to the 
written description, claims or drawings and a new substantive argument 
or new evidence in support of patentability.
    (b)(1) In an application, other than for reissue or a design patent, 
that has been pending for at least three years as of June 8, 1995; 
taking into account any reference made in the application to any earlier 
filed application under 35 U.S.C. 120, 121, and 365(c), no requirement 
for restriction or for the filing of divisional applications shall be 
made or maintained in the application after June 8, 1995, except where:
    (i) The requirement was first made in the application or any earlier 
filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 
1995;
    (ii) The examiner has not made a requirement for restriction in the 
present or parent application prior to April 8, 1995, due to actions by 
the applicant; or
    (iii) The required fee for examination of each additional invention 
was not paid.
    (2) If the application contains more than one independent and 
distinct invention and a requirement for restriction or for the filing 
of divisional applications cannot be made or maintained pursuant to this 
paragraph, applicant will be so notified and given a time period to:
    (i) Elect the invention or inventions to be searched and examined, 
if no election has been made prior to the notice, and pay the fee set 
forth in Sec. 1.17(s) for each independent and distinct invention 
claimed in the application in excess of one which applicant elects;
    (ii) Confirm an election made prior to the notice and pay the fee 
set forth in Sec. 1.17(s) for each independent and distinct invention 
claimed in the application in addition to the one invention which 
applicant previously elected; or
    (iii) File a petition under this section traversing the requirement. 
If the required petition is filed in a timely manner, the original time 
period for electing and paying the fee set forth in Sec. 1.17(s) will be 
deferred and any decision on the petition affirming or modifying the 
requirement will set a new time period to elect the invention or 
inventions to be searched and examined and to pay the fee set forth in 
Sec. 1.17(s) for each independent and distinct invention claimed in the 
application in excess of one which applicant elects.
    (3) The additional inventions for which the required fee has not 
been paid will be withdrawn from consideration under Sec. 1.142(b). An 
applicant who desires examination of an invention so withdrawn from 
consideration can file a divisional application under 35 U.S.C. 121.
    (c) The provisions of this section shall not be applicable to any 
application filed after June 8, 1995.

[60 FR 20226, Apr. 25, 1995]

                    Affidavits Overcoming Rejections



Sec. 1.130  Affidavit or declaration to disqualify commonly owned patent as prior art.

    (a) When any claim of an application or a patent under reexamination 
is rejected under 35 U.S.C. 103 in view of a U.S. patent which is not 
prior art under 35 U.S.C. 102(b), and the inventions defined by the 
claims in the application or patent under reexamination and by the 
claims in the patent are not identical but are not patentably distinct, 
and the inventions are owned by the same party, the applicant or owner 
of the patent under reexamination may disqualify the patent as prior 
art. The patent can be disqualified as prior art by submission of:
    (1) A terminal disclaimer in accordance with Sec. 1.321(c), and
    (2) An oath or declaration stating that the application or patent 
under reexamination and the patent are currently owned by the same 
party, and that the inventor named in the application or patent under 
reexamination is the prior inventor under 35 U.S.C. 104.
    (b) When an application or a patent under reexamination claims an 
invention which is not patentably distinct from an invention claimed in 
a commonly owned patent with the same or a different inventive entity, a 
double patenting rejection will be made in the application or a patent 
under reexamination. A judicially created double

[[Page 66]]

patenting rejection may be obviated by filing a terminal disclaimer in 
accordance with Sec. 1.321(c).

[61 FR 42805, Aug. 19, 1996]



Sec. 1.131  Affidavit or declaration of prior invention to overcome cited patent or publication.

    (a) (1) When any claim of an application or a patent under 
reexamination is rejected under 35 U.S.C. 102 (a) or (e), or 35 U.S.C. 
103 based on a U.S. patent to another or others which is prior art under 
35 U.S.C. 102 (a) or (e) and which substantially shows or describes but 
does not claim the same patentable invention, as defined in 
Sec. 1.601(n), or on reference to a foreign patent or to a printed 
publication, the inventor of the subject matter of the rejected claim, 
the owner of the patent under reexamination, or the party qualified 
under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or 
declaration to overcome the patent or publication. The oath or 
declaration must include facts showing a completion of the invention in 
this country or in a NAFTA or WTO member country before the filing date 
of the application on which the U.S. patent issued, or before the date 
of the foreign patent, or before the date of the printed publication. 
When an appropriate oath or declaration is made, the patent or 
publication cited shall not bar the grant of a patent to the inventor or 
the confirmation of the patentability of the claims of the patent, 
unless the date of such patent or printed publication is more than one 
year prior to the date on which the inventor's or patent owner's 
application was filed in this country.
    (2) A date of completion of the invention may not be established 
under this section before December 8, 1993, in a NAFTA country, or 
before January 1, 1996, in a WTO member country other than a NAFTA 
country.
    (b) The showing of facts shall be such, in character and weight, as 
to establish reduction to practice prior to the effective date of the 
reference, or conception of the invention prior to the effective date of 
the reference coupled with due diligence from prior to said date to a 
subsequent reduction to practice or to the filing of the application. 
Original exhibits of drawings or records, or photocopies thereof, must 
accompany and form part of the affidavit or declaration of their absence 
satisfactorily explained.

[53 FR 23734, June 23, 1988, as amended at 60 FR 21044, May 1, 1995; 61 
FR 42806, Aug. 19, 1996]



Sec. 1.132  Affidavits or declarations traversing grounds of rejection.

    When any claim of an application or a patent under reexamination is 
rejected on reference to a U.S. patent which substantially shows or 
describes but does not claim the same patentable invention, as defined 
in Sec. 1.601(n), on reference to a foreign patent, on reference to a 
printed publication, or on reference to facts within the personal 
knowledge of an employee of the Office, or when rejected upon a mode or 
capability of operation attributed to a reference, or because the 
alleged invention is held to be inoperative, lacking in utility, 
frivolous, or injurious to public health or morals, affidavits or 
declarations traversing these references or objections may be received.

[61 FR 42806, Aug. 19, 1996]

                               Interviews



Sec. 1.133  Interviews.

    (a) Interviews with examiners concerning applications and other 
matters pending before the Office must be had in the examiners' rooms at 
such times, within office hours, as the respective examiners may 
designate. Interviews will not be permitted at any other time or place 
without the authority of the Commissioner. Interviews for the discussion 
of the patentability of pending applications will not be had before the 
first official action thereon. Interviews should be arranged for in 
advance.
    (b) In every instance where reconsideration is requested in view of 
an interview with an examiner, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the applicant. An interview does not remove the necessity 
for reply to Office actions as specified in Secs. 1.111 and 1.135.

(35 U.S.C. 132)

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53194, Oct. 10, 1997]

[[Page 67]]

         Time for Reply by Applicant; Abandonment of Application

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



Sec. 1.134  Time period for reply to an Office action.

    An Office action will notify the applicant of any non-statutory or 
shortened statutory time period set for reply to an Office action. 
Unless the applicant is notified in writing that a reply is required in 
less than six months, a maximum period of six months is allowed.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.135  Abandonment for failure to reply within time period.

    (a) If an applicant of a patent application fails to reply within 
the time period provided under Sec. 1.134 and Sec. 1.136, the 
application will become abandoned unless an Office action indicates 
otherwise.
    (b) Prosecution of an application to save it from abandonment 
pursuant to paragraph (a) of this section must include such complete and 
proper reply as the condition of the application may require. The 
admission of, or refusal to admit, any amendment after final rejection 
or any amendment not responsive to the last action, or any related 
proceedings, will not operate to save the application from abandonment.
    (c) When reply by the applicant is a bona fide attempt to advance 
the application to final action, and is substantially a complete reply 
to the non-final Office action, but consideration of some matter or 
compliance with some requirement has been inadvertently omitted, 
applicant may be given a new time period for reply under Sec. 1.134 to 
supply the omission.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.136  Extensions of time.

    (a)(1) If an applicant is required to reply within a nonstatutory or 
shortened statutory time period, applicant may extend the time period 
for reply up to the earlier of the expiration of any maximum period set 
by statute or five months after the time period set for reply, if a 
petition for an extension of time and the fee set in Sec. 1.17(a) are 
filed, unless:
    (i) Applicant is notified otherwise in an Office action;
    (ii) The reply is a reply brief submitted pursuant to Sec. 1.193(b);
    (iii) The reply is a request for an oral hearing submitted pursuant 
to Sec. 1.194(b);
    (iv) The reply is to a decision by the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.196, Sec. 1.197 or Sec. 1.304; or
    (v) The application is involved in an interference declared pursuant 
to Sec. 1.611.
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior to 
the expiration of the period of extension to avoid abandonment of the 
application (Sec. 1.135), but in no situation may an applicant reply 
later than the maximum time period set by statute, or be granted an 
extension of time under paragraph (b) of this section when the 
provisions of this paragraph are available. See Sec. 1.136(b) for 
extensions of time relating to proceedings pursuant to Secs. 1.193(b), 
1.194, 1.196 or 1.197; Sec. 1.304 for extension of time to appeal to the 
U.S. Court of Appeals for the Federal Circuit or to commence a civil 
action; Sec. 1.550(c) for extension of time in reexamination 
proceedings; and Sec. 1.645 for extension of time in interference 
proceedings.
    (3) A written request may be submitted in an application that is an 
authorization to treat any concurrent or future reply, requiring a 
petition for an extension of time under this paragraph for its timely 
submission, as incorporating a petition for extension of time for the 
appropriate length of time. An authorization to charge all required 
fees, fees under Sec. 1.17, or all required extension of time fees will 
be treated as a constructive petition for an extension of time in any 
concurrent or future reply requiring a petition for an extension of time 
under this paragraph for its timely submission. Submission of the fee 
set forth in Sec. 1.17(a) will also be treated as a constructive

[[Page 68]]

petition for an extension of time in any concurrent reply requiring a 
petition for an extension of time under this paragraph for its timely 
submission.
    (b) When a reply cannot be filed within the time period set for such 
reply and the provisions of paragraph (a) of this section are not 
available, the period for reply will be extended only for sufficient 
cause and for a reasonable time specified. Any request for an extension 
of time under this paragraph must be filed on or before the day on which 
such reply is due, but the mere filing of such a request will not effect 
any extension under this paragraph. In no situation can any extension 
carry the date on which reply is due beyond the maximum time period set 
by statute. See Sec. 1.304 for extension of time to appeal to the U.S. 
Court of Appeals for the Federal Circuit or to commence a civil action; 
Sec. 1.645 for extension of time in interference proceedings; and 
Sec. 1.550(c) for extension of time in reexamination proceedings.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.137  Revival of abandoned application or lapsed patent.

    (a) Unavoidable. Where the delay in reply was unavoidable, a 
petition may be filed to revive an abandoned application or a lapsed 
patent pursuant to this paragraph. A grantable petition pursuant to this 
paragraph must be accompanied by:
    (1) The required reply, unless previously filed. In a nonprovisional 
application abandoned for failure to prosecute, the required reply may 
be met by the filing of a continuing application. In an application or 
patent, abandoned or lapsed for failure to pay the issue fee or any 
portion thereof, the required reply must be the payment of the issue fee 
or any outstanding balance thereof;
    (2) The petition fee as set forth in Sec. 1.17(l);
    (3) A showing to the satisfaction of the Commissioner that the 
entire delay in filing the required reply from the due date for the 
reply until the filing of a grantable petition pursuant to this 
paragraph was unavoidable; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (c) of this section.
    (b) Unintentional. Where the delay in reply was unintentional, a 
petition may be filed to revive an abandoned application or a lapsed 
patent pursuant to this paragraph. A grantable petition pursuant to this 
paragraph must be accompanied by:
    (1) The required reply, unless previously filed. In a nonprovisional 
application abandoned for failure to prosecute, the required reply may 
be met by the filing of a continuing application. In an application or 
patent, abandoned or lapsed for failure to pay the issue fee or any 
portion thereof, the required reply must be the payment of the issue fee 
or any outstanding balance thereof;
    (2) The petition fee as set forth in Sec. 1.17(m);
    (3) A statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable petition 
pursuant to this paragraph was unintentional. The Commissioner may 
require additional information where there is a question whether the 
delay was unintentional; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (c) of this section.
    (c) In a design application, a utility application filed before June 
8, 1995, or a plant application filed before June 8, 1995, any petition 
to revive pursuant to this section must be accompanied by a terminal 
disclaimer and fee as set forth in Sec. 1.321 dedicating to the public a 
terminal part of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. Any terminal disclaimer 
pursuant to this paragraph must also apply to any patent granted on any 
continuing application that contains a specific reference under 35 
U.S.C. 120, 121, or 365(c) to the application for which revival is 
sought. The provisions of this paragraph do not apply to lapsed patents.
    (d) Any request for reconsideration or review of a decision refusing 
to revive an abandoned application or lapsed patent upon petition filed 
pursuant to this section, to be considered timely, must be filed within 
two months of the decision refusing to revive or within such time as set 
in the decision. Unless a decision indicates

[[Page 69]]

otherwise, this time period may be extended under the provisions of 
Sec. 1.136.
    (e) A provisional application, abandoned for failure to timely 
respond to an Office requirement, may be revived pursuant to this 
section so as to be pending for a period of no longer than twelve months 
from its filing date. Under no circumstances will a provisional 
application be regarded as pending after twelve months from its filing 
date.

[62 FR 53194, Oct. 10, 1997]



Sec. 1.138  Express abandonment.

    An application may be expressly abandoned by filing in the Patent 
and Trademark Office a written declaration of abandonment signed by the 
applicant and the assignee of record, if any, and identifying the 
application. An application may also be expressly abandoned by filing a 
written declaration of abandonment signed by the attorney or agent of 
record. A registered attorney or agent acting under the provision of 
Sec. 1.34(a), or of record, may also expressly abandon a prior 
application as of the filing date granted to a continuing application 
when filing such a continuing application. Express abandonment of the 
application may not be recognized by the Office unless it is actually 
received by appropriate officials in time to act thereon before the date 
of issue.

[49 FR 48452, Dec. 12, 1984]



Sec. 1.139  [Reserved]

          Joinder of Inventions in One Application; Restriction

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



Sec. 1.141  Different inventions in one national application.

    (a) Two or more independent and distinct inventions may not be 
claimed in one national application, except that more than one species 
of an invention, not to exceed a reasonable number, may be specifically 
claimed in different claims in one national application, provided the 
application also includes an allowable claim generic to all the claimed 
species and all the claims to species in excess of one are written in 
dependent form (Sec. 1.75) or otherwise include all the limitations of 
the generic claim.
    (b) Where claims to all three categories, product, process of 
making, and process of use, are included in a national application, a 
three way requirement for restriction can only be made where the process 
of making is distinct from the product. If the process of making and the 
product are not distinct, the process of using may be joined with the 
claims directed to the product and the process of making the product 
even though a showing of distinctness between the product and process of 
using the product can be made.

[52 FR 20046, May 28, 1987]



Sec. 1.142  Requirement for restriction.

    (a) If two or more independent and distinct inventions are claimed 
in a single application, the examiner in an Office action will require 
the applicant in the reply to that action to elect an invention to which 
the claims will be restricted, this official action being called a 
requirement for restriction (also known as a requirement for division). 
Such requirement will normally be made before any action on the merits; 
however, it may be made at any time before final action.
    (b) Claims to the invention or inventions not elected, if not 
canceled, are nevertheless withdrawn from further consideration by the 
examiner by the election, subject however to reinstatement in the event 
the requirement for restriction is withdrawn or overruled.

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997]



Sec. 1.143  Reconsideration of requirement.

    If the applicant disagrees with the requirement for restriction, he 
may request reconsideration and withdrawal or modification of the 
requirement, giving the reasons therefor. (See Sec. 1.111.) In 
requesting reconsideration the applicant must indicate a provisional 
election of one invention for prosecution, which invention shall be

[[Page 70]]

the one elected in the event the requirement becomes final The 
requirement for restriction will be reconsidered on such a request. If 
the requirement is repeated and made final the examiner will at the same 
time act on the claims to the invention elected.



Sec. 1.144  Petition from requirement for restriction.

    After a final requirement for restriction, the applicant, in 
addition to making any reply due on the remainder of the action, may 
petition the Commissioner to review the requirement. Petition may be 
deferred until after final action on or allowance of claims to the 
invention elected, but must be filed not later than appeal. A petition 
will not be considered if reconsideration of the requirement was not 
requested (see Sec. 1.181).

[62 FR 53195, Oct. 10, 1997]



Sec. 1.145  Subsequent presentation of claims for different invention.

    If, after an office action on an application, the applicant presents 
claims directed to an invention distinct from and independent of the 
invention previously claimed, the applicant will be required to restrict 
the claims to the invention previously claimed if the amendment is 
entered, subject to reconsideration and review as provided in 
Secs. 1.143 and 1.144.



Sec. 1.146  Election of species.

    In the first action on an application containing a generic claim to 
a generic invention (genus) and claims to more than one patentably 
distinct species embraced thereby, the examiner may require the 
applicant in the reply to that action to elect a species of his or her 
invention to which his or her claim will be restricted if no claim to 
the genus is found to be allowable. However, if such application 
contains claims directed to more than a reasonable number of species, 
the examiner may require restriction of the claims to not more than a 
reasonable number of species before taking further action in the 
application.

[62 FR 53195, Oct. 10, 1997]

                             Design Patents



Sec. 1.151  Rules applicable.

    The rules relating to applications for patents for other inventions 
or discoveries are also applicable to applications for patents for 
designs except as otherwise provided.

(35 U.S.C. 171)



Sec. 1.152  Design drawings.

    (a) The design must be represented by a drawing that complies with 
the requirements of Sec. 1.84, and must contain a sufficient number of 
views to constitute a complete disclosure of the appearance of the 
design.
    (1) Appropriate and adequate surface shading should be used to show 
the character or contour of the surfaces represented. Solid black 
surface shading is not permitted except when used to represent the color 
black as well as color contrast. Broken lines may be used to show 
visible environmental structure, but may not be used to show hidden 
planes and surfaces which cannot be seen through opaque materials. 
Alternate positions of a design component, illustrated by full and 
broken lines in the same view are not permitted in a design drawing.
    (2) Color photographs and color drawings are not permitted in design 
applications in the absence of a grantable petition pursuant to 
Sec. 1.84(a)(2). Photographs and ink drawings are not permitted to be 
combined as formal drawings in one application. Photographs submitted in 
lieu of ink drawings in design patent applications must comply with 
Sec. 1.84(b) and must not disclose environmental structure but must be 
limited to the design for the article claimed.
    (b) Any detail shown in the ink or color drawings or photographs 
(formal or informal) deposited with the original application papers 
constitutes an integral part of the disclosed and claimed design, except 
as otherwise provided in this paragraph. This detail may include, but is 
not limited to, color or contrast, graphic or written indicia, including 
identifying indicia of a proprietary nature, surface ornamentation on an 
article, or any combination thereof.

[[Page 71]]

    (1) When any detail shown in informal drawings or photographs does 
not constitute an integral part of the disclosed and claimed design, a 
specific disclaimer must appear in the original application papers 
either in the specification or directly on the drawings or photographs. 
This specific disclaimer in the original application papers will provide 
antecedent basis for the omission of the disclaimed detail(s) in later-
filed drawings or photographs.
    (2) When informal color drawings or photographs are deposited with 
the original application papers without a disclaimer pursuant to 
paragraph (b)(1) of this section, formal color drawings or photographs, 
or a black and white drawing lined to represent color, will be required.

[62 FR 53195, Oct. 10, 1997]



Sec. 1.153  Title, description and claim, oath or declaration.

    (a) The title of the design must designate the particular article. 
No description, other than a reference to the drawing, is ordinarily 
required. The claim shall be in formal terms to the ornamental design 
for the article (specifying name) as shown, or as shown and described. 
More than one claim is neither required nor permitted.
    (b) The oath or declaration required of the applicant must comply 
with Sec. 1.63.


(35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964; 
48 FR 2712, Jan. 20, 1983]



Sec. 1.154  Arrangement of application elements.

    (a) The elements of the design application, if applicable, should 
appear in the following order:
    (1) Design Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Preamble, stating name of the applicant, title of the design, 
and a brief description of the nature and intended use of the article in 
which the design is embodied.
    (4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or development.
    (6) Description of the figure or figures of the drawing.
    (7) Feature Description.
    (8) A single claim.
    (9) Drawings or photographs.
    (10) Executed oath or declaration (See Sec. 1.153(b)).
    (b) [Reserved]

[61 FR 42806, Aug. 19, 1996, as amended at 62 FR 53196, Oct. 10, 1997]



Sec. 1.155  Issue of design patents.

    If, on examination, it appears that the applicant is entitled to a 
design patent under the law, a notice of allowance will be sent to the 
applicant, or applicant's attorney or agent, calling for the payment of 
the issue fee (Sec. 1.18(b)). If this issue fee is not paid within three 
months of the date of the notice of allowance, the application shall be 
regarded as abandoned.

[62 FR 53196, Oct. 10, 1997]

                              Plant Patents



Sec. 1.161  Rules applicable.

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



Sec. 1.162  Applicant, oath or declaration.

    The applicant for a plant patent must be the person who has invented 
or discovered and asexually reproduced the new and distinct variety of 
plant for which a patent is sought (or as provided in Secs. 1.42, 1.43, 
and 1.47). The oath or declaration required of the applicant, in 
addition to the averments required by Sec. 1.63, must state that he or 
she has asexually reproduced the plant. Where the plant is a newly found 
plant the oath or declaration must also state that it was found in a 
cultivated area.


(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2713, Jan. 20, 1983]

[[Page 72]]



Sec. 1.163  Specification and arrangement of application elements.

    (a) The specification must contain as full and complete a disclosure 
as possible of the plant and the characteristics thereof that 
distinguish the same over related known varieties, and its antecedents, 
and must particularly point out where and in what manner the variety of 
plant has been asexually reproduced. In the case of a newly found plant, 
the specification must particularly point out the location and character 
of the area where the plant was discovered.
    (b) Two copies of the specification (including the claim) must be 
submitted, but only one signed oath or declaration is required.
    (c) The elements of the plant application, if applicable, should 
appear in the following order:
    (1) Plant Application Transmittal Form.
    (2) Fee Transmittal Form.
    (3) Title of the invention.
    (4) Cross-reference to related applications.
    (5) Statement regarding federally sponsored research or development.
    (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.
    (12) Drawings (in duplicate).
    (13) Executed oath or declaration.
    (14) Plant color coding sheet.
    (d) A plant color coding sheet as used in this section means a sheet 
that specifies a color coding system as designated in a color 
dictionary, and lists every plant structure to which color is a 
distinguishing feature and the corresponding color code which best 
represents that plant structure.

(35 U.S.C. 112, 162; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983; 61 
FR 42806, Aug. 19, 1996; 62 FR 53196, Oct. 10, 1997]



Sec. 1.164  Claim.

    The claim shall be in formal terms to the new and distinct variety 
of the specified plant as described and illustrated, and may also recite 
the principal distinguishing characteristics. More than one claim is not 
permitted.


(35 U.S.C. 162)



Sec. 1.165  Plant drawings.

    (a) Plant patent drawings should be artistically and competently 
executed and must comply with the requirements of Sec. 1.84. View 
numbers and reference characters need not be employed unless required by 
the examiner. The drawing must disclose all the distinctive 
characteristics of the plant capable of visual representation.
    (b) The drawing may be in color and when color is a distinguishing 
characteristic of the new variety, the drawing must be in color. Two 
copies of color drawings or color photographs must be submitted.

[58 FR 38726, July 20, 1993]



Sec. 1.166  Specimens.

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


(35 U.S.C. 114, 161)



Sec. 1.167  Examination.

    Applications may be submitted by the Patent and Trademark Office to 
the Department of Agriculture for study and report.

[62 FR 53196, Oct. 10, 1997]

                                Reissues

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



Sec. 1.171  Application for reissue.

    An application for reissue must contain the same parts required for 
an application for an original patent, complying with all the rules 
relating thereto except as otherwise provided, and in

[[Page 73]]

addition, must comply with the requirements of the rules relating to 
reissue applications.

[62 FR 53196, Oct. 10, 1997]



Sec. 1.172  Applicants, assignees.

    (a) A reissue oath must be signed and sworn to or declaration made 
by the inventor or inventors except as otherwise provided (see 
Secs. 1.42, 1.43, 1.47), and must be accompanied by the written consent 
of all assignees, if any, owning an undivided interest in the patent, 
but a reissue oath may be made and sworn to or declaration made by the 
assignee of the entire interest if the application does not seek to 
enlarge the scope of the claims of the original patent. All assignees 
consenting to the reissue must establish their ownership interest in the 
patent by filing in the reissue application a submission in accordance 
with the provisions of Sec. 3.73(b) of this chapter.
    (b) A reissue will be granted to the original patentee, his legal 
representatives or assigns as the interest may appear.

(35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983; 62 
FR 53196, Oct. 10, 1997]



Sec. 1.173  Specification.

    The specification of the reissue application must include the entire 
specification and claims of the patent, with the matter to be omitted by 
reissue enclosed in square brackets; and any additions made by the 
reissue must be underlined, so that the old and the new specifications 
and claims may be readily compared. Claims should not be renumbered and 
the numbering of claims added by reissue should follow the number of the 
highest numbered patent claim. No new matter shall be introduced into 
the specification.



Sec. 1.174  Drawings.

    (a) The drawings upon which the original patent was issued may be 
used in reissue applications if no changes whatsoever are to be made in 
the drawings. In such cases, when the reissue application is filed, the 
applicant must submit a temporary drawing which may consist of a copy of 
the printed drawings of the patent or a photoprint of the original 
drawings of the size required for original drawing.
    (b) Amendments which can be made in a reissue drawing, that is, 
changes from the drawing of the patent, are restricted.


(36 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983]



Sec. 1.175  Reissue oath or declaration.

    (a) The reissue oath or declaration in addition to complying with 
the requirements of Sec. 1.63, must also state that:
    (1) The applicant believes the original patent to be wholly or 
partly inoperative or invalid by reason of a defective specification or 
drawing, or by reason of the patentee claiming more or less than the 
patentee had the right to claim in the patent, stating at least one 
error being relied upon as the basis for reissue; and
    (2) All errors being corrected in the reissue application up to the 
time of filing of the oath or declaration under this paragraph arose 
without any deceptive intention on the part of the applicant.
    (b)(1) For any error corrected, which is not covered by the oath or 
declaration submitted under paragraph (a) of this section, applicant 
must submit a supplemental oath or declaration stating that every such 
error arose without any deceptive intention on the part of the 
applicant. Any supplemental oath or declaration required by this 
paragraph must be submitted before allowance and may be submitted:
    (i) With any amendment prior to allowance; or
    (ii) In order to overcome a rejection under 35 U.S.C. 251 made by 
the examiner where it is indicated that the submission of a supplemental 
oath or declaration as required by this paragraph will overcome the 
rejection.
    (2) For any error sought to be corrected after allowance, a 
supplemental oath or declaration must accompany the requested correction 
stating that the error(s) to be corrected arose without any deceptive 
intention on the part of the applicant.

[[Page 74]]

    (c) Having once stated an error upon which the reissue is based, as 
set forth in paragraph (a)(1), unless all errors previously stated in 
the oath or declaration are no longer being corrected, a subsequent oath 
or declaration under paragraph (b) of this section need not specifically 
identify any other error or errors being corrected.
    (d) The oath or declaration required by paragraph (a) of this 
section may be submitted under the provisions of Sec. 1.53(f).

[62 FR 53196, Oct. 10, 1997]



Sec. 1.176  Examination of reissue.

    An original claim, if re-presented in the reissue application, is 
subject to reexamination, and the entire application will be examined in 
the same manner as original applications, subject to the rules relating 
thereto, excepting that division will not be required. Applications for 
reissue will be acted on by the examiner in advance of other 
applications, but not sooner than two months after announcement of the 
filing of the reissue application has appeared in the Official Gazette.

[42 FR 5595, Jan. 28, 1977]



Sec. 1.177  Reissue in divisions.

    The Commissioner may, in his or her discretion, cause several 
patents to be issued for distinct and separate parts of the thing 
patented, upon demand of the applicant, and upon payment of the required 
fee for each division. Each division of a reissue constitutes the 
subject of a separate specification descriptive of the part or parts of 
the invention claimed in such division; and the drawing may represent 
only such part or parts, subject to the provisions of Secs. 1.83 and 
1.84. On filing divisional reissue applications, they shall be referred 
to the Commissioner. Unless otherwise ordered by the Commissioner upon 
petition and payment of the fee set forth in Sec. 1.17(i), all the 
divisions of a reissue will issue simultaneously; if there is any 
controversy as to one division, the others will be withheld from issue 
until the controversy is ended, unless the Commissioner orders 
otherwise.

[60 FR 20227, Apr. 25, 1995]



Sec. 1.178  Original patent.

    The application for a reissue must be accompanied by an offer to 
surrender the original patent. The application should also be 
accompanied by the original patent, or if the original is lost or 
inaccessible, by an affidavit or declaration to that effect. The 
application may be accepted for examination in the absence of the 
original patent or the affidavit or declaration, but one or the other 
must be supplied before the case is allowed. If a reissue be refused, 
the original patent will be returned to applicant upon his request.

[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969]



Sec. 1.179  Notice of reissue application.

    When an application for a reissue is filed, there will be placed in 
the file of the original patent a notice stating that an application for 
reissue has been filed. When the reissue is granted or the reissue 
application is otherwise terminated, the fact will be added to the 
notice in the file of the original patent.

                Petitions and Action by the Commissioner

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



Sec. 1.181  Petition to the Commissioner.

    (a) Petition may be taken to the Commissioner:
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application which is not subject to appeal to the 
Board of Patent Appeals and Interferences or to the court;
    (2) In cases in which a statute or the rules specify that the matter 
is to be determined directly by or reviewed by the Commissioner; and
    (3) To invoke the supervisory authority of the Commissioner in 
appropriate circumstances. For petitions in interferences, see 
Sec. 1.644.
    (b) Any such petition must contain a statement of the facts involved 
and the point or points to be reviewed and the action requested. Briefs 
or memoranda, if any, in support thereof should accompany or be embodied 
in the petition; and where facts are to be proven,

[[Page 75]]

the proof in the form of affidavits or declarations (and exhibits, if 
any) must accompany the petition.
    (c) When a petition is taken from an action or requirement of an 
examiner in the ex parte prosecution of an application, it may be 
required that there have been a proper request for reconsideration 
(Sec. 1.111) and a repeated action by the examiner. The examiner may be 
directed by the Commissioner to furnish a written statement, within a 
specified time, setting forth the reasons for his decision upon the 
matters averred in the petition, supplying a copy thereof to the 
petitioner.
    (d) Where a fee is required for a petition to the Commissioner the 
appropriate section of this part will so indicate. If any required fee 
does not accompany the petition, the petition will be dismissed.
    (e) Oral hearing will not be granted except when considered 
necessary by the Commissioner.
    (f) Except as otherwise provided in these rules, any such petition 
not filed within 2 months from the action complained of, may be 
dismissed as untimely. The mere filing of a petition will not stay the 
period for reply to an Examiner's action which may be running against an 
application, nor act as a stay of other proceedings.
    (g) The Commissioner may delegate to appropriate Patent and 
Trademark Office officials the determination of petitions.

[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969; 
47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984]



Sec. 1.182  Questions not specifically provided for.

    All situations not specifically provided for in the regulations of 
this part will be decided in accordance with the merits of each 
situation by or under the authority of the Commissioner, subject to such 
other requirements as may be imposed, and such decision will be 
communicated to the interested parties in writing. Any petition seeking 
a decision under this section must be accompanied by the petition fee 
set forth in Sec. 1.17(h).

[62 FR 53196, Oct. 10, 1997]



Sec. 1.183  Suspension of rules.

    In an extraordinary situation, when justice requires, any 
requirement of the regulations in this part which is not a requirement 
of the statutes may be suspended or waived by the Commissioner or the 
Commissioner's designee, sua sponte, or on petition of the interested 
party, subject to such other requirements as may be imposed. Any 
petition under this section must be accompanied by the petition fee set 
forth in Sec. 1.17(h).

[47 FR 41278, Sept. 17, 1982]



Sec. 1.184  [Reserved]

         Appeal to the Board of Patent Appeals and Interferences

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



Sec. 1.191  Appeal to Board of Patent Appeals and Interferences.

    (a) Every applicant for a patent or for reissue of a patent, and 
every owner of a patent under reexamination, any of whose claims has 
been twice or finally (Sec. 1.113) rejected, may appeal from the 
decision of the examiner to the Board of Patent Appeals and 
Interferences by filing a notice of appeal and the fee set forth in 
Sec. 1.17(b) within the time period provided under Secs. 1.134 and 1.136 
for reply.
    (b) The signature requirement of Sec. 1.33 does not apply to a 
notice of appeal filed under this section.
    (c) An appeal when taken must be taken from the rejection of all 
claims under rejection which the applicant or patent owner proposes to 
contest. Questions relating to matters not affecting the merits of the 
invention may be required to be settled before an appeal can be 
considered.
    (d) The time periods set forth in Secs. 1.191 and 1.192 are subject 
to the provisions of Sec. 1.136 for patent applications and 
Sec. 1.550(c) for reexamination proceedings. The time periods set forth 
in Secs. 1.193, 1.194, 1.196 and 1.197 are subject to the provisions of 
Sec. 1.136(b) for patent applications or Sec. 1.550(c) for reexamination 
proceedings. See Sec. 1.304(a) for extensions of time for filing a 
notice of appeal to the U.S. Court of Appeals for

[[Page 76]]

the Federal Circuit or for commencing a civil action.
    (e) Jurisdiction over the application or patent under reexamination 
passes to the Board of Patent Appeals and Interferences upon transmittal 
of the file, including all briefs and examiner's answers, to the Board. 
Prior to the entry of a decision on the appeal, the Commissioner may sua 
sponte order the application remanded to the examiner.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[46 FR 29183, May 29, 1981, as amended at 49 FR 555, Jan. 4, 1984; 49 FR 
48453, Dec. 12, 1984; 54 FR 29552, July 13, 1989; 58 FR 54510, Oct. 22, 
1993; 62 FR 53196, Oct. 10, 1997]



Sec. 1.192  Appellant's brief.

    (a) Appellant must, within two months from the date of the notice of 
appeal under Sec. 1.191 or within the time allowed for reply to the 
action from which the appeal was taken, if such time is later, file a 
brief in triplicate. The brief must be accompanied by the fee set forth 
in Sec. 1.17(c) and must set forth the authorities and arguments on 
which appellant will rely to maintain the appeal. Any arguments or 
authorities not included in the brief will be refused consideration by 
the Board of Patent Appeals and Interferences, unless good cause is 
shown.
    (b) On failure to file the brief, accompanied by the requisite fee, 
within the time allowed, the appeal shall stand dismissed.
    (c) The brief shall contain the following items under appropriate 
headings and in the order indicated below unless the brief is filed by 
an applicant who is not represented by a registered practitioner:
    (1) Real party in interest. A statement identifying the real party 
in interest, if the party named in the caption of the brief is not the 
real party in interest.
    (2) Related appeals and interferences. A Statement identifying by 
number and filing date all other appeals or interferences known to 
appellant, the appellant's legal representative, or assignee which will 
directly affect or be directly affected by or have a bearing on the 
Board's decision in the pending appeal.
    (3) Status of claims. A statement of the status of all the claims, 
pending or cancelled, and identifying the claims appealed.
    (4) Status of amendments. A statement of the status of any amendment 
filed subsequent to final rejection.
    (5) Summary of invention. A concise explanation of the invention 
defined in the claims involved in the appeal, which shall refer to the 
specification by page and line number, and to the drawing, if any, by 
reference characters.
    (6) Issues. A concise statement of the issues presented for review.
    (7) Grouping of claims. For each ground of rejection which appellant 
contests and which applies to a group of two or more claims, the Board 
shall select a single claim from the group and shall decide the appeal 
as to the ground of rejection on the basis of that claim alone unless a 
statement is included that the claims of the group do not stand or fall 
together and, in the argument under paragraph (c)(8) of this section, 
appellant explains why the claims of the group are believed to be 
separately patentable. Merely pointing out differences in what the 
claims cover is not an argument as to why the claims are separately 
patentable.
    (8) Argument. The contentions of appellant with respect to each of 
the issues presented for review in paragraph (c)(6) of this section, and 
the basis therefor, with citations of the authorities, statutes, and 
parts of the record relied on. Each issue should be treated under a 
separate heading.
    (i) For each rejection under 35 U.S.C. 112, first paragraph, the 
argument shall specify the errors in the rejection and how the first 
paragraph of 35 U.S.C. 112 is complied with, including, as appropriate, 
how the specification and drawings, if any,
    (A) Describe the subject matter defined by each of the rejected 
claims,
    (B) Enable any person skilled in the art to make and use the subject 
matter defined by each of the rejected claims, and
    (C) Set forth the best mode contemplated by the inventor of carrying 
out his or her invention.
    (ii) For each rejection under 35 U.S.C. 112, second paragraph, the 
argument shall specify the errors in the rejection and how the claims 
particularly point

[[Page 77]]

out and distinctly claim the subject matter which applicant regards as 
the invention.
    (iii) For each rejection under 35 U.S.C. 102, the argument shall 
specify the errors in the rejection and why the rejected claims are 
patentable under 35 U.S.C. 102, including any specific limitations in 
the rejected claims which are not described in the prior art relied upon 
in the rejection.
    (iv) For each rejection under 35 U.S.C. 103, the argument shall 
specify the errors in the rejection and, if appropriate, the specific 
limitations in the rejected claims which are not described in the prior 
art relied on in the rejection, and shall explain how such limitations 
render the claimed subject matter unobvious over the prior art. If the 
rejection is based upon a combination of references, the argument shall 
explain why the references, taken as a whole, do not suggest the claimed 
subject matter, and shall include, as may be appropriate, an explanation 
of why features disclosed in one reference may not properly be combined 
with features disclosed in another reference. A general argument that 
all the limitations are not described in a single reference does not 
satisfy the requirements of this paragraph.
    (v) For any rejection other than those referred to in paragraphs 
(c)(8) (i) to (iv) of this section, the argument shall specify the 
errors in the rejection and the specific limitations in the rejected 
claims, if appropriate, or other reasons, which cause the rejection to 
be in error.
    (9) Appendix. An appendix containing a copy of the claims involved 
in the appeal.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (c) of this section, appellant will be 
notified of the reasons for non-compliance and provided with a period of 
one month within which to file an amended brief. If appellant does not 
file an amended brief during the one-month period, or files an amended 
brief which does not overcome all the reasons for non-compliance stated 
in the notification, the appeal will stand dismissed.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[36 FR 5850, Mar. 30, 1971, as amended at 53 FR 23734, June 23, 1988; 58 
FR 54510, Oct. 22, 1993; 60 FR 14518, Mar. 17, 1995; 62 FR 53196, Oct. 
10, 1997]



Sec. 1.193  Examiner's answer and reply brief.

    (a)(1) The primary examiner may, within such time as may be directed 
by the Commissioner, furnish a written statement in answer to 
appellant's brief including such explanation of the invention claimed 
and of the references and grounds of rejection as may be necessary, 
supplying a copy to appellant. If the primary examiner finds that the 
appeal is not regular in form or does not relate to an appealable 
action, the primary examiner shall so state.
    (2) An examiner's answer must not include a new ground of rejection, 
but if an amendment under Sec. 1.116 proposes to add or amend one or 
more claims and appellant was advised that the amendment under 
Sec. 1.116 would be entered for purposes of appeal and which individual 
rejection(s) set forth in the action from which the appeal was taken 
would be used to reject the added or amended claim(s), then the appeal 
brief must address the rejection(s) of the claim(s) added or amended by 
the amendment under Sec. 1.116 as appellant was so advised and the 
examiner's answer may include the rejection(s) of the claim(s) added or 
amended by the amendment under Sec. 1.116 as appellant was so advised. 
The filing of an amendment under Sec. 1.116 which is entered for 
purposes of appeal represents appellant's consent that when so advised 
any appeal proceed on those claim(s) added or amended by the amendment 
under Sec. 1.116 subject to any rejection set forth in the action from 
which the appeal was taken.
    (b)(1) Appellant may file a reply brief to an examiner's answer 
within two months from the date of such examiner's answer. See 
Sec. 1.136(b) for extensions of time for filing a reply brief in a 
patent application and Sec. 1.550(c) for extensions of time for filing a 
reply

[[Page 78]]

brief in a reexamination proceeding. The primary examiner must either 
acknowledge receipt and entry of the reply brief or withdraw the final 
rejection and reopen prosecution to respond to the reply brief. A 
supplemental examiner's answer is not permitted, unless the application 
has been remanded by the Board of Patent Appeals and Interferences for 
such purpose.
    (2) Where prosecution is reopened by the primary examiner after an 
appeal or reply brief has been filed, appellant must exercise one of the 
following two options to avoid abandonment of the application:
    (i) File a reply under Sec. 1.111, if the Office action is not 
final, or a reply under Sec. 1.113, if the Office action is final; or
    (ii) Request reinstatement of the appeal. If reinstatement of the 
appeal is requested, such request must be accompanied by a supplemental 
appeal brief, but no new amendments, affidavits (Secs. 1.130, 1.131 or 
1.132) or other evidence are permitted.

[62 FR 53197, Oct. 10, 1997]



Sec. 1.194  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances 
in which appellant considers such a hearing necessary or desirable for a 
proper presentation of the appeal. An appeal decided without an oral 
hearing will receive the same consideration by the Board of Patent 
Appeals and Interferences as appeals decided after oral hearing.
    (b) If appellant desires an oral hearing, appellant must file, in a 
separate paper, a written request for such hearing accompanied by the 
fee set forth in Sec. 1.17(d) within two months from the date of the 
examiner's answer. If appellant requests an oral hearing and submits 
therewith the fee set forth in Sec. 1.17(d), an oral argument may be 
presented by, or on behalf of, the primary examiner if considered 
desirable by either the primary examiner or the Board. See Sec. 1.136(b) 
for extensions of time for requesting an oral hearing in a patent 
application and Sec. 1.550(c) for extensions of time for requesting an 
oral hearing in a reexamination proceeding.
    (c) If no request and fee for oral hearing have been timely filed by 
appellant, the appeal will be assigned for consideration and decision. 
If appellant has requested an oral hearing and has submitted the fee set 
forth in Sec. 1.17(d), a day of hearing will be set, and due notice 
thereof given to appellant and to the primary examiner. A hearing will 
be held as stated in the notice, and oral argument will be limited to 
twenty minutes for appellant and fifteen minutes for the primary 
examiner unless otherwise ordered before the hearing begins. If the 
Board decides that a hearing is not necessary, the Board will so notify 
appellant.

[62 FR 53197, Oct. 10, 1997]



Sec. 1.195  Affidavits or declarations after appeal.

    Affidavits, declarations, or exhibits submitted after the case has 
been appealed will not be admitted without a showing of good and 
sufficient reasons why they were not earlier presented.

[34 FR 18858, Nov. 26, 1969]



Sec. 1.196  Decision by the Board of Patent Appeals and Interferences.

    (a) The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse the decision of the examiner in whole or in part 
on the grounds and on the claims specified by the examiner or remand the 
application to the examiner for further consideration. The affirmance of 
the rejection of a claim on any of the grounds specified constitutes a 
general affirmance of the decision of the examiner on that claim, except 
as to any ground specifically reversed.
    (b) Should the Board of Patent Appeals and Interferences have 
knowledge of any grounds not involved in the appeal for rejecting any 
pending claim, it may include in the decision a statement to that effect 
with its reasons for so holding, which statement constitutes a new 
ground of rejection of the claim. A new ground of rejection shall not be 
considered final for purposes of judicial review. When the Board of 
Patent Appeals and Interferences makes a new ground of rejection, the 
appellant, within two months from the date of the decision, must 
exercise one of the following two options

[[Page 79]]

with respect to the new ground of rejection to avoid termination of 
proceedings (Sec. 1.197(c)) as to the rejected claims:
    (1) Submit an appropriate amendment of the claims so rejected or a 
showing of facts relating to the claims so rejected, or both, and have 
the matter reconsidered by the examiner, in which event the application 
will be remanded to the examiner. The new ground of rejection is binding 
upon the examiner unless an amendment or showing of facts not previously 
of record be made which, in the opinion of the examiner, overcomes the 
new ground of rejection stated in the decision. Should the examiner 
reject the claims, appellant may again appeal pursuant to Secs. 1.191 
through 1.195 to the Board of Patent Appeals and Interferences.
    (2) Request that the application be reheard under Sec. 1.197(b) by 
the Board of Patent Appeals and Interferences upon the same record. The 
request for rehearing must address the new ground of rejection and state 
with particularity the points believed to have been misapprehended or 
overlooked in rendering the decision and also state all other grounds 
upon which rehearing is sought. Where request for such rehearing is 
made, the Board of Patent Appeals and Interferences shall rehear the new 
ground of rejection and, if necessary, render a new decision which shall 
include all grounds of rejection upon which a patent is refused. The 
decision on rehearing is deemed to incorporate the earlier decision for 
purposes of appeal, except for those portions specifically withdrawn on 
rehearing, and is final for the purpose of judicial review, except when 
noted otherwise in the decision.
    (c) Should the decision of the Board of Patent Appeals and 
Interferences include an explicit statement that a claim may be allowed 
in amended form, appellant shall have the right to amend in conformity 
with such statement which shall be binding on the examiner in the 
absence of new references or grounds of rejection.
    (d) The Board of Patent Appeals and Interferences may require 
appellant to address any matter that is deemed appropriate for a 
reasoned decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such a requirement.
    (e) Whenever a decision of the Board of Patent Appeals and 
Interferences includes or allows a remand, that decision shall not be 
considered a final decision. When appropriate, upon conclusion of 
proceedings on remand before the examiner, the Board of Patent Appeals 
and Interferences may enter an order otherwise making its decision 
final.
    (f) See Sec. 1.136(b) for extensions of time to take action under 
this section in a patent application and Sec. 1.550(c) for extensions of 
time in a reexamination proceeding.

[49 FR 48453, Dec. 12, 1984, as amended at 54 FR 29552, July 13, 1989; 
58 FR 54510, Oct. 22, 1993; 62 FR 53197, Oct. 10, 1997]



Sec. 1.197  Action following decision.

    (a) After decision by the Board of Patent Appeals and Interferences, 
the application will be returned to the examiner, subject to appellant's 
right of appeal or other review, for such further action by appellant or 
by the examiner, as the condition of the application may require, to 
carry into effect the decision.
    (b) Appellant may file a single request for rehearing within two 
months from the date of the original decision, unless the original 
decision is so modified by the decision on rehearing as to become, in 
effect, a new decision, and the Board of Patent Appeals and 
Interferences so states. The request for rehearing must state with 
particularity the points believed to have been misapprehended or 
overlooked in rendering the decision and also state all other grounds 
upon which rehearing is sought. See Sec. 1.136(b) for extensions of time 
for seeking rehearing in a patent application and Sec. 1.550(c) for 
extensions of time for seeking rehearing in a reexamination proceeding.
    (c) Termination of proceedings. Proceedings are considered 
terminated by the dismissal of an appeal or the failure to timely file 
an appeal to the court or a civil action (Sec. 1.304) except:
    (1) Where claims stand allowed in an application or

[[Page 80]]

    (2) Where the nature of the decision requires further action by the 
examiner.

The date of termination of proceedings is the date on which the appeal 
is dismissed or the date on which the time for appeal to the court or 
review by civil action (Sec. 1.304) expires. If an appeal to the court 
or a civil action has been filed, proceedings are considered terminated 
when the appeal or civil action is terminated. An appeal to the U.S. 
Court of Appeals for the Federal Circuit is terminated when the mandate 
is received by the Office. A civil action is terminated when the time to 
appeal the judgment expires.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[46 FR 29184, May 29, 1981, as amended at 49 FR 48453, Dec. 12, 1984; 54 
FR 29552, July 13, 1989; 58 FR 54510, Oct. 22, 1993; 62 FR 53198, Oct. 
10, 1997]



Sec. 1.198  Reopening after decision.

    Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary 
examiner except under the provisions of Sec. 1.114 or Sec. 1.196 without 
the written authority of the Commissioner, and then only for the 
consideration of matters not already adjudicated, sufficient cause being 
shown.

[65 FR 14873, Mar. 20, 2000]



Sec. 1.198  Reopening after decision.

    Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary 
examiner except under the provisions of Sec. 1.196 without the written 
authority of the Commissioner, and then only for the consideration of 
matters not already adjudicated, sufficient cause being shown.

[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48453, Dec. 12, 1984]

                        Miscellaneous Provisions



Sec. 1.248  Service of papers; manner of service; proof of service in cases other than interferences.

    (a) Service of papers must be on the attorney or agent of the party 
if there be such or on the party if there is no attorney or agent, and 
may be made in any of the following ways:
    (1) By delivering a copy of the paper to the person served;
    (2) By leaving a copy at the usual place of business of the person 
served with someone in his employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with some person of suitable 
age and discretion who resides there;
    (4) Transmission by first class mail. When service is by mail the 
date of mailing will be regarded as the date of service;
    (5) Whenever it shall be satisfactorily shown to the Commissioner 
that none of the above modes of obtaining or serving the paper is 
practicable, service may be by notice published in the Official Gazette.
    (b) Papers filed in the Patent and Trademark Office which are 
required to be served shall contain proof of service. Proof of service 
may appear on or be affixed to papers filed. Proof of service shall 
include the date and manner of service. In the case of personal service, 
proof of service shall also include the name of any person served, 
certified by the person who made service. Proof of service may be made 
by:
    (1) An acknowledgement of service by or on behalf of the person 
served or
    (2) A statement signed by the attorney or agent containing the 
information required by this section.
    (c) See Sec. 1.646 for service of papers in interferences.

[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984]

                   Protests and Public Use Proceedings



Sec. 1.291  Protests by the public against pending applications.

    (a) Protests by a member of the public against pending applications 
will be referred to the examiner having charge of the subject matter 
involved. A protest specifically identifying the application to which 
the protest is directed will be entered in the application file if:
    (1) The protest is submitted prior to the mailing of a notice of 
allowance under Sec. 1.311; and

[[Page 81]]

    (2) The protest is either served upon the applicant in accordance 
with Sec. 1.248, or filed with the Office in duplicate in the event 
service is not possible.
    (b) Protests raising fraud or other inequitable conduct issues will 
be entered in the application file, generally without comment on those 
issues. Protests which do not adequately identify a pending patent 
application will be returned to the protestor and will not be further 
considered by the Office. A protest submitted in accordance with the 
second sentence of paragraph (a) of this section will be considered by 
the Office if the application is still pending when the protest and 
application file are brought before the examiner and it includes:
    (1) A listing of the patents, publications, or other information 
relied upon;
    (2) A concise explanation of the relevance of each listed item;
    (3) A copy of each listed patent or publication or other item of 
information in written form or at least the pertinent portions thereof; 
and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent, publication, or 
other item of information in written form relied upon.
    (c) A member of the public filing a protest in an application under 
paragraph (a) of this section will not receive any communications from 
the Office relating to the protest, other than the return of a self-
addressed postcard which the member of the public may include with the 
protest in order to receive an acknowledgment by the Office that the 
protest has been received. In the absence of a request by the Office, an 
applicant has no duty to, and need not, reply to a protest. The limited 
involvement of the member of the public filing a protest pursuant to 
paragraph (a) of this section ends with the filing of the protest, and 
no further submission on behalf of the protestor will be considered, 
except for additional prior art, or unless such submission raises new 
issues which could not have been earlier presented.

[47 FR 21752, May 19, 1982, as amended at 57 FR 2035, Jan. 17, 1992; 61 
FR 42806, Aug. 19, 1996; 62 FR 53198, Oct. 10, 1997]



Sec. 1.292  Public use proceedings.

    (a) When a petition for the institution of public use proceedings, 
supported by affidavits or declarations is found, on reference to the 
examiner, to make a prima facie showing that the invention claimed in an 
application believed to be on file had been in public use or on sale 
more than one year before the filing of the application, a hearing may 
be had before the Commissioner to determine whether a public use 
proceeding should be instituted. If instituted, the Commissioner may 
designate an appropriate official to conduct the public use proceeding, 
including the setting of times for taking testimony, which shall be 
taken as provided by Secs. 1.671 through 1.685. The petitioner will be 
heard in the proceedings but after decision therein will not be heard 
further in the prosecution of the application for patent.
    (b) The petition and accompanying papers, or a notice that such a 
petition has been filed, shall be entered in the application file if:
    (1) The petition is accompanied by the fee set forth in 
Sec. 1.17(j);
    (2) The petition is served on the applicant in accordance with 
Sec. 1.248, or filed with the Office in duplicate in the event service 
is not possible; and
    (3) The petition is submitted prior to the mailing of a notice of 
allowance under Sec. 1.311.
    (c) A petition for institution of public use proceedings shall not 
be filed by a party to an interference as to an application involved in 
the interference. Public use and on sale issues in an interference shall 
be raised by a preliminary motion under Sec. 1.633(a).


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[42 FR 5595, Jan. 28, 1977, as amended at 49 FR 48454, Dec. 12, 1984; 61 
FR 42807, Aug. 19, 1996]



Sec. 1.293  Statutory invention registration.

    (a) An applicant for an original patent may request, at any time 
during the pendency of applicant's pending complete application, that 
the specification and drawings be published as a statutory invention 
registration. Any such request must be signed by (1) the applicant and 
any assignee of record or

[[Page 82]]

(2) an attorney or agent of record in the application.
    (b) Any request for publication of a statutory invention 
registration must include the following parts:
    (1) A waiver of the applicant's right to receive a patent on the 
invention claimed effective upon the date of publication of the 
statutory invention registration;
    (2) The required fee for filing a request for publication of a 
statutory invention registration as provided for in Sec. 1.17 (n) or 
(o);
    (3) A statement that, in the opinion of the requester, the 
application to which the request is directed meets the requirements of 
35 U.S.C. 112; and
    (4) A statement that, in the opinion of the requester, the 
application to which the request is directed complies with the formal 
requirements of this part for printing as a patent.
    (c) A waiver filed with a request for a statutory invention 
registration will be effective, upon publication of the statutory 
invention registration, to waive the inventor's right to receive a 
patent on the invention claimed in the statutory invention registration, 
in any application for an original patent which is pending on, or filed 
after, the date of publication of the statutory invention registration. 
A waiver filed with a request for a statutory invention registration 
will not affect the rights of any other inventor even if the subject 
matter of the statutory invention registration and an application of 
another inventor are commonly owned. A waiver filed with a request for a 
statutory invention registration will not affect any rights in a patent 
to the inventor which issued prior to the date of publication of the 
statutory invention registration unless a reissue application is filed 
seeking to enlarge the scope of the claims of the patent. See also 
Sec. 1.104(c)(5).

(Approved by the Office of Management and Budget under control number 
0651-0018)

[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]



Sec. 1.294  Examination of request for publication of a statutory invention registration and patent application to which the request is directed.

    (a) Any request for a statutory invention registration will be 
examined to determine if the requirements of Sec. 1.293 have been met. 
The application to which the request is directed will be examined to 
determine (1) if the subject matter of the application is appropriate 
for publication, (2) if the requirements for publication are met, and 
(3) if the requirements of 35 U.S.C. 112 and Sec. 1.293 of this part are 
met.
    (b) Applicant will be notified of the results of the examination set 
forth in paragraph (a) of this section. If the requirements of 
Sec. 1.293 and this section are not met by the request filed, the 
notification to applicant will set a period of time within which to 
comply with the requirements in order to avoid abandonment of the 
application. If the application does not meet the requirements of 35 
U.S.C. 112, the notification to applicant will include a rejection under 
the appropriate provisions of 35 U.S.C. 112. The periods for reply 
established pursuant to this section are subject to the extension of 
time provisions of Sec. 1.136. After reply by the applicant, the 
application will again be considered for publication of a statutory 
invention registration. If the requirements of Sec. 1.293 and this 
section are not timely met, the refusal to publish will be made final. 
If the requirements of 35 U.S.C. 112 are not met, the rejection pursuant 
to 35 U.S.C. 112 will be made final.
    (c) If the examination pursuant to this section results in approval 
of the request for a statutory invention registration the applicant will 
be notified of the intent to publish a statutory invention registration.

[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]



Sec. 1.295  Review of decision finally refusing to publish a statutory invention registration.

    (a) Any requester who is dissatisfied with the final refusal to 
publish a statutory invention registration for reasons other than 
compliance with 35

[[Page 83]]

U.S.C. 112 may obtain review of the refusal to publish the statutory 
invention registration by filing a petition to the Commissioner 
accompanied by the fee set forth in Sec. 1.17(h) within one month or 
such other time as is set in the decision refusing publication. Any such 
petition should comply with the requirements of Sec. 1.181(b). The 
petition may include a request that the petition fee be refunded if the 
final refusal to publish a statutory invention registration for reasons 
other than compliance with 35 U.S.C. 112 is determined to result from an 
error by the Patent and Trademark Office.
    (b) Any requester who is dissatisfied with a decision finally 
rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the 
decision by filing an appeal to the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.191. If the decision rejecting claims 
pursuant to 35 U.S.C. 112 is reversed, the request for a statutory 
invention registration will be approved and the registration published 
if all of the other provisions of Sec. 1.293 and this section are met.

(Approved by the Office of Management and Budget under control number 
0651-0018)

[50 FR 9382, Mar. 7, 1985]



Sec. 1.296  Withdrawal of request for publication of statutory invention registration.

    A request for a statutory invention registration, which has been 
filed, may be withdrawn prior to the date of the notice of the intent to 
publish a statutory invention registration issued pursuant to 
Sec. 1.294(c) by filing a request to withdraw the request for 
publication of a statutory invention registration. The request to 
withdraw may also include a request for a refund of any amount paid in 
excess of the application filing fee and a handling fee of $130.00 which 
will be retained. Any request to withdraw the request for publication of 
a statutory invention registration filed on or after the date of the 
notice of intent to publish issued pursuant to Sec. 1.294(c) must be in 
the form of a petition pursuant to Sec. 1.183 accompanied by the fee set 
forth in Sec. 1.17(h).

[56 FR 65153, Dec. 13, 1991]



Sec. 1.297  Publication of statutory invention registration.

    (a) If the request for a statutory invention registration is 
approved the statutory invention registration will be published. The 
statutory invention registration will be mailed to the requester at the 
correspondence address as provided for in Sec. 1.33(a). A notice of the 
publication of each statutory invention registration will be published 
in the Official Gazette.
    (b) Each statutory invention registration published will include a 
statement relating to the attributes of a statutory invention 
registration. The statement will read as follows:

    A statutory invention registration is not a patent. It has the 
defensive attributes of a patent but does not have the enforceable 
attributes of a patent. No article or advertisement or the like may use 
the term patent, or any term suggestive of a patent, when referring to a 
statutory invention registration. For more specific information on the 
rights associated with a statutory invention registration see 35 U.S.C. 
157.

[50 FR 9383, Mar. 7, 1985, as amended at 50 FR 31826, Aug. 6, 1985]

        Review of Patent and Trademark Office Decisions by Court



Sec. 1.301  Appeal to U.S. Court of Appeals for the Federal Circuit.

    Any applicant or any owner of a patent involved in a reexamination 
proceeding dissatisfied with the decision of the Board of Patent Appeals 
and Interferences, and any party to an interference dissatisfied with 
the decision of the Board of Patent Appeals and Interferences, may 
appeal to the U.S. Court of Appeals for the Federal Circuit. The 
appellant must take the following steps in such an appeal:
    (a) In the Patent and Trademark Office file a written notice of 
appeal directed to the Commissioner (see Secs. 1.302 and 1.304); and
    (b) In the Court, file a copy of the notice of appeal and pay the 
fee for appeal, as provided by the rules of the Court.

[54 FR 29552, July 13, 1989]



Sec. 1.302  Notice of appeal.

    (a) When an appeal is taken to the U.S. Court of Appeals for the 
Federal

[[Page 84]]

Circuit, the appellant shall give notice thereof to the Commissioner 
within the time specified in Sec. 1.304.
    (b) In interferences, the notice must be served as provided in 
Sec. 1.646.
    (c) A notice of appeal, if mailed to the Office, shall be addressed 
as follows: Box 8, Commissioner of Patents and Trademarks, Washington, 
DC 20231.

[50 FR 9383, Mar. 7, 1985, as amended at 53 FR 16414, May 9, 1988]



Sec. 1.303  Civil action under 35 U.S.C. 145, 146, 306.

    (a) Any applicant or any owner of a patent involved in a 
reexamination proceeding dissatisfied with the decision of the Board of 
Patent Appeals and Interferences, and any party dissatisfied with the 
decision of the Board of Patent Appeals and Interferences, may, instead 
of appealing to the U.S. Court of Appeals for the Federal Circuit 
(Sec. 1.301), have remedy by civil action under 35 U.S.C. 145 or 146, as 
appropriate. Such civil action must be commenced within the time 
specified in Sec. 1.304.
    (b) If an applicant in an ex parte case or an owner of a patent 
involved in a reeexamination proceeding has taken an appeal to the U.S. 
Court of Appeals for the Federal Circuit, he or she thereby waives his 
or her right to proceed under 35 U.S.C. 145.
    (c) If any adverse party to an appeal taken to the U.S. Court of 
Appeals for the Federal Circuit by a defeated party in an interference 
proceeding files notice with the Commissioner within twenty days after 
the filing of the defeated party's notice of appeal to the court 
(Sec. 1.302), that he or she elects to have all further proceedings 
conducted as provided in 35 U.S.C. 146, the notice of election must be 
served as provided in Sec. 1.646.

(35 U.S.C. 6; 15 U.S.C. 1123)

[47 FR 47381, Oct. 26, 1982, as amended at 49 FR 48454, Dec. 12, 1984; 
54 FR 29553, July 13, 1989]



Sec. 1.304  Time for appeal or civil action.

    (a)(1) The time for filing the notice of appeal to the U.S. Court of 
Appeals for the Federal Circuit (Sec. 1.302) or for commencing a civil 
action (Sec. 1.303) is two months from the date of the decision of the 
Board of Patent Appeals and Interferences. If a request for rehearing or 
reconsideration of the decision is filed within the time period provided 
under Sec. 1.197(b) or Sec. 1.658(b), the time for filing an appeal or 
commencing a civil action shall expire two months after action on the 
request. In interferences, the time for filing a cross-appeal or cross-
action expires:
    (i) 14 days after service of the notice of appeal or the summons and 
complaint; or
    (ii) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
    (2) The time periods set forth in this section are not subject to 
the provisions of Secs. 1.136, 1.550(c) or 1.645 (a) or (b).
    (3) The Commissioner may extend the time for filing an appeal or 
commencing a civil action:
    (i) For good cause shown if requested in writing before the 
expiration of the period for filing an appeal or commencing a civil 
action, or
    (ii) Upon written request after the expiration of the period for 
filing an appeal or commencing a civil action upon a showing that the 
failure to act was the result of excusable neglect.
    (b) The times specified in this section in days are calendar days. 
The times specified herein in months are calendar months except that one 
day shall be added to any two-month period which includes February 28. 
If the last day of the time specified for appeal or commencing a civil 
action falls on a Saturday, Sunday or Federal holiday in the District of 
Columbia, the time is extended to the next day which is neither a 
Saturday, Sunday nor a Federal holiday.
    (c) If a defeated party to an interference has taken an appeal to 
the U.S. Court of Appeals for the Federal Circuit and an adverse party 
has filed notice under 35 U.S.C. 141 electing to have all further 
proceedings conducted under 35 U.S.C. 146 (Sec. 1.303(c)), the time for 
filing a civil action thereafter is specified in 35 U.S.C. 141. The time 
for filing a cross-action expires 14 days

[[Page 85]]

after service of the summons and complaint.

[54 FR 29553, July 13, 1989, as amended at 58 FR 54502, Oct. 22, 1993; 
62 FR 53198, Oct. 10, 1997]

                      Allowance and Issue of Patent



Sec. 1.311  Notice of allowance.

    (a) If, on examination, it shall appear that the applicant is 
entitled to a patent under the law, a notice of allowance will be sent 
to applicant at the correspondence address indicated in Sec. 1.33, 
calling for the payment of a specified sum constituting the issue fee 
(Sec. 1.18), which shall be paid within 3 months from the date of the 
mailing of the notice of allowance.
    (b) An authorization to charge the issue fee (Sec. 1.18) to a 
deposit account may be filed in an individual application, either before 
or after mailing of the notice of allowance. Where an authorization to 
charge the issue fee to a deposit account has been filed before the 
mailing of the notice of allowance, the issue fee will be automatically 
charged to the deposit account at the time of mailing the notice of 
allowance.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41279, Sept. 17, 1982]



Sec. 1.312  Amendments after allowance.

    No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance. Any amendment filed 
pursuant to this section must be filed before or with the payment of the 
issue fee, and may be entered on the recommendation of the primary 
examiner, approved by the Commissioner, without withdrawing the 
application from issue.

[65 FR 14873, Mar. 20, 2000]



Sec. 1.313  Withdrawal from issue.

    (a) Applications may be withdrawn from issue for further action at 
the initiative of the Office or upon petition by the applicant. To 
request that the Office withdraw an application from issue, applicant 
must file a petition under this section including the fee set forth in 
Sec. 1.17(i) and a showing of good and sufficient reasons why withdrawal 
of the application is necessary. If the Office withdraws the application 
from issue, the Office will issue a new notice of allowance if the 
Office again allows the application.
    (b) Once the issue fee has been paid, the Office will not withdraw 
the application from issue at its own initiative for any reason except:
    (1) A mistake on the part of the Office;
    (2) A violation of Sec. 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 
withdrawn from issue upon petition by the applicant for any reason 
except:
    (1) Unpatentability of one of more claims, which petition must be 
accompanied by an unequivocal statement that one or more claims are 
unpatentable, an amendment to such claim or claims, and an explanation 
as to how the amendment causes such claim or claims to be patentable;
    (2) Consideration of a submission pursuant to Sec. 1.114; or
    (3) Express abandonment of the application. Such express abandonment 
may be in favor of a continuing application.
    (d) A petition under this section will not be effective to withdraw 
the application from issue unless it is actually received and granted by 
the appropriate officials before the date of issue. Withdrawal of an 
application from issue after payment of the issue fee may not be 
effective to avoid publication of application information.

[65 FR 14873, Mar. 20, 2000]



Sec. 1.314  Issuance of patent.

    If payment of the issue fee is timely made, the patent will issue in 
regular course unless the application is withdrawn from issue 
(Sec. 1.313), or issuance of the patent is deferred. Any petition by the 
applicant requesting a deferral of the issuance of a patent must be 
accompanied by the fee set forth in Sec. 1.17(i) and must include a 
showing of good and sufficient reasons why it is necessary to defer 
issuance of the patent.

[60 FR 20227, Apr. 25, 1995]

[[Page 86]]



Sec. 1.315  Delivery of patent.

    The patent will be delivered or mailed upon issuance to the 
correspondence address of record. See Sec. 1.33(a).

[61 FR 42807, Aug. 19, 1996]



Sec. 1.316  Application abandoned for failure to pay issue fee.

    If the issue fee is not paid within three months from the date of 
the notice of allowance, the application will be regarded as abandoned. 
Such an abandoned application will not be considered as pending before 
the Patent and Trademark Office.

[62 FR 53198, Oct. 10, 1997]



Sec. 1.317  Lapsed patents; delayed payment of balance of issue fee.

    If the issue fee paid is the amount specified in the notice of 
allowance, but a higher amount is required at the time the issue fee is 
paid, any remaining balance of the issue fee is to be paid within three 
months from the date of notice thereof and, if not paid, the patent will 
lapse at the termination of the three-month period.

[62 FR 53198, Oct. 10, 1997]



Sec. 1.318  [Reserved]

                               Disclaimer



Sec. 1.321  Statutory disclaimers, including terminal disclaimers.

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

[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996]

[[Page 87]]

                     Correction of Errors in Patent



Sec. 1.322  Certificate of correction of Office mistake.

    (a) A certificate of correction under 35 U.S.C. 254 may be issued at 
the request of the patentee or the patentee's assignee. Such certificate 
will not be issued at the request or suggestion of anyone not owning an 
interest in the patent, nor on motion of the Office, without first 
notifying the patentee (including any assignee of record) and affording 
the patentee an opportunity to be heard. When the request relates to a 
patent involved in an interference, the request shall comply with the 
requirements of this section and shall be accompanied by a motion under 
Sec. 1.635.
    (b) If the nature of the mistake on the part of the Office is such 
that a certificate of correction is deemed inappropriate in form, the 
Commissioner may issue a corrected patent in lieu thereof as a more 
appropriate form for certificate of correction, without expense to the 
patentee.

(35 U.S.C. 254)

[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984]



Sec. 1.323  Certificate of correction of applicant's mistake.

    Whenever a mistake of a clerical or typographical nature or of minor 
character which was not the fault of the Office, appears in a patent and 
a showing is made that such mistake occurred in good faith, the 
Commissioner may, upon payment of the fee set forth in Sec. 1.20(a), 
issue a certificate, if the correction does not involve such changes in 
the patent as would constitute new matter or would require 
reexamination. A request for a certificate of correction of a patent 
involved in an interference shall comply with the requirements of this 
section and shall be accompanied by a motion under Sec. 1.635.

[49 FR 48454, Dec. 12, 1984]



Sec. 1.324  Correction of inventorship in patent.

    (a) Whenever through error a person is named in an issued patent as 
the inventor, or through error an inventor is not named in an issued 
patent and such error arose without any deceptive intention on his or 
her part, the Commissioner may, on petition, or on order of a court 
before which such matter is called in question, issue a certificate 
naming only the actual inventor or inventors. A petition to correct 
inventorship of a patent involved in an interference must comply with 
the requirements of this section and must be accompanied by a motion 
under Sec. 1.634.
    (b) Any petition pursuant to paragraph (a) of this section must be 
accompanied by:
    (1) A statement from each person who is being added as an inventor 
and from each person who is being deleted as an inventor that the 
inventorship error occurred without any deceptive intention on his or 
her part;
    (2) A statement from the current named inventors who have not 
submitted a statement under paragraph (b)(1) of this section either 
agreeing to the change of inventorship or stating that they have no 
disagreement in regard to the requested change;
    (3) A statement from all assignees of the parties submitting a 
statement under paragraphs (b)(1) and (b)(2) of this section agreeing to 
the change of inventorship in the patent, which statement must comply 
with the requirements of Sec. 3.73(b) of this chapter; and
    (4) The fee set forth in Sec. 1.20(b).

[62 FR 53199, Oct. 10, 1997]



Sec. 1.325  Other mistakes not corrected.

    Mistakes other than those provided for in Secs. 1.322, 1.323, 1.324, 
and not affording legal grounds for reissue or for reexamination, will 
not be corrected after the date of the patent.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2714, Jan. 20, 1983]

                           Arbitration Awards



Sec. 1.331-1.334  [Reserved]



Sec. 1.335  Filing of notice of arbitration awards.

    (a) Written notice of any award by an arbitrator pursuant to 35 
U.S.C. 294 must be filed in the Patent and Trademark Office by the 
patentee, or the patentee's assignee or licensee. If the award involves 
more than one patent a

[[Page 88]]

separate notice must be filed for placement in the file of each patent. 
The notice must set forth the patent number, the names of the inventor 
and patent owner, and the names and addresses of the parties to the 
arbitration. The notice must also include a copy of the award.
    (b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is 
modified by a court, the party requesting the modification must file in 
the Patent and Trademark Office, a notice of the modification for 
placement in the file of each patent to which the modification applies. 
The notice must set forth the patent number, the names of the inventor 
and patent owner, and the names and addresses of the parties to the 
arbitration. The notice must also include a copy of the court's order 
modifying the award.
    (c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be 
unenforceable until any notices required by paragraph (a) or (b) of this 
section are filed in the Patent and Trademark Office. If any required 
notice is not filed by the party designated in paragraph (a) or (b) of 
this section, any party to the arbitration proceeding may file such a 
notice.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2714, Jan. 20, 1983]

                           Amendment of Rules



Sec. 1.351  Amendments to rules will be published.

    All amendments to the regulations in this part will be published in 
the Official Gazette and in the Federal Register.



Sec. 1.352  [Reserved]

                            Maintenance Fees



Sec. 1.362  Time for payment of maintenance fees.

    (a) Maintenance fees as set forth in Secs. 1.20 (e) through (g) are 
required to be paid in all patents based on applications filed on or 
after December 12, 1980, except as noted in paragraph (b) of this 
section, to maintain a patent in force beyond 4, 8 and 12 years after 
the date of grant.
    (b) Maintenance fees are not required for any plant patents or for 
any design patents. Maintenance fees are not required for a reissue 
patent if the patent being reissued did not require maintenance fees.
    (c) The application filing dates for purposes of payment of 
maintenance fees are as follows:
    (1) For an application not claiming benefit of an earlier 
application, the actual United States filing date of the application.
    (2) For an application claiming benefit of an earlier foreign 
application under 35 U.S.C. 119, the United States filing date of the 
application.
    (3) For a continuing (continuation, division, continuation-in-part) 
application claiming the benefit of a prior patent application under 35 
U.S.C. 120, the actual United States filing date of the continuing 
application.
    (4) For a reissue application, including a continuing reissue 
application claiming the benefit of a reissue application under 35 
U.S.C. 120, United States filing date of the original non-reissue 
application on which the patent reissued is based.
    (5) For an international application which has entered the United 
States as a Designated Office under 35 U.S.C. 371, the international 
filing date granted under Article 11(1) of the Patent Cooperation Treaty 
which is considered to be the United States filing date under 35 U.S.C. 
363.
    (d) Maintenance fees may be paid in patents without surcharge during 
the periods extending respectively from:
    (1) 3 years through 3 years and 6 months after grant for the first 
maintenance fee,
    (2) 7 years through 7 years and 6 months after grant for the second 
maintenance fee, and
    (3) 11 years through 11 years and 6 months after grant for the third 
maintenance fee.
    (e) Maintenance fees may be paid with the surcharge set forth in 
Sec. 1.20(h) during the respective grace periods after:
    (1) 3 years and 6 months and through the day of the 4th anniversary 
of the grant for the first maintenance fee.
    (2) 7 years and 6 months and through the day of the 8th anniversary 
of the

[[Page 89]]

grant for the second maintenance fee, and
    (3) 11 years and 6 months and through the day of the 12th 
anniversary of the grant for the third maintenance fee.
    (f) If the last day for paying a maintenance fee without surcharge 
set forth in paragraph (d) of this section, or the last day for paying a 
maintenance fee with surcharge set forth in paragraph (e) of this 
section, falls on a Saturday, Sunday, or a federal holiday within the 
District of Columbia, the maintenance fee and any necessary surcharge 
may be paid under paragraph (d) or paragraph (e) respectively on the 
next succeeding day which is not a Saturday, Sunday, or federal holiday.
    (g) Unless the maintenance fee and any applicable surcharge is paid 
within the time periods set forth in paragraphs (d), (e) or (f) of this 
section, the patent will expire as of the end of the grace period set 
forth in paragraph (e) of this section. A patent which expires for the 
failure to pay the maintenance fee will expire at the end of the same 
date (anniversary date) the patent was granted in the 4th, 8th, or 12th 
year after grant.
    (h) The periods specified in Secs. 1.362 (d) and (e) with respect to 
a reissue application, including a continuing reissue application 
thereof, are counted from the date of grant of the original non-reissue 
application on which the reissued patent is based.

[49 FR 34724, Aug. 31, 1984, as amended at 56 FR 65154, Dec. 13, 1991; 
58 FR 54511, Oct. 22, 1993]



Sec. 1.363  Fee address for maintenance fee purposes.

    (a) All notices, receipts, refunds, and other communications 
relating to payment or refund of maintenance fees will be directed to 
the correspondence address used during prosecution of the application as 
indicated in Sec. 1.33(a) unless:
    (1) A fee address for purposes of payment of maintenance fees is set 
forth when submitting the issue fee, or
    (2) A change in the correspondence address for all purposes is filed 
after payment of the issue fee, or
    (3) A fee address or a change in the ``fee address'' is filed for 
purposes of receiving notices, receipts and other correspondence 
relating to the payment of maintenance fees after the payment of the 
issue fee, in which instance, the latest such address will be used.
    (b) An assignment of a patent application or patent does not result 
in a change of the ``correspondence address'' or ``fee address'' for 
maintenance fee purposes.

[49 FR 34725, Aug. 31, 1984]



Sec. 1.366  Submission of maintenance fees.

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

[[Page 90]]

utilized in paying maintenance fees and any necessary surcharges.
    (c) In submitting maintenance fees and any necessary surcharges, 
identification of the patents for which maintenance fees are being paid 
must include the following:
    (1) The patent number; and
    (2) The application number of the United States application for the 
patent on which the maintenance fee is being paid.
    (d) Payment of maintenance fees and any surcharges should identify 
the fee being paid for each patent as to whether it is the 3\1/2\-, 7\1/
2\-, or 11\1/2\-year fee, whether small entity status is being changed 
or claimed, the amount of the maintenance fee and any surcharge being 
paid, and any assigned customer number. If the maintenance fee and any 
necessary surcharge is being paid on a reissue patent, the payment must 
identify the reissue patent by reissue patent number and reissue 
application number as required by paragraph (c) of this section and 
should also include the original patent number.
    (e) Maintenance fee payments and surcharge payments relating thereto 
must be submitted separate from any other payments for fees or charges, 
whether submitted in the manner set forth in Sec. 1.23 or by an 
authorization to charge a deposit account. If maintenance fee and 
surcharge payments for more than one patent are submitted together, they 
should be submitted on as few sheets as possible with the patent numbers 
listed in increasing patent number order. If the payment submitted is 
insufficient to cover the maintenance fees and surcharges for all the 
listed patents, the payment will be applied in the order the patents are 
listed, beginning at the top of the listing.
    (f) Notification of any change in status resulting in loss of 
entitlement to small entity status must be filed in a patent prior to 
paying, or at the time of paying, the earliest maintenance fee due after 
the date on which status as a small entity is no longer appropriate. See 
Sec. 1.28(b).
    (g) Maintenance fees and surcharges relating thereto will not be 
refunded except in accordance with Secs. 1.26 and 1.28(a).

[49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993; 
62 FR 53199, Oct. 10, 1997]



Sec. 1.377  Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.

    (a) Any patentee who is dissatisfied with the refusal of the Patent 
and Trademark Office to accept and record a maintenance fee which was 
filed prior to the expiration of the patent may petition the 
Commissioner to accept and record the maintenance fee.
    (b) Any petition under this section must be filed within 2 months of 
the action complained of, or within such other time as may be set in the 
action complained of, and must be accompanied by the fee set forth in 
Sec. 1.17(h). The petition may include a request that the petition fee 
be refunded if the refusal to accept and record the maintenance fee is 
determined to result from an error by the Patent and Trademark Office.
    (c) Any petition filed under this section must comply with the 
requirements of Sec. 1.181(b) and must be signed by an attorney or agent 
registered to practice before the Patent and Trademark Office, or by the 
patentee, the assignee, or other party in interest.

[49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997]



Sec. 1.378  Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.

    (a) The Commissioner may accept the payment of any maintenance fee 
due on a patent after expiration of the patent if, upon petition, the 
delay in payment of the maintenance fee is shown to the satisfaction of 
the Commissioner to have been unavoidable (paragraph (b) of this 
section) or unintentional (paragraph (c) of this section) and if the 
surcharge required by Sec. 1.20(i) is paid as a condition of accepting 
payment of the maintenance fee. If the Commissioner accepts payment of 
the maintenance fee upon petition, the patent shall be considered as not 
having expired, but will be subject to the conditions set forth in 35 
U.S.C. 41(c)(2).

[[Page 91]]

    (b) Any petition to accept an unavoidably delayed payment of a 
maintenance fee filed under paragraph (a) of this section must include:
    (1) The required maintenance fee set forth in Sec. 1.20 (e) through 
(g);
    (2) The surcharge set forth in Sec. 1.20(i)(1); and
    (3) A showing that the delay was unavoidable since reasonable care 
was taken to ensure that the maintenance fee would be paid timely and 
that the petition was filed promptly after the patentee was notified of, 
or otherwise became aware of, the expiration of the patent. The showing 
must enumerate the steps taken to ensure timely payment of the 
maintenance fee, the date and the manner in which patentee became aware 
of the expiration of the patent, and the steps taken to file the 
petition promptly.
    (c) Any petition to accept an unintentionally delayed payment of a 
maintenance fee filed under paragraph (a) of this section must be filed 
within twenty-four months after the six-month grace period provided in 
Sec. 1.362(e) and must include:
    (1) The required maintenance fee set forth in Sec. 1.20 (e) through 
(g);
    (2) The surcharge set forth in Sec. 1.20(i)(2); and
    (3) A statement that the delay in payment of the maintenance fee was 
unintentional.
    (d) Any petition under this section must be signed by an attorney or 
agent registered to practice before the Patent and Trademark Office, or 
by the patentee, the assignee, or other party in interest.
    (e) Reconsideration of a decision refusing to accept a maintenance 
fee upon petition filed pursuant to paragraph (a) of this section may be 
obtained by filing a petition for reconsideration within two months of, 
or such other time as set in, the decision refusing to accept the 
delayed payment of the maintenance fee. Any such petition for 
reconsideration must be accompanied by the petition fee set forth in 
Sec. 1.17(h). After decision on the petition for reconsideration, no 
further reconsideration or review of the matter will be undertaken by 
the Commissioner. If the delayed payment of the maintenance fee is not 
accepted, the maintenance fee and the surcharge set forth in 
Sec. 1.20(i) will be refunded following the decision on the petition for 
reconsideration, or after the expiration of the time for filing such a 
petition for reconsideration, if none is filed. Any petition fee under 
this section will not be refunded unless the refusal to accept and 
record the maintenance fee is determined to result from an error by the 
Patent and Trademark Office.

[49 FR 34726, Aug. 31, 1984, as amended at 50 FR 9383, Mar. 7, 1985; 58 
FR 44282, Aug. 20, 1993; 62 FR 53199, Oct. 10, 1997]



             Subpart C--International Processing Provisions

    Authority: Pub. L. 94-131, 89 Stat. 685; Pub. L. 99-616, 35 U.S.C. 
351 through 376.

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

                           General Information



Sec. 1.401  Definitions of terms under the Patent Cooperation Treaty.

    (a) The abbreviation PCT and the term Treaty mean the Patent 
Cooperation Treaty.
    (b) International Bureau means the World Intellectual Property 
Organization located in Geneva, Switzerland.
    (c) Administrative Instructions means that body of instructions for 
operating under the Patent Cooperation Treaty referred to in PCT Rule 
89.
    (d) Request, when capitalized, means that element of the 
international application described in PCT Rules 3 and 4.
    (e) International application, as used in this subchapter is defined 
in Sec. 1.9(b).
    (f) Priority date for the purpose of computing time limits under the 
Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also 
Sec. 1.465.
    (g) Demand, when capitalized, means that document filed with the 
International Preliminary Examining Authority which requests an 
international preliminary examination.
    (h) Annexes means amendments made to the claims, description or the 
drawings before the International Preliminary Examining Authority.

[[Page 92]]

    (i) Other terms and expressions in this subpart C not defined in 
this section are to be taken in the sense indicated in PCT Art. 2 and 35 
U.S.C. 351.

[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987]



Sec. 1.412  The United States Receiving Office.

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

[43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995; 63 
FR 29617, June 1, 1998]



Sec. 1.413  The United States International Searching Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Searching 
Authority for international applications filed in the United States 
Receiving Office and in other Receiving Offices as may be agreed upon by 
the Commissioner, in accordance with agreement between the Patent and 
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
    (b) The Patent and Trademark Office, when acting as an International 
Searching Authority, will be identified by the full title ``United 
States International Searching Authority'' or by the abbreviation ``ISA/
US.''
    (c) The major functions of the International Searching Authority 
include:
    (1) Approving or establishing the title and abstract;
    (2) Considering the matter of unity of invention;
    (3) Conducting international and international-type searches and 
preparing international and international-type search reports (PCT Art. 
15, 17 and 18, and PCT Rules 25, 33 to 45 and 47); and
    (4) Transmitting the international search report to the applicant 
and the International Bureau.



Sec. 1.414  The United States Patent and Trademark Office as a Designated Office or Elected Office.

    (a) The United States Patent and Trademark Office will act as a 
Designated Office or Elected Office for international applications in 
which the United States of America has been designated or elected as a 
State in which patent protection is desired.
    (b) The United States Patent and Trademark Office, when acting as a 
Designated Office or Elected Office during international processing will 
be identified by the full title ``United

[[Page 93]]

States Designated Office'' or by the abbreviation ``DO/US'' or by the 
full title ``United States Elected Office'' or by the abbreviation ``EO/
US''.
    (c) The major functions of the United States Designated Office or 
Elected Office in respect to international applications in which the 
United States of America has been designated or elected, include:
    (1) Receiving various notifications throughout the international 
stage and
    (2) Accepting for national stage examination international 
applications which satisfy the requirements of 35 U.S.C. 371.

[52 FR 20047, May 28, 1987]



Sec. 1.415  The International Bureau.

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



Sec. 1.416  The United States International Preliminary Examining Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Preliminary 
Examining Authority for international applications filed in the United 
States Receiving Office and in other Receiving Offices as may be agreed 
upon by the Commissioner, in accordance with agreement between the 
Patent and Trademark Office and the International Bureau.
    (b) The United States Patent and Trademark Office, when acting as an 
International Preliminary Examining Authority, will be identified by the 
full title ``United States International Preliminary Examining 
Authority'' or by the abbreviation ``IPEA/US.''
    (c) The major functions of the International Preliminary Examining 
Authority include:
    (1) Receiving and checking for defects in the Demand;
    (2) Forwarding Demands in accordance with PCT Rule 59.3;
    (3) Collecting the handling fee for the International Bureau and the 
preliminary examination fee for the United States International 
Preliminary Examining Authority;
    (4) Informing applicant of receipt of the Demand;
    (5) Considering the matter of unity of invention;
    (6) Providing an international preliminary examination report which 
is a non-binding opinion on the questions of whether the claimed 
invention appears: to be novel, to involve an inventive step (to be 
nonobvious), and to be industrially applicable; and
    (7) Transmitting the international preliminary examination report to 
applicant and the International Bureau.

[52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998]



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

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

[63 FR 29617, June 1, 1998]

[[Page 94]]

                Who May File an International Application



Sec. 1.421  Applicant for international application.

    (a) Only residents or nationals of the United States of America may 
file international applications in the United States Receiving Office. 
If an international application does not include an applicant who is 
indicated as being a resident or national of the United States of 
America, and at least one applicant:
    (1) Has indicated a residence or nationality in a PCT Contracting 
State, or
    (2) Has no residence or nationality indicated; applicant will be so 
notified and, if the international application includes a fee amount 
equivalent to that required by Sec. 1.445(a)(5), the international 
application will be forwarded for processing to the International Bureau 
acting as a Receiving Office. (See also Sec. 1.412(c)(6).)
    (b) Although the United States Receiving Office will accept 
international applications filed by any resident or national of the 
United States of America for international processing, an international 
application designating the United States of America will be accepted by 
the Patent and Trademark Office for the national stage only if filed by 
the inventor or as provided in Sec. 1.422, 1.423 or Sec. 1.425.
    (c) International applications which do not designate the United 
States of America may be filed by the assignee or owner.
    (d) The attorney or agent of the applicant may sign the 
international application Request and file the international application 
for the applicant if the international application when filed is 
accompanied by a separate power of attorney to that attorney or agent 
from the applicant. The separate power of attorney from the applicant 
may be submitted after filing if sufficient cause is shown for not 
submitting it at the time of filing. Note that paragraph (b) of this 
section requires that the applicant be the inventor if the United States 
of America is designated.
    (e) Any indication of different applicants for the purpose of 
different Designated Offices must be shown on the Request portion of the 
international application.
    (f) Changes in the person, name, or address of the applicant of an 
international application shall be made in accordance with PCT Rule 
92bis.
    (g) The wording of PCT Rule 92bis is as follows:

    PCT Rule 92bis--Recording of Changes in Certain Indications in the 
Request or the Demand

         92bis Recording of Changes by the International Bureau

    (a) The International Bureau shall, on the request of the applicant 
or the receiving Office, record changes in the following indications 
appearing in the request or demand:
    (i) Person name, residence, nationality or address of the applicant,
    (ii) Person, name or address of the agent, the common representative 
or the inventor.
    (b) The International Bureau shall not record the requested change 
if the request for recording is received by it after the expiration:
    (i) Of the time limit referred to in Article 22(1), where Article 
39(1) is not applicable with respect to any Contracting State;
    (ii) Of the time limit referred to in Article 39(1)(a), where 
Article 39(1) is applicable with respect to at least one Contracting 
State.

[43 FR 20466, May 11, 1978, as amended at 53 FR 47810, Nov. 28, 1988; 60 
FR 21440, May 2, 1995]



Sec. 1.422  When the inventor is dead.

    In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the deceased inventor may file an 
international application which designates the United States of America.



Sec. 1.423  When the inventor is insane or legally incapacitated.

    In case an inventor is insane or otherwise legally incapacitated, 
the legal representative (guardian, conservator, etc.) of such inventor 
may file an international application which designates the United States 
of America.



Sec. 1.424  Joint inventors.

    Joint inventors must jointly file an international application which 
designates the United States of America; the signature of either of them 
alone, or less than the entire number will be insufficient for an 
invention invented

[[Page 95]]

by them jointly, except as provided in Sec. 1.425.



Sec. 1.425  Filing by other than inventor.

    Where an international application which designates the United 
States of America is filed and where one or more inventors refuse to 
sign the Request for the international application or cannot be found or 
reached after diligent effort, the Request need not be signed by such 
inventor if it is signed by another applicant. Such international 
application must be accompanied by a statement explaining to the 
satisfaction of the Commissioner the lack of the signature concerned.

[62 FR 53199, Oct. 10, 1997]

                      The International Application



Sec. 1.431  International application requirements.

    (a) An international application shall contain, as specified in the 
Treaty and the Regulations, a Request, a description, one or more 
claims, an abstract, and one or more drawings (where required). (PCT 
Art. 3(2) and section 207 of the Administrative Instructions.)
    (b) An international filing date will be accorded by the United 
States Receiving Office, at the time to receipt of the international 
application, provided that:
    (1) At least one applicant (Sec. 1.421) is a United States resident 
or national and the papers filed at the time of receipt of the 
international application so indicate (35 U.S.C. 361(a), PCT Art. 
11(1)(i)).
    (2) The international application is in the English language (35 
U.S.C. 361(c), PCT Art. 11(1)(ii)).
    (3) The international application contains at least the following 
elements (PCT Art. 11(1)(iii)):
    (i) An indication that it is intended as an international 
application (PCT Rule 4.2);
    (ii) The designation of at least one Contracting State of the 
International Patent Cooperation Union (Sec. 1.432);
    (iii) The name of the applicant, as perscribed (note Secs. 1.421-
1.424);
    (iv) A part which on the face of it appears to be a description; and
    (v) A part which on the face of it appears to be a claim.
    (c) Payment of the basic portion of the international fee (PCT Rule 
15.2) and the transmittal and search fees (Sec. 1.445) may be made in 
full at the time the international application papers required by 
paragraph (b) of this section are deposited or within one month 
thereafter. The basic, transmittal, and search fee payable is the basic, 
transmittal, and search fee in effect on the receipt date of the 
international application.
    (1) If the basic, transmittal and search fees are not paid within 
one month from the date of receipt of the international application and 
prior to the sending of a notice of deficiency, applicant will be 
notified and given one month within which to pay the deficient fees plus 
a late payment fee equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees up to a 
maximum amount equal to the basic fee; or
    (ii) An amount equal to the transmittal fee (PCT Rule 16bis).
    (2) The one-month time limit set pursuant to this paragraph to pay 
deficient fees may not be extended.
    (d) If the payment needed to cover the transmittal fee, the basic 
fee, the search fee, one designation fee and the late payment fee 
pursuant to paragraph (c) of this section is not timely made in 
accordance with PCT Rule 16bis.1(e), the Receiving Office will declare 
the international application withdrawn under PCT Article 14(3)(a).

[43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52 
FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1, 
1998]



Sec. 1.432  Designation of States and payment of designation and confirmation fees.

    (a) The designation of States including an indication that applicant 
wishes to obtain a regional patent, where applicable, shall appear in 
the Request upon filing and must be indicated as set forth in PCT Rule 
4.9 and section 115 of the Administrative Instructions. Applicant must 
specify at least one national or regional designation on filing of the 
international application for a filing date to be granted.
    (b) If the fees necessary to cover all the national and regional 
designations

[[Page 96]]

specified in the Request are not paid by the applicant within one year 
from the priority date or within one month from the date of receipt of 
the international application if that month expires after the expiration 
of one year from the priority date, applicant will be notified and given 
one month within which to pay the deficient designation fees plus a late 
payment fee. The late payment fee shall be equal to the greater of fifty 
percent of the amount of the deficient fees up to a maximum amount equal 
to the basic fee, or an amount equal to the transmittal fee (PCT Rule 
16bis). The one-month time limit set in the notification of deficient 
designation fees may not be extended. Failure to timely pay at least one 
designation fee will result in the withdrawal of the international 
application.
    (1) The one designation fee must be paid:
    (i) Within one year from the priority date;
    (ii) Within one month from the date of receipt of the international 
application if that month expires after the expiration of one year from 
the priority date; or
    (iii) With the late payment fee defined in this paragraph within the 
time set in the notification of the deficient designation fees or in 
accordance with PCT Rule 16bis.1(e).
    (2) If after a notification of deficient designation fees the 
applicant makes timely payment, but the amount paid is not sufficient to 
cover the late payment fee and all designation fees, the Receiving 
Office will, after allocating payment for the basic, search, transmittal 
and late payment fees, allocate the amount paid in accordance with PCT 
Rule 16bis.1(c) and withdraw the unpaid designations. The notification 
of deficient designation fees pursuant to this paragraph may be made 
simultaneously with any notification pursuant to Sec. 1.431(c).
    (c) The amount payable for the designation fee set forth in 
paragraph (b) is:
    (1) The designation fee in effect on the filing date of the 
international application, if such fee is paid in full within one month 
from the date of receipt of the international application;
    (2) The designation fee in effect on the date such fee is paid in 
full, if such fee is paid in full later than one month from the date of 
receipt of the international application but within one year from the 
priority date;
    (3) The designation fee in effect on the date one year from the 
priority date, if the fee was due one year from the priority date, and 
such fee is paid in full later than one month from the date of receipt 
of the international application and later than one year from the 
priority date; or
    (4) The designation fee in effect on the international filing date, 
if the fee was due one month from the international filing date and 
after one year from the priority date, and such fee is paid in full 
later than one month from the date of receipt of the international 
application and later than one year from the priority date.
    (d) On filing the international application, in addition to 
specifying at least one national or regional designation under PCT Rule 
4.9(a), applicant may also indicate under PCT Rule 4.9(b) that all other 
designations permitted under the Treaty are made.
    (1) Indication of other designations permitted by the Treaty under 
PCT Rule 4.9(b) must be made in a statement on the Request that any 
designation made under this paragraph is subject to confirmation (PCT 
Rule 4.9(c)) not later than the expiration of 15 months from the 
priority date by:
    (i) Filing a written notice with the United States Receiving Office 
specifying the national and/or regional designations being confirmed;
    (ii) Paying the designation fee for each designation being 
confirmed; and
    (iii) Paying the confirmation fee specified in Sec. 1.445(a)(4).
    (2) Unconfirmed designations will be considered withdrawn. If the 
amount submitted is not sufficient to cover the designation fee and the 
confirmation fee for each designation being confirmed, the Receiving 
Office will allocate the amount paid in accordance with any priority of 
designations specified by applicant. If applicant does not specify any 
priority of designations, the allocation of the amount paid will

[[Page 97]]

be made in accordance with PCT Rule 16bis.1(c).

[58 FR 4344, Jan. 14, 1993, as amended at 63 FR 29618, June 1, 1998]



Sec. 1.433  Physical requirements of international application.

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



Sec. 1.434  The request.

    (a) The request shall be made on a standardized form (PCT Rules 3 
and 4). Copies of printed Request forms are available from the Patent 
and Trademark Office. Letters requesting printed forms should be marked 
``Box PCT.''
    (b) The Check List portion of the Request form should indicate each 
document accompanying the international application on filing.
    (c) All information, for example, addresses, names of States and 
dates, shall be indicated in the Request as required by PCT Rule 4 and 
Administrative Instructions 110 and 201.
    (d) International applications which designate the United States of 
America shall include:
    (1) The name, address and signature of the inventor, except as 
provided by Secs. 1.421(d), 1.422, 1.423 and 1.425;
    (2) A reference to any copending national application or 
international application designating the United States of America, if 
the benefit of the filing date for the prior copending application is to 
be claimed.

[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993]



Sec. 1.435  The description.

    (a) The application must meet the requirements as to the content and 
form of the description set forth in PCT Rules 5, 9, 10, and 11 and 
sections 204 and 208 of the Administrative Instructions.
    (b) In international applications designating the United States the 
description must contain upon filing an indication of the best mode 
contemplated by the inventor for carrying out the claimed invention.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]



Sec. 1.436  The claims.

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



Sec. 1.437  The drawings.

    (a) Subject to paragraph (b) of this section, when drawings are 
necessary for the understanding of the invention, or are mentioned in 
the description, they must be part of an international application as 
originally filed in the United States Receiving Office in order to 
maintain the international filing date during the national stage (PCT 
Art. 7).
    (b) Drawings missing from the application upon filing will be 
accepted if such drawings are received within 30 days of the date of 
first receipt of the incomplete papers. If the missing drawings are 
received within the 30-day period, the international filing date shall 
be the date on which such drawings are received. If such drawings are 
not timely received, all references to drawings in the international 
application shall be considered non-existent (PCT Art. 14(2), 
Administrative Instruction 310).
    (c) The physical requirements for drawings are set forth in PCT Rule 
11 and shall be adhered to.



Sec. 1.438  The abstract.

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

[[Page 98]]

                                  Fees



Sec. 1.445  International application filing, processing and search fees.

    (a) The following fees and charges for international applications 
are established by the Commissioner under the authority of 35 U.S.C. 
376:
    (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)--
$240.00
    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
    (i) Where a corresponding prior United States National application 
filed under 35 U.S.C. 111(a) with the filing fee under Sec. 1.16(a) has 
been filed-- 450.00
    (ii) For all situations not provided for in paragraph (a)(2)(i) of 
this section--700.00
    (3) A supplemental search fee when required, per additional 
invention--210.00
    (4) A confirmation fee (PCT Rule 96) equal to fifty percent of the 
sum of designation fees for the national and regional designations being 
confirmed (Sec. 1.432(d)).
    (5) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
this section for transmittal of an international application to the 
International Bureau for processing in its capacity as a Receiving 
Office (PCT Rule 19.4).
    (b) The basic fee and designation fee portions of the international 
fee shall be prescribed in PCT Rule 15.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987; 54 
FR 9432, Mar. 7, 1989; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July 30, 
1996; 63 FR 29619, June 1, 1998]



Sec. 1.446  Refund of international application filing and processing fees.

    (a) Money paid for international application fees, where paid by 
actual mistake or in excess, such as a payment not required by law or 
Treaty and its Regulations, will be refunded.
    (b) [Reserved]
    (c) Refund of the supplemental search fees will be made if such 
refund is determined to be warranted by the Commissioner or the 
Commissioner's designee acting under PCT Rule 40.2(c).
    (d) The international and search fees will be refunded if no 
international filing date is accorded or if the application is withdrawn 
before transmittal of the record copy to the International Bureau (PCT 
Rules 15.6 and 16.2). The search fee will be refunded if the application 
is withdrawn before transmittal of the search copy to the International 
Searching Authority. The transmittal fee will not be refunded.
    (e) The handling fee (Sec. 1.482(b)) will be refunded (PCT Rule 
57.6) only if:
    (1) The Demand is withdrawn before the Demand has been sent by the 
International Preliminary Examining Authority to the International 
Bureau, or
    (2) The Demand is considered not to have been submitted (PCT Rule 
54.4(a)).

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993]

                                Priority



Sec. 1.451  The priority claim and priority document in an international application.

    (a) The claim for priority must, subject to paragraph (d) of this 
section, be made on the Request (PCT Rule 4.10) in a manner complying 
with sections 110 and 115 of the Administrative Instructions.
    (b) Whenever the priority of an earlier United States national 
application is claimed in an international application, the applicant 
may request in a letter of transmittal accompanying the international 
application upon filing with the United States Receiving Office or in a 
separate letter filed in the Receiving Office not later than 16 months 
after the priority date, that the Patent and Trademark Office prepare a 
certified copy of the national application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is stated in Sec. 1.19 (b)(1).
    (c) If a certified copy of the priority document is not submitted 
together with the international application on filing, or, if the 
priority application was filed in the United States and a request and 
appropriate payment for preparation of such a certified copy do not 
accompany the international application on filing or are not filed 
within

[[Page 99]]

16 months of the priority date, the certified copy of the priority 
document must be furnished by the applicant to the International Bureau 
or to the United States Receiving Office within the time limit specified 
in PCT Rule 17.1(a).
    (d) The applicant may correct or add a priority claim in accordance 
with PCT Rule 26bis.1.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 
1993; 63 FR 29619, June 1, 1998]

                             Representation



Sec. 1.455  Representation in international applications.

    (a) Applicants of international applications may be represented by 
attorneys or agents registered to practice before the Patent and 
Trademark Office or by an applicant appointed as a common representative 
(PCT Art. 49, Rules 4.8 and 90 and Sec. 10.10). If applicants have not 
appointed an attorney or agent or one of the applicants to represent 
them, and there is more than one applicant, the applicant first named in 
the request and who is entitled to file in the U.S. Receiving Office 
shall be considered to be the common representative of all the 
applicants. An attorney or agent having the right to practice before a 
national office with which an international application is filed and for 
which the United States is an International Searching Authority or 
International Preliminary Examining Authority may be appointed to 
represent the applicants in the international application before that 
authority. An attorney or agent may appoint an associate attorney or 
agent who shall also then be of record (PCT Rule 90.1(d)). The 
appointment of an attorney or agent, or of a common representative, 
revokes any earlier appointment unless otherwise indicated (PCT Rule 
90.6 (b) and (c)).
    (b) Appointment of an agent, attorney or common representative (PCT 
Rule 4.8) must be effected either in the Request form, signed by all 
applicants, or in a separate power of attorney submitted either to the 
United States Receiving Office or to the International Bureau.
    (c) Powers of attorney and revocations thereof should be submitted 
to the United States Receiving Office until the issuance of the 
international search report.
    (d) The addressee for correspondence will be as indicated in section 
108 of the Administrative Instructions.

[43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58 
FR 4345, Jan. 14, 1993]

                       Transmittal of Record Copy



Sec. 1.461  Procedures for transmittal of record copy to the International Bureau.

    (a) Transmittal of the record copy of the international application 
to the International Bureau shall be made by the United States Receiving 
Office or as provided by PCT Rule 19.4.
    (b) [Reserved]
    (c) No copy of an international application may be transmitted to 
the International Bureau, a foreign Designated Office, or other foreign 
authority by the United States Receiving Office or the applicant, unless 
the applicable requirements of part 5 of this chapter have been 
satisfied.

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63 
FR 29619, June 1, 1998]

                                 Timing



Sec. 1.465  Timing of application processing based on the priority date.

    (a) For the purpose of computing time limits under the Treaty, the 
priority date shall be defined as in PCT Art. 2(xi).
    (b) When a claimed priority date is corrected or added under PCT 
Rule 26bis.1(a), or withdrawn under PCT Rule 90bis.3, or considered not 
to have been made under PCT Rule 26bis.2, the priority date for the 
purposes of computing any non-expired time limits will be the date of 
the earliest valid remaining priority claim of the international 
application, or if none, the international filing date.
    (c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 
20.2(a) (i) or (iii) are timely submitted, and the date of receipt of 
such corrections falls

[[Page 100]]

later than one year from the claimed priority date or dates, the 
Receiving Office shall proceed under PCT Rule 26bis.2.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]



Sec. 1.468  Delays in meeting time limits.

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

                               Amendments



Sec. 1.471  Corrections and amendments during international processing.

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

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]



Sec. 1.472  Changes in person, name, or address of applicants and inventors.

    All requests for a change in person, name or address of applicants 
and inventor be sent to the United States Receiving Office until the 
time of issuance of the international search report. Thereafter requests 
for such changes should be submitted to the International Bureau.

[43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]

                           Unity of Invention



Sec. 1.475  Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.

    (a) An international and a national stage application shall relate 
to one invention only or to a group of inventions so linked as to form a 
single general inventive concept (``requirement of unity of 
invention''). Where a group of inventions is claimed in an application, 
the requirement of unity of invention shall be fulfilled only when there 
is a technical relationship among those inventions involving one or more 
of the same or corresponding special technical features. The expression 
``special technical features'' shall mean those technical features that 
define a contribution which each of the claimed inventions, considered 
as a whole, makes over the prior art.
    (b) An international or a national stage application containing 
claims to different categories of invention will be considered to have 
unity of invention if the claims are drawn only to one of the following 
combinations of categories:
    (1) A product and a process specially adapted for the manufacture of 
said product; or
    (2) A product and a process of use of said product; or
    (3) A product, a process specially adapted for the manufacture of 
the said product, and a use of the said product; or
    (4) A process and an apparatus or means specifically designed for 
carrying out the said process; or
    (5) A product, a process specially adapted for the manufacture of 
the said product, and an apparatus or means specifically designed for 
carrying out the said process.
    (c) If an application contains claims to more or less than one of 
the combinations of categories of invention set forth in paragraph (b) 
of this section,

[[Page 101]]

unity of invention might not be present.
    (d) If multiple products, processes of manufacture or uses are 
claimed, the first invention of the category first mentioned in the 
claims of the application and the first recited invention of each of the 
other categories related thereto will be considered as the main 
invention in the claims, see PCT Article 17(3)(a) and Sec. 1.476(c).
    (e) The determination whether a group of inventions is so linked as 
to form a single general inventive concept shall be made without regard 
to whether the inventions are claimed in separate claims or as 
alternatives within a single claim.

[58 FR 4345, Jan. 14, 1993]



Sec. 1.476  Determination of unity of invention before the International Searching Authority.

    (a) Before establishing the international search report, the 
International Searching Authority will determine whether the 
international application complies with the requirement of unity of 
invention as set forth in Sec. 1.475.
    (b) If the International Searching Authority considers that the 
international application does not comply with the requirement of unity 
of invention, it shall inform the applicant accordingly and invite the 
payment of additional fees (note Sec. 1.445 and PCT Art. 17(3)(a) and 
PCT Rule 40). The applicant will be given a time period in accordance 
with PCT Rule 40.3 to pay the additional fees due.
    (c) In the case of non-compliance with unity of invention and where 
no additional fees are paid, the international search will be performed 
on the invention first mentioned (``main invention'') in the claims.
    (d) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Searching Authority may raise the objection of lack of unity of 
invention.

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987; 58 FR 4346, Jan. 14, 1993]



Sec. 1.477  Protest to lack of unity of invention before the International Searching Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Searching Authority, additional fees may 
be paid under protest, accompanied by a request for refund and a 
statement setting forth reasons for disagreement or why the required 
additional fees are considered excessive, or both (PCT Rule 40.2(c)).
    (b) Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international search report when 
forwarded to the Designated Offices, may notify the International 
Searching Authority to that effect any time prior to the issuance of the 
international search report. Thereafter, such notification should be 
directed to the International Bureau (PCT Rule 40.2(c)).

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987]

                  International Preliminary Examination



Sec. 1.480  Demand for international preliminary examination.

    (a) On the filing of a proper Demand in an application for which the 
United States International Preliminary Examining Authority is competent 
and for which the fees have been paid, the international application 
shall be the subject of an international preliminary examination. The 
preliminary examination fee (Sec. 1.482(a)(1)) and the handling fee 
(Sec. 1.482(b)) shall be due at the time of filing the Demand.
    (b) The Demand shall be made on a standardized form. Copies of 
printed Demand forms are available from the Patent and Trademark Office. 
Letters

[[Page 102]]

requesting printed Demand forms should be marked ``Box PCT''.
    (c) If the Demand is made prior to the expiration of the 19th month 
from the priority date and the United States of America is elected, the 
provisions of Sec. 1.495 shall apply rather than Sec. 1.494.
    (d) Withdrawal of a proper Demand prior to the start of the 
international preliminary examination will entitle applicant to a refund 
of the preliminary examination fee minus the amount of the transmittal 
fee set forth in Sec. 1.445(a)(1).

[52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58 
FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998]



Sec. 1.481  Payment of international preliminary examination fees.

    (a) The handling and preliminary examination fees shall be paid 
within the time period set in PCT Rule 57.3. The handling fee or 
preliminary examination fee payable is the handling fee or preliminary 
examination fee in effect on the date of receipt of the Demand except 
under PCT Rule 59.3(a) where the fee payable is the fee in effect on the 
date of arrival of the Demand at the United States International 
Preliminary Examining Authority.
    (1) If the handling and preliminary fees are not paid within the 
time period set in PCT Rule 57.3, applicant will be notified and given 
one month within which to pay the deficient fees plus a late payment fee 
equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees, but not 
exceeding an amount equal to double the handling fee; or
    (ii) An amount equal to the handling fee (PCT Rule 58bis.2).
    (2) The one-month time limit set in this paragraph to pay deficient 
fees may not be extended.
    (b) If the payment needed to cover the handling and preliminary 
examination fees, pursuant to paragraph (a) of this section, is not 
timely made in accordance with PCT Rule 58bis.1(d), the United States 
International Preliminary Examination Authority will declare the Demand 
to be considered as if it had not been submitted.

[63 FR 29619, June 1, 1998]



Sec. 1.482  International preliminary examination fees.

    (a) The following fees and charges for international preliminary 
examination are established by the Commissioner under the authority of 
35 U.S.C. 376:
    (1) A preliminary examination fee is due on filing the Demand:
    (i) Where an international search fee as set forth in 
Sec. 1.445(a)(2) has been paid on the international application to the 
United States Patent and Trademark Office as an International Searching 
Authority, a preliminary examination fee of--$490.00
    (ii) Where the International Searching Authority for the 
international application was an authority other than the United States 
Patent and Trademark Office, a preliminary examination fee of--$750.00
    (2) An additional preliminary examination fee when required, per 
additional invention:
    (i) Where the International Searching Authority for the 
international application was the United States Patent and Trademark 
Office--$140.00
    (ii) Where the International Searching Authority for the 
international application was an authority other than the United States 
Patent and Trademark Office--$270.00
    (b) The handling fee is due on filing the Demand.

(35 U.S.C. 6, 376)

[52 FR 20048, May 28, 1987, as amended at 56 FR 65154, Dec. 13, 1991; 57 
FR 38196, Aug. 21, 1992; 58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug. 
11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997]



Sec. 1.484  Conduct of international preliminary examination.

    (a) An international preliminary examination will be conducted to 
formulate a non-binding opinion as to whether the claimed invention has 
novelty, involves an inventive step (is non-obvious) and is industrially 
applicable.
    (b) International preliminary examination will begin promptly upon 
receipt of a proper Demand in an application for which the United States 
International Preliminary Examining Authority is competent, for which 
the fees for international preliminary examination (Sec. 1.482) have 
been paid, and which requests examination based on

[[Page 103]]

the application as filed or as amended by an amendment which has been 
received by the United States International Preliminary Examining 
Authority. Where a Demand requests examination based on a PCT Article 19 
amendment which has not been received, examination may begin at 20 
months without receipt of the PCT Article 19 amendment. Where a Demand 
requests examination based on a PCT Article 34 amendment which has not 
been received, applicant will be notified and given a time period within 
which to submit the amendment.
    (1) Examination will begin after the earliest of:
    (i) Receipt of the amendment;
    (ii) Receipt of applicant's statement that no amendment will be 
made; or
    (iii) Expiration of the time period set in the notification.
    (2) No international preliminary examination report will be 
established prior to issuance of an international search report.
    (c) No international preliminary examination will be conducted on 
inventions not previously searched by an International Searching 
Authority.
    (d) The International Preliminary Examining Authority will establish 
a written opinion if any defect exists or if the claimed invention lacks 
novelty, inventive step or industrial applicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.
    (e) If no written opinion under paragraph (d) of this section is 
necessary, or after any written opinion and the reply thereto or the 
expiration of the time limit for reply to such written opinion, an 
international preliminary examination report will be established by the 
International Preliminary Examining Authority. One copy will be 
submitted to the International Bureau and one copy will be submitted to 
the applicant.
    (f) An applicant will be permitted a personal or telephone interview 
with the examiner, which must be conducted during the non-extendable 
time limit for reply by the applicant to a written opinion. Additional 
interviews may be conducted where the examiner determines that such 
additional interviews may be helpful to advancing the international 
preliminary examination procedure. A summary of any such personal or 
telephone interview must be filed by the applicant as a part of the 
reply to the written opinion or, if applicant files no reply, be made of 
record in the file by the examiner.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998]



Sec. 1.485  Amendments by applicant during international preliminary examination.

    (a) The applicant may make amendments at the time of filing the 
Demand. The applicant may also make amendments within the time limit set 
by the International Preliminary Examining Authority for reply to any 
notification under Sec. 1.484(b) or to any written opinion. Any such 
amendments must:
    (1) Be made by submitting a replacement sheet in compliance with PCT 
Rules 10 and 11.1 to 11.13 for every sheet of the application which 
differs from the sheet it replaces unless an entire sheet is cancelled; 
and
    (2) Include a description of how the replacement sheet differs from 
the replaced sheet. Amendments that do not comply with PCT Rules 10 and 
11.1 to 11.13 may not be entered.
    (b) If an amendment cancels an entire sheet of the international 
application, that amendment shall be communicated in a letter.

[58 FR 4346, Jan. 14, 1993, as amended at 63 FR 29620, June 1, 1998]



Sec. 1.488  Determination of unity of invention before the International Preliminary Examining Authority.

    (a) Before establishing any written opinion or the international 
preliminary examination report, the International Preliminary Examining 
Authority will determine whether the international application complies 
with the requirement of unity of invention as set forth in Sec. 1.475.
    (b) If the International Preliminary Examining Authority considers 
that the international application does not comply with the requirement 
of unity of invention, it may:
    (1) Issue a written opinion and/or an international preliminary 
examination

[[Page 104]]

report, in respect of the entire international application and indicate 
that unity of invention is lacking and specify the reasons therefor 
without extending an invitation to restrict or pay additional fees. No 
international preliminary examination will be conducted on inventions 
not previously searched by an International Searching Authority.
    (2) Invite the applicant to restrict the claims or pay additional 
fees, pointing out the categories of invention found, within a set time 
limit which will not be extended. No international preliminary 
examination will be conducted on inventions not previously searched by 
an International Searching Authority, or
    (3) If applicant fails to restrict the claims or pay additional fees 
within the time limit set for reply, the International Preliminary 
Examining Authority will issue a written opinion and/or establish an 
international preliminary examination report on the main invention and 
shall indicate the relevant facts in the said report. In case of any 
doubt as to which invention is the main invention, the invention first 
mentioned in the claims and previously searched by an International 
Searching Authority shall be considered the main invention.
    (c) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Preliminary Examining Authority may raise the objection of lack of unity 
of invention.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53200, Oct. 10, 1997]



Sec. 1.489  Protest to lack of unity of invention before the International Preliminary Examining Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Preliminary Examining Authority, 
additional fees may be paid under protest, accompanied by a request for 
refund and a statement setting forth reasons for disagreement or why the 
required additional fees are considered excessive, or both.
    (b) Protest under paragraph (a) of this section will be examined by 
the Commissioner or the Commissioner's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international preliminary examination 
report when forwarded to the Elected Offices, may notify the 
International Preliminary Examining Authority to that effect any time 
prior to the issuance of the international preliminary examination 
report. Thereafter, such notification should be directed to the 
International Bureau.

[52 FR 20050, May 28, 1987]

                             National Stage



Sec. 1.491  Entry into the national stage.

    An international application enters the national stage when the 
applicant has filed the documents and fees required by 35 U.S.C. 371(c) 
within the periods set forth in Sec. 1.494 or Sec. 1.495.

[52 FR 20050, May 28, 1987]



Sec. 1.492  National stage fees.

    The following fees and charges are established for international 
applications entering the national stage under 35 U.S.C. 371:
    (a) The basic national fee:
    (1) Where an international preliminary examination fee as set forth 
in Sec. 1.482 has been paid on the international application to the 
United States Patent and Trademark Office:

By a small entity (Sec. 1.9(f))--$335.00
By other than a small entity--$670.00

    (2) Where no international preliminary examination fee as set forth 
in Sec. 1.482 has been paid to the United States Patent and Trademark 
Office, but an international search fee as set forth in Sec. 1.445(a)(2) 
has been paid on the international application to the United States 
Patent and Trademark Office as an International Searching Authority:


[[Page 105]]


By a small entity (Sec. 1.9(f))--$345.00
By other than a small entity--$690.00

    (3) Where no international preliminary examination fee as set forth 
in Sec. 1.482 has been paid and no international search fee as set forth 
in Sec. 1.445(a)(2) has been paid on the international application to 
the United States Patent and Trademark Office:

By a small entity (Sec. 1.9(f))--$485.00
By other than a small entity--$970.00

    (4) Where an international preliminary examination fee as set forth 
in Sec. 1.482 has been paid to the United States Patent and Trademark 
Office and the international preliminary examination report states that 
the criteria of novelty, inventive step (non-obviousness), and 
industrial applicability, as defined in PCT Article 33 (1) to (4) have 
been satisfied for all the claims presented in the application entering 
the national stage (see Sec. 1.496(b)):

By a small entity (Sec. 1.9(f))--$48.00
By other than a small entity--$96.00

    (5) Where a search report on the international application has been 
prepared by the European Patent Office or the Japanese Patent Office:

By a small entity (Sec. 1.9(f))--$420.00
By other than a small entity--$840.00

    (b) In addition to the basic national fee, for filing or later 
presentation of each independent claim in excess of 3:

By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00

    (c) In addition to the basic national fee, for filing or later 
presentation of each claim (whether independent or dependent) in excess 
of 20 (Note that Sec. 1.75(c) indicates how multiple dependent claims 
are considered for fee calculation purposes.):

By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00

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

By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00
    (e) Surcharge for filing the oath or declaration later than 20 
months from the priority date pursuant to Sec. 1.494(c) or later than 30 
months from the priority date pursuant to Sec. 1.495(c):

By a small entity (Sec. 1.9(f))--$65.00
By other than a small entity--$130.00

    (f) For filing an English translation of an international 
application later than 20 months after the priority date (Sec. 1.494(c)) 
or filing an English translation of the international application or of 
any annexes to the international preliminary examination report later 
than 30 months after the priority date

(Secs. 1.495 (c) and (e))--$130.00

    (g) If the additional fees required by paragraphs (b), (c), and (d) 
of this section are not paid on presentation of the claims for which the 
additional fees are due, they must be paid or the claims cancelled by 
amendment, prior to the expiration of the time period set for reply by 
the Office in any notice of fee deficiency.

[56 FR 65154, Dec. 13, 1991, as amended at 57 FR 38196, Aug. 21, 1992; 
58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July 
30, 1996; 62 FR 40453, July 29, 1997; 62 FR 53200, Oct. 10, 1997; 63 FR 
67580, Dec. 8, 1998; 64 FR 67777, Dec. 3, 1999]



Sec. 1.494  Entering the national stage in the United States of America as a Designated Office.

    (a) Where the United States of America has not been elected by the 
expiration of 19 months from the priority date (see Sec. 1.495), the 
applicant must fulfill the requirements of PCT Article 22 and 35 U.S.C. 
371 within the time periods set forth in paragraphs (b) and (c) of this 
section in order to prevent the abandonment of the international 
application as to the United States of America. International 
applications for which those requirements are timely fulfilled will 
enter the national stage and obtain an examination as to the 
patentability of the invention in the United States of America.
    (b) To avoid abandonment of the application, the applicant shall 
furnish to the United States Patent and Trademark Office not later than 
the expiration of 20 months from the priority date:
    (1) A copy of the international application, unless it has been 
previously communicated by the International Bureau or unless it was 
originally filed in the United States Patent and Trademark Office; and

[[Page 106]]

    (2) The basic national fee (see Sec. 1.492(a)). The 20-month time 
limit may not be extended.
    (c) If applicant complies with paragraph (b) of this section before 
expiration of 20 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language (35 
U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 20 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 20 months after the priority date. A 
``Sequence Listing'' need not be translated if the ``Sequence Listing'' 
complies with PCT Rule 12.1(d) and the description complies with PCT 
Rule 5.2(b).
    (d) A copy of any amendments to the claims made under PCT Article 
19, and a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the 
expiration of 20 months from the priority date. Amendments under PCT 
Article 19 which are not received by the expiration of 20 months from 
the priority date will be considered to be cancelled. The 20-month time 
limit may not be extended.
    (e) Verification of the translation of the international application 
or any other document pertaining to an international application may be 
required where it is considered necessary, if the international 
application or other document was filed in a language other than 
English.
    (f) The documents and fees submitted under paragraphs (b) and (c) of 
this section must be clearly identified as a submission to enter the 
national stage under 35 U.S.C. 371, otherwise the submission will be 
considered as being made under 35 U.S.C. 111.
    (g) An international application becomes abandoned as to the United 
States 20 months from the priority date if the requirements of paragraph 
(b) of this section have not been complied with within 20 months from 
the priority date where the United States has been designated but not 
elected by the expiration of 19 months from the priority date. If the 
requirements of paragraph (b) of this section are complied with within 
20 months from the priority date but any required translation of the 
international application as filed and/or the oath or declaration are 
not timely filed, an international application will become abandoned as 
to the United States upon expiration of the time period set pursuant to 
paragraph (c) of this section.

[52 FR 20050, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 63 
FR 29620, June 1, 1998]



Sec. 1.495  Entering the national stage in the United States of America as an Elected Office.

    (a) Where the United States of America has been elected by the 
expiration of 19 months from the priority date, the applicant must 
fulfill the requirements of 35 U.S.C. 371 within the time periods set 
forth in paragraphs (b) and (c) of this section in order to prevent the 
abandonment of the international application as to the United States of 
America. International applications for which those requirements are 
timely fulfilled will enter the national stage and obtain an examination 
as to the patentability of the invention in the United States of 
America.
    (b) To avoid abandonment of the application the applicant shall 
furnish to the United States Patent and Trademark Office not later than 
the expiration of 30 months from the priority date:
    (1) A copy of the international application, unless it has been 
previously communicated by the International Bureau or unless it was 
originally filed in the United States Patent and Trademark Office; and
    (2) The basic national fee (see Sec. 1.492(a)). The 30-month time 
limit may not be extended.

[[Page 107]]

    (c) If applicant complies with paragraph (b) of this section before 
expiration of 30 months from the priority date but omits:
    (1) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language (35 
U.S.C. 371(c)(2)) and/or
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), applicant will be so notified and given a period of 
time within which to file the translation and/or oath or declaration in 
order to prevent abandonment of the application. The payment of the 
processing fee set forth in Sec. 1.492(f) is required for acceptance of 
an English translation later than the expiration of 30 months after the 
priority date. The payment of the surcharge set forth in Sec. 1.492(e) 
is required for acceptance of the oath or declaration of the inventor 
later than the expiration of 30 months after the priority date.

A ``Sequence Listing'' need not be translated if the ``Sequence 
Listing'' complies with PCT Rule 12.1(d) and the description complies 
with PCT Rule 5.2(b).
    (d) A copy of any amendments to the claims made under PCT Article 
19, and a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the 
expiration of 30 months from the priority date. Amendments under PCT 
Article 19 which are not received by the expiration of 30 months from 
the priority date will be considered to be cancelled. The 30-month time 
limit may not be extended.
    (e) A translation into English of any annexes to the international 
preliminary examination report, if the annexes were made in another 
language, must be furnished not later than the expiration of 30 months 
from the priority date. Translations of the annexes which are not 
received by the expiration of 30 months from the priority date may be 
submitted within any period set pursuant to paragraph (c) of this 
section accompanied by the processing fee set forth in Sec. 1.492(f). 
Annexes for which translations are not timely received will be 
considered cancelled. The 30-month time limit may not be extended.
    (f) Verification of the translation of the international application 
or any other document pertaining to an international application may be 
required where it is considered necessary, if the international 
application or other document was filed in a language other than 
English.
    (g) The documents submitted under paragraphs (b) and (c) of this 
section must be clearly identified as a submission to enter the national 
stage under 35 U.S.C. 371, otherwise the submission will be considered 
as being made under 35 U.S.C. 111.
    (h) An international application becomes abandoned as to the United 
States 30 months from the priority date if the requirements of paragraph 
(b) of this section have not been complied with within 30 months from 
the priority date and the United States has been elected by the 
expiration of 19 months from the priority date. If the requirements of 
paragraph (b) of this section are complied with within 30 months from 
the priority date but any required translation of the international 
application as filed and/or the oath or declaration are not timely 
filed, an international application will become abandoned as to the 
United States upon expiration of the time period set pursuant to 
paragraph (c) of this section.

[52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63 
FR 29620, June 1, 1998]



Sec. 1.496  Examination of international applications in the national stage.

    (a) International applications which have complied with the 
requirements of 35 U.S.C. 371(c) will be taken up for action based on 
the date on which such requirements were met. However, unless an express 
request for early processing has been filed under 35 U.S.C. 371(f), no 
action may be taken prior to one month after entry into the national 
stage.
    (b) A national stage application filed under 35 U.S.C. 371 may have 
paid therein the basic national fee as set forth in Sec. 1.492(a)(4) if 
it contains, or is amended to contain, at the time of entry into the 
national stage, only claims which have been indicated in an 
international preliminary examination

[[Page 108]]

report prepared by the United States Patent and Trademark Office as 
satisfying the criteria of PCT Article 33(1)-(4) as to novelty, 
inventive step and industrial applicability. Such national stage 
applications in which the basic national fee as set forth in 
Sec. 1.492(a)(4) has been paid may be amended subsequent to the date of 
entry into the national stage only to the extent necessary to eliminate 
objections as to form or to cancel rejected claims. Such national stage 
applications in which the basic national fee as set forth in 
Sec. 1.492(a)(4) has been paid will be taken up out of order.

[52 FR 20051, May 28, 1987]



Sec. 1.497  Oath or declaration under 35 U.S.C. 371(c)(4).

    (a) When an applicant of an international application desires to 
enter the national stage under 35 U.S.C. 371 pursuant to Secs. 1.494 or 
1.495, he or she must file an oath or declaration that:
    (1) Is executed in accordance with either Secs. 1.66 or 1.68;
    (2) Identifies the specification to which it is directed;
    (3) Identifies each inventor and the country of citizenship of each 
inventor; and
    (4) States that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor or 
inventors of the subject matter which is claimed and for which a patent 
is sought.
    (b)(1) The oath or declaration must be made by all of the actual 
inventors except as provided for in Secs. 1.42, 1.43 or 1.47.
    (2) If the person making the oath or declaration is not the 
inventor, the oath or declaration shall state the relationship of the 
person to the inventor, the facts required by Secs. 1.42, 1.43 or 1.47, 
and, upon information and belief, the facts which the inventor would 
have been required to state.
    (c) If the oath or declaration meets the requirements of paragraphs 
(a) and (b) of this section, the oath or declaration will be accepted as 
complying with 35 U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c). 
However, if the oath or declaration does not also meet the requirements 
of Sec. 1.63, a supplemental oath or declaration in compliance with 
Sec. 1.63 will be required in accordance with Sec. 1.67.

[61 FR 42807, Aug. 19, 1996]



Sec. 1.499  Unity of invention during the national stage.

    If the examiner finds that a national stage application lacks unity 
of invention under Sec. 1.475, the examiner may in an Office action 
require the applicant in the response to that action to elect the 
invention to which the claims shall be restricted. Such requirement may 
be made before any action on the merits but may be made at any time 
before the final action at the discretion of the examiner. Review of any 
such requirement is provided under Secs. 1.143 and 1.144.

[58 FR 4347, Jan. 14, 1993]



                   Subpart D--Reexamination of Patents

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

                          Citation of Prior Art



Sec. 1.501  Citation of prior art in patent files.

    (a) At any time during the period of enforceability of a patent, any 
person may cite to the Patent and Trademark Office in writing prior art 
consisting of patents or printed publications which that person states 
to be pertinent and applicable to the patent and believes to have a 
bearing on the patentability of any claim of a particular patent. If the 
citation is made by the patent owner, the explanation of pertinency and 
applicability may include an explanation of how the claims differ from 
the prior art. Citations by the patent owner under Sec. 1.555 and by a 
reexamination requester under either Sec. 1.510 or Sec. 1.535 will be 
entered in the patent file during a reexamination proceeding. The entry 
in the patent file of citations submitted after the date of an order to 
reexamine pursuant to Sec. 1.525 by persons other than the patent owner, 
or a reexamination requester under either Sec. 1.510 or Sec. 1.535, will 
be delayed until the reexamination proceedings have been terminated.

[[Page 109]]

    (b) If the person making the citation wishes his or her identity to 
be excluded from the patent file and kept confidential, the citation 
papers must be submitted without any identification of the person making 
the submission.
    (c) Citation of patents or printed publications by the public in 
patent files should either:

    (1) Reflect that a copy of the same has been mailed to the patent 
owner at the address as provided for in Sec. 1.33(c); or in the event 
service is not possible
    (2) Be filed with the Office in duplicate.

                        Request for Reexamination



Sec. 1.510  Request for reexamination.

    (a) Any person may, at any time during the period of enforceability 
of a patent, file a request for reexamination by the Patent and 
Trademark Office of any claim of the patent on the basis of prior art 
patents or printed publications cited under Sec. 1.501. The request must 
be accompanied by the fee for requesting reexamination set in 
Sec. 1.20(c).
    (b) Any request for reexamination must include the following parts:
    (1) A statement pointing out each substantial new question of 
patentability based on prior patents and printed publications.
    (2) An identification of every claim for which reexamination is 
requested, and a detailed explanation of the pertinency and manner of 
applying the cited prior art to every claim for which reexamination is 
requested. If appropriate the party requesting reexamination may also 
point out how claims distinguish over cited prior art.
    (3) A copy of every patent or printed publication relied upon or 
referred to in paragraph (b) (1) and (2) of this section accompanied by 
an English language translation of all the necessary and pertinent parts 
of any non-English language patent or printed publication.
    (4) The entire specification (including claims) and drawings of the 
patent for which reexamination is requested must be furnished in the 
form of cut-up copies of the original patent with only a single column 
of the printed patent securely mounted or reproduced in permanent form 
on one side of a separate paper. A copy of any disclaimer, certificate 
of correction, or reexamination certificate issued in the patent must 
also be included.
    (5) A certification that a copy of the request filed by a person 
other than the patent owner has been served in its entirety on the 
patent owner at the address as provided for in Sec. 1.33(c). The name 
and address of the party served must be indicated. If service was not 
possible, a duplicate copy must be supplied to the Office.
    (c) If the request does not include the fee for requesting 
reexamination or all of the parts required by paragraph (b) of this 
section, the person identified as requesting reexamination will be so 
notified and given an opportunity to complete the request within a 
specified time. If the fee for requesting reexamination has been paid 
but the defect in the request is not corrected within the specified 
time, the determination whether or not to institute reexamination will 
be made on the request as it then exists. If the fee for requesting 
reexamination has not been paid, no determination will be made and the 
request will be placed in the patent file as a citation if it complies 
with the requirements of Sec. 1.501(a).
    (d) The filing date of the request is:
    (1) The date on which the request including the entire fee for 
requesting reexamination is received in the Patent and Trademark Office; 
or
    (2) The date on which the last portion of the fee for requesting 
reexamination is received.
    (e) A request filed by the patent owner may include a proposed 
amendment in accordance with Sec. 1.530(d).
    (f) If a request is filed by an attorney or agent identifying 
another party on whose behalf the request is being filed, the attorney 
or agent must have a power of attorney from that party or be acting in a 
representative capacity pursuant to Sec. 1.34(a).

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982; 
62 FR 53200, Oct. 10, 1997]

[[Page 110]]



Sec. 1.515  Determination of the request for reexamination.

    (a) Within three months following the filing date of a request for 
reexamination, an examiner will consider the request and determine 
whether or not a substantial new question of patentability affecting any 
claim of the patent is raised by the request and the prior art cited 
therein, with or without consideration of other patents or printed 
publications. The examiner's determination will be based on the claims 
in effect at the time of the determination and will become a part of the 
official file of the patent and will be given or mailed to the patent 
owner at the address as provided for in Sec. 1.33(c) and to the person 
requesting reexamination.
    (b) Where no substantial new question of patentability has been 
found, a refund of a portion of the fee for requesting reexamination 
will be made to the requester in accordance with Sec. 1.26(c).
    (c) The requester may seek review by a petition to the Commissioner 
under Sec. 1.181 within one month of the mailing date of the examiner's 
determination refusing reexamination. Any such petition must comply with 
Sec. 1.181(b). If no petition is timely filed or if the decision on 
petition affirms that no substantial new question of patentability has 
been raised, the determination shall be final and nonappealable.



Sec. 1.520  Reexamination at the initiative of the Commissioner.

    The Commissioner, at any time during the period of enforceability of 
a patent, may determine whether or not a substantial new question of 
patentability is raised by patents or printed publications which have 
been discovered by the Commissioner or which have been brought to the 
Commissioner's attention even though no request for reexamination has 
been filed in accordance with Sec. 1.510. The Commissioner may initiate 
reexamination without a request for reexamination pursuant to 
Sec. 1.510. Normally requests from outside the Patent and Trademark 
Office that the Commissioner undertake reexamination on his own 
initiative will not be considered. Any determination to initiate 
reexamination under this section will become a part of the official file 
of the patent and will be given or mailed to the patent owner at the 
address as provided for in Sec. 1.33(c).

                              Reexamination



Sec. 1.525  Order to reexamine.

    (a) If a substantial new question of patentability is found pursuant 
to Sec. 1.515 or Sec. 1.520, the determination will include an order for 
reexamination of the patent for resolution of the question. If the order 
for reexamination resulted from a petition pursuant to Sec. 1.515(c), 
the reexamination will ordinarily be conducted by an examiner other than 
the examiner responsible for the initial determination under 
Sec. 1.515(a).
    (b) If the order for reexamination of the patent mailed to the 
patent owner at the address as provided for in Sec. 1.33(c) is returned 
to the Office undelivered, the notice published in the Official Gazette 
under Sec. 1.11(c) will be considered to be constructive notice and 
reexamination will proceed.



Sec. 1.530  Statement; amendment by patent owner.

    (a) Except as provided in Sec. 1.510(e), no statement or other 
response by the patent owner shall be filed prior to the determinations 
made in accordance with Sec. 1.515 or 1.520. If a premature statement or 
other response is filed by the patent owner it will not be acknowledged 
or considered in making the determination.
    (b) The order for reexamination will set a period of not less than 
two months from the date of the order within which the patent owner may 
file a statement on the new question of patentability including any 
proposed amendments the patent owner wishes to make.
    (c) Any statement filed by the patent owner shall clearly point out 
why the subject matter as claimed is not anticipated or rendered obvious 
by the prior art patents or printed publications, either alone or in any 
reasonable combinations. Any statement filed must be served upon the 
reexamination requester in accordance with Sec. 1.248.

[[Page 111]]

    (d) Amendments in reexamination proceedings. Amendments in 
reexamination proceedings are made by filing a paper, in compliance with 
paragraph (d)(5) of this section, directing that specified amendments be 
made.
    (1) Specification other than the claims. Amendments to the 
specification, other than to the claims, may only be made as follows:
    (i) Amendments must be made by submission of the entire text of a 
newly added or rewritten paragraph(s) with markings pursuant to 
paragraph (d)(1)(iii) of this section, except that an entire paragraph 
may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph.
    (ii) The precise point in the specification must be indicated where 
the paragraph to be amended is located.
    (iii) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made.
    (2) Claims. Amendments to the claims may only be made as follows:
    (i)(A) The amendment must be made relative to the patent claims in 
accordance with paragraph (d)(8) of this section and must include the 
entire text of each claim which is being proposed to be amended by the 
current amendment and each proposed new claim being added by the current 
amendment with markings pursuant to paragraph (d)(2)(i)(C) of this 
section, except that a patent claim or previously proposed new claim 
should be cancelled by a statement cancelling the patent claim or 
proposed new claim without presentation of the text of the patent claim 
or proposed new claim.
    (B) Patent claims must not be renumbered and the numbering of any 
new claims proposed to be added to the patent must follow the number of 
the highest numbered patent claim.
    (C) Underlining below the subject matter added to the patent and 
brackets around the subject matter deleted from the patent are to be 
used to mark the amendments being made. If a claim is amended pursuant 
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression 
``amended,'' ``twice amended,'' etc., should follow the original claim 
number.
    (ii) Each amendment submission must set forth the status (i.e., 
pending or cancelled) as of the date of the amendment, of all patent 
claims and of all new claims currently or previously proposed.
    (iii) Each amendment, when submitted for the first time, must be 
accompanied by an explanation of the support in the disclosure of the 
patent for the amendment along with any additional comments on page(s) 
separate from the page(s) containing the amendment.
    (3) No amendment may enlarge the scope of the claims of the patent 
or introduce new matter. No amendment may be proposed for entry in an 
expired patent. Moreover, no amendment will be incorporated into the 
patent by certificate issued after the expiration of the patent.
    (4) Although the Office actions will treat proposed amendments as 
though they have been entered, the proposed amendments will not be 
effective until the reexamination certificate is issued.
    (5) The form of amendments other than to the patent drawings must be 
in accordance with the following requirements. All amendments must be in 
the English language and must be legibly written either by a typewriter 
or mechanical printer in at least 11 point type in permanent dark ink or 
its equivalent in portrait orientation on flexible, strong, smooth, non-
shiny, durable, white paper. All amendments must be presented in a form 
having sufficient clarity and contrast between the paper and the writing 
thereon to permit the direct reproduction of readily legible copies in 
any number by use of photographic, electrostatic, photo-offset, and 
microfilming processes and electronic reproduction by use of digital 
imaging or optical character recognition. If the amendments are not of 
the required quality, substitute typewritten or mechanically printed 
papers of suitable quality will be required. The papers, including the 
drawings, must have each page plainly written on only one side of a 
sheet of paper. The sheets of paper must be the same size and either 
21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11

[[Page 112]]

inches). Each sheet must include a top margin of at least 2.0 cm. (\3/4\ 
inch), a left side margin of at least 2.5 cm. (1 inch), a right side 
margin of at least 2.0 cm. (\3/4\ inch), and a bottom margin of at least 
2.0 cm. (\3/4\ inch), and no holes should be made in the sheets as 
submitted. The lines must be double spaced, or one and one-half spaced. 
The pages must be numbered consecutively, starting with 1, the numbers 
being centrally located, preferably below the text, or above the text.
    (6) Drawings. (i) The original patent drawing sheets may not be 
altered. Any proposed change to the patent drawings must be by way of a 
new sheet of drawings with the amended figures identified as ``amended'' 
and with added figures identified as ``new'' for each sheet change 
submitted in compliance with Sec. 1.84.
    (ii) Where a change to the drawings is desired, a sketch in 
permanent ink showing proposed changes in red, to become part of the 
record, must be filed for approval by the examiner and should be in a 
separate paper.
    (7) The disclosure must be amended, when required by the Office, to 
correct inaccuracies of description and definition and to secure 
substantial correspondence between the claims, the remainder of the 
specification, and the drawings.
    (8) All amendments to the patent must be made relative to the patent 
specification, including the claims, and drawings, which is in effect as 
of the date of filing of the request for reexamination.

[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997]



Sec. 1.535  Reply by requester.

    A reply to the patent owner's statement under Sec. 1.530 may be 
filed by the reexamination requester within two months from the date of 
service of the patent owner's statement. Any reply by the requester must 
be served upon the patent owner in accordance with Sec. 1.248. If the 
patent owner does not file a statement under Sec. 1.530, no reply or 
other submission from the reexamination requester will be considered.



Sec. 1.540  Consideration of responses.

    The failure to timely file or serve the documents set forth in 
Sec. 1.530 or in Sec. 1.535 may result in their being refused 
consideration. No submissions other than the statement pursuant to 
Sec. 1.530 and the reply by the requester pursuant to Sec. 1.535 will be 
considered prior to examination.



Sec. 1.550  Conduct of reexamination proceedings.

    (a) All reexamination proceedings, including any appeals to the 
Board of Patent Appeals and Interferences, will be conducted with 
special dispatch within the Office. After issuance of the reexamination 
order and expiration of the time for submitting any responses thereto, 
the examination will be conducted in accordance with Secs. 1.104, 1.110 
through 1.113 and 1.116, and will result in the issuance of a 
reexamination certificate under Sec. 1.570.
    (b) The patent owner will be given at least thirty days to respond 
to any Office action. Such response may include further statements in 
response to any rejections or proposed amendments or new claims to place 
the patent in a condition where all claims, if amended as proposed, 
would be patentable.
    (c) The time for taking any action by a patent owner in a 
reexamination proceeding will be extended only for sufficient cause, and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of the request effect any extension. 
See Sec. 1.304(a) for extensions of time for filing a notice of appeal 
to the U.S. Court of Appeals for the Federal Circuit or for commencing a 
civil action.
    (d) If the patent owner fails to file a timely and appropriate 
response to any Office action, the reexamination proceeding will be 
terminated and the Commissioner will proceed to issue a certificate 
under Sec. 1.570 in accordance with the last action of the Office.
    (e) The reexamination requester will be sent copies of Office 
actions issued during the reexamination proceeding. After filing of a 
request for reexamination by a third party requester, any document filed 
by either the patent owner or the third party requester

[[Page 113]]

must be served on the other party in the reexamination proceeding in the 
manner provided by Sec. 1.248. The document must reflect service or the 
document may be refused consideration by the Office.
    (1) The active participation of the reexamination requester ends 
with the reply pursuant to Sec. 1.535, and no further submissions on 
behalf of the reexamination requester will be acknowledged or 
considered. Further, no submissions on behalf of any third parties will 
be acknowledged or considered unless such submissions are:
    (i) In accordance with Sec. 1.510; or
    (ii) Entered in the patent file prior to the date of the order to 
reexamine pursuant to Sec. 1.525.
    (2) Submissions by third parties, filed after the date of the order 
to reexamine pursuant to Sec. 1.525, must meet the requirements of and 
will be treated in accordance with Sec. 1.501(a).

(35 U.S.C. 6, Pub. L. 97-247)

[46 FR 29185, May 29, 1981, as amended at 49 FR 556, Jan. 4, 1984; 49 FR 
48455, Dec. 12, 1984; 54 FR 29553, July 13, 1989; 62 FR 53201, Oct. 10, 
1997]



Sec. 1.552  Scope of reexamination in reexamination proceedings.

    (a) Patent claims will be reexamined on the basis of patents or 
printed publications.
    (b) Amended or new claims presented during a reexamination 
proceeding must not enlarge the scope of the claims of the patent and 
will be examined on the basis of patents or printed publications and 
also for compliance with the requirements of 35 U.S.C. 112 and the new 
matter prohibition of 35 U.S.C. 132.
    (c) Questions other than those indicated in paragraphs (a) and (b) 
of this section will not be resolved in a reexamination proceeding. If 
such questions are discovered during a reexamination proceeding, the 
existence of such questions will be noted by the examiner in an Office 
action, in which case the patent owner may desire to consider the 
advisability of filing a reissue application to have such questions 
considered and resolved.



Sec. 1.555  Information material to patentability in reexamination proceedings.

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

[[Page 114]]

the patent owner in a reexamination proceeding, and should be filed 
within two months of the date of the order for reexamination, or as soon 
thereafter as possible.
    (b) Under this section, information is material to patentability in 
a reexamination proceeding when it is not cumulative to information of 
record or being made of record in the reexamination proceeding, and
    (1) It is a patent or printed publication that establishes, by 
itself or in combination with other patents or printed publications, a 
prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the patent owner 
takes in:
    (i) Opposing an argument of unpatentability relied on by the Office, 
or
    (ii) Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a 
reexamination proceeding is established when the information compels a 
conclusion that a claim is unpatentable under the preponderance of 
evidence, burden-of-proof standard, giving each term in the claim its 
broadest reasonable construction consistent with the specification, and 
before any consideration is given to evidence which may be submitted in 
an attempt to establish a contrary conclusion of patentability.
    (c) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section and no 
evaluation will be made by the Office in the reexamination proceeding as 
to compliance with this section. If questions of compliance with this 
section are discovered during a reexamination proceeding, they will be 
noted as unresolved questions in accordance with Sec. 1.552(c).

[57 FR 2036, Jan 17, 1992]



Sec. 1.560  Interviews in reexamination proceedings.

    (a) Interviews in reexamination proceedings pending before the 
Office between examiners and the owners of such patents or their 
attorneys or agents of record must be had in the Office at such times, 
within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Commissioner. Interviews for the discussion of the 
patentability of claims in patents involved in reexamination proceedings 
will not be had prior to the first official action thereon. Interviews 
should be arranged for in advance. Requests that reexamination 
requesters participate in interviews with examiners will not be granted.
    (b) In every instance of an interview with an examiner, a complete 
written statement of the reasons presented at the interview as 
warranting favorable action must be filed by the patent owner. An 
interview does not remove the necessity for response to Office actions 
as specified in Sec. 1.111.



Sec. 1.565  Concurrent office proceedings.

    (a) In any reexamination proceeding before the Office, the patent 
owner shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissue, reexaminations, or litigation and the results of 
such proceedings.
    (b) If a patent in the process of reexamination is or becomes 
involved in litigation or a reissue application for the patent is filed 
or pending, the Commissioner shall determine whether or not to stay the 
reexamination or reissue proceeding.
    (c) If reexamination is ordered while a prior reexamination 
proceeding is pending, the reexamination proceedings will be 
consolidated and result in the issuance of a single certificate under 
Sec. 1.570.
    (d) If a reissue application and a reexamination proceeding on which 
an order pursuant to Sec. 1.525 has been mailed are pending concurrently 
on a patent, a decision will normally be made to merge the two 
proceedings or to stay one of the two proceedings. Where merger of a 
reissue application and a reexamination proceeding is ordered, the 
merged examination will be conducted in accordance with Secs. 1.171 
through 1.179 and the patent owner will be required to place and 
maintain the same claims in the reissue application and the 
reexamination proceeding during the pendency of the merged proceeding. 
The examiner's actions and

[[Page 115]]

any responses by the patent owner in a merged proceeding will apply to 
both the reissue application and the reexamination proceeding and be 
physically entered into both files. Any reexamination proceeding merged 
with a reissue application shall be terminated by the grant of the 
reissued patent.
    (e) If a patent in the process of reexamination is or becomes 
involved in an interference, the Commissioner may stay reexamination or 
the interference. The Commissioner will not consider a request to stay 
an interference unless a motion (Sec. 1.635) to stay the interference 
has been presented to, and denied by, an examiner-in-chief and the 
request is filed within ten (10) days of a decision by an examiner-in-
chief denying the motion for a stay or such other time as the examiner-
in-chief may set.

[46 FR 29185, May 29, 1981, as amended at 47 FR 21753, May 19, 1982; 49 
FR 48455, Dec. 12, 1984; 50 FR 23123, May 31, 1985]

                               Certificate



Sec. 1.570  Issuance of reexamination certificate after reexamination proceedings.

    (a) Upon the conclusion of reexamination proceedings, the 
Commissioner will issue a certificate in accordance with 35 U.S.C. 307 
setting forth the results of the reexamination proceeding and the 
content of the patent following the reexamination proceeding.
    (b) A certificate will be issued in each patent in which a 
reexamination proceeding has been ordered under Sec. 1.525. Any 
statutory disclaimer filed by the patent owner will be made part of the 
certificate.
    (c) The certificate will be mailed on the day of its date to the 
patent owner at the address as provided for in Sec. 1.33(c). A copy of 
the certificate will also be mailed to the requester of the 
reexamination proceeding.
    (d) If a certificate has been issued which cancels all of the claims 
of the patent, no further Office proceedings will be conducted with 
regard to that patent or any reissue applications or reexamination 
requests relating thereto.
    (e) If the reexamination proceeding is terminated by the grant of a 
reissued patent as provided in Sec. 1.565(d) the reissued patent will 
constitute the reexamination certificate required by this section and 35 
U.S.C. 307.
    (f) A notice of the issuance of each certificate under this section 
will be published in the Official Gazette on its date of issuance.

[46 FR 29185, May 29, 1981, as amended at 47 FR 21753, May 19, 1982]



                        Subpart E--Interferences

    Authority: 35 U.S.C. 6, 23, 41, and 135.

    Source: 49 FR 48455, Dec. 12, 1984, unless otherwise noted.



Sec. 1.601  Scope of rules, definitions.

    This subpart governs the procedure in patent interferences in the 
Patent and Trademark Office. This subpart shall be construed to secure 
the just, speedy, and inexpensive determination of every interference. 
For the meaning of terms in the Federal Rules of Evidence as applied to 
interferences, see Sec. 1.671(c). Unless otherwise clear from the 
context, the following definitions apply to this subpart:
    (a) Additional discovery is discovery to which a party may be 
entitled under Sec. 1.687 in addition to discovery to which the party is 
entitled as a matter of right under Sec. 1.673 (a) and (b).
    (b) Affidavit means affidavit, declaration under Sec. 1.68, or 
statutory declaration under 28 U.S.C. 1746. A transcript of an ex parte 
deposition may be used as an affidavit.
    (c) Board means the Board of Patent Appeals and Interferences.
    (d) Case-in-chief means that portion of a party's case where the 
party has the burden of going forward with evidence.
    (e) Case-in-rebuttal means that portion of a party's case where the 
party presents evidence in rebuttal to the case-in-chief of another 
party.
    (f) A count defines the interfering subject matter between two or 
more applications or between one or more applications and one or more 
patents. At the time the interference is initially declared, a count 
should be broad enough to encompass all of the claims that are 
patentable over the prior art and designated to correspond to the count. 
When there is more than one

[[Page 116]]

count, each count shall define a separate patentable invention. Any 
claim of an application or patent that is designated to correspond to a 
count is a claim involved in the interference within the meaning of 35 
U.S.C. 135(a). A claim of a patent or application that is designated to 
correspond to a count and is identical to the count is said to 
correspond exactly to the count. A claim of a patent or application that 
is designated to correspond to a count but is not identical to the count 
is said to correspond substantially to the count. When a count is 
broader in scope than all claims which correspond to the count, the 
count is a phantom count.
    (g) The effective filing date of an application is the filing date 
of an earlier application, benefit of which is accorded to the 
application under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is 
accorded, the filing date of the application. The effective filing date 
of a patent is the filing date of an earlier application, benefit of 
which is accorded to the patent under 35 U.S.C. 119, 120, 121, or 365 
or, if no benefit is accorded, the filing date of the application which 
issued as the patent.
    (h) In the case of an application, filing date means the filing date 
assigned to the application. In the case of a patent, ``filing date'' 
means the filing date assigned to the application which issued as the 
patent.
    (i) An interference is a proceeding instituted in the Patent and 
Trademark Office before the Board to determine any question of 
patentability and priority of invention between two or more parties 
claiming the same patentable invention. An interference may be declared 
between two or more pending applications naming different inventors 
when, in the opinion of an examiner, the applications contain claims for 
the same patentable invention. An interference may be declared between 
one or more pending applications and one or more unexpired patents 
naming different inventors when, in the opinion of an examiner, any 
application and any unexpired patent contain claims for the same 
patentable invention.
    (j) An interference-in-fact exists when at least one claim of a 
party that is designated to correspond to a count and at least one claim 
of an opponent that is designated to correspond to the count define the 
same patentable invention.
    (k) A lead attorney or agent is a registered attorney or agent of 
record who is primarily responsible for prosecuting an interference on 
behalf of a party and is the attorney or agent whom an administrative 
patent judge may contact to set times and take other action in the 
interference.
    (l) A party is an applicant or patentee involved in the interference 
or a legal representative or an assignee of record in the Patent and 
Trademark Office of an applicant or patentee involved in an 
interference. Where acts of party are normally performed by an attorney 
or agent, ``party'' may be construed to mean the attorney or agent. An 
inventor is the individual named as inventor in an application involved 
in an interference or the individual named as inventor in a patent 
involved in an interference.
    (m) A senior party is the party with the earliest effective filing 
date as to all counts or, if there is no party with the earliest 
effective filing date as to all counts, the party with the earliest 
filing date. A junior party is any other party.
    (n) Invention ``A'' is the same patentable invention as an invention 
``B'' when invention ``A'' is the same as (35 U.S.C. 102) or is obvious 
(35 U.S.C. 103) in view of invention ``B'' assuming invention ``B'' is 
prior art with respect to invention ``A''. Invention ``A'' is a separate 
patentable invention with respect to invention ``B'' when invention 
``A'' is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of 
invention ``B'' assuming invention ``B'' is prior art with respect to 
invention ``A''.
    (o) Sworn means sworn or affirmed.
    (p) United States means the United States of America, its 
territories and possessions.
    (q) A final decision is a decision awarding judgment as to all 
counts. An interlocutory order is any other action taken by an 
administrative patent judge or the Board in an interference, including 
the notice declaring an interference.

[[Page 117]]

    (r) NAFTA country means NAFTA country as defined in section 2(4) of 
the North American Free Trade Agreement Implementation Act, Pub. L. 103-
182, 107 Stat. 2060 (19 U.S.C. 3301).
    (s) WTO member country means WTO member country as defined in 
section 2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 
Stat. 4813 (19 U.S.C. 3501).

[49 FR 48455, Dec. 12, 1984; 50 FR 23123, May 31, 1985, as amended at 58 
FR 49434, Sept. 23, 1993; 60 FR 14519, Mar. 17, 1995]



Sec. 1.602  Interest in applications and patents involved in an interference.

    (a) Unless good cause is shown, an interference shall not be 
declared or continued between (1) applications owned by a single party 
or (2) applications and an unexpired patent owned by a single party.
    (b) The parties, within 20 days after an interference is declared, 
shall notify the Board of any and all right, title, and interest in any 
application or patent involved or relied upon in the interference unless 
the right, title, and interest is set forth in the notice declaring the 
interference.
    (c) If a change of any right, title, and interest in any application 
or patent involved or relied upon in the interference occurs after 
notice is given declaring the interference and before the time expires 
for seeking judicial review of a final decision of the Board, the 
parties shall notify the Board of the change within 20 days after the 
change.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14519, Mar. 17, 1995]



Sec. 1.603  Interference between applications; subject matter of the interference.

    Before an interference is declared between two or more applications, 
the examiner must be of the opinion that there is interfering subject 
matter claimed in the applications which is patentable to each applicant 
subject to a judgment in the interference. The interfering subject 
matter shall be defined by one or more counts. Each application must 
contain, or be amended to contain, at least one claim that is patentable 
over the prior art and corresponds to each count. All claims in the 
applications which define the same patentable invention as a count shall 
be designated to correspond to the count.

[60 FR 14519, Mar. 17, 1995]



Sec. 1.604  Request for interference between applications by an applicant.

    (a) An applicant may seek to have an interference declared with an 
application of another by,
    (1) Suggesting a proposed count and presenting at least one claim 
corresponding to the proposed count or identifying at least one claim in 
its application that corresponds to the proposed count,
    (2) Identifying the other application and, if known, a claim in the 
other application which corresponds to the proposed count, and
    (3) Explaining why an interference should be declared.
    (b) When an applicant presents a claim known to the applicant to 
define the same patentable invention claimed in a pending application of 
another, the applicant shall identify that pending application, unless 
the claim is presented in response to a suggestion by the examiner. The 
examiner shall notify the Commissioner of any instance where it appears 
an applicant may have failed to comply with the provisions of this 
paragraph.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 
60 FR 14519, Mar. 17, 1995]



Sec. 1.605  Suggestion of claim to applicant by examiner.

    (a) If no claim in an application is drawn to the same patentable 
invention claimed in another application or patent, the examiner may 
suggest that an applicant present a claim drawn to an invention claimed 
in another application or patent for the purpose of an interference with 
another application or a patent. The applicant to whom the claim is 
suggested shall amend the application by presenting the suggested claim 
within a time specified by the examiner, not less than one month. 
Failure or refusal of an applicant to timely present the suggested claim 
shall be taken without further action as a disclaimer by the applicant 
of the invention defined by the suggested claim. At the time the 
suggested claim

[[Page 118]]

is presented, the applicant may also call the examiner's attention to 
other claims already in the application or presented with the suggested 
claim and explain why the other claims would be more appropriate to be 
designated to correspond to a count in any interference which may be 
declared.
    (b) The suggestion of a claim by the examiner for the purpose of an 
interference will not stay the period for response to any outstanding 
Office action. When a suggested claim is timely presented, ex parte 
proceedings in the application will be stayed pending a determination of 
whether an interference will be declared.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14519, Mar. 17, 1995]



Sec. 1.606  Interference between an application and a patent; subject matter of the interference.

    Before an interference is declared between an application and an 
unexpired patent, an examiner must determine that there is interfering 
subject matter claimed in the application and the patent which is 
patentable to the applicant subject to a judgment in the interference. 
The interfering subject matter will be defined by one or more counts. 
The applications must contain, or be amended to contain, at least one 
claim that is patentable over the prior art and corresponds to each 
count. The claim in the application need not be, and most often will not 
be, identical to a claim in the patent. All claims in the application 
and patent which define the same patentable invention as a count shall 
be designated to correspond to the count. At the time an interference is 
initially declared (Sec. 1.611), a count shall not be narrower in scope 
than any application claim that is patentable over the prior art and 
designated to correspond to the count or any patent claim designated to 
correspond to the count. Any single patent claim designated to 
correspond to the count will be presumed, subject to a motion under 
Sec. 1.633(c), not to contain separate patentable inventions.

[60 FR 14520, Mar. 17, 1995]



Sec. 1.607  Request by applicant for interference with patent.

    (a) An applicant may seek to have an interference declared between 
an application and an unexpired patent by,
    (1) Identifying the patent,
    (2) Presenting a proposed count,
    (3) Identifying at least one claim in the patent corresponding to 
the proposed count,
    (4) Presenting at least one claim corresponding to the proposed 
count or identifying at least one claim already pending in its 
application that corresponds to the proposed count, and, if any claim of 
the patent or application identified as corresponding to the proposed 
count does not correspond exactly to the proposed count, explaining why 
each such claim corresponds to the proposed count, and
    (5) Applying the terms of any application claim,
    (i) Identified as corresponding to the count, and
    (ii) Not previously in the application to the disclosure of the 
application.
    (6) Explaining how the requirements of 35 U.S.C. 135(b) are met, if 
the claim presented or identified under paragraph (a)(4) of this section 
was not present in the application until more than one year after the 
issue date of the patent.
    (b) When an applicant seeks an interference with a patent, 
examination of the application, including any appeal to the Board, shall 
be conducted with special dispatch within the Patent and Trademark 
Office. The examiner shall determine whether there is interfering 
subject matter claimed in the application and the patent which is 
patentable to the applicant subject to a judgment in an interference. If 
the examiner determines that there is any interfering subject matter, an 
interference will be declared. If the examiner determines that there is 
no interfering subject matter, the examiner shall state the reasons why 
an interference is not being declared and otherwise act on the 
application.
    (c) When an applicant presents a claim which corresponds exactly or 
substantially to a claim of a patent, the applicant shall identify the 
patent and the number of the patent claim,

[[Page 119]]

unless the claim is presented in response to a suggestion by the 
examiner. The examiner shall notify the Commissioner of any instance 
where an applicant fails to identify the patent.
    (d) A notice that an applicant is seeking to provoke an interference 
with a patent will be placed in the file of the patent and a copy of the 
notice will be sent to the patentee. The identity of the applicant will 
not be disclosed unless an interference is declared. If a final decision 
is made not to declare an interference, a notice to that effect will be 
placed in the patent file and will be sent to the patentee.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 
58 FR 54511, Oct. 22, 1993; 60 FR 14520, Mar. 17, 1995]



Sec. 1.608  Interference between an application and a patent; prima facie showing by applicant.

    (a) When the effective filing date of an application is three months 
or less after the effective filing date of a patent, before an 
interference will be declared, either the applicant or the applicant's 
attorney or agent of record shall file a statement alleging that there 
is a basis upon which the applicant is entitled to a judgment relative 
to the patentee.
    (b) When the effective filing date of an application is more than 
three months after the effective filing date of a patent, the applicant, 
before an interference will be declared, shall file evidence which may 
consist of patents or printed publications, other documents, and one or 
more affidavits which demonstrate that applicant is prima facie entitled 
to a judgment relative to the patentee and an explanation stating with 
particularity the basis upon which the applicant is prima facie entitled 
to the judgment. Where the basis upon which an applicant is entitled to 
judgment relative to a patentee is priority of invention, the evidence 
shall include affidavits by the applicant, if possible, and one or more 
corroborating witnesses, supported by documentary evidence, if 
available, each setting out a factual description of acts and 
circumstances performed or observed by the affiant, which collectively 
would prima facie entitle the applicant to judgment on priority with 
respect to the effective filing date of the patent. To facilitate 
preparation of a record (Sec. 1.653(g)) for final hearing, an applicant 
should file affidavits on paper which is 21.8 by 27.9 cm. (8\1/2\ x 11 
inches). The significance of any printed publication or other document 
which is self-authenticating within the meaning of Rule 902 of the 
Federal Rules of Evidence or Sec. 1.671(d) and any patent shall be 
discussed in an affidavit or the explanation. Any printed publication or 
other document which is not self-authenticating shall be authenticated 
and discussed with particularity in an affidavit. Upon a showing of good 
cause, an affidavit may be based on information and belief. If an 
examiner finds an application to be in condition for declaration of an 
interference, the examiner will consider the evidence and explanation 
only to the extent of determining whether a basis upon which the 
application would be entitled to a judgment relative to the patentee is 
alleged and, if a basis is alleged, an interference may be declared.

[60 FR 14520, Mar. 17, 1995]



Sec. 1.609  Preparation of interference papers by examiner.

    When the examiner determines that an interference should be 
declared, the examiner shall forward to the Board:
    (a) All relevant application and patent files and
    (b) A statement identifying:
    (1) The proposed count or counts and, if there is more than one 
count proposed, explaining why the counts define different patentable 
inventions;
    (2) The claims of any application or patent which correspond to each 
count, explaining why each claim designated as corresponding to a count 
is directed to the same patentable invention as the count;
    (3) The claims in any application or patent which do not correspond 
to each count and explaining why each claim designated as not 
corresponding to any count is not directed to the same patentable 
invention as any count; and
    (4) Whether an applicant or patentee is entitled to the benefit of 
the filing date of an earlier application and, if so,

[[Page 120]]

sufficient information to identify the earlier application.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14520, Mar. 17, 1995]



Sec. 1.610  Assignment of interference to administrative patent judge, time period for completing interference.

    (a) Each interference will be declared by an administrative patent 
judge who may enter all interlocutory orders in the interference, except 
that only the Board shall hear oral argument at final hearing, enter a 
decision under Sec. 1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or enter 
any other order which terminates the interference.
    (b) As necessary, another administrative patent judge may act in 
place of the one who declared the interference. At the discretion of the 
administrative patent judge assigned to the interference, a panel 
consisting of two or more members of the Board may enter interlocutory 
orders.
    (c) Unless otherwise provided in this subpart, times for taking 
action by a party in the interference will be set on a case-by-case 
basis by the administrative patent judge assigned to the interference. 
Times for taking action shall be set and the administrative patent judge 
shall exercise control over the interference such that the pendency of 
the interference before the Board does not normally exceed two years.
    (d) An administrative patent judge may hold a conference with the 
parties to consider simplification of any issues, the necessity or 
desirability of amendments to counts, the possibility of obtaining 
admissions of fact and genuineness of documents which will avoid 
unnecessary proof, any limitations on the number of expert witnesses, 
the time and place for conducting a deposition (Sec. 1.673(g)), and any 
other matter as may aid in the disposition of the interference. After a 
conference, the administrative patent judge may enter any order which 
may be appropriate.
    (e) The administrative patent judge may determine a proper course of 
conduct in an interference for any situation not specifically covered by 
this part.

[60 FR 14520, Mar. 17, 1995]



Sec. 1.611  Declaration of interference.

    (a) Notice of declaration of an interference will be sent to each 
party.
    (b) When a notice of declaration is returned to the Patent and 
Trademark Office undelivered, or in any other circumstance where 
appropriate, an administrative patent judge may send a copy of the 
notice to a patentee named in a patent involved in an interference or 
the patentee's assignee of record in the Patent and Trademark Office or 
order publication of an appropriate notice in the Official Gazette.
    (c) The notice of declaration shall specify:
    (1) The name and residence of each party involved in the 
interference;
    (2) The name and address of record of any attorney or agent of 
record in any application or patent involved in the interference;
    (3) The name of any assignee of record in the Patent and Trademark 
Office;
    (4) The identity of any application or patent involved in the 
interference;
    (5) Where a party is accorded the benefit of the filing date of an 
earlier application, the identity of the earlier application;
    (6) The count or counts and, if there is more than one count, the 
examiner's explanation why the counts define different patentable 
inventions;
    (7) The claim or claims of any application or any patent which 
correspond to each count;
    (8) The examiner's explanation as to why each claim designated as 
corresponding to a count is directed to the same patentable invention as 
the count and why each claim designated as not corresponding to any 
count is not directed to the same patentable invention as any count; and
    (9) The order of the parties.
    (d) The notice of declaration may also specify the time for:
    (1) Filing a preliminary statement as provided in Sec. 1.621(a);
    (2) Serving notice that a preliminary statement has been filed as 
provided in Sec. 1.621(b); and
    (3) Filing preliminary motions authorized by Sec. 1.633.

[[Page 121]]

    (e) Notice may be given in the Official Gazette that an interference 
has been declared involving a patent.

[49 FR 48455, Dec. 12, 1984; 50 FR 23123, May 31, 1985, as amended at 60 
FR 14521, Mar. 17, 1995]



Sec. 1.612  Access to applications.

    (a) After an interference is declared, each party shall have access 
to and may obtain copies of the files of any application set out in the 
notice declaring the interference, except for affidavits filed under 
Sec. 1.131 and any evidence and explanation under Sec. 1.608 filed 
separate from an amendment. A party seeking access to any abandoned or 
pending application referred to in the opponent's involved application 
or access to any pending application referred to in the opponent's 
patent must file a motion under Sec. 1.635. See Sec. 1.11(e) concerning 
public access to interference files.
    (b) After preliminary motions under Sec. 1.633 are decided 
(Sec. 1.640(b)), each party shall have access to and may obtain copies 
of any affidavit filed under Sec. 1.131 and any evidence and explanation 
filed under Sec. 1.608 in any application set out in the notice 
declaring the interference.
    (c) Any evidence and explanation filed under Sec. 1.608 in the file 
of any application identified in the notice declaring the interference 
shall be served when required by Sec. 1.617(b).
    (d) The parties at any time may agree to exchange copies of papers 
in the files of any application identified in the notice declaring the 
interference.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 53 
FR 23735, June 23, 1988; 60 FR 14521, Mar. 17, 1995]



Sec. 1.613  Lead attorney, same attorney representing different parties in an interference, withdrawal of attorney or agent.

    (a) Each party may be required to designate one attorney or agent of 
record as the lead attorney or agent.
    (b) The same attorney or agent or members of the same firm of 
attorneys or agents may not represent two or more parties in an 
interference except as may be permitted under this chapter.
    (c) An administrative patent judge may make necessary inquiry to 
determine whether an attorney or agent should be disqualified from 
representing a party in an interference. If an administrative patent 
judge is of the opinion that an attorney or agent should be 
disqualified, the administrative patent judge shall refer the matter to 
the Commissioner. The Commissioner will make a final decision as to 
whether any attorney or agent should be disqualified.
    (d) No attorney or agent of record in an interference may withdraw 
as attorney or agent of record except with the approval of an 
administrative patent judge and after reasonable notice to the party on 
whose behalf the attorney or agent has appeared. A request to withdraw 
as attorney or agent of record in an interference shall be made by 
motion (Sec. 1.635).

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14521, Mar. 17, 1995]



Sec. 1.614  Jurisdiction over interference.

    (a) The Board acquires jurisdiction over an interference when the 
interference is declared under Sec. 1.611.
    (b) When the interference is declared the interference is a 
contested case within the meaning of 35 U.S.C. 24.
    (c) The examiner shall have jurisdiction over any pending 
application until the interference is declared. An administrative patent 
judge may for a limited purpose restore jurisdiction to the examiner 
over any application involved in the interference.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14521, Mar. 17, 1995]



Sec. 1.615  Suspension of ex parte prosecution.

    (a) When an interference is declared, ex parte prosecution of an 
application involved in the interference is suspended. Amendments and 
other papers related to the application received during pendency of the 
interference will not be entered or considered in the interference 
without the consent of an administrative patent judge.
    (b) Ex parte prosecution as to specified matters may be continued 
concurrently with the interference with the

[[Page 122]]

consent of the administrative patent judge.

[60 FR 14521, Mar. 17, 1995]



Sec. 1.616  Sanctions for failure to comply with rules or order or for taking and maintaining a frivolous position.

    (a) An administrative patent judge or the Board may impose an 
appropriate sanction against a party who fails to comply with the 
regulations of this part or any order entered by an administrative 
patent judge or the Board. An appropriate sanction may include among 
others entry of an order:
    (1) Holding certain facts to have been established in the 
interference;
    (2) Precluding a party from filing a paper;
    (3) Precluding a party from presenting or contesting a particular 
issue;
    (4) Precluding a party from requesting, obtaining, or opposing 
discovery;
    (5) Awarding compensatory expenses and/or compensatory attorney 
fees; or
    (6) Granting judgment in the interference.
    (b) An administrative patent judge or the Board may impose a 
sanction, including a sanction in the form of compensatory expenses and/
or compensatory attorney fees, against a party for taking and 
maintaining a frivolous position in papers filed in the interference.
    (c) To the extent that an administrative patent judge or the Board 
has authorized a party to compel the taking of testimony or the 
production of documents or things from an individual or entity located 
in a NAFTA country or a WTO member country concerning knowledge, use, or 
other activity relevant to proving or disproving a date of invention 
(Sec. 1.671(h)), but the testimony, documents or things have not been 
produced for use in the interference to the same extent as such 
information could be made available in the United States, the 
administrative patent judge or the Board shall draw such adverse 
inferences as may be appropriate under the circumstances, or take such 
other action permitted by statute, rule, or regulation, in favor of the 
party that requested the information in the interference, including 
imposition of appropriate sanctions under paragraph (a) of this section.
    (d) A party may file a motion (Sec. 1.635) for entry of an order 
imposing sanctions, the drawing of adverse inferences or other action 
under paragraph (a), (b) or (c) of this section. Where an administrative 
patent judge or the Board on its own initiative determines that a 
sanction, adverse inference or other action against a party may be 
appropriate under paragraph (a), (b) or (c) of this section, the 
administrative patent judge or the Board shall enter an order for the 
party to show cause why the sanction, adverse inference or other action 
is not appropriate. The Board shall take action in accordance with the 
order unless, within 20 days after the date of the order, the party 
files a paper which shows good cause why the sanction, adverse inference 
or other action would not be appropriate.

[60 FR 14521, Mar. 17, 1995]



Sec. 1.617  Summary judgment against applicant.

    (a) An administrative patent judge shall review any evidence filed 
by an applicant under Sec. 1.608(b) to determine if the applicant is 
prima facie entitled to a judgment relative to the patentee. If the 
administrative patent judge determines that the evidence shows the 
applicant is prima facie entitled to a judgment relative to the 
patentee, the interference shall proceed in the normal manner under the 
regulations of this part. If in the opinion of the administrative patent 
judge the evidence fails to show that the applicant is prima facie 
entitled to a judgment relative to the patentee, the administrative 
patent judge shall, concurrently with the notice declaring the 
interference, enter an order stating the reasons for the opinion and 
directing the applicant, within a time set in the order, to show cause 
why summary judgment should not be entered against the applicant.
    (b) The applicant may file a response to the order, which may 
include an appropriate preliminary motion under Sec. 1.633 (c), (f) or 
(g), and state any reasons why summary judgment should not be entered. 
Any request by the applicant for a hearing before the Board

[[Page 123]]

shall be made in the response. Additional evidence shall not be 
presented by the applicant or considered by the Board unless the 
applicant shows good cause why any additional evidence was not initially 
presented with the evidence filed under Sec. 1.608(b). At the time an 
applicant files a response, the applicant shall serve a copy of any 
evidence filed under Sec. 1.608(b) and this paragraph.
    (c) If a response is not timely filed by the applicant, the Board 
shall enter a final decision granting summary judgment against the 
applicant.
    (d) If a response is timely filed by the applicant, all opponents 
may file a statement and may oppose any preliminary motion filed under 
Sec. 1.633 (c), (f) or (g) by the applicant within a time set by the 
administrative patent judge. The statement may set forth views as to why 
summary judgment should be granted against the applicant, but the 
statement shall be limited to discussing why all the evidence presented 
by the applicant does not overcome the reasons given by the 
administrative patent judge for issuing the order to show cause. Except 
as required to oppose a motion under Sec. 1.633 (c), (f) or (g) by the 
applicant, evidence shall not be filed by any opponent. An opponent may 
not request a hearing.
    (e) Within a time authorized by the administrative patent judge, an 
applicant may file a reply to any statement or opposition filed by any 
opponent.
    (f) When more than two parties are involved in an interference, all 
parties may participate in summary judgment proceedings under this 
section.
    (g) If a response by the applicant is timely filed, the 
administrative patent judge or the Board shall decide whether the 
evidence submitted under Sec. 1.608(b) and any additional evidence 
properly submitted under paragraphs (b) and (e) of this section shows 
that the applicant is prima facie entitled to a judgment relative to the 
patentee. If the applicant is not prima facie entitled to a judgment 
relative to the patentee, the Board shall enter a final decision 
granting summary judgment against the applicant. Otherwise, an 
interlocutory order shall be entered authorizing the interference to 
proceed in the normal manner under the regulations of this subpart.
    (h) Only an applicant who filed evidence under Sec. 1.608(b) may 
request a hearing. If that applicant requests a hearing, the Board may 
hold a hearing prior to entry of a decision under paragraph (g) of this 
section. The administrative patent judge shall set a date and time for 
the hearing. Unless otherwise ordered by the administrative patent judge 
or the Board, the applicant and any opponent will each be entitled to no 
more than 30 minutes of oral argument at the hearing.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14522, Mar. 17, 1995]



Sec. 1.618  Return of unauthorized papers.

    (a) An administrative patent judge or the Board shall return to a 
party any paper presented by the party when the filing of the paper is 
not authorized by, or is not in compliance with the requirements of, 
this subpart. Any paper returned will not thereafter be considered in 
the interference. A party may be permitted to file a corrected paper 
under such conditions as may be deemed appropriate by an administrative 
patent judge or the Board.
    (b) When presenting a paper in an interference, a party shall not 
submit with the paper a copy of a paper previously filed in the 
interference.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14522, Mar. 17, 1995]



Sec. 1.621  Preliminary statement, time for filing, notice of filing.

    (a) Within the time set for filing preliminary motions under 
Sec. 1.633, each party may file a preliminary statement. The preliminary 
statement may be signed by any individual having knowledge of the facts 
recited therein or by an attorney or agent of record.
    (b) When a party files a preliminary statement, the party shall also 
simultaneously file and serve on all opponents in the interference a 
notice stating that a preliminary statement has been filed. A copy of 
the preliminary

[[Page 124]]

statement need not be served until ordered by the administrative patent 
judge.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14522, Mar. 17, 1995]



Sec. 1.622  Preliminary statement, who made invention, where invention made.

    (a) A party's preliminary statement must identify the inventor who 
made the invention defined by each count and must state on behalf of the 
inventor the facts required by paragraph (a) of Secs. 1.623, 1.624, and 
1.625 as may be appropriate. When an inventor identified in the 
preliminary statement is not an inventor named in the party's 
application or patent, the party shall file a motion under Sec. 1.634 to 
correct inventorship.
    (b) The preliminary statement shall state whether the invention was 
made in the United States, a NAFTA country (and, if so, which NAFTA 
country), a WTO member country (and, if so, which WTO member country), 
or in a place other than the United States, a NAFTA country, or a WTO 
member country. If made in a place other than the United States, a NAFTA 
country, or a WTO member country, the preliminary statement shall state 
whether the party is entitled to the benefit of 35 U.S.C. 104(a)(2).

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14522, Mar. 17, 1995]



Sec. 1.623  Preliminary statement; invention made in United States, a NAFTA country, or a WTO member country.

    (a) When the invention was made in the United States, a NAFTA 
country, or a WTO member country, or a party is entitled to the benefit 
of 35 U.S.C. 104(a)(2), the preliminary statement must state the 
following facts as to the invention defined by each count:
    (1) The date on which the first drawing of the invention was made.
    (2) The date on which the first written description of the invention 
was made.
    (3) The date on which the invention was first disclosed by the 
inventor to another person.
    (4) The date on which the invention was first conceived by the 
inventor.
    (5) The date on which the invention was first actually reduced to 
practice. If the invention was not actually reduced to practice by or on 
behalf of the inventor prior to the party's filing date, the preliminary 
statement shall so state.
    (6) The date after the inventor's conception of the invention when 
active exercise of reasonable diligence toward reducing the invention to 
practice began.
    (b) If a party intends to prove derivation, the preliminary 
statement must also comply with Sec. 1.625.
    (c) When a party alleges under paragraph (a)(1) of this section that 
a drawing was made, a copy of the first drawing shall be filed with and 
identified in the preliminary statement. When a party alleges under 
paragraph (a)(2) of this section that a written description of the 
invention was made, a copy of the first written description shall be 
filed with and identified in the preliminary statement. See 
Sec. 1.628(b) when a copy of the first drawing or written description 
cannot be filed with the preliminary statement.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14522, Mar. 17, 1995]



Sec. 1.624  Preliminary statement; invention made in a place other than the United States, a NAFTA country, or a WTO member country.

    (a) When the invention was made in a place other than the United 
States, a NAFTA country, or a WTO member country and a party intends to 
rely on introduction of the invention into the United States, a NAFTA 
country, or a WTO member country, the preliminary statement must state 
the following facts as to the invention defined by each count:
    (1) The date on which a drawing of the invention was first 
introduced into the United States, a NAFTA country, or a WTO member 
country.
    (2) The date on which a written description of the invention was 
first introduced into the United States, a NAFTA country, or a WTO 
member country.
    (3) The date on which the invention was first disclosed to another 
person in

[[Page 125]]

the United States, a NAFTA country, or a WTO member country.
    (4) The date on which the inventor's conception of the invention was 
first introduced into the United States, a NAFTA country, or a WTO 
member country.
    (5) The date on which an actual reduction to practice of the 
invention was first introduced into the United States, a NAFTA country, 
or a WTO member country. If an actual reduction to practice of the 
invention was not introduced into the United States, a NAFTA country, or 
a WTO member country, the preliminary amendment shall so state.
    (6) The date after introduction of the inventor's conception into 
the United States, a NAFTA country, or a WTO member country when active 
exercise of reasonable diligence in the United States, a NAFTA country, 
or a WTO member country toward reducing the invention to practice began.
    (b) If a party intends to prove derivation, the preliminary 
statement must also comply with Sec. 1.625.
    (c) When a party alleges under paragraph (a)(1) of this section that 
a drawing was introduced into the United States, a NAFTA country, or a 
WTO member country, a copy of that drawing shall be filed with and 
identified in the preliminary statement. When a party alleges under 
paragraph (a)(2) of this section that a written description of the 
invention was introduced into the United States, a NAFTA country, or a 
WTO member country, a copy of that written description shall be filed 
with and identified in the preliminary statement. See Sec. 1.628(b) when 
a copy of the first drawing or first written description introduced in 
the United States, a NAFTA country, or a WTO member country cannot be 
filed with the preliminary statement.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14523, Mar. 17, 1995]



Sec. 1.625  Preliminary statement; derivation by an opponent.

    (a) When a party intends to prove derivation by an opponent from the 
party, the preliminary statement must state the following as to the 
invention defined by each count:
    (1) The name of the opponent.
    (2) The date on which the first drawing of the invention was made.
    (3) The date on which the first written description of the invention 
was made.
    (4) The date on which the invention was first disclosed by the 
inventor to another person.
    (5) The date on which the invention was first conceived by the 
inventor.
    (6) The date on which the invention was first communicated to the 
opponent.
    (b) If a party intends to prove priority, the preliminary statement 
must also comply with Sec. 1.623 or Sec. 1.624.
    (c) When a party alleges under paragraph (a)(2) of this section that 
a drawing was made, a copy of the first drawing shall be filed with and 
identified in the preliminary statement. When a party alleges under 
paragraph (a)(3) of this section that a written description of the 
invention was made, a copy of the first written description shall be 
filed with and identified in the preliminary statement. See 
Sec. 1.628(b) when a first drawing or first written description cannot 
be filed with the preliminary statement.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14523, Mar. 17, 1995]



Sec. 1.626  Preliminary statement; earlier application.

    When a party does not intend to present evidence to prove a 
conception or an actual reduction to practice and the party intends to 
rely solely on the filing date of an earlier filed application to prove 
a constructive reduction to practice, the preliminary statement may so 
state and identify the earlier filed application with particularity.

[60 FR 14523, Mar. 17, 1995]



Sec. 1.627  Preliminary statement; sealing before filing, opening of statement.

    (a) The preliminary statement and copies of any drawing or written 
description shall be filed in a sealed envelope bearing only the name of 
the party filing the statement and the style (e.g., Jones v. Smith) and 
number

[[Page 126]]

of the interference. The sealed envelope should contain only the 
preliminary statement and copies of any drawing or written description. 
If the preliminary statement is filed through the mail, the sealed 
envelope should be enclosed in an outer envelope addressed to the 
Commission of Patents and Trademarks in accordance with Sec. 1.1(e).
    (b) A preliminary statement may be opened only at the direction of 
an administrative patent judge.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14523, Mar. 17, 1995]



Sec. 1.628  Preliminary statement; correction of error.

    (a) A material error arising through inadvertence or mistake in 
connection with a preliminary statement or drawings or a written 
description submitted therewith or omitted therefrom may be corrected by 
a motion (Sec. 1.635) for leave to file a corrected statement. The 
motion shall be supported by an affidavit stating the date the error was 
first discovered, shall be accompanied by the corrected statement and 
shall be filed as soon as practical after discovery of the error. If 
filed on or after the date set by the administrative patent judge for 
service of preliminary statements, the motion shall also show that 
correction of the error is essential to the interest of justice.
    (b) When a party cannot attach a copy of a drawing or written 
description to the party's preliminary statement as required by 
Sec. 1.623(c), Sec. 1.624(c) or Sec. 1.625(c), the party shall show good 
cause and explain in the preliminary statement why a copy of the drawing 
or written description cannot be attached to the preliminary statement 
and shall attach to the preliminary statement the earliest drawing or 
written description made in or introduced into the United States, a 
NAFTA country, or a WTO member country which is available. The party 
shall file a motion (Sec. 1.635) to amend its preliminary statement 
promptly after the first drawing, first written description, or drawing 
or written description first introduced into the United States, a NAFTA 
country, or a WTO member country becomes available. A copy of the 
drawing or written description may be obtained, where appropriate, by a 
motion (Sec. 1.635) for additional discovery under Sec. 1.687 or during 
a testimony period.

[60 FR 14523, Mar. 17, 1995]



Sec. 1.629  Effect of preliminary statement.

    (a) A party shall be strictly held to any date alleged in the 
preliminary statement. Doubts as to definiteness or sufficiency of any 
allegation in a preliminary statement or compliance with formal 
requirements will be resolved against the party filing the statement by 
restricting the party to its effective filing date or to the latest date 
of a period alleged in the preliminary statement, as may be appropriate. 
A party may not correct a preliminary statement except as provided by 
Sec. 1.628.
    (b) Evidence which shows that an act alleged in the preliminary 
statement occurred prior to the date alleged in the statement shall 
establish only that the act occurred as early as the date alleged in the 
statement.
    (c) If a party does not file a preliminary statement, the party:
    (1) Shall be restricted to the party's effective filing date and
    (2) Will not be permitted to prove that:
    (i) The party made the invention prior to the party's filing date or
    (ii) Any opponent derived the invention from the party.
    (d) If a party files a preliminary statement which contains an 
allegation of a date of first drawing or first written description and 
the party does not file a copy of the first drawing or written 
description with the preliminary statement as required by Sec. 1.623(c), 
Sec. 1.624(c), or Sec. 1.625(c), the party will be restricted to the 
party's effective filing date as to that allegation unless the party 
complies with Sec. 1.628(b). The content of any drawing or written 
description submitted with a preliminary statement will not normally be 
evaluated or considered by the Board.
    (e) A preliminary statement shall not be used as evidence on behalf 
of the party filing the statement.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14523, Mar. 17, 1995]

[[Page 127]]



Sec. 1.630  Reliance on earlier application.

    A party shall not be entitled to rely on the filing date of an 
earlier filed application unless the earlier application is identified 
(Sec. 1.611(c)(5)) in the notice declaring the interference or the party 
files a preliminary motion under Sec. 1.633 seeking the benefit of the 
filing date of the earlier application.

[60 FR 14524, Mar. 17, 1995]



Sec. 1.631  Access to preliminary statement, service of preliminary statement.

    (a) Unless otherwise ordered by an administrative patent judge, 
concurrently with entry of a decision on preliminary motions filed under 
Sec. 1.633 any preliminary statement filed under Sec. 1.621(a) shall be 
opened to inspection by the senior party and any junior party who filed 
a preliminary statement. Within a time set by the administrative patent 
judge, a party shall serve a copy of its preliminary statement on each 
opponent who served a notice under Sec. 1.621(b).
    (b) A junior party who does not file a preliminary statement shall 
not have access to the preliminary statement of any other party.
    (c) If an interference is terminated before the preliminary 
statements have been opened, the preliminary statements will remain 
sealed and will be returned to the respective parties who submitted the 
statements.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14524, Mar. 17, 1995]



Sec. 1.632  Notice of intent to argue abandonment, suppression or concealment by opponent.

    A notice shall be filed by a party who intends to argue that an 
opponent has abandoned, suppressed, or concealed an actual reduction to 
practice (35 U.S.C. 102(g)). A party will not be permitted to argue 
abandonment, suppression, or concealment by an opponent unless the 
notice is timely filed. Unless authorized otherwise by an administrative 
patent judge, a notice is timely when filed within ten (10) days after 
the close of the testimony-in-chief of the opponent.

[60 FR 14524, Mar. 17, 1995]



Sec. 1.633  Preliminary motions.

    A party may file the following preliminary motions:
    (a) A motion for judgment against an opponent's claim designated to 
correspond to a count on the ground that the claim is not patentable to 
the opponent. The motion shall separately address each claim alleged to 
be unpatentable. In deciding an issue raised in a motion filed under 
this paragraph (a), a claim will be construed in light of the 
specification of the application or patent in which it appears. A motion 
under this paragraph shall not be based on:
    (1) Priority of invention by the moving party as against any 
opponent or
    (2) Derivation of the invention by an opponent from the moving 
party. See Sec. 1.637(a).
    (b) A motion for judgment on the ground that there is no 
interference-in-fact. A motion under this paragraph is proper only if 
the interference involves a design application or patent or a plant 
application or patent or no claim of a party which corresponds to a 
count is identical to any claim of an opponent which corresponds to that 
count. See Sec. 1.637(a). When claims of different parties are presented 
in ``means plus function'' format, it may be possible for the claims of 
the different parties not to define the same patentable invention even 
though the claims contain the same literal wording.
    (c) A motion to redefine the interfering subject matter by (1) 
adding or substituting a count, (2) amending an application claim 
corresponding to a count or adding a claim in the moving party's 
application to be designated to correspond to a count, (3) designating 
an application or patent claim to correspond to a count, (4) designating 
an application or patent claim as not corresponding to a count, or (5) 
requiring an opponent who is an applicant to add a claim and to 
designate the claim to correspond to a count. See Sec. 1.637 (a) and 
(c).
    (d) A motion to substitute a different application owned by a party 
for an application involved in the interference. See Sec. 1.637 (a) and 
(d).
    (e) A motion to declare an additional interference (1) between an 
additional

[[Page 128]]

application not involved in the interference and owned by a party and an 
opponent's application or patent involved in the interference or (2) 
when an interference involves three or more parties, between less than 
all applications and any patent involved in the interference. See 
Sec. 1.637 (a) and (e).
    (f) A motion to be accorded the benefit of the filing date of an 
earlier filed application. See Sec. 1.637 (a) and (f).
    (g) A motion to attack the benefit accorded an opponent in the 
notice declaring the interference of the filing date of an earlier filed 
application. See Sec. 1.637 (a) and (g).
    (h) When a patent is involved in an interference and the patentee 
has on file or files an application for reissue under Sec. 1.171, a 
motion to add the application for reissue to the interference. See 
Sec. 1.637 (a) and (h).
    (i) When a motion is filed under paragraph (a), (b), or (g) of this 
section, an opponent, in addition to opposing the motion, may file a 
motion to redefine the interfering subject matter under paragraph (c) of 
this section, a motion to substitute a different application under 
paragraph (d) of this section, or a motion to add a reissue application 
to the interference under paragraph (h) of this section.
    (j) When a motion is filed under paragraph (c)(1) of this section an 
opponent, in addition to opposing the motion, may file a motion for 
benefit under paragraph (f) of this section as to the count to be added 
or substituted.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14524, Mar. 17, 1995]



Sec. 1.634  Motion to correct inventorship.

    A party may file a motion to (a) amend its application involved in 
an interference to correct inventorship as provided by Sec. 1.48 or (b) 
correct inventorship of its patent involved in an interference as 
provided in Sec. 1.324. See Sec. 1.637(a).



Sec. 1.635  Miscellaneous motions.

    A party seeking entry of an order relating to any matter other than 
a matter which may be raised under Sec. 1.633 or Sec. 1.634 may file a 
motion requesting entry of the order. See Sec. 1.637 (a) and (b).



Sec. 1.636  Motions, time for filing.

    (a) A preliminary motion under Sec. 1.633 (a) through (h) shall be 
filed within a time period set by an administrative patent judge.
    (b) A preliminary motion under Sec. 1.633 (i) or (j) shall be filed 
within 20 days of the service of the preliminary motion under Sec. 1.633 
(a), (b), (c)(1), or (g) unless otherwise ordered by an administrative 
patent judge.
    (c) A motion under Sec. 1.634 shall be diligently filed after an 
error is discovered in the inventorship of an application or patent 
involved in an interference unless otherwise ordered by an 
administrative patent judge.
    (d) A motion under Sec. 1.635 shall be filed as specified in this 
subpart or when appropriate unless otherwise ordered by an 
administrative patent judge.

[60 FR 14524, Mar. 17, 1995]



Sec. 1.637  Content of motions.

    (a) A party filing a motion has the burden of proof to show that it 
is entitled to the relief sought in the motion. Each motion shall 
include a statement of the precise relief requested, a statement of the 
material facts in support of the motion, in numbered paragraphs, and a 
full statement of the reasons why the relief requested should be 
granted. If a party files a motion for judgment under Sec. 1.633(a) 
against an opponent based on the ground of unpatentability over prior 
art, and the dates of the cited prior art are such that the prior art 
appears to be applicable to the party, it will be presumed, without 
regard to the dates alleged in the preliminary statement of the party, 
that the cited prior art is applicable to the party unless there is 
included with the motion an explanation, and evidence if appropriate, as 
to why the prior art does not apply to the party.
    (b) Unless otherwise ordered by an administrative patent judge or 
the Board, a motion under Sec. 1.635 shall contain a certificate by the 
moving party stating that the moving party has conferred with all 
opponents in an effort in good faith to resolve by agreement the issues 
raised by the motion. The certificate shall indicate whether any 
opponent plans to oppose the motion. The

[[Page 129]]

provisions of this paragraph do not apply to a motion to suppress 
evidence (Sec. 1.656(h)).
    (c) A preliminary motion under Sec. 1.633(c) shall explain why the 
interfering subject matter should be redefined.
    (1) A preliminary motion seeking to add or substitute a count shall:
    (i) Propose each count to be added or substituted.
    (ii) When the moving party is an applicant, show the patentability 
to the applicant of all claims in, or proposed to be added to, the 
party's application which correspond to each proposed count and apply 
the terms of the claims to the disclosure of the party's application; 
when necessary a moving party applicant shall file with the motion an 
amendment adding any proposed claim to the application.
    (iii) Identify all claims in an opponent's application which should 
be designated to correspond to each proposed count; if an opponent's 
application does not contain such a claim, the moving party shall 
propose a claim to be added to the opponent's application. The moving 
party shall show the patentability of any proposed claims to the 
opponent and apply the terms of the claims to the disclosure of the 
opponent's application.
    (iv) Designate the claims of any patent involved in the interference 
which define the same patentable invention as each proposed count.
    (v) Show that each proposed count defines a separate patentable 
invention from every other count proposed to remain in the interference.
    (vi) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of any earlier filed application, if benefit 
of the earlier filed application is desired with respect to a proposed 
count.
    (vii) If an opponent is accorded the benefit of the filing date of 
an earlier filed application in the notice of declaration of the 
interference, show why the opponent is not also entitled to benefit of 
the earlier filed application with respect to the proposed count. 
Otherwise, the opponent will be presumed to be entitled to the benefit 
of the earlier filed application with respect to the proposed count.
    (2) A preliminary motion seeking to amend an application claim 
corresponding to a count or adding a claim to be designated to 
correspond to a count shall:
    (i) Propose an amended or added claim.
    (ii) Show that the claim proposed to be amended or added defines the 
same patentable invention as the count.
    (iii) Show the patentability to the applicant of each claim proposed 
to be amended or added and apply the terms of the claim proposed to be 
amended or added to the disclosure of the application; when necessary a 
moving party applicant shall file with the motion a proposed amendment 
to the application amending the claim corresponding to the count or 
adding the proposed additional claim to the application.
    (3) A preliminary motion seeking to designate an application or 
patent claim to correspond to a count shall:
    (i) Identify the claim and the count.
    (ii) Show the claim defines the same patentable invention as another 
claim whose designation as corresponding to the count the moving party 
does not dispute.
    (4) A preliminary motion seeking to designate an application or 
patent claim as not corresponding to a count shall:
    (i) Identify the claim and the count.
    (ii) Show that the claim does not defined the same patentable 
invention as any other claim whose designation in the notice declaring 
the interference as corresponding to the count the party does not 
dispute.
    (5) A preliminary motion seeking to require an opponent who is an 
applicant to add a claim and designate the claim as corresponding to a 
count shall:
    (i) Propose a claim to be added by the opponent.
    (ii) Show the patentability to the opponent of the claim and apply 
the terms of the claim to the disclosure of the opponent's application.
    (iii) Identify the count to which the claim shall be designated to 
correspond.
    (iv) Show the claim defines the same patentable invention as the 
count to which it will be designated to correspond.

[[Page 130]]

    (d) A preliminary motion under Sec. 1.633(d) to substitute a 
different application of the moving party shall:
    (1) Identify the different application.
    (2) Certify that a complete copy of the file of the different 
application, except for documents filed under Sec. 1.131 or Sec. 1.608, 
has been served on all opponents.
    (3) Show the patentability to the applicant of all claims in, or 
proposed to be added to, the different application which correspond to 
each count and apply the terms of the claims to the disclosure of the 
different application; when necessary the applicant shall file with the 
motion an amendment adding a claim to the different application.
    (e) A preliminary motion to declare an additional interference under 
Sec. 1.633(e) shall explain why an additional interference is necessary.
    (1) When the preliminary motion seeks an additional interference 
under Sec. 1.633(e)(1), the motion shall:
    (i) Identify the additional application.
    (ii) Certify that a complete copy of the file of the additional 
application, except for documents filed under Sec. 1.131 or Sec. 1.608, 
has been served on all opponents.
    (iii) Propose a count for the additional interference.
    (iv) Show the patentability to the applicant of all claims in, or 
proposed to be added to, the additional application which correspond to 
each proposed count for the additional interference and apply the terms 
of the claims to the disclosure of the additional application; when 
necessary the applicant shall file with the motion an amendment adding 
any claim to the additional application.
    (v) When the opponent is an applicant, show the patentability to the 
opponent of any claims in, or proposed to be added to, the opponent's 
application which correspond to the proposed count and apply the terms 
of the claims to the disclosure of the opponent's application.
    (vi) Identify all claims in the opponent's application or patent 
which should be designated to correspond to each proposed count; if the 
opponent's application does not contain any such claim, the motion shall 
propose a claim to be added to the opponent's application.
    (vii) Show that each proposed count for the additional interference 
defines a separate patentable invention from all counts of the 
interference in which the motion is filed.
    (viii) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of an earlier filed application, if benefit 
is desired with respect to a proposed count.
    (ix) If an opponent is accorded the benefit of the filing date of an 
earlier filed application in the notice of declaration of the 
interference, show why the opponent is not also entitled to benefit of 
the earlier filed application with respect to the proposed count. 
Otherwise, the opponent will be presumed to be entitled to the benefit 
of the earlier filed application with respect to the proposed count.
    (2) When the preliminary motion seeks an additional interference 
under Sec. 1.633(e)(2), the motion shall:
    (i) Identify any application or patent to be involved in the 
additional interference.
    (ii) Propose a count for the additional interference.
    (iii) When the moving party is an applicant, show the patentability 
to the applicant of all claims in, or proposed to be added to, the 
party's application which correspond to each proposed count and apply 
the terms of the claims to the disclosure of the party's application; 
when necessary a moving party applicant shall file with the motion an 
amendment adding any proposed claim to the application.
    (iv) Identify all claims in any opponent's application which should 
be designated to correspond to each proposed count; if an opponent's 
application does not contain such a claim, the moving party shall 
propose a claim to be added to the opponent's application. The moving 
party shall show the patentability of any proposed claim to the opponent 
and apply the terms of the claim to the disclosure of the opponent's 
application.
    (v) Designate the claims of any patent involved in the interference 
which define the same patentable invention as each proposed count.

[[Page 131]]

    (vi) Show that each proposed count for the additional interference 
defines a separate patentable invention from all counts in the 
interference in which the motion is filed.
    (vii) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of an earlier filed application, if benefit 
is desired with respect to a proposed count.
    (viii) If an opponent is accorded the benefit of the filing date of 
an earlier filed application in the notice of declaration of the 
interference, show why the opponent is not also entitled to benefit of 
the earlier filed application with respect to the proposed count. 
Otherwise, the opponent will be presumed to be entitled to the benefit 
of the earlier filed application with respect to the proposed count.
    (f) A preliminary motion for benefit under Sec. 1.633(f) shall:
    (1) Identify the earlier application.
    (2) When an earlier application is an application filed in the 
United States, certify that a complete copy of the file of the earlier 
application, except for documents filed under Sec. 1.131 or Sec. 1.608, 
has been served on all opponents. When the earlier application is an 
application filed in a foreign country, certify that a copy of the 
application has been served on all opponents. If the earlier filed 
application is not in English, the requirements of Sec. 1.647 must also 
be met.
    (3) Show that the earlier application constitutes a constructive 
reduction to practice of each count.
    (g) A preliminary motion to attack benefit under Sec. 1.633(g) shall 
explain, as to each count, why an opponent should not be accorded the 
benefit of the filing date of the earlier application.
    (h) A preliminary motion to add an application for reissue under 
Sec. 1.633(h) shall:
    (1) Identify the application for reissue.
    (2) Certify that a complete copy of the file of the application for 
reissue has been served on all opponents.
    (3) Show the patentability of all claims in, or proposed to be added 
to, the application for reissue which correspond to each count and apply 
the terms of the claims to the disclosure of the application for 
reissue; when necessary a moving applicant for reissue shall file with 
the motion an amendment adding any proposed claim to the application for 
reissue.
    (4) Be accompanied by a motion under Sec. 1.633(f) requesting the 
benefit of the filing date of any earlier filed application, if benefit 
is desired.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 53 
FR 23735, June 23, 1988; 58 FR 49434, Sept. 23, 1993; 60 FR 14524, Mar. 
17, 1995]



Sec. 1.638  Opposition and reply; time for filing opposition and reply.

    (a) Unless otherwise ordered by an administrative patent judge, any 
opposition to any motion shall be filed within 20 days after service of 
the motion. An opposition shall identify any material fact set forth in 
the motion which is in dispute and include an argument why the relief 
requested in the motion should be denied.
    (b) Unless otherwise ordered by an administrative patent judge, any 
reply shall be filed within 15 days after service of the opposition. A 
reply shall be directed only to new points raised in the opposition.

[60 FR 14525, Mar. 17, 1995]



Sec. 1.639  Evidence in support of motion, opposition, or reply.

    (a) Except as provided in paragraphs (c) through (g) of this 
section, proof of any material fact alleged in a motion, opposition, or 
reply must be filed and served with the motion, opposition, or reply 
unless the proof relied upon is part of the interference file or the 
file of any patent or application involved in the interference or any 
earlier application filed in the United States of which a party has been 
accorded or seeks to be accorded benefit.
    (b) Proof may be in the form of patents, printed publications, and 
affidavits. The pages of any affidavits filed under this paragraph 
shall, to the extent possible, be given sequential numbers, which shall 
also serve as the record page numbers for the affidavits in the event 
they are included in the party's record (Sec. 1.653). Any patents and 
printed publications submitted under this paragraph and any exhibits 
identified in affidavits submitted under this paragraph shall, to the 
extent possible,

[[Page 132]]

be given sequential exhibit numbers, which shall also serve as the 
exhibit numbers in the event the patents, printed publications and 
exhibits are filed with the party's record (Sec. 1.653).
    (c) If a party believes that additional evidence in the form of 
testimony that is unavailable to the party is necessary to support or 
oppose a preliminary motion under Sec. 1.633 or a motion to correct 
inventorship under Sec. 1,634, the party shall describe the nature of 
any proposed testimony as specified in paragraphs (d) through (g) of 
this section. If the administrative patent judge finds that testimony is 
needed to decide the motion, the administrative patent judge may grant 
appropriate interlocutory relief and enter an order authorizing the 
taking of testimony and deferring a decision on the motion to final 
hearing.
    (d) When additional evidence in the form of expert-witness testimony 
is needed in support of or opposition to a preliminary motion, the 
moving party or opponent should:
    (1) Identify the person whom it expects to use as an expert;
    (2) State the field in which the person is alleged to be an expert; 
and
    (3) State:
    (i) The subject matter on which the person is expected to testify;
    (ii) The facts and opinions to which the person is expected to 
testify; and
    (iii) A summary of the grounds and basis for each opinion.
    (e) When additional evidence in the form of fact-witness testimony 
is necessary, state the facts to which the witness is expected to 
testify.
    (f) If the opponent is to be called, or if evidence in the 
possession of the opponent is necessary, explain the evidence sought, 
what it will show, and why it is needed.
    (g) When inter partes tests are to be performed, describe the tests 
stating what they will be expected to show.

[49 FR 48455, Dec. 12, 1984, as amended at 58 FR 49434, Sept. 23, 1993; 
60 FR 14525, Mar. 17, 1995]



Sec. 1.640  Motions, hearing and decision, redeclaration of interference, order to show cause.

    (a) A hearing on a motion may be held in the discretion of the 
administrative patent judge. The administrative patent judge shall set 
the date and time for any hearing. The length of oral argument at a 
hearing on a motion is a matter within the discretion of the 
administrative patent judge. An administrative patent judge may direct 
that a hearing take place by telephone.
    (b) Unless an administrative patent judge or the Board is of the 
opinion that an earlier decision on a preliminary motion would 
materially advance the resolution of the interference, decision on a 
preliminary motion shall be deferred to final hearing. Motions not 
deferred to final hearing will be decided by an administrative patent 
judge. An administrative patent judge may consult with an examiner in 
deciding motions. An administrative patent judge may take up motions for 
decisions in any order, may grant, deny, or dismiss any motion, and may 
take such other action which will secure the just, speedy, and 
inexpensive determination of the interference. A matter raised by a 
party in support of or in opposition to a motion that is deferred to 
final hearing will not be entitled to consideration at final hearing 
unless the matter is raised in the party's brief at final hearing. If 
the administrative patent judge determines that the interference shall 
proceed to final hearing on the issue of priority or derivation, a time 
shall be set for each party to file a paper identifying any decisions on 
motions or on matters raised sua sponte by the administrative patent 
judge that the party wishes to have reviewed at final hearing as well as 
identifying any deferred motions that the party wishes to have 
considered at final hearing. Any evidence that a party wishes to have 
considered with respect to the decisions and deferred motions identified 
by the party or by an opponent for consideration or review at final 
hearing shall be filed or, if appropriate, noticed under Sec. 1.671(e) 
during the testimony-in-chief period of the party.
    (1) When appropriate after the time expires for filing replies to 
oppositions to preliminary motions, the administrative patent judge will 
set a time for filing any amendment to an application involved in the 
interference and for filing a supplemental preliminary statement as to 
any new counts which

[[Page 133]]

may become involved in the interference if a preliminary motion to amend 
or substitute a count has been filed. Failure or refusal of a party to 
timely present an amendment required by an administrative patent judge 
shall be taken without further action as a disclaimer by that party of 
the invention involved. A supplemental preliminary statement shall meet 
the requirements specified in Sec. 1.623, 1.624, 1.625, or 1.626, but 
need not be filed if a party states that it intends to rely on a 
preliminary statement previously filed under Sec. 1.621(a). At an 
appropriate time in the interference, and when necessary, an order will 
be entered redeclaring the interference.
    (2) After the time expires for filing preliminary motions, a further 
preliminary motion under Sec. 1.633 will not be considered except as 
provided by Sec. 1.645(b).
    (c) When a decision on any motion under Sec. 1.633, 1.634, or 1.635 
or on any matter raised sua sponte by an administrative patent judge is 
entered which does not result in the issuance of an order to show cause 
under paragraph (d) of this section, a party may file a request for 
reconsideration within 14 days after the date of the decision. The 
request for reconsideration shall be filed and served by hand or Express 
Mail. The filing of a request for reconsideration will not stay any time 
period set by the decision. The request for reconsideration shall 
specify with particularity the points believed to have been 
misapprehended or overlooked in rendering the decision. No opposition to 
a request for reconsideration shall be filed unless requested by an 
administrative patent judge or the Board. A decision ordinarily will not 
be modified unless an opposition has been requested by an administrative 
patent judge or the Board. The request for reconsideration normally will 
be acted on by the administrative patent judge or the panel of the Board 
which issued the decision.
    (d) An administrative patent judge may issue an order to show cause 
why judgment should not be entered against a party when:
    (1) A decision on a motion or on a matter raised sua sponte by an 
administrative patent judge is entered which is dispositive of the 
interference against the party as to any count;
    (2) The party is a junior party who fails to file a preliminary 
statement; or
    (3) The party is a junior party whose preliminary statement fails to 
overcome the effective filing date of another party.
    (e) When an order to show cause is issued under paragraph (d) of 
this section, the Board shall enter judgment in accordance with the 
order unless, within 20 days after the date of the order, the party 
against whom the order issued files a paper which shows good cause why 
judgment should not be entered in accordance with the order.
    (1) If the order was issued under paragraph (d)(1) of this section, 
the paper may:
    (i) Request that final hearing be set to review any decision which 
is the basis for the order as well as any other decision of the 
administrative patent judge that the party wishes to have reviewed by 
the Board at final hearing or
    (ii) Fully explain why judgment should not be entered.
    (2) Any opponent may file a response to the paper within 20 days of 
the date of service of the paper. If the order was issued under 
paragraph (d)(1) of this section and the party's paper includes a 
request for final hearing, the opponent's response must identify every 
decision of the administrative patent judge that the opponent wishes to 
have reviewed by the Board at a final hearing. If the order was issued 
under paragraph (d)(1) of this section and the paper does not include a 
request for final hearing, the opponent's response may include a request 
for final hearing, which must identify every decision of the 
administrative patent judge that the opponent wishes to have reviewed by 
the Board at a final hearing. Where only the opponent's response 
includes a request for a final hearing, the party filing the paper 
shall, within 14 days from the date of service of the opponent's 
response, file a reply identifying any other decision of the 
administrative patent judge that the party wishes to have reviewed by 
the Board at a final hearing.
    (3) The paper or the response should be accompanied by a motion 
(Sec. 1.635) requesting a testimony period if either

[[Page 134]]

party wishes to introduce any evidence to be considered at final hearing 
(Sec. 1.671). Any evidence that a party wishes to have considered with 
respect to the decisions and deferred motions identified for 
consideration or review at final hearing shall be filed or, if 
appropriate, noticed under Sec. 1.671(e) during the testimony period of 
the party. A request for a testimony period shall be construed as 
including a request for final hearing.
    (4) If the paper contains an explanation of why judgment should not 
be entered in accordance with the order, and if no party has requested a 
final hearing, the decision that is the basis for the order shall be 
reviewed based on the contents of the paper and the response. If the 
paper fails to show good cause, the Board shall enter judgment against 
the party against whom the order issued.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14525, Mar. 17, 1995]



Sec. 1.641  Unpatentability discovered by administrative patent judge.

    (a) During the pendency of an interference, if the administrative 
patent judge becomes aware of a reason why a claim designated to 
correspond to a count may not be patentable, the administrative patent 
judge may enter an order notifying the parties of the reason and set a 
time within which each party may present its views, including any 
argument and any supporting evidence, and, in the case of the party 
whose claim may be unpatentable, any appropriate preliminary motions 
under Secs. 1.633 (c), (d) and (h).
    (b) If a party timely files a preliminary motion in response to the 
order of the administrative patent judge, any opponent may file an 
opposition (Sec. 1.638(a)). If an opponent files an opposition, the 
party may reply (Sec. 1.638(b)).
    (c) After considering any timely filed views, including any timely 
filed preliminary motions under Sec. 1.633, oppositions and replies, the 
administrative patent judge shall decide how the interference shall 
proceed.

[60 FR 14526, Mar. 17, 1995]



Sec. 1.642  Addition of application or patent to interference.

    During the pendency of an interference, if the administrative patent 
judge becomes aware of an application or a patent not involved in the 
interference which claims the same patentable invention as a count in 
the interference, the administrative patent judge may add the 
application or patent to the interference on such terms as may be fair 
to all parties.

[60 FR 14526, Mar. 17, 1995]



Sec. 1.643  Prosecution of interference by assignee.

    (a) An assignee of record in the Patent and Trademark Office of the 
entire interest in an application or patent involved in an interference 
is entitled to conduct prosecution of the interference to the exclusion 
of the inventor.
    (b) An assignee of a part interest in an application or patent 
involved in an interference may file a motion (Sec. 1.635) for entry of 
an order authorizing it to prosecute the interference. The motion shall 
show the inability or refusal of the inventor to prosecute the 
interference or other cause why it is in the interest of justice to 
permit the assignee of a part interest to prosecute the interference. 
The administrative patent judge may allow the assignee of a part 
interest to prosecute the interference upon such terms as may be 
appropriate.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14527, Mar. 17, 1995]



Sec. 1.644  Petitions in interferences.

    (a) There is no appeal to the Commissioner in an interference from a 
decision of an administrative patent judge or the Board. The 
Commissioner will not consider a petition in an interference unless:
    (1) The petition is from a decision of an administrative patent 
judge or the Board and the administrative patent judge or the Board 
shall be of the opinion that the decision involves a controlling 
question of procedure or an interpretation of a rule as to which there 
is a substantial ground for a difference of opinion and that an 
immediate decision on petition by the Commissioner

[[Page 135]]

may materially advance the ultimate termination of the interference;
    (2) The petition seeks to invoke the supervisory authority of the 
Commissioner and does not relate to the merits of priority of invention 
or patentability or the admissibility of evidence under the Federal 
Rules of Evidence; or
    (3) The petition seeks relief under Sec. 1.183.
    (b) A petition under paragraph (a)(1) of this section filed more 
than 15 days after the date of the decision of the administrative patent 
judge or the Board may be dismissed as untimely. A petition under 
paragraph (a)(2) of this section shall not be filed prior to the party's 
brief for final hearing (see Sec. 1.656). Any petition under paragraph 
(a)(3) of this section shall be timely if it is filed simultaneously 
with a proper motion under Sec. 1.633, 1.634, or 1.635 when granting the 
motion would require waiver of a rule. Any opposition to a petition 
under paragraph (a)(1) or (a)(2) of this section shall be filed within 
20 days of the date of service of the petition. Any opposition to a 
petition under paragraph (a)(3) of this section shall be filed within 20 
days of the date of service of the petition or the date an opposition to 
the motion is due, whichever is earlier.
    (c) The filing of a petition shall not stay the proceeding unless a 
stay is granted in the discretion of the administrative patent judge, 
the Board, or the Commissioner.
    (d) Any petition must contain a statement of the facts involved, in 
numbered paragraphs, and the point or points to be reviewed and the 
action requested. The petition will be decided on the basis of the 
record made before the administrative patent judge or the Board, and no 
new evidence will be considered by the Commissioner in deciding the 
petition. Copies of documents already of record in the interference 
shall not be submitted with the petition or opposition.
    (e) Any petition under paragraph (a) of this section shall be 
accompanied by the petition fee set forth in Sec. 1.17(h).
    (f) Any request for reconsideration of a decision by the 
Commissioner shall be filed within 14 days of the decision of the 
Commissioner and must be accompanied by the fee set forth in 
Sec. 1.17(h). No opposition to a request for reconsideration shall be 
filed unless requested by the Commissioner. The decision will not 
ordinarily be modified unless such an opposition has been requested by 
the Commissioner.
    (g) Where reasonably possible, service of any petition, opposition, 
or request for reconsideration shall be such that delivery is 
accomplished within one working day. Service by hand or Express Mail 
complies with this paragraph.
    (h) An oral hearing on the petition will not be granted except when 
considered necessary by the Commissioner.
    (i) The Commissioner may delegate to appropriate Patent and 
Trademark Office employees the determination of petitions under this 
section.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14527, Mar. 17, 1995]



Sec. 1.645  Extension of time, late papers, stay of proceedings.

    (a) Except to extend the time for filing a notice of appeal to the 
U.S. Court of Appeals for the Federal Circuit or for commencing a civil 
action, a party may file a motion (Sec. 1.635) seeking an extension of 
time to take action in an interference. See Sec. 1.304(a) for extensions 
of time for filing a notice of appeal to the U.S. Court of Appeals for 
the Federal Circuit or for commencing a civil action. The motion shall 
be filed within sufficient time to actually reach the administrative 
patent judge before expiration of the time for taking action. A moving 
party should not assume that the motion will be granted even if there is 
no objection by any other party. The motion will be denied unless the 
moving party shows good cause why an extension should be granted. The 
press of other business arising after an administrative patent judge 
sets a time for taking action will not normally constitute good cause. A 
motion seeking additional time to take testimony because a party has not 
been able to procure the testimony of a witness shall set forth the name 
of the witness, any steps taken to procure the testimony of the witness, 
the dates on which the steps were taken, and the facts expected to be 
proved through the witness.

[[Page 136]]

    (b) Any paper belatedly filed will not be considered except upon 
notion (Sec. 1.635) which shows good cause why the paper was not timely 
filed, or where an administrative patent judge or the Board, sua sponte, 
is of the opinion that it would be in the interest of justice to 
consider the paper. See Sec. 1.304(a) for exclusive procedures relating 
to belated filing of a notice of appeal to the U.S. Court of Appeals for 
the Federal Circuit or belated commencement of a civil action.
    (c) The provisions of Sec. 1.136 do not apply to time periods in 
interferences.
    (d) An administrative patent judge may stay proceedings in an 
interference.

[49 FR 48455, Dec. 12, 1984, as amended at 54 FR 29553, July 13, 1989; 
60 FR 14527, Mar. 17, 1995]



Sec. 1.646  Service of papers, proof of service.

    (a) A copy of every paper filed in the Patent and Trademark Office 
in an interference or an application or patent involved in the 
interference shall be served upon all other parties except:
    (1) Preliminary statements when filed under Sec. 1.621; preliminary 
statements shall be served when service is ordered by an administrative 
patent judge.
    (2) Certified transcripts and exhibits which accompany the 
transcripts filed under Sec. 1.676; copies of transcripts shall be 
served as part of a party's record under Sec. 1.653(c).
    (b) Service shall be on an attorney or agent for a party. If there 
is no attorney or agent for the party, service shall be on the party. An 
administrative patent judge may order additional service or waive 
service where appropriate.
    (c) Unless otherwise ordered by an administrative patent judge, or 
except as otherwise provided by this subpart, service of a paper shall 
be made as follows:
    (1) By handing a copy of the paper or causing a copy of the paper to 
be handed to the person served.
    (2) By leaving a copy of the paper with someone employed by the 
person at the person's usual place of business.
    (3) When the person served has no usual place of business, by 
leaving a copy of the paper at the person's residence with someone of 
suitable age and discretion then residing therein.
    (4) By mailing a copy of the paper by first class mail; when service 
is by first class mail the date of mailing is regarded as the date of 
service.
    (5) By mailing a copy of the paper by Express Mail; when service is 
by Express Mail the date of deposit with the U.S. Postal Service is 
regarded as the date of service.
    (6) When it is shown to the satisfaction of an administrative patent 
judge that none of the above methods of obtaining or serving the copy of 
the paper was successful, the administrative patent judge may order 
service by publication of an appropriate notice in the Official Gazette.
    (d) An administrative patent judge may order that a paper be served 
by hand or Express Mail.
    (e) The due date for serving a paper is the same as the due date for 
filing the paper in the Patent and Trademark Office. Proof of service 
must be made before a paper will be considered in an interference. Proof 
of service may appear on or be affixed to the paper. Proof of service 
shall include the date and manner of service. In the case of personal 
service under paragraphs (c)(1) through (c)(3) of this section, proof of 
service shall include the names of any person served and the person who 
made the service. Proof of service may be made by an acknowledgment of 
service by or on behalf of the person served or a statement signed by 
the party or the party's attorney or agent containing the information 
required by this section. A statement of an attorney or agent attached 
to, or appearing in, the paper stating the date and manner of service 
will be accepted as prima facie proof of service.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14527, Mar. 17, 1995]



Sec. 1.647  Translation of document in foreign language.

    When a party relies on a document or is required to produce a 
document in a language other than English, a translation of the document 
into English

[[Page 137]]

and an affidavit attesting to the accuracy of the translation shall be 
filed with the document.

[60 FR 14528, Mar. 17, 1995]



Sec. 1.651  Setting times for discovery and taking testimony, parties entitled to take testimony.

    (a) At an appropriate stage in an interference, an administrative 
patent judge shall set a time for filing motions (Sec. 1.635) for 
additional discovery under Sec. 1.687(c) and testimony periods for 
taking any necessary testimony.
    (b) Where appropriate, testimony periods will be set to permit a 
party to:
    (1) Present its case-in-chief and/or case-in-rebuttal and/or
    (2) Cross-examine an opponent's case-in-chief and/or a case-in-
rebuttal.
    (c) A party is not entitled to take testimony to present a case-in-
chief unless:
    (1) The administrative patent judge orders the taking of testimony 
under Sec. 1.639(c);
    (2) The party alleges in its preliminary statement a date of 
invention prior to the effective filing date of the senior party;
    (3) A testimony period has been set to permit an opponent to prove a 
date of invention prior to the effective filing date of the party and 
the party has filed a preliminary statement alleging a date of invention 
prior to that date; or
    (4) A motion (Sec. 1.635) is filed showing good cause why a 
testimony period should be set.
    (d) Testimony, including any testimony to be taken in a place 
outside the United States, shall be taken and completed during the 
testimony periods set under paragraph (a) of this section. A party 
seeking to extend the period for taking testimony must comply with 
Secs. 1.635 and 1.645(a).

[56 FR 42529, Aug. 28, 1991; 56 FR 46823, Sept. 16, 1991, as amended at 
60 FR 14528, Mar. 17, 1995]



Sec. 1.652  Judgment for failure to take testimony or file record.

    If a junior party fails to timely take testimony authorized under 
Sec. 1.651, or file a record under Sec. 1.653(c), an administrative 
patent judge, with or without a motion (Sec. 1.635) by another party, 
may issue an order to show cause why judgment should not be entered 
against the junior party. When an order is issued under this section, 
the Board shall enter judgment in accordance with the order unless, 
within 15 days after the date of the order, the junior party files a 
paper which shows good cause why judgment should not be entered in 
accordance with the order. Any other party may file a response to the 
paper within 15 days of the date of service of the paper. If the party 
against whom the order was issued fails to show good cause, the Board 
shall enter judgment against the party.

[60 FR 14528, Mar. 17, 1995]



Sec. 1.653  Record and exhibits.

    (a) Testimony shall consist of affidavits under Secs. 1.672 (b), (c) 
and (g), 1.682(c), 1.683(b) and 1.688(b), transcripts of depositions 
under Secs. 1.671(g) and 1.672(a) when a deposition is authorized by an 
administrative patent judge, transcripts of depositions under 
Secs. 1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed statements under 
Sec. 1.672(h), transcripts of interrogatories, cross-interrogatories, 
and recorded answers and copies of written interrogatories and answers 
and written requests for admissions and answers under Sec. 1.688(a).
    (b) An affidavit shall be filed as set forth in Sec. 1.677. A 
certified transcript of a deposition, including a deposition cross-
examining an affiant, shall be filed as set forth in Secs. 1.676, 1.677 
and 1.678. An original agreed statement shall be filed as set forth in 
Sec. 1.672(h).
    (c) In addition to the items specified in paragraph (b) of this 
section and within a time set by an administrative patent judge, each 
party shall file three copies and serve one copy of a record consisting 
of:
    (1) An index of the names of the witnesses for the party, giving the 
pages of the record where the direct testimony and cross-examination of 
each witness begins.
    (2) An index of exhibits briefly describing the nature of each 
exhibit and giving the page of the record where each exhibit is first 
identified and offered into evidence.
    (3) The count or counts.
    (4) Each affidavit by a witness for the party, transcript, including 
transcripts

[[Page 138]]

of cross-examination of any affiant who testified for the party and 
transcripts of compelled deposition testimony by a witness for the 
party, agreed statement relied upon by the party, and transcript of 
interrogatories, cross-interrogatories and recorded answers.
    (5) [Reserved]
    (6) Any evidence from another interference, proceeding, or action 
relied upon by the party under Sec. 1.683.
    (7) Each request for an admission and the admission and each written 
interrogatory and the answer upon which a party intends to rely under 
Sec. 1.688.
    (d) The pages of the record shall be consecutively numbered to the 
extent possible.
    (e) The name of each witness shall appear at the top of each page of 
each affidavit or transcript.
    (f) [Reserved]
    (g) The record may be produced by standard typographical printing or 
by any other process capable of producing a clear black permanent image. 
All printed matter except on covers must appear in at least 11 point 
type on opaque, unglazed paper. Footnotes may not be printed in type 
smaller than 9 point. The page size shall be 21.8 by 27.9 cm. (8\1/2\ by 
11 inches) (letter size) with printed matter 16.5 by 24.1 cm. (6\1/2\ by 
9\1/2\ inches). The record shall be bound with covers at their left 
edges in such manner as to lie flat when open to any page and in one or 
more volumes of convenient size (approximately 100 pages per volume is 
suggested). When there is more than one volume, the numbers of the pages 
contained in each volume shall appear at the top of the cover for each 
volume.
    (h) [Reserved]
    (i) Each party shall file its exhibits with the record specified in 
paragraph (c) of this section. Exhibits include documents and things 
identified in affidavits or on the record during the taking of oral 
depositions as well as official records and publications filed by the 
party under Sec. 1.682(a). One copy of each documentary exhibit shall be 
served. Documentary exhibits shall be filed in an envelope or folder and 
shall not be bound as part of the record. Physical exhibits, if not 
filed by an officer under Sec. 1.676(d), shall be filed with the record. 
Each exhibit shall contain a label which identifies the party submitting 
the exhibit and an exhibit number, the style of the interference (e.g., 
Jones v. Smith), and the interference number. Where possible, the label 
should appear at the bottom right-hand corner of each documentary 
exhibit. Upon termination of an interference, an administrative patent 
judge may return an exhibit to the party filing the exhibit. When any 
exhibit is returned, an order shall be entered indicating that the 
exhibit has been returned.
    (j) Any testimony, record, or exhibit which does not comply with 
this section may be returned under Sec. 1.618(a).

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14528, Mar. 17, 1995]



Sec. 1.654  Final hearing.

    (a) At an appropriate stage of the interference, the parties will be 
given an opportunity to appear before the Board to present oral argument 
at a final hearing. An administrative patent judge may set a date and 
time for final hearing. Unless otherwise ordered by an administrative 
patent judge or the Board, each party will be entitled to no more than 
30 minutes of oral argument at final hearing. A party who does not file 
a brief for final hearing (Sec. 1.656(a)) shall not be entitled to 
appear at final hearing.
    (b) The opening argument of a junior party shall include a fair 
statement of the junior party's case and the junior party's position 
with respect to the case presented on behalf of any other party. A 
junior party may reserve a portion of its time for rebuttal.
    (c) A party shall not be entitled to argue that an opponent 
abandoned, suppressed, or concealed an actual reduction to practice 
unless a notice under Sec. 1.632 was timely filed.
    (d) After final hearing, the interference shall be taken under 
advisement by the Board. No further paper shall be filed except under 
Sec. 1.658(b) or as authorized by an administrative patent judge or the 
Board. No additional oral argument shall be had unless ordered by the 
Board.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14529, Mar. 17, 1995]

[[Page 139]]



Sec. 1.655  Matters considered in rendering a final decision.

    (a) In rendering a final decision, the Board may consider any 
properly raised issue, including priority of invention, derivation by an 
opponent from a party who filed a preliminary statement under 
Sec. 1.625, patentability of the invention, admissibility of evidence, 
any interlocutory matter deferred to final hearing, and any other matter 
necessary to resolve the interference. The Board may also consider 
whether an interlocutory order should be modified. The burden of showing 
that an interlocutory order should be modified shall be on the party 
attacking the order. The abuse of discretion standard shall apply only 
to procedural matters.
    (b) A party shall not be entitled to raise for consideration at 
final hearing any matter which properly could have been raised by a 
motion under Sec. 1.633 or 1.634 unless the matter was properly raised 
in a motion that was timely filed by the party under Sec. 1.633 or 1.634 
and the motion was denied or deferred to final hearing, the matter was 
properly raised by the party in a timely filed opposition to a motion 
under Sec. 1.633 or 1.634 and the motion was granted over the opposition 
or deferred to final hearing, or the party shows good cause why the 
issue was not properly raised by a timely filed motion or opposition. A 
party that fails to contest, by way of a timely filed preliminary motion 
under Sec. 1.633(c), the designation of a claim as corresponding to a 
count, or fails to timely argue the separate patentability of a 
particular claim when the ground for unpatentability is first raised, 
may not subsequently argue to an administrative patent judge or the 
Board the separate patentability of claims designated to correspond to 
the count with respect to that ground.
    (c) In the interest of justice, the Board may exercise its 
discretion to consider an issue even though it would not otherwise be 
entitled to consideration under this section.

[60 FR 14529, Mar. 17, 1995, as amended at 64 FR 12901, Mar. 16, 1999]



Sec. 1.656  Briefs for final hearing.

    (a) Each party shall be entitled to file briefs for final hearing. 
The administrative patent judge shall determine the briefs needed and 
shall set the time and order for filing briefs.
    (b) The opening brief of a junior party shall contain under 
appropriate headings and in the order indicated:
    (1) A statement of interest indicating the full name of every party 
represented by the attorney in the interference and the name of the real 
party in interest if the party named in the caption is not the real 
party in interest.
    (2) A statement of related cases indicating whether the interference 
was previously before the Board for final hearing and the name and 
number of any related appeal or interference which is pending before, or 
which has been decided by, the Board, or which is pending before, or 
which has been decided by, the U.S. Court of Appeals for the Federal 
Circuit or a district court in a proceeding under 35 U.S.C. 146. A 
related appeal or interference is one which will directly affect or be 
directly affected by or have a bearing on the Board's decision in the 
pending interference.
    (3) A table of contents, with page references, and a table of cases 
(alphabetically arranged), statutes, and other authorities cited, with 
references to the pages of the brief where they are cited.
    (4) A statement of the issues presented for decision in the 
interference.
    (5) A statement of the facts, in numbered paragraphs, relevant to 
the issues presented for decision with appropriate references to the 
record.
    (6) An argument, which may be preceded by a summary, which shall 
contain the contentions of the party with respect to the issues it is 
raising for consideration at final hearing, and the reasons therefor, 
with citations to the cases, statutes, other authorities, and parts of 
the record relied on.
    (7) A short conclusion stating the precise relief requested.
    (8) An appendix containing a copy of the counts.
    (c) The opening brief of the senior party shall conform to the 
requirements of paragraph (b) of this section except:

[[Page 140]]

    (1) A statement of the issues and of the facts need not be made 
unless the party is dissatisfied with the statement in the opening brief 
of the junior party and
    (2) An appendix containing a copy of the counts need not be included 
if the copy of the counts in the opening brief of the junior party is 
correct.
    (d) Unless ordered otherwise by an administrative patent judge, 
briefs shall be double-spaced (except for footnotes, which may be 
single-spaced) and shall comply with the requirements of Sec. 1.653(g) 
for records except the requirement for binding.
    (e) An original and four copies of each brief must be filed.
    (f) Any brief which does not comply with the requirements of this 
section may be returned under Sec. 1.618(a).
    (g) Any party, separate from its opening brief, but filed 
concurrently therewith, may file an original and four copies of concise 
proposed findings of fact and conclusions of law. Any proposed findings 
of fact shall be in numbered paragraphs and shall be supported by 
specific references to the record. Any proposed conclusions of law shall 
be in numbered paragraphs and shall be supported by citation of cases, 
statutes, or other authority. Any opponent, separate from its opening or 
reply brief, but filed concurrently therewith, may file a paper 
accepting or objecting to any proposed findings of fact or conclusions 
of law; when objecting, a reason must be given. The Board may adopt the 
proposed findings of fact and conclusions of law in whole or in part.
    (h) If a party wants the Board in rendering its final decision to 
rule on the admissibility of any evidence, the party shall file with its 
opening brief an original and four copies of a motion (Sec. 1.635) to 
suppress the evidence. The provisions of Sec. 1.637(b) do not apply to a 
motion to suppress under this paragraph. Any objection previously made 
to the admissibility of the evidence of an opponent is waived unless the 
motion required by this paragraph is filed. A party that failed to 
challenge the admissibility of the evidence of an opponent on a ground 
that could have been raised in a timely objection under Sec. 1.672(c), 
1.682(c), 1.683(b) or 1.688(b) may not move under this paragraph to 
suppress the evidence on that ground at final hearing. An original and 
four copies of an opposition to the motion may be filed with an 
opponent's opening brief or reply brief as may be appropriate.
    (i) When a junior party fails to timely file an opening brief, an 
order may issue requiring the junior party to show cause why the Board 
should not treat failure to file the brief as a concession of priority. 
If the junior party fails to show good cause within a time period set in 
the order, judgment may be entered against the junior party.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14529, Mar. 17, 1995]



Sec. 1.657  Burden of proof as to date of invention.

    (a) A rebuttable presumption shall exist that, as to each count, the 
inventors made their invention in the chronological order of their 
effective filing dates. The burden of proof shall be upon a party who 
contends otherwise.
    (b) In an interference involving copending applications or involving 
a patent and an application having an effective filing date on or before 
the date the patent issued, a junior party shall have the burden of 
establishing priority by a preponderance of the evidence.
    (c) In an interference involving an application and a patent and 
where the effective filing date of the application is after the date the 
patent issued, a junior party shall have the burden of establishing 
priority by clear and convincing evidence.

[60 FR 14530, Mar. 17, 1995]



Sec. 1.658  Final decision.

    (a) After final hearing, the Board shall enter a decision resolving 
the issues raised at final hearing. The decision may enter judgment, in 
whole or in part, remand the interference to an administrative patent 
judge for further proceedings, or take further action not inconsistent 
with law. A judgment as to a count shall state whether or not each party 
is entitled to a patent containing the claims in the party's patent or 
application which correspond to

[[Page 141]]

the count. When the Board enters a decision awarding judgment as to all 
counts, the decision shall be regarded as a final decision for the 
purpose of judicial review (35 U.S.C. 141-144, 146) unless a request for 
reconsideration under paragraph (b) of this section is timely filed.
    (b) Any request for reconsideration of a decision under paragraph 
(a) of this section shall be filed within one month after the date of 
the decision. The request for reconsideration shall specify with 
particularity the points believed to have been misapprehended or 
overlooked in rendering the decision. Any opposition to a request for 
reconsideration shall be filed within 14 days of the date of service of 
the request for reconsideration. Service of the request for 
reconsideration shall be by hand or Express Mail. The Board shall enter 
a decision on the request for reconsideration. If the Board shall be of 
the opinion that the decision on the request for reconsideration 
significantly modifies its original decision under paragraph (a) of this 
section, the Board may designate the decision on the request for 
reconsideration as a new decision. A decision on reconsideration is a 
final decision for the purpose of judicial review (35 U.S.C. 141-144, 
146).
    (c) A judgment in an interference settles all issues which (1) were 
raised and decided in the interference, (2) could have been properly 
raised and decided in the interference by a motion under Sec. 1.633 (a) 
through (d) and (f) through (j) or Sec. 1.634, and (3) could have been 
properly raised and decided in an additional interference with a motion 
under Sec. 1.633(e). A losing party who could have properly moved, but 
failed to move, under Sec. 1.633 or 1.634, shall be estopped to take ex 
parte or inter partes action in the Patent and Trademark Office after 
the interference which is inconsistent with that party's failure to 
properly move, except that a losing party shall not be estopped with 
respect to any claims which correspond, or properly could have 
corresponded, to a count as to which that party was awarded a favorable 
judgment.

[46 FR 29185, May 29, 1981, as amended at 54 FR 29553, July 13, 1989; 60 
FR 14530, Mar. 17, 1995]



Sec. 1.659  Recommendation.

    (a) Should the Board have knowledge of any ground for rejecting any 
application claim not involved in the judgment of the interference, it 
may include in its decision a recommended rejection of the claim. Upon 
resumption of ex parte prosecution of the application, the examiner 
shall be bound by the recommendation and shall enter and maintain the 
recommended rejection unless an amendment or showing of facts not 
previously of record is filed which, in the opinion of the examiner, 
overcomes the recommended rejection.
    (b) Should the Board have knowledge of any ground for reexamination 
of a patent involved in the interference as to a patent claim not 
involved in the judgment of the interference, it may include in its 
decision a recommendation to the Commissioner that the patent be 
reexamined. The Commissioner will determine whether reexamination will 
be ordered.
    (c) The Board may make any other recommendation to the examiner or 
the Commissioner as may be appropriate.



Sec. 1.660  Notice of reexamination, reissue, protest, or litigation.

    (a) When a request for reexamination of a patent involved in an 
interference is filed, the patent owner shall notify the Board within 10 
days of receiving notice that the request was filed.
    (b) When an application for reissue is filed by a patentee involved 
in an interference, the patentee shall notify the Board within 10 days 
of the day the application for reissue is filed.
    (c) When a protest under Sec. 1.291 is filed against an application 
involved in an interference, the applicant shall notify the Board within 
10 days of receiving notice that the protest was filed.
    (d) A party in an interference shall notify the Board promptly of 
any litigation related to any patent or application involved in an 
interference, including any civil action commenced under 35 U.S.C. 146.
    (e) The notice required by this section is designed to assist the 
administrative patent judge and the Board in efficiently handling 
interference cases. Failure of a party to comply with the provisions of 
this section may result in

[[Page 142]]

sanctions under Sec. 1.616. Knowledge by, or notice to, an employee of 
the Office other than an employee of the Board, of the existence of the 
reexamination, application for reissue, protest, or litigation shall not 
be sufficient. The notice contemplated by this section is notice 
addressed to the administrative patent judge in charge of the 
interference in which the application or patent is involved.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14530, Mar. 17, 1995]



Sec. 1.661  Termination of interference after judgment.

    After a final decision is entered by the Board, an interference is 
considered terminated when no appeal (35 U.S.C. 141) or other review (35 
U.S.C. 146) has been or can be taken or had.



Sec. 1.662  Request for entry of adverse judgment; reissue filed by patentee.

    (a) A party may, at any time during an interference, request and 
agree to entry of an adverse judgment. The filing by a party of a 
written disclaimer of the invention defined by a count, concession of 
priority or unpatentability of the subject matter of a count, 
abandonment of the invention defined by a count, or abandonment of the 
contest as to a count will be treated as a request for entry of an 
adverse judgment against the applicant or patentee as to all claims 
which correspond to the count. Abandonment of an application, other than 
an application for reissue having a claim of the patent sought to be 
reissued involved in the interference, will be treated as a request for 
entry of an adverse judgment against the applicant as to all claims 
corresponding to all counts. Upon the filing by a party of a request for 
entry of an adverse judgment, the Board may enter judgment against the 
party.
    (b) If a patentee involved in an interference files an application 
for reissue during the interference and the reissue application does not 
include a claim that corresponds to a count, judgment may be entered 
against the patentee. A patentee who files an application for reissue 
which includes a claim that corresponds to a count shall, in addition to 
complying with the provisions of Sec. 1.660(b), timely file a 
preliminary motion under Sec. 1.633(h) or show good cause why the motion 
could not have been timely filed or would not be appropriate.
    (c) The filing of a statutory disclaimer under 35 U.S.C. 253 by a 
patentee will delete any statutorily disclaimed claims from being 
involved in the interference. A statutory disclaimer will not be treated 
as a request for entry of an adverse judgment against the patentee 
unless it results in the deletion of all patent claims corresponding to 
a count.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 23735, June 23, 1988; 
60 FR 14530, Mar. 17, 1995]



Sec. 1.663  Status of claim of defeated applicant after interference.

    Whenever an adverse judgment is entered as to a count against an 
applicant from which no appeal (35 U.S.C. 141) or other review (35 
U.S.C. 146) has been or can be taken or had, the claims of the 
application corresponding to the count stand finally disposed of without 
further action by the examiner. Such claims are not open to further ex 
parte prosecution.



Sec. 1.664  Action after interference.

    (a) After termination of an interference, the examiner will promptly 
take such action in any application previously involved in the 
interference as may be necessary. Unless entered by order of an 
administrative patent judge, amendments presented during the 
interference shall not be entered, but may be subsequently presented by 
the applicant subject to the provisions of this subpart provided 
prosecution of the application is not otherwise closed.
    (b) After judgment, the application of any party may be held subject 
to further examination, including an interference with another 
application.

[60 FR 14530, Mar. 17, 1995]



Sec. 1.665  Second interference.

    A second interference between the same parties will not be declared 
upon an application not involved in an earlier interference for an 
invention defined by a count of the earlier interference. See 
Sec. 1.658(c).

[[Page 143]]



Sec. 1.666  Filing of interference settlement agreements.

    (a) Any agreement or understanding between parties to an 
interference, including any collateral agreements referred to therein, 
made in connection with or in contemplation of the termination of the 
interference, must be in writing and a true copy thereof must be filed 
before the termination of the interference (Sec. 1.661) as between the 
parties to the agreement or understanding.
    (b) If any party filing the agreement or understanding under 
paragraph (a) of this section so requests, the copy will be kept 
separate from the file of the interference, and made available only to 
Government agencies on written request, or to any person upon petition 
accompanied by the fee set forth in Sec. 1.17(i) and on a showing of 
good cause.
    (c) Failure to file the copy of the agreement or understanding under 
paragraph (a) of this section will render permanently unenforceable such 
agreement or understanding and any patent of the parties involved in the 
interference or any patent subsequently issued on any application of the 
parties so involved. The Commissioner may, however, upon petition 
accompanied by the fee set forth in Sec. 1.17(h) and on a showing of 
good cause for failure to file within the time prescribed, permit the 
filing of the agreement or understanding during the six month period 
subsequent to the termination of the interference as between the parties 
to the agreement or understanding.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 54 
FR 6904, Feb. 15, 1989; 60 FR 20228, Apr. 25, 1995]



Sec. 1.671  Evidence must comply with rules.

    (a) Evidence consists of testimony and referenced exhibits, official 
records and publications filed under Sec. 1.682, testimony and 
referenced exhibits from another interference, proceeding, or action 
filed under Sec. 1.683, discovery relied upon under Sec. 1.688, and the 
specification (including claims) and drawings of any application or 
patent:
    (1) Involved in the interference.
    (2) To which a party has been accorded benefit in the notice 
declaring the interference or by a preliminary motion granted under 
Sec. 1.633.
    (3) For which a party has sought, but has been denied, benefit by a 
preliminary motion under Sec. 1.633.
    (4) For which benefit was rescinded by a preliminary motion granted 
under Sec. 1.633.
    (b) Except as otherwise provided in this subpart, the Federal Rules 
of Evidence shall apply to interference proceedings. Those portions of 
the Federal Rules of Evidence relating to criminal actions, juries, and 
other matters not relevant to interferences shall not apply.
    (c) Unless the context is otherwise clear, the following terms of 
the Federal Rules of Evidence shall be construed as follows:
    (1) Courts of the United States, U.S. Magistrate, court, trial 
court, or trier of fact means administrative patent judge or Board as 
may be appropriate.
    (2) Judge means administrative patent judge.
    (3) Judicial notice means official notice.
    (4) Civil action, civil proceeding, action, or trial, mean 
interference.
    (5) Appellate court means United States Court of Appeals for the 
Federal Circuit or a United States district court when judicial review 
is under 35 U.S.C. 146.
    (6) Before the hearing in Rule 703 of the Federal Rules of Evidence 
means before giving testimony by affidavit or oral deposition.
    (7) The trial or hearing in Rules 803(24) and 804(5) of the Federal 
Rules of Evidence means the taking of testimony by affidavit or oral 
deposition.
    (d) Certification is not necessary as a condition to admissibility 
when the record is a record of the Patent and Trademark Office to which 
all parties have access.
    (e) A party may not rely on an affidavit (including any exhibits), 
patent or printed publication previously submitted by the party under 
Sec. 1.639(b) unless a copy of the affidavit, patent or printed 
publication has been served and a written notice is filed prior to the 
close of the party's relevant testimony period stating that the party 
intends to rely on the affidavit, patent or

[[Page 144]]

printed publication. When proper notice is given under this paragraph, 
the affidavit, patent or printed publication shall be deemed as filed 
under Sec. 1.640(b), 1.640(e)(3), 1.672(b) or 1.682(a), as appropriate.
    (f) The significance of documentary and other exhibits identified by 
a witness in an affidavit or during oral deposition shall be discussed 
with particularity by a witness.
    (g) A party must file a motion (Sec. 1.635) seeking permission from 
an administrative patent judge prior to compelling testimony or 
production of documents or things under 35 U.S.C. 24 or from an opposing 
party. The motion shall describe the general nature and the relevance of 
the testimony, document, or thing. If permission is granted, the party 
shall notice a deposition under Sec. 1.673 and may proceed to take 
testimony.
    (h) A party must file a motion (Sec. 1.635) seeking permission from 
an administrative patent judge prior to compelling testimony or 
production of documents or things in a foreign country.
    (1) In the case of testimony, the motion shall:
    (i) Describe the general nature and relevance of the testimony;
    (ii) Identify the witness by name or title;
    (iii) Identify the foreign country and explain why the party 
believes the witness can be compelled to testify in the foreign country, 
including a description of the procedures that will be used to compel 
the testimony in the foreign country and an estimate of the time it is 
expected to take to obtain the testimony; and
    (iv) Demonstrate that the party has made reasonable efforts to 
secure the agreement of the witness to testify in the United States but 
has been unsuccessful in obtaining the agreement, even though the party 
has offered to pay the expenses of the witness to travel to and testify 
in the United States.
    (2) In the case of production of a document or thing, the motion 
shall:
    (i) Describe the general nature and relevance of the document or 
thing;
    (ii) Identify the foreign country and explain why the party believes 
production of the document or thing can be compelled in the foreign 
country, including a description of the procedures that will be used to 
compel production of the document or thing in the foreign country and an 
estimate of the time it is expected to take to obtain production of the 
document or thing; and
    (iii) Demonstrate that the party has made reasonable efforts to 
obtain the agreement of the individual or entity having possession, 
custody, or control of the document to produce the document or thing in 
the United States but has been unsuccessful in obtaining that agreement, 
even though the party has offered to pay the expenses of producing the 
document or thing in the United States.
    (i) Evidence which is not taken or sought and filed in accordance 
with this subpart shall not be admissible.
    (j) The weight to be given deposition testimony taken in a foreign 
country will be determined in view of all the circumstances, including 
the laws of the foreign country governing the testimony. Little, if any, 
weight may be given to deposition testimony taken in a foreign country 
unless the party taking the testimony proves by clear and convincing 
evidence, as a matter of fact, that knowingly giving false testimony in 
that country in connection with an interference proceeding in the United 
States Patent and Trademark Office is punishable under the laws of that 
country and that the punishment in that country for such false testimony 
is comparable to or greater than the punishment for perjury committed in 
the United States. The administrative patent judge and the Board, in 
determining foreign law, may consider any relevant material or source, 
including testimony, whether or not submitted by a party or admissible 
under the Federal Rules of Evidence.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14530, Mar. 17, 1995]



Sec. 1.672  Manner of taking testimony.

    (a) Unless testimony must be compelled under 35 U.S.C. 24, compelled 
from a party, or compelled in a foreign country, testimony of a witness 
shall be taken by affidavit in accordance with this subpart. Testimony 
which must be compelled under 35 U.S.C. 24, compelled from a party, or 
compelled

[[Page 145]]

in a foreign country shall be taken by oral deposition.
    (b) A party presenting testimony of a witness by affidavit shall, 
within the time set by the administrative patent judge for serving 
affidavits, file a copy of the affidavit or, if appropriate, notice 
under Sec. 1.671(e). If the affidavit relates to a party's case-in-
chief, it shall be filed or noticed no later than the date set by an 
administrative patent judge for the party to file affidavits for its 
case-in-chief. If the affidavit relates to a party's case-in-rebuttal, 
it shall be filed or noticed no later than the date set by an 
administrative patent judge for the party to file affidavits for its 
case-in-rebuttal. A party shall not be entitled to rely on any document 
referred to in the affidavit unless a copy of the document is filed with 
the affidavit. A party shall not be entitled to rely on any thing 
mentioned in the affidavit unless the opponent is given reasonable 
access to the thing. A thing is something other than a document. The 
pages of affidavits filed under this paragraph and of any other 
testimony filed therewith under Secs. 1.683(a) and 1.688(a) shall, to 
the extent possible, be given sequential numbers which shall also serve 
as the record page numbers for the affidavits and other testimony in the 
party's record to be filed under Sec. 1.653. Exhibits identified in the 
affidavits or in any other testimony filed under Secs. 1.683(a) and 
1.688(a) and any official records and printed publications filed under 
Sec. 1.682(a) shall, to the extent possible, be given sequential exhibit 
numbers, which shall also serve as the exhibit numbers when the exhibits 
are filed with the party's record. The affidavits, testimony filed under 
Secs. 1.683(a) and 1.688(a) and exhibits shall be accompanied by an 
index of the names of the witnesses, giving the number of the page where 
the testimony of each witness begins, and by an index of the exhibits 
briefly describing the nature of each exhibit and giving the number of 
the page where each exhibit is first identified and offered into 
evidence.
    (c) If an opponent objects to the admissibility of any evidence 
contained in or submitted with an affidavit filed under paragraph (b) of 
this section, the opponent must, no later than the date set by the 
administrative patent judge for filing objections under this paragraph, 
file objections stating with particularity the nature of each objection. 
An opponent that fails to object to the admissibility of the evidence 
contained in or submitted with an affidavit on a ground that could have 
been raised in a timely objection under this paragraph will not be 
entitled to move under Sec. 1.656(h) to suppress the evidence on that 
ground. If an opponent timely files objections, the party may, within 20 
days of the due date for filing objections, file one or more 
supplemental affidavits, official records or printed publications to 
overcome the objections. No objection to the admissibility of the 
supplemental evidence shall be made, except as provided by 
Sec. 1.656(h). The pages of supplemental affidavits filed under this 
paragraph shall, to the extent possible, be sequentially numbered 
beginning with the number following the last page number of the party's 
testimony submitted under paragraph (b) of this section. The page 
numbers assigned to the supplemental affidavits shall also serve as the 
record page numbers for the supplemental affidavits in the party's 
record filed under Sec. 1.653. Additional exhibits identified in 
supplemental affidavits and any supplemental official records and 
printed publications shall, to the extent possible, be given sequential 
numbers beginning with the number following the last number of the 
exhibits submitted under paragraph (b) of this section. The exhibit 
numbers shall also serve as the exhibit numbers when the exhibits are 
filed with the party's record. The supplemental affidavits shall be 
accompanied by an index of the names of the witnesses and an index of 
exhibits of the type specified in paragraph (b) of this section.
    (d) After the time expires for filing objections and supplemental 
affidavits, or earlier when appropriate, the administrative patent judge 
shall set a time within which any opponent may file a request to cross-
examine an affiant on oral deposition. If any opponents requests cross-
examination of an affiant, the party shall notice a deposition at a 
reasonable location within the United States under Sec. 1.673(e) for the 
purpose of cross-examination by any opponent. Any redirect and recross 
shall take

[[Page 146]]

place at the deposition. At any deposition for the purpose of cross-
examination of a witness, the party shall not be entitled to rely on any 
document or thing not mentioned in one or more of the affidavits filed 
under paragraphs (b) and (c) of this section, except to the extent 
necessary to conduct proper redirect. The party who gives notice of a 
deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter, and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
transcript on each opponent together with copies of any additional 
documentary exhibits identified by the witness during the deposition. 
The pages of the transcripts served under this paragraph shall, to the 
extent possible, be sequentially numbered beginning with the number 
following the last page number of the party's supplemental affidavits 
submitted under paragraph (c) of this section. The numbers assigned to 
the transcript pages shall also serve as the record page numbers for the 
transcripts in the party's record filed under Sec. 1.653. Additional 
exhibits identified in the transcripts, shall, to the extent possible, 
be given sequential numbers beginning with the number following the last 
number of the exhibits submitted under paragraphs (b) and (c) of this 
section. The exhibit numbers assigned to the additional exhibits shall 
also serve as the exhibit numbers when those exhibits are filed with the 
party's record. The deposition transcripts shall be accompanied by an 
index of the names of the witnesses, giving the number of the page where 
cross-examination, redirect and recross of each witness begins, and an 
index of exhibits of the type specified in paragraph (b) of this 
section.
    (e) [Reserved]
    (f) When a deposition is authorized to be taken within the United 
States under this subpart and if the parties agree in writing, the 
deposition may be taken in any place within the United States, before 
any person authorized to administer oaths, upon any notice, and in any 
manner, and when so taken may be used like other depositions.
    (g) If the parties agree in writing, the affidavit testimony of any 
witness may be submitted without opportunity for cross-examination.
    (h) If the parties agree in writing, testimony may be submitted in 
the form of an agreed statement setting forth how a particular witness 
would testify, if called, or the facts in the case of one or more of the 
parties. The agreed statement shall be filed in the Patent and Trademark 
Office. See Sec. 1.653(a).
    (i) In an unusual circumstance and upon a showing that testimony 
cannot be taken in accordance with the provisions of this subpart, an 
administrative patent judge upon motion (Sec. 1.635) may authorize 
testimony to be taken in another manner.

[60 FR 14531, Mar. 17, 1995]



Sec. 1.673  Notice of examination of witness.

    (a) A party authorized to take testimony of a witness by deposition 
shall, after complying with paragraphs (b) and (g) of this section, file 
and serve a single notice of deposition stating the time and place of 
each deposition to be taken. Depositions to be taken in the United 
States may be noticed for a reasonable time and place in the United 
States. A deposition may not be noticed for any other place without 
approval of an administrative patent judge. The notice shall specify the 
name and address of each witness and the general nature of the testimony 
to be given by the witness. If the name of a witness is not known, a 
general description sufficient to identify the witness or a particular 
class or group to which the witness belongs may be given instead.
    (b) Unless the parties agree or an administrative patent judge or 
the Board determine otherwise, a party shall serve, but not file, at 
least three working days prior to the conference required by paragraph 
(g) of this section, if service is made by hand or Express Mail, or at 
least 14 days prior to the conference if service is made by any other 
means, the following:
    (1) A list and copy of each document in the party's possession, 
custody, or control and upon which the party intends to rely at any 
deposition and

[[Page 147]]

    (2) A list of and a proffer of reasonable access to things in the 
party's possession, custody, or control and upon which the party intends 
to rely at any deposition.
    (c) A party shall not be permitted to rely on any witness not listed 
in the notice, or any document not served or any thing not listed as 
required by paragraph (b) of this section:
    (1) Unless all opponents agree in writing or on the record to permit 
the party to rely on the witness, document or thing, or
    (2) Except upon a motion (Sec. 1.635) promptly filed which is 
accompanied by any proposed notice, additional documents, or lists and 
which shows good cause why the notice, documents, or lists were not 
served in accordance with this section.
    (d) Each opponent shall have a full opportunity to attend a 
deposition and cross-examine.
    (e) A party who has presented testimony by affidavit and is required 
to notice depositions for the purpose of cross-examination under 
Sec. 1.672(b), shall, after complying with paragraph (g) of this 
section, file and serve a single notice of deposition stating the time 
and place of each cross-examination deposition to be taken.
    (f) The parties shall not take depositions in more than one place at 
the same time or so nearly at the same time that reasonable opportunity 
to travel from one place of deposition to another cannot be had.
    (g) Before serving a notice of deposition and after complying with 
paragraph (b) of this section, a party shall have an oral conference 
with all opponents to attempt to agree on a mutually acceptable time and 
place for conducting the deposition. A certificate shall appear in the 
notice stating that the oral conference took place or explaining why the 
conference could not be had. If the parties cannot agree to a mutually 
acceptable place and time for conducting the deposition at the 
conference, the parties shall contact an administrative patent judge who 
shall then designate the time and place for conducting the deposition.
    (h) A copy of the notice of deposition shall be attached to the 
certified transcript of the deposition filed under Sec. 1.676(a).

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14532, Mar. 17, 1995]



Sec. 1.674  Persons before whom depositions may be taken.

    (a) A deposition shall be taken before an officer authorized to 
administer oaths by the laws of the United States or of the place where 
the examination is held.
    (b) Unless the parties agree in writing, the following persons shall 
not be competent to serve as an officer:
    (1) A relative or employee of a party,
    (2) A relative or employee of an attorney or agent of a party, or
    (3) A person interested, directly or indirectly, in the interference 
either as counsel, attorney, agent, or otherwise.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14533, Mar. 17, 1995]



Sec. 1.675  Examination of witness, reading and signing transcript of deposition.

    (a) Each witness before giving an oral deposition shall be duly 
sworn according to law by the officer before whom the deposition is to 
be taken.
    (b) The testimony shall be taken in answer to interrogatories with 
any questions and answers recorded in their regular order by the officer 
or by some other person, who shall be subject to the provisions of 
Sec. 1.674(b), in the presence of the officer unless the presence of the 
officer is waived on the record by agreement of all parties.
    (c) All objections made at the time of the deposition to the 
qualifications of the officer taking the deposition, the manner of 
taking it, the evidence presented, the conduct of any party, or any 
other objection to the proceeding shall be noted on the record by the 
officer. Evidence objected to shall be taken subject to any objection.
    (d) Unless the parties agree in writing or waive reading and 
signature by the witness on the record at the deposition, when the 
testimony has been transcribed a transcript of the deposition shall, 
unless the witness refuses to read and/or sign the transcript of the 
deposition, be read by the witness and then signed by the witness in the 
form of:

[[Page 148]]

    (1) An affidavit in the presence of any notary or
    (2) A declaration.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14533, Mar. 17, 1995]



Sec. 1.676  Certification and filing by officer, marking exhibits.

    (a) The officer shall prepare a certified transcript of the 
deposition by attaching to a transcript of the deposition a copy of the 
notice of deposition, any exhibits to be annexed to the certified 
transcript, and a certificate signed and sealed by the officer and 
showing:
    (1) The witness was duly sworn by the officer before commencement of 
testimony by the witness.
    (2) The transcript is a true record of the testimony given by the 
witness.
    (3) The name of the person by whom the testimony was recorded and, 
if not recorded by the officer, whether the testimony was recorded in 
the presence of the officer.
    (4) The presence or absence of any opponent.
    (5) The place where the deposition was taken and the day and hour 
when the deposition began and ended.
    (6) The officer is not disqualified under Sec. 1.674.
    (b) If the parties waived any of the requirements of paragraph (a) 
of this section, the certificate shall so state.
    (c) The officer shall note on the certificate the circumstances 
under which a witness refuses to sign a transcript.
    (d) Unless the parties agree otherwise in writing or on the record 
at the deposition, the officer shall securely seal the certified 
transcript in an envelope endorsed with the style of the interference 
(e.g., Smith v. Jones), the interference number, the name of the 
witness, and the date of sealing and shall promptly forward the envelope 
to BOX INTERFERENCE, Commissioner of Patents and Trademarks, Washington, 
DC 20231. Documents and things produced for inspection during the 
examination of a witness, shall, upon request of a party, be marked for 
identification and annexed to the certified transcript, and may be 
inspected and copied by any party, except that if the person producing 
the documents and things desires to retain them, the person may:
    (1) Offer copies to be marked for identification and annexed to the 
certified transcript and to serve thereafter as originals if the person 
affords to all parties fair opportunity to verify the copies by 
comparison with the originals or
    (2) Offer the originals to be marked for identification, after 
giving to each party an opportunity to inspect and copy them, in which 
event the documents and things may be used in the same manner as if 
annexed to the certified transcript.

The exhibits shall then be filed as specified in Sec. 1.653(i). If the 
weight or bulk of a document or thing shall reasonably prevent the 
document or thing from being annexed to the certified transcript, it 
shall, unless waived on the record at the deposition by all parties, be 
authenicated by the officer and fowarded to the Commissioner in a 
separate package marked and addressed as provided in this paragraph.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14533, Mar. 17, 1995]



Sec. 1.677  Form of an affidavit or a transcript of deposition.

    (a) An affidavit or a transcript of a deposition must be on opaque, 
unglazed, durable paper approximately 21.8 by 27.9 cm. (8\1/2\ by 11 
inches) in size (letter size). The printed matter shall be double-spaced 
on one side of the paper in not smaller than 11 point type with a margin 
of 3.8 cm. (1\1/2\ inches) on the left-hand side of the page. The pages 
of each transcript must be consecutively numbered and the name of the 
witness shall appear at the top of each page (Sec. 1.653(e)). In 
transcripts of depositions, the questions propounded to each witness 
must be consecutively numbered unless paper with numbered lines is used 
and each question must be followed by its answer.
    (b) Exhibits must be numbered consecutively to the extent possible 
and each must be marked as required by Sec. 1.653(i).

[60 FR 14533, Mar. 17, 1995]

[[Page 149]]



Sec. 1.678  Time for filing transcript of deposition.

    Unless otherwise ordered by an administrative patent judge, a 
certified transcript of a deposition must be filed in the Patent and 
Trademark Office within one month after the date of deposition. If a 
party refuses to file a certified transcript, the administrative patent 
judge or the Board may take appropriate action under Sec. 1.616. If a 
party refuses to file a certified transcript, any opponent may move for 
leave to file the certified transcript and include a copy of the 
transcript as part of the opponent's record.

[60 FR 14533, Mar. 17, 1995]



Sec. 1.679  Inspection of transcript.

    A certified transcript of a deposition filed in the Patent and 
Trademark Office may be inspected by any party. The certified transcript 
may not be removed from the Patent and Trademark Office unless 
authorized by an administrative patent judge upon such terms as may be 
appropriate.

[60 FR 14533, Mar. 17, 1995]



Sec. 1.682  Official records and printed publications.

    (a) A party may introduce into evidence, if otherwise admissible, an 
official record or printed publication not identified in an affidavit or 
on the record during an oral deposition of a witness, by filing a copy 
of the official record or printed publication or, if appropriate, a 
notice under Sec. 1.671(e). If the official record or printed 
publication relates to the party's case-in-chief, it shall be filed or 
noticed together with any affidavits filed by the party under 
Sec. 1.672(b) for its case-in-chief or, if the party does not serve any 
affidavits under Sec. 1.672(b) for its case-in-chief, no later than the 
date set by an administrative patent judge for the party to file 
affidavits under Sec. 1.672(b) for its case-in-chief. If the official 
record or printed publication relates to rebuttal, it shall be filed or 
noticed together with any affidavits filed by the party under 
Sec. 1.672(b) for its case-in-rebuttal or, if the party does not file 
any affidavits under Sec. 1.672(b) for its case-in-rebuttal, no later 
than the date set by an administrative patent judge for the party to 
file affidavits under Sec. 1.672(b) for its case-in-rebuttal. Official 
records and printed publications filed under this paragraph shall be 
assigned sequential exhibit numbers by the party in the manner set forth 
in Sec. 1.672(b). The official record and printed publications shall be 
accompanied by a paper which shall:
    (1) Identify the official record or printed publication;
    (2) Identify the portion thereof to be introduced in evidence; and
    (3) Indicate generally the relevance of the portion sought to be 
introduced in evidence.
    (b) [Reserved]
    (c) Unless otherwise ordered by an administrative patent judge, any 
written objection by an opponent to the paper or to the admissibility of 
the official record or printed publication shall be filed no later than 
the date set by the administrative patent judge for the opponent to file 
objections under Sec. 1.672(c) to affidavits submitted by the party 
under Sec. 1.672(b). An opponent who fails to object to the 
admissibility of the official record or printed publication on a ground 
that could have been raised in a timely objection under this paragraph 
will not be entitled to move under Sec. 1.656(h) to suppress the 
evidence on that ground. If an opponent timely files an objection, the 
party may respond by filing one or more supplemental affidavits, 
official records or printed publications, which must be filed together 
with any supplemental evidence filed by the party under Sec. 1.672(c) 
or, if the party does not file any supplemental evidence under 
Sec. 1.672(c), no later than the date set by an administrative patent 
judge for the party to file supplemental affidavits under Sec. 1.672(c). 
No objection to the admissibility of the supplemental evidence shall be 
made, except as provided by Sec. 1.656(h). The pages of supplemental 
affidavits and the exhibits filed under this section shall be 
sequentially numbered by the party in the manner set forth in 
Sec. 1.672(c). The supplemental affidavits and exhibits shall be 
accompanied by an index of witnesses and an index of exhibits of the 
type required by Sec. 1.672(b).
    (d) Any request by an opponent to cross-examine on oral deposition 
the

[[Page 150]]

affiant of a supplemental affidavit submitted under paragraph (c) of 
this section shall be filed no later than the date set by the 
administrative patent judge for the opponent to file a request to cross-
examine an affiant with respect to an affidavit served by the party 
under Sec. 1.672 (b) or (c). If any opponent requests cross-examination 
of an affiant, the party shall file notice of a deposition for a 
reasonable location within the United States under Sec. 1.673(e) for the 
purpose of cross-examination by any opponent. Any redirect and recross 
shall take place at the deposition. At any deposition for the purpose of 
cross-examination of a witness, the party shall not be entitled to rely 
on any document or thing not mentioned in one or more of the affidavits 
filed under this paragraph, except to the extent necessary to conduct 
proper redirect. The party who gives notice of a deposition shall be 
responsible for providing a translator if the witness does not testify 
in English, for obtaining a court reporter, and for filing a certified 
transcript of the deposition as required by Sec. 1.676. Within 45 days 
of the close of the period for taking cross-examination, the party shall 
serve (but not file) a copy of each deposition transcript on each 
opponent together with copies of any additional documentary exhibits 
identified by the witness during the deposition. The pages of deposition 
transcripts and exhibits served under this paragraph shall be 
sequentially numbered by the party in the manner set forth in 
Sec. 1.672(d). The deposition transcripts shall be accompanied by an 
index of the names of the witnesses, giving the number of the page where 
cross-examination, redirect and recross of each witness begins, and an 
index of exhibits of the type specified in Sec. 1.672(b).

[60 FR 14533, Mar. 17, 1995]



Sec. 1.683  Testimony in another interference, proceeding, or action.

    (a) A party may introduce into evidence, if otherwise admissible, 
testimony by affidavit or oral deposition and referenced exhibits from 
another interference, proceeding, or action involving the same parties 
by filing a copy of the affidavit or a copy of the transcript of the 
oral deposition and the referenced exhibits. If the testimony and 
referenced exhibits relate to the party's case-in-chief, they shall be 
filed together with any affidavits served by the party under 
Sec. 1.672(b) for its case-in-chief or, if the party does not file any 
affidavits under Sec. 1.672(b) for its case-in-chief, no later than the 
date set by an administrative patent judge for the party to file 
affidavits under Sec. 1.672(b) for its case-in-chief. If the testimony 
and referenced exhibits relate to rebuttal, they shall be filed together 
with any affidavits served by the party under Sec. 1.672(b) for its 
case-in-rebuttal or, if the party does not file any affidavits under 
Sec. 1.672(b) for its case-in-rebuttal, no later than the date set by an 
administrative patent judge for the party to file affidavits under 
Sec. 1.672(b) for its case-in-rebuttal. Pages of affidavits and 
deposition transcripts served under this paragraph and any new exhibits 
served therewith shall be assigned sequential numbers by the party in 
the manner set forth in Sec. 1.672(b). The testimony shall be 
accompanied by a paper which specifies with particularity the exact 
testimony to be used and demonstrates its relevance.
    (b) Unless otherwise ordered by an administrative patent judge, any 
written objection by an opponent to the paper or the admissibility of 
the testimony and referenced exhibits filed under this section shall be 
filed no later than the date set by the administrative patent judge for 
the opponent to file any objections under Sec. 1.672(c) to affidavits 
submitted by the party under Sec. 1.672(b). An opponent who fails to 
challenge the admissibility of the testimony or referenced exhibits on a 
ground that could have been raised in a timely objection under this 
paragraph will not be entitled to move under Sec. 1.656(h) to suppress 
the evidence on that ground. If an opponent timely files an objection, 
the party may respond with one or more supplemental affidavits, official 
records or printed publications, which must be filed together with any 
supplemental evidence filed by the party under Sec. 1.672(c) or, if the 
party does not file any supplemental evidence under Sec. 1.672(c), no 
later than the date set by an administrative patent judge for the party 
to

[[Page 151]]

file supplemental evidence under Sec. 1.672(c). No objection to the 
admissibility of the evidence contained in or submitted with a 
supplemental affidavit shall be made, except as provided by 
Sec. 1.656(h). The pages of supplemental affidavits and the exhibits 
filed under this section shall be sequentially numbered by the party in 
the manner set forth in Sec. 1.672(c). The supplemental affidavits and 
exhibits shall be accompanied by an index of witnesses and an index of 
exhibits of the type required by Sec. 1.672(b).
    (c) Any request by an opponent to cross-examine on oral deposition 
the affiant of an affidavit or supplemental affidavit submitted under 
paragraph (a) or (b) of this section shall be filed no later than the 
date set by the administrative patent judge for the opponent to file a 
request to cross-examine an affiant with respect to an affidavit filed 
by the party under Sec. 1.672 (b) or (c). If any opponent requests 
cross-examination of an affiant, the party shall file a notice of 
deposition for a reasonable location within the United States under 
Sec. 1.673(e) for the purpose of cross-examination by any opponent. Any 
redirect and recross shall take place at the deposition. At any 
deposition for the purpose of cross-examination of a witness, the party 
shall not be entitled to rely on any document or thing not mentioned in 
one or more of the affidavits filed under this paragraph, except to the 
extent necessary to conduct proper redirect. The party who gives notice 
of a deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter, and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
deposition transcript on each opponent together with copies of any 
additional documentary exhibits identified by the witness during the 
deposition. The pages of deposition transcripts and exhibits served 
under this paragraph shall be sequentially numbered by the party in the 
manner set forth in Sec. 1.672(d). The deposition transcripts shall be 
accompanied by an index of the names of the witnesses, giving the number 
of the page where cross-examination, redirect and recross of each 
witness begins, and an index of exhibits of the type specified in 
Sec. 1.672(b).

[60 FR 14534, Mar. 17, 1995]



Sec. 1.684  [Reserved]



Sec. 1.685  Errors and irregularities in depositions.

    (a) An error in a notice for taking a deposition is waived unless a 
motion (Sec. 1.635) to quash the notice is filed as soon as the error 
is, or could have been, discovered.
    (b) An objection to a qualification of an officer taking a 
deposition is waived unless:
    (1) The objection is made on the record of the deposition before a 
witness begins to testify.
    (2) If discovered after the deposition, a motion (Sec. 1.635) to 
suppress the deposition is filed as soon as the objection is, or could 
have been, discovered.
    (c) An error or irregularity in the manner in which testimony is 
transcribed, a certified transcript is signed by a witness, or a 
certified transcript is prepared, signed, certified, sealed, endorsed, 
forwarded, filed, or otherwise handled by the officer is waived unless a 
motion (Sec. 1.635) to suppress the deposition is filed as soon as the 
error or irregularity is, or could have been, discovered.
    (d) An objection to the deposition on any grounds, such as the 
competency of a witness, admissibility of evidence, manner of taking the 
deposition, the form of questions and answers, any oath or affirmation, 
or conduct of any party at the deposition, is waived unless an objection 
is made on the record at the deposition stating the specific ground of 
objection. Any objection which a party wishes considered by the Board at 
final hearing shall be included in a motion to suppress under 
Sec. 1.656(h).
    (e) Nothing in this section precludes taking notice of plain errors 
affecting substantial rights although they were not brought to the 
attention of an administrative patent judge or the Board.

[49 FR 48455, Dec. 12, 1984; 50 FR 23124, May 31, 1985, as amended at 60 
FR 14534, Mar. 17, 1995]

[[Page 152]]



Sec. 1.687  Additional discovery.

    (a) A party is not entitled to discovery except as authorized in 
this subpart.
    (b) Where appropriate, a party may obtain production of documents 
and things during cross-examination of an opponent's witness or during 
the testimony period of the party's case-in-rebuttal.
    (c) Upon a motion (Sec. 1.635) brought by a party within the time 
set by an administrative patent judge under Sec. 1.651 or thereafter as 
authorized by Sec. 1.645 and upon a showing that the interest of justice 
so requires, an administrative patent judge may order additional 
discovery, as to matters under the control of a party within the scope 
of the Federal Rules of Civil Procedure, specifying the terms and 
conditions of such additional discovery. See Sec. 1.647 concerning 
translations of documents in a foreign language.
    (d) The parties may agree to discovery among themselves at any time. 
In the absence of an agreement, a motion for additional discovery shall 
not be filed except as authorized by this subpart.

[49 FR 48455, Dec. 12, 1984, as amended at 60 FR 14535, Mar. 17, 1995]



Sec. 1.688  Use of discovery.

    (a) If otherwise admissible, a party may introduce into evidence an 
answer to a written request for an admission or an answer to a written 
interrogatory obtained by discovery under Sec. 1.687 by filing a copy of 
the request for admission or the written interrogatory and the answer. 
If the answer relates to a party's case-in-chief, the answer shall be 
served together with any affidavits served by the party under 
Sec. 1.672(b) for its case-in-chief or, if the party does not serve any 
affidavits under Sec. 1.672(b) for its case-in-chief, no later than the 
date set by an administrative patent judge for the party to serve 
affidavits under Sec. 1.672(b) for its case-in-chief. If the answer 
relates to the party's rebuttal, the answer shall be served together 
with any affidavits served by the party under Sec. 1.672(b) for its 
case-in-rebuttal or, if the party does not serve any affidavits under 
Sec. 1.672(b) for its case-in-rebuttal, no later than the date set by an 
administrative patent judge for the party to serve affidavits under 
Sec. 1.672(b) for its case-in-rebuttal.
    (b) Unless otherwise ordered by an administrative patent judge, any 
written objection to the admissibility of an answer shall be filed no 
later than the date set by the administrative patent judge for the 
opponent to file any objections under Sec. 1.672(c) to affidavits 
submitted by the party under Sec. 1.672(b). An opponent who fails to 
challenge the admissibility of an answer on a ground that could have 
been raised in a timely objection under this paragraph will not be 
entitled to move under Sec. 1.656(h) to suppress the evidence on that 
ground. If an opponent timely files an objection, the party may respond 
with one or more supplemental affidavits, which must be filed together 
with any supplemental evidence filed by the party under Sec. 1.672(c) 
or, if the party does not file any supplemental evidence under 
Sec. 1.672(c), no later than the date set by an administrative patent 
judge for the party to file supplemental affidavits under Sec. 1.672(c). 
No objection to the admissibility of the evidence contained in or 
submitted with a supplemental affidavit shall be made, except as 
provided by Sec. 1.656(h). The pages of supplemental affidavits and the 
exhibits filed under this section shall be sequentially numbered by the 
party in the manner set forth in Sec. 1.672(c). The supplemental 
affidavits and exhibits shall be accompanied by an index of witnesses 
and an index of exhibits of the type required by Sec. 1.672(b).
    (c) Any request by an opponent to cross-examine on oral deposition 
the affiant of a supplemental affidavit submitted under paragraph (b) of 
this section shall be filed no later than the date set by the 
administrative patent judge for the opponent to file a request to cross-
examine an affiant with respect to an affidavit filed by the party under 
Sec. 1.672 (b) or (c). If any opponent requests cross-examination of an 
affiant, the party shall file a notice of deposition for a reasonable 
location within the United States under Sec. 1.673(e) for the purpose of 
cross-examination by any opponent. Any redirect and recross shall take 
place at the deposition. At any deposition for the purpose of cross-
examination of a witness, the party

[[Page 153]]

shall not be entitled to rely on any document or thing not mentioned in 
one or more of the affidavits filed under this paragraph, except to the 
extent necessary to conduct proper redirect. The party who gives notice 
of a deposition shall be responsible for providing a translator if the 
witness does not testify in English, for obtaining a court reporter, and 
for filing a certified transcript of the deposition as required by 
Sec. 1.676. Within 45 days of the close of the period for taking cross-
examination, the party shall serve (but not file) a copy of each 
deposition transcript on each opponent together with copies of any 
additional documentary exhibits identified by the witness during the 
deposition. The pages of deposition transcripts and exhibits served 
under this paragraph shall be sequentially numbered by the party in the 
manner set forth in Sec. 1.672(d). The deposition transcripts shall be 
accompanied by an index of the names of the witnesses, giving the number 
of the page where cross-examination, redirect and recross of each 
witness begins, and an index of exhibits of the type specified in 
Sec. 1.672(b).
    (d) A party may not rely upon any other matter obtained by discovery 
unless it is introduced into evidence under this subpart.

[60 FR 14535, Mar. 17, 1995]



Sec. 1.690  Arbitration of interferences.

    (a) Parties to a patent interference may determine the interference 
or any aspect thereof by arbitration. Such arbitration shall be governed 
by the provisions of Title 9, United States Code. The parties must 
notify the Board in writing of their intention to arbitrate. An 
agreement to arbitrate must be in writing, specify the issues to be 
arbitrated, the name of the arbitrator or a date not more than thirty 
(30) days after the execution of the agreement for the selection of the 
arbitrator, and provide that the arbitrator's award shall be binding on 
the parties and that judgment thereon can be entered by the Board. A 
copy of the agreement must be filed within twenty (20) days after its 
execution. The parties shall be solely responsible for the selection of 
the arbitrator and the rules for conducting proceedings before the 
arbitrator. Issues not disposed of by the arbitration will be resolved 
in accordance with the procedures established in this subpart, as 
determined by the administrative patent judge.
    (b) An arbitration proceeding under this section shall be conducted 
within such time as may be authorized on a case-by-case basis by an 
administrative patent judge.
    (c) An arbitration award will be given no consideration unless it is 
binding on the parties, is in writing and states in a clear and definite 
manner the issue or issues arbitrated and the disposition of each issue. 
The award may include a statement of the grounds and reasoning in 
support thereof. Unless otherwise ordered by an administrative patent 
judge, the parties shall give notice to the Board of an arbitration 
award by filing within twenty (20) days from the date of the award a 
copy of the award signed by the arbitrator or arbitrators. When an award 
is timely filed, the award shall, as to the parties to the arbitration, 
be dispositive of the issue or issues to which it relates.
    (d) An arbitration award shall not preclude the Office from 
determining patentability of any invention involved in the interference.

[52 FR 13838, Apr. 27, 1987, as amended at 60 FR 14535, Mar. 17, 1995]



                   Subpart F--Extension of Patent Term

    Authority: 35 U.S.C. 6 and 156.

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



Sec. 1.701  Extension of patent term due to prosecution delay.

    (a) A patent, other than for designs, issued on an application filed 
on or after June 8, 1995, is entitled to extension of the patent term if 
the issuance of the patent was delayed due to:
    (1) Interference proceedings under 35 U.S.C. 135(a); and/or
    (2) The application being placed under a secrecy order under 35 
U.S.C. 181; and/or
    (3) Appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued pursuant

[[Page 154]]

to a decision reversing an adverse determination of patentability and if 
the patent is not subject to a terminal disclaimer due to the issuance 
of another patent claiming subject matter that is not patentably 
distinct from that under appellate review.
    (b) The term of a patent entitled to extension under paragraph (a) 
of this section shall be extended for the sum of the periods of delay 
calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this 
section, to the extent that these periods are not overlapping, up to a 
maximum of five years. The extension will run from the expiration date 
of the patent.
    (c)(1) The period of delay under paragraph (a)(1) of this section 
for an application is the sum of the following periods, to the extent 
that the periods are not overlapping:
    (i) With respect to each interference in which the application was 
involved, the number of days, if any, in the period beginning on the 
date the interference was declared or redeclared to involve the 
application in the interference and ending on the date that the 
interference was terminated with respect to the application; and
    (ii) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Patent and Trademark 
Office due to interference proceedings under 35 U.S.C. 135(a) not 
involving the application and ending on the date of the termination of 
the suspension.
    (2) The period of delay under paragraph (a)(2) of this section for 
an application is the sum of the following periods, to the extent that 
the periods are not overlapping:
    (i) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec. 1.193 in the application 
under secrecy order and ending on the date the secrecy order and any 
renewal thereof was removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference would be declared but 
for the secrecy order and ending on the date the secrecy order and any 
renewal thereof was removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) and ending on the date of mailing of 
the notice of allowance under Sec. 1.311.
    (3) The period of delay under paragraph (a)(3) of this section is 
the sum of the number of days, if any, in the period beginning on the 
date on which an appeal to the Board of Patent Appeals and Interferences 
was filed under 35 U.S.C. 134 and ending on the date of a final decision 
in favor of the applicant by the Board of Patent Appeals and 
Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or 
a civil action under 35 U.S.C. 145.
    (d) The period of delay set forth in paragraph (c)(3) shall be 
reduced by:
    (1) Any time during the period of appellate review that occurred 
before three years from the filing date of the first national 
application for patent presented for examination; and
    (2) Any time during the period of appellate review, as determined by 
the Commissioner, during which the applicant for patent did not act with 
due diligence. In determining the due diligence of an applicant, the 
Commissioner may examine the facts and circumstances of the applicant's 
actions during the period of appellate review to determine whether the 
applicant exhibited that degree of timeliness as may reasonably be 
expected from, and which is ordinarily exercised by, a person during a 
period of appellate review.

[60 FR 20228, Apr. 25, 1995]



Sec. 1.710  Patents subject to extension of the patent term.

    (a) A patent is eligible for extension of the patent term if the 
patent claims a product as defined in paragraph (b) of this section, 
either alone or in combination with other ingredients that read on a 
composition that received permission for commercial marketing or use, or 
a method of using such a product, or a method of manufacturing such a 
product, and meets all other conditions and requirements of this 
subpart.
    (b) The term product referred to in paragraph (a) of this section 
means--

[[Page 155]]

    (1) The active ingredient of a new human drug, antibiotic drug, or 
human biological product (as those terms are used in the Federal Food, 
Drug, and Cosmetic Act and the Public Health Service Act) including any 
salt or ester of the active ingredient, as a single entity or in 
combination with another active ingredient; or
    (2) The active ingredient of a new animal drug or veterinary 
biological product (as those terms are used in the Federal Food, Drug, 
and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily 
manufactured using recombinant DNA, recombinant RNA, hybridoma 
technology, or other processes including site specific genetic 
manipulation techniques, including any salt or ester of the active 
ingredient, as a single entity or in combination with another active 
ingredient; or
    (3) Any medical device, food additive, or color additive subject to 
regulation under the Federal Food, Drug, and Cosmetic Act.

[54 FR 30379, July 20, 1989]



Sec. 1.720  Conditions for extension of patent term.

    The term of a patent may be extended if:
    (a) The patent claims a product or a method of using or 
manufacturing a product as defined in Sec. 1.710;
    (b) The term of the patent has never been previously extended except 
for any interim extension issued pursuant to Sec. 1.760;
    (c) An application for extension is submitted in compliance with 
Sec. 1.740;
    (d) The product has been subject to a regulatory review period as 
defined in 35 U.S.C. 156(g) before its commercial marketing or use;
    (e) The product has received permission for commercial marketing or 
use and--
    (1) The permission for the commercial marketing or use of the 
product is the first received permission for commercial marketing or use 
under the provision of law under which the applicable regulatory review 
occurred, or
    (2) In the case of a patent other than one directed to subject 
matter within Sec. 1.710(b)(2) claiming a method of manufacturing the 
product that primarily uses recombinant DNA technology in the 
manufacture of the product, the permission for the commercial marketing 
or use is the first received permission for the commercial marketing or 
use of a product manufactured under the process claimed in the patent, 
or
    (3) In the case of a patent claiming a new animal drug or a 
veterinary biological product that is not covered by the claims in any 
other patent that has been extended, and has received permission for the 
commercial marketing or use in non-food-producing animals and in food-
producing animals, and was not extended on the basis of the regulatory 
review period for use in non-food-producing animals, the permission for 
the commercial marketing or use of the drug or product after the 
regulatory review period for use in food-producing animals is the first 
permitted commercial marketing or use of the drug or product for 
administration to a food-producing animal.
    (f) The application is submitted within the sixty-day period 
beginning on the date the product first received permission for 
commercial marketing or use under the provisions of law under which the 
applicable regulatory review period occurred; or in the case of a patent 
claiming a method of manufacturing the product which primarily uses 
recombinant DNA technology in the manufacture of the product, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of a product manufactured under the process claimed in the patent; or in 
the case of a patent that claims a new animal drug or a veterinary 
biological product that is not covered by the claims in any other patent 
that has been extended, and said drug or product has received permission 
for the commercial marketing or use in non-food-producing animals, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of the drug or product for administration to a food-producing animal;
    (g) The term of the patent has not expired before the submission of 
an application in compliance with Sec. 1.741; and

[[Page 156]]

    (h) No other patent term has been extended for the same regulatory 
review period for the product.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989]



Sec. 1.730  Applicant for extension of patent term.

    Any application for extension of a patent term must be submitted by 
the owner of record of the patent or its agent and must comply with the 
requirements of Sec. 1.740.



Sec. 1.740  Application for extension of patent term.

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

[[Page 157]]

Serum-Toxin Act became effective; the date an application for a license 
was submitted under the Virus-Serum-Toxin Act; and the date the license 
issued;
    (iv) For a patent claiming a food or color additive, the date a 
major health or environmental effects test on the additive was initiated 
and any available substantiation of that date; the date on which a 
petition for product approval under the Federal Food, Drug, and Cosmetic 
Act was initially submitted and the petition number; and the date on 
which the FDA published the Federal Register notice listing the additive 
for use;
    (v) For a patent claiming a medical device, the effective date of 
the investigational device exemption (IDE) and the IDE number, if 
applicable, or the date on which the applicant began the first clinical 
investigation involving the device if no IDE was submitted and any 
available substantiation of that date; the date on which the application 
for product approval or notice of completion of a product development 
protocol under section 515 of the Federal Food, Drug, and Cosmetic Act 
was initially submitted and the number of the application or protocol; 
and the date on which the application was approved or the protocol 
declared to be completed.
    (11) A brief description beginning on a new page of the significant 
activities undertaken by the marketing applicant during the applicable 
regulatory review period with respect to the approved product and the 
significant dates applicable to such activities;
    (12) A statement beginning on a new page that in the opinion of the 
applicant the patent is eligible for the extension and a statement as to 
the length of extension claimed, including how the length of extension 
was determined;
    (13) A statement that applicant acknowledges a duty to disclose to 
the Commissioner of Patents and Trademarks and the Secretary of Health 
and Human Services or the Secretary of Agriculture any information which 
is material to the determination of entitlement to the extension sought 
(see Sec. 1.765);
    (14) The prescribed fee for receiving and acting upon the 
application for extension (see Sec. 1.20(j)).
    (15) The name, address, and telephone number of the person to whom 
inquiries and correspondence relating to the application for patent term 
extension are to be directed;
    (16) A duplicate of the application papers, certified as such; and
    (17) An oath or declaration as set forth in paragraph (b) of this 
section.
    (b) Any oath or declaration submitted in compliance with paragraph 
(a) of this section must be signed by the owner of record of the patent 
or its agent, specifically identify the papers and the patent for which 
an extension is sought and aver that the person signing the oath or 
declaration:
    (1) Is the owner, an official of a corporate owner authorized to 
obligate the corporation, or a patent attorney or agent authorized to 
practice before the Patent and Trademark Office and who has general 
authority from the owner to act on behalf of the owner in patent 
matters.
    (2) Has reviewed and understands the contents of the application 
being submitted pursuant to this section;
    (3) Believes the patent is subject to extension pursuant to 
Sec. 1.710;
    (4) Believes an extension of the length claimed is justified under 
35 U.S.C. 156 and the applicable regulations; and
    (5) Believes the patent for which the extension is being sought 
meets the conditions for extension of the term of a patent as set forth 
in Sec. 1.720.
    (c) If any application for extension of patent term submitted 
pursuant to this section is held to be informal, applicant may seek to 
have that holding reviewed by filing a petition with the required fee, 
as necessary, pursuant to Sec. 1.181, Sec. 1.182 or Sec. 1.183, as 
appropriate, within such time as may be set in the notice that the 
application has been held to be informal, or if no time is set, within 
one month of the date on which the application was held informal. The 
time periods set forth herein are subject to the provisions of 37 CFR 
1.136.

[54 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 56 
FR 65155, Dec. 13, 1991]

[[Page 158]]



Sec. 1.741  Filing date of application.

    (a) The filing date of an application for extension of a patent term 
is the date on which a complete application is received in the Patent 
and Trademark Office or filed pursuant to the ``Certificate of Mailing 
or Transmission'' procedures of 37 CFR 1.8 or ``Express Mail'' 
provisions of 37 CFR 1.10. A complete application shall include:
    (1) An identification of the approved product;
    (2) An identification of each Federal statute under which regulatory 
review occurred;
    (3) An identification of the patent for which an extension is being 
sought;
    (4) An identification of each claim of the patent which claims the 
approved product or a method of using or manufacturing the approved 
product;
    (5) Sufficient information to enable the Commissioner to determine 
under 35 U.S.C. 156 subsections (a) and (b) the eligibility of a patent 
for extension and the rights that will be derived from the extension and 
information to enable the Commissioner and the Secretary of Health and 
Human Services or the Secretary of Agriculture to determine the length 
of the regulatory review period; and
    (6) A brief description of the activities undertaken by the 
marketing applicant during the applicable regulatory review period with 
respect to the approved product and the significant dates applicable to 
such activities.
    (b) If any application submitted pursuant to this section is held to 
be incomplete, applicant may seek to have this holding reviewed under 
Sec. 1.181.

[52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61 
FR 64028, Dec. 3, 1996]



Sec. 1.750  Determination of eligibility for extension of patent term.

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

[60 FR 25618, May 12, 1995]



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

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

[52 FR 9394, Mar. 24, 1987, as amended at 60 FR 25618, May 12, 1995]

[[Page 159]]



Sec. 1.765  Duty of disclosure in patent term extension proceedings.

    (a) A duty of candor and good faith toward the Patent and Trademark 
Office and the Secretary of Health and Human Services or the Secretary 
of Agriculture rests on the patent owner or its agent, on each attorney 
or agent who represents the patent owner and on every other individual 
who is substantively involved on behalf of the patent owner in a patent 
term extension proceeding. All such individuals who are aware, or become 
aware, of material information adverse to a determination of entitlement 
to the extension sought, which has not been previously made of record in 
the patent term extension proceeding must bring such information to the 
attention of the Office or the Secretary, as appropriate, in accordance 
with paragraph (b) of this section, as soon as it is practical to do so 
after the individual becomes aware of the information. Information is 
material where there is a substantial likelihood that the Office or the 
Secretary would consider it important in determinations to be made in 
the patent term extension proceeding.
    (b) Disclosures pursuant to this section must be accompanied by a 
copy of each written document which is being disclosed. The disclosure 
must be made to the Office or the Secretary, as appropriate, unless the 
disclosure is material to determinations to be made by both the Office 
and the Secretary, in which case duplicate copies, certified as such, 
must be filed in the Office and with the Secretary. Disclosures pursuant 
to this section may be made to the Office or the Secretary, as 
appropriate, through an attorney or agent having responsibility on 
behalf of the patent owner or its agent for the patent term extension 
proceeding or through a patent owner acting on his or her own behalf. 
Disclosure to such an attorney, agent or patent owner shall satisfy the 
duty of any other individual. Such an attorney, agent or patent owner 
has no duty to transmit information which is not material to the 
determination of entitlement to the extension sought.
    (c) No patent will be determined eligible for extension and no 
extension will be issued if it is determined that fraud on the Office or 
the Secretary was practiced or attempted or the duty of disclosure was 
violated through bad faith or gross negligence in connection with the 
patent term extension proceeding. If it is established by clear and 
convincing evidence that any fraud was practiced or attempted on the 
Office or the Secretary in connection with the patent term extension 
proceeding or that there was any violation of the duty of disclosure 
through bad faith or gross negligence in connection with the patent term 
extension proceeding, a final determination will be made pursuant to 
Sec. 1.750 that the patent is not eligible for extension.
    (d) The duty of disclosure pursuant to this section rests on the 
individuals identified in paragraph (a) of this section and no 
submission on behalf of third parties, in the form of protests or 
otherwise, will be considered by the Office. Any such submissions by 
third parties to the Office will be returned to the party making the 
submission, or otherwise disposed of, without consideration by the 
Office.

[24 FR 10332, Dec. 22, 1959, as amended at 54 FR 30381, July 20, 1989; 
60 FR 25618, May 12, 1995]



Sec. 1.770  Express withdrawal of application for extension of patent term.

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

[62 FR 53201, Oct. 10, 1997]

[[Page 160]]



Sec. 1.775  Calculation of patent term extension for a human drug, antibiotic drug or human biological product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a human drug, antibiotic drug or human biological product is 
eligible for extension, the term shall be extended by the time as 
calculated in days in the manner indicated by this section. The patent 
term extension will run from the original expiration date of the patent 
or any earlier date set by terminal disclaimer (Sec. 1.321).
    (b) The term of the patent for a human drug, antibiotic drug or 
human biological product will be extended by the length of the 
regulatory review period for the product as determined by the Secretary 
of Health and Human Services, reduced as appropriate pursuant to 
paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a human drug, 
antibiotic drug or human biological product will be determined by the 
Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it 
is the sum of--
    (1) The number of days in the period beginning on the date an 
exemption under subsection (i) of section 505 or subsection (d) of 
section 507 of the Federal Food, Drug, and Cosmetic Act became effective 
for the approved product and ending on the date the application was 
initially submitted for such product under those sections or under 
section 351 of the Public Health Service Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved product under 
section 351 of the Public Health Service Act, subsection (b) of section 
505 or section 507 of the Federal Food, Drug, and Cosmetic Act and 
ending on the date such application was approved under such section.
    (d) The term of the patent as extended for a human drug, antibiotic 
drug or human biological product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 351 of the Public Health Service Act, or subsection (b) of 
section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or any earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no request was submitted for an exemption under subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug, and Cosmetic Act before September 24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or

[[Page 161]]

    (ii) If a request was submitted for an exemption under subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug, or Cosmetic Act before September 24, 1984 and the commercial 
marketing or use of the product was not approved before September 24, 
1984, by--
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30381, July 20, 1989]



Sec. 1.776  Calculation of patent term extension for a food additive or color additive.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a food additive or color additive is eligible for extension, the 
term shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or earlier date set by terminal 
disclaimer (Sec. 1.321).
    (b) The term of the patent for a food additive or color additive 
will be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Health and Human Services, 
reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of 
this section.
    (c) The length of the regulatory review period for a food additive 
or color additive will be determined by the Secretary of Health and 
Human Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of--
    (1) The number of days in the period beginning on the date a major 
health or environmental effects test on the additive was initiated and 
ending on the date a petition was initially submitted with respect to 
the approved product under the Federal Food, Drug, and Cosmetic Act 
requesting the issuance of a regulation for use of the product; and
    (2) The number of days in the period beginning on the date a 
petition was initially submitted with respect to the approved product 
under the Federal Food, Drug, and Cosmetic Act requesting the issuance 
of a regulation for use of the product, and ending on the date such 
regulation became effective or, if objections were filed to such 
regulation, ending on the date such objections were resolved and 
commercial marketing was permitted or, if commercial marketing was 
permitted and later revoked pending further proceedings as a result of 
such objections, ending on the date such proceedings were finally 
resolved and commercial marketing was permitted.
    (d) The term of the patent as extended for a food additive or color 
additive will be determined by
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) The number of days equal to one-half the number of days 
remaining in the period defined by paragraph (c)(1) of this section 
after that period is reduced in accordance with paragraphs (d)(1) (i) 
and (ii) of this section; half days will be ignored for purposes of 
subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date a regulation for use of the 
product became effective or, if objections were filed to such 
regulation, to the date such objections were resolved and commercial 
marketing was permitted or, if commercial marketing was permitted and 
later revoked pending further proceedings as a result of such 
objections, to the date such proceedings were finally resolved and 
commercial marketing was permitted;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant

[[Page 162]]

to paragraphs (d)(2) and (d)(3) of this section with each other and 
selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no major health or environmental effects test was initiated 
and no petition for a regulation or application for registration was 
submitted before September 24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a major health or environmental effects test was initiated 
or a petition for a regulation or application for registration was 
submitted by September 24, 1984, and the commercial marketing or use of 
the product was not approved before September 24, 1984, by--
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.



Sec. 1.777  Calculation of patent term extension for a medical device.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a medical device is eligible for extension, the term shall be 
extended by the time as calculated in days in the manner indicated by 
this section. The patent term extension will run from the original 
expiration date of the patent or earlier date as set by terminal 
disclaimer (Sec. 1.321).
    (b) The term of the patent for a medical device will be extended by 
the length of the regulatory review period for the product as determined 
by the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a medical device 
will be determined by the Secretary of Health and Human Services. Under 
35 U.S.C. 156(g)(3)(B), it is the sum of
    (1) The number of days in the period beginning on the date a 
clinical investigation on humans involving the device was begun and 
ending on the date an application was initially submitted with respect 
to the device under section 515 of the Federal Food, Drug, and Cosmetic 
Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted with respect to the device under 
section 515 of the Federal Food, Drug, and Cosmetic Act, and ending on 
the date such application was approved under such Act or the period 
beginning on the date a notice of completion of a product development 
protocol was initially submitted under section 515(f)(5) of the Act and 
ending on the date the protocol was declared completed under section 
515(f)(6) of the Act.
    (d) The term of the patent as extended for a medical device will be 
determined by--
    (1) Substracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period 
pursuant to paragraph (c) of this section:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent

[[Page 163]]

as shortened by any terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 515 of the Federal Food, Drug, and Cosmetic Act or the 
date a product development protocol was declared completed under section 
515(f)(6) of the Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no clinical investigation on humans involving the device was 
begun or no product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a clinical investigation on humans involving the device was 
begun or a product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984 and the commercial marketing or use of the product was not 
approved before September 24, 1984, by
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.



Sec. 1.778  Calculation of patent term extension for an animal drug product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for an animal drug is eligible for extension, the term shall be extended 
by the time as calculated in days in the manner indicated by this 
section. The patent term extension will run from the original expiration 
date of the patent or any earlier date set by terminal disclaimer 
(Sec. 1.321).
    (b) The term of the patent for an animal drug will be extended by 
the length of the regulatory review period for the drug as determined by 
the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for an animal drug 
will be determined by the Secretary of Health and Human Services. Under 
35 U.S.C. 156(g)(4)(B), it is the sum of--
    (1) The number of days in the period beginning on the earlier of the 
date a major health or environmental effects test on the drug was 
initiated or the date an exemption under subsection (j) of section 512 
of the Federal Food, Drug, and Cosmetic Act became effective for the 
approved animal drug and ending on the date an application was initially 
submitted for such animal drug under section 512 of the Federal Food, 
Drug, and Cosmetic Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved animal drug under 
subsection (b) of section 512 of the Federal Food, Drug, and Cosmetic 
Act and ending on the date such application was approved under such 
section.
    (d) The term of the patent as extended for an animal drug will be 
determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section that were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;

[[Page 164]]

    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 512 of the Federal Food, Drug, and Cosmetic Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no major health or environmental effects test on the drug was 
initiated and no request was submitted for an exemption under subsection 
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a major health or environmental effects test was initiated 
or a request for an exemption under subsection (j) of section 512 of the 
Federal Food, Drug, and Cosmetic Act was submitted before November 16, 
1988, and the application for commercial marketing or use of the animal 
drug was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

[54 FR 30381, July 20, 1989]



Sec. 1.779  Calculation of patent term extension for a veterinary biological product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a veterinary biological product is eligible for extension, the term 
shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or any earlier date set by 
terminal disclaimer (Sec. 1.321).
    (b) The term of the patent for a veterinary biological product will 
be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Agriculture, reduced as 
appropriate pursuant to paragraphs (d)(1) through (d)(6) of this 
section.
    (c) The length of the regulatory review period for a veterinary 
biological product will be determined by the Secretary of Agriculture. 
Under 35 U.S.C. 156(g)(5)(B), it is the sum of--
    (1) The number of days in the period beginning on the date the 
authority to prepare an experimental biological product under the Virus-
Serum-Toxin Act became effective and ending on the date an application 
for a license was submitted under the Virus-Serum-Toxin Act; and
    (2) The number of days in the period beginning on the date an 
application for a license was initially submitted for approval under the 
Virus-Serum-Toxin Act and ending on the date such license was issued.
    (d) The term of the patent as extended for a veterinary biological 
product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Agriculture to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this

[[Page 165]]

section that were on and before the date on which the patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Agriculture that applicant did not act 
with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of the issuance of a license 
under the Virus-Serum-Toxin Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, and the commercial marketing or use of the product 
was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30382, July 20, 1989]



Sec. 1.780  Certificate of extension of patent term.

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

[60 FR 25618, May 12, 1995]



Sec. 1.785  Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.

    (a) Only one patent may be extended for a regulatory review period 
for any product (Sec. 1.720(h)). If more than one application for 
extension of the same patent is filed, the certificate of extension of 
patent term, if appropriate, will be issued based upon the first filed 
application for extension.
    (b) If more than one application for extension is filed by a single 
applicant

[[Page 166]]

which seeks the extension of the term of two or more patents based upon 
the same regulatory review period, and the patents are otherwise 
eligible for extension pursuant to the requirements of this subpart, in 
the absence of an election by the applicant, the certificate of 
extension of patent term, if appropriate, will be issued upon the 
application for extension of the patent term having the earliest date of 
issuance of those patents for which extension is sought.
    (c) If an application for extension is filed which seeks the 
extension of the term of a patent based upon the same regulatory review 
period as that relied upon in one or more applications for extension 
pursuant to the requirements of this subpart, the certificate of 
extension of patent term will be issued on the application only if the 
patent owner or its agent is the holder of the regulatory approval 
granted with respect to the regulatory review period.
    (d) An application for extension shall be considered complete and 
formal regardless of whether it contains the identification of the 
holder of the regulatory approval granted with respect to the regulatory 
review period. When an application contains such information, or is 
amended to contain such information, it will be considered in 
determining whether an application is eligible for an extension under 
this section. A request may be made of any applicant to supply such 
information within a non-extendable period of not less than one month 
whenever multiple applications for extension of more than one patent are 
received and rely upon the same regulatory review period. Failure to 
provide such information within the period for reply set shall be 
regarded as conclusively establishing that the applicant is not the 
holder of the regulatory approval.
    (e) Determinations made under this section shall be included in the 
notice of final determination of eligibility for extension of the patent 
term pursuant to Sec. 1.750 and shall be regarded as part of that 
determination.

[60 FR 25618, May 12, 1995, as amended at 62 FR 53201, Oct. 10, 1997]



Sec. 1.790  Interim extension of patent term under 35 U.S.C. 156(d)(5).

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

[60 FR 25619, May 12, 1995]



Sec. 1.791  Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.

    Any interim extension granted under 35 U.S.C. 156(d)(5) terminates 
at the end of the 60-day period beginning on the

[[Page 167]]

date on which the product involved receives permission for commercial 
marketing or use. If within that 60-day period the patent owner or its 
agent files an application for extension under Secs. 1.740 and 1.741 
including any additional information required under 35 U.S.C. 156(d)(1) 
not contained in the application for interim extension, the patent shall 
be further extended in accordance with the provisions of 35 U.S.C. 156.

[60 FR 25619, May 12, 1995]



             Subpart G--Biotechnology Invention Disclosures

                     Deposit of Biological Material

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



Sec. 1.801  Biological material.

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



Sec. 1.802  Need or opportunity to make a deposit.

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



Sec. 1.803  Acceptable depository.

    (a) A deposit shall be recognized for the purposes of these 
regulations if made in
    (1) Any International Depositary Authority (IDA) as established 
under the Budapest Treaty on the International Recognition of the 
Deposit of Microorganisms for the Purposes of Patent Procedure, or
    (2) Any other depository recognized to be suitable by the Office. 
Suitability will be determined by the Commissioner on the basis of the 
administrative and technical competence, and agreement of the depository 
to comply with the terms and conditions applicable to deposits for 
patent purposes. The Commissioner may seek the advice of impartial 
consultants on the suitability of a depository. The depository must:
    (i) Have a continuous existence;
    (ii) Exist independent of the control of the depositor;
    (iii) Possess the staff and facilities sufficient to examine the 
viability of a deposit and store the deposit in a manner which ensures 
that it is kept viable and uncontaminated;
    (iv) Provide for sufficient safety measures to minimize the risk of 
losing biological material deposited with it;
    (v) Be impartial and objective;
    (vi) Furnish samples of the deposited material in an expeditious and 
proper manner; and

[[Page 168]]

    (vii) Promptly notify depositors of its inability to furnish 
samples, and the reasons why.
    (b) A depository seeking status under paragraph (a)(2) of this 
section must direct a communication to the Commissioner which shall:
    (1) Indicate the name and address of the depository to which the 
communication relates;
    (2) Contain detailed information as to the capacity of the 
depository to comply with the requirements of paragraph (a)(2) of this 
section, including information on its legal status, scientific standing, 
staff and facilities;
    (3) Indicate that the depository intends to be available, for the 
purposes of deposit, to any depositor under these same conditions;
    (4) Where the depository intends to accept for deposit only certain 
kinds of biological material, specify such kinds;
    (5) Indicate the amount of any fees that the depository will, upon 
acquiring the status of suitable depository under paragraph (a)(2) of 
this section, charge for storage, viability statements and furnishings 
of samples of the deposit.
    (c) A depository having status under paragraph (a)(2) of this 
section limited to certain kinds of biological material may extend such 
status to additional kinds of biological material by directing a 
communication to the Commissioner in accordance with paragraph (b) of 
this section. If a previous communication under paragraph (b) of this 
section is of record, items in common with the previous communication 
may be incorporated by reference.
    (d) Once a depository is recognized to be suitable by the 
Commissioner or has defaulted or discontinued its performance under this 
section, notice thereof will be published in the Office Gazette of the 
Patent and Trademark Office.



Sec. 1.804  Time of making an original deposit.

    (a) Whenever a biological material is specifically identified in an 
application for patent as filed, an original deposit thereof may be made 
at any time before filing the application for patent or, subject to 
Sec. 1.809, during pendency of the application for patent.
    (b) When the original deposit is made after the effective filing 
date of an application for patent, the applicant must promptly submit a 
statement from a person in a position to corroborate the fact, stating 
that the biological material which is deposited is a biological material 
specifically identified in the application as filed.

[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]



Sec. 1.805  Replacement or supplement of deposit.

    (a) A depositor, after receiving notice during the pendency of an 
application for patent, application for reissue patent or reexamination 
proceeding, that the depository possessing a deposit either cannot 
furnish samples thereof or can furnish samples thereof but the deposit 
has become contaminated or has lost its capability to function as 
described in the specification, shall notify the Office in writing, in 
each application for patent or patent affected. In such a case, or where 
the Office otherwise learns, during the pendency of an application for 
patent, application for reissue patent or reexamination proceeding, that 
the depository possessing a deposit either cannot furnish samples 
thereof or can furnish samples thereof but the deposit has become 
contaminated or has lost its capability to function as described in the 
specification, the need for making a replacement or supplemental deposit 
will be governed by the same considerations governing the need for 
making an original deposit under the provisions set forth in 
Sec. 1.802(b). A replacement or supplemental deposit made during the 
pendency of an application for patent shall not be accepted unless it 
meets the requirements for making an original deposit under these 
regulations, including the requirement set forth under Sec. 1.804(b). A 
replacement or supplemental deposit made in connection with a patent, 
whether or not made during the pendency of an application for reissue 
patent or a reexamination proceeding or both, shall not be accepted 
unless a certificate of correction under Sec. 1.323 is requested by the 
patent owner which meets the terms of paragraphs (b) and (c) of this 
section.

[[Page 169]]

    (b) A request for certificate of correction under this section shall 
not be granted unless the certificate identifies:
    (1) The accession number for the replacement or supplemental 
deposit;
    (2) The date of the deposit; and
    (3) The name and address of the depository.
    (c) A request for a certificate of correction under this section 
shall not be granted unless the request is made promptly after the 
replacement or supplemental deposit has been made and the request:
    (1) Includes a statement of the reason for making the replacement or 
supplemental deposit;
    (2) Includes a statement from a person in a position to corroborate 
the fact, and stating that the replacement or supplemental deposit is of 
a biological material which is identical to that originally deposited;
    (3) Includes a showing that the patent owner acted diligently--
    (i) In the case of a replacement deposit, in making the deposit 
after receiving notice that samples could no longer be furnished from an 
earlier deposit; or
    (ii) In the case of a supplemental deposit, in making the deposit 
after receiving notice that the earlier deposit had become contaminated 
or had lost its capability to function as described in the 
specification;
    (4) Includes a statement that the term of the replacement or 
supplemental deposit expires no earlier than the term of the deposit 
being replaced or supplemented; and
    (5) Otherwise establishes compliance with these regulations.
    (d) A depositor's failure to replace a deposit, or in the case of a 
patent, to diligently replace a deposit and promptly thereafter request 
a certificate of correction which meets the terms of paragraphs (b) and 
(c) of this section, after being notified that the depository possessing 
the deposit cannot furnish samples thereof, shall cause the application 
or patent involved to be treated in any Office proceeding as if no 
deposit were made.
    (e) In the event a deposit is replaced according to these 
regulations, the Office will apply a rebuttable presumption of identity 
between the original and the replacement deposit where a patent making 
reference to the deposit is relied upon during any Office proceeeding.
    (f) A replacement or supplement deposit made during the pendency of 
an application for patent may be made for any reason.
    (g) In no case is a replacement or supplemental deposit of a 
biological material necessary where the biological material, in 
accordance with Sec. 1.802(b), need not be deposited.
    (h) No replacement deposit of a biological material is necessary 
where a depository can furnish samples thereof but the depository for 
national security, health or environmental safety reasons is unable to 
provide samples to requesters outside of the jurisdiction where the 
depository is located.
    (i) The Office will not recognize in any Office proceeding a 
replacement deposit of a biological material made by a patent owner 
where the depository could furnish samples of the deposit being 
replaced.

[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]



Sec. 1.806  Term of deposit.

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



Sec. 1.807  Viability of deposit.

    (a) A deposit of biological material that is capable of self-
replication either directly or indirectly must be viable at the time of 
deposit and during the term of deposit. Viability may be tested by the 
depository. The test must conclude only that the deposited material is 
capable of reproduction. No evidence is necessarily required regarding 
the ability of the deposited material to perform any function described 
in the patent application.

[[Page 170]]

    (b) A viability statement for each deposit of a biological material 
defined in paragraph (a) of this section not made under the Budapest 
Treaty on the International Recognition of the Deposit of Microorganisms 
for the Purposes of Patent Procedure must be filed in the application 
and must contain:
    (1) The name and address of the depository;
    (2) The name and address of the depositor;
    (3) The date of deposit;
    (4) The identity of the deposit and the accession number given by 
the depository;
    (5) The date of the viability test;
    (6) The procedures used to obtain a sample if the test is not done 
by the depository; and
    (7) A statement that the deposit is capable of reproduction.
    (c) If a viability test indicates that the deposit is not viable 
upon receipt, or the examiner cannot, for scientific or other valid 
reasons, accept the statement of viability received from the applicant, 
the examiner shall proceed as if no deposit has been made. The examiner 
will accept the conclusion set forth in a viability statement issued by 
a depository recognized under Sec. 1.803(a).



Sec. 1.808  Furnishing of samples.

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



Sec. 1.809  Examination procedures.

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

[[Page 171]]

responsive. The rejection will be repeated until either paragraph (b)(1) 
of this section is satisfied or the examiner is convinced that a deposit 
is not needed.
    (c) If an application for patent is otherwise in condition for 
allowance except for a needed deposit and the Office has received a 
written assurance that an acceptable deposit will be made on or before 
payment of the issue fee, the Office will mail to the applicant a Notice 
of Allowance and Issue Fee Due together with a requirement that the 
needed deposit be made within three months. The period for satisfying 
this requirement is extendable under Sec. 1.136. Failure to make the 
needed deposit in accordance with this requirement will result in 
abandonment of the application for failure to prosecute.
    (d) For each deposit made pursuant to these regulations, the 
specification shall contain:
    (1) The accession number for the deposit;
    (2) The date of the deposit;
    (3) A description of the deposited biological material sufficient to 
specifically identify it and to permit examination; and
    (4) The name and address of the depository.

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

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



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

    (a) Nucleotide and/or amino acid sequences as used in Secs. 1.821 
through 1.825 are interpreted to mean an unbranched sequence of four or 
more amino acids or an unbranched sequence of ten or more nucleotides. 
Branched sequences are specifically excluded from this definition. 
Sequences with fewer than four specifically defined nucleotides or amino 
acids are specifically excluded from this section. ``Specifically 
defined'' means those amino acids other than ``Xaa'' and those 
nucleotide bases other than ``n'' defined in accordance with the World 
Intellectual Property Organization (WIPO) Handbook on Industrial 
Property Information and Documentation, Standard ST.25: Standard for the 
Presentation of Nucleotide and Amino Acid Sequence Listings in Patent 
Applications (1998), including Tables 1 through 6 in Appendix 2, herein 
incorporated by reference. (Hereinafter ``WIPO Standard ST.25 (1998)''). 
This incorporation by reference was approved by the Director of the 
Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. 
Copies of WIPO Standard ST.25 (1998) may be obtained from the World 
Intellectual Property Organization; 34 chemin des Colombettes; 1211 
Geneva 20 Switzerland. Copies of ST.25 may be inspected at the Patent 
Search Room; Crystal Plaza 3, Lobby Level; 2021 South Clark Place; 
Arlington, VA 22202. Copies may also be inspected at the Office of the 
Federal Register, 800 North Capitol Street, NW, Suite 700, Washington, 
DC. Nucleotides and amino acids are further defined as follows:
    (1) Nucleotides: Nucleotides are intended to embrace only those 
nucleotides that can be represented using the symbols set forth in WIPO 
Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., 
methylated bases, may be described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 2, but shall not be shown explicitly in the 
nucleotide sequence.
    (2) Amino acids: Amino acids are those L-amino acids commonly found 
in naturally occurring proteins and are listed in WIPO Standard ST.25 
(1998), Appendix 2, Table 3. Those amino acid sequences containing D-
amino acids are not intended to be embraced by this definition. Any 
amino acid sequence that contains post-translationally modified amino 
acids may be described as the amino acid sequence that is initially 
translated using the symbols shown in WIPO Standard ST.25 (1998), 
Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or 
glycosylations, being described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 4, but these modifications shall not be shown 
explicitly in the amino acid sequence. Any peptide or protein that can 
be expressed as a sequence using the symbols in WIPO Standard

[[Page 172]]

ST.25 (1998), Appendix 2, Table 3 in conjunction with a description in 
the Feature section to describe, for example, modified linkages, cross 
links and end caps, non-peptidyl bonds, etc., is embraced by this 
definition.
    (b) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences, in accordance with the definition in paragraph 
(a) of this section, shall, with regard to the manner in which the 
nucleotide and/or amino acid sequences are presented and described, 
conform exclusively to the requirements of Secs. 1.821 through 1.825.
    (c) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences must contain, as a separate part of the 
disclosure, a paper copy disclosing the nucleotide and/or amino acid 
sequences and associated information using the symbols and format in 
accordance with the requirements of Secs. 1.822 and 1.823. This paper 
copy is hereinafter referred to as the ``Sequence Listing.'' Each 
sequence disclosed must appear separately in the ``Sequence Listing.'' 
Each sequence set forth in the ``Sequence Listing'' shall be assigned a 
separate sequence identifier. The sequence identifiers shall begin with 
1 and increase sequentially by integers. If no sequence is present for a 
sequence identifier, the code ``000'' shall be used in place of the 
sequence. The response for the numeric identifier 160> shall include the 
total number of SEQ ID NOs, whether followed by a sequence or by the 
code ``000.''
    (d) Where the description or claims of a patent application discuss 
a sequence that is set forth in the ``Sequence Listing'' in accordance 
with paragraph (c) of this section, reference must be made to the 
sequence by use of the sequence identifier, preceded by ``SEQ ID NO:'' 
in the text of the description or claims, even if the sequence is also 
embedded in the text of the description or claims of the patent 
application.
    (e) A copy of the ``Sequence Listing'' referred to in paragraph (c) 
of this section must also be submitted in computer readable form in 
accordance with the requirements of Sec. 1.824. The computer readable 
form is a copy of the ``Sequence Listing'' and will not necessarily be 
retained as a part of the patent application file. If the computer 
readable form of a new application is to be identical with the computer 
readable form of another application of the applicant on file in the 
Patent and Trademark Office, reference may be made to the other 
application and computer readable form in lieu of filing a duplicate 
computer readable form in the new application if the computer readable 
form in the other application was compliant with all of the requirements 
of these rules. The new application shall be accompanied by a letter 
making such reference to the other application and computer readable 
form, both of which shall be completely identified. In the new 
application, applicant must also request the use of the compliant 
computer readable ``Sequence Listing'' that is already on file for the 
other application and must state that the paper copy of the ``Sequence 
Listing'' in the new application is identical to the computer readable 
copy filed for the other application.
    (f) In addition to the paper copy required by paragraph (c) of this 
section and the computer readable form required by paragraph (e) of this 
section, a statement that the content of the paper and computer readable 
copies are the same must be submitted with the computer readable form, 
e.g., a statement that ``the information recorded in computer readable 
form is identical to the written sequence listing.''
    (g) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing under 35 U.S.C. 111(a) 
or at the time of entering the national stage under 35 U.S.C. 371, 
applicant will be notified and given a period of time within which to 
comply with such requirements in order to prevent abandonment of the 
application. Any submission in reply to a requirement under this 
paragraph must be accompanied by a statement that the submission 
includes no new matter.
    (h) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing an international 
application under the Patent Cooperation Treaty (PCT), which application 
is to be searched by the United States International Searching Authority 
or examined by

[[Page 173]]

the United States International Preliminary Examining Authority, 
applicant will be sent a notice necessitating compliance with the 
requirements within a prescribed time period. Any submission in reply to 
a requirement under this paragraph must be accompanied by a statement 
that the submission does not include matter which goes beyond the 
disclosure in the international application as filed. If applicant fails 
to timely provide the required computer readable form, the United States 
International Searching Authority shall search only to the extent that a 
meaningful search can be performed without the computer readable form 
and the United States International Preliminary Examining Authority 
shall examine only to the extent that a meaningful examination can be 
performed without the computer readable form.

[63 FR 29634, June 1, 1998]



Sec. 1.822  Symbols and format to be used for nucleotide and/or amino acid sequence data.

    (a) The symbols and format to be used for nucleotide and/or amino 
acid sequence data shall conform to the requirements of paragraphs (b) 
through (e) of this section.
    (b) The code for representing the nucleotide and/or amino acid 
sequence characters shall conform to the code set forth in the tables in 
WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This 
incorporation by reference was approved by the Director of the Federal 
Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of 
ST.25 may be obtained from the World Intellectual Property Organization; 
34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies of ST.25 
may be inspected at the Patent Search Room; Crystal Plaza 3, Lobby 
Level; 2021 South Clark Place; Arlington, VA 22202. Copies may also be 
inspected at the Office of the Federal Register, 800 North Capitol 
Street, NW, Suite 700, Washington, DC. No code other than that specified 
in these sections shall be used in nucleotide and amino acid sequences. 
A modified base or modified or unusual amino acid may be presented in a 
given sequence as the corresponding unmodified base or amino acid if the 
modified base or modified or unusual amino acid is one of those listed 
in WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and 4, and the 
modification is also set forth in the Feature section. Otherwise, each 
occurrence of a base or amino acid not appearing in WIPO Standard ST.25 
(1998), Appendix 2, Tables 1 and 3, shall be listed in a given sequence 
as ``n'' or ``Xaa,'' respectively, with further information, as 
appropriate, given in the Feature section, preferably by including one 
or more feature keys listed in WIPO Standard ST.25 (1998), Appendix 2, 
Tables 5 and 6.
    (c) Format representation of nucleotides. (1) A nucleotide sequence 
shall be listed using the lower-case letter for representing the one-
letter code for the nucleotide bases set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 1.
    (2) The bases in a nucleotide sequence (including introns) shall be 
listed in groups of 10 bases except in the coding parts of the sequence. 
Leftover bases, fewer than 10 in number, at the end of noncoding parts 
of a sequence shall be grouped together and separated from adjacent 
groups of 10 or 3 bases by a space.
    (3) The bases in the coding parts of a nucleotide sequence shall be 
listed as triplets (codons). The amino acids corresponding to the codons 
in the coding parts of a nucleotide sequence shall be typed immediately 
below the corresponding codons. Where a codon spans an intron, the amino 
acid symbol shall be typed below the portion of the codon containing two 
nucleotides.
    (4) A nucleotide sequence shall be listed with a maximum of 16 
codons or 60 bases per line, with a space provided between each codon or 
group of 10 bases.
    (5) A nucleotide sequence shall be presented, only by a single 
strand, in the 5 to 3 direction, from left to right.
    (6) The enumeration of nucleotide bases shall start at the first 
base of the sequence with number 1. The enumeration shall be continuous 
through the whole sequence in the direction 5 to 3. The enumeration 
shall be marked in the right margin, next to the line containing the 
one-letter codes for the

[[Page 174]]

bases, and giving the number of the last base of that line.
    (7) For those nucleotide sequences that are circular in 
configuration, the enumeration method set forth in paragraph (c)(6) of 
this section remains applicable with the exception that the designation 
of the first base of the nucleotide sequence may be made at the option 
of the applicant.
    (d) Representation of amino acids. (1) The amino acids in a protein 
or peptide sequence shall be listed using the three-letter abbreviation 
with the first letter as an upper case character, as in WIPO Standard 
ST.25 (1998), Appendix 2, Table 3.
    (2) A protein or peptide sequence shall be listed with a maximum of 
16 amino acids per line, with a space provided between each amino acid.
    (3) An amino acid sequence shall be presented in the amino to 
carboxy direction, from left to right, and the amino and carboxy groups 
shall not be presented in the sequence.
    (4) The enumeration of amino acids may start at the first amino acid 
of the first mature protein, with the number 1. When presented, the 
amino acids preceding the mature protein, e.g., pre-sequences, pro-
sequences, pre-pro-sequences and signal sequences, shall have negative 
numbers, counting backwards starting with the amino acid next to number 
1. Otherwise, the enumeration of amino acids shall start at the first 
amino acid at the amino terminal as number 1. It shall be marked below 
the sequence every 5 amino acids. The enumeration method for amino acid 
sequences that is set forth in this section remains applicable for amino 
acid sequences that are circular in configuration, with the exception 
that the designation of the first amino acid of the sequence may be made 
at the option of the applicant.
    (5) An amino acid sequence that contains internal terminator symbols 
(e.g., ``Ter'', ``*'', or ``.'', etc.) may not be represented as a 
single amino acid sequence, but shall be presented as separate amino 
acid sequences.
    (e) A sequence with a gap or gaps shall be presented as a plurality 
of separate sequences, with separate sequence identifiers, with the 
number of separate sequences being equal in number to the number of 
continuous strings of sequence data. A sequence that is made up of one 
or more noncontiguous segments of a larger sequence or segments from 
different sequences shall be presented as a separate sequence.

[63 FR 29635, June 1, 1998]



Sec. 1.823  Requirements for nucleotide and/or amino acid sequences as part of the application papers.

    (a) The ``Sequence Listing'' required by Sec. 1.821(c), setting 
forth the nucleotide and/or amino acid sequences and associated 
information in accordance with paragraph (b) of this section, must begin 
on a new page and must be titled ``Sequence Listing''. The ``Sequence 
Listing'' preferably should be numbered independently of the numbering 
of the remainder of the application. Each page of the ``Sequence 
Listing'' should contain no more than 66 lines and each line should 
contain no more than 72 characters. A fixed-width font should be used 
exclusively throughout the ``Sequence Listing.''
    (b) The ``Sequence Listing'' shall, except as otherwise indicated, 
include the actual nucleotide and/or amino acid sequence, the numeric 
identifiers and their accompanying information as shown in the following 
table. The numeric identifier shall be used only in the ``Sequence 
Listing.'' The order and presentation of the items of information in the 
``Sequence Listing'' shall conform to the arrangement given below. Each 
item of information shall begin on a new line and shall begin with the 
numeric identifier enclosed in angle brackets as shown. The submission 
of those items of information designated with an ``M'' is mandatory. The 
submission of those items of information designated with an ``O'' is 
optional. Numeric identifiers 110> through 170> shall only be set forth 
at the beginning of the ``Sequence Listing.'' The following table 
illustrates the numeric identifiers.

[[Page 175]]



----------------------------------------------------------------------------------------------------------------
                                                                                      Mandatory (M) or optional
    Numeric identifier            Definition              Comments and format                   (O).
----------------------------------------------------------------------------------------------------------------
110>.....................  Applicant...............  Preferably max. of 10 names;   M.
                                                      one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
120>.....................  Title of Invention......  .............................  M.
130>.....................  File Reference..........  Personal file reference......  M when filed prior to
                                                                                     assignment of appl. number.
140>.....................  Current Application       Specify as: US 07/999,999 or   M, if available.
                            Number.                   PCT/US96/99999.
141>.....................  Current Filing Date.....  Specify as: yyyy-mm-dd.......  M, if available.
150>.....................  Prior Application Number  Specify as: US 07/999,999 or   M, if applicable include
                                                      PCT/US96/99999.                priority documents under 35
                                                                                     USC 119 and 120.
151>.....................  Prior Application Filing  Specify as: yyyy-mm-dd.......  M, if applicable.
                            Date.
160>.....................  Number of SEQ ID NOs....  Count includes total number    M.
                                                      of SEQ ID NOs.
170>.....................  Software................  Name of software used to       O.
                                                      create the Sequence Listing.
210>.....................  SEQ ID NO:#:............  Response shall be an integer   M.
                                                      representing the SEQ ID NO
                                                      shown.
211>.....................  Length..................  Respond with an integer        M.
                                                      expressing the number of
                                                      bases or amino acid residues.
212>.....................  Type....................  Whether presented sequence     M.
                                                      molecule is DNA, RNA, or PRT
                                                      (protein). If a nucleotide
                                                      sequence contains both DNA
                                                      and RNA fragments, the type
                                                      shall be ``DNA.'' In
                                                      addition, the combined DNA/
                                                      RNA molecule shall be
                                                      further described in the
                                                      220> to 223> feature section.
213>.....................  Organism................  Scientific name, i.e. Genus/   M
                                                      species, Unknown or
                                                      Artificial Sequence. In
                                                      addition, the ``Unknown'' or
                                                      ``Artificial Sequence''
                                                      organisms shall be further
                                                      described in the 220> to
                                                      223> feature section.
220>.....................  Feature.................  Leave blank after 220>. 221-   M, under the following
                                                      223> provide for a             conditions: if ``n,''
                                                      description of points of       ``Xaa,'' or a modified or
                                                      biological significance in     unusual L-amino acid or
                                                      the sequence..                 modified base was used in a
                                                                                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown'; if molecule is
                                                                                     combined DNA/RNA''
221>.....................  Name/Key................  Provide appropriate            M, under the following
                                                      identifier for feature,        conditions: if ``n,''
                                                      preferably from WIPO           ``Xaa,'' or a modified or
                                                      Standard ST.25 (1998),         unusual L-amino acid or
                                                      Appendix 2, Tables 5 and 6.    modified base was used in a
                                                                                     sequence.
222>.....................  Location................  Specify location within        M, under the following
                                                      sequence; where appropriate    conditions: if ``n,''
                                                      state number of first and      ``Xaa,'' or a modified or
                                                      last bases/amino acids in      unusual L-amino acid or
                                                      feature.                       modified base was used in a
                                                                                     sequence.
223>.....................  Other Information.......  Other relevant information;    M, under the following
                                                      four lines maximum.            conditions: if ``n,''
                                                                                     ``Xaa,'' or a modified or
                                                                                     unusual L-amino acid or
                                                                                     modified base was used in a
                                                                                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown''; if molecule is
                                                                                     combined DNA/RNA.
300>.....................  Publication Information.  Leave blank after 300>.......  O.
301>.....................  Authors.................  Preferably max of ten named    O.
                                                      authors of publication;
                                                      specify one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
302>.....................  Title...................  .............................  O.
303>.....................  Journal.................  .............................  O.
304>.....................  Volume..................  .............................  O.
305>.....................  Issue...................  .............................  O.
306>.....................  Pages...................  .............................  O.
307>.....................  Date....................  Journal date on which data     O.
                                                      published; specify as yyyy-
                                                      mm-dd, MMM-yyyy or Season-
                                                      yyyy.
308>.....................  Database Accession        Accession number assigned by   O.
                            Number.                   database including database
                                                      name.
309>.....................  Database Entry Date.....  Date of entry in database;     O.
                                                      specify as yyyy-mm-dd or MMM-
                                                      yyyy.

[[Page 176]]


310>.....................  Patent Document Number..  Document number; for patent-   O.
                                                      type citations only. Specify
                                                      as, for example, US 07/
                                                      999,999.
311>.....................  Patent Filing Date......  Document filing date, for      O.
                                                      patent-type citations only;
                                                      specify as yyyy-mm-dd.
312>.....................  Publication Date........  Document publication date,     O.
                                                      for patent-type citations
                                                      only; specify as yyyy-mm-dd.
313>.....................  Relevant Residues.......  FROM (position) TO (position)  O.
400>.....................  Sequence................  SEQ ID NO should follow the    M.
                                                      numeric identifier and
                                                      should appear on the line
                                                      preceding the actual
                                                      sequence.
----------------------------------------------------------------------------------------------------------------


[63 FR 29636, June 1, 1998]



Sec. 1.824  Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.

    (a) The computer readable form required by Sec. 1.821(e) shall meet 
the following specifications:
    (1) The computer readable form shall contain a single ``Sequence 
Listing'' as either a diskette, series of diskettes, or other 
permissible media outlined in paragraph (c) of this section.
    (2) The ``Sequence Listing'' in paragraph (a) (l) of this section 
shall be submitted in American Standard Code for Information Interchange 
(ASCII) text. No other formats shall be allowed.
    (3) The computer readable form may be created by any means, such as 
word processors, nucleotide/amino acid sequence editors or other custom 
computer programs; however, it shall conform to all specifications 
detailed in this section.
    (4) File compression is acceptable when using diskette media, so 
long as the compressed file is in a self-extracting format that will 
decompress on one of the systems described in paragraph (b) of this 
section.
    (5) Page numbering shall not appear within the computer readable 
form version of the ``Sequence Listing'' file.
    (6) All computer readable forms shall have a label permanently 
affixed thereto on which has been hand-printed or typed: the name of the 
applicant, the title of the invention, the date on which the data were 
recorded on the computer readable form, the operating system used, a 
reference number, and an application serial number and filing date, if 
known.
    (b) Computer readable form submissions must meet these format 
requirements:
    (1) Computer: IBM PC/XT/AT, or compatibles, or Apple Macintosh;
    (2) Operating System: MS-DOS, Unix or Macintosh;
    (3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
    (4) Pagination: Continuous file (no ``hard page break'' codes 
permitted);
    (c) Computer readable form files submitted may be in any of the 
following media:
    (1) Diskette : 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb 
storage; 5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
    (2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 
bits per inch, 9 track; Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (4) CD-ROM: Format: ISO 9660 or High Sierra Format
    (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 
640 Mb.
    (d) Computer readable forms that are submitted to the Office will 
not be returned to the applicant.

[63 FR 29637, June 1, 1998]



Sec. 1.825  Amendments to or replacement of sequence listing and computer readable copy thereof.

    (a) Any amendment to the paper copy of the ``Sequence Listing'' 
(Sec. 1.821(c)) must be made by the submission of substitute sheets. 
Amendments must

[[Page 177]]

be accompanied by a statement that indicates support for the amendment 
in the application, as filed, and a statement that the substitute sheets 
include no new matter.
    (b) Any amendment to the paper copy of the ``Sequence Listing,'' in 
accordance with paragraph (a) of this section, must be accompanied by a 
substitute copy of the computer readable form (Sec. 1.821(e)) including 
all previously submitted data with the amendment incorporated therein, 
accompanied by a statement that the copy in computer readable form is 
the same as the substitute copy of the ``Sequence Listing.''
    (c) Any appropriate amendments to the ``Sequence Listing'' in a 
patent; e.g., by reason of reissue or certificate of correction, must 
comply with the requirements of paragraphs (a) and (b) of this section.
    (d) If, upon receipt, the computer readable form is found to be 
damaged or unreadable, applicant must provide, within such time as set 
by the Commissioner, a substitute copy of the data in computer readable 
form accompanied by a statement that the substitute data is identical to 
that originally filed.

[63 FR 29638, June 1, 1998]

[[Page 178]]


       Appendix A to Subpart G to Part 1--Sample Sequence Listing
      [GRAPHIC] [TIFF OMITTED] TR01JN98.006
      

[[Page 179]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.007


[[Page 180]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.008


[[Page 181]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.009

[GRAPHIC] [TIFF OMITTED] TR01JN98.010


[63 FR 29639, June 1, 1998]



PART 2--RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




    Editorial Note: Part 2 is placed in a separate grouping of parts 
pertaining to trademarks. It appears on page 221 of this volume.

[[Page 182]]



PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE--Table of Contents




Sec.
3.1  Definitions.

                    Documents Eligible for Recording

3.11  Documents which will be recorded.
3.16  Assignability of trademarks prior to filing of an allegation of 
          use.

                       Requirements for Recording

3.21  Identification of patents and patent applications.
3.24  Requirements for documents and cover sheets relating to patents 
          and patent applications.
3.25  Recording requirements for trademark applications and 
          registrations.
3.26  English language requirement.
3.27  Mailing address for submitting documents to be recorded.
3.28  Requests for recording.

                        Cover Sheet Requirements

3.31  Cover sheet content.
3.34  Correction of cover sheet errors.

                                  Fees

3.41  Recording fees.

                      Date and Effect of Recording

3.51  Recording date.
3.54  Effect of recording.
3.56  Conditional assignments.
3.58  Governmental registers.

                         Domestic Representative

3.61  Domestic representative.

                        Action Taken by Assignee

3.71  Prosecution by assignee.
3.73  Establishing right of assignee to take action.

                          Issuance to Assignee

3.81  Issue of patent to assignee.
3.85  Issue of registration to assignee.

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

    Source: 57 FR 29642, July 6, 1992, unless otherwise noted.



Sec. 3.1  Definitions.

    For purposes of this part, the following definitions shall apply:
    Application means a national application for patent, an 
international application that designates the United States of America, 
or an application to register a trademark unless otherwise indicated.
    Assignment means a transfer by a party of all or part of its right, 
title and interest in a patent or patent application, or a transfer of 
its entire right, title and interest in a registered mark or a mark for 
which an application to register has been filed.
    Document means a document which a party requests to be recorded in 
the Office pursuant to Sec. 3.11 and which affects some interest in an 
application, patent, or registration.
    Office means the Patent and Trademark Office.
    Recorded document means a document which has been recorded in the 
Office pursuant to Sec. 3.11.
    Registration means a trademark registration issued by the Office.

                    Documents Eligible for Recording



Sec. 3.11  Documents which will be recorded.

    (a) Assignments of applications, patents, and registrations, 
accompanied by completed cover sheets as specified in Secs. 3.28 and 
3.31, will be recorded in the Office. Other documents, accompanied by 
completed cover sheets as specified in Secs. 3.28 and 3.31, affecting 
title to applications, patents, or registrations, will be recorded as 
provided in this part or at the discretion of the Commissioner.
    (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 
1943-1948 Comp., p. 303) requires the several departments and other 
executive agencies of the Government, including Government-owned or 
Government-controlled corporations, to forward promptly to the 
Commissioner of Patents and Trademarks for recording all licenses, 
assignments, or other interests of the Government in or under patents or 
patent applications. Assignments and other documents affecting title to 
patents or patent applications and documents not affecting title to 
patents or patent applications required by Executive Order 9424 to be 
filed will be recorded as provided in this part.

[62 FR 53202, Oct. 10, 1997]

[[Page 183]]



Sec. 3.16  Assignability of trademarks prior to filing of an allegation of use.

    Before an allegation of use under either 15 U.S.C. 1051(c) or 15 
U.S.C. 1051(d) is filed, an applicant may only assign an application to 
register a mark under 15 U.S.C. 1051(b) to a successor to the 
applicant's business, or portion of the business to which the mark 
pertains, if that business is ongoing and existing.

[64 FR 48926, Sept. 8, 1999]

                       Requirements for Recording



Sec. 3.21  Identification of patents and patent applications.

    An assignment relating to a patent must identify the patent by the 
patent number. An assignment relating to a national patent application 
must identify the national patent application by the application number 
(consisting of the series code and the serial number, e.g., 07/123,456). 
An assignment relating to an international patent application which 
designates the United States of America must identify the international 
application by the international application number (e.g., PCT/US90/
01234). If an assignment of a patent application filed under 
Sec. 1.53(b) is executed concurrently with, or subsequent to, the 
execution of the patent application, but before the patent application 
is filed, it must identify the patent application by its date of 
execution, name of each inventor, and title of the invention so that 
there can be no mistake as to the patent application intended. If an 
assignment of a provisional application under Sec. 1.53(c) is executed 
before the provisional application is filed, it must identify the 
provisional application by name of each inventor and title of the 
invention so that there can be no mistake as to the provisional 
application intended.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.24  Requirements for documents and cover sheets relating to patents and patent applications.

    The document and cover sheet must be legible. Either the original 
document or a true copy of the original document, may be submitted for 
recording. Only one side of each page shall be used. The paper used 
should be flexible, strong, white, non-shiny, durable, and preferably no 
larger than 21.6 x 33.1 cm. (8\1/2\ x 14 inches) with a 2.5 cm. (one-
inch) margin on all sides.



Sec. 3.25  Recording requirements for trademark applications and registrations.

    (a) Documents affecting title. To record documents affecting title 
to a trademark application or registration, a legible cover sheet (see 
Sec. 3.31) and one of the following must be submitted:
    (1) The original document;
    (2) A copy of the document;
    (3) A copy of an extract from the document evidencing the effect on 
title; or
    (4) A statement signed by both the party conveying the interest and 
the party receiving the interest explaining how the conveyance affects 
title.
    (b) Name changes. Only a legible cover sheet is required (See 
Sec. 3.31).
    (c) All documents. All documents submitted to the Office should be 
on white and non-shiny paper that is no larger than 8\1/2\  x  14 inches 
(21.6  x  33.1 cm.) with a one-inch (2.5 cm) margin on all sides. Only 
one side of each page should be used.

[64 FR 48927, Sept. 8, 1999]



Sec. 3.26  English language requirement.

    The Office will accept and record non-English language documents 
only if accompanied by an English translation signed by the individual 
making the translation.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.27  Mailing address for submitting documents to be recorded.

    (a) Except as provided in paragraph (b) of this section, documents 
and cover sheets to be recorded should be addressed to the Commissioner 
of Patents and Trademarks, Box Assignment, Washington, DC 20231, unless 
they are filed together with new applications or with a petition under 
Sec. 3.81(b).
    (b) A document required by Executive Order 9424 to be filed which 
does not affect title and is so identified in the cover sheet (see 
Sec. 3.31(c)(2)) must be addressed and mailed to the Commissioner of 
Patents and Trademarks, Box

[[Page 184]]

Government Interest, Washington, DC 20231.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.28  Requests for recording.

    Each document submitted to the Office for recording must include at 
least one cover sheet as specified in Sec. 3.31 referring either to 
those patent applications and patents, or to those trademark 
applications and registrations, against which the document is to be 
recorded. If a document to be recorded includes interests in, or 
transactions involving, both patents and trademarks, separate patent and 
trademark cover sheets should be submitted. Only one set of documents 
and cover sheets to be recorded should be filed. If a document to be 
recorded is not accompanied by a completed cover sheet, the document and 
the incomplete cover sheet will be returned pursuant to Sec. 3.51 for 
proper completion. The document and a completed cover sheet should be 
resubmitted.

[64 FR 48927, Sept. 8, 1999]

                        Cover Sheet Requirements



Sec. 3.31  Cover sheet content.

    (a) Each patent or trademark cover sheet required by Sec. 3.28 must 
contain:
    (1) The name of the party conveying the interest;
    (2) The name and address of the party receiving the interest;
    (3) A description of the interest conveyed or transaction to be 
recorded;
    (4) Identification of the interests involved:
    (i) For trademark assignments and trademark name changes: Each 
trademark registration number and each trademark application number, if 
known, against which the Office is to record the document. If the 
trademark application number is not known, a copy of the application or 
a reproduction of the trademark must be submitted, along with an 
estimate of the date that the Office received the application; or
    (ii) For any other document affecting title to a trademark or patent 
application, registration or patent: Each trademark or patent 
application number or each trademark registration number or patent 
against which the document is to be recorded, or an indication that the 
document is filed together with a patent application;
    (5) The name and address of the party to whom correspondence 
concerning the request to record the document should be mailed;
    (6) The date the document was executed;
    (7) An indication that the assignee of a trademark application or 
registration who is not domiciled in the United States has designated a 
domestic representative (see Sec. 3.61); and
    (8) The signature of the party submitting the document.
    (b) A cover sheet should not refer to both patents and trademarks, 
since any information, including information about pending patent 
applications, submitted with a request for recordation of a document 
against a trademark application or trademark registration will become 
public record upon recordation.
    (c) Each patent cover sheet required by Sec. 3.28 seeking to record 
a governmental interest as provided by Sec. 3.11(b) must:
    (1) Indicate that the document is to be recorded on the Governmental 
Register, and, if applicable, that the document is to be recorded on the 
Secret Register (see Sec. 3.58); and
    (2) Indicate, if applicable, that the document to be recorded is not 
a document affecting title (see Sec. 3.41(b)).
    (d) Each trademark cover sheet required by Sec. 3.28 seeking to 
record a document against a trademark application or registration should 
include, in addition to the serial number or registration number of the 
trademark, identification of the trademark or a description of the 
trademark, against which the Office is to record the document.
    (e) Each patent or trademark cover sheet required by Sec. 3.28 
should contain the number of applications, patents or registrations 
identified in the cover sheet and the total fee.

[57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997; 64 
FR 48927, Sept. 8, 1999]

[[Page 185]]



Sec. 3.34  Correction of cover sheet errors.

    (a) An error in a cover sheet recorded pursuant to Sec. 3.11 will be 
corrected only if:
    (1) The error is apparent when the cover sheet is compared with the 
recorded document to which it pertains, and
    (2) A corrected cover sheet is filed for recordation.
    (b) The corrected cover sheet must be accompanied by the originally 
recorded document or a copy of the originally recorded document and by 
the recording fee as set forth in Sec. 3.41.

                                  Fees



Sec. 3.41  Recording fees.

    (a) All requests to record documents must be accompanied by the 
appropriate fee. Except as provided in paragraph (b) of this section, a 
fee is required for each application, patent and registration against 
which the document is recorded as identified in the cover sheet. The 
recording fee is set in Sec. 1.21(h) of this chapter for patents and in 
Sec. 2.6(b)(6) of this chapter for trademarks.
    (b) No fee is required for each patent application and patent 
against which a document required by Executive Order 9424 is to be filed 
if:
    (1) The document does not affect title and is so identified in the 
cover sheet (see Sec. 3.31(c)(2)); and
    (2) The document and cover sheet are mailed to the Office in 
compliance with Sec. 3.27(b).

[63 FR 52159, Sept. 30, 1998]

                      Date and Effect of Recording



Sec. 3.51  Recording date.

    The date of recording of a document is the date the document meeting 
the requirements for recording set forth in this part is filed in the 
Office. A document which does not comply with the identification 
requirements of Sec. 3.21 will not be recorded. Documents not meeting 
the other requirements for recording, for example, a document submitted 
without a completed cover sheet or without the required fee, will be 
returned for correction to the sender where a correspondence address is 
available. The returned papers, stamped with the original date of 
receipt by the Office, will be accompanied by a letter which will 
indicate that if the returned papers are corrected and resubmitted to 
the Office within the time specified in the letter, the Office will 
consider the original date of filing of the papers as the date of 
recording of the document. The procedure set forth in Sec. 1.8 or 
Sec. 1.10 of this chapter may be used for resubmissions of returned 
papers to have the benefit of the date of deposit in the United States 
Postal Service. If the returned papers are not corrected and resubmitted 
within the specified period, the date of filing of the corrected papers 
will be considered to be the date of recording of the document. The 
specified period to resubmit the returned papers will not be extended.

[62 FR 53203, Oct. 10, 1997]



Sec. 3.54  Effect of recording.

    The recording of a document pursuant to Sec. 3.11 is not a 
determination by the Office of the validity of the document or the 
effect that document has on the title to an application, a patent, or a 
registration. When necessary, the Office will determine what effect a 
document has, including whether a party has the authority to take an 
action in a matter pending before the Office.



Sec. 3.56  Conditional assignments.

    Assignments which are made conditional on the performance of certain 
acts or events, such as the payment of money or other condition 
subsequent, if recorded in the Office, are regarded as absolute 
assignments for Office purposes until cancelled with the written consent 
of all parties or by the decree of a court of competent jurisdiction. 
The Office does not determine whether such conditions have been 
fulfilled.



Sec. 3.58  Governmental registers.

    (a) The Office will maintain a Departmental Register to record 
governmental interests required to be recorded by Executive Order 9424. 
This Departmental Register will not be open to public inspection but 
will be available for examination and inspection by duly authorized 
representatives of the Government. Governmental interests

[[Page 186]]

recorded on the Departmental Register will be available for public 
inspection as provided in Sec. 1.12.
    (b) The Office will maintain a Secret Register to record 
governmental interests required to be recorded by Executive Order 9424. 
Any instrument to be recorded will be placed on this Secret Register at 
the request of the department or agency submitting the same. No 
information will be given concerning any instrument in such record or 
register, and no examination or inspection thereof or of the index 
thereto will be permitted, except on the written authority of the head 
of the department or agency which submitted the instrument and requested 
secrecy, and the approval of such authority by the Commissioner of 
Patents and Trademarks. No instrument or record other than the one 
specified may be examined, and the examination must take place in the 
presence of a designated official of the Patent and Trademark Office. 
When the department or agency which submitted an instrument no longer 
requires secrecy with respect to that instrument, it must be recorded 
anew in the Departmental Register.

[62 FR 53203, Oct. 10, 1997]

                         Domestic Representative



Sec. 3.61  Domestic representative.

    If the assignee of a trademark application or registration is not 
domiciled in the United States, the assignee must designate, in writing 
to the Office, a domestic representative. An assignee of a patent 
application or patent may designate a domestic representative if the 
assignee is not residing in the United States. The designation shall 
state the name and address of a person residing within the United States 
on whom may be served process or notice of proceedings affecting the 
application, patent or registration or rights thereunder.

                        Action Taken by Assignee



Sec. 3.71  Prosecution by assignee.

    The assignee of record of the entire right, title and interest in an 
application for patent is entitled to conduct the prosecution of the 
patent application to the exclusion of the named inventor or previous 
assignee. The assignee of a registered trademark or a trademark for 
which an application to register has been filed is entitled to conduct 
the prosecution of the trademark application or registration to the 
exclusion of the original applicant or previous assignee.



Sec. 3.73  Establishing right of assignee to take action.

    (a) The inventor is presumed to be the owner of a patent 
application, and any patent that may issue therefrom, unless there is an 
assignment. The original applicant is presumed to be the owner of a 
trademark application unless there is an assignment.
    (b) When an assignee seeks to take action in a matter before the 
Office with respect to a patent application, trademark application, 
patent, registration, or reexamination proceeding, the assignee must 
establish its ownership of the property to the satisfaction of the 
Commissioner. Ownership is established by submitting to the Office, in 
the Office file related to the matter in which action is sought to be 
taken, documentary evidence of a chain of title from the original owner 
to the assignee (e.g., copy of an executed assignment submitted for 
recording) or by specifying (e.g., reel and frame number) where such 
evidence is recorded in the Office. The submission establishing 
ownership must be signed by a party authorized to act on behalf of the 
assignee. Documents submitted to establish ownership may be required to 
be recorded as a condition to permitting the assignee to take action in 
a matter pending before the Office.

[57 FR 29642, July 6, 1992, as amended at 62 FR 53203, Oct. 10, 1997]

                          Issuance to Assignee



Sec. 3.81  Issue of patent to assignee.

    (a) For a patent application, if an assignment of the entire right, 
title, and interest is recorded before the issue fee is paid, the patent 
may issue in the name of the assignee. If the assignee holds an 
undivided part interest, the patent may issue jointly to the inventor 
and the assignee. At the time the issue fee is paid, the name of the 
assignee must be provided if the patent is

[[Page 187]]

to issue solely or jointly to that assignee.
    (b) If the assignment is submitted for recording after the date of 
payment of the issue fee, but prior to issuance of the patent, the 
assignee may petition that the patent issue to the assignee. Any such 
petition must be accompanied by the fee set forth in Sec. 1.17(i) of 
this chapter.

[57 FR 29642, July 6, 1992, as amended at 60 FR 20229, Apr. 25, 1995]



Sec. 3.85  Issue of registration to assignee.

    The certificate of registration may be issued to the assignee of the 
applicant, or in a new name of the applicant, provided that the party 
files a written request in the trademark application by the time the 
application is being prepared for issuance of the certificate of 
registration, and the appropriate document is recorded in the Office. If 
the assignment or name change document has not been recorded in the 
Office, then the written request must state that the document has been 
filed for recordation. The address of the assignee must be made of 
record in the application file.



PART 4--COMPLAINTS REGARDING INVENTION PROMOTERS--Table of Contents




Sec.
4.1  Complaints regarding invention promoters.
4.2  Definitions.
4.3  Submitting complaints.
4.4  Invention promoter reply.
4.5  Notice by publication.
4.6  Attorneys and agents.

    Authority: 35 U.S.C. 6 and 297.

    Source: 65 FR 3129, Jan. 20, 2000, unless otherwise noted.



Sec. 4.1  Complaints regarding invention promoters.

    These regulations govern the Patent and Trademark Office's (Office) 
responsibilities under the Inventors' Rights Act of 1999, which can be 
found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to 
provide a forum for the publication of complaints concerning invention 
promoters. The Office will not conduct any independent investigation of 
the invention promoter. Although the Act provides additional civil 
remedies for persons injured by invention promoters, those remedies must 
be pursued by the injured party without the involvement of the Office.



Sec. 4.2  Definitions.

    (a) Invention Promoter means any person, firm, partnership, 
corporation, or other entity who offers to perform or performs invention 
promotion services for, or on behalf of, a customer, and who holds 
itself out through advertising in any mass media as providing such 
services, but does not include--
    (1) Any department or agency of the Federal Government or of a State 
or local government;
    (2) Any nonprofit, charitable, scientific, or educational 
organization qualified under applicable State law or described under 
section 170(b)(1)(A) of the Internal Revenue Code of 1986;
    (3) Any person or entity involved in the evaluation to determine 
commercial potential of, or offering to license or sell, a utility 
patent or a previously filed nonprovisional utility patent application;
    (4) Any party participating in a transaction involving the sale of 
the stock or assets of a business; or
    (5) Any party who directly engages in the business of retail sales 
of products or the distribution of products.
    (b) Customer means any individual who enters into a contract with an 
invention promoter for invention promotion services.
    (c) Contract for Invention Promotion Services means a contract by 
which an invention promoter undertakes invention promotion services for 
a customer.
    (d) Invention Promotion Services means the procurement or attempted 
procurement for a customer of a firm, corporation, or other entity to 
develop and market products or services that include the invention of 
the customer.



Sec. 4.3  Submitting complaints.

    (a) A person may submit a complaint concerning an invention promoter 
with

[[Page 188]]

the Office. A person submitting a complaint should understand that the 
complaint may be forwarded to the invention promoter and may become 
publicly available. The Office will not accept any complaint that 
requests that it be kept confidential.
    (b) A complaint must be clearly marked, or otherwise identified, as 
a complaint under these rules. The complaint must include:
    (1) The name and address of the complainant;
    (2) The name and address of the invention promoter;
    (3) The name of the customer;
    (4) The invention promotion services offered or performed by the 
invention promoter;
    (5) The name of the mass media in which the invention promoter 
advertised providing such services;
    (6) An explanation of the relationship between the customer and the 
invention promoter; and
    (7) A signature of the complainant.
    (c) The complaint should fairly summarize the action of the 
invention promoter about which the person complains. Additionally, the 
complaint should include names and addresses of persons believed to be 
associated with the invention promoter. Complaints, and any replies, 
must be addressed to Office of Independent Inventor Programs, U.S. 
Patent and Trademark Office, Washington, D.C. 20231.
    (d) Complaints that do not provide the information requested in 
paragraphs (b) and (c) of this section will be returned. If 
complainant's address is not provided, the complaint will be destroyed.
    (e) No originals of documents should be included with the complaint.
    (f) A complaint can be withdrawn by the complainant or the named 
customer at any time prior to its publication.



Sec. 4.4  Invention promoter reply.

    (a) If a submission appears to meet the requirements of a complaint, 
the invention promoter named in the complaint will be notified of the 
complaint and given 30 days to respond. The invention promoter's 
response will be made available to the public along with the complaint. 
If the invention promoter fails to reply within the 30-day time period 
set by the Office, the complaint will be made available to the public. 
Replies sent after the complaint is made available to the public will 
also be published.
    (b) A response must be clearly marked, or otherwise identified, as a 
response by an invention promoter. The response must contain:
    (1) The name and address of the invention promoter;
    (2) A reference to a complaint forwarded to the invention promoter 
or a complaint previously published;
    (3) The name of the individual signing the response; and
    (4) The title or authority of the individual signing the response.



Sec. 4.5  Notice by publication.

    If the copy of the complaint that is mailed to the invention 
promoter is returned undelivered, then the Office will publish a Notice 
of Complaint Received in the Official Gazette, the Federal Register, or 
on the Office's Internet home page. The invention promoter will be given 
30 days from such notice to submit a reply to the complaint. If the 
Office does not receive a reply from the invention promoter within 30 
days, the complaint alone will become publicly available.



Sec. 4.6  Attorneys and agents.

    Complaints against registered patent attorneys and agents will not 
be treated under this section, unless a complaint fairly demonstrates 
that invention promotion services are involved. Persons having 
complaints about registered patent attorneys or agents should contact 
the Office of Enrollment and Discipline at the U.S. Patent and Trademark 
Office, Box OED, Washington, D.C. 20231, and the attorney discipline 
section of the attorney's state licensing bar if an attorney is 
involved.



PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents




                             Secrecy Orders

Sec.
5.1  Correspondence.

[[Page 189]]

5.2  Secrecy order.
5.3  Prosecution of application under secrecy orders; withholding 
          patent.
5.4  Petition for rescission of secrecy order.
5.5  Permit to disclose or modification of secrecy order.
5.6-5.8  [Reserved]

                Licenses for Foreign Exporting and Filing

5.11  License for filing in a foreign country an application on an 
          invention made in the United States or for transmitting 
          international application.
5.12  Petition for license.
5.13  Petition for license; no corresponding application.
5.14  Petition for license; corresponding U.S. application.
5.15  Scope of license.
5.16-5.17  [Reserved]
5.18  Arms, ammunition, and implements of war.
5.19  Export of technical data.
5.20  Export of technical data relating to sensitive nuclear technology.
5.25  Petition for retroactive license.

                                 General

5.31-5.33  [Reserved]

    Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent Law 
Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567; 
the Arms Export Control Act, as amended, 22 U.S.C. 2751 et seq., the 
Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq., and the 
Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 3201 et seq., and the 
delegations in the regulations under these acts to the Commissioner (15 
CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7).

    Source: 24 FR 10381, Dec. 22, 1959, unless otherwise noted.

                             Secrecy Orders



Sec. 5.1  Correspondence.

    All correspondence in connection with this part, including 
petitions, must be addressed to ``Assistant Commissioner for Patents 
(Attention Licensing and Review), Washington, DC 20231.''

[62 FR 53203, Oct. 10, 1997]



Sec. 5.2  Secrecy order.

    (a) When notified by the chief officer of a defense agency that 
publication or disclosure of the invention by the granting of a patent 
would be detrimental to the national security, an order that the 
invention be kept secret will be issued by the Commissioner of Patents 
and Trademarks.
    (b) Any request for compensation as provided in 35 U.S.C. 183 must 
not be made to the Patent and Trademark Office, but directly to the 
department or agency which caused the secrecy order to be issued.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53203, Oct. 10, 1997]



Sec. 5.3  Prosecution of application under secrecy orders; withholding patent.

    Unless specifically ordered otherwise, action on the application by 
the Office and prosecution by the applicant will proceed during the time 
an application is under secrecy order to the point indicated in this 
section:
    (a) National applications under secrecy order which come to a final 
rejection must be appealed or otherwise prosecuted to avoid abandonment. 
Appeals in such cases must be completed by the applicant but unless 
otherwise specifically ordered by the Commissioner will not be set for 
hearing until the secrecy order is removed.
    (b) An interference will not be declared involving national 
applications under secrecy order. However, if an applicant whose 
application is under secrecy order seeks to provoke an interference with 
an issued patent, a notice of that fact will be placed in the file 
wrapper of the patent. (See Sec. 1.607(d))
    (c) When the national application is found to be in condition for 
allowance except for the secrecy order the applicant and the agency 
which caused the secrecy order to be issued will be notified. This 
notice (which is not a notice of allowance under Sec. 1.311 of this 
chapter) does not require reply by the applicant and places the national 
application in a condition of suspension until the secrecy order is 
removed. When the secrecy order is removed the Patent and Trademark 
Office will issue a notice of allowance under Sec. 1.311 of this 
chapter, or take such other action as may then be warranted.
    (d) International applications under secrecy order will not be 
mailed, delivered or otherwise transmitted to the international 
authorities or the applicant. International applications under secrecy 
order will be processed up to the point where, if it were not for the

[[Page 190]]

secrecy order, record and search copies would be transmitted to the 
international authorities or the applicant.

(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988; 62 
FR 53203, Oct. 10, 1997]



Sec. 5.4  Petition for rescission of secrecy order.

    (a) A petition for rescission or removal of a secrecy order may be 
filed by, or on behalf of, any principal affected thereby. Such petition 
may be in letter form, and it must be in duplicate.
    (b) The petition must recite any and all facts that purport to 
render the order ineffectual or futile if this is the basis of the 
petition. When prior publications or patents are alleged the petition 
must give complete data as to such publications or patents and should be 
accompanied by copies thereof.
    (c) The petition must identify any contract between the Government 
and any of the principals, under which the subject matter of the 
application or any significant part thereof was developed, or to which 
the subject matter is otherwise related. If there is no such contract, 
the petition must so state.
    (d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 
181, from a secrecy order cannot be taken until after a petition for 
rescission of the secrecy order has been made and denied. Appeal must be 
taken within sixty days from the date of the denial, and the party 
appealing, as well as the department or agency which caused the order to 
be issued, will be notified of the time and place of hearing.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204, Oct. 10, 1997]



Sec. 5.5  Permit to disclose or modification of secrecy order.

    (a) Consent to disclosure, or to the filing of an application 
abroad, as provided in 35 U.S.C. 182, shall be made by a ``permit'' or 
``modification'' of the secrecy order.
    (b) Petitions for a permit or modification must fully recite the 
reason or purpose for the proposed disclosure. Where any proposed 
disclosee is known to be cleared by a defense agency to receive 
classified information, adequate explanation of such clearance should be 
made in the petition including the name of the agency or department 
granting the clearance and the date and degree thereof. The petition 
must be filed in duplicate.
    (c) In a petition for modification of a secrecy order to permit 
filing abroad, all countries in which it is proposed to file must be 
made known, as well as all attorneys, agents and others to whom the 
material will be consigned prior to being lodged in the foreign patent 
office. The petition should include a statement vouching for the loyalty 
and integrity of the proposed disclosees and where their clearance 
status in this or the foreign country is known all details should be 
given.
    (d) Consent to the disclosure of subject matter from one application 
under secrecy order may be deemed to be consent to the disclosure of 
common subject matter in other applications under secrecy order so long 
as not taken out of context in a manner disclosing material beyond the 
modification granted in the first application.
    (e) Organizations requiring consent for disclosure of applications 
under secrecy order to persons or organizations in connection with 
repeated routine operation may petition for such consent in the form of 
a general permit. To be successful such petitions must ordinarily recite 
the security clearance status of the disclosees as sufficient for the 
highest classification of material that may be involved.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204 Oct. 10, 1997]



Secs. 5.6-5.8  [Reserved]

                Licenses for Foreign Exporting and Filing



Sec. 5.11  License for filing in a foreign country an application on an invention made in the United States or for transmitting an international application.

    (a) A license from the Commissioner of Patents and Trademarks under 
35 U.S.C. 184 is required before filing any application for patent 
including any modifications, amendments, or supplements thereto or 
divisions thereof or

[[Page 191]]

for the registration of a utility model, industrial design, or model, in 
a foreign patent office or any foreign patent agency or any 
international agency other than the United States Receiving Office, if 
the invention was made in the United States and:
    (1) An application on the invention has been on file in the United 
States less than six months prior to the date on which the application 
is to be filed, or
    (2) No application on the invention has been filed in the United 
States.
    (b) The license from the Commissioner of Patents and Trademarks 
referred to in paragraph (a) would also authorize the export of 
technical data abroad for purposes relating to the preparation, filing 
or possible filing and prosecution of a foreign patent application 
without separately complying with the regulations contained in 22 CFR 
parts 121 through 130 (International Traffic in Arms Regulations of the 
Department of State), 15 CFR part 779 (Regulations of the Office of 
Export Administration, International Trade Administration, Department of 
Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the 
Department of Energy).
    (c) Where technical data in the form of a patent application, or in 
any form, is being exported for purposes related to the preparation, 
filing or possible filing and prosecution of a foreign patent 
application, without the license from the Commissioner of Patents and 
Trademarks referred to in paragraphs (a) or (b) of this section, or on 
an invention not made in the United States, the export regulations 
contained in 22 CFR parts 120 through 130 (International Traffic in Arms 
Regulations of the Department of State), 15 CFR parts 768-799 (Export 
Administration Regulations of the Department of Commerce) and 10 CFR 
part 810 (Assistance to Foreign Atomic Energy Activities Regulations of 
the Department of Energy) must be complied with unless a license is not 
required because a United States application was on file at the time of 
export for at least six months without a secrecy order under Sec. 5.2 
being placed thereon. The term ``exported'' means export as it is 
defined in 22 CFR part 120, 15 CFR part 779 and activities covered by 10 
CFR part 810.
    (d) If a secrecy order has been issued under Sec. 5.2, an 
application cannot be exported to, or filed in, a foreign country 
(including an international agency in a foreign country), except in 
accordance with Sec. 5.5.
    (e) No license pursuant to paragraph (a) of this section is 
required:
    (1) If the invention was not made in the United States, or
    (2) If the corresponding United States application is not subject to 
a secrecy order under Sec. 5.2, and was filed at least six months prior 
to the date on which the application is filed in a foreign country, or
    (3) For subsequent modifications, amendments and supplements 
containing additional subject matter to, or divisions of, a foreign 
patent application if:
    (i) A license is not, or was not, required under paragraph (e)(2) of 
this section for the foreign patent application;
    (ii) The corresponding United States application was not required to 
be made available for inspection under 35 U.S.C. 181; and
    (iii) Such modifications, amendments, and supplements do not, or did 
not, change the general nature of the invention in a manner which would 
require any corresponding United States application to be or have been 
available for inspection under 35 U.S.C. 181.
    (f) A license pursuant to paragraph (a) of this section can be 
revoked at any time upon written notification by the Patent and 
Trademark Office. An authorization to file a foreign patent application 
resulting from the passage of six months from the date of filing of a 
United States patent application may be revoked by the imposition of a 
secrecy order.

[49 FR 13461, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 
FR 53204, Oct. 10, 1997]



Sec. 5.12  Petition for license.

    (a) Filing of an application for patent for inventions made in the 
United States will be considered to include a petition for license under 
35 U.S.C. 184 for the subject matter of the application. The filing 
receipt will indicate if

[[Page 192]]

a license is granted. If the initial automatic petition is not granted, 
a subsequent petition may be filed under paragraph (b) of this section.
    (b) Petitions for license should be presented in letter form, and 
must include the petitioner's address and full instructions for delivery 
of the requested license when it is to be delivered to other than the 
petitioner. If expedited handling of the petition under this paragraph 
is sought, the petition must also include the fee set forth in 
Sec. 1.17(h).

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62 
FR 53204, Oct. 10, 1997]



Sec. 5.13  Petition for license; no corresponding application.

    If no corresponding national or international application has been 
filed in the United States, the petition for license under Sec. 5.12(b) 
must also be accompanied by a legible copy of the material upon which a 
license is desired. This copy will be retained as a measure of the 
license granted.

[62 FR 53204, Oct. 10, 1997]



Sec. 5.14  Petition for license; corresponding U.S. application.

    (a) When there is a corresponding United States application on file, 
a petition for license under Sec. 5.12(b) must also identify this 
application by application number, filing date, inventor, and title, but 
a copy of the material upon which the license is desired is not 
required. The subject matter licensed will be measured by the disclosure 
of the United States application.
    (b) Two or more United States applications should not be referred to 
in the same petition for license unless they are to be combined in the 
foreign or international application, in which event the petition should 
so state and the identification of each United States application should 
be in separate paragraphs.
    (c) When the application to be filed or exported abroad contains 
matter not disclosed in the United States application or applications, 
including the case where the combining of two or more United States 
applications introduces subject matter not disclosed in any of them, a 
copy of the application as it is to be filed in the foreign country or 
international application which is to be transmitted to a foreign 
international or national agency for filing in the Receiving Office, 
must be furnished with the petition. If however, all new matter in the 
foreign or international application to be filed is readily 
identifiable, the new matter may be submitted in detail and the 
remainder by reference to the pertinent United States application or 
applications.

(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20471, May 11, 1978, as amended at 49 FR 13462, Apr. 4, 1984; 62 
FR 53204, Oct. 10, 1997]



Sec. 5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Secs. 5.12 
through 5.14, which were not required to be made available for 
inspection by defense agencies under 35 U.S.C. 181, will be eligible for 
a license of the scope provided in this paragraph. This license permits 
subsequent modifications, amendments, and supplements containing 
additional subject matter to, or divisions of, a foreign patent 
application, if such changes to the application do not alter the general 
nature of the invention in a manner which would require the United 
States application to have been made available for inspection under 35 
U.S.C. 181. Grant of this license authorizing the export and filing of 
an application in a foreign country or the transmitting of an 
international application to any foreign patent agency or international 
patent agency when the subject matter of the foreign or international 
application corresponds to that of the domestic application. This 
license includes authority:
    (1) To export and file all duplicate and formal application papers 
in foreign countries or with international agencies;
    (2) To make amendments, modifications, and supplements, including 
divisions, changes or supporting matter consisting of the illustration, 
exemplification, comparison, or explanation of subject matter disclosed 
in the application; and

[[Page 193]]

    (3) To take any action in the prosecution of the foreign or 
international application provided that the adding of subject matter or 
taking of any action under paragraphs (a)(1) or (2) of this section does 
not change the general nature of the invention disclosed in the 
application in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 by including 
technical data pertaining to:
    (i) Defense services or articles designated in the United States 
Munitions List applicable at the time of foreign filing, the unlicensed 
exportation of which is prohibited pursuant to the Arms Export Control 
Act, as amended, and 22 CFR parts 121 through 130; or
    (ii) Restricted Data, sensitive nuclear technology or technology 
useful in the production or utilization of special nuclear material or 
atomic energy, dissemination of which is subject to restrictions of the 
Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation 
Act of 1978, as implemented by the regulations for Unclassified 
Activities in Foreign Atomic Energy Programs, 10 CFR part 810, in effect 
at the time of foreign filing.
    (b) Applications or other materials which were required to be made 
available for inspection under 35 U.S.C. 181 will be eligible for a 
license of the scope provided in this paragraph. Grant of this license 
authorizes the export and filing of an application in a foreign country 
or the transmitting of an international application to any foreign 
patent agency or international patent agency. Further, this license 
includes authority to export and file all duplicate and formal papers in 
foreign countries or with foreign and international patent agencies and 
to make amendments, modifications, and supplements to, file divisions 
of, and take any action in the prosecution of the foreign or 
international application, provided subject matter additional to that 
covered by the license is not involved.
    (c) A license granted under Sec. 5.12(b) pursuant to Sec. 5.13 or 
Sec. 5.14 shall have the scope indicated in paragraph (a) of this 
section, if it is so specified in the license. A petition, accompanied 
by the required fee (Sec. 1.17(h)), may also be filed to change a 
license having the scope indicated in paragraph (b) of this section to a 
license having the scope indicated in paragraph (a) of this section. No 
such petition will be granted if the copy of the material filed pursuant 
to Sec. 5.13 or any corresponding United States application was required 
to be made available for inspection under 35 U.S.C. 181. The change in 
the scope of a license will be effective as of the date of the grant of 
the petition.
    (d) In those cases in which no license is required to file the 
foreign application or transmit the international application, no 
license is required to file papers in connection with the prosecution of 
the foreign or international application not involving the disclosure of 
additional subject matter.
    (e) Any paper filed abroad or transmitted to an international patent 
agency following the filing of a foreign or international application 
which changes the general nature of the subject matter disclosed at the 
time of filing in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 or which involves 
the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii) 
of this section must be separately licensed in the same manner as a 
foreign or international application. Further, if no license has been 
granted under Sec. 5.12(a) on filing the corresponding United States 
application, any paper filed abroad or with an international patent 
agency which involves the disclosure of additional subject matter must 
be licensed in the same manner as a foreign or international 
application.
    (f) Licenses separately granted in connection with two or more 
United States applications may be exercised by combining or dividing the 
disclosures, as desired, provided:
    (1) Subject matter which changes the general nature of the subject 
matter disclosed at the time of filing or which involves subject matter 
listed in paragraph (a)(3) (i) or (ii) of this section is not 
introduced, and
    (2) In the case where at least one of the licenses was obtained 
under Sec. 5.12(b), additional subject matter is not introduced.

[[Page 194]]

    (g) A license does not apply to acts done before the license was 
granted. See Sec. 5.25 for petitions for retroactive licenses.

[49 FR 13462, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 
FR 53204, Oct. 10, 1997]



Secs. 5.16-5.17  [Reserved]



Sec. 5.18  Arms, ammunition, and implements of war.

    (a) The exportation of technical data relating to arms, ammunition, 
and implements of war generally is subject to the International Traffic 
in Arms Regulations of the Department of State (22 CFR parts 120 through 
130); the articles designated as arms, ammunitions, and implements of 
war are enumerated in the U.S. Munitions List (22 CFR part 121). 
However, if a patent applicant complies with regulations issued by the 
Commissioner of Patents and Trademarks under 35 U.S.C. 184, no separate 
approval from the Department of State is required unless the applicant 
seeks to export technical data exceeding that used to support a patent 
application in a foreign country. This exemption from Department of 
State regulations is applicable regardless of whether a license from the 
Commissioner is required by the provisions of Secs. 5.11 and 5.12 (22 
CFR part 125).
    (b) When a patent application containing subject matter on the 
Munitions List (22 CFR part 121) is subject to a secrecy order under 
Sec. 5.2 and a petition is made under Sec. 5.5 for a modification of the 
secrecy order to permit filing abroad, a separate request to the 
Department of State for authority to export classified information is 
not required (22 CFR part 125).

[62 FR 53205, Oct. 10, 1997]



Sec. 5.19  Export of technical data.

    (a) Under regulations (15 CFR 770.10(j)) established by the 
Department of Commerce, a license is not required in any case to file a 
patent application or part thereof in a foreign country if the foreign 
filing is in accordance with the regulations (Secs. 5.11 through 5.25) 
of the Patent and Trademark Office.
    (b) An export license is not required for data contained in a patent 
application prepared wholly from foreign-origin technical data where 
such application is being sent to the foreign inventor to be executed 
and returned to the United States for subsequent filing in the U.S. 
Patent and Trademark Office (15 CFR 779A.3(e)).

[62 FR 53205, Oct. 10, 1997]



Sec. 5.20  Export of technical data relating to sensitive nuclear technology.

    Under regulations (10 CFR 810.7) established by the United States 
Department of Energy, an application filed in accordance with the 
regulations (Secs. 5.11 through 5.25) of the Patent and Trademark Office 
and eligible for foreign filing under 35 U.S.C. 184, is considered to be 
information available to the public in published form and a generally 
authorized activity for the purposes of the Department of Energy 
regulations.

[62 FR 53205, Oct. 10, 1997]



Sec. 5.25  Petition for retroactive license.

    (a) A petition for a retroactive license under 35 U.S.C. 184 shall 
be presented in accordance with Sec. 5.13 or Sec. 5.14(a), and shall 
include:
    (1) A listing of each of the foreign countries in which the 
unlicensed patent application material was filed,
    (2) The dates on which the material was filed in each country,
    (3) A verified statement (oath or declaration) containing:
    (i) An averment that the subject matter in question was not under a 
secrecy order at the time it was filed aboard, and that it is not 
currently under a secrecy order,
    (ii) A showing that the license has been diligently sought after 
discovery of the proscribed foreign filing, and
    (iii) An explanation of why the material was filed abroad through 
error and without deceptive intent without the required license under 
Sec. 5.11 first having been obtained, and
    (4) The required fee (Sec. 1.17(h)).

The above explanation must include a showing of facts rather than a mere 
allegation of action through error and without deceptive intent. The 
showing of facts as to the nature of the error should include statements 
by those persons having personal knowledge of the acts regarding filing 
in a foreign

[[Page 195]]

country and should be accompanied by copies of any necessary supporting 
documents such as letters of transmittal or instructions for filing. The 
acts which are alleged to constitute error without deceptive intent 
should cover the period leading up to and including each of the 
proscribed foreign filings.
    (b) If a petition for a retroactive license is denied, a time period 
of not less than thirty days shall be set, during which the petition may 
be renewed. Failure to renew the petition within the set time period 
will result in a final denial of the petition. A final denial of a 
petition stands unless a petition is filed under Sec. 1.181 within two 
months of the date of the denial. If the petition for a retroactive 
license is denied with respect to the invention of a pending application 
and no petition under Sec. 1.181 has been filed, a final rejection of 
the application under 35 U.S.C. 185 will be made.

[49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62 
FR 53206, Oct. 10, 1997]

                                 General



Secs. 5.31-5.33  [Reserved]



PART 6--CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT--Table of Contents




    Editorial Note: Part 6 is placed in a separate grouping of parts 
pertaining to trademarks. It appears on page 280 of this volume.



PART 7  [RESERVED]




[[Page 197]]

                   INDEX I--RULES RELATING TO PATENTS

  Editorial Note: This listing is provided for information purposes 
only. It is compiled and kept up-to-date by the Department of Commerce.

                                                                 Section

                                 A

Abandoned applications:
Abandonment by failure to prosecute................................1.135
Abandonment during interference.................................1.662(a)
Abandonment for failure to pay issue fee...........................1.137
Destruction after 20 yrs. unless marked for preservation.........1.14(b)
Express abandonment................................................1.138
Processing and retention fee.....................................1.21(l)
Referred to in issued patents.......................................1.14
Revival of.........................................................1.137
When to public inspection...........................................1.14
Abandonment of application. (See Abandoned applications.)
Abstract of the disclosure.(content, physical requirements)
                                                                    1.72
Separate sheet required for commencement of......................1.72(b)
Arrangement in overall application...........................1.77, 1.163
Access to pending applications (limited)
                                                                    1.14
Action by applicant
                                                             1.111-1.138
Address, Correspondence, only one recognized by Office
                                                                 1.33(c)
Address for notice to Commissioner of appeal to Fed. Cir
                                                                1.302(c)
Address of Solicitor's Office
                                                               1.1(a)(3)
Address of the Patent and Trademark Office
                                                                     1.1
Box CPA.......................................................1.53(d)(9)
Box Interference..................................................1.1(e)
Box M. Fee........................................................1.1(d)
Box Patent Ext....................................................1.1(f)
Box PCT...........................................................1.1(b)
Box Provisional Patent Application................................1.1(i)
Box Reexam........................................................1.1(c)
Administrator or executor, may make application and receive patent
                                                                    1.42
Proof of authority..................................................1.44
Admission to practice. (See Attorneys and agents.)
Affidavit (see also Oath in patent application):
After appeal.......................................................1.195
In support of application for reissue..............................1.175
To disqualify commonly owned patent as prior art...................1.130
To overcome cited patent or publication............................1.131
Traversing grounds of rejection....................................1.132
Agents. (See Attorneys and agents.)
Allowance and issue of patent:
Amendment after allowance..........................................1.312
Deferral of issuance...............................................1.314
Delayed payment of issue fee.......................................1.137
Delivery of patent.................................................1.315
Issuance of patent..........................................1.155, 1.314
Notice of allowance.........................................1.155, 1.311

[[Page 198]]

Patent to issue upon payment of issue fee..........................1.314
Patent to lapse if issue fee is not paid in full...................1.317
Patent withheld for nonpayment of issue fee.................1.155, 1.316
Reasons for.....................................................1.104(e)
Withdrawal from issue..............................................1.313
Allowed claims statement of grounds for rejecting, by Board of 
Patent Appeals and Interferences
                                                                   1.196
Amendment:
Adding or substituting claims...............................1.111, 1.121
After appeal.......................................................1.116
After decision on appeal, based on new rejection of Board of 
Patent Appeals and Interferences...................................1.196
After final action.................................................1.116
After final action (transitional procedures).......................1.129
After notice of allowance..........................................1.312
By patent owner....................................................1.530
Copying claim of another application for interference..............1.603
Copying claim of issued patent..............................1.606, 1.607
Drawings...........................................................1.121
Erasures and insertions............................................1.121
Involving a departure from original invention......................1.121
Manner of making...................................................1.121
May be required....................................................1.121
Not covered by original oath........................................1.67
Numbering of claims................................................1.126
Of amendments......................................................1.121
Of claims...................................................1.111, 1.121
Of disclosure......................................................1.121
Of drawing.........................................................1.121
Of specification...................................................1.121
Paper and writing...................................................1.52
Petition from refusal to admit.....................................1.127
Proposed during interference.......................................1.615
Provisional application..........................................1.53(c)
Reissue...........................................1.121(b), 1.173, 1.174
Requisites of...........................1.33, 1.111, 1.116, 1.121, 1.125
Right to amend................................1.111, 1.116, 1.121, 1.127
Signature to........................................................1.33
Substitute specification...........................................1.125
Time for...........................................................1.134
To accompany motion to amend interference..........................1.633
To applications in interference....................................1.633
To correct inaccuracies or prolixity...............................1.121
To correspond to original drawing or specification.................1.121
To preliminary statement in interference...........................1.628
To reissues.................................................1.173, 1.174
To save from abandonment...........................................1.135
Amino Acid Sequences. (See Nucleotide and/or Amino A Acid Sequences.)
Appeal to Board of Patent Appeals and Interferences:
Action following decision..........................................1.197
Affidavits after appeal............................................1.195
Brief..............................................................1.192
Decision by Board..................................................1.196
Examiner's answer..................................................1.193
Fees................................................................1.17
Hearing of.........................................................1.194
New grounds for refusing a patent..................................1.196
Notice of appeal...................................................1.191

[[Page 199]]

Rehearing..........................................................1.197
Reopening after decision...........................................1.198
Reply brief........................................................1.193
Statement of grounds for rejecting, by Board of Patent Appeals and 
Interferences......................................................1.196
Appeal to Court of Appeals for the Federal Circuit:
Fee provided by rules of court.....................................1.301
From Board of Patent Appeals and Interferences.....................1.301
Notice and reasons of appeal.......................................1.302
Time for....................................................1.302, 1.304
Applicant for patent
                                                               1.41-1.48
Change..............................................................1.48
Deceased or insane inventor...................................1.42, 1.43
Executor or administrator...........................................1.42
Informed of application number......................................1.54
Joint changed to sole...............................................1.48
Letters for, sent to attorney or agent..............................1.33
May be represented by an attorney or agent..........................1.31
Personal attendance unnecessary......................................1.2
Required to conduct business with decorum and courtesy...............1.3
Required to report assistance received..............................1.33
Sole changed to joint...............................................1.48
Sole changed to another sole........................................1.48
Application for patent (see also Abandoned applications, Claims, 
Drawing, Examination of application Reissues, Provisional applications, 
Specification):
Accepted and filed for examination only when complete...............1.53
Access to...........................................................1.14
Acknowledgement of filing...........................................1.54
Alteration after execution..........................................1.67
Alteration before execution.........................................1.52
Arrangement...........................................1.77, 1.154, 1.163
Continuation or division, reexecution not required...............1.53(b)
Continued Prosecution Application (CPA)..........................1.53(d)
Copies of, furnished to applicants..................................1.59
Cross-references of related applications............................1.78
Deceased or insane inventor...................................1.42, 1.43
Declaration.........................................................1.68
Duty of disclosure..................................................1.56
Elements of, order and arrangement of.................1.77, 1.154, 1.163
Execution in blank..................................................1.67
Filed by other than inventor............................1.42, 1.43, 1.47
Filed apparently without all pages of specification, petition 
asserting all pages were filed...................................1.53(e)
Filed apparently without any drawing, petition asserting drawing 
was filed, or was not necessary, or adding drawing along with new 
oath or declaration and seeking new filing date..................1.53(e)
Filed apparently without all figures of drawing:
Petition asserting all figures of drawing were filed.............1.53(e)
Petition and filing of missing figures with new oath or 
declaration seeking new filing date................................1.182
Filing date.........................................................1.53
Foreign language oath or declaration................................1.69
Formulas and tables.................................................1.58
General requisites..................................................1.51
Identification required in letters concerning........................1.5
Incomplete papers not accepted and filed for examination............1.53
Interlineations, etc., to be indicated..............................1.52
Language, paper, writing, margin....................................1.52

[[Page 200]]

Later filing of oath and filing fee..............................1.53(f)
Must be made by actual inventor, with exceptions..............1.41, 1.46
Names of all inventors required...............................1.41, 1.53
Non-English language................................................1.52
Nonprovisional filed without at least one claim, filing of 
petition to convert to a provisional application..............1.53(c)(2)
Owned by Government................................................1.103
Papers having filing date not to be returned........................1.59
Parts filed separately..............................................1.54
Parts of application desirably filed together.......................1.54
Parts of complete application.......................................1.51
Processing fees.....................................................1.17
Provisional application............................1.9, 1.51(c), 1.53(c)
Relating to atomic energy........................................1.14(c)
Reservation for future application not permitted....................1.79
Retention fee....................................................1.53(f)
Secrecy order....................................................5.1-5.6
Secret while pending................................................1.14
Serial number and filing date.......................................1.54
Tables and formulas.................................................1.58
To contain but one invention unless connected......................1.141
To whom made........................................................1.51
Two or more by same party with conflicting claims................1.78(b)
Application number
                                                         1.5(a), 1.53(a)
Arbitration award filing
                                                                   1.335
Arbitration in interference
                                                                   1.690
Assignee:
Correspondence held with assignee of entire interest..........3.71, 3.73
If of entire interest, patent may issue to him................1.46, 3.81
If of undivided part interest, correspondence will be held with 
inventor............................................................1.33
If of undivided part interest, must assent to application for 
reissue of patent...........................................1.171, 1.172
If of undivided part interest, patent may issue jointly.......1.46, 3.81
May conduct prosecution of application........................3.71, 3.73
May take action in interference....................................1.643
Taking of action in a patent matter before the Office by the 
Assignee, Assignee must establish its ownership of the patent 
application or patent involved to the satisfaction of the 
Commissioner.....................................................3.73(b)
Assignments and recording:
Abstracts of title, fee for......................................1.19(b)
Conditional assignments.............................................3.56
Date of receipt is date of record...................................3.51
Fees.......................................................1.21(h), 3.41
Cover Sheet required..........................................3.28, 3.31
Correction of Cover Sheet errors....................................3.34
Effect of recording.................................................3.54
Requirements for recording.....................................3.21-3.41
If recorded before payment of issue fee, patent may issue to 
assignee............................................................3.81
Must be recorded in Patent and Trademark Office to issue patent to 
assignee............................................................3.81
Orders for copies of................................................1.12
Patent may issue to assignee........................................3.81
Recording of assignments............................................3.11
Records open to public inspection...................................1.12
Must identify patent or application.................................3.21
What will be accepted for recording.................................3.11

[[Page 201]]

Atomic energy applications reported to Department of Energy
                                                                    1.14
Attorneys and agents:
Acting in a representative capacity...........................1.33, 1.34
Assignment will not operate as a revocation of power................1.36
Associate...........................................................1.34
Certificate of good standing.....................................1.21(a)
Fee on admission.................................................1.21(a)
General powers not recognized.......................................1.34
Office cannot aid in selection of...................................1.31
Personal interviews with examiners.................................1.133
Power of attorney or authorization of agent.........................1.34
Representative capacity.......................................1.33, 1.34
Representing conflicting parties...................................1.613
Required to conduct business with decorum and courtesy...............1.3
Revocation of power.................................................1.36
Withdrawal of.......................................................1.36
Authorization of agents. (See Attorneys and agents.)
Award in arbitration
                                                                   1.335

                                 B

Balance in deposit account
                                                                    1.25
Basic filing fee
                                                                    1.16
Benefit of earlier application
                                                                    1.78
Bill in equity. (See Civil action.)
Biological material. (See Deposit of Biological material)
Board of Patent Appeals and Interferences. (See Appeal to Board of 
Patent Appeals and Interferences, Interferences.)
Box CPA
                                                              1.53(d)(9)
Box PCT
                                                                  1.1(b)
Box Reexam
                                                                  1.1(c)
Briefs:
At final hearing in interference...................................1.656
In petitions to Commissioner.......................................1.181
On appeal to Board of Patent Appeals and Interferences.............1.192
Business to be conducted with decorum and courtesy
                                                                     1.3
Business to be transacted in writing
                                                                     1.2

                                 C

Certificate of correction
                                                            1.322, 1.323
Fees................................................................1.20
Mistakes not corrected.............................................1.325
Certificate of mailing (as first class mail) or transmission
                                                                     1.8
Certificate of mailing by Express Mail no 
longer required, effective December 2, 1996
                                                                    1.10
Certificate, Reexamination
                                                                   1.570
Certified copies of records, papers, etc
                                                                    1.13
Fee for certification............................................1.19(b)
Chemical and mathematical formulas and tables
                                                                    1.58
Citation of prior art in patent
                                                                   1.501
Citation of references
                                                                1.104(d)
Civil action
                                                            1.303, 1.304
Claims (see also Examination of applications):
Amendment of.......................................................1.121
Conflicting, same applicant or owner................................1.78
Date of invention of...............................................1.110
Dependent...........................................................1.75
Design patent......................................................1.153

[[Page 202]]

May be in dependent form............................................1.75
More than one permitted.............................................1.75
Multiple dependent..................................................1.75
Must conform to invention and specification.........................1.75
Notice of rejection of.............................................1.104
Numbering of.......................................................1.126
Part of complete application........................................1.51
Plant patent.......................................................1.164
Rejection of....................................................1.104(c)
Required............................................................1.75
Separate Sheet required for commencement of claim(s).............1.52(b)
Twice or finally rejected before appeal............................1.191
Color drawing
                                                              1.84(a)(2)
Commissioner of Patents and Trademarks (see also Petition to 
Commissioner):
Address of...........................................................1.1
All communications to Patent and Trademark Office to be addressed 
to...................................................................1.1
Cases decided by Board reopened only by............................1.198
Initiates reexamination............................................1.520
Reissue in divisions referred to...................................1.177
Return of papers in violation of rule on decorum and courtesy........1.3
Common Ownership, statement by assignee may be required
                                                                 1.78(c)
Complaints against examiners, how presented
                                                                     1.3
Composition of matter, specimens of ingredients may be required
                                                                    1.93
Computer program listings
                                                                    1.96
Concurrent office proceedings
                                                                   1.565
Conduct of reexamination proceedings
                                                                   1.550
Conflicting claims, same applicant or owner in two or more 
applications
                                                                    1.78
Continuing application for invention disclosed and claimed in 
prior application
                                                                 1.53(b)
Continued Prosecution Application (CPA)
                                                                 1.53(d)
Copies of patents, records, etc
                                                        1.11, 1.12, 1.13
Copies of records, fees
                                                           1.19(b), 1.59
Copyright notice in specification
                                                                 1.71(d)
Copyright notice in drawings
                                                                 1.84(s)
Correction, certificate of
                                                            1.322, 1.323
Correction of inventorship
                                                                    1.48
Correspondence:
Address, only one recognized.....................................1.33(c)
All letters and communications to the Office to be addressed to 
(a) Assistant Commissioner for Patents; or (b) Assistant 
Commissioner for Trademarks; or (c) Commissioner of Patents and 
Trademarks...........................................................1.1
Business with the Office to be transacted by.........................1.2
Discourteous communications returned.................................1.3
Double, with different parties in interest not allowed..............1.33
Facsimile transmissions...........................................1.6(d)
Held with attorney or agent.........................................1.33
Identification of application or patent in letter relating to........1.5
May be held exclusively with assignee of entire interest............3.81
Nature of............................................................1.4
Patent owners in reexamination...................................1.33(c)
Receipt of letters and papers........................................1.6
Resumed with principal, if power or authorization is revoked........1.36
Rules for conducting in general..................................1.1-1.8
Secrecy, License to Export or File in Foreign Countries..............5.1
Separate letter for each subject of inquiry..........................1.4

[[Page 203]]

Signature requirements............................................1.4(d)
When no attorney or agent...........................................1.33
With attorney or agent after power or authorization is filed........1.33
Coupons sold by the Office
                                                                    1.24
Court of Appeals for the Federal Circuit, appeal to. (See Appeal to 
Court of Appeals for the Federal Circuit.)
CPA (Continued Prosecution Application)
                                                                 1.53(d)

                                 D

Date of invention of subject matter of individual claims
                                                                   1.110
Day for taking any action or paying any fee falling on Saturday, 
Sunday, or Federal holiday
                                                                     1.7
Death or insanity of inventor
                                                              1.42, 1.43
Decision on appeal by the Board of Patent Appeals and 
Interferences
                                                                   1.196
Action following decision..........................................1.197
Declaration (See also Oath in patent application).
Foreign language....................................................1.69
In lieu of oath.....................................................1.68
In patent application...............................................1.68
Definitions:
Independent inventor.................................................1.9
National and international applications..............................1.9
Nonprofit organization...............................................1.9
Nonprovisional application...........................................1.9
Provisional application..............................................1.9
Service of process.....................................15 C.F.R. Part 15
Small business concern...............................................1.9
Small entity.........................................................1.9
Terms under Patent Cooperation Treaty..............................1.401
Testimony by employees................................15 C.F.R. Part 15a
Delivery of patent
                                                                   1.315
Deposit accounts
                                                                    1.25
Fees.............................................................1.21(b)
Deposit of computer program listings
                                                                    1.96
Deposit of Biological Material:
Acceptable depository..............................................1.803
Biological material................................................1.801
Examination procedures.............................................1.809
Furnishing of samples..............................................1.808
Need or Opportunity to make a deposit..............................1.802
Replacement or supplemental deposit................................1.805
Term of deposit....................................................1.806
Time of making original deposit....................................1.804
Viability of deposit...............................................1.807
Depositions (See also Testimony in interferences):
Certificate of officer to accompany................................1.676
Formalities to be observed in preparing............................1.677
Person before whom taken...........................................1.674
To be sealed up, addressed, and forwarded to the Commissioner......1.676
When transcript must be filed......................................1.678
Description of invention. (See Specification.)
Design Patent Applications:
Arrangement of specification.......................................1.154
Claim..............................................................1.153
Drawing............................................................1.152
Filing fee.......................................................1.16(f)

[[Page 204]]

Issue and term.....................................................1.155
Issue fee........................................................1.18(b)
Oath...............................................................1.153
Rules applicable...................................................1.151
Title, description and claim.......................................1.153
Determination of request for reexamination
                                                                   1.515
Disclaimer, statutory:
During interference.............................................1.662(a)
Fee..............................................................1.20(d)
Requirements of....................................................1.321
Terminal...........................................................1.321
Disclosure, amendments to not permitted
                                                                   1.121
Disclosure document fee
                                                                 1.21(c)
Discovery in interferences
                                                             1.672-1.688
Division. (See Restriction of application.)
Division of patent on reissue
                                                                   1.177
Document supply fees
                                                                    1.19
Drawing:
Amendment of.......................................................1.121
Arrangement of views.............................................1.84(h)
Arrows...........................................................1.84(r)
Character of lines...............................................1.84(l)
Color.........................................................1.84(a)(2)
Content of drawing..................................................1.83
Copyright notice.................................................1.84(s)
Correction.......................................1.84(w), 1.85(c), 1.121
Cost of copies of...................................................1.19
Design application.................................................1.152
Extraneous matter................................................1.83(a)
Figure for Official Gazette......................................1.84(j)
Filed with application..............................................1.81
Hatching and shading.............................................1.84(m)
Holes............................................................1.84(x)
Identification...................................................1.84(c)
If of an improvement, must show connection with old structure....1.83(b)
Inferior or defective drawings will be rejected.....................1.85
Informal drawings...................................................1.85
Ink...........................................................1.84(a)(1)
Lead lines.......................................................1.84(q)
Legends..........................................................1.84(o)
Letters..........................................................1.84(p)
Location of names................................................1.84(c)
Margin...........................................................1.84(g)
Mask work notice.................................................1.84(s)
Must be described in and referred to specification..................1.74
Must show every feature of the invention............................1.83
No return or release.............................................1.85(b)
Numbering of sheets..............................................1.84(t)
Numbering of views...............................................1.84(u)
Numbers..........................................................1.84(p)
Original may be used with application for reissue..................1.174
Original should be retained by applicant.........................1.81(a)
Paper............................................................1.84(e)
Part of application papers.......................................1.52(b)
Photographs......................................................1.84(b)
Plant patent application.....................................1.81, 1.165
Printed and published by the Office when patented...................1.84
Reference characters.......................................1.74, 1.84(p)

[[Page 205]]

Reissue............................................................1.174
Release not permitted............................................1.85(b)
Required by law when necessary for understanding....................1.81
Scale............................................................1.84(k)
Security markings................................................1.84(v)
Shading..........................................................1.84(m)
Size of sheet....................................................1.84(f)
Specific rules relating to preparation of drawings will be 
enforced............................................................1.85
Standards for drawings..............................................1.84
Symbols..........................................................1.84(n)
Views............................................................1.84(h)
When necessary, part of complete application........................1.51
Duty of disclosure
                                                             1.56, 1.555
Patent term extension..............................................1.765

                                 E

Election of species
                                                                   1.146
Employee testimony (see Testimony by Office employees)
Establishing small entity status
                                                              1.27, 1.28
Evidence. (See Testimony in interferences.)
Examination of applications:
Advancement of examination.........................................1.102
As to form.........................................................1.104
Citation of references..........................................1.104(d)
Completeness of examiner's action...............................1.104(b)
Examiner's action...............................................1.104(a)
International-type search.......................................1.104(a)
Nature of examination...........................................1.104(a)
Reasons for allowance...........................................1.104(e)
Reexamination after rejection if requested.........................1.111
Reexamination of original claims upon reissue......................1.176
Reissue............................................................1.176
Rejection of claims.............................................1.104(c)
Suspension of......................................................1.103
Examination of papers by attorney or agent not permitted without 
authorization
                                                                    1.34
Examiners:
Answers on appeal..................................................1.193
Complaints against...................................................1.3
Interviews with....................................................1.133
Executors
                                                              1.42, 1.44
Exhibits. (See Models and exhibits.)
Export of technical data
                                                              5.19, 5.20
Express abandonment
                                                                   1.138
Express Mail, Addressee Only, USPS
                                                                    1.10
Certificate of mailing by, not required eff. 12/2/96................1.10
Date of Receipt of...................................................1.6
Petition in regard to...............................................1.10
Extension of patent term
Due to regulatory review period (35 U.S.C. 156):
Applicant for......................................................1.730
Application for....................................................1.740
Calculation of term:
Animal Drug Product................................................1.778
Food or color additive.............................................1.776
Human drug product.................................................1.775
Medical device.....................................................1.777

[[Page 206]]

Veterinary biological product......................................1.779
Certificate........................................................1.780
Conditions for..............................................1.701, 1.720
Determination of eligibility.......................................1.750
Duty of disclosure.................................................1.765
Filing date of application.........................................1.741
Complete application, what constitutes..........................1.741(a)
Review of determination via 1.181...............................1.741(b)
Interim extension..................................................1.760
Multiple applications..............................................1.785
Patents subject to..........................................1.701, 1.710
Withdrawal of application..........................................1.770
Due to prosecution delay (35 U.S.C. 154):
Conditions for..................................................1.701(a)
Appellate review.............................................1.701(a)(3)
Interference proceeding......................................1.701(a)(1)
Secrecy order................................................1.701(a)(2)
Calculation of term:
Appellate Review.............................................1.701(c)(3)
Interference proceeding......................................1.701(c)(1)
Maximum extension...............................................1.701(b)
Reduction of extension..........................................1.701(d)
Secrecy order................................................1.701(c)(2)
Extension of time
                                                                   1.136
Fees.........................................................1.17(a)-(d)
Interference proceedings...........................................1.645
Reexamination proceedings.......................................1.550(c)

                                 F

Facsimile transmissions
                                                             1.6(d), 1.8
Federal Holiday, defined for 35 USC 21 purposes
                                                                  1.9(h)
FEDERAL REGISTER, publication of rules in
                                                                   1.351
Fees and payment of money:
Coupons.............................................................1.24
Deposit account.....................................................1.25
Extension of time................................................1.17(a)
Fee on appeal to the Court of Appeals for the Federal Circuit 
provided by rules of court.........................................1.301
Fees in case of petitions.......................................1.181(d)
Fees payable in advance.............................................1.22
Foreign filing license petition..................................1.17(h)
For international-type search report.............................1.21(e)
Method of payment...................................................1.23
Money by mail at risk of sender.....................................1.23
Money paid by mistake...............................................1.26
Petitions...........................................................1.17
Reexamination request............................................1.20(c)
Refunds.............................................................1.26
Relating to international applications.............................1.445
Schedule of fees and charges...................................1.16-1.21
Files and papers of abandoned applications, disposition
                                                                    1.14
Files open to the public
                                                                    1.11
Filing date of application
                                                                    1.53
Filing fee part of complete application
                                                                    1.51
Filing fees
                                                                    1.16
Filing in Post Office
                                                         1.8(a)(2), 1.10
Filing of interference settlement agreements
                                                                   1.666
Final rejection:

[[Page 207]]

Appeal from........................................................1.191
Response to..........................................1.113, 1.116, 1.129
When and how given.................................................1.113
First Class Mail (Priority Mail and Express Mail)
                                                               1.8, 1.10
Foreign application
                                                                    1.55
License to file................................................5.11-5.25
Foreign country:
Taking oath in......................................................1.66
Taking testimony in................................................1.671
Foreign mask work protection
                                                                Part 150
Evaluation of request..............................................150.4
Definition.........................................................150.1
Duration of proclamation...........................................150.5
Initiation of evaluation...........................................150.2
Mailing address....................................................150.6
Submission of requests.............................................150.3
Foreign patent rights acquired by government
                                                            101.1-101.11
Licensing....................................................102.1-102.6
Formulas and tables in patent applications
                                                                    1.58
Fraud practiced or attempted on Office
                                                           1.28(d), 1.56

                                 G

Gazette. (See Official Gazette.)
General authorization to charge deposit account
                                                                    1.25
General information and correspondence
                                                           1.1-1.8, 1.10
Government acquisition of foreign patent rights
                                                                Part 501
Government employee invention
                                                                Part 501
Guardian of insane person may apply for patent
                                                                    1.43

                                 H

Hearings:
Before the Board of Patents Appeals and Interferences..............1.194
Fee for appeal hearing..............................................1.17
In disciplinary proceedings.......................................10.144
Of motions in interferences........................................1.640
Holiday, time for action expiring on
                                                                1.6, 1.7

                                 I

Identification of application, patent or registration
                                                                     1.5
Independent inventor:
Definition...........................................................1.9
Status statement....................................................1.27
Information disclosure statement:
At time of filing application.......................................1.51
Content of..........................................................1.98
Not permitted in provisional applications...........................1.51
Reexamination......................................................1.555
To comply with duty of disclosure...................................1.97
Information, Public
                                                                    1.15
Insane inventor, application by guardian of
                                                                    1.43
Interferences (See also Depositions, Notice, Preliminary Statement in 
interferences, Testimony in interferences):
Abandonment of the contest.........................................1.662
Access to applications.............................................1.612
Access to preliminary statement....................................1.631
Action by examiner after interference..............................1.664

[[Page 208]]

Action if statutory bar appears.............................1.641, 1.659
Addition of new party by judge.....................................1.642
Amendment during.....................................1.615, 1.634, 1.637
Appeal to the Court of Appeals for the Federal Circuit......1.301, 1.302
Applicant requests.................................................1.604
Arbitration........................................................1.690
Briefs at final hearing............................................1.656
Burden of proof....................................................1.657
Civil action.......................................................1.303
Claims copied from patent...................................1.606, 1.607
Claims of defeated parties stand finally disposed of...............1.663
Concession of priority.............................................1.662
Conflicting parties having same attorney...........................1.613
Copying claims from patent..................................1.606, 1.607
Correspondence....................................................1.5(e)
Declaration of interference........................................1.611
Definition.........................................................1.601
Disclaimer to avoid interference................................1.662(a)
Discovery...................................................1.671, 1.688
Dissolution of.....................................................1.633
Dissolution on motion of judge.....................................1.641
Extensions of time.................................................1.645
Failure of junior party to take testimony..........................1.652
Failure to prepare for.......................................1.603-1.606
Final decision.....................................................1.658
Final hearing......................................................1.654
Final hearing briefs...............................................1.656
Identifying claim from patent...............1.607(a)(3), 1.637(e)(1)(vi)
In what cases declared.............................................1.602
Inspection of cases of opposing parties............................1.612
Interference with a patent...................................1.606-1.608
Junior party fails to overcome filing date of senior party.........1.640
Jurisdiction of interference.......................................1.614
Manner of service of papers........................................1.646
Matters considered in at final hearing.............................1.655
Motions......................................................1.633-1.638
NAFTA country...................................................1.601(r)
Nonpatentability argued at final hearing...........................1.655
Notice and access to applications of opposing parties..............1.612
Notice of intent to argue abandonment..............................1.632
Notice of reexamination, reissue, protest or litigation............1.660
Notice to file civil action........................................1.303
Notices and statements.............................................1.611
Order to show cause, judgment on the record........................1.640
Ownership of applications or patents involved......................1.602
Petitions..........................................................1.644
Preliminary statement........................................1.621-1.631
Preparation for..............................................1.603-1.609
Presumption as to order of invention...............................1.657
Prosecution by assignee............................................1.643
Recommendation by Board of Patent Appeals and Interferences........1.659
Record and exhibits................................................1.653
Records of, when open to public.....................................1.11
Reissue filed by patentee during...................................1.662
Request by applicant...............................................1.604
Requests for findings of fact and conclusions of law...............1.656
Return of unauthorized papers......................................1.618
Review of decision by civil action.................................1.303

[[Page 209]]

Same party.........................................................1.602
Sanctions for failure to comply with rules or order................1.616
Sanctions for taking and maintaining a frivolous position..........1.616
Second interference between same parties...........................1.665
Secrecy order cases...............................................5.3(b)
Service of papers..................................................1.646
Statement of, from examiner to Board...............................1.609
Status of claims of defeated applicant after interference..........1.663
Statutory disclaimer by patentee during............................1.662
Suggestion of claims for interference..............................1.605
Summary judgement..................................................1.617
Suspension of ex parte prosecution.................................1.615
Termination of interference........................................1.661
Testimony copies...................................................1.653
Time period for completion.........................................1.610
Times for discovery and taking testimony...........................1.651
Translation of document in foreign language........................1.647
WTO member country..............................................1.601(s)
International application. (See Patent Cooperation Treaty.)
International Preliminary Examining Authority
                                                                   1.416
Interview summary
                                                                   1.133
Interviews with examiner
                                                            1.133, 1.560
Inventor (see also Applicant for patent, Oath in patent application):
Death or insanity of..........................................1.42, 1.43
Refuses to sign application.........................................1.47
To make application.................................................1.41
Unavailable.........................................................1.47
Inventor's certificate priority benefit
                                                                    1.55
Inventorship and date of invention of the subject matter of 
individual claims
                                                                   1.110
Issue fee
                                                                    1.18
Issue of patent. (See Allowance and issue of patent.)
                                 J

Joinder of inventions in one application
                                                                   1.141
Joint inventors
                                                       1.45, 1.47, 1.324
Joint patent to inventor and assignee
                                                              1.46, 3.81
Jurisdiction:
After decision by Board of Patent Appeals and Interferences.......1.197, 
                                                                   1.198
After notice of allowance..........................................1.312
Of contested case..................................................1.614

                                 L

Lapsed patents
                                                            1.137, 1.317
Legal representative of deceased or incapacitated inventor
                                                              1.42, 1.43
Legibility of papers which are to become part of the permanent 
Office records
                                                                 1.52(a)
Letters to the Office. (See Correspondence.)
Library service fee
                                                                 1.19(c)
License for foreign filing
                                                               5.11-5.15
Licensing of government owned foreign patents
                                                             102.1-102.6
List of U.S. Patents classified in a subclass, cost of
                                                                 1.19(d)
Local delivery box rental
                                                                 1.21(d)

                                 M

Maintenance fees
                                                             1.20(e)-(i)

[[Page 210]]

Acceptance of delayed payment of...................................1.378
Fee address for....................................................1.363
Review of decision refusing to accept..............................1.377
Submission of......................................................1.366
Time for payment of................................................1.362
Mask work notice in specification
                                                                 1.71(d)
Mask work notice on drawing
                                                                 1.84(s)
Mask work protection, foreign
                                                                Part 150
Microfiche deposit
                                                                    1.96
Microorganisms. (see) Deposit of Biological Material.)
Minimum balance in deposit accounts
                                                                    1.25
Misjoinder of inventor
                                                             1.48, 1.324
Missing pages when application filed
Petition alleging there were no missing pages....................1.53(e)
Petition with new oath or declaration and later submission of 
missing pages seeking new filing date..............................1.182
Mistake in patent, certificate thereof issued
                                                            1.322, 1.323
Models and exhibits:
Copies of...........................................................1.95
If not claimed within reasonable time, may be disposed of by 
Commissioner........................................................1.94
If on examination model be found necessary request therefor will 
be made.............................................................1.91
In contested cases.................................................1.676
May be required..................................................1.91(b)
Model not generally required as part of application or patent.......1.91
Not to be taken from the Office except in custody of sworn 
employee............................................................1.95
Return of...........................................................1.94
Working model may be required....................................1.91(b)
Money. (See Fees and payment of money.)
Motions in interference
                                                             1.633-1.637
To take testimony in foreign country...............................1.671

                                 N

Name of applicant
                                                                    1.41
New matter inadmissible in application
                                                                   1.121
New matter inadmissible in reexamination
                                                      1.530(d), 1.552(b)
New matter inadmissible in reissue
                                                                   1.173
Non-English language specification fee
                                                                 1.17(k)
Nonprofit organization:
Definition...........................................................1.9
Status statement....................................................1.27
Notice:
Of allowance of application........................................1.311
Of appeal to the Court of Appeals for the Federal Circuit...1.301, 1.302
Of arbitration award...............................................1.335
Of defective reexamination request..............................1.510(c)
Of interference....................................................1.611
Of oral hearings on appeals before Board of Patent Appeals and 
Interference.......................................................1.194
Of rejection of an application..................................1.104(a)
Of use of official records as evidence.............................1.682
To conflicting parties with same attorney or agent.................1.613
Nucleotide and/or Amino Acid Sequences:
Amendments to......................................................1.825
Disclosure in patent application...................................1.821

[[Page 211]]

Format for sequence data...........................................1.822
Form and format for computer readable form.........................1.824
Replacement of.....................................................1.825
Requirements.......................................................1.823

                                 O

Oath or declaration in patent application:
Apostilles..........................................................1.66
Before whom taken in foreign countries..............................1.66
Before whom taken in the United States..............................1.66
By administrator or executor..................................1.42, 1.63
By guardian of insane.........................................1.43, 1.63
Certificate of Officer administering................................1.66
Continuation-in-part.............................................1.63(e)
Declaration.........................................................1.68
Foreign language....................................................1.69
Identification of specification to which it is directed.............1.63
International application, National Stage..........................1.497
Inventor's Certificate..............................................1.63
Made by inventor..............................................1.41, 1.63
Officers authorized to administer oaths.............................1.66
Part of complete application........................................1.51
Person making.......................................................1.64
Plant patent application...........................................1.162
Requirements of.....................................................1.63
Ribboned to other papers............................................1.66
Sealed..............................................................1.66
Signature to........................................................1.63
Supplemental oath for matter disclosed but not originally claimed, 
or for other noncompliance with 1.63................................1.67
To acknowledge duty of disclosure...................................1.63
When taken abroad to seal all papers................................1.66
Oath or declaration in reissue application
                                                                   1.175
Object of the invention
                                                                    1.73
Office action time for response
                                                                   1.134
Office fees. (See Fees and payment of money.)
Official action, based exclusively upon the written record
                                                                     1.2
Official business, should be transacted in writing
                                                                     1.2
Official Gazette:
Amendments to rules published in...................................1.351
One view of drawing published in.................................1.84(j)
Reexamination order published in is returned undelivered........1.525(b)
Service of notices in..............................................1.646
Oral statements
                                                                     1.2
Order to reexamine
                                                                   1.525

                                 P

Papers (requirements to become part of Office permanent records, 
e.g. legibility, capable of reproduction, etc.)
                                                                    1.52
Handwritten, no longer permitted.................................1.52(a)
Papers not received on Saturday, Sunday or holidays
                                                                     1.6
Patent application (See Application for patent and Provisional patent 
applications.)
Patent attorneys and agents. (See Attorneys and agents.)
Patent Cooperation Treaty:
Amendments and corrections during international processing.........1.471
Amendments during international preliminary examination............1.485

[[Page 212]]

Applicant for international application............................1.421
Changes in person, name and address, where filed.........1.421(f), 1.472
Conduct of international preliminary examination...................1.484
Definition of terms................................................1.401
Delays in meeting time limits......................................1.468
Demand for international preliminary examination...................1.480
Designation of States..............................................1.432
Entry into national stage..........................................1.491
As a designated office.............................................1.494
As an elected office...............................................1.495
Examination at national stage......................................1.496
Fees:
Designation fees...................................................1.432
Due on filing of international application......................1.431(c)
Failure to pay results in withdrawal of application......1.431(d), 1.432
Filing and processing fees.........................................1.445
International preliminary examining................................1.482
National stage.....................................................1.492
Refunds............................................................1.446
Filing by other than inventor......................................1.425
International application requirements.............................1.431
Abstract...........................................................1.438
Claims.............................................................1.436
Description........................................................1.435
Drawings...........................................................1.437
Physical requirements..............................................1.433
Request............................................................1.434
International Bureau...............................................1.415
International Preliminary Examining Authority......................1.416
Inventor deceased..................................................1.422
Inventor insane or legally incapacitated...........................1.423
Inventors, joint...................................................1.424
National stage examination.........................................1.496
Oath or declaration at national stage..............................1.497
Priority, claim for................................................1.451
Record copy to International Bureau, Transmittal procedures........1.461
Representation by attorney or agent................................1.455
Rule 13............................................................1.475
Time limits for processing applications.....................1.465, 1.468
United States as:
Designated Office...........................................1.414, 1.497
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unity of invention:
Before International Searching Authority....................1.475, 1.476
Before International Preliminary Examining Authority...............1.488
National stage.....................................................1.499
Protest to lack of..........................................1.477, 1.489
Patent policy, government
                                                            100.1-100.11
Patentee notified of interference
                                                                   1.602
Patents (see also Allowance and issue of Patent):
Available for license or sale, publication of notice.............1.21(i)
Certified copies of.................................................1.13
Copying claims of...........................................1.606, 1.607
Correction of errors in.......................1.171, 1.322, 1.323, 1.324
Date, duration and form............................................1.137
Delivery of........................................................1.315
Disclaimer.........................................................1.321

[[Page 213]]

Identification required in letters concerning........................1.5
Lapsed, for nonpayment of issue fee................................1.137
Obtainable by civil action.........................................1.303
Price of copies.....................................................1.19
Records of, open to public..........................................1.11
Reissuing of, when defective.................................1.171-1.179
Payment of fees
                                                                    1.23
Personal attendance unnecessary
                                                                     1.2
Petition for reissue
                                                            1.171, 1.172
Petition to Commissioner:
Fees................................................................1.17
For delayed payment of issue fee...................................1.137
For license for foreign filing......................................5.12
For the revival of an abandoned application........................1.137
From formal objections or requirements......................1.113, 1.181
From requirement for restriction............................1.129, 1.144
General requirements...............................................1.181
In interferences...................................................1.644
In reexamination................................................1.515(c)
On refusal of examiner to admit amendment..........................1.127
Questions not specifically provided for............................1.182
Suspension of rules................................................1.183
To exercise supervisory authority..................................1.181
To make special....................................................1.102
Upon objection that appeal is informal.............................1.193
Plant patent applications:
Applicant..........................................................1.162
Claim..............................................................1.164
Declaration........................................................1.162
Description........................................................1.162
Drawings...........................................................1.165
Examination........................................................1.167
Fee for copies......................................................1.19
Filing fee.......................................................1.16(g)
Issue fee........................................................1.18(c)
Oath...............................................................1.162
Rules applicable...................................................1.161
Specification......................................................1.163
Specimens..........................................................1.166
Post issuance fees
                                                                    1.20
Post Office receipt as filing date
                                                                    1.10
Postal emergency or interruption
                                                                  1.6(e)
Power of attorney. (See Attorneys and agents.)
Preliminary statement in interferences:
Access to..........................................................1.631
Contents to..................................................1.622-1.627
Contents of, invention made in other than the United States, a 
NAFTA country, or a WTO member country.............................1.624
Correction of statement on motion..................................1.628
Effect of statement................................................1.629
Failure to file.............................................1.639, 1.640
In case of motion to amend interference............................1.633
May be amended if defective........................................1.628
Not evidence.......................................................1.630
Reliance on prior application......................................1.626
Requirement for....................................................1.621
Sealed before filing...............................................1.627
Service on opposing parties........................................1.621

[[Page 214]]

Subsequent testimony alleging prior dates excluded.................1.629
When opened to inspection..........................................1.631
Preserved in confidence, applications
                                                           1.12 and 1.14
Exceptions (status, access or copies available).....................1.14
Printing testimony
                                                                   1.653
Prior art citation in patent
                                                                   1.501
Prior Art, disqualification of commonly owned patent as
                                                                   1.130
Prior art may be made of record in patent file
                                                                   1.501
Prior art statement:
Content of..........................................................1.98
In reexamination...................................................1.555
To comply with duty of disclosure...................................1.97
Prior Invention, affidavit or declaration of, to overcome cited 
patent or publication
                                                                   1.131
Priority, right of, under treaty or law
                                                                    1.55
Processing and retention fee
                                                        1.21(l), 1.53(f)
Proclamation as to protection of foreign mask works
                                                                Part 150
Production of documents in legal proceedings
                                                      15 C.F.R. Part 15a
Protests to grant of patent
                                                                   1.291
Provisional patent applications:
Claiming the benefit of.......................................1.78(a)(3)
Converting a nonprovisional to a provisional..................1.53(c)(2)
Filing date.........................................................1.53
Filing fee.......................................................1.16(k)
General requisites............................................1.51(b)(2)
Later filing of filing fee and cover sheet.......................1.53(g)
Names of all inventors required............................1.41, 1.53(c)
No right of priority..........................................1.53(c)(2)
No examination...................................................1.53(i)
Papers concerning, must identify provisional applications as such, 
and by application number.........................................1.5(f)
Parts of complete provisional application........................1.51(c)
Processing fees.....................................................1.17
Revival of.........................................................1.137
When abandoned................................................1.53(e)(2)
Public information
                                                                    1.15
Public use proceedings
                                                                   1.292
Fee..............................................................1.17(j)
Publication:
Of reexamination certificate....................................1.570(f)

                                 R

Reasons for allowance
                                                                1.104(e)
Reconsideration of Office action
                                                                   1.112
Recording of assignments. (See Assignments and recording.)
Records of the Patent and Trademark Office
                                                               1.11-1.15
Records used as evidence in interference
                                                                   1.682
Reexamination:
Amendments, manner of making....................................1.121(c)
Announcement in Official Gazette.................................1.11(c)
Appeal to Board....................................................1.191
Appeal to Court of Appeals for the Federal Circuit.................1.301
Certificate........................................................1.570
Civil action.......................................................1.303
Common ownership, statement by assignee may be required..........1.78(c)
Concurrent office proceedings......................................1.565
Conduct of proceedings.............................................1.550

[[Page 215]]

Correspondence address...........................................1.33(c)
Decision of request................................................1.515
Duty of disclosure.................................................1.555
Examiner's action..................................................1.104
Fee..............................................................1.20(c)
Fee charged to deposit account......................................1.25
Fee refund..........................................................1.26
Identification in letter..........................................1.5(d)
Initiated by Commissioner..........................................1.520
Interference.......................................................1.565
Interviews.........................................................1.560
Open to public...................................................1.11(d)
Order..............................................................1.525
Reconsideration....................................................1.112
Refund of fee.......................................................1.26
Reply by requester.................................................1.535
Reply to action....................................................1.111
Request............................................................1.510
Response consideration.............................................1.540
Scope..............................................................1.552
Service............................................................1.248
Statement of patent owner..........................................1.530
Reference characters in drawings
                                                           1.74, 1.84(p)
References cited on examination
                                                                1.104(d)
Refund of money paid by mistake
                                                                    1.26
Register of Government interest in patents
                                                                 7.1-7.7
Rehearing:
Of appeal decisions by Board of Patent Appeals and Interferences 
                                                                1.197(b)
Request for, time for appeal after action on.......................1.304
Reissues:
Applicants, assignees..............................................1.172
Application for reissue............................................1.171
Application made and sworn to by inventor, if living...............1.172
Amendment to specification.........................................1.173
Declaration........................................................1.175
Drawings...........................................................1.174
Examination of reissue.............................................1.176
Filed during interference.......................................1.662(b)
Filing during reexamination........................................1.565
Filing fee..........................................................1.16
Filing of announced in Official Gazette..........................1.11(b)
Grounds for and requirements.................................1.171-1.179
Issue fee........................................................1.18(a)
Loss of original patent............................................1.178
Notice of reissue application......................................1.179
Oath...............................................................1.175
Open to public......................................................1.11
Original claims subject to reexamination...........................1.176
Original patent surrendered........................................1.178
Reissue in divisions...............................................1.177
Specification......................................................1.173
Take precedence in order of examination............................1.176
To contain no new matter...........................................1.173
What must accompany application.............................1.171, 1.172
When in interference...............................................1.660
Rejection:
After two rejections appeal may be taken from examiner to Board of 
Appeals............................................................1.191

[[Page 216]]

Applicant will be notified of rejection with reasons and 
references.........................................................1.104
Examiner may rely on admissions by applicant or patent owner, or 
facts within examiner's knowledge...............................1.104(c)
Final..............................................................1.113
Formal objections..................................................1.104
On account of invention shown by others but not claimed, how 
overcome...........................................................1.131
References will be cited........................................1.104(c)
Requisites of notice of............................................1.104
Reply brief
                                                                   1.193
Reply by applicant or patent owner
                                                                   1.111
Reply by requester
                                                                   1.535
Representative capacity
                                                                 1.34(a)
Request for reconsideration
                                                                   1.112
Request for reexamination
                                                                   1.510
Reservation clauses not permitted
                                                                    1.79
Response time to Office action
                                                                   1.134
Restriction of application
                                                             1.141-1.146
Claims to nonelected invention withdrawn...........................1.142
Constructive election..............................................1.145
Petition from requirements for..............................1.129, 1.144
Provisional election...............................................1.143
Reconsideration of requirement.....................................1.143
Requirement for....................................................1.142
Subsequent presentation of claims for different invention..........1.145
Transitional procedures............................................1.129
Retention fees
                                                        1.21(l), 1.53(f)
Return of correspondence
                                                                  1.5(a)
Return of papers having a filing date
                                                                    1.59
Revival of abandoned application
                                                                   1.137
Unavoidable abandonment fee......................................1.17(l)
Unintentional abandonment fee....................................1.17(m)
Revocation of power of attorney or authorization of agent
                                                                    1.36
Rules of Practice:
Amendments to rules will be published..............................1.351

                                 S

Saturday, when last day falls on
                                                                     1.7
Scope of reexamination proceedings
                                                                   1.552
Secrecy order
                                                                 5.1-5.6
Serial number of application (Obsolete terminology) (see 
Application Number)
                                             1.5, 1.53, 1.54(b), 1.62(e)
Service of notices:
For taking testimony...............................................1.673
In interference cases..............................................1.611
Of appeal to the Court of Appeals for the Federal Circuit..........1.301
Service of papers
                                                                   1.248
Service of process
                                                       15 C.F.R. Part 15
Acceptance of service of process....................................15.3
Definition..........................................................15.2
Scope and purpose...................................................15.1
Shortened period for response
                                                                   1.134
Signature:
Original required for certain correspondence......................1.4(d)
Copy Acceptable for some correspondence...........................1.4(d)
To amendments, etc..................................................1.33
To express abandonment.............................................1.138

[[Page 217]]

To oath.............................................................1.63
To reissue oath or declaration.....................................1.172
Small business concern:
Definition...........................................................1.9
Status statement
                                                                    1.27
Small entity:
Definition...........................................................1.9
License to Federal Agency...........................................1.27
Statement...........................................................1.27
Statement in parent application.....................................1.28
Status establishment..........................................1.27, 1.28
Status update.......................................................1.28
Solicitor's address
                                                               1.1(a)(3)
Species of invention claimed
                                                            1.141, 1.146
Specification (see also Application for patent, Claims):
Abstract............................................................1.72
Amendments to...............................................1.121, 1.125
Arrangement of........................................1.77, 1.154, 1.163
Best mode...........................................................1.71
Claim...............................................................1.75
Contents of....................................................1.71-1.75
Copyright notice.................................................1.71(d)
Cross-references to other applications..............................1.78
Description of the invention........................................1.71
Erasures and insertions must not be made by applicant..............1.121
If defective, reissue to correct.............................1.171-1.179
Mask work notice.................................................1.71(d)
Must conclude with specific and distinct claim......................1.75
Must point out new improvements specifically........................1.71
Must refer by figures to drawings...................................1.74
Must set forth the precise invention................................1.71
Not returned after completion.......................................1.59
Object of the invention.............................................1.73
Order of arrangement in framing.....................................1.77
Paper, writing, margins.............................................1.52
Part of complete application........................................1.51
Reference to drawings...............................................1.74
Requirements of................................................1.71-1.75
Reservation clauses not permitted...................................1.79
Substitute.........................................................1.125
Summary of the invention............................................1.73
Title of the invention..............................................1.72
To be rewritten, if necessary......................................1.125
Specimens. (See Models and exhibits.)
Specimens of composition of matter to be furnished when required 
                                                                    1.93
Specimens of plants
                                                                   1.166
Statement of status as small entity
                                                                    1.27
Statutory disclaimer fee
                                                                 1.20(d)
Statutory invention registrations
                                                                   1.293
Examination of.....................................................1.294
Publication of.....................................................1.297
Review of decision finally refusing to publish.....................1.295
Withdrawal of request for publication of...........................1.296
Sufficient funds in deposit account
                                                                    1.25
Suit in equity. (See Civil action.)
Summary of invention
                                                                    1.73
Sunday, when last day falls on
                                                                     1.7
Supervisory authority, petition to Commissioner to exercise
                                                                   1.181

[[Page 218]]

Supplemental oath for amendment presenting claims for matter 
disclosed but not originally claimed
                                                                    1.67
Surcharge for oath or basic filing fee filed after filing date 
                                                        1.16(e), 1.53(f)
Suspension of action
                                                                   1.103
Suspension of ex parte prosecution during interference
                                                                   1.615
Suspension of rules
                                                                   1.183
Symbols for drawings
                                                                 1.84(n)
Symbols for nucleotide and/or amino acid sequence data
                                                                   1.822

                                 T

Tables in patent applications
                                                                    1.58
Terminal disclaimer
                                                                   1.321
Testimony by Office employees
                                                      15 C.F.R. Part 15a
Definition..........................................15 C.F.R. Part 15a.2
Policy re demand for testimony or document production.....15 C.F.R. Part 
                                                                   15a.3
Procedures re demand for testimony or document production......15 C.F.R. 
                                                              Part 15a.4
Private litigation..................................15 C.F.R. Part 15a.6
Proceedings involving the United States.............15 C.F.R. Part 15a.7
Requests for confidential documents.................15 C.F.R. Part 15a.7
Scope...............................................15 C.F.R. Part 15a.1
Subpoena of Office employee.........................15 C.F.R. Part 15a.5
Testimony of employees in proceedings involving U.S.......15 C.F.R. Part 
                                                                   15a.8
Testimony in interferences:
Additional time for taking.........................................1.645
Assignment of times for taking.....................................1.651
Certification and filing by officer................................1.676
Copies of..........................................................1.653
Depositions must be filed..........................................1.678
Discovery..........................................................1.687
Effect of errors and irregularities in deposition..................1.685
Evidence must comply with rules....................................1.671
Examination of witnesses...........................................1.675
Failure to take....................................................1.652
Form of deposition.................................................1.677
Formal objections to...............................................1.685
Formalities in preparing depositions.........................1.674-1.677
In foreign countries...............................................1.671
Inspection of testimony............................................1.679
Manner of taking testimony of witnesses............................1.672
Motion to extend time for taking...................................1.645
Not considered if not taken and filed in compliance with rules.....1.671
Notice of examination of witnesses.................................1.673
Notice of intent to rely on affidavit...........................1.671(e)
Objections noted in depositions....................................1.675
Weight of deposition testimony taken in foreign country.........1.671(j)
Objections to formal matters.......................................1.685
Official records and printed publications..........................1.682
Officer's certificate..............................................1.676
Persons before whom depositions may be taken.......................1.674
Printing of........................................................1.653
Service of notice..................................................1.673
Stipulations or agreements concerning..............................1.672
Taken by depositions...............................................1.672
Testimony taken in another interference or action, use of..........1.683
Time for taking....................................................1.651
To be inspected by parties to the case only........................1.679

[[Page 219]]

Time expiring on Saturday, Sunday, or holiday
                                                                     1.7
Time for payment of issue fee
                                                                   1.311
Time for response by applicant
                                                            1.134, 1.136
Time for response by patent owner
                                                                   1.530
Time for response by requester
                                                                   1.535
Time for response to Office action
                                                            1.134, 1.136
Time, periods of
                                                                     1.7
Timely filing of correspondence
                                                               1.8, 1.10
Title of invention
                                                                    1.72
Title reports, fee for
                                                              1.19(b)(4)
Transitional procedures
                                                                   1.129

                                 U

Unavoidable abandonment
                                                                   1.137
Unintentional abandonment
                                                                   1.137
United States as:
Designated Office...........................................1.414, 1.497
Elected Office.....................................................1.414
International Preliminary Examining Authority......................1.416
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unsigned continuation or divisional application
                                                                    1.53
Use of file of parent application
                                                                 1.53(d)

                                 V

Verified statement of small entity status
                                                                    1.27

                                 W

Waiver of secrecy
                                                              1.53(d)(6)
Withdrawal from issue
                                                                   1.313
Withdrawal of attorney or agent
                                                                    1.36
Withdrawal of request for statutory invention registration
                                                                   1.296
Written Description allegedly missing
Petition contesting this allegation..............................1.53(e)
Petition with new oath or declaration and later submission of 
missing specification seeking new filing date....................1.53(e)

[[Page 221]]





PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents




    Editorial Note: Part 1 is placed in a separate grouping of parts 
pertaining to patents. It appears on page 5 of this volume.

                               TRADEMARKS



PART 2--RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




Sec.
2.1  Sections of part 1 applicable.
2.2  Definitions.
2.6  Trademark fees.
2.7  Fastener recordal fees.

         Representation by Attorneys or Other Authorized Persons

2.11  Applicants may be represented by an attorney.
2.12-2.16  [Reserved]
2.17  Recognition for representation.
2.18  Correspondence, with whom held.
2.19  Revocation of power of attorney or of other authorization to 
          represent; withdrawal.

                              Declarations

2.20  Declarations in lieu of oaths.

                      Application for Registration

2.21  Requirements for receiving a filing date.
2.23  Serial number.
2.24  Designation of representative by foreign applicant.
2.25  Papers not returnable.
2.26  Use of old drawing in new application.
2.27  Pending trademark application index; access to applications.

                         The Written Application

2.31  [Reserved]
2.32  Requirements for a complete application.
2.33  Verified statement.
2.34  Bases for filing.
2.35  Adding, deleting, or substituting bases.
2.36  Identification of prior registrations.
2.37  Description of mark.
2.38  Use by predecessor or by related companies.
2.39  [Reserved]
2.41  Proof of distinctiveness under section 2(f).
2.42  Concurrent use.
2.43  Service mark.
2.44  Collective mark.
2.45  Certification mark.
2.46  Principal Register.
2.47  Supplemental Register.

                                 Drawing

2.51  Drawing required.
2.52  Types of drawings and format for drawings.

                                Specimens

2.56  Specimens.
2.57-2.58  [Reserved]
2.59  Filing substitute specimen(s).

           Examination of Application and Action by Applicants

2.61  Action by examiner.
2.62  Period for response.
2.63  Reexamination.
2.64  Final action.
2.65  Abandonment.
2.66  Revival of abandoned applications.
2.67  Suspension of action by the Patent and Trademark Office.
2.68  Express abandonment (withdrawal) of application.
2.69  Compliance with other laws.

                        Amendment of Application

2.71  Amendments to correct informalities.
2.72  Amendments to description or drawing of the mark.
2.73  Amendment to recite concurrent use.
2.74  Form of amendment.
2.75  Amendment to change application to different register.
2.76  Amendment to allege use.
2.77  Amendments between notice of allowance and statement of use.

                    Publication and Post Publication

2.80  Publication for opposition.
2.81  Post publication.
2.82  Marks on Supplemental Register published only upon registration.
2.83  Conflicting marks.
2.84  Jurisdiction over published applications.

                             Classification

2.85  Classification schedules.
2.86  Application may include multiple classes.
2.87  Dividing an application.

                        Post Notice of Allowance

2.88  Filing statement of use after notice of allowance.
2.89  Extensions of time for filing a statement of use.

              Interferences and Concurrent Use Proceedings

2.91  Declaration of interference.
2.92  Preliminary to interference.
2.93  Institution of interference.
2.94-2.95  [Reserved]
2.96  Issue; burden of proof.
2.97  [Reserved]

[[Page 222]]

2.98  Adding party to interference.
2.99  Application to register as concurrent user.

                               Opposition

2.101  Filing an opposition.
2.102  Extension of time for filing an opposition.
2.104  Contents of opposition.
2.105  Notification of opposition proceeding(s).
2.106  Answer.
2.107  Amendment of pleadings in an opposition proceeding.

                              Cancellation

2.111  Filing petition for cancellation.
2.112  Contents of petition for cancellation.
2.113  Notification of cancellation proceeding.
2.114  Answer.
2.115  Amendment of pleadings in a cancellation proceeding.

                  Procedure in Inter Partes Proceedings

2.116  Federal Rules of Civil Procedure.
2.117  Suspension of proceedings.
2.118  Undelivered Office notices.
2.119  Service and signing of papers.
2.120  Discovery.
2.121  Assignment of times for taking testimony.
2.122  Matters in evidence.
2.123  Trial testimony in inter partes cases.
2.124  Depositions upon written questions.
2.125  Filing and service of testimony.
2.126  [Reserved]
2.127  Motions.
2.128  Briefs at final hearing.
2.129  Oral argument; reconsideration.
2.130  New matter suggested by Examiner of Trademarks.
2.131  Remand after decision in inter partes proceeding.
2.132  Involuntary dismissal for failure to take testimony.
2.133  Amendment of application or registration during proceedings.
2.134  Surrender or voluntary cancellation of registration.
2.135  Abandonment of application or mark.
2.136  Status of application on termination of proceeding.

                                 Appeals

2.141  Ex parte appeals from the Examiner of Trademarks.
2.142  Time and manner of ex parte appeals.
2.144  Reconsideration of decision on ex parte appeal.
2.145  Appeal to court and civil action.

                Petitions and Action by the Commissioner

2.146  Petitions to the Commissioner.
2.147  [Reserved]
2.148  Commissioner may suspend certain rules.

                               Certificate

2.151  Certificate.

             Publication of Marks Registered Under 1905 Act

2.153  Publication requirements.
2.154  Publication in Official Gazette.
2.155  Notice of publication.
2.156  Not subject to opposition; subject to cancellation.

           Reregistration of Marks Registered Under Prior Acts

2.158  Reregistration of marks registered under Acts of 1881, 1905, and 
          1920.

 Cancellation for Failure to File Affidavit or Declaration During Sixth 
                                  Year

2.160  Affidavit or declaration of continued use or excusable nonuse 
          required to avoid cancellation of registration.
2.161  Requirements for a complete affidavit or declaration of continued 
          use or excusable nonuse.
2.162  Notice to registrant.
2.163  Acknowledgment of receipt of affidavit or declaration.
2.164  Correcting deficiencies in affidavit or declaration.
2.165  Petition to Commissioner to review refusal.
2.166  Affidavit of continued use or excusable nonuse combined with 
          renewal application.

                Affidavit or Declaration Under Section 15

2.167  Affidavit or declaration under section 15.
2.168  Affidavit or declaration under section 15 combined with affidavit 
          or declaration under section 8, or with renewal application.

                 Correction, Disclaimer, Surrender, Etc.

2.171  New certificate on change of ownership.
2.172  Surrender for cancellation.
2.173  Amendment of registration.
2.174  Correction of Office mistake.
2.175  Correction of mistake by registrant.
2.176  Consideration of above matters.

                            Term and Renewal

2.181  Term of original registrations and renewals.
2.182  Time for filing renewal application.
2.183  Requirements for a complete renewal application.
2.184  Refusal of renewal.
2.185  Correcting deficiencies in renewal application.

[[Page 223]]

2.186  Petition to Commissioner to review refusal of renewal.
2.187  [Reserved]

    Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

    Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.



Sec. 2.1  Sections of part 1 applicable.

    Sections 1.1 to 1.26 of this chapter apply to trademark cases, 
except those parts that specifically refer to patents, and except 
Sec. 1.22 to the extent that it is inconsistent with Secs. 2.85(e), 
2.101(d), 2.111(c), 2.164, or 2.185. Other sections of part 1 
incorporated by reference in part 2 also apply to trademark cases.

[64 FR 48917, Sept. 8, 1999]



Sec. 2.2  Definitions.

    (a) The Act as used in this part means the Trademark Act of 1946, 60 
Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.
    (b) Entity as used in this part includes both natural and juristic 
persons.

[54 FR 37588, Sept. 11, 1989]



Sec. 2.6  Trademark fees.

    The Patent and Trademark Office requires the following fees and 
charges:

    (a) Trademark process fees.

(1) For filing an application, per class.........................$325.00
(2) For filing an amendment to allege use under section 1(c) of the Act, 
per class........................................................$100.00
(3) For filing a statement of use under section 1(d)(1) of the Act, per 
class............................................................$100.00
(4) For filing a request under section 1(d)(2) of the Act for a six-
month extension of time for filing a statement of use under section 
1(d)(1) of the Act, per class....................................$150.00
(5) For filing an application for renewal of a registration, per class 
                                                                 $400.00
(6) Additional fee for filing a renewal application during the grace 
period, per class................................................$100.00
(7) For filing to publish a mark under section 12(c), per class 
                                                                 $100.00
(8) For issuing a new certificate of registration upon request of 
assignee.........................................................$100.00
(9) For a certificate of correction of registrant's error........$100.00
(10) For filing a disclaimer to a registration...................$100.00
(11) For filing an amendment to a registration...................$100.00
(12) For filing an affidavit under section 8 of the Act, per class 
                                                                 $100.00
(13) For filing an affidavit under Sec. 15 of the Act, per class 
                                                                 $200.00
(14) Additional fee for filing a section 8 affidavit during the grace 
period, per class................................................$100.00
(15) For petitions to the Commissioner...........................$100.00
(16) For filing a petition to cancel, per class..................$300.00
(17) For filing a notice of opposition, per class................$300.00
(18) For ex parte appeal to the Trademark Trial and Appeal Board, per 
class............................................................$100.00
(19) Dividing an application, per new application (file wrapper) created
                                                                 $100.00
(20) For correcting a deficiency in a section 8 affidavit........$100.00
(21) For correcting a deficiency in a renewal application........$100.00

    (b) Trademark service fees.

(1) For printed copy of registered mark, copy only

(i) Regular service, which includes preparation of copies by the PTO 
within 2-3 business days of receipt and delivery by United States Postal 
Service, fax, or to a PTO Box.....................................$3.00.
(ii) Delivery on next business day to PTO Box or fax delivery within one 
business day to U.S./Canada/Mexico................................$6.00.
(iii) Expedited delivery by commercial delivery service..........$25.00.

(2) Certified or uncertified copy of trademark application as filed:

(i) Regular service...............................................$15.00
(ii) Expedited local service......................................$30.00
(3) Certified or uncertified copy of a trademark-related file wrapper 
and contents......................................................$50.00

(4) Certified copy of a registered mark, showing title and/or status:

(i) Regular service...............................................$15.00
(ii) Expedited local service......................................$30.00
(5) Certified or uncertified copy of trademark records, per document 
except as otherwise provided in this section......................$25.00
(6) For recording each trademark assignment, agreement or other paper 
relating to the property in a registration or application
(i) First property in a document..................................$40.00
(ii) For each additional property in the same document............$25.00

[[Page 224]]

(7) For assignment records, abstract of title and certification, per 
registration......................................................$25.00
(8) Marginal cost, paid in advance, for each hour of terminal session 
time, including print time, using T-Search capabilities, prorated for 
the actual time used. The Commissioner may waive the payment by an 
individual for access to T-Search upon a showing of need or hardship, 
and if such waiver is in the public interest......................$40.00
(9) Self-service copy charge, per page.............................$0.25
(10) Labor charges for services, per hour or fraction thereof.....$40.00
(11) For items and services that the Commissioner finds may be supplied, 
for which fees are not specified by statute or by this part, such 
charges as may be determined by the Commissioner with respect to each 
such item or service.........................................Actual Cost

[56 FR 65155, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991, as amended at 
57 FR 38196, Aug. 21, 1992; 59 FR 257, Jan. 4, 1994; 60 FR 41023, Aug. 
11, 1995; 62 FR 40453, July 29, 1997; 64 FR 48918, Sept. 8, 1999; 64 FR 
67486, Dec. 2, 1999; 64 FR 67777, Dec. 3, 1999]



Sec. 2.7  Fastener recordal fees.

(a) Application fee for recordal of insignia......................$20.00
(b) Renewal of insignia recordal..................................$20.00
(c) Surcharge for late renewal of insignia recordal...............$20.00

[61 FR 55223, Oct. 25, 1996]

         Representation by Attorneys or Other Authorized Persons

    Authority: Secs. 2.11 to 2.19 also issued under 35 U.S.C. 31, 32.



Sec. 2.11  Applicants may be represented by an attorney.

    The owner of a trademark may file and prosecute his or her own 
application for registration of such trademark, or he or she may be 
represented by an attorney or other individual authorized to practice in 
trademark cases under Sec. 10.14 of this subchapter. The Patent and 
Trademark Office cannot aid in the selection of an attorney or other 
representative.

[50 FR 5171, Feb. 6, 1985]



Secs. 2.12-2.16  [Reserved]



Sec. 2.17  Recognition for representation.

    (a) When an attorney as defined in Sec. 10.1(c) of this subchapter 
acting in a representative capacity appears in person or signs a paper 
in practice before the Patent and Trademark Office in a trademark case, 
his or her personal appearance or signature shall constitute a 
representation to the Patent and Trademark Office that, under the 
provisions of Sec. 10.14 and the law he or she is authorized to 
represent the particular party in whose behalf he or she acts. Further 
proof of authority to act in a representative capacity may be required.
    (b) Before any non-lawyer will be allowed to take action of any kind 
in any application or proceeding, a written authorization from the 
applicant, party to the proceeding, or other person entitled to 
prosecute such application or proceeding must be filed therein.
    (c) To be recognized as a representative, an attorney as defined in 
Sec. 10.1(c) of this chapter may file a power of attorney, appear in 
person, or sign a paper on behalf of an applicant or registrant that is 
filed with the Office in a trademark case.
    (d) A party may file a power of attorney that relates to more than 
one trademark application or registration, or to all existing and future 
applications and registrations of that party. A party relying on such a 
power of attorney must:
    (1) Include a copy of the previously filed power of attorney; or
    (2) Refer to the power of attorney, specifying the filing date of 
the previously filed power of attorney; the application serial number 
(if known), registration number, or inter partes proceeding number for 
which the original power of attorney was filed; and the name of the 
party who signed the power of attorney; or, if the application serial 
number is not known, submit a copy of the application or a copy of the 
mark, and specify the filing date.

[30 FR 13193, Oct. 16, 1965, as amended at 50 FR 5171, Feb. 6, 1985; 64 
FR 48918, Sept. 8, 1999]

[[Page 225]]



Sec. 2.18  Correspondence, with whom held.

    Correspondence will be sent to the applicant or a party to a 
proceeding at its address unless papers are transmitted by an attorney 
at law, or a written power of attorney is filed, or written 
authorization of other person entitled to be recognized is filed, or the 
applicant or party designates in writing another address to which 
correspondence is to be sent, in which event correspondence will be sent 
to the attorney at law transmitting the papers, or to the attorney at 
law designated in the power of attorney, or to the other person 
designated in the written authorization, or to the address designated by 
the applicant or party for correspondence. Correspondence will continue 
to be sent to such address until the applicant or party, or the attorney 
at law or other authorized representative of the applicant or party, 
indicates in writing that correspondence is to be sent to another 
address. Correspondence will be sent to the domestic representative of a 
foreign applicant unless the application is being prosecuted by an 
attorney at law or other qualified person duly authorized, in which 
event correspondence will be sent to the attorney at law or other 
qualified person duly authorized. Double correspondence will not be 
undertaken by the Patent and Trademark Office, and if more than one 
attorney at law or other authorized representative appears or signs a 
paper, the Office reply will be sent to the address already established 
in the file until another correspondence address is specified by the 
applicant or party or by the attorney or other authorized representative 
of the applicant or party.

[54 FR 37588, Sept. 11, 1989]



Sec. 2.19  Revocation of power of attorney or of other authorization to represent; withdrawal.

    (a) Authority to represent an applicant or a party to a proceeding 
may be revoked at any stage in the proceedings of a case upon 
notification to the Commissioner; and when it is so revoked, the Office 
will communicate directly with the applicant or party to the proceeding 
or with such other qualified person as may be authorized. The Patent and 
Trademark Office will notify the person affected of the revocation of 
his or her authorization.
    (b) An individual authorized to represent an applicant or party in a 
trademark case may withdraw upon application to and approval by the 
Commissioner.

[50 FR 5171, Feb. 6, 1985]

                              Declarations



Sec. 2.20  Declarations in lieu of oaths.

    Instead of an oath, affidavit, verification, or sworn statement, the 
language of 28 U.S.C. 1746, or the following language, may be used:

The undersigned being warned that willful false statements and the like 
are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, 
and that such willful false statements and the like may jeopardize the 
validity of the application or document or any registration resulting 
therefrom, declares that all statements made of his/her own knowledge 
are true; and all statements made on information and belief are believed 
to be true.

[64 FR 48918, Sept. 8, 1999]

                      Application for Registration

    Authority: Secs. 2.21 to 2.47 also issued under sec. 1, 60 Stat. 
427; 15 U.S.C. 1051.



Sec. 2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application that 
contains all of the following:
    (1) The name of the applicant;
    (2) A name and address for correspondence;
    (3) A clear drawing of the mark;
    (4) A listing of the goods or services; and
    (5) The filing fee for at least one class of goods or services, 
required by Sec. 2.6.
    (b) If the applicant does not submit all the elements required in 
paragraph (a) of this section, the Office may return the papers with an 
explanation of why the filing date was denied.
    (c) The applicant may correct and resubmit the application papers. 
If the resubmitted papers and fee meet all the requirements of paragraph 
(a) of this section, the Office will grant a filing

[[Page 226]]

date as of the date the Office receives the corrected papers.

[64 FR 48918, Sept. 8, 1999]



Sec. 2.23  Serial number.

    Applications will be given a serial number as received, and the 
applicant will be informed of the serial number and the filing date of 
the application.

[37 FR 931, Jan. 21, 1972]



Sec. 2.24  Designation of representative by foreign applicant.

    If an applicant is not domiciled in the United States, the applicant 
must designate by a written document filed in the Patent and Trademark 
Office the name and address of some person resident in the United States 
on whom may be served notices or process in proceedings affecting the 
mark. If this document does not accompany or form part of the 
application, it will be required and registration refused unless it is 
supplied. Official communications of the Patent and Trademark Office 
will be addressed to the domestic representative unless the application 
is being prosecuted by an attorney at law or other qualified person duly 
authorized, in which event Official communications will be sent to the 
attorney at law or other qualified person duly authorized. The mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the application unless qualified under paragraph 
(a), (b) or (c) of Sec. 10.14 of this subchapter and authorized under 
Sec. 2.17(b).

[54 FR 37588, Sept. 11, 1989]



Sec. 2.25  Papers not returnable.

    After an application is filed the papers will not be returned for 
any purpose whatever; but the Office will furnish copies to the 
applicant upon request and payment of the fee.



Sec. 2.26  Use of old drawing in new application.

    In an application filed in place of an abandoned or rejected 
application, or in an application for reregistration (Sec. 2.158), a new 
complete application is required, but the old drawing, if suitable, may 
be used. The application must be accompanied by a request for the 
transfer of the drawing, and by a permanent photographic copy, or an 
order for such copy, of the drawing to be placed in the original file. A 
drawing so transferred, or to be transferred, cannot be amended.



Sec. 2.27  Pending trademark application index; access to applications.

    (a) An index of pending applications including the name and address 
of the applicant, a reproduction or description of the mark, the goods 
or services with which the mark is used, the class number, the dates of 
use, and the serial number and filing date of the application will be 
available for public inspection as soon as practicable after filing.
    (b) Except as provided in paragraph (e) of this section, access to 
the file of a particular pending application will be permitted prior to 
publication under Sec. 2.80 upon written request.
    (c) Decisions of the Commissioner and the Trademark Trial and Appeal 
Board in applications and proceedings relating thereto are published or 
available for inspection or publication.
    (d) Except as provided in paragraph (e) of this section, after a 
mark has been registered, or published for opposition, the file of the 
application and all proceedings relating thereto are available for 
public inspection and copies of the papers may be furnished upon paying 
the fee therefor.
    (e) Anything ordered to be filed under seal pursuant to a protective 
order issued or made by any court or by the Trademark Trial and Appeal 
Board in any proceeding involving an application or a registration shall 
be kept confidential and shall not be made available for public 
inspection or copying unless otherwise ordered by the court or the 
Board, or unless the party protected by the order voluntarily discloses 
the matter subject thereto. When possible, only confidential portions of 
filings with the Board shall be filed under seal.

[36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48 
FR 27225, June 14, 1983]

[[Page 227]]

                         The Written Application



Sec. 2.31  [Reserved]



Sec. 2.32  Requirements for a complete application.

    (a) The application must be in English and include the following:
    (1) A request for registration;
    (2) The name of the applicant(s);
    (3)(i) The citizenship of the applicant(s); or
    (ii) If the applicant is a corporation, association, partnership or 
other juristic person, the jurisdiction (usually state or nation) under 
the laws of which the applicant is organized; and
    (iii) If the applicant is a partnership, the names and citizenship 
of the general partners;
    (4) The address of the applicant;
    (5) One or more bases, as required by Sec. 2.34(a);
    (6) A list of the particular goods or services on or in connection 
with which the applicant uses or intends to use the mark. In a United 
States application filed under section 44 of the Act, the scope of the 
goods or services covered by the section 44 basis may not exceed the 
scope of the goods or services in the foreign application or 
registration; and
    (7) The international class of goods or services, if known. See 
Sec. 6.1 of this chapter for a list of the international classes of 
goods and services.
    (b) The application must include a verified statement that meets the 
requirements of Sec. 2.33.
    (c) The application must include a drawing that meets the 
requirements of Secs. 2.51 and 2.52.
    (d) The application must include fee required by Sec. 2.6 for each 
class of goods or services.
    (e) For the requirements for a multiple class application, see 
Sec. 2.86.

[64 FR 48918, Sept. 8, 1999]



Sec. 2.33  Verified statement.

    (a) The application must include a statement that is signed and 
verified (sworn to) or supported by a declaration under Sec. 2.20 by a 
person properly authorized to sign on behalf of the applicant. A person 
who is properly authorized to sign on behalf of the applicant is:
    (1) A person with legal authority to bind the applicant; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the applicant; or
    (3) An attorney as defined in Sec. 10.1(c) of this chapter who has 
an actual or implied written or verbal power of attorney from the 
applicant.
    (b)(1) In an application under section 1(a) of the Act, the verified 
statement must allege:
That the applicant has adopted and is using the mark shown in the 
accompanying drawing; that the applicant believes it is the owner of the 
mark; that the mark is in use in commerce; that to the best of the 
declarant's knowledge and belief, no other person has the right to use 
the mark in commerce, either in the identical form or in such near 
resemblance as to be likely, when applied to the goods or services of 
the other person, to cause confusion or mistake, or to deceive; that the 
specimen shows the mark as used on or in connection with the goods or 
services; and that the facts set forth in the application are true.

    (2) In an application under section 1(b) or section 44 of the Act, 
the verified statement must allege:
That the applicant has a bona fide intention to use the mark shown in 
the accompanying drawing in commerce on or in connection with the 
specified goods or services; that the applicant believes it is entitled 
to use the mark; that to the best of the declarant's knowledge and 
belief, no other person has the right to use the mark in commerce, 
either in the identical form or in such near resemblance as to be 
likely, when applied to the goods or services of the other person, to 
cause confusion or mistake, or to deceive; and that the facts set forth 
in the application are true.
    (c) If the verified statement is not filed within a reasonable time 
after it is signed, the Office may require the applicant to submit a 
substitute verification or declaration under Sec. 2.20 of the 
applicant's continued use or bona fide intention to use the mark in 
commerce.
    (d) Where an electronically transmitted filing is permitted, the 
person who signs the verified statement must either:
    (1) Place a symbol comprised of numbers and/or letters between two 
forward slash marks in the signature block on the electronic submission; 
and print, sign and date in permanent ink, and

[[Page 228]]

maintain a paper copy of the electronic submission; or
    (2) Sign the verified statement using some other form of electronic 
signature specified by the Commissioner.

[64 FR 48918, Sept. 8, 1999]



Sec. 2.34  Bases for filing.

    (a) The application must include one or more of the following four 
filing bases:
    (1) Use in commerce under section 1(a) of the Act. The requirements 
for an application based on section 1(a) of the Act are:
    (i) The trademark owner's verified statement that the mark is in use 
in commerce on or in connection with the goods or services listed in the 
application. If the verification is not filed with the initial 
application, the verified statement must allege that the mark was in use 
in commerce on or in connection with the goods or services listed in the 
application as of the application filing date;
    (ii) The date of the applicant's first use of the mark anywhere on 
or in connection with the goods or services;
    (iii) The date of the applicant's first use of the mark in commerce 
as a trademark or service mark; and
    (iv) One specimen showing how the applicant actually uses the mark 
in commerce.
    (v) An application may list more than one item of goods, or more 
than one service, provided the applicant has used the mark on or in 
connection with all the specified goods or services. The dates of use 
required by paragraphs (a)(1) (ii) and (iii) of this section may be for 
only one of the items specified.
    (2) Intent-to-use under section 1(b) of the Act. (i) In an 
application under section 1(b) of the Act, the trademark owner must 
verify that it has a bona fide intention to use the mark in commerce on 
or in connection with the goods or services listed in the application. 
If the verification is not filed with the initial application, the 
verified statement must allege that the applicant had a bona fide 
intention to use the mark in commerce as of the filing date of the 
application.
    (ii) The application may list more than one item of goods, or more 
than one service, provided the applicant has a bona fide intention to 
use the mark in commerce on or in connection with all the specified 
goods or services.
    (3) Registration of a mark in a foreign applicant's country of 
origin under section 44(e) of the Act. The requirements for an 
application under section 44(e) of the Act are:
    (i) The trademark owner's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the goods 
or services listed in the application. If the verification is not filed 
with the initial application, the verified statement must allege that 
the applicant had a bona fide intention to use the mark in commerce as 
of the filing date of the application.
    (ii) A certification or certified copy of a registration in the 
applicant's country of origin showing that the mark has been registered 
in that country, and that the registration is in full force and effect. 
The certification or certified copy must show the name of the owner, the 
mark, and the goods or services for which the mark is registered. If the 
certification or certified copy is not in the English language, the 
applicant must submit a translation.
    (iii) If the record indicates that the foreign registration will 
expire before the United States registration will issue, the applicant 
must submit a certification or certified copy from the country of origin 
to establish that the registration has been renewed and will be in force 
at the time the United States registration will issue. If the 
certification or certified copy is not in the English language, the 
applicant must submit a translation.
    (iv) The application may list more than one item of goods, or more 
than one service, provided the applicant has a bona fide intention to 
use the mark in commerce on or in connection with all the specified 
goods or services.
    (4) Claim of priority, based upon an earlier-filed foreign 
application, under section 44(d) of the Act. The requirements for an 
application under section 44(d) of the Act are:
    (i) A claim of priority, filed within six months of the filing date 
of the foreign application. Before publication or

[[Page 229]]

registration on the Supplemental Register, the applicant must either:
    (A) Specify the filing date and country of the first regularly filed 
foreign application; or
    (B) State that the application is based upon a subsequent regularly 
filed application in the same foreign country, and that any prior-filed 
application has been withdrawn, abandoned or otherwise disposed of, 
without having been laid open to public inspection and without having 
any rights outstanding, and has not served as a basis for claiming a 
right of priority.
    (ii) Include the trademark owner's verified statement that it has a 
bona fide intention to use the mark in commerce on or in connection with 
the goods or services listed in the application. If the verification is 
not filed with the initial application, the verified statement must 
allege that the applicant had a bona fide intention to use the mark in 
commerce as of the filing date of the application.
    (iii) Before the application can be approved for publication, or for 
registration on the Supplemental Register, the applicant must establish 
a basis under section 1(a), section 1(b) or section 44(e) of the Act.
    (iv) The application may list more than one item of goods, or more 
than one service, provided the applicant has a bona fide intention to 
use the mark in commerce on or in connection with all the specified 
goods or services.
    (b)(1) The applicant may claim more than one basis, provided that 
the applicant satisfies all requirements for the bases claimed. However, 
the applicant may not claim both sections 1(a) and 1(b) for the 
identical goods or services in the same application.
    (2) If the applicant claims more than one basis, the applicant must 
list each basis, followed by the goods or services to which that basis 
applies. If some or all of the goods or services are covered by more 
than one basis, this must be stated.
    (c) The word ``commerce'' means commerce that Congress may lawfully 
regulate, as specified in section 45 of the Act.

[64 FR 48919, Sept. 8, 1999]



Sec. 2.35  Adding, deleting, or substituting bases.

    (a) Before publication, the applicant may add or substitute a basis, 
if the applicant meets all requirements for the new basis, as stated in 
Sec. 2.34. The applicant may delete a basis at any time.
    (b) An applicant may amend an application that is not the subject of 
an inter partes proceeding before the Trademark Trial and Appeal Board 
to add or substitute a basis after the mark has been published for 
opposition, but only with the express permission of the Commissioner, 
after consideration on petition. Republication will be required. The 
amendment of an application that is the subject of an inter partes 
proceeding before the Board is governed by Sec. 2.133(a).
    (c) When the applicant substitutes one basis for another, the Office 
will presume that there was a continuing valid basis, unless there is 
contradictory evidence in the record, and the application will retain 
the original filing date, including a priority filing date under section 
44(d), if appropriate.
    (d) If an applicant properly claims a section 44(d) basis in 
addition to another basis, the applicant will retain the priority filing 
date under section 44(d) no matter which basis the applicant perfects.
    (e) The applicant may add or substitute a section 44(d) basis only 
within the six-month priority period following the filing date of the 
foreign application.
    (f) When the applicant adds or substitutes a basis, the applicant 
must list each basis, followed by the goods or services to which that 
basis applies.
    (g) When the applicant deletes a basis, the applicant must also 
delete any goods or services covered solely by the deleted basis.
    (h) Once an applicant claims a section 1(b) basis as to any or all 
of the goods or services, the applicant may not amend the application to 
seek registration under section 1(a) of the Act for those goods or 
services unless the applicant files an allegation of use under section 
1(c) or section 1(d) of the Act.

[64 FR 48920, Sept. 8, 1999]

[[Page 230]]



Sec. 2.36  Identification of prior registrations.

    Prior registrations of the same or similar marks owned by the 
applicant should be identified in the application.



Sec. 2.37  Description of mark.

    A description of the mark, which must be acceptable to the Examiner 
of Trademarks, may be included in the application, and must be included 
if required by the examiner. If the mark is displayed in color or a 
color combination, the colors should be described in the application.

[30 FR 13193, Oct. 16, 1965. Redesignated at 64 FR 48920, Sept. 8, 1999]



Sec. 2.38  Use by predecessor or by related companies.

    (a) If the first use of the mark was by a predecessor in title or by 
a related company (sections 5 and 45 of the Act), and the use inures to 
the benefit of the applicant, the dates of first use (Secs. 2.34(a)(1) 
(ii) and (iii)) may be asserted with a statement that first use was by 
the predecessor in title or by the related company, as appropriate.
    (b) If the mark is not in fact being used by the applicant but is 
being used by one or more related companies whose use inures to the 
benefit of the applicant under section 5 of the Act, such facts must be 
indicated in the application.
    (c) The Office may require such details concerning the nature of the 
relationship and such proofs as may be necessary and appropriate for the 
purpose of showing that the use by related companies inures to the 
benefit of the applicant and does not affect the validity of the mark.


(Sec. 5, 60 Stat. 429; 15 U.S.C. 1055)

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989; 
64 FR 48920, Sept. 8, 1999]



Sec. 2.39  [Reserved]



Sec. 2.41  Proof of distinctiveness under section 2(f).

    (a) When registration is sought of a mark which would be 
unregistrable by reason of section 2(e) of the Act but which is said by 
applicant to have become distinctive in commerce of the goods or 
services set forth in the application, applicant may, in support of 
registrability, submit with the application, or in response to a request 
for evidence or to a refusal to register, affidavits, or declarations in 
accordance with Sec. 2.20, depositions, or other appropriate evidence 
showing duration, extent and nature of use in commerce and advertising 
expenditures in connection therewith (identifying types of media and 
attaching typical advertisements), and affidavits, or declarations in 
accordance with Sec. 2.20, letters or statements from the trade or 
public, or both, or other appropriate evidence tending to show that the 
mark distinguishes such goods.
    (b) In appropriate cases, ownership of one or more prior 
registrations on the Principal Register or under the Act of 1905 of the 
same mark may be accepted as prima facie evidence of distinctiveness. 
Also, if the mark is said to have become distinctive of applicant's 
goods by reason of substantially exclusive and continuous use in 
commerce thereof by applicant for the five years before the date on 
which the claim of distinctiveness is made, a showing by way of 
statements which are verified or which include declarations in 
accordance with Sec. 2.20, in the application may, in appropriate cases, 
be accepted as prima facie evidence of distinctiveness. In each of these 
situations, however, further evidence may be required.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.42  Concurrent use.

    An application for registration as a lawful concurrent user shall 
specify and contain all the elements required by the preceding sections. 
The applicant in addition shall state in the application the area, the 
goods, and the mode of use for which applicant seeks registration; and 
also shall state, to the extent of the applicant's knowledge, the 
concurrent lawful use of the mark by others, setting forth their names 
and addresses; registrations issued to or applications filed by such 
others, if any; the areas of such use; the goods on or in connection 
with which such use is made; the mode of such use; and the periods of 
such use.

[54 FR 34897, Aug. 22, 1989]

[[Page 231]]



Sec. 2.43  Service mark.

    In an application to register a service mark, the application shall 
specify and contain all the elements required by the preceding sections 
for trademarks, but shall be modified to relate to services instead of 
to goods wherever necessary.

(Sec. 3, 60 Stat. 429; 15 U.S.C. 1052)



Sec. 2.44  Collective mark.

    (a) In an application to register a collective mark under section 
1(a) of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks, 
but shall, in addition, specify the class of persons entitled to use the 
mark, indicating their relationship to the applicant, and the nature of 
the applicant's control over the use of the mark.
    (b) In an application to register a collective mark under section 
1(b) or 44 of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks, 
but shall, in addition, specify the class of persons intended to be 
entitled to use the mark, indicating what their relationship to the 
applicant will be, and the nature of the control applicant intends to 
exercise over the use of the mark.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.45  Certification mark.

    (a) In an application to register a certification mark under section 
1(a) of the Act, the application shall include all applicable elements 
required by the preceding sections for trademarks. In addition, the 
application must: Specify the conditions under which the certification 
mark is used; allege that the applicant exercises legitimate control 
over the use of the mark; allege that the applicant is not engaged in 
the production or marketing of the goods or services to which the mark 
is applied; and include a copy of the standards that determine whether 
others may use the certification mark on their goods and/or in 
connection with their services.
    (b) In an application to register a certification mark under section 
1(b) or section 44 of the Act, the application shall include all 
applicable elements required by the preceding sections for trademarks. 
In addition, the application must: specify the conditions under which 
the certification mark is intended to be used; allege that the applicant 
intends to exercise legitimate control over the use of the mark; and 
allege that the applicant will not engage in the production or marketing 
of the goods or services to which the mark is applied. When the 
applicant files an amendment to allege use under section 1(c) of the 
Act, or a statement of use under section 1(d) of the Act, the applicant 
must submit a copy of the standards that determine whether others may 
use the certification mark on their goods and/or in connection with 
their services.

[64 FR 48920, Sept. 8, 1999]



Sec. 2.46  Principal Register.

    All applications will be treated as seeking registration on the 
Principal Register unless otherwise stated in the application. Service 
marks, collective marks, and certification marks, registrable in 
accordance with the applicable provisions of section 2 of the Act, are 
registered on the Principal Register.



Sec. 2.47  Supplemental Register.

    (a) In an application to register on the Supplemental Register under 
section 23 of the Act, the application shall so indicate and shall 
specify that the mark has been in lawful use in commerce, specifying the 
nature of such commerce, by the applicant.
    (b) In an application to register on the Supplemental Register under 
section 44 of the Act, the application shall so indicate. The statement 
of lawful use in commerce may be omitted.
    (c) A mark in an application to register on the Principal Register 
under section 1(b) of the Act is eligible for registration on the 
Supplemental Register only after an acceptable amendment to allege use 
under Sec. 2.76 or statement of use under Sec. 2.88 has been timely 
filed.
    (d) An application for registration on the Supplemental Register 
must conform to the requirements for registration on the Principal 
Register under

[[Page 232]]

section 1(a) of the Act, so far as applicable.

[54 FR 37590, Sept. 11, 1989]

                                 Drawing

    Authority: Secs. 2.51 to 2.55 also issued under sec. 1, 60 Stat. 
427; 15 U.S.C. 1051.



Sec. 2.51  Drawing required.

    (a)(1) In an application under section 1(a) of the Act, the drawing 
of the trademark shall be a substantially exact representation of the 
mark as used on or in connection with the goods; or
    (2) In an application under section 1(b) of the Act, the drawing of 
the trademark shall be a substantially exact representation of the mark 
as intended to be used on or in connection with the goods specified in 
the application, and once an amendment to allege use under Sec. 2.76 or 
a statement of use under Sec. 2.88 has been filed, the drawing of the 
trademark shall be a substantially exact representation of the mark as 
used on or in connection with the goods; or
    (3) In an application under section 44 of the Act, the drawing of 
the trademark shall be a substantially exact representation of the mark 
as it appears in the drawing in the registration certificate of a mark 
duly registered in the country of origin of the applicant.
    (b)(1) In an application under section 1(a) of the Act, the drawing 
of a service mark shall be a substantially exact representation of the 
mark as used in the sale or advertising of the services; or
    (2) In an application under section 1(b) of the Act, the drawing of 
a service mark shall be a substantially exact representation of the mark 
as intended to be used in the sale or advertising of the services 
specified in the application and, once an amendment to allege use under 
Sec. 2.76 or a statement of use under Sec. 2.88 has been filed, the 
drawing of the service mark shall be a substantially exact 
representation of the mark as used in the sale or advertising of the 
services; or
    (3) In an application under section 44 of the Act, the drawing of a 
service mark shall be a substantially exact representation of the mark 
as it appears in the drawing in the registration certificate of a mark 
duly registered in the country of origin of applicant.

[54 FR 37590, Sept. 11, 1989, as amended at 64 FR 48920, Sept. 8, 1999]



Sec. 2.52  Types of drawings and format for drawings.

    (a) A drawing depicts the mark sought to be registered. The drawing 
must show only one mark. The applicant must include a clear drawing of 
the mark when the application is filed. There are two types of drawings:
    (1) Typed drawing. The drawing may be typed if the mark consists 
only of words, letters, numbers, common forms of punctuation, or any 
combination of these elements. In a typed drawing, every word or letter 
must be typed in uppercase type. If the applicant submits a typed 
drawing, the application is not limited to the mark depicted in any 
special form or lettering.
    (2) Special form drawing. A special form drawing is required if the 
mark has a two or three-dimensional design; or color; or words, letters, 
or numbers in a particular style of lettering; or unusual forms of 
punctuation.
    (i) Special form drawings must be made with a pen or by a process 
that will provide high definition when copied. A photolithographic, 
printer's proof copy, or other high quality reproduction of the mark may 
be used. Every line and letter, including lines used for shading, must 
be black. All lines must be clean, sharp, and solid, and must not be 
fine or crowded. Gray tones or tints may not be used for surface shading 
or any other purpose.
    (ii) If necessary to adequately depict the commercial impression of 
the mark, the applicant may be required to submit a drawing that shows 
the placement of the mark by surrounding the mark with a proportionately 
accurate broken-line representation of the particular goods, packaging, 
or advertising on which the mark appears. The applicant must also use 
broken lines to show any other matter not claimed as part of the mark. 
For any drawing using broken lines to indicate placement of the mark, or 
matter not claimed as part of the mark, the applicant must include in 
the body of the application a written description of the

[[Page 233]]

mark and explain the purpose of the broken lines.
    (iii) If the mark has three-dimensional features, the applicant must 
submit a drawing that depicts a single rendition of the mark, and the 
applicant must include a description of the mark indicating that the 
mark is three-dimensional.
    (iv) If the mark has motion, the applicant may submit a drawing that 
depicts a single point in the movement, or the applicant may submit a 
square drawing that contains up to five freeze frames showing various 
points in the movement, whichever best depicts the commercial impression 
of the mark. The applicant must also submit a written description of the 
mark.
    (v) If the mark has color, the applicant may claim that all or part 
of the mark consists of one or more colors. To claim color, the 
applicant must submit a statement explaining where the color or colors 
appear in the mark and the nature of the color(s).
    (vi) If a drawing cannot adequately depict all significant features 
of the mark, the applicant must also submit a written description of the 
mark.
    (3) Sound, scent, and non-visual marks. The applicant is not 
required to submit a drawing if the applicant's mark consists only of a 
sound, a scent, or other completely non-visual matter. For these types 
of marks, the applicant must submit a detailed written description of 
the mark.
    (b) Recommended format for special form drawings--(1) Type of paper 
and ink. The drawing should be on a piece of non-shiny, white paper that 
is separate from the application. Black ink should be used to depict the 
mark.
    (2) Size of paper and size of mark. The drawing should be on paper 
that is 8 to 8\1/2\ inches (20.3 to 21.6 cm.) wide and 11 to 11.69 
inches (27.9 to 29.7 cm.) long. One of the shorter sides of the sheet 
should be regarded as its top edge. The drawing should be between 2.5 
inches (6.1 cm.) and 4 inches (10.3 cm.) high and/or wide. There should 
be at least a 1 inch (2.5 cm.) margin between the drawing and the edges 
of the paper, and at least a 1 inch (2.5 cm.) margin between the drawing 
and the heading.
    (3) Heading. Across the top of the drawing, beginning one inch (2.5 
cm.) from the top edge, the applicant should type the following: 
Applicant's name; applicant's address; the goods or services recited in 
the application, or a typical item of the goods or services if numerous 
items are recited in the application; the date of first use of the mark 
and first use of the mark in commerce in an application under section 
1(a) of the Act; the priority filing date of the relevant foreign 
application in an application claiming the benefit of a prior foreign 
application under section 44(d) of the Act. If the information in the 
heading is lengthy, the heading may continue onto a second page, but the 
mark should be depicted on the first page.
    (c) Drawings in electronically transmitted applications. For an 
electronically transmitted application, if the drawing is in special 
form, the applicant must attach a digitized image of the mark to the 
electronic submission.

[64 FR 48920, Sept. 8, 1999]



Sec. 2.56  Specimens.

    (a) An application under section 1(a) of the Act, an amendment to 
allege use under Sec. 2.76, and a statement of use under Sec. 2.88 must 
each include one specimen showing the mark as used on or in connection 
with the goods, or in the sale or advertising of the services in 
commerce.
    (b)(1) A trademark specimen is a label, tag, or container for the 
goods, or a display associated with the goods. The Office may accept 
another document related to the goods or the sale of the goods when it 
is not possible to place the mark on the goods or packaging for the 
goods.
    (2) A service mark specimen must show the mark as actually used in 
the sale or advertising of the services.
    (3) A collective trademark or collective service mark specimen must 
show how a member uses the mark on the member's goods or in the sale or 
advertising of the member's services.
    (4) A collective membership mark specimen must show use by members 
to indicate membership in the collective organization.
    (5) A certification mark specimen must show how a person other than 
the owner uses the mark to certify regional or other origin, material, 
mode

[[Page 234]]

of manufacture, quality, accuracy, or other characteristics of that 
person's goods or services; or that members of a union or other 
organization performed the work or labor on the goods or services.
    (c) A photocopy or other reproduction of a specimen of the mark as 
actually used on or in connection with the goods, or in the sale or 
advertising of the services, is acceptable. However, a photocopy of the 
drawing required by Sec. 2.51 is not a proper specimen.
    (d)(1) The specimen should be flat, and not larger than 8\1/2\ 
inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen of 
this size is not available, the applicant may substitute a suitable 
photograph or other facsimile.
    (2) If the applicant files a specimen exceeding these size 
requirements (a ``bulky specimen''), the Office will create a facsimile 
of the specimen that meets the requirements of the rule (i.e., is flat 
and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 
cm.) long) and put it in the file wrapper.
    (3) In the absence of non-bulky alternatives, the Office may accept 
an audio or video cassette tape recording, CD-ROM, or other appropriate 
medium.
    (4) For an electronically transmitted application, or other 
electronic submission, the specimen must be submitted as a digitized 
image.

[64 FR 48921, Sept. 8, 1999]



Secs. 2.57-2.58  [Reserved]



Sec. 2.59  Filing substitute specimen(s).

    (a) In an application under section 1(a) of the Act, the applicant 
may submit substitute specimens of the mark as used on or in connection 
with the goods, or in the sale or advertising of the services. The 
applicant must verify by an affidavit or declaration under Sec. 2.20 
that the substitute specimens were in use in commerce at least as early 
as the filing date of the application. Verification is not required if 
the specimen is a duplicate or facsimile of a specimen already of record 
in the application.
    (b) In an application under section 1(b) of the Act, after filing 
either an amendment to allege use under Sec. 2.76 or a statement of use 
under Sec. 2.88, the applicant may submit substitute specimens of the 
mark as used on or in connection with the goods, or in the sale or 
advertising of the services. If the applicant submits substitute 
specimen(s), the applicant must:
    (1) For an amendment to allege use under Sec. 2.76, verify by 
affidavit or declaration under Sec. 2.20 that the applicant used the 
substitute specimen(s) in commerce prior to filing the amendment to 
allege use.
    (2) For a statement of use under Sec. 2.88, verify by affidavit or 
declaration under Sec. 2.20 that the applicant used the substitute 
specimen(s) in commerce either prior to filing the statement of use or 
prior to the expiration of the deadline for filing the statement of use.

[64 FR 48921, Sept. 8, 1999]

           Examination of Application and Action by Applicants

    Authority: Secs. 2.61 to 2.69 also issued under sec. 12, 60 Stat. 
432; 15 U.S.C. 1062.



Sec. 2.61  Action by examiner.

    (a) Applications for registration, including amendments to allege 
use under section 1(c) of the Act, and statements of use under section 
1(d) of the Act, will be examined and, if the applicant is found not 
entitled to registration for any reason, applicant will be notified and 
advised of the reasons therefor and of any formal requirements or 
objections.
    (b) The examiner may require the applicant to furnish such 
information and exhibits as may be reasonably necessary to the proper 
examination of the application.
    (c) Whenever it shall be found that two or more parties whose 
interests are in conflict are represented by the same attorney, each 
party and also the attorney shall be notified of this fact.

[30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb. 9, 1972; 54 
FR 37592, Sept. 11, 1989]



Sec. 2.62  Period for response.

    The applicant has six months from the date of mailing of any action 
by the examiner to respond thereto. Such response may be made with or 
without amendment and must include such proper action by the applicant 
as the

[[Page 235]]

nature of the action and the condition of the case may require.



Sec. 2.63  Reexamination.

    (a) After response by the applicant, the application will be 
reexamined or reconsidered. If registration is again refused or any 
formal requirement[s] is repeated, but the examiner's action is not 
stated to be final, the applicant may respond again.
    (b) After reexamination the applicant may respond by filing a timely 
petition to the Commissioner for relief from a formal requirement if: 
(1) The requirement is repeated, but the examiner's action is not made 
final, and the subject matter of the requirement is appropriate for 
petition to the Commissioner (see Sec. 2.146(b)); or (2) the examiner's 
action is made final and such action is limited to subject matter 
appropriate for petition to the Commissioner. If the petition is denied, 
the applicant shall have until six months from the date of the Office 
action which repeated the requirement or made it final or thirty days 
from the date of the decision on the petition, whichever date is later, 
to comply with the requirement. A formal requirement which is the 
subject of a petition decided by the Commissioner may not subsequently 
be the subject of an appeal to the Trademark Trial and Appeal Board.

[48 FR 23134, May 23, 1983]



Sec. 2.64  Final action.

    (a) On the first or any subsequent reexamination or reconsideration 
the refusal of the registration or the insistence upon a requirement may 
be stated to be final, whereupon applicant's response is limited to an 
appeal, or to a compliance with any requirement, or to a petition to the 
Commissioner if permitted by Sec. 2.63(b).
    (b) During the period between a final action and expiration of the 
time for filing an appeal, the applicant may request the examiner to 
reconsider the final action. The filing of a request for reconsideration 
will not extend the time for filing an appeal or petitioning the 
Commissioner, but normally the examiner will reply to a request for 
reconsideration before the end of the six-month period if the request is 
filed within three months after the date of the final action. Amendments 
accompanying requests for reconsideration after final action will be 
entered if they comply with the rules of practice in trademark cases and 
the Act of 1946.
    (c)(1) If an applicant in an application under section 1(b) of the 
Act files an amendment to allege use under Sec. 2.76 during the six-
month response period after issuance of a final action, the examiner 
shall examine the amendment. The filing of such an amendment will not 
extend the time for filing an appeal or petitioning the Commissioner.
    (2) If the amendment to allege use under Sec. 2.76 is acceptable in 
all respects, the applicant will be notified of its acceptance.
    (3) If, as a result of the examination of the amendment to allege 
use under Sec. 2.76, the applicant is found not entitled to registration 
for any reason not previously stated, applicant will be notified and 
advised of the reasons and of any formal requirements or refusals. The 
Trademark Examining Attorney shall withdraw the final action previously 
issued and shall incorporate all unresolved refusals or requirements 
previously stated in the new non-final action.

[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989]



Sec. 2.65  Abandonment.

    (a) If an applicant fails to respond, or to respond completely, 
within six months after the date an action is mailed, the application 
shall be deemed to have been abandoned. A timely petition to the 
Commissioner pursuant to Secs. 2.63(b) and 2.146 is a response which 
avoids abandonment of an application.
    (b) When action by the applicant filed within the six-month response 
period is a bona fide attempt to advance the examination of the 
application and is substantially a complete response to the examiner's 
action, but consideration of some matter or compliance with some 
requirement has been inadvertently omitted, opportunity to explain and 
supply the omission may be given before the question of abandonment is 
considered.
    (c) If an applicant in an application under section 1(b) of the Act 
fails to timely file a statement of use under

[[Page 236]]

Sec. 2.88, the application shall be deemed to be abandoned.

[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989]



Sec. 2.66  Revival of abandoned applications.

    (a) The applicant may file a petition to revive an application 
abandoned because the applicant did not timely respond to an Office 
action or notice of allowance, if the delay was unintentional. The 
applicant must file the petition:
    (1) Within two months of the mailing date of the notice of 
abandonment; or
    (2) Within two months of actual knowledge of the abandonment, if the 
applicant did not receive the notice of abandonment, and the applicant 
was diligent in checking the status of the application. To be diligent, 
the applicant must check the status of the application within one year 
of the last filing or receipt of a notice from the Office for which 
further action by the Office is expected.
    (b) The requirements for filing a petition to revive an application 
abandoned because the applicant did not timely respond to an Office 
action are:
    (1) The petition fee required by Sec. 2.6;
    (2) A statement, signed by someone with firsthand knowledge of the 
facts, that the delay in filing the response on or before the due date 
was unintentional; and
    (3) Unless the applicant alleges that it did not receive the Office 
action, the proposed response.
    (c) The requirements for filing a petition to revive an application 
abandoned because the applicant did not timely respond to a notice of 
allowance are:
    (1) The petition fee required by Sec. 2.6;
    (2) A statement, signed by someone with firsthand knowledge of the 
facts, that the delay in filing the statement of use (or request for 
extension of time to file a statement of use) on or before the due date 
was unintentional;
    (3) Unless the applicant alleges that it did not receive the notice 
of allowance and requests cancellation of the notice of allowance, the 
required fees for the number of requests for extensions of time to file 
a statement of use that the applicant should have filed under Sec. 2.89 
if the application had never been abandoned;
    (4) Unless the applicant alleges that it did not receive the notice 
of allowance and requests cancellation of the notice of allowance, 
either a statement of use under Sec. 2.88 or a request for an extension 
of time to file a statement of use under Sec. 2.89; and
    (5) Unless a statement of use is filed with or before the petition, 
or the applicant alleges that it did not receive the notice of allowance 
and requests cancellation of the notice of allowance, the applicant must 
file any further requests for extensions of time to file a statement of 
use under Sec. 2.89 that become due while the petition is pending, or 
file a statement of use under Sec. 2.88.
    (d) In an application under section 1(b) of the Act, the 
Commissioner will not grant the petition if this would permit the filing 
of a statement of use more than 36 months after the mailing date of the 
notice of allowance under section 13(b)(2) of the Act.
    (e) The Commissioner will grant the petition to revive if the 
applicant complies with the requirements listed above and establishes 
that the delay in responding was unintentional.
    (f) If the Commissioner denies a petition, the applicant may request 
reconsideration, if the applicant:
    (1) Files the request within two months of the mailing date of the 
decision denying the petition; and
    (2) Pays a second petition fee under Sec. 2.6.

[64 FR 48921, Sept. 8, 1999]



Sec. 2.67  Suspension of action by the Patent and Trademark Office.

    Action by the Patent and Trademark Office may be suspended for a 
reasonable time for good and sufficient cause. The fact that a 
proceeding is pending before the Patent and Trademark Office or a court 
which is relevant to the issue of registrability of the applicant's 
mark, or the fact that the basis for registration is, under the 
provisions of section 44(e) of the Act, registration of the mark in a 
foreign country and the foreign application is still pending, will be 
considered prima facie good and sufficient cause. An applicant's request 
for a suspension of action under this

[[Page 237]]

section filed within the 6-month response period (see Sec. 2.62) may be 
considered responsive to the previous Office action. The first 
suspension is within the discretion of the Examiner of Trademarks and 
any subsequent suspension must be approved by the Commissioner.

[37 FR 3898, Feb. 24, 1972]



Sec. 2.68  Express abandonment (withdrawal) of application.

    An application may be expressly abandoned by filing in the Patent 
and Trademark Office a written statement of abandonment or withdrawal of 
the application signed by the applicant, or the attorney or other person 
representing the applicant. Except as provided in Sec. 2.135, the fact 
that an application has been expressly abandoned shall not, in any 
proceeding in the Patent and Trademark Office, affect any rights that 
the applicant may have in the mark which is the subject of the abandoned 
application.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.69  Compliance with other laws.

    When the sale or transportation of any product for which 
registration of a trademark is sought is regulated under an Act of 
Congress, the Patent and Trademark Office may make appropriate inquiry 
as to compliance with such Act for the sole purpose of determining 
lawfulness of the commerce recited in the application.

[54 FR 37592, Sept. 11, 1989]

                        Amendment of Application



Sec. 2.71  Amendments to correct informalities.

    The applicant may amend the application during the course of 
examination, when required by the Office or for other reasons.
    (a) The applicant may amend the application to clarify or limit, but 
not to broaden, the identification of goods and/or services.
    (b)(1) If the declaration or verification of an application under 
Sec. 2.33 is unsigned or signed by the wrong party, the applicant may 
submit a substitute verification or declaration under Sec. 2.20.
    (2) If the declaration or verification of a statement of use under 
Sec. 2.88, or a request for extension of time to file a statement of use 
under Sec. 2.89, is unsigned or signed by the wrong party, the applicant 
must submit a substitute verification before the expiration of the 
statutory deadline for filing the statement of use.
    (c) The applicant may amend the dates of use, provided that the 
applicant supports the amendment with an affidavit or declaration under 
Sec. 2.20, except that the following amendments are not permitted:
    (1) In an application under section 1(a) of the Act, the applicant 
may not amend the application to specify a date of use that is 
subsequent to the filing date of the application;
    (2) In an application under section 1(b) of the Act, after filing a 
statement of use under Sec. 2.88, the applicant may not amend the 
statement of use to specify a date of use that is subsequent to the 
expiration of the deadline for filing the statement of use.
    (d) The applicant may amend the application to correct the name of 
the applicant, if there is a mistake in the manner in which the name of 
the applicant is set out in the application. The amendment must be 
supported by an affidavit or declaration under Sec. 2.20, signed by the 
applicant. However, the application cannot be amended to set forth a 
different entity as the applicant. An application filed in the name of 
an entity that did not own the mark as of the filing date of the 
application is void.

[64 FR 48922, Sept. 8, 1999]



Sec. 2.72  Amendments to description or drawing of the mark.

    (a) In an application based on use in commerce under section 1(a) of 
the Act, the applicant may amend the description or drawing of the mark 
only if:
    (1) The specimens originally filed, or substitute specimens filed 
under Sec. 2.59(a), support the proposed amendment; and
    (2) The proposed amendment does not materially alter the mark. The 
Office will determine whether a proposed amendment materially alters a 
mark by comparing the proposed amendment

[[Page 238]]

with the description or drawing of the mark filed with the original 
application.
    (b) In an application based on a bona fide intention to use a mark 
in commerce under section 1(b) of the Act, the applicant may amend the 
description or drawing of the mark only if:
    (1) The specimens filed with an amendment to allege use or statement 
of use, or substitute specimens filed under Sec. 2.59(b), support the 
proposed amendment; and
    (2) The proposed amendment does not materially alter the mark. The 
Office will determine whether a proposed amendment materially alters a 
mark by comparing the proposed amendment with the description or drawing 
of the mark filed with the original application.
    (c) In an application based on a claim of priority under section 
44(d) of the Act, or on a mark duly registered in the country of origin 
of the foreign applicant under section 44(e) of the Act, the applicant 
may amend the description or drawing of the mark only if:
    (1) The description or drawing of the mark in the foreign 
registration certificate supports the amendment; and
    (2) The proposed amendment does not materially alter the mark. The 
Office will determine whether a proposed amendment materially alters a 
mark by comparing the proposed amendment with the description or drawing 
of the mark filed with the original application.

[64 FR 48922, Sept. 8, 1999]



Sec. 2.73  Amendment to recite concurrent use.

    (a) An application under section 1(a) of the Act may be amended so 
as to be treated as an application for a concurrent registration, 
provided the application as amended satisfies the requirements of 
Sec. 2.42. The examiner will determine whether the application, as 
amended, is acceptable.
    (b) An application under section 1(b) of the Act may not be amended 
so as to be treated as an application for a concurrent registration 
until an acceptable amendment to allege use under Sec. 2.76 or statement 
of use under Sec. 2.88 has been filed in the application, after which 
time such an amendment may be made, provided the application as amended 
satisfies the requirements of Sec. 2.42. The examiner will determine 
whether the application, as amended, is acceptable.

[54 FR 37593, Sept. 11, 1989]



Sec. 2.74  Form of amendment.

    (a) In every amendment the exact word or words to be stricken out or 
inserted in the application must be specified and the precise point 
indicated where the deletion or insertion is to be made. Erasures, 
additions, insertions, or mutilations of the papers and records must not 
be made by the applicant or his attorney or agent.
    (b) When an amendatory clause is amended, it must be wholly 
rewritten so that no interlineation or erasure will appear in the 
clause, as finally amended, when the application is passed to 
registration. If the number or nature of the amendments shall render it 
otherwise difficult to consider the case or to arrange the papers for 
printing or copying, or when otherwise desired to clarify the record, 
the examiner may require the entire statement to be rewritten.



Sec. 2.75  Amendment to change application to different register.

    (a) An application for registration on the Principal Register under 
section 1(a) or 44 of the Act may be changed to an application for 
registration on the Supplemental Register and vice versa by amending the 
application to comply with the rules relating to the appropriate 
register, as the case may be.
    (b) An application under section 1(b) of the Act may be amended to 
change the application to a different register only after submission of 
an acceptable amendment to allege use under Sec. 2.76 or statement of 
use under Sec. 2.88. When such an application is changed from the 
Principal Register to the Supplemental Register, the effective filing 
date of the application is the date of the filing of the allegation of 
use under section 1(c) or 1(d) of the Act.

[54 FR 37593, Sept. 11, 1989]



Sec. 2.76  Amendment to allege use.

    (a) An application under section 1(b) of the Act may be amended to 
allege

[[Page 239]]

use of the mark in commerce under section 1(c) of the Act at any time 
between the filing of the application and the date the examiner approves 
the mark for publication. Thereafter, an allegation of use may be 
submitted only as a statement of use under Sec. 2.88 after the issuance 
of a notice of allowance under section 13(b)(2) of the Act. If an 
amendment to allege use is filed outside the time period specified in 
this paragraph, it will be returned to the applicant.
    (b) A complete amendment to allege use must include:
    (1) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to sign 
on behalf of the applicant (see Sec. 2.33(a)) that:
    (i) The applicant believes it is the owner of the mark; and
    (ii) The mark is in use in commerce, specifying the date of the 
applicant's first use of the mark and first use of the mark in commerce, 
and those goods or services specified in the application on or in 
connection with which the applicant uses the mark in commerce.
    (2) One specimen of the mark as actually used in commerce. See 
Sec. 2.56 for the requirements for specimens; and
    (3) The fee per class required by Sec. 2.6.
    (c) An amendment to allege use may be filed only when the applicant 
has made use of the mark in commerce on or in connection with all of the 
goods or services, as specified in the application, for which applicant 
will seek registration in that application unless the amendment to 
allege use is accompanied by a request in accordance with Sec. 2.87 to 
divide out from the application the goods or services to which the 
amendment pertains. If more than one item of goods or services is 
specified in the amendment to allege use, the dates of use required in 
paragraph (b)(1) of this section need be for only one of the items 
specified in each class, provided the particular item to which the dates 
apply is designated.
    (d) The title ``Amendment to allege use under Sec. 2.76'' should 
appear at the top of the first page of the paper.
    (e) The Office will review a timely filed amendment to allege use to 
determine whether it meets the following minimum requirements:
    (1) The fee prescribed in Sec. 2.6;
    (2) One specimen or facsimile of the mark as used in commerce; and
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to sign 
on behalf of the applicant that the mark is in use in commerce.
    (f) A timely filed amendment to allege use which meets the minimum 
requirements specified in paragraph (e) of this section will be examined 
in accordance with Secs. 2.61 through 2.69. If, as a result of the 
examination of the amendment to allege use, applicant is found not 
entitled to registration for any reason not previously stated, applicant 
will be so notified and advised of the reasons and of any formal 
requirements or refusals. The notification shall restate or incorporate 
by reference all unresolved refusals or requirements previously stated. 
The amendment to allege use may be amended in accordance with Secs. 2.59 
and 2.71 through 2.75. If the amendment to allege use is acceptable in 
all respects, the applicant will be notified of its acceptance. The 
filing of such an amendment shall not constitute a response to any 
outstanding action by the Trademark Examining Attorney.
    (g) If the amendment to allege use is filed within the permitted 
time period but does not meet the minimum requirements specified in 
paragraph (e) of this section, applicant will be notified of the 
deficiency. The deficiency may be corrected provided the mark has not 
been approved for publication. If an acceptable amendment to correct the 
deficiency is not filed prior to approval of the mark for publication, 
the amendment will not be examined.
    (h) An amendment to allege use may be withdrawn for any reason prior 
to approval of a mark for publication.
    (i) If the applicant does not file the amendment to allege use 
within a reasonable time after it is signed, the Office may require a 
substitute verification or declaration under Sec. 2.20 stating that the 
mark is still in use in commerce.

[[Page 240]]

    (j) For the requirements for a multiple class application, see 
Sec. 2.86.

[54 FR 37593, Sept. 11, 1989, as amended at 63 FR 48097, Sept. 9, 1998; 
64 FR 48922, Sept. 8, 1999; 64 FR 51245, Sept. 22, 1999]



Sec. 2.77  Amendments between notice of allowance and statement of use.

    An application under section 1(b) of the Act may not be amended 
during the period between the issuance of the notice of allowance under 
section 13(b)(2) of the Act and the filing of a statement of use under 
Sec. 2.88, except to delete specified goods or services. Other 
amendments filed during this period will be placed in the application 
file and considered when the statement of use is examined.

[54 FR 37594, Sept. 11, 1989]

                    Publication and Post Publication



Sec. 2.80  Publication for opposition.

    If, on examination or reexamination of an application for 
registration on the Principal Register, it appears that the applicant is 
entitled to have his mark registered, the mark will be published in the 
Official Gazette for opposition. The mark will also be published in the 
case of an application to be placed in interference or concurrent use 
proceedings, if otherwise registrable.

[41 FR 758, Jan. 5, 1976]



Sec. 2.81  Post publication.

    (a) Except in an application under section 1(b) of the Act for which 
no amendment to allege use under Sec. 2.76 has been submitted and 
accepted, if no opposition is filed within the time permitted or all 
oppositions filed are dismissed, and if no interference is declared and 
no concurrent use proceeding is instituted, the application will be 
prepared for issuance of the certificate of registration as provided in 
Sec. 2.151.
    (b) In an application under section 1(b) of the Act for which no 
amendment to allege use under Sec. 2.76 has been submitted and accepted, 
if no opposition is filed within the time permitted or all oppositions 
filed are dismissed, and if no interference is declared, a notice of 
allowance will issue. The notice of allowance will state the serial 
number of the application, the name of the applicant, the correspondence 
address, the mark, the identification of goods or services, and the 
issue date of the notice of allowance. The mailing date that appears on 
the notice of allowance will be the issue date of the notice of 
allowance. Thereafter, the applicant shall submit a statement of use as 
provided in Sec. 2.88.

[54 FR 37594, Sept. 11, 1989]



Sec. 2.82  Marks on Supplemental Register published only upon registration.

    In the case of an application for registration on the Supplemental 
Register the mark will not be published for opposition but if it 
appears, after examination or reexamination, that the applicant is 
entitled to have the mark registered, a certificate of registration will 
issue as provided in Sec. 2.151. The mark will be published in the 
``Official Gazette'' when registered.

[54 FR 37594, Sept. 11, 1989]



Sec. 2.83  Conflicting marks.

    (a) Whenever an application is made for registration of a mark which 
so resembles another mark or marks pending registration as to be likely 
to cause confusion or mistake or to deceive, the mark with the earliest 
effective filing date will be published in the ``Official Gazette'' for 
opposition if eligible for the Principal Register, or issued a 
certificate of registration if eligible for the Supplemental Register.
    (b) In situations in which conflicting applications have the same 
effective filing date, the application with the earliest date of 
execution will be published in the ``Official Gazette'' for opposition 
or issued on the Supplemental Register.
    (c) Action on the conflicting application which is not published in 
the Official Gazette for opposition or not issued on the Supplemental 
Register will be suspended by the Examiner of Trademarks until the 
published or issued application is registered or abandoned.

[37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, Sept. 11, 1989]

[[Page 241]]



Sec. 2.84  Jurisdiction over published applications.

    (a) The examiner may exercise jurisdiction over an application up to 
the date the mark is published in the ``Official Gazette.'' After 
publication of an application under section 1(a) or 44 of the Act the 
examiner may, with the permission of the Commissioner, exercise 
jurisdiction over the application. After publication of an application 
under section 1(b) of the Act, the examiner may exercise jurisdiction 
over the application after the issuance of the notice of allowance under 
section 13(b)(2) of the Act. After publication, and prior to issuance of 
a notice of allowance in an application under section 1(b), the examiner 
may, with the permission of the Commissioner, exercise jurisdiction over 
the application.
    (b) After publication, but before the printing of the certificate of 
registration in an application under section 1(a) or 44 of the Act, or 
before the printing of the notice of allowance in an application under 
section 1(b) of the Act, an application which is not the subject of an 
inter partes proceeding before the Trademark Trial and Appeal Board may 
be amended if the amendment does not necessitate republication of the 
mark or issuance of an Office action. Otherwise, an amendment to such an 
application may be submitted only upon petition to the Commissioner to 
restore jurisdiction of the application to the examiner for 
consideration of the amendment and further examination. The amendment of 
an application which is the subject of an inter partes proceeding before 
the Trademark Trial and Appeal Board is governed by Sec. 2.133.

[54 FR 37594, Sept. 11, 1989]

                             Classification



Sec. 2.85  Classification schedules.

    (a) Section 6.1 of part 6 of this chapter specifies the system of 
classification for goods and services which applies for all statutory 
purposes to trademark applications filed in the Patent and Trademark 
Office on or after September 1, 1973, and to registrations issued on the 
basis of such applications. It shall not apply to applications filed on 
or before August 31, 1973, nor to registrations issued on the basis of 
such applications.
    (b) With respect to applications filed on or before August 31, 1973, 
and registrations issued thereon, including older registrations issued 
prior to that date, the classification system under which the 
application was filed will govern for all statutory purposes, including, 
inter alia, the filing of petitions to revive, appeals, oppositions, 
petitions for cancellation, affidavits under section 8 and renewals, 
even though such petitions to revive, appeals, etc., are filed on or 
after September 1, 1973.
    (c) Section 6.2 of part 6 of this chapter specifies the system of 
classification for goods and services which applies for all statutory 
purposes to all trademark applications filed in the Patent and Trademark 
Office on or before August 31, 1973, and to registrations issued on the 
basis of such applications, except when the registration may have been 
issued under a classification system prior to that set forth in 
Sec. 6.2. Moreover, this classification will also be utilized for 
facilitating trademark searches until all pending and registered marks 
in the search file are organized on the basis of the international 
system of classification.
    (d) Renewals filed on registrations issued under a prior 
classification system will be processed on the basis of that system.
    (e) Where the amount of the fee received on filing an appeal in 
connection with an application or on an application for renewal is 
sufficient for at least one class of goods or services but is less than 
the required amount because multiple classes in an application or 
registration are involved, the appeal or renewal application will not be 
refused on the ground that the amount of the fee was insufficient if the 
required additional amount of the fee is received in the Patent and 
Trademark Office within the time limit set forth in the notification of 
this defect by the Office, or if action is sought only for the number of 
classes equal to the number of fees submitted.
    (f) Sections 6.3 and 6.4 specify the system of classification which 
applies to certification marks and collective membership marks.

[[Page 242]]

    (g) Classification schedules shall not limit or extend the 
applicant's rights.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[38 FR 14681, June 4, 1973, as amended at 39 FR 16885, May 10, 1974; 47 
FR 41282, Sept. 17, 1982; 63 FR 48097, Sept. 9, 1998]



Sec. 2.86  Application may include multiple classes.

    (a) In a single application, an applicant may apply to register the 
same mark for goods and/or services in multiple classes. The applicant 
must:
    (1) Specifically identify the goods or services in each class;
    (2) Submit an application filing fee for each class; and
    (3) Include either dates of use (see Secs. 2.34(a)(1)(ii) and (iii)) 
and one specimen for each class, or a statement of a bona fide intention 
to use the mark in commerce on or in connection with all the goods or 
services specified in each class. The applicant may not claim both use 
in commerce and a bona fide intention to use the mark in commerce for 
the identical goods or services in one application.
    (b) An amendment to allege use under Sec. 2.76 or a statement of use 
under Sec. 2.88 must include, for each class, the required fee, dates of 
use, and one specimen. The applicant may not file the amendment to 
allege use or statement of use until the applicant has used the mark on 
all the goods or services, unless the applicant files a request to 
divide. See Sec. 2.87 for information regarding requests to divide.
    (c) The Office will issue a single certificate of registration for 
the mark, unless the applicant files a request to divide. See Sec. 2.87 
for information regarding requests to divide.

[64 FR 48923, Sept. 8, 1999]



Sec. 2.87  Dividing an application.

    (a) An application may be physically divided into two or more 
separate applications upon the payment of a fee for each new application 
created and submission by the applicant of a request in accordance with 
paragraph (d) of this section.
    (b) In the case of a request to divide out one or more entire 
classes from an application, only the fee under paragraph (a) of this 
section will be required. However, in the case of a request to divide 
out some, but not all, of the goods or services in a class, an 
application filing fee for each new separate application to be created 
by the division must be submitted, together with the fee under paragraph 
(a) of this section. Any outstanding time period for action by the 
applicant in the original application at the time of the division will 
be applicable to each new separate application created by the division.
    (c) A request to divide an application may be filed at any time 
between the filing of the application and the date the Trademark 
Examining Attorney approves the mark for publication; or during an 
opposition, concurrent use, or interference proceeding, upon motion 
granted by the Trademark Trial and Appeal Board. Additionally, a request 
to divide an application under section 1(b) of the Act may be filed with 
a statement of use under Sec. 2.88 or at any time between the filing of 
a statement of use and the date the Trademark Examining Attorney 
approves the mark for registration.
    (d) A request to divide an application should be made in a separate 
paper from any other amendment or response in the application. The title 
``Request to divide application.'' should appear at the top of the first 
page of the paper.

[57 FR 38196, Aug. 21, 1992; 57 FR 40493, Sept. 3, 1992, as amended at 
63 FR 48097, Sept. 9, 1998]

                        Post Notice of Allowance



Sec. 2.88  Filing statement of use after notice of allowance.

    (a) In an application under section 1(b) of the Act, a statement of 
use, required under section 1(d) of the Act, must be filed within six 
months after issuance of a notice of allowance under section 13(b)(2) of 
the Act, or within an extension of time granted under Sec. 2.89. A 
statement of use that is filed prior to issuance of a notice of 
allowance is premature, will not be considered, and will be returned to 
the applicant.
    (b) A complete statement of use must include:
    (1) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person

[[Page 243]]

properly authorized to sign on behalf of the applicant (see 
Sec. 2.33(a)) that:
    (i) The applicant believes it is the owner of the mark; and
    (ii) The mark is in use in commerce, specifying the date of the 
applicant's first use of the mark and first use of the mark in commerce, 
and those goods or services specified in the notice of allowance on or 
in connection with which the applicant uses the mark in commerce;
    (2) One specimen of the mark as actually used in commerce. See 
Sec. 2.56 for the requirements for specimens; and
    (3) The fee per class required by Sec. 2.6.
    (c) The statement of use may be filed only when the applicant has 
made use of the mark in commerce on or in connection with all of the 
goods or services, as specified in the notice of allowance, for which 
applicant will seek registration in that application, unless the 
statement of use is accompanied by a request in accordance with 
Sec. 2.87 to divide out from the application the goods or services to 
which the statement of use pertains. If more than one item of goods or 
services is specified in the statement of use, the dates of use required 
in paragraph (b)(1) of this section need be for only one of the items 
specified in each class, provided the particular item to which the dates 
apply is designated.
    (d) The title ``Statement of use under Sec. 2.88.'' should appear at 
the top of the first page of the paper.
    (e) The Office will review a timely filed statement of use to 
determine whether it meets the following minimum requirements:
    (1) The fee for at least a single class, required by Sec. 2.6;
    (2) One specimen of the mark as used in commerce;
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to sign 
on behalf of the applicant that the mark is in use in commerce. If the 
verification or declaration is unsigned or signed by the wrong party, 
the applicant must submit a substitute verification on or before the 
statutory deadline for filing the statement of use.
    (f) A timely filed statement of use which meets the minimum 
requirements specified in paragraph (e) of this section will be examined 
in accordance with Secs. 2.61 through 2.69. If, as a result of the 
examination of the statement of use, applicant is found not entitled to 
registration, applicant will be notified and advised of the reasons and 
of any formal requirements or refusals. The statement of use may be 
amended in accordance with Secs. 2.59 and 2.71 through 2.75. If the 
statement of use is acceptable in all respects, the applicant will be 
notified of its acceptance.
    (g) If the statement of use does not meet the minimum requirements 
specified in paragraph (e) of this section, applicant will be notified 
of the deficiency. If the time permitted for applicant to file a 
statement of use has not expired, applicant may correct the deficiency. 
After the filing of a statement of use during a permitted time period 
for such filing, the applicant may not withdraw the statement to return 
to the previous status of awaiting submission of a statement of use, 
regardless of whether it is in compliance with paragraph (e) of this 
section.
    (h) The failure to timely file a statement of use which meets the 
minimum requirements specified in paragraph (e) of this section shall 
result in the abandonment of the application.
    (i)(1) The goods or services specified in a statement of use must 
conform to those goods or services identified in the notice of 
allowance. An applicant may specify the goods or services by stating 
``those goods or services identified in the notice of allowance'' or, if 
appropriate, ``those goods or services identified in the notice of 
allowance except * * *'' followed by an identification of the goods or 
services to be deleted.
    (2) If any goods or services specified in the notice of allowance 
are omitted from the identification of goods or services in the 
statement of use, the Trademark Examining Attorney shall inquire about 
the discrepancy and permit the applicant to amend the statement of use 
to include any omitted goods or services, provided that the amendment is 
supported by a verification that the mark was in use in commerce, on or 
in connection with each of the goods or services sought to be included, 
prior to the expiration of

[[Page 244]]

the time allowed to applicant for filing a statement of use.
    (3) The statement of use may be accompanied by a separate request to 
amend the identification of goods or services in the application, as 
stated in the notice of allowance, in accordance with Sec. 2.71(b).
    (j) The statement of use may be accompanied by a separate request to 
amend the drawing in the application, in accordance with Secs. 2.51 and 
2.72.
    (k) If the statement of use is not filed within a reasonable time 
after the date it is signed, the Office may require a substitute 
verification or declaration under Sec. 2.20 stating that the mark is 
still in use in commerce.
    (l) For the requirements for a multiple class application, see 
Sec. 2.86.

[54 FR 37595, Sept. 11, 1989, as amended at 64 FR 48923, Sept. 8, 1999; 
64 FR 51245, Sept. 22, 1999]



Sec. 2.89  Extensions of time for filing a statement of use.

    (a) The applicant may request a six-month extension of time to file 
the statement of use required by Sec. 2.88. The extension request must 
be filed within six months of the mailing date of the notice of 
allowance under section 13(b)(2) of the Act and must include the 
following:
    (1) A written request for an extension of time to file the statement 
of use;
    (2) The fee per class required by Sec. 2.6; and
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to sign 
on behalf of the applicant (see Sec. 2.33(a)) that the applicant still 
has a bona fide intention to use the mark in commerce, specifying the 
relevant goods or services. If the verification is unsigned or signed by 
the wrong party, the applicant must submit a substitute verification 
within six months of the mailing date of the notice of allowance.
    (b) Before the expiration of the previously granted extension of 
time, the applicant may request further six month extensions of time to 
file the statement of use by submitting the following:
    (1) A written request for an extension of time to file the statement 
of use;
    (2) The fee per class required by Sec. 2.6;
    (3) A statement that is signed and verified (sworn to) or supported 
by a declaration under Sec. 2.20 by a person properly authorized to sign 
on behalf of the applicant (see Sec. 2.33(a)) that the applicant still 
has a bona fide intention to use the mark in commerce, specifying the 
relevant goods or services. If the verification is unsigned or signed by 
the wrong party, the applicant must submit a substitute verification 
before the expiration of the previously granted extension; and
    (4) A showing of good cause, as specified in paragraph (d) of this 
section.
    (c) Extensions of time under paragraph (b) of this section will be 
granted only in six-month increments and may not aggregate more than 24 
months.
    (d) The showing of good cause must include a statement of the 
applicant's ongoing efforts to make use of the mark in commerce on or in 
connection with each of the relevant goods or services. Those efforts 
may include product or service research or development, market research, 
manufacturing activities, promotional activities, steps to acquire 
distributors, steps to obtain governmental approval, or other similar 
activities. In the alternative, the applicant must submit a satisfactory 
explanation for the failure to make efforts to use the mark in commerce.
    (e)(1) At the time of the filing of a statement of use, or during 
any time remaining in the existing six-month period in which a statement 
of use is filed, applicant may file one request, in accordance with 
paragraph (a) or (b) of this section, for a six-month extension of time 
for filing a statement of use, provided that the time requested would 
not extend beyond 36 months from the issuance of the notice of 
allowance. Thereafter, applicant may not request any further extensions 
of time.
    (2) A request for an extension of time that is filed at the time of 
the filing of a statement of use, or during any time remaining in the 
existing six-month period in which a statement of use is filed, must 
comply with all the requirements of paragraph (a) of this section, if it 
is applicant's first extension request, or paragraph (b) of this 
section, if it is a second or subsequent extension request. However, in 
a request

[[Page 245]]

under paragraph (b) of this section, applicant may satisfy the 
requirement for a showing of good cause by asserting that applicant 
believes that it has made valid use of the mark in commerce, as 
evidenced by the submitted statement of use, but that if the statement 
of use is found by the Patent and Trademark Office to be fatally 
defective, applicant will need additional time in which to file a new 
statement of use.
    (f) The goods or services specified in a request for an extension of 
time for filing a statement of use must conform to those goods or 
services identified in the notice of allowance. Any goods or services 
specified in the notice of allowance which are omitted from the 
identification of goods or services in the request for extension of time 
will be presumed to be deleted and the applicant may not thereafter 
request that the deleted goods or services be reinserted in the 
application. If appropriate, an applicant may specify the goods or 
services by stating ``those goods or services identified in the notice 
of allowance'' or ``those goods or services identified in the notice of 
allowance except * * *'' followed by an identification of the goods or 
services to be deleted.
    (g) The applicant will be notified of the grant or denial of a 
request for an extension of time, and of the reasons for a denial. 
Failure to notify the applicant of the grant or denial of the request 
prior to the expiration of the existing period or requested extension 
does not relieve the applicant of the responsibility of timely filing a 
statement of use under Sec. 2.88. If, after denial of an extension 
request, there is time remaining in the existing six-month period for 
filing a statement of use, applicant may submit a substitute request for 
extension of time. Otherwise, the only recourse available after denial 
of a request for an extension of time is a petition to the Commissioner 
in accordance with Secs. 2.66 or 2.146. A petition from the denial of a 
request for an extension of time to file a statement of use shall be 
filed within two months of the mailing date of the denial of the 
request. If the petition is granted, the term of the requested six month 
extension that was the subject of the petition will run from the date of 
the expiration of the previously existing six month period for filing a 
statement of use.
    (h) If the extension request is not filed within a reasonable time 
after it is signed, the Office may require a substitute verification or 
declaration under Sec. 2.20 stating that the applicant still has a bona 
fide intention to use the mark in commerce.

[54 FR 37595, Sept. 11, 1989, as amended at 64 FR 48923, Sept. 8, 1999; 
64 FR 51245, Sept. 22, 1999]

              Interferences and Concurrent Use Proceedings

    Authority: Secs. 2.91 to 2.99 also issued under secs. 16, 17, 60 
Stat. 434; 15 U.S.C. 1066, 1067.



Sec. 2.91  Declaration of interference.

    (a) An interference will not be declared between two applications or 
between an application and a registration except upon petition to the 
Commissioner. Interferences will be declared by the Commissioner only 
upon a showing of extraordinary circumstances which would result in a 
party being unduly prejudiced without an interference. In ordinary 
circumstances, the availability of an opposition or cancellation 
proceeding to the party will be deemed to remove any undue prejudice.
    (b) Registrations and applications to register on the Supplemental 
Register, registrations under the Act of 1920, and registrations of 
marks the right to use of which has become incontestable are not subject 
to interference.

[37 FR 2881, Feb. 9, 1972, as amended at 54 FR 34897, Aug. 22, 1989]



Sec. 2.92  Preliminary to interference.

    An interference which has been declared by the Commissioner will not 
be instituted by the Trademark Trial and Appeal Board until the Examiner 
of Trademarks has determined that the marks which are to form the 
subject matter of the controversy are registrable, and all of the marks 
have been published in the Official Gazette for opposition.

[54 FR 34897, Aug. 22, 1989]

[[Page 246]]



Sec. 2.93  Institution of interference.

    An interference is instituted by the mailing of a notice of 
interference to the parties. The notice shall be sent to each applicant, 
in care of the applicant's attorney or other representative of record, 
if any, and if one of the parties is a registrant, the notice shall be 
sent to the registrant or the registrant's assignee of record. The 
notice shall give the name and address of every adverse party and of the 
adverse party's attorney or other authorized representative, if any, 
together with the serial number and date of filing and publication of 
each of the applications, or the registration number and date of 
issuance of each of the registrations, involved.

[54 FR 34897, Aug. 22, 1989]



Secs. 2.94-2.95  [Reserved]



Sec. 2.96  Issue; burden of proof.

    The issue in an interference between applications is normally 
priority of use, but the rights of the parties to registration may also 
be determined. The party whose application involved in the interference 
has the latest filing date is the junior party and has the burden of 
proof. When there are more than two parties to an interference, a party 
shall be a junior party to and shall have the burden of proof as against 
every other party whose application involved in the interference has an 
earlier filing date. If the involved applications of any parties have 
the same filing date, the application with the latest date of execution 
will be deemed to have the latest filing date and that applicant will be 
the junior party. The issue in an interference between an application 
and a registration shall be the same, but in the event the final 
decision is adverse to the registrant, a registration to the applicant 
will not be authorized so long as the interfering registration remains 
on the register.

[48 FR 23135, May 23, 1983; 48 FR 27225, June 14, 1983]



Sec. 2.97  [Reserved]



Sec. 2.98  Adding party to interference.

    A party may be added to an interference only upon petition to the 
Commissioner by that party. If an application which is or might be the 
subject of a petition for addition to an interference is not added, the 
examiner may suspend action on the application pending termination of 
the interference proceeding.

[48 FR 23135, May 23, 1983]



Sec. 2.99  Application to register as concurrent user.

    (a) An application for registration as a lawful concurrent user will 
be examined in the same manner as other applications for registration.
    (b) When it is determined that the mark is ready for publication, 
the applicant may be required to furnish as many copies of his 
application, specimens and drawing as may be necessary for the 
preparation of notices for each applicant, registrant or user specified 
as a concurrent user in the application for registration.
    (c) Upon receipt of the copies required by paragraph (b) of this 
section, the examiner shall forward the application for concurrent use 
registration for publication in the Official Gazette as provided by 
Sec. 2.80. If no opposition is filed, or if all oppositions that are 
filed are dismissed or withdrawn, the Trademark Trial and Appeal Board 
shall prepare a notice for the applicant for concurrent use registration 
and for each applicant, registrant or user specified as a concurrent 
user in the application. The notices for the specified parties shall 
state the name and address of the applicant and of the applicant's 
attorney or other authorized representative, if any, together with the 
serial number and filing date of the application.
    (d)(1) The notices shall be sent to each applicant, in care of his 
attorney or other authorized representative, if any, to each user, and 
to each registrant. A copy of the application shall be forwarded with 
the notice to each party specified in the application.

[[Page 247]]

    (2) An answer to the notice is not required in the case of an 
applicant or registrant whose application or registration is specified 
as a concurrent user in the application, but a statement, if desired, 
may be filed within forty days after the mailing of the notice; in the 
case of any other party specified as a concurrent user in the 
application, an answer must be filed within forty days after the mailing 
of the notice.
    (3) If an answer, when required, is not filed, judgment will be 
entered precluding the specified user from claiming any right more 
extensive than that acknowledged in the application(s) for concurrent 
use registration, but the applicant(s) will remain with the burden of 
proving entitlement to registration(s).
    (e) The applicant for a concurrent use registration has the burden 
of proving entitlement thereto. If there are two or more applications 
for concurrent use registration involved in a proceeding, the party 
whose application has the latest filing date is the junior party. A 
party whose application has a filing date between the filing dates of 
the earliest involved application and the latest involved application is 
a junior party to every party whose involved application has an earlier 
filing date. If any applications have the same filing date, the 
application with the latest date of execution will be deemed to have the 
latest filing date and that applicant will be the junior party. A person 
specified as an excepted user in a concurrent use application but who 
has not filed an application shall be considered a party senior to every 
party that has an application involved in the proceeding.
    (f) When a concurrent use registration is sought on the basis that a 
court of competent jurisdiction has finally determined that the parties 
are entitled to use the same or similar marks in commerce, a concurrent 
use registration proceeding will not be instituted if all of the 
following conditions are fulfilled:
    (1) The applicant is entitled to registration subject only to the 
concurrent lawful use of a party to the court proceeding; and
    (2) The court decree specifies the rights of the parties; and
    (3) A true copy of the court decree is submitted to the examiner; 
and
    (4) The concurrent use application complies fully and exactly with 
the court decree; and
    (5) The excepted use specified in the concurrent use application 
does not involve a registration, or any involved registration has been 
restricted by the Commissioner in accordance with the court decree.

If any of the conditions specified in this paragraph is not satisfied, a 
concurrent use registration proceeding shall be prepared and instituted 
as provided in paragraphs (a) through (e) of this section.
    (g) Registrations and applications to register on the Supplemental 
Register and registrations under the Act of 1920 are not subject to 
concurrent use registration proceedings. Applications to register under 
section 1(b) of the Act of 1946 are subject to concurrent use 
registration proceedings only after an acceptable amendment to allege 
use under Sec. 2.76 or statement of use under Sec. 2.88 has been filed.
    (h) The Trademark Trial and Appeal Board will consider and determine 
concurrent use rights only in the context of a concurrent use 
registration proceeding.

[48 FR 23135, May 23, 1983; 48 FR 27225, 27226, June 14, 1983, as 
amended at 54 FR 37596, Sept. 11, 1989]

                               Opposition

    Authority: Secs. 2.101 to 2.106 also issued under secs. 13, 17, 60 
Stat. 433, 434; 15 U.S.C. 1063, 1067.



Sec. 2.101  Filing an opposition.

    (a) An opposition proceeding is commenced by the filing of an 
opposition in the Patent and Trademark Office.
    (b) Any entity which believes that it would be damaged by the 
registration of a mark on the Principal Register may oppose the same by 
filing an opposition, which should be addressed to the Trademark Trial 
and Appeal Board. The opposition need not be verified, and may be signed 
by the opposer or the opposer's attorney or other authorized 
representative.

[[Page 248]]

    (c) The opposition must be filed within thirty days after 
publication (Sec. 2.80) of the application being opposed or within an 
extension of time (Sec. 2.102) for filing an opposition.
    (d)(1) The opposition must be accompanied by the required fee for 
each party joined as opposer for each class in the application for which 
registration is opposed (see Sec. 2.6). If no fee, or a fee insufficient 
to pay for one person to oppose the registration of a mark in at least 
one class, is submitted within thirty days after publication of the mark 
to be opposed or within an extension of time for filing an opposition, 
the opposition will not be refused if the required fee(s) is submitted 
to the Patent and Trademark Office within the time limit set in the 
notification of this defect by the Office.
    (2) If the fees submitted are sufficient to pay for one person to 
oppose registration in at least one class but are insufficient for an 
opposition against all of the classes in the application, and the 
particular class or classes against which the opposition is filed are 
not specified, the Office will issue a written notice allowing opposer 
until a set time in which to submit the required fee(s) or to specify 
the class or classes opposed. If the required fee(s) is not submitted, 
or the specification made, within the time set in the notice, the 
opposition will be presumed to be against the class or classes in 
ascending order, beginning with the lowest numbered class and including 
the number of classes in the application for which the fees submitted 
are sufficient to pay the fee due for each class.
    (3) If persons are joined as party opposers, and the fees submitted 
are sufficient to pay for one person to oppose registration in at least 
one class but are insufficient for each named party opposer, the Office 
will issue a written notice allowing the named party opposers until a 
set time in which to submit the required fee(s) or to specify the 
opposer(s) to which the submitted fees apply. If the required fee(s) is 
not submitted, or the specification made, within the time set in the 
notice, the first named party will be presumed to be the party opposer 
and additional parties will be deemed to be party opposers to the extent 
that the fees submitted are sufficient to pay the fee due for each party 
opposer. If persons are joined as party opposers against the 
registration of a mark in more than one class, the fees submitted are 
insufficient, and no specification of opposers and classes is made 
within the time set in the written notice issued by the Office, the fees 
submitted will be applied first on behalf of the first-named opposer 
against as many of the classes in the application as the submitted fees 
are sufficient to pay, and any excess will be applied on behalf of the 
second-named party to the opposition against the classes in the 
application in ascending order.

[48 FR 3976, Jan. 28, 1983, as amended at 51 FR 28709, Aug. 11, 1986; 54 
FR 37596, Sept. 11, 1989; 63 FR 48097, Sept. 9, 1998; 64 FR 48924, Sept. 
8, 1999]



Sec. 2.102  Extension of time for filing an opposition.

    (a) Any person who believes that he would be damaged by the 
registration of a mark on the Principal Register may file a written 
request to extend the time for filing an opposition. The written request 
may be signed by the potential opposer or by an attorney at law or other 
person authorized, in accordance with Sec. 2.12 (b) and (c) and 
Sec. 2.17(b), to represent the potential opposer.
    (b) The written request to extend the time for filing an opposition 
must identify the potential opposer with reasonable certainty. Any 
opposition filed during an extension of time should be in the name of 
the person to whom the extension was granted, but an opposition may be 
accepted if the person in whose name the extension was requested was 
misidentified through mistake or if the opposition is filed in the name 
of a person in privity with the person who requested and was granted the 
extension of time.
    (c) The written request to extend the time for filing an opposition 
must be filed in the Patent and Trademark Office before the expiration 
of thirty days from the date of publication or within any extension of 
time previously granted, should specify the period of extension desired, 
and should be addressed to the Trademark Trial and Appeal Board. A first 
extension of time for not more

[[Page 249]]

than thirty days will be granted upon request. Further extensions of 
time may be granted by the Board for good cause. In addition, extensions 
of time to file an opposition aggregating more than 120 days from the 
date of publication of the application will not be granted except upon 
(1) a written consent or stipulation signed by the applicant or its 
authorized representative, or (2) a written request by the potential 
opposer or its authorized representative stating that the applicant or 
its authorized representative has consented to the request, or (3) a 
showing of extraordinary circumstances, it being considered that a 
potential opposer has an adequate alternative remedy by a petition for 
cancellation.
    (d) Every request to extend the time for filing a notice of 
opposition should be submitted in triplicate.

[48 FR 3976 Jan. 28, 1983, as amended at 61 FR 36825, July 15, 1996; 63 
FR 48097, Sept. 9, 1998]



Sec. 2.104  Contents of opposition.

    (a) The opposition must set forth a short and plain statement 
showing why the opposer believes it would be damaged by the registration 
of the opposed mark and state the grounds for opposition. A duplicate 
copy of the opposition, including exhibits, shall be filed with the 
opposition.
    (b) Oppositions to different applications owned by the same party 
may be joined in a consolidated opposition when appropriate, but the 
required fee must be included for each party joined as opposer for each 
class in which registration is opposed in each application against which 
the opposition is filed.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.105  Notification of opposition proceeding(s).

    When an opposition in proper form has been filed and the correct 
fee(s) have been submitted, a notification shall be prepared by the 
Trademark Trial and Appeal Board, which shall identify the title and 
number of the proceeding and the application involved and shall 
designate a time, not less than thirty days from the mailing date of the 
notification, within which an answer must be filed. A copy of the 
notification shall be forwarded to the attorney or other authorized 
representative of the opposer, if any, or to the opposer. The duplicate 
copy of the opposition and exhibits shall be forwarded with a copy of 
the notification to the attorney or other authorized representative of 
the applicant, if any, or to the applicant.

[48 FR 23136, May 23, 1983]



Sec. 2.106  Answer.

    (a) If no answer is filed within the time set, the opposition may be 
decided as in case of default.
    (b)(1) An answer shall state in short and plain terms the 
applicant's defenses to each claim asserted and shall admit or deny the 
averments upon which the opposer relies. If the applicant is without 
knowledge or information sufficient to form a belief as to the truth of 
an averment, applicant shall so state and this will have the effect of a 
denial. Denials may take any of the forms specified in Rule 8(b) of the 
Federal Rules of Civil Procedure. An answer may contain any defense, 
including the affirmative defenses of unclean hands, laches, estoppel, 
acquiescence, fraud, mistake, prior judgment, or any other matter 
constituting an avoidance or affirmative defense. When pleading special 
matters, the Federal Rules of Civil Procedure shall be followed. A reply 
to an affirmative defense need not be filed. When a defense attacks the 
validity of a registration pleaded in the opposition, paragraph (b)(2) 
of this section shall govern. A pleaded registration is a registration 
identified by number and date of issuance in an original notice of 
opposition or in any amendment thereto made under Rule 15, Federal Rules 
of Civil Procedure.
    (2)(i) A defense attacking the validity of any one or more of the 
registrations pleaded in the opposition shall be a compulsory 
counterclaim if grounds for such counterclaim exist at the time when the 
answer is filed. If grounds for a counterclaim are known to the 
applicant when the answer to the opposition is filed, the counterclaim 
shall be pleaded with or as part of the answer. If grounds for a 
counterclaim are learned during the course of the opposition proceeding, 
the counterclaim shall be pleaded promptly after the grounds therefor 
are learned. A counterclaim

[[Page 250]]

need not be filed if it is the subject of another proceeding between the 
same parties or anyone in privity therewith.
    (ii) An attack on the validity of a registration pleaded by an 
opposer will not be heard unless a counterclaim or separate petition is 
filed to seek the cancellation of such registration.
    (iii) The provisions of Secs. 2.111 through 2.115, inclusive, shall 
be applicable to counterclaims. A time, not less than thirty days, will 
be designated within which an answer to the counterclaim must be filed.
    (iv) The times for pleading, discovery, testimony, briefs or oral 
argument will be reset or extended when necessary, upon motion by a 
party, to enable a party fully to present or meet a counterclaim or 
separate petition for cancellation of a registration.
    (c) The opposition may be withdrawn without prejudice before the 
answer is filed. After the answer is filed, the opposition may not be 
withdrawn without prejudice except with the written consent of the 
applicant or the applicant's attorney or other authorized 
representative.

[30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6940, Jan. 22, 1981; 48 
FR 23136, May 23, 1983; 54 FR 34897, Aug. 22, 1989]



Sec. 2.107  Amendment of pleadings in an opposition proceeding.

    Pleadings in an opposition proceeding may be amended in the same 
manner and to the same extent as in a civil action in a United States 
district court.

[48 FR 23136, May 23, 1983]

                              Cancellation

    Authority: Secs. 2.111 to 2.114 also issued under secs. 14, 17, 24, 
60 Stat. 433, 434, 436; 15 U.S.C. 1064, 1067, 1092.



Sec. 2.111  Filing petition for cancellation.

    (a) A cancellation proceeding is commenced by the timely filing of a 
petition for cancellation, together with the required fee, in the Patent 
and Trademark Office.
    (b) Any entity which believes that it is or will be damaged by a 
registration may file a petition, which should be addressed to the 
Trademark Trial and Appeal Board, to cancel the registration in whole or 
in part. The petition need not be verified, and may be signed by the 
petitioner or the petitioner's attorney or other authorized 
representative. The petition may be filed at any time in the case of 
registrations on the Supplemental Register or under the Act of 1920, or 
registrations under the Act of 1881 or the Act of 1905 which have not 
been published under section 12(c) of the Act, or on any ground 
specified in section 14(3) or (5) of the Act. In all other cases the 
petition and the required fee must be filed within five years from the 
date of registration of the mark under the Act or from the date of 
publication under section 12(c) of the Act.
    (c)(1) The petition must be accompanied by the required fee for each 
class in the registration for which cancellation is sought (see 
Sec. 2.6). If the fee submitted is insufficient for a cancellation 
against all of the classes in the registration, and the particular class 
or classes against which the cancellation is filed are not specified, 
the Office will issue a written notice allowing petitioner a set time in 
which to submit the required fees(s) (provided that the five-year 
period, if applicable, has not expired) or to specify the class or 
classes sought to be cancelled. If the required fee(s) is not submitted, 
or the specification made, within the time set in the notice, the 
cancellation will be presumed to be against the class or classes in 
ascending order, beginning with the lowest numbered class, and including 
the number of classes in the registration for which the fees submitted 
are sufficient to pay the fee due for each class.
    (2) If persons are joined as party petitioners, each must submit a 
fee for each class for which cancellation is sought. If the fees 
submitted are insufficient for each named party petitioner, the Office 
will issue a written notice allowing the named party petitioners until a 
set time in which to submit the required fee(s) (provided that the five-
year period, if applicable, has not expired) or to specify the 
petitioner(s) to which the submitted fees apply. If the required fee(s) 
is not submitted, or the specification made, within the time set in the 
notice, the first named party will be presumed to

[[Page 251]]

be the party petitioner and additional parties will be deemed to be 
party petitioners to the extent that the fees submitted are sufficient 
to pay the fee due for each party petitioner. If persons are joined as 
party petitioners against a registration sought to be cancelled in more 
than one class, the fees submitted are insufficient, and no 
specification of parties and classes is made within the time set in the 
written notice issued by the Office, the fees submitted will be applied 
first on behalf of the first-named petitioner against as many of the 
classes in the registration as the submitted fees are sufficient to pay, 
and any excess will be applied on behalf of the second-named party to 
the petition against the classes in the registration in ascending order.
    (3) The filing date of the petition is the date of receipt in the 
Patent and Trademark Office of the petition together with the required 
fee. If the amount of the fee filed with the petition is sufficient to 
pay for at least one person to petition to cancel one class of goods or 
services but is less than the required amount because multiple party 
petitioners and/or multiple classes in the registration for which 
cancellation is sought are involved, and the required additional amount 
of the fee is filed within the time limit set in the notification of the 
defect by the Office, the filing date of the petition with respect to 
the additional party petitioners and/or classes is the date of receipt 
in the Patent and Trademark Office of the additional fees.

[48 FR 3976 Jan. 28, 1983, as amended at 54 FR 37596, Sept. 11, 1989; 63 
FR 48097, Sept. 9, 1998; 64 FR 48924, Sept. 8, 1999]



Sec. 2.112  Contents of petition for cancellation.

    (a) The petition to cancel must set forth a short and plain 
statement showing why the petitioner believes it is or will be damaged 
by the registration, state the grounds for cancellation, and indicate, 
to the best of petitioner's knowledge, the name and address of the 
current owner of the registration. A duplicate copy of the petition, 
including exhibits, shall be filed with the petition.
    (b) Petitions to cancel different registrations owned by the same 
party may be joined in a consolidated petition when appropriate, but the 
required fee must be included for each party joined as petitioner for 
each class sought to be cancelled in each registration against which the 
petition to cancel is filed.

[48 FR 3977 Jan. 28, 1983, as amended at 51 FR 28710, Aug. 11, 1986; 54 
FR 34897, Aug. 22, 1989]



Sec. 2.113  Notification of cancellation proceeding.

    When a petition for cancellation has been filed in proper form (see 
Secs. 2.111 and 2.112), a notification shall be prepared by the 
Trademark Trial and Appeal Board, which shall identify the title and 
number of the proceeding and the registration or registrations involved 
and shall designate a time, not less than thirty days from the mailing 
date of the notification, within which an answer must be filed. A copy 
of the notification shall be forwarded to the attorney or other 
authorized representative of the petitioner, if any, or to the 
petitioner. The duplicate copy of the petition for cancellation and 
exhibits shall be forwarded with a copy of the notification to the 
respondent (see Sec. 2.118), who shall be the party shown by the records 
of the Patent and Trademark Office to be the current owner of the 
registration or registrations sought to be cancelled, except that the 
Board, in its discretion, may join or substitute as respondent a party 
who makes a showing of a current ownership interest in such registration 
or registrations. When the party identified by the petitioner, pursuant 
to Sec. 2.112(a), as the current owner of the registration or 
registrations is not the record owner thereof, a courtesy copy of the 
petition for cancellation shall be forwarded with a copy of the 
notification to the alleged current owner, which may file a motion to be 
joined or substituted as respondent. If the petition is found to be 
defective as to form, the party filing the petition shall be so advised 
and allowed a reasonable time for correcting the informality.

[54 FR 34897, Aug. 22, 1989; 54 FR 38041, Sept. 14, 1989]

[[Page 252]]



Sec. 2.114  Answer.

    (a) If no answer is filed within the time set, the petition may be 
decided as in case of default.
    (b)(1) An answer shall state in short and plain terms the 
respondent's defenses to each claim asserted and shall admit or deny the 
averments upon which the petitioner relies. If the respondent is without 
knowledge or information sufficient to form a belief as to the truth of 
an averment, respondent shall so state and this will have the effect of 
a denial. Denials may take any of the forms specified in Rule 8(b) of 
the Federal Rules of Civil Procedure. An answer may contain any defense, 
including the affirmative defenses of unclean hands, laches, estoppel, 
acquiescence, fraud, mistake, prior judgment, or any other matter 
constituting an avoidance or affirmative defense. When pleading special 
matters, the Federal Rules of Civil Procedure shall be followed. A reply 
to an affirmative defense need not be filed. When a defense attacks the 
validity of a registration pleaded in the petition, paragraph (b)(2) of 
this section shall govern. A pleaded registration is a registration 
identified by number and date of issuance in an original petition for 
cancellation or in any amendment thereto made under Rule 15, Federal 
Rules of Civil Procedure.
    (2)(i) A defense attacking the validity of any one or more of the 
registrations pleaded in the petition shall be a compulsory counterclaim 
if grounds for such counterclaim exist at the time when the answer if 
filed. If grounds for a counterclaim are known to respondent when the 
answer to the petition is filed, the counterclaim shall be pleaded with 
or as part of the answer. If grounds for a counterclaim are learned 
during the course of the cancellation proceeding, the counterclaim shall 
be pleaded promptly after the grounds therefor are learned. A 
counterclaim need not be filed if it is the subject of another 
proceeding between the same parties or anyone in privity therewith.
    (ii) An attack on the validity of a registration pleaded by a 
petitioner for cancellation will not be heard unless a counterclaim or 
separate petition is filed to seek the cancellation of such 
registration.
    (iii) The provisions of Secs. 2.111 through 2.115, inclusive, shall 
be applicable to counterclaims. A time, not less than thirty days, will 
be designated within which an answer to the counterclaim must be filed.
    (iv) The times for pleading, discovery, testimony, briefs, or oral 
argument will be reset or extended when necessary, upon motion by a 
party, to enable a party fully to present or meet a counterclaim or 
separate petition for cancellation of a registration.
    (c) The petition for cancellation may be withdrawn without prejudice 
before the answer is filed. After the answer is filed, the petition may 
not be withdrawn without prejudice except with the written consent of 
the registrant or the registrant's attorney or other authorized 
representative.

[30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6940, Jan. 22, 1981; 46 
FR 11548, Feb. 9, 1981; 51 FR 28710, Aug. 11, 1986; 54 FR 34898, Aug. 
22, 1989]



Sec. 2.115  Amendment of pleadings in a cancellation proceeding.

    Pleadings in a cancellation proceeding may be amended in the same 
manner and to the same extent as in a civil action in a United States 
district court.

[48 FR 23136, May 23, 1983]

                  Procedure in Inter Partes Proceedings

    Authority: Secs. 2.116 to 2.136 also issued under sec. 17, 60 Stat. 
434; 15 U.S.C. 1067.



Sec. 2.116  Federal Rules of Civil Procedure.

    (a) Except as otherwise provided, and wherever applicable and 
appropriate, procedure and practice in inter partes proceedings shall be 
governed by the Federal Rules of Civil Procedure.
    (b) The opposer in an opposition proceeding or the petitioner in a 
cancellation proceeding shall be in the position of plaintiff, and the 
applicant in an opposition proceeding or the respondent in a 
cancellation proceeding shall be in the position of defendant. A party 
that is a junior party in an interference proceeding or in a concurrent 
use registration proceeding shall be in the position of plaintiff 
against every party that is

[[Page 253]]

senior, and the party that is a senior party in an interference 
proceeding or in a concurrent use registration proceeding shall be a 
defendant against every party that is junior.
    (c) The opposition or the petition for cancellation and the answer 
correspond to the complaint and answer in a court proceeding.
    (d) The assignment of testimony periods corresponds to setting a 
case for trial in court proceedings.
    (e) The taking of depositions during the assigned testimony periods 
corresponds to the trial in court proceedings.
    (f) Oral hearing corresponds to oral summation in court proceedings.

[30 FR 13193, Oct. 16, 1965. Redesignated and amended at 37 FR 7606, 
Apr. 18, 1972; 48 FR 23136, May 23, 1983]



Sec. 2.117  Suspension of proceedings.

    (a) Whenever it shall come to the attention of the Trademark Trial 
and Appeal Board that a party or parties to a pending case are engaged 
in a civil action or another Board proceeding which may have a bearing 
on the case, proceedings before the Board may be suspended until 
termination of the civil action or the other Board proceeding.
    (b) Whenever there is pending before the Board both a motion to 
suspend and a motion which is potentially dispositive of the case, the 
potentially dispositive motion may be decided before the question of 
suspension is considered regardless of the order in which the motions 
were filed.
    (c) Proceedings may also be suspended, for good cause, upon motion 
or a stipulation of the parties approved by the Board.

[48 FR 23136, May 23, 1983, as amended at 63 FR 48097, Sept. 9, 1998]



Sec. 2.118  Undelivered Office notices.

    When the notices sent by the Patent and Trademark Office to any 
registrant are returned to the Office undelivered, or when one of the 
parties resides abroad and his representative in the United States is 
unknown, additional notice may be given by publication in the Official 
Gazette for such period of time as the Commissioner may direct.



Sec. 2.119  Service and signing of papers.

    (a) Every paper filed in the Patent and Trademark Office in inter 
partes cases, including notice of appeal, must be served upon the other 
parties except the notice of interference (Sec. 2.93), the notification 
of opposition (Sec. 2.105), the petition for cancellation (Sec. 2.113), 
and the notice of a concurrent use proceeding (Sec. 2.99), which are 
mailed by the Patent and Trademark Office. Proof of such service must be 
made before the paper will be considered by the Office. A statement 
signed by the attorney or other authorized representative, attached to 
or appearing on the original paper when filed, clearly stating the date 
and manner in which service was made will be accepted as prima facie 
proof of service.
    (b) Service of papers must be on the attorney or other authorized 
representative of the party if there be such or on the party if there is 
no attorney or other authorized representative, and may be made in any 
of the following ways:
    (1) By delivering a copy of the paper to the person served;
    (2) By leaving a copy at the usual place of business of the person 
served, with someone in the person's employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with a member of the person's 
family over 14 years of age and of discretion;
    (4) Transmission by the ``Express Mail Post Office to Addressee'' 
service of the United States Postal Service or by first-class mail, 
which may also be certified or registered;
    (5) Transmission by overnight courier.

Whenever it shall be satisfactorily shown to the Commissioner that none 
of the above modes of obtaining service or serving the paper is 
practicable, service may be by notice published in the Official Gazette.
    (c) When service is made by first-class mail, ``Express Mail,'' or 
overnight courier, the date of mailing or of delivery to the overnight 
courier will be considered the date of service. Whenever a party is 
required to take some action within a prescribed period after the 
service of a paper upon the

[[Page 254]]

party by another party and the paper is served by first-class mail, 
``Express Mail,'' or overnight courier, 5 days shall be added to the 
prescribed period.
    (d) If a party to an inter partes proceeding is not domiciled in the 
United States and is not represented by an attorney or other authorized 
representative located in the United States, the party must designate by 
written document filed in the Patent and Trademark Office the name and 
address of a person resident in the United States on whom may be served 
notices or process in the proceeding. In such cases, official 
communications of the Patent and Trademark Office will be addressed to 
the domestic representative unless the proceeding is being prosecuted by 
an attorney at law or other qualified person duly authorized under 
Sec. 10.14(c) of this subchapter. The mere designation of a domestic 
representative does not authorize the person designated to prosecute the 
proceeding unless qualified under Sec. 10.14(a), or qualified under 
Sec. 10.14(b) and authorized under Sec. 2.17(b).
    (e) Every paper filed in an inter partes proceeding, and every 
request for an extension of time to file an opposition, must be signed 
by the party filing it, or by the party's attorney or other authorized 
representative, but an unsigned paper will not be refused consideration 
if a signed copy is submitted to the Patent and Trademark Office within 
the time limit set in the notification of this defect by the Office.

[37 FR 7606, Apr. 18, 1972, as amended at 41 FR 760, Jan. 5, 1976; 54 FR 
34898, Aug. 22, 1989; 54 FR 38041, Sept. 14, 1989; 63 FR 48097, Sept. 9, 
1998]



Sec. 2.120  Discovery.

    (a) In general. Wherever appropriate, the provisions of the Federal 
Rules of Civil Procedure relating to discovery shall apply in 
opposition, cancellation, interference and concurrent use registration 
proceedings except as otherwise provided in this section. The provisions 
of the Federal Rules of Civil Procedure relating to automatic 
disclosure, scheduling conferences, conferences to discuss settlement 
and to develop a discovery plan, and transmission to the court of a 
written report outlining the discovery plan, are not applicable to Board 
proceedings. The Trademark Trial and Appeal Board will specify the 
opening and closing dates for the taking of discovery. The trial order 
setting these dates will be mailed with the notice of institution of the 
proceeding. The discovery period will be set for a period of 180 days. 
The parties may stipulate to a shortening of the discovery period. The 
discovery period may be extended upon stipulation of the parties 
approved by the Board, or upon motion granted by the Board, or by order 
of the Board. If a motion for an extension is denied, the discovery 
period may remain as originally set or as reset. Discovery depositions 
must be taken, and interrogatories, requests for production of documents 
and things, and requests for admission must be served, on or before the 
closing date of the discovery period as originally set or as reset. 
Responses to interrogatories, requests for production of documents and 
things, and requests for admission must be served within 30 days from 
the date of service of such discovery requests. The time to respond may 
be extended upon stipulation of the parties, or upon motion granted by 
the Board, or by order of the Board. The resetting of a party's time to 
respond to an outstanding request for discovery will not result in the 
automatic rescheduling of the discovery and/or testimony periods; such 
dates will be rescheduled only upon stipulation of the parties approved 
by the Board, or upon motion granted by the Board, or by order of the 
Board.
    (b) Discovery deposition within the United States. The deposition of 
a natural person shall be taken in the Federal judicial district where 
the person resides or is regularly employed or at any place on which the 
parties agree by stipulation. The responsibility rests wholly with the 
party taking discovery to secure the attendance of a proposed deponent 
other than a party or anyone who, at the time set for the taking of the 
deposition, is an officer, director, or managing agent of a party, or a 
person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules 
of Civil Procedure. See 35 U.S.C. 24.
    (c) Discovery deposition in foreign countries. (1) The discovery 
deposition of a natural person residing in a foreign country who is a 
party or who, at

[[Page 255]]

the time set for the taking of the deposition, is an officer, director, 
or managing agent of a party, or a person designated under Rule 30(b)(6) 
or Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken 
in a foreign country, be taken in the manner prescribed by Sec. 2.124 
unless the Trademark Trial and Appeal Board, upon motion for good cause, 
orders or the parties stipulate, that the deposition be taken by oral 
examination.
    (2) Whenever a foreign party is or will be, during a time set for 
discovery, present within the United States or any territory which is 
under the control and jurisdiction of the United States, such party may 
be deposed by oral examination upon notice by the party seeking 
discovery. Whenever a foreign party has or will have, during a time set 
for discovery, an officer, director, managing agent, or other person who 
consents to testify on its behalf, present within the United States or 
any territory which is under the control and jurisdiction of the United 
States, such officer, director, managing agent, or other person who 
consents to testify in its behalf may be deposed by oral examination 
upon notice by the party seeking discovery. The party seeking discovery 
may have one or more officers, directors, managing agents, or other 
persons who consent to testify on behalf of the adverse party, 
designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure. 
The deposition of a person under this paragraph shall be taken in the 
Federal judicial district where the witness resides or is regularly 
employed, or, if the witness neither resides nor is regularly employed 
in a Federal judicial district, where the witness is at the time of the 
deposition. This paragraph does not preclude the taking of a discovery 
deposition of a foreign party by any other procedure provided by 
paragraph (c)(1) of this section.
    (d) Interrogatories; request for production. (1) The total number of 
written interrogatories which a party may serve upon another party 
pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a 
proceeding, shall not exceed seventy-five, counting subparts, except 
that the Trademark Trial and Appeal Board, in its discretion, may allow 
additional interrogatories upon motion therefor showing good cause, or 
upon stipulation of the parties. A motion for leave to serve additional 
interrogatories must be filed and granted prior to the service of the 
proposed additional interrogatories; and must be accompanied by a copy 
of the interrogatories, if any, which have already been served by the 
moving party, and by a copy of the interrogatories proposed to be 
served. If a party upon which interrogatories have been served believes 
that the number of interrogatories served exceeds the limitation 
specified in this paragraph, and is not willing to waive this basis for 
objection, the party shall, within the time for (and instead of) serving 
answers and specific objections to the interrogatories, serve a general 
objection on the ground of their excessive number. If the inquiring 
party, in turn, files a motion to compel discovery, the motion must be 
accompanied by a copy of the set(s) of interrogatories which together 
are said to exceed the limitation, and must otherwise comply with the 
requirements of paragraph (e) of this section.
    (2) The production of documents and things under the provisions of 
Rule 34 of the Federal Rules of Civil Procedure will be made at the 
place where the documents and things are usually kept, or where the 
parties agree, or where and in the manner which the Trademark Trial and 
Appeal Board, upon motion, orders.
    (e) Motion for an order to compel discovery. (1) If a party fails to 
designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the 
Federal Rules of Civil Procedure, or if a party, or such designated 
person, or an officer, director or managing agent of a party fails to 
attend a deposition or fails to answer any question propounded in a 
discovery deposition, or any interrogatory, or fails to produce and 
permit the inspection and copying of any document or thing, the party 
seeking discovery may file a motion before the Trademark Trial and 
Appeal Board for an order to compel a designation, or attendance at a 
deposition, or an answer, or production and an opportunity to inspect 
and copy. The motion must be filed prior to

[[Page 256]]

the commencement of the first testimony period as originally set or as 
reset. The motion shall include a copy of the request for designation or 
of the relevant portion of the discovery deposition; or a copy of the 
interrogatory with any answer or objection that was made; or a copy of 
the request for production, any proffer of production or objection to 
production in response to the request, and a list and brief description 
of the documents or things that were not produced for inspection and 
copying. The motion must be supported by a written statement from the 
moving party that such party or the attorney therefor has made a good 
faith effort, by conference or correspondence, to resolve with the other 
party or the attorney therefor the issues presented in the motion and 
has been unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the parties, the moving party 
should inform the Board in writing of the issues in the motion which no 
longer require adjudication.
    (2) When a party files a motion for an order to compel discovery, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
compel shall not toll the time for a party to respond to any outstanding 
discovery requests or to appear for any noticed discovery deposition.
    (f) Motion for a protective order. Upon motion by a party from whom 
discovery is sought, and for good cause, the Trademark Trial and Appeal 
Board may make any order which justice requires to protect a party from 
annoyance, embarrassment, oppression, or undue burden or expense, 
including one or more of the types of orders provided by clauses (1) 
through (8), inclusive, of Rule 26(c) of the Federal Rules of Civil 
Procedure. If the motion for a protective order is denied in whole or in 
part, the Board may, on such conditions (other than an award of expenses 
to the party prevailing on the motion) as are just, order that any party 
provide or permit discovery.
    (g) Sanctions. (1) If a party fails to comply with an order of the 
Trademark Trial and Appeal Board relating to discovery, including a 
protective order, the Board may make any appropriate order, including 
any of the orders provided in Rule 37(b)(2) of the Federal Rules of 
Civil Procedure, except that the Board will not hold any person in 
contempt or award any expenses to any party. The Board may impose 
against a party any of the sanctions provided by this subsection in the 
event that said party or any attorney, agent, or designated witness of 
that party fails to comply with a protective order made pursuant to Rule 
26(c) of the Federal Rules of Civil Procedure.
    (2) If a party, or an officer, director, or managing agent of a 
party, or a person designated under Rule 30(b)(6) or 31(a) of the 
Federal Rules of Civil Procedure to testify on behalf of a party, fails 
to attend the party's or person's discovery deposition, after being 
served with proper notice, or fails to provide any response to a set of 
interrogatories or to a set of requests for production of documents and 
things, and such party or the party's attorney or other authorized 
representative informs the party seeking discovery that no response will 
be made thereto, the Board may make any appropriate order, as specified 
in paragraph (g)(1) of this section.
    (h)(1) Any motion by a party to determine the sufficiency of an 
answer or objection to a request made by that party for an admission 
must be filed prior to the commencement of the first testimony period, 
as originally set or as reset. The motion shall include a copy of the 
request for admission and any exhibits thereto and of the answer or 
objection. The motion must be supported by a written statement from the 
moving party that such party or the attorney therefor has made a good 
faith effort, by conference or correspondence, to resolve with the other 
party or the attorney therefor the issues presented in the motion and 
has been unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the

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parties, the moving party should inform the Board in writing of the 
issues in the motion which no longer require adjudication.
    (2) When a party files a motion to determine the sufficiency of an 
answer or objection to a request made by that party for an admission, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
determine the sufficiency of an answer or objection to a request for 
admission shall not toll the time for a party to respond to any 
outstanding discovery requests or to appear for any noticed discovery 
deposition.
    (i) Telephone and pre-trial conferences. (1) Whenever it appears to 
the Trademark Trial and Appeal Board that a motion filed in an inter 
partes proceeding is of such nature that its resolution by 
correspondence is not practical, the Board may, upon its own initiative 
or upon request made by one or both of the parties, resolve the motion 
by telephone conference.
    (2) Whenever it appears to the Trademark Trial and Appeal Board that 
questions or issues arising during the interlocutory phase of an inter 
partes proceeding have become so complex that their resolution