[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 2001 Edition]
[From the U.S. Government Printing Office]



[[Page i]]

          

              37
              Revised as of July 1, 2001

              Patents, Trademarks, and Copyrights





              Containing a codification of documents 
              of general applicability and future effect

              As of July 1, 2001

              With Ancillaries

              Published by

              Office of the Federal Register
              National Archives and Records
              Administration

              A Special Edition of the Federal Register



[[Page ii]]

                                      




                     U.S. GOVERNMENT PRINTING OFFICE
                            WASHINGTON : 2001



 For sale by the Superintendent of Documents, U.S. Government Printing Office
  Internet: bookstore.gpo.gov   Phone: (202) 512-1800   Fax: (202) 512-2250
                  Mail: Stop SSOP, Washington, DC 20402-0001



[[Page iii]]




                            Table of Contents



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

  Title 37:
          Chapter I--United States Patent and Trademark 
          Office, Department of Commerce                             3
          Chapter II--Copyright Office, Library of Congress        411
          Chapter IV--Assistant Secretary for Technology 
          Policy, Department of Commerce                           603
          Chapter V--Under Secretary for Technology, 
          Department of Commerce                                   627
  Finding Aids:
      Material Approved for Incorporation by Reference........     635
      Table of CFR Titles and Chapters........................     637
      Alphabetical List of Agencies Appearing in the CFR......     655
      List of CFR Sections Affected...........................     665



[[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, 2001), 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, 
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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, 2001.



[[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, 2001.

    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.

[[Page x]]





[[Page 1]]



              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS




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

chapter i--United States 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--UNITED STATES PATENT AND TRADEMARK OFFICE,
                         DEPARTMENT OF COMMERCE




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


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

                          SUBCHAPTER A--GENERAL

                                 PATENTS

Part                                                                Page
1               Rules of practice in patent cases...........           5
3               Assignment, recording and rights of assignee         223
4               Complaints regarding invention promoters....         229
5               Secrecy of certain inventions and licenses 
                    to export and file applications in 
                    foreign countries.......................         230
7               [Reserved]
                Index I--Rules relating to patents..........         239

                               TRADEMARKS

2               Rules of practice in trademark cases........         265
6               Classification of goods and services under 
                    the Trademark Act.......................         323
                Index II--Rules relating to trademarks......         327

             PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

10              Representation of others before the Patent 
                    and Trademark Office....................         347
15-15a          [Reserved]
                Index III--Rules relating to practice before 
                    the Patent and Trademark Office.........         377
            SUBCHAPTER B--GOVERNMENT INVENTIONS JURISDICTION
100-101         [Reserved]

[[Page 4]]

102             Disclosure of government information........         383
             SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150             Requests for Presidential proclamations 
                    pursuant to 17 U.S.C. 902(a)(2).........         408


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

                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 
          registered 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  [Reserved]
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, pursuant to 35 U.S.C. 116.

                             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.

[[Page 6]]

1.75  Claim(s).
1.76  Application data sheet.
1.77  Arrangement of application elements.
1.78  Claiming benefit of earlier filing date and cross-references to 
          other applications.
1.79  Reservation clauses not permitted.

                              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  Third-party submission in published application.

                       Examination of Applications

1.101  [Reserved]
1.102  Advancement of examination.
1.103  Suspension of action by the Office.
1.104  Nature of examination.
1.105  Requirements for information.
1.106-1.109  [Reserved]
1.110  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 to a non-final Office action.
1.112  Reconsideration before final action.
1.113  Final rejection or action.
1.114  Request for continued examination.

                               Amendments

1.115  Preliminary amendments.
1.116  Amendments after final action or appeal.
1.117-1.119  [Reserved]
1.121  Manner of making amendments in applications.
1.122-1.124  [Reserved]
1.125  Substitute specification.
1.126  Numbering of claims.
1.127  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 or 
          published application as prior art.
1.131  Affidavit or declaration of prior invention.
1.132  Affidavits or declarations traversing rejections or objections.

                               Interviews

1.133  Interviews.

         Time for Reply by Applicant; Abandonment of Application

1.134  Time period for reply to an Office action.
1.135  Abandonment for failure to reply within time period.
1.136  Extensions of time.
1.137  Revival of abandoned application, terminated reexamination 
          proceeding, 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 in a design application.
1.155  Expedited examination of design applications.

                              Plant Patents

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

                                Reissues

1.171  Application for reissue.
1.172  Applicants, assignees.

[[Page 7]]

1.173  Reissue specification, drawings, and amendments.
1.174  [Reserved]
1.175  Reissue oath or declaration.
1.176  Examination of reissue.
1.177  Issuance of multiple reissue patents.
1.178  Original patent; continuing duty of applicant.
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]

         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.

                      Publication of Applications.

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

                        Miscellaneous Provisions

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

                   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, pursuant to 35 U.S.C. 256.
1.325  Other mistakes not corrected.

                           Arbitration Awards

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

                           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.

[[Page 8]]

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.
1.417  Submission of translation of international application.
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.
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--Ex Parte Reexamination of Patents

                          Citation of Prior Art

1.501  Citation of prior art in patent files.
1.502   Processing of prior art citations during an ex parte 
          reexamination proceeding.

                   Request for Ex Parte Reexamination

1.510  Request for ex parte reexamination.
1.515  Determination of the request for ex parte
1.520  Ex parte reexamination at the initiative of the Commissioner.

                         Ex Parte Reexamination

1.525  Order for ex parte reexamination.
1.530  Statement by patent owner in ex parte reexamination; amendment by 
          patent

[[Page 9]]

          owner in ex parte or inter partes reexamination; inventorship 
          change in ex parte or inter partes reexamination.
1.535  Reply by third party requester in ex parte reexamination.
1.540  Consideration of responses in ex parte reexamination.
1.550  Conduct of ex parte reexamination proceedings.
1.552  Scope of reexamination in ex parte reexamination proceedings.
1.555  Information material to patentability in ex parte reexamination 
          and inter partes reexamination proceedings.
1.560  Interviews in ex parte reexamination proceedings.
1.565   Concurrent office proceedings which include an ex parte 
          reexamination proceeding.

                   Ex Parte Reexamination Certificate

1.570  Issuance of ex parte reexamination certificate after ex parte 
          reexamination proceedings.

                        Subpart E--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  [Reserved]
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.

[[Page 10]]

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.
1.682-1.684  [Reserved]
1.685  Errors and irregularities in depositions.
1.687  Additional discovery.
1.688  [Reserved]
1.690  Arbitration of interferences.

           Subpart F--Adjustment and Extension of Patent Term

           Adjustment of Patent Term Due to Examination Delay

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

            Extension of Patent Term Due to Regulatory Review

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

             Subpart G--Biotechnology Invention Disclosures

                     Deposit of Biological Material

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

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

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

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

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

Sec.    

[[Page 11]]

                           Prior Art Citations

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

         Requirements for Inter Partes Reexamination Proceedings

1.903   Service of papers on parties in inter partes reexamination.
1.904   Notice of inter partes reexamination in Official Gazette.
1.905   Submission of papers by the public in inter partes 
          reexamination.
1.906   Scope of reexamination in inter partes reexamination proceeding.
1.907   Inter partes reexamination prohibited.
1.913   Persons eligible to file request for inter partes reexamination.
1.915   Content of request for inter partes reexamination.
1.919   Filing date of request for inter partes reexamination.
1.923   Examiner's determination on the request for inter partes 
          reexamination.
1.925   Partial refund if request for inter partes reexamination is not 
          ordered.
1.927   Petition to review refusal to order inter partes reexamination.

                  Inter Partes Reexamination of Patents

1.931   Order for inter partes reexamination.

          Information Disclosure in Inter Partes Reexamination

1.933   Patent owner duty of disclosure in inter partes reexamination 
          proceedings.

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

1.935   Initial Office action usually accompanies order for inter partes 
          reexamination.
1.937   Conduct of inter partes reexamination.
1.939   Unauthorized papers in inter partes reexamination.
1.941   Amendments by patent owner in inter partes reexamination.
1.943   Requirements of responses, written comments, and briefs in inter 
          partes reexamination.
1.945   Response to Office action by patent owner in inter partes 
          reexamination.
1.947   Comments by third party requester to patent owner's response in 
          inter partes reexamination.
1.948   Limitations on submission of prior art by third party requester 
          following the order for inter partes reexamination.
1.949   Examiner's Office action closing prosecution in inter partes 
          reexamination.
1.951   Options after Office action closing prosecution in inter partes 
          reexamination.
1.953   Examiner's Right of Appeal Notice in inter partes reexamination.

           Interviews Prohibited in Inter Partes Reexamination

1.955   Interviews prohibited in inter partes reexamination proceedings.

Extensions of Time, Termination of Proceedings, and Petitions To Revive 
                      in Inter Partes Reexamination

1.956   Patent owner extensions of time in inter partes reexamination.
1.957   Failure to file a timely, appropriate or complete response or 
          comment in inter partes reexamination.
1.958   Petition to revive terminated inter partes reexamination or 
          claims terminated for lack of patent owner response.

Appeal to the Board of Patent Appeals and Interferences in Inter Partes 
                              Reexamination

1.959   Notice of appeal and cross appeal to Board of Patent Appeals and 
          Interferences in inter partes reexamination.
1.961   Jurisdiction over appeal in inter partes reexamination.
1.962   Appellant and respondent in inter partes reexamination defined.
1.963   Time for filing briefs in inter partes reexamination.
1.965   Appellant's brief in inter partes reexamination.
1.967   Respondent's brief in inter partes reexamination.
1.969   Examiner's answer in inter partes reexamination.
1.971   Rebuttal brief in inter partes reexamination.
1.973   Oral hearing in inter partes reexamination.
1.975   Affidavits or declarations after appeal in inter partes 
          reexamination.
1.977   Decision by the Board of Patent Appeals and Interferences; 
          remand to examiner in inter partes reexamination.
1.979   Action following decision by the Board of Patent Appeals and 
          Interferences or dismissal of appeal in inter partes 
          reexamination.
1.981   Reopening after decision by the Board of Patent Appeals and 
          Interferences in inter partes reexamination.

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

1.983   Patent owner appeal to the United States Court of Appeals for 
          the Federal Circuit in inter partes reexamination.

      Concurrent Proceedings Involving SSame Patent in Inte Partes 
                              Reexamination

1.985   Notification of prior or concurrent proceedings in inter partes 
          reexamination.

[[Page 12]]

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

         Reexamination Certificate in Inter Partes Reexamination

1.997   Issuance of inter partes reexamination certificate.

    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.
    (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.''

[[Page 13]]

    (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]



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 ex parte reexaminations 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; of inter partes reexaminations of patents in 
subpart H, Secs. 1.902 to 1.997; and of trademark applications 
Secs. 2.11 to 2.189.
    (b) Since each file must be complete in itself, a separate copy of 
every paper to be filed in a patent or trademark application, patent 
file, trademark registration file, or other proceeding must be furnished 
for each file to which the paper pertains, even though the contents of 
the papers filed in two or more files may be identical. The filing of 
duplicate copies of correspondence in the

[[Page 14]]

file of an application, patent, trademark registration file, or other 
proceeding should be avoided, except in situations in which the Office 
requires the filing of duplicate copies. The Office may dispose of 
duplicate copies of correspondence in the file of an application, 
patent, trademark registration file, or other proceeding.
    (c) Since different matters may be considered by different branches 
or sections of the United States Patent and Trademark Office, each 
distinct subject, inquiry or order must be contained in a separate paper 
to avoid confusion and delay in answering papers dealing with different 
subjects.
    (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, 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; 65 FR 
54656, Sept. 8, 2000; 66 FR 76772, Dec. 7, 2000]



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),

[[Page 15]]

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]



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

[[Page 16]]

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 or Sec. 1.913;
    (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 of a preliminary statement under Sec. 1.621; a transcript of a 
deposition under Sec. 1.676 or of interrogatories, or cross-
interrogatories; 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

[[Page 17]]

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; 65 
FR 54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000]



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 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

[[Page 18]]

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.
    (c) A published application as used in this chapter means an 
application for patent which has been published under 35 U.S.C. 122(b).
    (d)-(f)  [Reserved]
    (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.
    (i) National security classified as used in this chapter means 
specifically authorized under criteria established by an Act of Congress 
or Executive Order to be kept secret in the interest of national defense 
or foreign policy

[[Page 19]]

and, in fact, properly classified pursuant to such Act of Congress or 
Executive Order.

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

[43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982; 
47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, 
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000]



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 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.

[[Page 20]]

    (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 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) The specification, drawings, and all papers relating to the file 
of an abandoned published application, except if a redacted copy of the 
application was used for the patent application publication, a patent, 
or a statutory invention registration are open to inspection by the 
public, and copies may be obtained upon the payment of the fee set forth 
in Sec. 1.19(b)(2). 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.

[[Page 21]]

    (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; 65 FR 57051, Sept. 20, 2000]



Sec. 1.12  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the United 
States Patent and Trademark Office for patents and trademarks. The 
assignment records, relating to original or reissue patents, including 
digests and indexes (for assignments recorded on or after May 1, 1957), 
published patent applications, 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 United States Patent and Trademark 
Office, and copies of those assignment records may be obtained upon 
request and payment of the fee set forth in Sec. 1.19 and Sec. 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 which has not been published under 35 
U.S.C. 122(b) are not available to the public. Copies of any such 
assignment records and related information 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 in this part.
    (c) Any request by a member of the public seeking copies of any 
assignment records of any pending or abandoned patent application 
preserved in confidence under Sec. 1.14, or any information with respect 
thereto, must:
    (1) Be in the form of a petition including the fee set forth in 
Sec. 1.17(h); 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; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000]



Sec. 1.13  Copies and certified copies.

    (a) Non-certified copies of patents, patent application 
publications, and trademark registrations and of any records, books, 
papers, or drawings within the jurisdiction of the United States Patent 
and Trademark Office and open to the public, will be furnished by the 
United States Patent and Trademark Office to any person, and copies of 
other records or papers will be furnished to persons entitled thereto, 
upon payment of the appropriate fee.
    (b) Certified copies of patents, patent application publications, 
and trademark registrations and of any records,

[[Page 22]]

books, papers, or drawings within the jurisdiction of the United States 
Patent and Trademark Office and open to the public or persons entitled 
thereto will be authenticated by the seal of the United States Patent 
and Trademark Office and certified by the Commissioner, or in his or her 
name attested by an officer of the United States Patent and Trademark 
Office authorized by the Commissioner, upon payment of the fee for the 
certified copy.

[65 FR 57051, Sept. 20, 2000]



Sec. 1.14  Patent applications preserved in confidence.

    (a) Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b) are 
generally preserved in confidence pursuant to 35 U.S.C. 122(a). 
Information concerning the filing, pendency, or subject matter of an 
application for patent, including status information, and access to the 
application, will only be given to the public as set forth in Sec. 1.11 
or in this section.
    (1) Status information is:
    (i) Whether the application is pending, abandoned, or patented;
    (ii) Whether the application has been published under 35 U.S.C. 
122(b); and
    (iii) The application ``numerical identifier'' which may be:
    (A) The eight-digit application number (the two-digit series code 
plus the six-digit serial number); or
    (B) The six-digit serial number plus any one of the filing date of 
the national application, the international filing date, or date of 
entry into the national stage.
    (2) Access is defined as providing the application file for review 
and copying of any material in the application file.
    (b) When status information may be supplied. Status information of 
an application may be supplied by the Office to the public if any of the 
following apply:
    (1) Access to the application is available pursuant to paragraph (e) 
of this section;
    (2) The application is referred to by its numerical identifier in a 
published patent document (e.g., a U.S. patent, a U.S. patent 
application publication, or an international application publication), 
or in a U.S. application open to public inspection (Sec. 1.11(b), or 
paragraph (e)(2)(i) or (e)(2)(ii) of this section);
    (3) The application is a published international application in 
which the United States of America has been indicated as a designated 
state; or
    (4) The application claims the benefit of the filing date of an 
application for which status information may be provided pursuant to 
paragraphs (b)(1) through (b)(3) of this section.
    (c) When copies may be supplied. A copy of an application-as-filed 
or a file wrapper and contents may be supplied by the Office to the 
public, subject to paragraph (i) of this section (which addresses 
international applications), if any of the following apply:
    (1) Application-as-filed.
    (i) If a U.S. patent application publication or patent incorporates 
by reference, or includes a specific reference under 35 U.S.C. 119(e) or 
120 to, a pending or abandoned application, a copy of that application-
as-filed may be provided to any person upon written request including 
the fee set forth in Sec. 1.19(b)(1); or
    (ii) If an international application, which designates the U.S. and 
which has been published in accordance with PCT Article 21(2), 
incorporates by reference or claims priority under PCT Article 8 to a 
pending or abandoned U.S. application, a copy of that application-as-
filed may be provided to any person upon written request including a 
showing that the publication of the application in accordance with PCT 
Article 21(2) has occurred and that the U.S. was designated, and upon 
payment of the appropriate fee set forth in Sec. 1.19(b)(1).
    (2) File wrapper and contents. A copy of the specification, 
drawings, and all papers relating to the file of an abandoned or pending 
published application may be provided to any person upon written 
request, including the fee set forth in Sec. 1.19(b)(2). If a redacted 
copy of the application was used for the patent application publication, 
the copy of the specification, drawings, and papers may be limited to a 
redacted copy.
    (d) Power to inspect a pending or abandoned application. Access to 
an application may be provided to any person if the application file is 
available, and

[[Page 23]]

the application contains written authority (e.g., a power to inspect) 
granting access to such person. The written authority must be signed by:
    (1) An applicant;
    (2) An attorney or agent of record;
    (3) An authorized official of an assignee of record (made of record 
pursuant to Sec. 3.71 of this chapter); or
    (4) A registered attorney or agent named in the papers accompanying 
the application papers filed under Sec. 1.53 or the national stage 
documents filed under Sec. 1.494 or Sec. 1.495, if an executed oath or 
declaration pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
    (e) Public access to a pending or abandoned application. Access to 
an application may be provided to any person, subject to paragraph (i) 
of this section, if a written request for access is submitted, the 
application file is available, and any of the following apply:
    (1) The application is open to public inspection pursuant to 
Sec. 1.11(b); or
    (2) The application is abandoned, it is not within the file jacket 
of a pending application under Sec. 1.53(d), and it is referred to:
    (i) In a U.S. patent application publication or patent;
    (ii) In another U.S. application which is open to public inspection 
either pursuant to Sec. 1.11(b) or paragraph (e)(2)(i) of this section; 
or
    (iii) In an international application which designates the U.S. and 
is published in accordance with PCT Article 21(2).
    (f) Applications reported to Department of Energy. Applications for 
patents which appear to disclose, purport to disclose or do disclose 
inventions or discoveries relating to atomic energy are reported to the 
Department of Energy, which Department will be given access to the 
applications. Such reporting does not constitute a determination that 
the subject matter of each application so reported is in fact useful or 
is an invention or discovery, or that such application in fact discloses 
subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
    (g) Decisions by the Commissioner or the Board of Patent Appeals and 
Interferences. Any decision by the Commissioner or the Board of Patent 
Appeals and Interferences which would not otherwise be open to public 
inspection may 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 
precedential value; and
    (2) The applicant, or a party involved in an interference for which 
a decision was rendered, is given notice and an opportunity to object in 
writing within two months on the ground that the decision discloses a 
trade secret or other confidential information. Any objection must 
identify the deletions in the text of the decision considered necessary 
to protect the information, or explain why the entire decision must be 
withheld from the public to protect such information. An applicant or 
party will be given time, not less than twenty days, to request 
reconsideration and seek court review before any portions of a decision 
are made public under this paragraph over his or her objection.
    (h) Publication pursuant to Sec. 1.47. Information as to the filing 
of an application will be published in the Official Gazette in 
accordance with Sec. 1.47(c).
    (i) International applications.
    (1) Copies of international application files for international 
applications which designate the U.S. and which have been published in 
accordance with PCT Article 21(2), or copies of a document in such 
application files, will be furnished in accordance with PCT Articles 30 
and 38 and PCT Rules 94.2 and 94.3, upon written request including a 
showing that the publication of the application has occurred and that 
the U.S. was designated, and upon payment of the appropriate fee (see 
Sec. 1.19(b)(2) or 1.19(b)(3)), if:
    (i) With respect to the Home Copy, the international application was 
filed with the U.S. Receiving Office;
    (ii) With respect to the Search Copy, the U.S. acted as the 
International Searching Authority; or
    (iii) With respect to the Examination Copy, the United States acted 
as the International Preliminary Examining Authority, an International 
Preliminary Examination Report has issued, and the United States was 
elected.

[[Page 24]]

    (2) A copy of an English language translation of an international 
application which has been filed in the United States Patent and 
Trademark Office pursuant to 35 U.S.C. 154(2)(d)(4) will be furnished 
upon written request including a showing that the publication of the 
application in accordance with PCT Article 21(2) has occurred and that 
the U.S. was designated, and upon payment of the appropriate fee 
(Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
    (3) Access to international application files for international 
applications which designate the U.S. and which have been published in 
accordance with PCT Article 21(2), or copies of a document in such 
application files, will be furnished in accordance with PCT Articles 30 
and 38 and PCT Rules 94.2 and 94.3, upon written request including a 
showing that the publication of the application has occurred and that 
the U.S. was designated.
    (4) In accordance with PCT Article 30, copies of an international 
application-as-filed under paragraph (c)(1) of this section will not be 
provided prior to the international publication of the application 
pursuant to PCT Article 21(2).
    (5) Access to international application files under paragraphs (e) 
and (i)(3) of this section will not be permitted with respect to the 
Examination Copy in accordance with PCT Article 38.
    (j) Access or copies in other circumstances. The Office, either sua 
sponte or on petition, may also provide access or copies of all or part 
of an application if necessary to carry out an Act of Congress or if 
warranted by other special circumstances. Any petition by a member of 
the public seeking access to, or copies of, all or part of any pending 
or abandoned application preserved in confidence pursuant to paragraph 
(a) of this section, or any related papers, must include:
    (1) The fee set forth in Sec. 1.17(h); and
    (2) A showing that access to the application is necessary to carry 
out an Act of Congress or that special circumstances exist which warrant 
petitioner being granted access to all or part of the application.

[65 FR 54657, Sept. 8, 2000, as amended at 65 FR 57051, Sept. 20, 2000; 
65 FR 78959, Dec. 18, 2000]



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.  1.27(a)).............................   $355.00
By other than a small entity..................................   $710.00
 

    (b) In addition to the basic filing fee in an original application, 
except provisional applications, for filing or later

[[Page 25]]

presentation of each independent claim in excess of 3:

By a small entity (Sec.  1.27(a)).............................    $40.00
By other than a small entity..................................    $80.00
 

    (c) In addition to the basic filing fee in an original application, 
except provisional applications, 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.  1.27(a)).............................     $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.  1.27(a)).............................   $135.00
By other than a small entity..................................   $270.00
 

    (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.  1.27(a)).............................    $65.00
By other than a small entity..................................   $130.00
 

    (f) Basic fee for filing each design application:

By a small entity (Sec.  1.27(a)).............................   $160.00
By other than a small entity..................................   $320.00
 

    (g) Basic fee for filing each plant application, except provisional 
applications:

By a small entity (Sec.  1.27(a)).............................   $245.00
By other than a small entity..................................   $490.00
 

    (h) Basic fee for filing each reissue application:

By a small entity (Sec.  1.27(a)).............................   $355.00
By other than a small entity..................................   $710.00
 

    (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.  1.27(a)).............................    $40.00
By other than a small entity..................................    $80.00
 

    (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 (Note that Sec. 1.75(c) indicates how multiple 
dependent claims are considered for fee purposes.):

By a small entity (Sec.  1.27(a)).............................     $9.00
By other than a small entity..................................    $18.00
 

    (k) Basic fee for filing each provisional application:

By a small entity (Sec.  1.27(a)).............................    $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.  1.27(a)).............................    $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; 65 FR 49195, Aug. 11, 2000; 65 FR 78959, Dec. 18, 2000]



Sec. 1.17  Patent application and reexamination processing fees.

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

By a small entity (Sec.  1.27(a))..........................       $55.00
By other than a small entity...............................      $110.00
 

    (2) For reply within second month:

By a small entity (Sec.  1.27(a))..........................      $195.00
By other than a small entity...............................      $390.00
 

    (3) For reply within third month:

By a small entity (Sec.  1.27(a))..........................      $445.00
By other than a small entity...............................      $890.00
 

    (4) For reply within fourth month:

[[Page 26]]



By a small entity (Sec.  1.27(a))..........................      $695.00
By other than a small entity...............................    $1,390.00
 

    (5) For reply within fifth month:

By a small entity (Sec.  1.27(a))..........................      $945.00
By other than a small entity...............................    $1,890.00
 

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

By a small entity (Sec.  1.27(a))..........................      $155.00
By other than a small entity...............................      $310.00
 

    (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.  1.27(a))..........................      $155.00
By other than a small entity...............................      $310.00
 

    (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.  1.27(a))..........................      $135.00
By other than a small entity...............................      $270.00
 

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

By a small entity (Sec.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00
 

    (f)-(g) [Reserved]
    (h) For filing a petition 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. 1.47--for filing by other than all the inventors or a person not 
the inventor.
Sec. 1.53(e)--to accord a filing date.
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. 1.102--to make an application special.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.138(c)--to expressly abandon an application to avoid publication.
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. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
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(b)--for access to an interference settlement agreement.
Sec. 1.666(c)--for late filing of interference settlement agreement.
Sec. 1.741(b)--to accord a filing date to an application under 
Sec. 1.740 for extension of a patent term.
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) Processing fee for taking action under one of the following 
sections which refers to this paragraph: $130.00.

Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency based on 
an error in small entity status.
Sec. 1.41--for supplying the name or names of the inventor or inventors 
after the filing date without an oath or declaration as prescribed by 
Sec. 1.63, except in provisional applications.
Sec. 1.48--for correcting inventorship, except in provisional 
applications.
Sec. 1.52(d)--for processing a nonprovisional application filed with a 
specification in a language other than English.
Sec. 1.53(b)(3)--to convert a provisional application filed under 
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
Sec. 1.55--for entry of late priority papers.
Sec. 1.99(e)--for processing a belated submission under Sec. 1.99.
Sec. 1.103(b)--for requesting limited suspension of action, continued 
prosecution application (Sec. 1.53(d)).
Sec. 1.103(c)--for requesting limited suspension of action, request for 
continued examination (Sec. 1.114).
Sec. 1.103(d)--for requesting deferred examination of an application.
Sec. 1.217--for processing a redacted copy of a paper submitted in the 
file of an application in which a redacted copy was submitted for the 
patent application publication.
Sec. 1.221--for requesting voluntary publication or republication of an 
application.
Sec. 1.497(d)--for filing an oath or declaration pursuant to 35 U.S.C. 
371(c)(4) naming an inventive entity different from the inventive entity 
set forth in the international stage.

[[Page 27]]

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 filing a request for expedited examination under 
Sec. 1.155(a)--$900.00.
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or for 
the revival of an unavoidably terminated reexamination proceeding under 
35 U.S.C. 133 (Sec. 1.137(a)):

    By a small entity (Sec. 1.27(a)): $55.00.
    By other than a small entity: $110.00.

    (m) For filing a petition for revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated reexamination proceeding under 35 U.S.C. 41(a)(7) 
(Sec. 1.137(b)):

    By a small entity (Sec. 1.27(a)): $620.00.
    By other than a small entity: $1,240.00.


    (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 an information disclosure statement under Sec. 1.97(c) or 
(d) or a submission under Sec. 1.99: $180.00.
    (q) Processing fee for taking action under one of the following 
sections 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(c)(2)--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.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00
 

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

By a small entity (Sec.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00
 

    (t) For the acceptance of an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Secs. 1.55 and 
1.78): $1,240.00.

[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; 65 FR 
49195, Aug. 11, 2000; 65 FR 54658, Sept. 8, 2000; 65 FR 57052, Sept. 20, 
2000; 65 FR 78959, Dec. 18, 2000]



Sec. 1.18  Patent post allowance (including issue) fees.

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

By a small entity (Sec.  1.27(a))..........................      $620.00
By other than a small entity...............................    $1,240.00
 

    (b) Issue fee for issuing a design patent:

By a small entity (Sec.  1.27(a))..........................      $220.00
By other than a small entity...............................      $440.00
 

    (c) Issue fee for issuing a plant patent:

By a small entity (Sec.  1.27(a))..........................      $300.00
By other than a small entity...............................      $600.00
 

    (d)

Publication fee............................................     $300.00.
 

    (e) For filing an application for patent term adjustment under 
Sec. 1.705: $200.00.
    (f) For filing a request for reinstatement of all or part of the 
term reduced pursuant to Sec. 1.704(b) in an application for patent term 
adjustment under Sec. 1.705: $400.00.

[65 FR 49195, Aug. 11, 2000, as amended at 65 FR 56391, Sept. 18, 2000; 
65 FR 57053, Sept. 20, 2000; 65 FR 78960, Dec. 18, 2000]

[[Page 28]]



Sec. 1.19  Document supply fees.

    The United States Patent and Trademark Office will supply copies of 
the following documents upon payment of the fees indicated. The copies 
will be in black and white unless the original document is in color, a 
color copy is requested and the fee for a color copy is paid.
    (a) Uncertified copies of patent application publications and 
patents:
    (1) Printed copy of the paper portion of a patent application 
publication or patent, including a design patent, statutory invention 
registration, or defensive publication document:

(i) Regular service, which includes preparation of copies by      $3.00.
 the Office within two to three business days and delivery by
 United States Postal Service or to an Office Box; and
 preparation of copies by the Office within one business day
 of receipt and delivery by electronic means (e.g.,
 facsimile, electronic mail).................................
(ii) Next business day delivery to Office Box................     $6.00.
(iii) Expedited delivery by commercial delivery service......    $25.00.
(2) Printed copy of a plant patent in color:.................    $15.00.
(3) Color copy of a patent (other than a plant patent) or        $25.00.
 statutory invention registration containing a color drawing.
 

    (b) Certified and uncertified copies of Office documents:
    (1) Certified or uncertified copy of the paper portion of patent 
application as filed:
    (i) Regular service--$15.00
    (ii) Expedited regular service--$30.00
    (2) Certified or uncertified copy of paper portion of patent-related 
file wrapper and contents:
    (i) File wrapper and paper contents of 400 or fewer pages--$200.00
    (ii) Additional fee for each additional 100 pages or portion 
thereof--$40.00
    (iii) Additional fee for certification--$25.00
    (3) Certified or uncertified copy on compact disc of patent-related 
file-wrapper contents that were submitted on compact disc:
    (i) First compact disc in a single order--$55.00
    (ii) Each additional compact disc in the single order of paragraph 
(b)(3)(i) of this section--$15.00
    (4) Certified or uncertified copy of Office records, per document 
except as otherwise provided in this section--$25.00
    (5) 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)-(h)  [Reserved]

[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; 65 FR 54658, Sept. 8, 2000; 65 
FR 57053, Sept. 20, 2000]



Sec. 1.20  Post issuance fees.

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

(Sec. 1.323)--$100.00

    (b) Processing fee for correcting inventorship in a patent 
(Sec. 1.324)--$130.00.
    (c) In reexamination proceedings
    (1) For filing a request for ex parte reexamination 
(Sec. 1.510(a))--$2,520.00
    (2) For filing a request for inter partes reexamination 
(Sec. 1.915(a))--$8,800.00
    (d) For filing each statutory disclaimer (Sec. 1.321):

By a small entity (Sec.  1.27(a))..........................       $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:

[[Page 29]]



By a small entity (Sec.  1.27(a))..........................      $425.00
By other than a small entity...............................      $850.00
 

    (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.  1.27(a))..........................      $975.00
By other than a small entity...............................    $1,950.00
 

    (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.  1.27(a))..........................    $1,495.00
By other than a small entity...............................    $2,990.00
 

    (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.  1.27(a))..........................       $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
    (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; 65 FR 49195, Aug. 
11, 2000; 65 FR 78960, Dec. 18, 2000; 65 FR 80755, Dec. 22, 2000; 65 FR 
76772, Dec. 7, 2000]



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 seven or fewer questions--$230.00
(ii) Regrading of eight or more questions--$460.00

    (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

[[Page 30]]

    (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; 65 
FR 49195, Aug. 11, 2000]



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 fees paid to the United States Patent and Trademark Office 
must be itemized in each individual application, patent, trademark 
registration file, or other proceeding in such a manner that it is clear 
for which purpose the fees are paid. The Office may return fees that are 
not itemized as required by this paragraph. The provisions of 
Sec. 1.5(a) do not apply to the resubmission of fees returned pursuant 
to this paragraph.

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

[48 FR 2708, Jan. 20, 1983, as amended at 65 FR 54659, Sept. 8, 2000]



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

[[Page 31]]

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  [Reserved]



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., 
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 a particular 
paper filed. An authorization to charge a fee to a deposit account will 
not be considered payment of the fee on the date the authorization to 
charge the fee is effective as to the particular fee to be charged 
unless sufficient funds are present in the account to cover the fee. An 
authorization to charge fees under Sec. 1.16 in an application submitted 
under Sec. 1.494 or Sec. 1.495 will be treated as an authorization to 
charge fees under Sec. 1.492. An authorization to charge fees set forth 
in Sec. 1.18 to a deposit account is subject to the provisions of 
Sec. 1.311(b). An authorization to charge to a deposit account the fee 
for a request for reexamination pursuant to Sec. 1.510 or Sec. 1.913 and 
any other fees required in a reexamination proceeding in a patent may 
also be filed with the request for reexamination.

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

[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985; 65 FR 
54659, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000]



Sec. 1.26  Refunds.

    (a) The Commissioner may refund any fee paid by mistake or in excess 
of that required. A change of purpose after the payment of a fee, such 
as when a party desires to withdraw a patent or trademark filing for 
which the fee was paid, including an application, an appeal, or a 
request for an oral hearing, will not entitle a party to a refund of 
such fee. The Office will not refund amounts of twenty-five dollars or 
less

[[Page 32]]

unless a refund is specifically requested, and will not notify the payor 
of such amounts. If a party paying a fee or requesting a refund does not 
provide the banking information necessary for making refunds by 
electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or 
instruct the Office that refunds are to be credited to a deposit 
account, the Commissioner may require such information, or use the 
banking information on the payment instrument to make a refund. Any 
refund of a fee paid by credit card will be by a credit to the credit 
card account to which the fee was charged.
    (b) Any request for refund must be filed within two years from the 
date the fee was paid, except as otherwise provided in this paragraph or 
in Sec. 1.28(a). If the Office charges a deposit account by an amount 
other than an amount specifically indicated in an authorization 
(Sec. 1.25(b)), any request for refund based upon such charge must be 
filed within two years from the date of the deposit account statement 
indicating such charge, and include a copy of that deposit account 
statement. The time periods set forth in this paragraph are not 
extendable.
    (c) If the Commissioner decides not to institute a reexamination 
proceeding, for ex parte reexaminations filed under Sec. 1.510, a refund 
of $1,690 will be made to the reexamination requester. For inter partes 
reexaminations filed under Sec. 1.913, a refund of $7,970 will be made 
to the reexamination requester. The reexamination requester should 
indicate the form in which any refund should be made (e.g., by check, 
electronic funds transfer, credit to a deposit account, etc.). 
Generally, reexamination refunds will be issued in the form that the 
original payment was provided.

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

[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985; 
54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 
21, 1992; 62 FR 53183, Oct. 10, 1997; 65 FR 54659, Sept. 8, 2000; 65 FR 
76773, Dec. 7, 2000]



Sec. 1.27  Definition of small entities and establishing status as a 
          small entity to permit payment of small entity fees; when a 

          determination of entitlement to small entity status and 
          notification of loss of entitlement to 
          small entity status are required; fraud on the Office.

    (a) Definition of small entities. A small entity as used in this 
chapter means any party (person, small business concern, or nonprofit 
organization) under paragraphs (a)(1) through (a)(3) of this section.
    (1) Person. A person, as used in paragraph (c) of this section, 
means any inventor or other individual (e.g., an individual to whom an 
inventor has transferred some rights in the invention), who has not 
assigned, granted, conveyed, or licensed, and is under no obligation 
under contract or law to assign, grant, convey, or license, any rights 
in the invention. An inventor or other individual who has transferred 
some rights, or is under an obligation to transfer some rights in the 
invention to one or more parties, can also qualify for small entity 
status if all the parties who have had rights in the invention 
transferred to them also qualify for small entity status either as a 
person, small business concern, or nonprofit organization under this 
section.
    (2) Small business concern. A small business concern, as used in 
paragraph (c) of this section, means any business concern that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify for small entity status as a 
person, small business concern, or nonprofit organization.
    (ii) Meets the standards set forth in 13 CFR part 121 to be eligible 
for reduced patent fees. Questions related to standards for a small 
business concern may be directed to: Small Business Administration, Size 
Standards Staff, 409 Third Street, S.W., Washington, D.C. 20416.

[[Page 33]]

    (3) Nonprofit Organization. A nonprofit organization, as used in 
paragraph (c) of this section, means any nonprofit organization that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify as a person, small business 
concern, or a nonprofit organization, and
    (ii) Is either:
    (A) A university or other institution of higher education located in 
any country;
    (B) An organization of the type described in section 501(c)(3) of 
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from 
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 
501(a));
    (C) Any nonprofit scientific or educational organization qualified 
under a nonprofit organization statute of a state of this country (35 
U.S.C. 201(i)); or
    (D) Any nonprofit organization located in a foreign country which 
would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) 
of this section or (a)(3)(ii)(C) of this section if it were located in 
this country.
    (4) License to a Federal agency. (i) For persons under paragraph 
(a)(1) of this section, a license to the Government resulting from a 
rights determination under Executive Order 10096 does not constitute a 
license so as to prohibit claiming small entity status.
    (ii) For small business concerns and nonprofit organizations under 
paragraphs (a)(2) and (a)(3) of this section, a license to a Federal 
agency resulting from a funding agreement with that agency pursuant to 
35 U.S.C. 202(c)(4) does not constitute a license for the purposes of 
paragraphs (a)(2)(i) and (a)(3)(i) of this section.
    (b) Establishment of small entity status permits payment of reduced 
fees. A small entity, as defined in paragraph (a) of this section, who 
has properly asserted entitlement to small entity status pursuant to 
paragraph (c) of this section will be accorded small entity status by 
the Office in the particular application or patent in which entitlement 
to small entity status was asserted. Establishment of small entity 
status allows the payment of certain reduced patent fees pursuant to 35 
U.S.C. 41(h).
    (c) Assertion of small entity status. Any party (person, small 
business concern or nonprofit organization) should make a determination, 
pursuant to paragraph (f) of this section, of entitlement to be accorded 
small entity status based on the definitions set forth in paragraph (a) 
of this section, and must, in order to establish small entity status for 
the purpose of paying small entity fees, actually make an assertion of 
entitlement to small entity status, in the manner set forth in 
paragraphs (c)(1) or (c)(3) of this section, in the application or 
patent in which such small entity fees are to be paid.
    (1) Assertion by writing. Small entity status may be established by 
a written assertion of entitlement to small entity status. A written 
assertion must:
    (i) Be clearly identifiable;
    (ii) Be signed (see paragraph (c)(2) of this section); and
    (iii) Convey the concept of entitlement to small entity status, such 
as by stating that applicant is a small entity, or that small entity 
status is entitled to be asserted for the application or patent. While 
no specific words or wording are required to assert small entity status, 
the intent to assert small entity status must be clearly indicated in 
order to comply with the assertion requirement.
    (2) Parties who can sign and file the written assertion. The written 
assertion can be signed by:
    (i) One of the parties identified in Sec. 1.33(b) (e.g., an attorney 
or agent registered with the Office), Sec. 3.73(b) of this chapter 
notwithstanding, who can also file the written assertion;
    (ii) At least one of the individuals identified as an inventor (even 
though a Sec. 1.63 executed oath or declaration has not been submitted), 
notwithstanding Sec. 1.33(b)(4), who can also file the written assertion 
pursuant to the exception under Sec. 1.33(b) of this part; or
    (iii) An assignee of an undivided part interest, notwithstanding 
Secs. 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee 
cannot file the assertion without resort to a party identified under 
Sec. 1.33(b) of this part.

[[Page 34]]

    (3) Assertion by payment of the small entity basic filing or basic 
national fee. The payment, by any party, of the exact amount of one of 
the small entity basic filing fees set forth in Secs. 1.16(a), (f), (g), 
(h), or (k), or one of the small entity basic national fees set forth in 
Secs. 1.492(a)(1), (a)(2), (a)(3), (a)(4), or (a)(5), will be treated as 
a written assertion of entitlement to small entity status even if the 
type of basic filing or basic national fee is inadvertently selected in 
error.
    (i) If the Office accords small entity status based on payment of a 
small entity basic filing or basic national fee under paragraph (c)(3) 
of this section that is not applicable to that application, any balance 
of the small entity fee that is applicable to that application will be 
due along with the appropriate surcharge set forth in Sec. 1.16(e), or 
Sec. 1.16(l).
    (ii) The payment of any small entity fee other than those set forth 
in paragraph (c)(3) of this section (whether in the exact fee amount or 
not) will not be treated as a written assertion of entitlement to small 
entity status and will not be sufficient to establish small entity 
status in an application or a patent.
    (4) Assertion required in related, continuing, and reissue 
applications. Status as a small entity must be specifically established 
by an assertion in each related, continuing and reissue application in 
which status is appropriate and desired. Status as a small entity in one 
application or patent does not affect the status of any other 
application or patent, regardless of the relationship of the 
applications or patents. The refiling of an application under Sec. 1.53 
as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application under Sec. 1.53(d)), or 
the filing of a reissue application, requires a new assertion as to 
continued entitlement to small entity status for the continuing or 
reissue application.
    (d) When small entity fees can be paid. Any fee, other than the 
small entity basic filing fees and the small entity national fees of 
paragraph (c)(3) of this section, can be paid in the small entity amount 
only if it is submitted with, or subsequent to, the submission of a 
written assertion of entitlement to small entity status, except when 
refunds are permitted by Sec. 1.28(a).
    (e) Only one assertion required. (1) An assertion of small entity 
status need only be filed once in an application or patent. Small entity 
status, once established, remains in effect until changed pursuant to 
paragraph (g)(1) of this section. Where an assignment of rights or an 
obligation to assign rights to other parties who are small entities 
occurs subsequent to an assertion of small entity status, a second 
assertion is not required.
    (2) Once small entity status is withdrawn pursuant to paragraph 
(g)(2) of this section, a new written assertion is required to again 
obtain small entity status.
    (f) Assertion requires a determination of entitlement to pay small 
entity fees. Prior to submitting an assertion of entitlement to small 
entity status in an application, including a related, continuing, or 
reissue application, a determination of such entitlement should be made 
pursuant to the requirements of paragraph (a) of this section. It should 
be determined that all parties holding rights in the invention qualify 
for small entity status. The Office will generally not question any 
assertion of small entity status that is made in accordance with the 
requirements of this section, but note paragraph (h) of this section.
    (g)(1) New determination of entitlement to small entity status is 
needed when issue and maintenance fees are due. Once status as a small 
entity has been established in an application or patent, fees as a small 
entity may thereafter be paid in that application or patent without 
regard to a change in status until the issue fee is due or any 
maintenance fee is due.
    (2) Notification of loss of entitlement to small entity status is 
required when issue and maintenance fees are due. Notification of a loss 
of entitlement to small entity status must be filed in the application 
or patent prior to paying, or at the time of paying, the earliest of the 
issue fee or any maintenance fee due after the date on which status as a 
small entity as defined in paragraph (a) of this section is no longer 
appropriate.

[[Page 35]]

The notification that small entity status is no longer appropriate must 
be signed by a party identified in Sec. 1.33(b). Payment of a fee in 
other than the small entity amount is not sufficient notification that 
small entity status is no longer appropriate.
    (h) Fraud attempted or practiced on the Office.
    (1) Any attempt to fraudulently establish status as a small entity, 
or pay fees as a small entity, shall be considered as a fraud practiced 
or attempted on the Office.
    (2) Improperly, and with intent to deceive, establishing status as a 
small entity, or paying fees as a small entity, shall be considered as a 
fraud practiced or attempted on the Office.

[65 FR 54659, Sept. 8, 2000]



Sec. 1.28  Refunds when small entity status is later established; how errors in small entity status are excused.

    (a) Refunds based on later establishment of small entity status. A 
refund pursuant to Sec. 1.26, based on establishment of small entity 
status, of a portion of fees timely paid in full prior to establishing 
status as a small entity may only be obtained if an assertion under 
Sec. 1.27(c) and a request for a refund of the excess amount are filed 
within three months of the date of the timely payment of the full fee. 
The three-month time period is not extendable under 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 three months of 
the date of payment of, the full fee.
    (b) Date of payment. (1) The three-month period for requesting a 
refund, pursuant to paragraph (a) of this section, starts on the date 
that a full fee has been paid;
    (2) The date when a deficiency payment is paid in full determines 
the amount of deficiency that is due, pursuant to paragraph (c) of this 
section.
    (c) How errors in small entity status are excused. If status as a 
small entity is established in good faith, and fees as a small entity 
are paid in good faith, in any application or patent, and it is later 
discovered that such status as a small entity was established in error, 
or that through error the Office was not notified of a loss of 
entitlement to small entity status as required by Sec. 1.27(g)(2), the 
error will be excused upon: compliance with the separate submission and 
itemization requirements of paragraphs (c)(1) and (c)(2) of this 
section, and the deficiency payment requirement of paragraph (c)(2) of 
this section:
    (1) Separate submission required for each application or patent. Any 
paper submitted under this paragraph must be limited to the deficiency 
payment (all fees paid in error), required by paragraph (c)(2) of this 
section, for one application or one patent. Where more than one 
application or patent is involved, separate submissions of deficiency 
payments (e.g., checks) and itemizations are required for each 
application or patent. See Sec. 1.4(b).
    (2) Payment of deficiency owed. The deficiency owed, resulting from 
the previous erroneous payment of small entity fees, must be paid.
    (i) Calculation of the deficiency owed. The deficiency owed for each 
previous fee erroneously paid as a small entity is the difference 
between the current fee amount (for other than a small entity) on the 
date the deficiency is paid in full and the amount of the previous 
erroneous (small entity) fee payment. The total deficiency payment owed 
is the sum of the individual deficiency owed amounts for each fee amount 
previously erroneously paid as a small entity. Where a fee paid in error 
as a small entity was subject to a fee decrease between the time the fee 
was paid in error and the time the deficiency is paid in full, the 
deficiency owed is equal to the amount (previously) paid in error;
    (ii) Itemization of the deficiency payment. An itemization of the 
total deficiency payment is required. The itemization must include the 
following information:
    (A) Each particular type of fee that was erroneously paid as a small 
entity, (e.g., basic statutory filing fee, two-month extension of time 
fee) along with the current fee amount for a non-small entity;
    (B) The small entity fee actually paid, and when. This will permit 
the Office to differentiate, for example, between two one-month 
extension of time

[[Page 36]]

fees erroneously paid as a small entity but on different dates;
    (C) The deficiency owed amount (for each fee erroneously paid); and
    (D) The total deficiency payment owed, which is the sum or total of 
the individual deficiency owed amounts set forth in paragraph 
(c)(2)(ii)(C) of this section.
    (3) Failure to comply with requirements. If the requirements of 
paragraphs (c)(1) and (c)(2) of this section are not complied with, such 
failure will either: be treated as an authorization for the Office to 
process the deficiency payment and charge the processing fee set forth 
in Sec. 1.17(i), or result in a requirement for compliance within a one-
month non-extendable time period under Sec. 1.136(a) to avoid the return 
of the fee deficiency paper, at the option of the Office.
    (d) Payment of deficiency operates as notification of loss of 
status. Any deficiency payment (based on a previous erroneous payment of 
a small entity fee) submitted under paragraph (c) of this section will 
be treated under Sec. 1.27(g)(2) as a notification of a loss of 
entitlement to small entity status.

[65 FR 54661, Sept. 8, 2000]



                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) Correspondence address and daytime telephone number. When filing 
an application, a correspondence address must be set forth in either an 
application data sheet (Sec. 1.76), or elsewhere, in a clearly 
identifiable manner, in any paper submitted with an application filing. 
If no correspondence address is specified, the Office may treat the 
mailing address of the first named inventor (if provided, see 
Secs. 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The 
Office will direct all notices, official letters, and other 
communications relating to the application to the correspondence 
address. The Office will not engage in double correspondence with an 
applicant and a registered attorney or agent, or with more than one 
registered attorney or agent except as deemed necessary by the 
Commissioner. If more than one correspondence address is specified, the 
Office will establish one as the correspondence address. For the party 
to whom correspondence is to be addressed, a daytime telephone number 
should be supplied in a clearly identifiable manner and may be changed 
by any party who may change the correspondence address. The 
correspondence address may be changed as follows:
    (1) Prior to filing of a Sec. 1.63 oath or declaration by any of the 
inventors. If a Sec. 1.63 oath or declaration has not been filed by any 
of the inventors, the correspondence address may be changed by the party 
who filed the application. If the application was filed by a registered 
attorney or agent, any other registered practitioner named in the 
transmittal papers may also change the correspondence address. Thus, the 
inventor(s), any registered practitioner named in the transmittal papers 
accompanying the original application, or a party that will be the 
assignee who filed the application, may change the correspondence 
address in that application under this paragraph.
    (2) Where a Sec. 1.63 oath or declaration has been filed by any of 
the inventors. If a Sec. 1.63 oath or declaration has been filed, or is 
filed concurrent with the filing of an application, by any of the 
inventors, the correspondence address may be changed by the parties set 
forth in paragraph (b) of this section, except for paragraph (b)(2).
    (b) Amendments and other papers. Amendments and other papers, except

[[Page 37]]

for written assertions pursuant to Sec. 1.27(c)(2)(ii) of this part, 
filed in the application must be signed by:
    (1) A registered 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) An assignee as provided for under Sec. 3.71(b) of this chapter; 
or
    (4) All of the applicants (Sec. 1.41(b)) for patent, unless there is 
an assignee of the entire interest and such assignee has taken action in 
the application in accordance with Sec. 3.71 of this chapter.
    (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; 65 FR 54661, Sept. 8, 2000]



Sec. 1.34  Recognition for representation.

    (a) When a registered attorney or agent acting in a representative 
capacity, pursuant to Sec. 1.31, appears in person or signs a paper in 
practice before the United States Patent and Trademark Office in a 
patent case, his or her personal appearance or signature shall 
constitute a representation to the United States Patent and Trademark 
Office that under the provisions of this subchapter and the law, he or 
she is authorized to represent the particular party 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 a registered 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, pursuant to Sec. 1.31, he or she is a 
principal registered attorney or agent of record in the case. A 
principal registered attorney or agent, so appointed, may appoint an 
associate registered attorney or agent who shall also then be of record.

[65 FR 54662, Sept. 8, 2000]



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

    A power of attorney or authorization of agent, pursuant to 
Sec. 1.31, may be revoked at any stage in the proceedings of a case, and 
a registered attorney or agent may withdraw, upon application to and 
approval by the Commissioner. A registered attorney or agent, except an 
associate registered attorney or agent whose address is the same as that 
of the principal registered attorney or agent, will be notified of the 
revocation of the power of attorney or

[[Page 38]]

authorization, and the applicant or patent owner will be notified of the 
withdrawal of the registered attorney 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 a registered attorney or agent of the 
assignee's own selection. See Sec. 1.613(d) for withdrawal in an 
interference.

[65 FR 54662, Sept. 8, 2000]

                       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 Secs. 1.53(d)(4) and 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 applicant files a paper, including the processing 
fee set forth in Sec. 1.17(i), 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 applicant files a paper including 
the processing fee set forth in Sec. 1.17(q), 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, 
residence, and citizenship of each person believed to be an actual 
inventor should be provided when the application papers pursuant to 
Sec. 1.53(b) or Sec. 1.53(c) are filed.
    (4) The inventors who submitted an application under Sec. 1.494 or 
Sec. 1.495 are the inventors in the international application 
designating the United States (Sec. 1.48(f)(1) does not apply to 
applications entering the national stage).
    (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 physically or 
electronically deliver an application for patent to the Office 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; 65 FR 54662, Sept. 8, 2000]



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]

[[Page 39]]



Sec. 1.44  [Reserved]



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(h), and the last known address of the 
nonsigning inventor. The nonsigning inventor may subsequently join in 
the application by 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(h), and the last known address of all of the 
inventors. An inventor may subsequently join in the application by 
filing an oath or declaration complying with Sec. 1.63.
    (c) The Office will send notice of the filing of the application to 
all inventors who have not joined in the application at the address(es) 
provided in the petition under this section, and publish notice of the 
filing of the application in the Official Gazette. The Office may 
dispense with this notice provision in a continuation or divisional 
application, if notice regarding the filing of the prior application was 
given to the nonsigning inventor(s).

[65 FR 54662, Sept. 8, 2000]



Sec. 1.48  Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.

    (a) Nonprovisional application after oath/declaration filed. If the 
inventive

[[Page 40]]

entity is set forth in error in an executed Sec. 1.63 oath or 
declaration in a nonprovisional 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 inventorship of the nonprovisional application 
may be amended to name only the actual inventor or inventors. If the 
nonprovisional 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. Amendment of the inventorship 
requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) 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;
    (3) 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 Sec. 1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of this 
chapter).
    (b) Nonprovisional application--fewer inventors due to amendment or 
cancellation of claims. If the correct inventors are named in a 
nonprovisional application, and the prosecution of the nonprovisional 
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 nonprovisional application, an 
amendment must be filed requesting deletion of the name or names of the 
person or persons who are not inventors of the invention being claimed. 
If 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. Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the named inventor or inventors 
being deleted and acknowledges that the inventor's invention is no 
longer being claimed in the nonprovisional application; and
    (2) The processing fee set forth in Sec. 1.17(i).
    (c) Nonprovisional application--inventors added for claims to 
previously unclaimed subject matter. If a nonprovisional 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. If 
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. Amendment of the inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor that the 
addition is necessitated by amendment of the claims and that the 
inventorship error occurred without deceptive intention on his or her 
part;
    (3) An oath or declaration by the actual inventors as required by 
Sec. 1.63 or as permitted by Secs. 1.42, 1.43, or Sec. 1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of this 
chapter).
    (d) Provisional application--adding omitted inventors. 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. 
Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the inventor or inventors being 
added and states that the inventorship error occurred without deceptive 
intention on the

[[Page 41]]

part of the omitted inventor or inventors; and
    (2) The processing fee set forth in Sec. 1.17(q).
    (e) Provisional application--deleting the name or names of the 
inventor or inventors. 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. Amendment of the 
inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement by the person or persons whose name or names are 
being deleted that the inventorship error occurred without deceptive 
intention on the part of such person or persons;
    (3) The processing fee set forth in Sec. 1.17(q); 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) of this 
chapter).
    (f)(1) Nonprovisional application--filing executed oath/declaration 
corrects inventorship. 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 by any of the inventors, 
the first submission of an executed oath or declaration under Sec. 1.63 
by any of the inventors during the pendency of the application will act 
to correct the earlier identification of inventorship. See 
Secs. 1.41(a)(4) and 1.497(d) for submission of an executed oath or 
declaration to enter the national stage under 35 U.S.C. 371 and 
Sec. 1.494 or Sec. 1.495 naming an inventive entity different from the 
inventive entity set forth in the international stage.
    (2) Provisional application--filing cover sheet corrects 
inventorship. 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) Additional information may be required. The Office may require 
such other information as may be deemed appropriate under the particular 
circumstances surrounding the correction of inventorship.
    (h) Reissue applications not covered. The provisions of this section 
do not apply to reissue applications. See Secs. 1.171 and 1.175 for 
correction of inventorship in a patent via a reissue application.
    (i) Correction of inventorship in patent or interference. See 
Sec. 1.324 for correction of inventorship in a patent, and Sec. 1.634 
for correction of inventorship in an interference.

[65 FR 54663, Sept. 8, 2000]

                             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) or Sec. 1.53(d) 
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 Secs. 1.63 and 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);

[[Page 42]]

    (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, as amended at 65 FR 54664, Sept. 8, 2000]



Sec. 1.52  Language, paper, writing, margins.

    (a) Papers that are to become a part of the permanent United States 
Patent and Trademark Office records in the file of a patent application 
or a reexamination proceeding. (1) All papers, other than drawings, that 
are to become a part of the permanent United States Patent and Trademark 
Office records in the file of a patent application or reexamination 
proceeding must be on sheets of paper that are the same size, and:
    (i) Flexible, strong, smooth, non-shiny, durable, and white;
    (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm 
(8\1/2\ by 11 inches), with each sheet including a top margin of at 
least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), 
a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin 
of at least 2.0 cm (3/4 inch);
    (iii) Written on only one side in portrait orientation;
    (iv) Plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; and
    (v) Presented in a form having sufficient clarity and contrast 
between the paper and the writing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical character 
recognition.
    (2) All papers that are to become a part of the permanent records of 
the United States Patent and Trademark Office should have no holes in 
the sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on forms provided by 
the Office, or to the copy of the patent submitted in double column 
format as the specification in a reissue application or request for 
reexamination.
    (4) See Sec. 1.58 for chemical and mathematical formulae and tables, 
and Sec. 1.84 for drawings.
    (5) If papers that do not comply with paragraph (a)(1) of this 
section are submitted as part of the permanent record, other than the 
drawings, applicant, or the patent owner, or the requester in a 
reexamination proceeding, will be notified and must provide substitute 
papers that comply with paragraph (a)(1) of this section within a set 
time period.
    (b) The application (specification, including the claims, drawings, 
and oath or declaration) or reexamination proceeding and any amendments 
or corrections to the application or reexamination proceeding. (1) The 
application or proceeding and any amendments or corrections to the 
application (including any translation submitted pursuant to paragraph 
(d) of this section) or proceeding, except as provided for in Sec. 1.69 
and paragraph (d) of this section, must:
    (i) Comply with the requirements of paragraph (a) of this section; 
and
    (ii) Be in the English language or be accompanied by a translation 
of the application and a translation of any corrections or amendments 
into the English language together with a statement that the translation 
is accurate.
    (2) The specification (including the abstract and claims) for other 
than reissue applications and reexamination proceedings, and any 
amendments for applications (including reissue applications) and 
reexamination proceedings to the specification, except as provided for 
in Secs. 1.821 through 1.825, must have:
    (i) Lines that are 1\1/2\ or double spaced;
    (ii) Text written in a nonscript type font (e.g., Arial, Times 
Roman, or Courier) lettering style having capital letters which are at 
least 0.21 cm (0.08 inch) high; and
    (iii) Only a single column of text.

[[Page 43]]

    (3) The claim or claims must commence on a separate sheet 
(Sec. 1.75(h)).
    (4) The abstract must commence on a separate sheet or be submitted 
as the first page of the patent in a reissue application or 
reexamination proceeding (Sec. 1.72(b)).
    (5) Other than in a reissue application or reexamination proceeding, 
the pages of the specification including claims and abstract must be 
numbered consecutively, starting with 1, the numbers being centrally 
located above or preferably, below, the text.
    (6) Other than in a reissue application or reexamination proceeding, 
the paragraphs of the specification, other than in the claims or 
abstract, may be numbered at the time the application is filed, and 
should be individually and consecutively numbered using Arabic numerals, 
so as to unambiguously identify each paragraph. The number should 
consist of at least four numerals enclosed in square brackets, including 
leading zeros (e.g., [0001]). The numbers and enclosing brackets should 
appear to the right of the left margin as the first item in each 
paragraph, before the first word of the paragraph, and should be 
highlighted in bold. A gap, equivalent to approximately four spaces, 
should follow the number. Nontext elements (e.g., tables, mathematical 
or chemical formulae, chemical structures, and sequence data) are 
considered part of the numbered paragraph around or above the elements, 
and should not be independently numbered. If a nontext element extends 
to the left margin, it should not be numbered as a separate and 
independent paragraph. A list is also treated as part of the paragraph 
around or above the list, and should not be independently numbered. 
Paragraph or section headers (titles), whether abutting the left margin 
or centered on the page, are not considered paragraphs and should not be 
numbered.
    (7) If papers that do not comply with paragraphs (b)(1) through 
(b)(5) of this section are submitted as part of the application, 
applicant, or patent owner, or requester in a reexamination proceeding, 
will be notified and the applicant, patent owner or requester in a 
reexamination proceeding must provide substitute papers that comply with 
paragraphs (b)(1) through (b)(5) of this section within a set time 
period.
    (c)(1) Any interlineation, erasure, cancellation or other alteration 
of the application papers filed must be made 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. In either situation, a substitute 
specification (Sec. 1.125) is required if the application papers do not 
comply with paragraphs (a) and (b) of this section.
    (2) 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.
    (3) Notwithstanding the provisions of this paragraph, if an oath or 
declaration is a copy of the oath or declaration from a prior 
application, the application for which such copy is submitted may 
contain alterations that do not introduce matter that would have been 
new matter in the prior application.
    (d) A nonprovisional or provisional application may be filed in a 
language other than English.
    (1) Nonprovisional application. If a nonprovisional application is 
filed in a language other than English, an English language translation 
of the non-English language application, a statement that the 
translation is accurate, and the processing fee set forth in 
Sec. 1.17(i) are required. If these items are not filed with the 
application, applicant will be notified and given a period of time 
within which they must be filed in order to avoid abandonment.
    (2) Provisional application. If a provisional application is filed 
in a language other than English, an English language translation of the 
non-English language provisional application will not be required in the 
provisional application. See Sec. 1.78(a) for the requirements for 
claiming the benefit of such provisional application in a nonprovisional 
application.

[[Page 44]]

    (e) Electronic documents that are to become part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or reexamination proceeding. (1) The following 
documents may be submitted to the Office on a compact disc in compliance 
with this paragraph:
    (i) A computer program listing (see Sec. 1.96);
    (ii) A ``Sequence Listing'' (submitted under Sec. 1.821(c)); or
    (iii) A table (see Sec. 1.58) that has more than 50 pages of text.
    (2) A compact disc as used in this part means a Compact Disc-Read 
Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance 
with this paragraph. A CD-ROM is a ``read-only'' medium on which the 
data is pressed into the disc so that it cannot be changed or erased. A 
CD-R is a ``write once'' medium on which once the data is recorded, it 
is permanent and cannot be changed or erased.
    (3)(i) Each compact disc must conform to the International Standards 
Organization (ISO) 9660 standard, and the contents of each compact disc 
must be in compliance with the American Standard Code for Information 
Interchange (ASCII).
    (ii) Each compact disc must be enclosed in a hard compact disc case 
within an unsealed padded and protective mailing envelope and 
accompanied by a transmittal letter on paper in accordance with 
paragraph (a) of this section. The transmittal letter must list for each 
compact disc the machine format (e.g., IBM-PC, Macintosh), the operating 
system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list 
of files contained on the compact disc including their names, sizes in 
bytes, and dates of creation, plus any other special information that is 
necessary to identify, maintain, and interpret the information on the 
compact disc. Compact discs submitted to the Office will not be returned 
to the applicant.
    (4) Any compact disc must be submitted in duplicate unless it 
contains only the ``Sequence Listing'' in computer readable form 
required by Sec. 1.821(e). The compact disc and duplicate copy must be 
labeled ``Copy 1'' and ``Copy 2,'' respectively. The transmittal letter 
which accompanies the compact disc must include a statement that the two 
compact discs are identical. In the event that the two compact discs are 
not identical, the Office will use the compact disc labeled ``Copy 1'' 
for further processing. Any amendment to the information on a compact 
disc must be by way of a replacement compact disc in compliance with 
this paragraph containing the substitute information, and must be 
accompanied by a statement that the replacement compact disc contains no 
new matter. The compact disc and copy must be labeled ``COPY 1 
REPLACEMENT MM/DD/YYYY'' (with the month, day and year of creation 
indicated), and ``COPY 2 REPLACEMENT MM/DD/YYYY,'' respectively.
    (5) The specification must contain an incorporation-by-reference of 
the material on the compact disc in a separate paragraph 
(Sec. 1.77(b)(4)), identifying each compact disc by the names of the 
files contained on each of the compact discs, their date of creation and 
their sizes in bytes. The Office may require applicant to amend the 
specification to include in the paper portion any part of the 
specification previously submitted on compact disc.
    (6) A compact disc must also be labeled with the following 
information:
    (i) The name of each inventor (if known);
    (ii) Title of the invention;
    (iii) The docket number, or application number if known, used by the 
person filing the application to identify the application; and
    (iv) A creation date of the compact disc.
    (v) If multiple compact discs are submitted, the label shall 
indicate their order (e.g. ``1 of X'').
    (vi) An indication that the disk is ``Copy 1'' or ``Copy 2'' of the 
submission. See paragraph (b)(4) of this section.
    (7) If a file is unreadable on both copies of the disc, the 
unreadable file will be treated as not having been submitted. A file is 
unreadable if, for example, it is of a format that does not

[[Page 45]]

comply with the requirements of paragraph (e)(3) of this section, it is 
corrupted by a computer virus, or it is written onto a defective compact 
disc.

(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; 65 FR 
54664, Sept. 8, 2000; 65 FR 57053, Sept. 20, 2000]



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 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), which may be an application data sheet 
(Sec. 1.76), or a cover letter identifying the application as a 
provisional application. Otherwise, the application will be treated as 
an application filed under paragraph (b) of this section.
    (2) An application for patent filed under paragraph (b) of this 
section may be converted to a provisional application and be accorded 
the original filing date of the application filed under paragraph (b) of 
this section. The grant of such a request for conversion will not 
entitle applicant to a refund of the fees that were properly paid in the 
application filed under paragraph (b) of this section. Such a request 
for conversion must be accompanied by the processing fee set forth in 
Sec. 1.17(q) and be filed prior to the earliest of:
    (i) Abandonment of the application filed under paragraph (b) of this 
section;
    (ii) Payment of the issue fee on the application filed under 
paragraph (b) of this section;
    (iii) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) of this section; or
    (iv) The filing of a request for a statutory invention registration 
under Sec. 1.293 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

[[Page 46]]

fee to the filing fee, or any other fee, for the nonprovisional 
application. Conversion of a provisional application to a nonprovisional 
application under this paragraph will result in the term of any patent 
to issue from the application being measured from at least the filing 
date of the provisional application for which conversion is requested. 
Thus, applicants should consider avoiding this adverse patent term 
impact by filing a nonprovisional application claiming the benefit of 
the provisional application under 35 U.S.C. 119(e) (rather than 
converting the provisional application into a nonprovisional application 
pursuant to this paragraph). A request to convert a provisional 
application to a nonprovisional application must be accompanied by the 
fee set forth in 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. The nonprovisional application resulting from conversion of 
a provisional application must also include the filing fee for a 
nonprovisional application, an oath or declaration by the applicant 
pursuant to Secs. 1.63, 1.162, or 1.175, and the surcharge required by 
Sec. 1.16(e) if either the basic filing fee for a nonprovisional 
application or the oath or declaration was not present on the filing 
date accorded the resulting nonprovisional application (i.e., the filing 
date of the original provisional application). A request to convert a 
provisional application to a nonprovisional application must also be 
filed prior to the earliest of:
    (i) Abandonment of the provisional application filed under paragraph 
(c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under this paragraph (c).
    (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 35 
U.S.C. 119(e) or Sec. 1.78(a)(4) 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
    (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

[[Page 47]]

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 correction of inventorship 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;
    (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.''
    (10) See Sec. 1.103(b) for requesting a limited suspension of action 
in an application filed under this paragraph.
    (e) Failure to meet filing date requirements. (1) If an application 
deposited under paragraph (b), (c), or (d) of this section does not meet 
the requirements of such paragraph to be entitled to a filing date, 
applicant will be so notified, if a correspondence address has been 
provided, and given a 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

[[Page 48]]

to this paragraph accompanied by the fee set forth in Sec. 1.17(h). 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 or reissue) application. (1) If an 
application which has been accorded a filing date pursuant to paragraph 
(b) or (d) of this section does not include the basic filing fee, or if 
an application which has been accorded a filing date pursuant to 
paragraph (b) of this section does not include an oath or declaration by 
the applicant pursuant to Secs. 1.63, 1.162 or Sec. 1.175, and applicant 
has provided a correspondence address (Sec. 1.33(a)), applicant will be 
notified and given a period of time within which to pay the filing fee, 
file an oath or declaration in an application under paragraph (b) of 
this section, and pay the surcharge required by Sec. 1.16(e) to avoid 
abandonment.
    (2) If an application which has been accorded a filing date pursuant 
to paragraph (b) of this section does not include the basic filing fee 
or an oath or declaration by the applicant pursuant to Secs. 1.63, 1.162 
or Sec. 1.175, and applicant has not provided a correspondence address 
(Sec. 1.33(a)), applicant has two months from the filing date of the 
application within which to pay the basic filing fee, file an oath or 
declaration, and pay the surcharge required by Sec. 1.16(e) to avoid 
abandonment.
    (3) This paragraph applies to continuation or divisional 
applications under paragraphs (b) or (d) of this section and to 
continuation-in-part applications under paragraph (b) of this section.
    (4) 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 under paragraph (b) of this section.
    (5) If applicant does not pay one of the basic filing or the 
processing and retention fees (Sec. 1.21(l)) during the pendency of the 
application, the Office may dispose of the application.
    (g) Completion of application subsequent to filing--provisional 
application. (1) If a provisional application which has been accorded a 
filing date pursuant to paragraph (c) of this section does not include 
the cover sheet required by Sec. 1.51(c)(1) or the basic filing fee 
(Sec. 1.16(k)), and applicant has provided a correspondence address 
(Sec. 1.33(a)), applicant will be notified and given a period of time 
within which to pay the basic filing fee, file a cover sheet 
(Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l) to 
avoid abandonment.
    (2) If a provisional application which has been accorded a filing 
date pursuant to paragraph (c) of this section does not include the 
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee 
(Sec. 1.16(k)), and applicant has not provided a correspondence address 
(Sec. 1.33(a)), applicant has two months from the filing date of the 
application within which to pay the basic filing fee, file a cover sheet 
(Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l) to 
avoid abandonment.
    (3) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
    (h) Subsequent treatment of application--Nonprovisional (including 
continued prosecution) application. An application for a patent filed 
under paragraphs (b) or (d) of this section will not be placed on the 
files for examination until all its required parts, complying with the 
rules relating thereto, are received, except that 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

[[Page 49]]

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; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, Sept. 
8, 2000; 65 FR 78960, Dec. 18, 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 (f), 
172, and 365(a) and (b).
    (1)(i) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority must be presented during the pendency of the 
application, and within the later of four months from the actual filing 
date of the application or sixteen months from the filing date of the 
prior foreign application. This time period is not extendable. The claim 
must identify the foreign application for which priority is claimed, as 
well as any foreign application for the same subject matter and having a 
filing date before that of the application for which priority is 
claimed, by specifying the application number, country (or intellectual 
property authority), day, month, and year of its filing. The time period 
in this paragraph does not apply to an application for a design patent.
    (ii) In an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371, the claim 
for priority must be made during the pendency of the application and 
within the time limit set forth in the PCT and the Regulations under the 
PCT.
    (2) The claim for priority and the certified copy of the foreign 
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any 
event, be filed 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 the processing fee set 
forth in Sec. 1.17(i), but the patent will not include the priority 
claim unless corrected by a certificate of correction under 35 U.S.C. 
255 and Sec. 1.323.
    (3) When the application becomes involved in an interference 
(Sec. 1.630), when necessary to overcome the date of a reference relied 
upon by the examiner, or when deemed necessary by the examiner, the 
Office may require that the claim for priority and the certified copy of 
the foreign application be filed earlier than provided in paragraphs 
(a)(1) or (a)(2) of this section.
    (4) An English language translation of a non-English language 
foreign application is not required except when the application is 
involved in an interference (Sec. 1.630), when necessary to overcome the 
date of a reference relied upon by the examiner, or when specifically 
required by the examiner. If an English language translation is 
required, it 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,

[[Page 50]]

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.
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a) through 
(d) and (f), or 365(a) not presented within the time period provided by 
paragraph (a) of this section is considered to have been waived. If a 
claim for priority under 35 U.S.C. 119(a) through (d) and (f), or 365(a) 
is presented after the time period provided by paragraph (a) of this 
section, the claim may be accepted if the claim identifying the prior 
foreign application by specifying its application number, country (or 
intellectual property authority), and the day, month, and year of its 
filing was unintentionally delayed. A petition to accept a delayed claim 
for priority under 35 U.S.C. 119(a) through (d) and (f), or 365(a) must 
be accompanied by:
    (1) The surcharge set forth in Sec. 1.17(t); and
    (2) A statement that the entire delay between the date the claim was 
due under paragraph (a)(1) of this section and the date the claim was 
filed was unintentional. The Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.

[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997; 
65 FR 54666, Sept. 8, 2000; 65 FR 57053, Sept. 20, 2000; 65 FR 66502, 
Nov. 6, 2000]



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

[[Page 51]]

    (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.
    (e) In any continuation-in-part application, the duty under this 
section includes the duty to disclose to the Office all information 
known to the person to be material to patentability, as defined in 
paragraph (b) of this section, which became available between the filing 
date of the prior application and the national or PCT international 
filing date of the continuation-in-part application.

[57 FR 2034, Jan. 17, 1992, as amended at 65 FR 54666, Sept. 8, 2000]



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 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) Tables that are submitted in electronic form (Secs. 1.96(c) and 
1.821(c)) must maintain the spatial relationships (e.g., columns and 
rows) of the table elements and preserve the information they convey. 
Chemical and mathematical formulae must be encoded to maintain the 
proper positioning of their characters when displayed in order to 
preserve their intended meaning.
    (c) Chemical and mathematical formulae and tables must be presented 
in compliance with 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; 65 
FR 54667, Sept. 8, 2000]



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) An applicant may request that the Office expunge and return 
information, other than what is excluded by

[[Page 52]]

paragraph (a)(2) of this section, by filing a petition under this 
paragraph. Any petition to expunge and return information from an 
application must include the fee set forth in Sec. 1.17(h) and 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, as amended at 65 FR 54667, Sept. 8, 2000]



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 
a nonprovisional application must:
    (1) Be executed, i.e., signed, in accordance with either Sec. 1.66 
or Sec. 1.68. There is no minimum age for a person to be qualified to 
sign, but the person must be competent to sign, i.e., understand the 
document that the person is signing;
    (2) 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;
    (3) Identify the country of citizenship of each inventor; and
    (4) State 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) In addition to meeting the requirements of paragraph (a) of this 
section, the oath or declaration must also:
    (1) Identify the application to which it is directed;
    (2) State that the person making the oath or declaration has 
reviewed and understands the contents of the application, including the 
claims, as amended by any amendment specifically referred to in the oath 
or declaration; and
    (3) 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.
    (c) Unless such information is supplied on an application data sheet 
in accordance with Sec. 1.76, the oath or declaration must also 
identify:
    (1) The mailing address, and the residence if an inventor lives at a 
location which is different from where the inventor customarily receives 
mail, of each inventor; and
    (2) Any foreign application for patent (or inventor's certificate) 
for which a claim for priority is made pursuant to Sec. 1.55, and any 
foreign application having a filing date before that of the application 
on which priority is claimed, by specifying the 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

[[Page 53]]

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.

(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; 65 FR 54667, Sept. 8, 2000]



Sec. 1.64  Person making oath or declaration.

    (a) The oath or declaration (Sec. 1.63), including any supplemental 
oath or declaration (Sec. 1.67), must be made by all of the actual 
inventors except as provided for in Secs. 1.42, 1.43, 1.47, or 
Sec. 1.67.
    (b) If the person making the oath or declaration or any supplemental 
oath or declaration is not the inventor (Secs. 1.42, 1.43, 1.47, or 
Sec. 1.67), the oath or declaration shall state the relationship of the 
person to the inventor, and, upon information and belief, the facts 
which the inventor is required to state. If the person signing the oath 
or declaration is the legal representative of a deceased inventor, the 
oath or declaration shall also state that the person is a legal 
representative and the citizenship, residence, and mailing address of 
the legal representative.

[65 FR 54667, Sept. 8, 2000]



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

[[Page 54]]

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) The Office may require, or inventors and applicants may submit, 
a supplemental oath or declaration meeting the requirements of Sec. 1.63 
or Sec. 1.162 to correct any deficiencies or inaccuracies present in the 
earlier filed oath or declaration.
    (1) Deficiencies or inaccuracies relating to all the inventors or 
applicants (Secs. 1.42, 1.43, or Sec. 1.47) may be corrected with a 
supplemental oath or declaration signed by all the inventors or 
applicants.
    (2) Deficiencies or inaccuracies relating to fewer than all of the 
inventor(s) or applicant(s) (Secs. 1.42, 1.43 or Sec. 1.47) may be 
corrected with a supplemental oath or declaration identifying the entire 
inventive entity but signed only by the inventor(s) or applicant(s) to 
whom the error or deficiency relates.
    (3) Deficiencies or inaccuracies due to the failure to meet the 
requirements of Sec. 1.63(c) (e.g., to correct the omission of a mailing 
address of an inventor) in an oath or declaration may be corrected with 
an application data sheet in accordance with Sec. 1.76.
    (4) Submission of a supplemental oath or declaration or an 
application data sheet (Sec. 1.76), as opposed to who must sign the 
supplemental oath or declaration or an application data sheet, is 
governed by Sec. 1.33(a)(2) and paragraph (b) of this section.
    (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) [Reserved]

(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; 65 FR 54667, Sept. 
8, 2000]



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. 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

[[Page 55]]

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 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 may not exceed 500 characters in 
length and must be as short and specific as possible. Characters that 
cannot be captured and recorded in the Office's automated information 
systems may not be reflected in the Office's records in such systems or 
in documents created by the Office. Unless the title is supplied in an 
application data sheet (Sec. 1.76), the title of the invention should 
appear as a heading on the first page of the specification.

[[Page 56]]

    (b) A brief abstract of the technical disclosure in the 
specification must commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract'' or ``Abstract of the 
Disclosure.'' The abstract in an application filed under 35 U.S.C. 111 
may not exceed 150 words in length. The purpose of the abstract is to 
enable the United States 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 will not be used for 
interpreting the scope of the claims.

[65 FR 54667, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000]



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 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.

[[Page 57]]

    (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. 1.76  Application data sheet.

    (a) Application data sheet. An application data sheet is a sheet or 
sheets, that may be voluntarily submitted in either provisional or 
nonprovisional applications, which contains bibliographic data, arranged 
in a format specified by the Office. If an application data sheet is 
provided, the application data sheet is part of the provisional or 
nonprovisional application for which it has been submitted.
    (b) Bibliographic data. Bibliographic data as used in paragraph (a) 
of this section includes:
    (1) Applicant information. This information includes the name, 
residence, mailing address, and citizenship of each applicant 
(Sec. 1.41(b)). The name of each applicant must include the family name, 
and at least one given name without abbreviation together with any other 
given name or initial. If the applicant is not an inventor, this 
information also includes the applicant's authority (Secs. 1.42, 1.43, 
and 1.47) to apply for the patent on behalf of the inventor.
    (2) Correspondence information. This information includes the 
correspondence address, which may be indicated by reference to a 
customer number, to which correspondence is to be directed (see 
Sec. 1.33(a)).
    (3) Application information. This information includes the title of 
the invention, a suggested classification, by class and subclass, the 
Technology Center to which the subject matter of the invention is 
assigned, the total number of drawing sheets, a suggested drawing figure 
for publication (in a nonprovisional application), any docket number 
assigned to the application, the type of application (e.g., utility, 
plant, design, reissue, provisional), whether the application discloses 
any significant part of the subject matter of an application under a 
secrecy order pursuant to Sec. 5.2 of this chapter (see Sec. 5.2(c)), 
and, for plant applications, the Latin name of the genus and species of 
the plant claimed, as well as the variety denomination. The suggested 
classification and Technology Center information should be supplied for 
provisional applications whether or not claims are present. If claims 
are not present in a provisional application, the suggested 
classification and Technology Center should be based upon the 
disclosure.
    (4) Representative information. This information includes the 
registration number of each practitioner having a power of attorney or 
authorization of agent in the application (preferably by reference to a 
customer number). Providing this information in the application data 
sheet does not constitute a power of attorney or authorization of agent 
in the application (see Sec. 1.34(b)).
    (5) Domestic priority information. This information includes the 
application number, the filing date, the status (including patent number 
if available), and relationship of each application for which a benefit 
is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this 
information in the application data sheet constitutes the specific 
reference required by 35 U.S.C. 119(e) or 120, and Sec. 1.78(a)(2) or 
Sec. 1.78(a)(4), and need not otherwise be made part of the 
specification.
    (6) Foreign priority information. This information includes the 
application number, country, and filing date of each foreign application 
for which priority is claimed, as well as any foreign application having 
a filing date before that of the application for which priority is 
claimed. Providing this information in the application data sheet 
constitutes the claim for priority as required by 35 U.S.C. 119(b) and 
Sec. 1.55(a).
    (7) Assignee information. This information includes the name (either 
person or juristic entity) and address of the assignee of the entire 
right, title, and interest in an application. Providing this information 
in the application data sheet does not substitute for compliance with 
any requirement of part 3 of this chapter to have an assignment recorded 
by the Office.

[[Page 58]]

    (c) Supplemental application data sheets. Supplemental application 
data sheets:
    (1) May be subsequently supplied prior to payment of the issue fee 
either to correct or update information in a previously submitted 
application data sheet, or an oath or declaration under Sec. 1.63 or 
Sec. 1.67, except that inventorship changes are governed by Sec. 1.48, 
correspondence changes are governed by Sec. 1.33(a), and citizenship 
changes are governed by Sec. 1.63 or Sec. 1.67; and
    (2) Should identify the information that is being changed (added, 
deleted, or modified) and therefore need not contain all the previously 
submitted information that has not changed.
    (d) Inconsistencies between application data sheet and oath or 
declaration. For inconsistencies between information that is supplied by 
both an application data sheet under this section and by an oath or 
declaration under Secs. 1.63 and 1.67:
    (1) The latest submitted information will govern notwithstanding 
whether supplied by an application data sheet, or by a Sec. 1.63 or 
Sec. 1.67 oath or declaration, except as provided by paragraph (d)(3) of 
this section;
    (2) The information in the application data sheet will govern when 
the inconsistent information is supplied at the same time by a Sec. 1.63 
or Sec. 1.67 oath or declaration, except as provided by paragraph (d)(3) 
of this section;
    (3) The oath or declaration under Sec. 1.63 or Sec. 1.67 governs 
inconsistencies with the application data sheet in the naming of 
inventors (Sec. 1.41(a)(1)) and setting forth their citizenship (35 
U.S.C. 115);
    (4) The Office will initially capture bibliographic information from 
the application data sheet (notwithstanding whether an oath or 
declaration governs the information). Thus, the Office shall generally 
not look to an oath or declaration under Sec. 1.63 to see if the 
bibliographic information contained therein is consistent with the 
bibliographic information captured from an application data sheet 
(whether the oath or declaration is submitted prior to or subsequent to 
the application data sheet). Captured bibliographic information derived 
from an application data sheet containing errors may be recaptured by a 
request therefor and the submission of a supplemental application data 
sheet, an oath or declaration under Sec. 1.63 or Sec. 1.67, or a letter 
pursuant to Sec. 1.33(b).

[65 FR 54668, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000]



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) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings.
    (6) Executed oath or declaration.
    (b) The specification should include the following sections in 
order:
    (1) Title of the invention, which may be accompanied by an 
introductory portion stating the name, citizenship, and residence of the 
applicant (unless included in the application data sheet).
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Reference to a ``Sequence Listing,'' a table, or a computer 
program listing appendix submitted on a compact disc and an 
incorporation-by-reference of the material on the compact disc (see 
Sec. 1.52(e)(5)). The total number of compact discs including duplicates 
and the files on each compact disc shall be specified.
    (5) Background of the invention.
    (6) Brief summary of the invention.
    (7) Brief description of the several views of the drawing.
    (8) Detailed description of the invention.
    (9) A claim or claims.
    (10) Abstract of the disclosure.
    (11) ``Sequence Listing,'' if on paper (see Secs. 1.821 through 
1.825).
    (c) The text of the specification sections defined in paragraphs 
(b)(1) through (b)(11) of this section, if applicable, should be 
preceded by a section heading in uppercase and without underlining or 
bold type.

[65 FR 54668, Sept. 8, 2000]

[[Page 59]]



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 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 international filing date and 
indicating the relationship of the applications. This reference must be 
submitted during the pendency of the application, and within the later 
of four months from the actual filing date of the application or sixteen 
months from the filing date of the prior application. This time period 
is not extendable. Unless the reference required by this paragraph is 
included in an application data sheet (Sec. 1.76), the specification 
must contain or be amended to contain such reference in the first 
sentence following the title. If the application claims the benefit of 
an international application, the first sentence of the specification 
must include an indication of whether the international application was 
published under PCT Article 21(2) in English (regardless of whether 
benefit for such application is claimed in the application data sheet). 
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). Except as provided in paragraph (a)(3) of this section, the 
failure to timely submit the reference required by 35 U.S.C. 120 and 
this paragraph is considered a waiver of any benefit under 35 U.S.C. 
120, 121, or 365(c) to such prior application. The time period set forth 
in this paragraph does not apply to an application for a design patent.
    (3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) 
of this section is presented in a nonprovisional application after the 
time period provided by paragraph (a)(2) of this section, the claim 
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed 
copending nonprovisional application or international application 
designating the United States of America may be accepted if the 
reference identifying the prior application by application number or 
international application number and international filing date was 
unintentionally delayed. A petition to accept an unintentionally delayed 
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior 
filed application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2) of this section and the date the claim 
was filed was

[[Page 60]]

unintentional. The Commissioner may require additional information where 
there is a question whether the delay was unintentional.
    (4) 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), and the basic filing fee set forth in Sec. 1.16(k) must be 
paid within the time period set forth in Sec. 1.53(g).
    (5) Any nonprovisional application claiming the benefit of one or 
more prior filed copending provisional applications must contain 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), and, if the 
provisional application is filed in a language other than English, an 
English language translation of the non-English language provisional 
application and a statement that the translation is accurate. This 
reference and English language translation of a non-English language 
provisional application must be submitted during the pendency of the 
nonprovisional application, and within the later of four months from the 
actual filing date of the nonprovisional application or sixteen months 
from the filing date of the prior provisional application. This time 
period is not extendable. Unless the reference required by this 
paragraph is included in an application data sheet (Sec. 1.76), the 
specification must contain or be amended to contain such reference in 
the first sentence following the title. Except as provided in paragraph 
(a)(6) of this section, the failure to timely submit the reference and 
English language translation of a non-English language provisional 
application required by 35 U.S.C. 119(e) and this paragraph is 
considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior 
provisional application.
    (6) If the reference or English language translation of a non-
English language provisional application required by 35 U.S.C. 119(e) 
and paragraph (a)(5) of this section is presented in a nonprovisional 
application after the time period provided by paragraph (a)(5) of this 
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior 
filed provisional application may be accepted during the pendency of the 
nonprovisional application if the reference identifying the prior 
application by provisional application number and any English language 
translation of a non-English language provisional application were 
unintentionally delayed. A petition to accept an unintentionally delayed 
claim under 35 U.S.C. 119(e) for the benefit of a prior filed 
provisional application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(5) of this section and the date the claim 
was filed was unintentional. The Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.
    (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) If 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 Office may require the assignee to 
state whether the claimed inventions were commonly owned or subject to 
an obligation of assignment to the same

[[Page 61]]

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; 65 FR 54669, Sept. 8, 2000; 65 FR 57054, Sept. 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 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 and design patent applications.
    (1) Black ink. Black and white drawings are normally required. India 
ink, or its equivalent that secures solid black lines, must be used for 
drawings; or
    (2) Color. On rare occasions, color drawings may be necessary as the 
only

[[Page 62]]

practical medium by which to disclose the subject matter sought to be 
patented in a utility or design patent application or the subject matter 
of a statutory invention registration. The color drawings must be of 
sufficient quality such that all details in the drawings are 
reproducible in black and white in the printed patent. Color drawings 
are not permitted in international applications (see PCT Rule 11.13), or 
in an application, or copy thereof, submitted under the Office 
electronic filing system. The Office will accept color drawings in 
utility or design 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(h);
    (ii) Three (3) sets of color drawings;
    (iii) A black and white photocopy that accurately depicts, to the 
extent possible, the subject matter shown in the color drawing; and
    (iv) An amendment to the specification to insert (unless the 
specification contains or has been previously amended to contain) the 
following language as the first paragraph of the brief description of 
the drawings:

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

    (b) Photographs.--(1) Black and white. Photographs, including 
photocopies of photographs, are not ordinarily permitted in utility and 
design patent applications. The Office will accept photographs in 
utility and design patent applications, however, if photographs are the 
only practicable medium for illustrating the claimed invention. For 
example, photographs or photomicrographs of: electrophoresis gels, blots 
(e.g., immunological, western, Southern, and northern), autoradiographs, 
cell cultures (stained and unstained), histological tissue cross 
sections (stained and unstained), animals, plants, in vivo imaging, thin 
layer chromatography plates, crystalline structures, and, in a design 
patent application, ornamental effects, are acceptable. If the subject 
matter of the application admits of illustration by a drawing, the 
examiner may require a drawing in place of the photograph. The 
photographs must be of sufficient quality so that all details in the 
photographs are reproducible in the printed patent.
    (2) Color photographs. Color photographs will be accepted in utility 
and design patent applications if the conditions for accepting color 
drawings and black and white photographs have been satisfied. See 
paragraphs (a)(2) and (b)(1) of this section.
    (c) Identification of drawings. Identifying indicia, if provided, 
should include the title of the invention, inventor's name, and 
application number, or docket number (if any) if an application number 
has not been assigned to the application. If this information is 
provided, it must be placed on the front of each sheet and centered 
within the top margin.
    (d) Graphic forms in drawings. Chemical or mathematical formulae, 
tables, and waveforms may be submitted as drawings, and are subject to 
the same requirements as drawings. Each chemical or mathematical formula 
must be labeled as a separate figure, using brackets when necessary, to 
show that information is properly integrated. Each group of waveforms 
must be presented as a single figure, using a common vertical axis with 
time extending along the horizontal axis. Each individual waveform 
discussed in the specification must be identified with a separate letter 
designation adjacent to the vertical axis.
    (e) Type of paper. Drawings submitted to the Office must be made on 
paper which is flexible, strong, white, smooth, non-shiny, and durable. 
All sheets must be reasonably free from cracks, creases, and folds. Only 
one side of the sheet may be used for the drawing. Each sheet must be 
reasonably free from erasures and must be free from alterations, 
overwritings, and interlineations. Photographs must be developed on 
paper meeting the sheet-size requirements of paragraph (f) of this 
section and the margin requirements of paragraph (g) of this section. 
See paragraph (b) of this section for other requirements for 
photographs.

[[Page 63]]

    (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 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

[[Page 64]]

same manner and should accurately and graphically indicate the nature of 
the material(s) that is illustrated in cross section. The hatching of 
juxtaposed different elements must be angled in a different way. In the 
case of large areas, hatching may be confined to an edging drawn around 
the entire inside of the outline of the area to be hatched. Different 
types of hatching should have different conventional meanings as regards 
the nature of a material seen in cross section.
    (4) Alternate position. A moved position may be shown by a broken 
line superimposed upon a suitable view if this can be done without 
crowding; otherwise, a separate view must be used for this purpose.
    (5) Modified forms. Modified forms of construction must be shown in 
separate views.
    (i) Arrangement of views. One view must not be placed upon another 
or within the outline of another. All views on the same sheet should 
stand in the same direction and, if possible, stand so that they can be 
read with the sheet held in an upright position. If views wider than the 
width of the sheet are necessary for the clearest illustration of the 
invention, the sheet may be turned on its side so that the top of the 
sheet, with the appropriate top margin to be used as the heading space, 
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top 
becomes the right side, except for graphs utilizing standard scientific 
convention to denote the axis of abscissas (of X) and the axis of 
ordinates (of Y).
    (j) Front page view. The drawing must contain as many views as 
necessary to show the invention. One of the views should be suitable for 
inclusion on the front page of the patent application publication and 
patent as the illustration of the invention. Views must not be connected 
by projection lines and must not contain center lines. Applicant may 
suggest a single view (by figure number) for inclusion on the front page 
of the patent application publication and patent.
    (k) Scale. The scale to which a drawing is made must be large enough 
to show the mechanism without crowding when the drawing is reduced in 
size to two-thirds in reproduction. Indications such as ``actual size'' 
or ``scale \1/2\'' on the drawings are not permitted since these lose 
their meaning with reproduction in a different format.
    (l) Character of lines, numbers, and letters. All drawings must be 
made by a process which will give them satisfactory reproduction 
characteristics. Every line, number, and letter must be durable, clean, 
black (except for color drawings), sufficiently dense and dark, and 
uniformly thick and well-defined. The weight of all lines and letters 
must be heavy enough to permit adequate reproduction. This requirement 
applies to all lines however fine, to shading, and to lines representing 
cut surfaces in sectional views. Lines and strokes of different 
thicknesses may be used in the same drawing where different thicknesses 
have a different meaning.
    (m) Shading. The use of shading in views is encouraged if it aids in 
understanding the invention and if it does not reduce legibility. 
Shading is used to indicate the surface or shape of spherical, 
cylindrical, and conical elements of an object. Flat parts may also be 
lightly shaded. Such shading is preferred in the case of parts shown in 
perspective, but not for cross sections. See paragraph (h)(3) of this 
section. Spaced lines for shading are preferred. These lines must be 
thin, as few in number as practicable, and they must contrast with the 
rest of the drawings. As a substitute for shading, heavy lines on the 
shade side of objects can be used except where they superimpose on each 
other or obscure reference characters. Light should come from the upper 
left corner at an angle of 45 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

[[Page 65]]

symbols which are not universally recognized may be used, subject to 
approval by the Office, if they are not likely to be confused with 
existing conventional symbols, and if they are readily identifiable.
    (o) Legends. Suitable descriptive legends may be used subject to 
approval by the Office, or may be required by the examiner where 
necessary for understanding of the drawing. They should contain as few 
words as possible.
    (p) Numbers, letters, and reference characters. (1) Reference 
characters (numerals are preferred), sheet numbers, and view numbers 
must be plain and legible, and must not be used in association with 
brackets or inverted commas, or enclosed within outlines, e.g., 
encircled. They must be oriented in the same direction as the view so as 
to avoid having to rotate the sheet. Reference characters should be 
arranged to follow the profile of the object depicted.
    (2) The English alphabet must be used for letters, except where 
another alphabet is customarily used, such as the Greek alphabet to 
indicate angles, wavelengths, and mathematical formulas.
    (3) Numbers, letters, and reference characters must measure at least 
.32 cm. (\1/8\ inch) in height. They should not be placed in the drawing 
so as to interfere with its comprehension. Therefore, they should not 
cross or mingle with the lines. They should not be placed upon hatched 
or shaded surfaces. When necessary, such as indicating a surface or 
cross section, a reference character may be underlined and a blank space 
may be left in the hatching or shading where the character occurs so 
that it appears distinct.
    (4) The same part of an invention appearing in more than one view of 
the drawing must always be designated by the same reference character, 
and the same reference character must never be used to designate 
different parts.
    (5) Reference characters not mentioned in the description shall not 
appear in the drawings. Reference characters mentioned in the 
description must appear in the drawings.
    (q) Lead lines. Lead lines are those lines between the reference 
characters and the details referred to. Such lines may be straight or 
curved and should be as short as possible. They must originate in the 
immediate proximity of the reference character and extend to the feature 
indicated. Lead lines must not cross each other. Lead lines are required 
for each reference character except for those which indicate the surface 
or cross section on which they are placed. Such a reference character 
must be underlined to make it clear that a lead line has not been left 
out by mistake. Lead lines must be executed in the same way as lines in 
the drawing. See paragraph (l) of this section.
    (r) Arrows. Arrows may be used at the ends of the lines, provided 
that their meaning is clear, as follows:
    (1) On a lead line, a freestanding arrow to indicate the entire 
section towards which it points;
    (2) On a lead line, an arrow touching a line to indicate the surface 
shown by the line looking along the direction of the arrow; or
    (3) To show the direction of movement.
    (s) Copyright or Mask Work Notice. A copyright or mask work notice 
may appear in the drawing, but must be placed within the sight of the 
drawing immediately below the figure representing the copyright or mask 
work material and be limited to letters having a print size of .32 cm. 
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be 
limited to only those elements provided for by law. For example, 
``1983 John Doe'' (17 U.S.C. 401) and ``*M* John 
Doe'' (17 U.S.C. 909) would be properly limited and, under current 
statutes, legally sufficient notices of copyright and mask work, 
respectively. Inclusion of a copyright or mask work notice will be 
permitted only if the authorization language set forth in 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

[[Page 66]]

sheet, but not in the margin. The numbers can be placed on the right-
hand side if the drawing extends too close to the middle of the top edge 
of the usable surface. The drawing sheet numbering must be clear and 
larger than the numbers used as reference characters to avoid confusion. 
The number of each sheet should be shown by two Arabic numerals placed 
on either side of an oblique line, with the first being the sheet 
number, and the second being the total number of sheets of drawings, 
with no other marking.
    (u) Numbering of views. (1) The different views must be numbered in 
consecutive Arabic numerals, starting with 1, independent of the 
numbering of the sheets and, if possible, in the order in which they 
appear on the drawing sheet(s). Partial views intended to form one 
complete view, on one or several sheets, must be identified by the same 
number followed by a capital letter. View numbers must be preceded by 
the abbreviation ``FIG.'' Where only a single view is used in an 
application to illustrate the claimed invention, it must not be numbered 
and the abbreviation ``FIG.'' must not appear.
    (2) Numbers and letters identifying the views must be simple and 
clear and must not be used in association with brackets, circles, or 
inverted commas. The view numbers must be larger than the numbers used 
for reference characters.
    (v) Security markings. Authorized security markings may be placed on 
the drawings provided they are outside the sight, preferably centered in 
the top margin.
    (w) Corrections. Any corrections on drawings submitted to the Office 
must be durable and permanent.
    (x) Holes. No holes should be made by applicant in the drawing 
sheets.
    (y) Types of drawings. See 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; 65 FR 
54669, Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000]



Sec. 1.85  Corrections to drawings.

    (a) A utility or plant application will not be placed on the files 
for examination until objections to the drawings have been corrected. 
Except as provided in Sec. 1.215(c), any patent application publication 
will not include drawings filed after the application has been placed on 
the files for examination. Unless applicant is otherwise notified in an 
Office action, objections to the drawings in a utility or plant 
application will not be held in abeyance, and a request to hold 
objections to the drawings in abeyance will not be considered a bona 
fide attempt to advance the application to final action (Sec. 1.135(c)). 
If a drawing in a design application meets the requirements of 
Sec. 1.84(e), (f), and (g) and is suitable for reproduction, but is not 
otherwise in compliance with Sec. 1.84, the drawing may be admitted for 
examination.
    (b) The Office will not release drawings for purposes of correction. 
If corrections are necessary, new corrected drawings must be submitted 
within the time set by the Office.
    (c) If a corrected drawing is required or if a drawing does not 
comply with Sec. 1.84 at the time an application is allowed, the Office 
may notify the applicant and set a three month period of time from the 
mail date of the notice of allowability within which the applicant must 
file a corrected or formal drawing in compliance with Sec. 1.84 to avoid 
abandonment. This time period is not extendable under Sec. 1.136(a) or 
Sec. 1.136(b).

[65 FR 54670, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000]



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 fee set forth in Sec. 1.17(h); and

[[Page 67]]

    (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, as amended at 65 FR 54670, Sept. 8, 2000]



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 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 in 300 lines or fewer, with each line of 72 
characters or fewer, it may be submitted either as drawings or as part 
of the specification.
    (1) Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for drawings 
as provided in 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.
    (ii) Any listing having more than 60 lines of code that is submitted 
as part of the specification must be positioned at the end of the 
description but before the claims. Any amendment must be made by way of 
submission of a substitute sheet.
    (c) As an appendix which will not be printed: Any computer program 
listing may, and any computer program listing having over 300 lines (up 
to 72 characters per line) must, be submitted on a compact disc in 
compliance with Sec. 1.52(e). A compact disc containing such a computer 
program listing is to be referred to as a ``computer program listing 
appendix.'' The ``computer program listing appendix'' will not be part 
of the printed patent. The specification must include a reference to the 
``computer program listing appendix'' at the location indicated in 
Sec. 1.77(b)(4).
    (1) Multiple computer program listings for a single application may 
be placed on a single compact disc. Multiple compact discs may be 
submitted for a single application if necessary. A separate compact disc 
is required for each application containing a computer program listing 
that must be

[[Page 68]]

submitted on a ``computer program listing appendix.''
    (2) The ``computer program listing appendix'' must be submitted on a 
compact disc that complies with Sec. 1.52(e) and the following 
specifications (no other format shall be allowed):
    (i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple 
Macintosh;
    (ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or 
Macintosh;
    (iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
    (iv) Control Codes: the data must not be dependent on control 
characters or codes which are not defined in the ASCII character set; 
and
    (v) Compression: uncompressed data.

[61 FR 42804, Aug. 19, 1996, as amended at 65 FR 54670, Sept. 8, 2000]

                    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, the information disclosure statement must satisfy one of 
paragraphs (b), (c), or (d) of this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant within any one of the following time 
periods:
    (1) Within three months of the filing date of a national application 
other than a continued prosecution application under Sec. 1.53(d);
    (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 after the period specified in paragraph (b) of this 
section, provided that the information disclosure statement is filed 
before the mailing date of any of a final action under Sec. 1.113, a 
notice of allowance under Sec. 1.311, or an action that otherwise closes 
prosecution in the application, and it is accompanied by one of:
    (1) The statement specified in paragraph (e) of this section; or
    (2) The fee set forth in 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) The statement specified in paragraph (e) of this section; and
    (2) The fee set forth in Sec. 1.17(p).
    (e) A statement under this section must state either:
    (1) That each item of information contained in the information 
disclosure statement was first cited in any communication from a foreign 
patent office in a counterpart foreign application not more than three 
months prior to the filing of the information disclosure statement; or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of 
the person signing the certification after making reasonable inquiry, no 
item of information contained in the information disclosure statement 
was known to any individual designated in 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

[[Page 69]]

is considered to be, material to patentability as defined in 
Sec. 1.56(b).
    (i) If an information disclosure statement does not comply with 
either this section or Sec. 1.98, it will be placed in the file but will 
not be considered by the Office.

[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 
FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct. 
10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR 54670, Sept. 8, 2000]



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, applications, or other 
information submitted for consideration by the Office;
    (2) A legible copy of:
    (i) Each U.S. patent application publication and U.S. and foreign 
patent;
    (ii) Each publication or that portion which caused it to be listed;
    (iii) For each cited pending U.S. application, the application 
specification including the claims, and any drawing of the application, 
or that portion of the application which caused it to be listed 
including any claims directed to that portion; and
    (iv) All other information or that portion which caused it to be 
listed; and
    (3)(i) 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 
applicant's specification or incorporated therein.
    (ii) A copy of the translation if a written English-language 
translation of a non-English-language document, or portion thereof, is 
within the possession, custody, or control of, or is readily available 
to any individual designated in Sec. 1.56(c).
    (b)(1) Each U.S. patent listed in an information disclosure 
statement must be identified by inventor, patent number, and issue date.
    (2) Each U.S. patent application publication listed in an 
information disclosure statement shall be identified by applicant, 
patent application publication number, and publication date.
    (3) Each U.S. application listed in an information disclosure 
statement must be identified by the inventor, application number, and 
filing date.
    (4) Each foreign patent or published foreign patent application 
listed in an information disclosure statement must be identified by the 
country or patent office which issued the patent or published the 
application, an appropriate document number, and the publication date 
indicated on the patent or published application.
    (5) Each publication listed in an information disclosure statement 
must be identified by publisher, author (if any), title, relevant pages 
of the publication, date, and place of publication.
    (c) When the disclosures of two or more patents or publications 
listed in an information disclosure statement are substantively 
cumulative, a copy of one of the patents or publications may be 
submitted without copies of the other patents or publications, provided 
that it is stated that these other patents or publications are 
cumulative.
    (d) A copy of any patent, publication, pending U.S. application or 
other information, as specified in paragraph (a) of this section, listed 
in an information disclosure statement is required to be provided, even 
if the patent, publication, pending U.S. application or other 
information was previously submitted to, or cited by, the Office in an 
earlier application, unless:
    (1) The earlier application is properly identified in the 
information disclosure statement and is relied on for an earlier 
effective filing date under 35 U.S.C. 120; and
    (2) The information disclosure statement submitted in the earlier 
application complies with paragraphs (a) through (c) of this section.

[65 FR 54671, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000]



Sec. 1.99  Third-party submission in published application.

    (a) A submission by a member of the public of patents or 
publications relevant to a pending published application may be entered 
in the application file if the submission complies with the requirements 
of this section and the

[[Page 70]]

application is still pending when the submission and application file 
are brought before the examiner.
    (b) A submission under this section must identify the application to 
which it is directed by application number and include:
    (1) The fee set forth in Sec. 1.17(p);
    (2) A list of the patents or publications submitted for 
consideration by the Office, including the date of publication of each 
patent or publication;
    (3) A copy of each listed patent or publication in written form or 
at least the pertinent portions; and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent or publication in 
written form relied upon.
    (c) The submission under this section must be served upon the 
applicant in accordance with Sec. 1.248.
    (d) A submission under this section shall not include any 
explanation of the patents or publications, or any other information. 
The Office will dispose of such explanation or information if included 
in a submission under this section. A submission under this section is 
also limited to ten total patents or publications.
    (e) A submission under this section must be filed within two months 
from the date of publication of the application (Sec. 1.215(a)) or prior 
to the mailing of a notice of allowance (Sec. 1.311), whichever is 
earlier. Any submission under this section not filed within this period 
is permitted only when the patents or publications could not have been 
submitted to the Office earlier, and must also be accompanied by the 
processing fee set forth in Sec. 1.17(i). A submission by a member of 
the public to a pending published application that does not comply with 
the requirements of this section will be returned or discarded.
    (f) A member of the public may include a self-addressed postcard 
with a submission to receive an acknowledgment by the Office that the 
submission has been received. A member of the public filing a submission 
under this section will not receive any communications from the Office 
relating to the submission other than the return of a self-addressed 
postcard. In the absence of a request by the Office, an applicant has no 
duty to, and need not, reply to a submission under this section.

[65 FR 57056, Sept. 20, 2000; 65 FR 66502, Nov. 6, 2000]

                       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 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 fee set forth in Sec. 1.17(h).

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

[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 
54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct. 
10, 1997; 65 FR 54671, Sept. 8, 2000]



Sec. 1.103  Suspension of action by the Office.

    (a) Suspension for cause. On request of the applicant, the Office 
may grant a suspension of action by the Office under this paragraph for 
good and sufficient cause. The Office will not suspend action if a reply 
by applicant to

[[Page 71]]

an Office action is outstanding. Any petition for suspension of action 
under this paragraph must specify a period of suspension not exceeding 
six months. Any petition for suspension of action under this paragraph 
must also include:
    (1) A showing of good and sufficient cause for suspension of action; 
and
    (2) The fee set forth in Sec. 1.17(h), unless such cause is the 
fault of the Office.
    (b) Limited suspension of action in a continued prosecution 
application (CPA) filed under Sec. 1.53(d). On request of the applicant, 
the Office may grant a suspension of action by the Office under this 
paragraph in a continued prosecution application filed under 
Sec. 1.53(d) for a period not exceeding three months. Any request for 
suspension of action under this paragraph must be filed with the request 
for an application filed under Sec. 1.53(d), specify the period of 
suspension, and include the processing fee set forth in Sec. 1.17(i).
    (c) Limited suspension of action after a request for continued 
examination (RCE) under Sec. 1.114. On request of the applicant, the 
Office may grant a suspension of action by the Office under this 
paragraph after the filing of a request for continued examination in 
compliance with Sec. 1.114 for a period not exceeding three months. Any 
request for suspension of action under this paragraph must be filed with 
the request for continued examination under Sec. 1.114, specify the 
period of suspension, and include the processing fee set forth in 
Sec. 1.17(i).
    (d) Deferral of examination. On request of the applicant, the Office 
may grant a deferral of examination under the conditions specified in 
this paragraph for a period not extending beyond three years from the 
earliest filing date for which a benefit is claimed under title 35, 
United States Code. A request for deferral of examination under this 
paragraph must include the publication fee set forth in Sec. 1.18(d) and 
the processing fee set forth in Sec. 1.17(i). A request for deferral of 
examination under this paragraph will not be granted unless:
    (1) The application is an original utility or plant application 
filed under Sec. 1.53(b) or resulting from entry of an international 
application into the national stage after compliance with Sec. 1.494 or 
Sec. 1.495;
    (2) The applicant has not filed a nonpublication request under 
Sec. 1.213(a), or has filed a request under Sec. 1.213(b) to rescind a 
previously filed nonpublication request;
    (3) The application is in condition for publication as provided in 
Sec. 1.211(c); and
    (4) The Office has not issued either an Office action under 35 
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
    (e) Notice of suspension on initiative of the Office. The Office 
will notify applicant if the Office suspends action by the Office on an 
application on its own initiative.
    (f) Suspension of action for public safety or defense. The Office 
may suspend action by the Office by order of the Commissioner if the 
following conditions are met:
    (1) The application is owned by the United States;
    (2) Publication of the invention may be detrimental to the public 
safety or defense; and
    (3) The appropriate department or agency requests such suspension.
    (g) Statutory invention registration. The Office will suspend action 
by the Office for the entire pendency of an application if the Office 
has accepted a request to publish a statutory invention registration in 
the application, except for purposes relating to patent interference 
proceedings under Subpart E of this part.

[65 FR 50104, Aug. 16, 2000, as amended at 65 FR 57056, Sept. 20, 2000]



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.

[[Page 72]]

    (2) The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified of the 
examiner's action. The reasons for any adverse action or any objection 
or requirement will be stated in an Office action and such information 
or references will be given as may be useful in aiding the applicant, or 
in the case of a reexamination proceeding the patent owner, to judge the 
propriety of continuing the prosecution.
    (3) An international-type search will be made in all national 
applications filed on and after June 1, 1978.
    (4) Any national application may also have an international-type 
search report prepared thereon at the time of the national examination 
on the merits, upon specific written request therefor and payment of the 
international-type search report fee set forth in 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.
    (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 will 
be stated. If domestic patent application publications are cited by the 
examiner, their publication number, publication date, and the names of 
the applicants will be stated. If foreign published applications or 
patents are cited, their nationality or country, numbers and dates, and 
the names of the patentees will be stated, and such other data will be 
furnished as may be necessary to enable the applicant, or in the case of 
a reexamination proceeding, the patent owner, to identify the published 
applications or patents cited. In citing foreign published applications 
or patents, in case only a part of the document is

[[Page 73]]

involved, the particular pages and sheets containing the parts relied 
upon will be identified. If printed publications are cited, the author 
(if any), title, date, pages or plates, and place of publication, or 
place where a copy can be found, will be given.
    (2) When a rejection in an application is based on facts within the 
personal knowledge of an employee of the Office, the data shall be as 
specific as possible, and the reference must be supported, when called 
for by the applicant, by the affidavit of such employee, and such 
affidavit shall be subject to contradiction or explanation by the 
affidavits of the applicant and other persons.
    (e) Reasons for allowance. If the examiner believes that the record 
of the prosecution as a whole does not make clear his or her reasons for 
allowing a claim or claims, the examiner may set forth such reasoning. 
The reasons shall be incorporated into an Office action rejecting other 
claims of the application or patent under reexamination or be the 
subject of a separate communication to the applicant or patent owner. 
The applicant or patent owner may file a statement commenting on the 
reasons for allowance within such time as may be specified by the 
examiner. Failure by the examiner to respond to any statement commenting 
on reasons for allowance does not give rise to any implication.

[62 FR 53191, Oct. 10, 1997, as amended at 65 FR 14872, Mar. 20, 2000; 
65 FR 54671, Sept. 8, 2000; 65 FR 57056, Sept. 20, 2000]



Sec. 1.105  Requirements for information.

    (a)(1) In the course of examining or treating a matter in a pending 
or abandoned application filed under 35 U.S.C. 111 or 371 (including a 
reissue application), in a patent, or in a reexamination proceeding, the 
examiner or other Office employee may require the submission, from 
individuals identified under Sec. 1.56(c), or any assignee, of such 
information as may be reasonably necessary to properly examine or treat 
the matter, for example:
    (i) Commercial databases: The existence of any particularly relevant 
commercial database known to any of the inventors that could be searched 
for a particular aspect of the invention.
    (ii) Search: Whether a search of the prior art was made, and if so, 
what was searched.
    (iii) Related information: A copy of any non-patent literature, 
published application, or patent (U.S. or foreign), by any of the 
inventors, that relates to the claimed invention.
    (iv) Information used to draft application: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used to draft the application.
    (v) Information used in invention process: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used in the invention process, such as by designing around or providing 
a solution to accomplish an invention result.
    (vi) Improvements: Where the claimed invention is an improvement, 
identification of what is being improved.
    (vii) In use: Identification of any use of the claimed invention 
known to any of the inventors at the time the application was filed 
notwithstanding the date of the use.
    (2) Where an assignee has asserted its right to prosecute pursuant 
to Sec. 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), 
(iii), and (vii) of this section may also be applied to such assignee.
    (3) Any reply that states that the information required to be 
submitted is unknown and/or is not readily available to the party or 
parties from which it was requested will be accepted as a complete 
reply.
    (b) The requirement for information of paragraph (a)(1) of this 
section may be included in an Office action, or sent separately.
    (c) A reply, or a failure to reply, to a requirement for information 
under this section will be governed by Secs. 1.135 and 1.136.

[65 FR 54671, Sept. 8, 2000]



Secs. 1.106-1.109  [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

[[Page 74]]

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 to a non-final Office action.

    (a)(1) If the Office action after the first examination (Sec. 1.104) 
is adverse in any respect, the applicant or patent owner, if he or she 
persists in his or her application for a patent or reexamination 
proceeding, must reply and request reconsideration or further 
examination, with or without amendment. See Secs. 1.135 and 1.136 for 
time for reply to avoid abandonment.
    (2) A second (or subsequent) supplemental reply will be entered 
unless disapproved by the Commissioner. A second (or subsequent) 
supplemental reply may be disapproved if the second (or subsequent) 
supplemental reply unduly interferes with an Office action being 
prepared in response to the previous reply. Factors that will be 
considered in disapproving a second (or subsequent) supplemental reply 
include:
    (i) The state of preparation of an Office action responsive to the 
previous reply as of the date of receipt (Sec. 1.6) of the second (or 
subsequent) supplemental reply by the Office; and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the second (or subsequent) supplemental 
reply.
    (b) In order to be entitled to reconsideration or further 
examination, the applicant or patent owner must reply to the Office 
action. The reply by the applicant or patent owner must be reduced to a 
writing which distinctly and specifically points out the supposed errors 
in the examiner's action and must reply to every ground of objection and 
rejection in the prior Office action. The reply must present arguments 
pointing out the specific distinctions believed to render the claims, 
including any newly presented claims, patentable over any applied 
references. If the reply is with respect to an application, a request 
may be made that objections or requirements as to form not necessary to 
further consideration of the claims be held in abeyance until allowable 
subject matter is indicated. The applicant's or patent owner's reply 
must appear throughout to be a bona fide attempt to advance the 
application or the reexamination proceeding to final action. A general 
allegation that the claims define a patentable invention without 
specifically pointing out how the language of the claims patentably 
distinguishes them from the references does not comply with the 
requirements of this section.
    (c) In amending in reply to a rejection of claims in an application 
or patent under reexamination, the applicant or patent owner must 
clearly point out the patentable novelty which he or she thinks the 
claims present in view of the state of the art disclosed by the 
references cited or the objections made. The applicant or patent owner 
must also show how the amendments avoid such references or objections.

[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997; 65 
FR 54672, Sept. 8, 2000]



Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111 or Sec. 1.945) 
to a non-final action and any comments by an inter partes reexamination 
requester (Sec. 1.947), the application or the patent under 
reexamination will be reconsidered and again examined. The applicant, or 
in the case of a reexamination proceeding the patent owner and any third 
party requester, will be notified if claims are rejected, objections or 
requirements made, or decisions favorable to patentability are made, in 
the same manner as after the first examination (Sec. 1.104). Applicant 
or patent owner may reply to such Office action in the same manner 
provided in Sec. 1.111 or Sec. 1.945, with or without amendment, unless 
such Office

[[Page 75]]

action indicates that it is made final (Sec. 1.113) or an appeal 
(Sec. 1.191) has been taken (Sec. 1.116), or in an inter partes 
reexamination, that it is an action closing prosecution (Sec. 1.949) or 
a right of appeal notice (Sec. 1.953).

[65 FR 76773, Dec. 7, 2000]



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 for ex parte reexaminations filed under Sec. 1.510, 
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. For final actions in an 
inter partes reexamination filed under Sec. 1.913, see Sec. 1.953.
    (b) In making such final rejection, the examiner shall repeat or 
state all grounds of rejection then considered applicable to the claims 
in the application, clearly stating the reasons in support thereof.
    (c) Reply to a final rejection or action must include cancellation 
of, or appeal from the rejection of, each rejected claim. If any claim 
stands allowed, the reply to a final rejection or action must comply 
with any requirements or objections as to form.

[65 FR 14872, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000]



Sec. 1.114  Request for continued examination.

    (a) If prosecution in an application is closed, an applicant may 
request continued examination of the application by filing a submission 
and the fee set forth in 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) Prosecution in an application is closed as used in this section 
means that the application is under appeal, or that the last Office 
action is a final action (Sec. 1.113), a notice of allowance 
(Sec. 1.311), or an action that otherwise closes prosecution in the 
application.
    (c) A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new evidence 
in support of patentability. If reply to an Office action under 35 
U.S.C. 132 is outstanding, the submission must meet the reply 
requirements of Sec. 1.111.
    (d) 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.
    (e) The provisions of this section do not apply to:
    (1) A provisional application;
    (2) An application for a utility or plant patent filed under 35 
U.S.C. 111(a) before June 8, 1995;
    (3) An international application filed under 35 U.S.C. 363 before 
June 8, 1995;
    (4) An application for a design patent; or
    (5) A patent under reexamination.

[65 FR 50104, Aug. 16, 2000]

                               Amendments

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



Sec. 1.115  Preliminary amendments.

    (a) A preliminary amendment is an amendment that is received in the 
Office (Sec. 1.6) on or before the mail date of the first Office action 
under Sec. 1.104.
    (b)(1) A preliminary amendment will be entered unless disapproved by 
the

[[Page 76]]

Commissioner. A preliminary amendment may be disapproved if the 
preliminary amendment unduly interferes with the preparation of a first 
Office action in an application. Factors that will be considered in 
disapproving a preliminary amendment include:
    (i) The state of preparation of a first Office action as of the date 
of receipt (Sec. 1.6) of the preliminary amendment by the Office; and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the preliminary amendment.
    (2) A preliminary amendment will not be disapproved if it is filed 
no later than:
    (i) Three months from the filing date of an application under 
Sec. 1.53(b);
    (ii) The filing date of a continued prosecution application under 
Sec. 1.53(d); or
    (iii) Three months from the date the national stage is entered as 
set forth in Sec. 1.491 in an international application.
    (c) The time periods specified in paragraph (b)(2) of this section 
are not extendable.

[65 FR 54672, Sept. 8, 2000]



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) in an 
application or in an ex parte reexamination filed under Sec. 1.510, or 
an action closing prosecution (Sec. 1.949) in an inter partes 
reexamination filed under Sec. 1.913, 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 a final rejection, a final 
action, an action closing prosecution, or 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, or the reexamination from termination. No 
amendment can be made in an inter partes reexamination proceeding after 
the right of appeal notice under Sec. 1.953 except as provided for in 
paragraph (d) of this section.
    (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 
Secs. 1.198 and 1.981, or to carry into effect a recommendation under 
Sec. 1.196 or Sec. 1.977.

[65 FR 14873, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000]



Secs. 1.117-1.119  [Reserved]



Sec. 1.121  Manner of making amendments in applications.

    (a) Amendments in applications, other than reissue applications. 
Amendments in applications, other than reissue applications, are made by 
filing a paper, in compliance with Sec. 1.52, directing that specified 
amendments be made.
    (b) Specification other than the claims and listings provided for 
elsewhere (Secs. 1.96 and 1.825)--(1) Amendment by instruction to 
delete, replace, or add a paragraph. Amendments to the specification, 
other than the claims and listings provided for elsewhere (Secs. 1.96 
and 1.825), may be made by submitting:
    (i) An instruction, which unambiguously identifies the location, to 
delete one or more paragraphs of the specification, replace a deleted 
paragraph with one or more replacement paragraphs, or add one or more 
paragraphs;
    (ii) Any replacement or added paragraph(s) in clean form, that is, 
without markings to indicate the changes that have been made; and
    (iii) Another version of any replacement paragraph(s), on one or 
more pages separate from the amendment, marked up to show all the 
changes relative to the previous version of the paragraph(s). The 
changes may be shown by brackets (for deleted matter) or underlining 
(for added matter), or by any equivalent marking system. A

[[Page 77]]

marked up version does not have to be supplied for an added paragraph or 
a deleted paragraph as it is sufficient to state that a particular 
paragraph has been added, or deleted.
    (2) Amendment by replacement section. If the sections of the 
specification contain section headings as provided in Secs. 1.77(b), 
1.154(b), or Sec. 1.163(c), amendments to the specification, other than 
the claims, may be made by submitting:
    (i) A reference to the section heading along with an instruction to 
delete that section of the specification and to replace such deleted 
section with a replacement section;
    (ii) A replacement section in clean form, that is, without markings 
to indicate the changes that have been made; and
    (iii) Another version of the replacement section, on one or more 
pages separate from the amendment, marked up to show all changes 
relative to the previous version of the section. The changes may be 
shown by brackets (for deleted matter) or underlining (for added 
matter), or by any equivalent marking system.
    (3) Amendment by substitute specification. The specification, other 
than the claims, may also be amended by submitting:
    (i) An instruction to replace the specification;
    (ii) A substitute specification in compliance with Sec. 1.125(b); 
and
    (iii) Another version of the substitute specification, separate from 
the substitute specification, marked up to show all changes relative to 
the previous version of the specification. The changes may be shown by 
brackets (for deleted matter), or underlining (for added matter), or by 
any equivalent marking system.
    (4) Reinstatement: Deleted matter may be reinstated only by a 
subsequent amendment presenting the previously deleted matter.
    (c) Claims--(1) Amendment by rewriting, directions to cancel or add: 
Amendments to a claim must be made by rewriting such claim with all 
changes (e.g., additions, deletions, modifications) included. The 
rewriting of a claim (with the same number) will be construed as 
directing the cancellation of the previous version of that claim. A 
claim may also be canceled by an instruction.
    (i) A rewritten or newly added claim must be in clean form, that is, 
without markings to indicate the changes that have been made. A 
parenthetical expression should follow the claim number indicating the 
status of the claim as amended or newly added (e.g., ``amended,'' 
``twice amended,'' or ``new'').
    (ii) If a claim is amended by rewriting such claim with the same 
number, the amendment must be accompanied by another version of the 
rewritten claim, on one or more pages separate from the amendment, 
marked up to show all the changes relative to the previous version of 
that claim. A parenthetical expression should follow the claim number 
indicating the status of the claim, e.g., ``amended,'' ``twice 
amended,'' etc. The parenthetical expression ``amended,'' ``twice 
amended,'' etc. should be the same for both the clean version of the 
claim under paragraph (c)(1)(i) of this section and the marked up 
version under this paragraph. The changes may be shown by brackets (for 
deleted matter) or underlining (for added matter), or by any equivalent 
marking system. A marked up version does not have to be supplied for an 
added claim or a canceled claim as it is sufficient to state that a 
particular claim has been added, or canceled.
    (2) A claim canceled by amendment (deleted in its entirety) may be 
reinstated only by a subsequent amendment presenting the claim as a new 
claim with a new claim number.
    (3) A clean version of the entire set of pending claims may be 
submitted in a single amendment paper. Such a submission shall be 
construed as directing the cancellation of all previous versions of any 
pending claims. A marked up version is required only for claims being 
changed by the current amendment (see paragraph (c)(1)(ii) of this 
section). Any claim not accompanied by a marked up version will 
constitute an assertion that it has not been changed relative to the 
immediate prior version.
    (d) Drawings. Application drawings are amended in the following 
manner:

[[Page 78]]

Any change to the application drawings must be submitted on a separate 
paper showing the proposed changes in red for approval by the examiner. 
Upon approval by the examiner, new drawings in compliance with Sec. 1.84 
including the changes must be filed.
    (e) Disclosure consistency. The disclosure must be amended, when 
required by the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence between the claims, 
the remainder of the specification, and the drawings.
    (f) No new matter. No amendment may introduce new matter into the 
disclosure of an application.
    (g) Exception for examiner's amendments: Changes to the 
specification, including the claims, of an application made by the 
Office in an examiner's amendment may be made by specific instructions 
to insert or delete subject matter set forth in the examiner's amendment 
by identifying the precise point in the specification or the claim(s) 
where the insertion or deletion is to be made. Compliance with 
paragraphs (b)(1), (b)(2) or (c)(1) of this section is not required.
    (h) Amendments in reissue applications. Any amendment to the 
description and claims in reissue applications must be made in 
accordance with Sec. 1.173.
    (i) Amendments in reexamination proceedings: Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings in both ex parte reexaminations filed under Sec. 1.510 and 
inter partes reexaminations filed under Sec. 1.913 must be made in 
accordance with Sec. 1.530(d)-(j).
    (j) Amendments in provisional applications: Amendments in 
provisional applications are not normally made. If an amendment is made 
to a provisional application, however, it must comply with the 
provisions of this section. Any amendments to a provisional application 
shall be placed in the provisional application file but may not be 
entered.

[65 FR 54672, Sept. 8, 2000, as amended at 65 FR 76773, Dec. 7, 2000]



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 version of the substitute specification showing all 
the changes (including the matter being added to and the matter being 
deleted from) to the specification of record. Numbering the paragraphs 
of the specification of record is not considered a change that must be 
shown pursuant to this paragraph.
    (c) A substitute specification submitted under this section must be 
submitted in clean form without markings as to amended material. The 
paragraphs of any substitute specification, other than the claims, 
should be individually numbered in Arabic numerals so that any amendment 
to the specification may be made by replacement paragraph in accordance 
with Sec. 1.121(b)(1).
    (d) A substitute specification under this section is not permitted 
in a reissue application or in a reexamination proceeding.

[62 FR 53193, Oct. 10, 1997, as amended at 65 FR 54673, Sept. 8, 2000]



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

[[Page 79]]

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 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

[[Page 80]]

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 or published application as prior art.

    (a) When any claim of an application or a patent under reexamination 
is rejected under 35 U.S.C. 103 on a U.S. patent or U.S. patent 
application publication 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 or published 
application are not identical but are not patentably distinct, and the 
inventions are owned by the same party, the applicant or owner of the 
patent under reexamination may disqualify the patent or patent 
application publication as prior art. The patent or patent application 
publication can be disqualified as prior art by submission of:
    (1) A terminal disclaimer in accordance with Sec. 1.321(c); and
    (2) An oath or declaration stating that the application or patent 
under reexamination and patent or published application are currently 
owned by the same party, and that the inventor named in the application 
or patent under reexamination is the prior inventor under 35 U.S.C. 104.
    (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 patenting rejection may 
be obviated by filing a terminal disclaimer in accordance with 
Sec. 1.321(c).

[61 FR 42805, Aug. 19, 1996, as amended at 65 FR 57056, Sept. 20, 2000]



Sec. 1.131  Affidavit or declaration of prior invention.

    (a) When any claim of an application or a patent under reexamination 
is rejected, 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 establish invention of the subject matter of the rejected 
claim prior to the effective date of the reference or activity on which 
the rejection is based. The effective date of a U.S. patent, U.S. patent 
application publication, or international application publication under 
PCT Article 21(2) is the earlier of its publication date or date that it 
is effective as a reference under 35 U.S.C. 102(e). Prior invention may 
not be established under this section in any country other than the 
United States, a NAFTA country, or a WTO member country. Prior invention 
may not be established under this section before December 8, 1993, in a 
NAFTA country other than the United States, or before January 1, 1996, 
in a WTO member country other than a NAFTA country. Prior invention may 
not be established under this section if either:
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application to another 
or others which claims the same patentable invention as defined in 
Sec. 1.601(n); or
    (2) The rejection is based upon a statutory bar.
    (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

[[Page 81]]

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; 65 FR 54673, Sept. 8, 2000; 65 FR 57057, Sept. 
20, 2000]



Sec. 1.132  Affidavits or declarations traversing rejections or objections.

    When any claim of an application or a patent under reexamination is 
rejected or objected to, any evidence submitted to traverse the 
rejection or objection on a basis not otherwise provided for must be by 
way of an oath or declaration under this section.

[65 FR 57057, Sept. 20, 2000]

                               Interviews



Sec. 1.133  Interviews.

    (a)(1) Interviews with examiners concerning applications and other 
matters pending before the Office must be conducted on Office premises 
and within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Commissioner.
    (2) An interview for the discussion of the patentability of a 
pending application will not occur before the first Office action, 
unless the application is a continuing or substitute application.
    (3) The examiner may require that an interview be scheduled in 
advance.
    (b) In every instance where reconsideration is requested in view of 
an interview with an examiner, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the applicant. An interview does not remove the necessity 
for reply to Office actions as specified in 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; 
65 FR 54674, Sept. 8, 2000]

         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);

[[Page 82]]

    (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 extensions 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 extensions of time in ex parte reexamination 
proceedings; Sec. 1.956 for extensions of time in inter partes 
reexamination proceedings; and Sec. 1.645 for extensions 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 
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 affect 
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 extensions 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 extensions of time in interference proceedings; 
Sec. 1.550(c) for extensions of time in ex parte reexamination 
proceedings; and Sec. 1.956 for extensions of time in inter partes 
reexamination proceedings.
    (c) If an applicant is notified in a ``Notice of Allowability'' that 
an application is otherwise in condition for allowance, the following 
time periods are not extendable if set in the ``Notice of Allowability'' 
or in an Office action having a mail date on or after the mail date of 
the ``Notice of Allowability'':
    (1) The period for submitting an oath or declaration in compliance 
with Sec. 1.63;
    (2) The period for submitting formal drawings set under 
Sec. 1.85(c); and
    (3) The period for making a deposit set under Sec. 1.809(c).

[62 FR 53194, Oct. 10, 1997, as amended at 65 FR 54674, Sept. 8, 2000; 
65 FR 76773, Dec. 7, 2000; 66 FR 21092, Apr. 27, 2001]



Sec. 1.137  Revival of abandoned application, terminated reexamination proceeding, or lapsed patent.

    (a) Unavoidable. If the delay in reply by applicant or patent owner 
was unavoidable, a petition may be filed pursuant to this paragraph to 
revive an abandoned application, a reexamination proceeding terminated 
under Secs. 1.550(d) or 1.957(b) or (c), or a lapsed patent. A grantable 
petition pursuant to this paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;

[[Page 83]]

    (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 (d) of this section.
    (b) Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination proceeding 
terminated under Secs. 1.550(d) or 1.957(b) or (c), or a lapsed patent. 
A grantable petition pursuant to this paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth in 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 (d) of this section.
    (c) Reply. In a nonprovisional application abandoned for failure to 
prosecute, the required reply may be met by the filing of a continuing 
application. In a nonprovisional utility or plant application filed on 
or after June 8, 1995, and abandoned for failure to prosecute, the 
required reply may also be met by the filing of a request for continued 
examination in compliance with Sec. 1.114. In an application or patent, 
abandoned or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of the issue fee or any 
outstanding balance. In an application, abandoned for failure to pay the 
publication fee, the required reply must include payment of the 
publication fee.
    (d) Terminal disclaimer. (1) Any petition to revive pursuant to this 
section in a design application must be accompanied by a terminal 
disclaimer and fee as set forth in 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 petition to revive 
pursuant to this section in either a utility or plant application filed 
before June 8, 1995, must be accompanied by a terminal disclaimer and 
fee as set forth in Sec. 1.321 dedicating to the public a terminal part 
of the term of any patent granted thereon equivalent to the lesser of:
    (i) The period of abandonment of the application; or
    (ii) The period extending beyond twenty years from the date on which 
the application for the patent was filed in the United States or, if the 
application contains a specific reference to an earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on 
which the earliest such application was filed.
    (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this 
section must also apply to any patent granted on a continuing utility or 
plant application filed before June 8, 1995, or a continuing design 
application, that contains a specific reference under 35 U.S.C. 120, 
121, or 365(c) to the application for which revival is sought.
    (3) The provisions of paragraph (d)(1) of this section do not apply 
to applications for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on or after June 8, 
1995, to lapsed patents, or to reexamination proceedings.
    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application, a 
terminated reexamination proceeding, 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 otherwise, this time 
period may be extended under:
    (1) The provisions of Sec. 1.136 for an abandoned application or 
lapsed patent;

[[Page 84]]

    (2) The provisions of Sec. 1.550(c) for a terminated ex parte 
reexamination proceeding filed under Sec. 1.510; or
    (3) The provisions of Sec. 1.956 for a terminated inter partes 
reexamination proceeding filed under Sec. 1.913.
    (f) Abandonment for failure to notify the Office of a foreign 
filing: A nonprovisional application abandoned pursuant to 35 U.S.C. 
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing 
of an application in a foreign country or under a multinational treaty 
that requires publication of applications eighteen months after filing, 
may be revived only pursuant to paragraph (b) of this section. The reply 
requirement of paragraph (c) of this section is met by the notification 
of such filing in a foreign country or under a multinational treaty, but 
the filing of a petition under this section will not operate to stay any 
period for reply that may be running against the application.
    (g) Provisional applications. A provisional application, abandoned 
for failure to timely respond to an Office requirement, may be revived 
pursuant to this section. Subject to the provisions of 35 U.S.C. 
119(e)(3) and Sec. 1.7(b), a provisional application will not be 
regarded as pending after twelve months from its filing date under any 
circumstances.

[65 FR 57057, Sept. 20, 2000]



Sec. 1.138  Express abandonment.

    (a) An application may be expressly abandoned by filing a written 
declaration of abandonment identifying the application in the United 
States Patent and Trademark Office. Express abandonment of the 
application may not be recognized by the Office before the date of issue 
or publication unless it is actually received by appropriate officials 
in time to act.
    (b) A written declaration of abandonment must be signed by a party 
authorized under Sec. 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in 
the application, except as otherwise provided in this paragraph. A 
registered attorney or agent, not of record, who acts in a 
representative capacity under the provisions of Sec. 1.34(a) when filing 
a continuing application, may expressly abandon the prior application as 
of the filing date granted to the continuing application.
    (c) An applicant seeking to abandon an application to avoid 
publication of the application (see Sec. 1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under this 
section including the fee set forth in Sec. 1.17(h) in sufficient time 
to permit the appropriate officials to recognize the abandonment and 
remove the application from the publication process. Applicant should 
expect that the petition will not be granted and the application will be 
published in regular course unless such declaration of express 
abandonment and petition are received by the appropriate officials more 
than four weeks prior to the projected date of publication.

[65 FR 54674, Sept. 8, 2000, as amended at 65 FR 57058, Sept. 20, 2000]



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

[[Page 85]]

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 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.

    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. 
Appropriate and adequate surface shading should be

[[Page 86]]

used to show the character or contour of the surfaces represented. Solid 
black surface shading is not permitted except when used to represent the 
color black as well as color contrast. Broken lines may be used to show 
visible environmental structure, but may not be used to show hidden 
planes and surfaces that cannot be seen through opaque materials. 
Alternate positions of a design component, illustrated by full and 
broken lines in the same view are not permitted in a design drawing. 
Photographs and ink drawings are not permitted to be combined as formal 
drawings in one application. Photographs submitted in lieu of ink 
drawings in design patent applications must not disclose environmental 
structure but must be limited to the design claimed for the article.

[65 FR 54674, Sept. 8, 2000]



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 in a design application.

    (a) The elements of the design application, if applicable, should 
appear in the following order:
    (1) Design application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings or photographs.
    (6) Executed oath or declaration (see Sec. 1.153(b)).
    (b) The specification should include the following sections in 
order:
    (1) Preamble, stating the name of the applicant, title of the 
design, and a brief description of the nature and intended use of the 
article in which the design is embodied.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Description of the figure or figures of the drawing.
    (5) Feature description.
    (6) A single claim.
    (c) The text of the specification sections defined in paragraph (b) 
of this section, if applicable, should be preceded by a section heading 
in uppercase letters without underlining or bold type.

[65 FR 54674, Sept. 8, 2000]



Sec. 1.155  Expedited examination of design applications.

    (a) The applicant may request that the Office expedite the 
examination of a design application. To qualify for expedited 
examination:
    (1) The application must include drawings in compliance with 
Sec. 1.84;
    (2) The applicant must have conducted a preexamination search; and
    (3) The applicant must file a request for expedited examination 
including:
    (i) The fee set forth in Sec. 1.17(k); and
    (ii) A statement that a preexamination search was conducted. The 
statement must also indicate the field of search and include an 
information disclosure statement in compliance with Sec. 1.98.
    (b) The Office will not examine an application that is not in 
condition for examination (e.g., missing basic filing fee) even if the 
applicant files a request for expedited examination under this section.

[65 FR 54674, Sept. 8, 2000]

                              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.

[[Page 87]]



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]



Sec. 1.163  Specification and arrangement of application elements in a plant application.

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

[65 FR 54675, Sept. 8, 2000]



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 drawings may be in color. The drawing must be in color if 
color is a distinguishing characteristic of the new variety. Two copies 
of color drawings or photographs and a black and white photocopy that 
accurately depicts, to the extent possible, the subject matter shown in 
the color drawing or photograph must be submitted.

[58 FR 38726, July 20, 1993, as amended at 65 FR 57058, Sept. 20, 2000]



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)

[[Page 88]]



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 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  Reissue specification, drawings, and amendments.

    (a) Contents of a reissue application. An application for reissue 
must contain the entire specification, including the claims, and the 
drawings of the patent. No new matter shall be introduced into the 
application. No reissue patent shall be granted enlarging the scope of 
the claims of the original patent unless applied for within two years 
from the grant of the original patent, pursuant to 35 U.S.C. 251.
    (1) Specification, including claims. The entire specification, 
including the claims, of the patent for which reissue is requested must 
be furnished in the form of a copy of the printed patent, in double 
column format, each page on only one side of a single sheet of paper. If 
an amendment of the reissue application is to be included, it must be 
made pursuant to paragraph (b) of this section. The formal requirements 
for papers making up the reissue application other than those set forth 
in this section are set out in Sec. 1.52. Additionally, a copy of any 
disclaimer (Sec. 1.321), certificate of correction (Secs. 1.322 through 
1.324), or reexamination certificate (Sec. 1.570) issued in the patent 
must be included. (See also Sec. 1.178).
    (2) Drawings. Applicant must submit a clean copy of each drawing 
sheet of the printed patent at the time the reissue application is 
filed. If such copy complies with Sec. 1.84, no further drawings will be 
required. Where a drawing of the reissue application is to include any 
changes relative to the patent being reissued, the changes to the 
drawing must be made in accordance with paragraph (b)(3) of this 
section. The Office will not transfer the drawings from the patent file 
to the reissue application.
    (b) Making amendments in a reissue application. An amendment in a 
reissue application is made either by physically incorporating the 
changes into the specification when the application is filed, or by a 
separate amendment paper. If amendment is made by incorporation, 
markings pursuant to paragraph (d) of this section must be used. If 
amendment is made by an amendment paper, the paper must direct that 
specified changes be made.
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph, including markings 
pursuant to paragraph (d) of this section, except that an entire

[[Page 89]]

paragraph may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted on 
paper or compact disc (see Secs. 1.52(e)(1) and 1.821(c), but not for 
discs submitted under Sec. 1.821(e)).
    (2) Claims. An amendment paper must include the entire text of each 
claim being changed by such amendment paper and of each claim being 
added by such amendment paper. For any claim changed by the amendment 
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc., 
should follow the claim number. Each changed patent claim and each added 
claim must include markings pursuant to paragraph (d) of this section, 
except that a patent claim or added claim should be canceled by a 
statement canceling the claim without presentation of the text of the 
claim.
    (3) Drawings. Any change to the patent drawings must be submitted as 
a sketch on a separate paper showing the proposed changes in red for 
approval by the examiner. Upon approval by the examiner, new drawings in 
compliance with Sec. 1.84 including the approved changes must be filed. 
Amended figures must be identified as ``Amended,'' and any added figure 
must be identified as ``New.'' In the event that a figure is canceled, 
the figure must be surrounded by brackets and identified as 
``Canceled.''
    (c) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (b) of this section, 
there must also be supplied, on pages separate from the pages containing 
the changes, the status (i.e., pending or canceled), as of the date of 
the amendment, of all patent claims and of all added claims, and an 
explanation of the support in the disclosure of the patent for the 
changes made to the claims.
    (d) Changes shown by markings. Any changes relative to the patent 
being reissued which are made to the specification, including the 
claims, upon filing, or by an amendment paper in the reissue 
application, must include the following markings:
    (1) The matter to be omitted by reissue must be enclosed in 
brackets; and
    (2) The matter to be added by reissue must be underlined, except for 
amendments submitted on compact discs (Secs. 1.96 and 1.821(c)). Matter 
added by reissue on compact discs must be preceded with ``U>'' and end 
with ``/U>'' to properly identify the material being added.
    (e) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claim added in the reissue application 
must follow the number of the highest numbered patent claim.
    (f) Amendment of disclosure may be required. The disclosure must be 
amended, when required by the Office, to correct inaccuracies of 
description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, and the 
drawings.
    (g) Amendments made relative to the patent. All amendments must be 
made relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing of the reissue 
application.

[65 FR 54675, Sept. 8, 2000]



Sec. 1.174  [Reserved]



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

[[Page 90]]

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.
    (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.

    (a) A reissue application will be examined in the same manner as a 
non-reissue, non-provisional application, and will be subject to all the 
requirements of the rules related to non-reissue applications. 
Applications for reissue will be acted on by the examiner in advance of 
other applications.
    (b) Restriction between subject matter of the original patent claims 
and previously unclaimed subject matter may be required (restriction 
involving only subject matter of the original patent claims will not be 
required). If restriction is required, the subject matter of the 
original patent claims will be held to be constructively elected unless 
a disclaimer of all the patent claims is filed in the reissue 
application, which disclaimer cannot be withdrawn by applicant.

[65 FR 54676, Sept. 8, 2000]



Sec. 1.177  Issuance of multiple reissue patents.

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

[65 FR 54676, Sept. 8, 2000]

[[Page 91]]



Sec. 1.178  Original patent; continuing duty of applicant.

    (a) The application for a reissue should be accompanied by either an 
offer to surrender the original patent, or the original patent itself, 
or if the original is lost or inaccessible, by a statement to that 
effect. The application may be accepted for examination in the absence 
of the original patent or the statement, but one or the other must be 
supplied before the application is allowed. If a reissue application is 
refused, the original patent, if surrendered, will be returned to 
applicant upon request.
    (b) In any reissue application before the Office, the applicant must 
call to the attention of the Office any prior or concurrent proceedings 
in which the patent (for which reissue is requested) is or was involved, 
such as interferences, reissues, reexaminations, or litigations and the 
results of such proceedings (see also Sec. 1.173(a)(1)).

[65 FR 54676, Sept. 8, 2000]



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, or in the ex parte or inter partes 
prosecution of a reexamination proceeding 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, the proof in the form 
of affidavits or declarations (and exhibits, if any) must accompany the 
petition.
    (c) When a petition is taken from an action or requirement of an 
examiner in the ex parte prosecution of an application, or in the ex 
parte or inter partes prosecution of a reexamination proceeding, it may 
be required that there have been a proper request for reconsideration 
(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 or her decision upon 
the matters averred in the petition, supplying a copy to the petitioner.
    (d) Where a fee is required for a petition to the 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) The mere filing of a petition will not stay any period for reply 
that may be running against the application, nor act as a stay of other 
proceedings. Any petition under this part not filed within two months of 
the mailing date of the action or notice from which relief is requested 
may be dismissed as untimely, except as otherwise provided. This two-
month period is not extendable.
    (g) The 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; 65 FR 54676, 
Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000]

[[Page 92]]



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 ex parte reexamination filed under 
Sec. 1.510 for a patent that issued from an original application filed 
in the United States before November 29, 1999, 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. Notwithstanding the above, for an ex parte reexamination 
proceeding filed under Sec. 1.510 for a patent that issued from an 
original application filed in the United States on or after November 29, 
1999, no appeal may be filed until the claims have been finally rejected 
(Sec. 1.113). Appeals to the Board of Patent Appeals and Interferences 
in inter partes reexamination proceedings filed under Sec. 1.913 are 
controlled by Secs. 1.959 through 1.981. Sections 1.191 through 1.198 
are not applicable to appeals in inter partes reexamination proceedings 
filed under Sec. 1.913.
    (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 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; 65 FR 76774, Dec. 7, 2000]



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

[[Page 93]]

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 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

[[Page 94]]

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 or a 
supplemental examiner's answer within two months from the date of such 
examiner's answer or supplemental 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 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

[[Page 95]]

(Secs. 1.130, 1.131 or 1.132) or other evidence are permitted.

[62 FR 53197, Oct. 10, 1997, as amended at 65 FR 54676, Sept. 8, 2000]



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 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

[[Page 96]]

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
    (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]

[[Page 97]]



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]

                       Publication of Applications

    Source: Sections 1.211, 1.213, 1.215, 1.217, 1.219, and 1.221 appear 
at 65 FR 57058, Sept. 20, 2000, unless otherwise noted.



Sec. 1.211  Publication of applications.

    (a) Each U.S. national application for patent filed in the Office 
under 35 U.S.C. 111(a) and each international application in compliance 
with 35 U.S.C. 371 will be published promptly after the expiration of a 
period of eighteen months from the earliest filing date for which a 
benefit is sought under title 35, United States Code, unless:
    (1) The application is recognized by the Office as no longer 
pending;
    (2) The application is national security classified (see 
Sec. 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under 
national security review;
    (3) The application has issued as a patent in sufficient time to be 
removed from the publication process; or
    (4) The application was filed with a nonpublication request in 
compliance with Sec. 1.213(a).
    (b) Provisional applications under 35 U.S.C. 111(b) shall not be 
published, and design applications under 35 U.S.C. chapter 16 and 
reissue applications under 35 U.S.C. chapter 25 shall not be published 
under this section.
    (c) An application filed under 35 U.S.C. 111(a) will not be 
published until it includes the basic filing fee (Sec. 1.16(a) or 
1.16(g)), any English translation required by Sec. 1.52(d), and an 
executed oath or declaration under Sec. 1.63. The Office may delay 
publishing any application until it includes a specification having 
papers in compliance with Sec. 1.52 and an abstract (Sec. 1.72(b)), 
drawings in compliance with Sec. 1.84, and a sequence listing in 
compliance with Secs. 1.821 through 1.825 (if applicable), and until any 
petition under Sec. 1.47 is granted.
    (d) The Office may refuse to publish an application, or to include a 
portion of an application in the patent application publication 
(Sec. 1.215), if publication of the application or portion thereof would 
violate Federal or state law, or if the application or portion thereof 
contains offensive or disparaging material.
    (e) The publication fee set forth in Sec. 1.18(d) must be paid in 
each application published under this section before the patent will be 
granted. If an application is subject to publication under this section, 
the sum specified in the notice of allowance under Sec. 1.311 will also 
include the publication fee which must be paid within three months from 
the date of mailing of the notice of allowance to avoid abandonment of 
the application. This three-month period is not extendable. If the 
application is not published under this section, the publication fee (if 
paid) will be refunded.



Sec. 1.213  Nonpublication request.

    (a) If the invention disclosed in an application has not been and 
will not be the subject of an application filed in another country, or 
under a multilateral international agreement, that requires publication 
of applications eighteen months after filing, the application will not 
be published under 35 U.S.C. 122(b) and Sec. 1.211 provided:
    (1) A request (nonpublication request) is submitted with the 
application upon filing;
    (2) The request states in a conspicuous manner that the application

[[Page 98]]

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



Sec. 1.215  Patent application publication.

    (a) The publication of an application under 35 U.S.C. 122(b) shall 
include a patent application publication. The date of publication shall 
be indicated on the patent application publication. The patent 
application publication will be based upon the application papers 
deposited on the filing date of the application, as well as the executed 
oath or declaration submitted to complete the application, and any 
application papers or drawings submitted in reply to a preexamination 
notice requiring a title and abstract in compliance with Sec. 1.72, 
application papers in compliance with Sec. 1.52, drawings in compliance 
with Sec. 1.84, or a sequence listing in compliance with Secs. 1.821 
through 1.825, except as otherwise provided in this section. The patent 
application publication will not include any amendments, including 
preliminary amendments, unless applicant supplies a copy of the 
application containing the amendment pursuant to paragraph (c) of this 
section.
    (b) If applicant wants the patent application publication to include 
assignee information, the applicant must include the assignee 
information on the application transmittal sheet or the application data 
sheet (Sec. 1.76). Assignee information may not be included on the 
patent application publication unless this information is provided on 
the application transmittal sheet or application data sheet included 
with the application on filing. Providing this information on the 
application transmittal sheet or the application data sheet does not 
substitute for compliance with any requirement of part 3 of this chapter 
to have an assignment recorded by the Office.
    (c) At applicant's option, the patent application publication will 
be based upon the copy of the application (specification, drawings, and 
oath or declaration) as amended during examination, provided that 
applicant supplies such a copy in compliance with the Office electronic 
filing system requirements within one month of the actual filing date of 
the application or fourteen months of the earliest filing date for which 
a benefit is sought under title 35, United States Code, whichever is 
later.
    (d) If the copy of the application submitted pursuant to paragraph 
(c) of this section does not comply with the Office electronic filing 
system requirements, the Office will publish the application as provided 
in paragraph (a) of this section. If, however, the Office has not 
started the publication process, the Office may use an untimely filed 
copy of the application supplied by the applicant under paragraph (c) of 
this section in creating the patent application publication.

[[Page 99]]



Sec. 1.217  Publication of a redacted copy of an application.

    (a) If an applicant has filed applications in one or more foreign 
countries, directly or through a multilateral international agreement, 
and such foreign-filed applications or the description of the invention 
in such foreign-filed applications is less extensive than the 
application or description of the invention in the application filed in 
the Office, the applicant may submit a redacted copy of the application 
filed in the Office for publication, eliminating any part or description 
of the invention that is not also contained in any of the corresponding 
applications filed in a foreign country. The Office will publish the 
application as provided in Sec. 1.215(a) unless the applicant files a 
redacted copy of the application in compliance with this section within 
sixteen months after the earliest filing date for which a benefit is 
sought under title 35, United States Code.
    (b) The redacted copy of the application must be submitted in 
compliance with the Office electronic filing system requirements. The 
title of the invention in the redacted copy of the application must 
correspond to the title of the application at the time the redacted copy 
of the application is submitted to the Office. If the redacted copy of 
the application does not comply with the Office electronic filing system 
requirements, the Office will publish the application as provided in 
Sec. 1.215(a).
    (c) The applicant must also concurrently submit in paper 
(Sec. 1.52(a)) to be filed in the application:
    (1) A certified copy of each foreign-filed application that 
corresponds to the application for which a redacted copy is submitted;
    (2) A translation of each such foreign-filed application that is in 
a language other than English, and a statement that the translation is 
accurate;
    (3) A marked-up copy of the application showing the redactions in 
brackets; and
    (4) A certification that the redacted copy of the application 
eliminates only the part or description of the invention that is not 
contained in any application filed in a foreign country, directly or 
through a multilateral international agreement, that corresponds to the 
application filed in the Office.
    (d) The Office will provide a copy of the complete file wrapper and 
contents of an application for which a redacted copy was submitted under 
this section to any person upon written request pursuant to 
Sec. 1.14(c)(2), unless applicant complies with the requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
    (1) Applicant must accompany the submission required by paragraph 
(c) of this section with the following:
    (i) A copy of any Office correspondence previously received by 
applicant including any desired redactions, and a second copy of all 
Office correspondence previously received by applicant showing the 
redacted material in brackets; and
    (ii) A copy of each submission previously filed by the applicant 
including any desired redactions, and a second copy of each submission 
previously filed by the applicant showing the redacted material in 
brackets.
    (2) In addition to providing the submission required by paragraphs 
(c) and (d)(1) of this section, applicant must:
    (i) Within one month of the date of mailing of any correspondence 
from the Office, file a copy of such Office correspondence including any 
desired redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; and
    (ii) With each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets.
    (3) Each submission under paragraph (d)(1) or (d)(2) of this 
paragraph must also be accompanied by the processing fee set forth in 
Sec. 1.17(i) and a certification that the redactions are limited to the 
elimination of material that is relevant only to the part or description 
of the invention that was not contained in the redacted copy of the 
application submitted for publication.
    (e) The provisions of Sec. 1.8 do not apply to the time periods set 
forth in this section.

[[Page 100]]



Sec. 1.219  Early publication.

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



Sec. 1.221  Voluntary publication or republication of patent application publication.

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

                        Miscellaneous Provisions



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]



Sec. 1.251  Unlocatable file.

    (a) In the event that the Office cannot locate the file of an 
application, patent, or other patent-related proceeding after a 
reasonable search, the

[[Page 101]]

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

[65 FR 69451, Nov. 17, 2000]

                   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 date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first; and
    (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

[[Page 102]]

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; 65 FR 57060, Sept. 
20, 2000]



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 date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first.
    (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; 65 FR 57060, Sept. 20, 2000]



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 (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

[[Page 103]]

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 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]

[[Page 104]]



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 any ex parte 
reexamination proceeding filed under Sec. 1.510, 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: In the U. S. Patent and Trademark Office, file a written 
notice of appeal directed to the Commissioner (see Secs. 1.302 and 
1.304); and 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. For inter 
partes reexamination proceedings filed under Sec. 1.913, Sec. 1.983 is 
controlling.

[65 FR 76774, Dec. 7, 2000]



Sec. 1.302  Notice of appeal.

    (a) When an appeal is taken to the U.S. Court of Appeals for the 
Federal 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 an ex parte 
reexamination proceeding filed under Sec. 1.510 for a patent that issues 
from an original application filed in the United States before November 
29, 1999, 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, 
instead of appealing to the U.S. Court

[[Page 105]]

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 an ex parte reexamination proceeding filed under Sec. 1.510 
for a patent that issues from an original application filed in the 
United States before November 29, 1999, 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.
    (d) For an ex parte reexamination proceeding filed under Sec. 1.510 
for a patent that issues from an original application filed in the 
United States on or after November 29, 1999, and for an inter partes 
reexamination proceeding filed under Sec. 1.913, no remedy by civil 
action under 35 U.S.C. 145 is available.

(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; 65 FR 54676, Sept. 8, 2000; 65 FR 76774, 
Dec. 7, 2000]



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), Sec. 1.658(b), or Sec. 1.979(a), 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) Fourteen 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 Sec. 1.136, Sec. 1.550(c), Sec. 1.956, or 
Sec. 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 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; 65 FR 76774, Dec. 7, 2000]

                      Allowance and Issue of Patent



Sec. 1.311  Notice of allowance.

    (a) If, on examination, it appears that the applicant is entitled to 
a patent under the law, a notice of allowance will be sent to the 
applicant at the correspondence address indicated

[[Page 106]]

in Sec. 1.33. The notice of allowance shall specify a sum constituting 
the issue fee which must be paid within three months from the date of 
mailing of the notice of allowance to avoid abandonment of the 
application. The sum specified in the notice of allowance may also 
include the publication fee, in which case the issue fee and publication 
fee (Sec. 1.211(f)) must both be paid within three months from the date 
of mailing of the notice of allowance to avoid abandonment of the 
application. This three-month period is not extendable.
    (b) An authorization to charge the issue or other post-allowance 
fees set forth in Sec. 1.18 to a deposit account may be filed in an 
individual application only after mailing of the notice of allowance. 
The submission of either of the following after the mailing of a notice 
of allowance will operate as a request to charge the correct issue fee 
to any deposit account identified in a previously filed authorization to 
charge fees:
    (1) An incorrect issue fee; or
    (2) A completed Office-provided issue fee transmittal form (where no 
issue fee has been submitted).

[65 FR 57060, Sept. 20, 2000]



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(h) and a showing of good and sufficient reasons why withdrawal 
of the application from issue is necessary. A petition under this 
section is not required if a request for continued examination under 
Sec. 1.114 is filed prior to payment of the issue fee. If the Office 
withdraws the application from issue, the Office will issue a new notice 
of allowance if the Office again allows the application.
    (b) Once the issue fee has been paid, the Office will not withdraw 
the application from issue at its own initiative for any reason except:
    (1) A mistake on the part of the Office;
    (2) A violation of 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 request for continued examination in 
compliance with 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, as amended at 65 FR 50105, Aug. 16, 2000]



Sec. 1.314  Issuance of patent.

    If applicant timely pays the issue fee, the Office will issue the 
patent in regular course unless the application is withdrawn from issue 
(Sec. 1.313) or the Office defers issuance of the patent. To request 
that the Office defer issuance of a patent, applicant must file a 
petition under this section including the fee set forth in Sec. 1.17(h) 
and a showing of good and sufficient reasons why it is

[[Page 107]]

necessary to defer issuance of the patent.

[65 FR 54677, Sept. 8, 2000]



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

[[Page 108]]

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]

                     Correction of Errors in Patent



Sec. 1.322  Certificate of correction of Office mistake.

    (a)(1) The Commissioner may issue a certificate of correction 
pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred 
through the fault of the Office, which mistake is clearly disclosed in 
the records of the Office:
    (i) At the request of the patentee or the patentee's assignee;
    (ii) Acting sua sponte for mistakes that the Office discovers; or
    (iii) Acting on information about a mistake supplied by a third 
party.
    (2)(i) There is no obligation on the Office to act on or respond to 
a submission of information or request to issue a certificate of 
correction by a third party under paragraph (a)(1)(iii) of this section.
    (ii) Papers submitted by a third party under this section will not 
be made of record in the file that they relate to nor be retained by the 
Office.
    (3) If the request relates to a patent involved in an interference, 
the request must comply with the requirements of this section and be 
accompanied by a motion under Sec. 1.635.
    (4) The Office will not issue a certificate of correction under this 
section without first notifying the patentee (including any assignee of 
record) at the correspondence address of record as specified in 
Sec. 1.33(a) and affording the patentee or an assignee an opportunity to 
be heard.
    (b) If the nature of the mistake on the part of the Office is such 
that a certificate of correction is deemed inappropriate in form, the 
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; 
65 FR 54677, Sept. 8, 2000]



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

    The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee or 
the patentee's assignee, upon payment of the fee set forth in 
Sec. 1.20(a). If the request relates to a patent involved in an 
interference, the request must comply with the requirements of this 
section and be accompanied by a motion under Sec. 1.635.

[65 FR 54677, Sept. 8, 2000]



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

    (a) Whenever through error a person is named in an issued patent as 
the inventor, or 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) Where one or more persons are being added, a statement from each 
person who is being added 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).

[[Page 109]]

    (c) For correction of inventorship in an application see Secs. 1.48 
and 1.497, and in an interference see Sec. 1.634.

[62 FR 53199, Oct. 10, 1997, as amended at 65 FR 54677, Sept. 8, 2000]



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 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.

[[Page 110]]

    (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 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

[[Page 111]]

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 utilized in paying maintenance fees and any 
necessary surcharges.
    (c) In submitting maintenance fees and any necessary surcharges, 
identification of the patents for which maintenance fees are being paid 
must include the patent number, and the application number of the United 
States application for the patent on which the maintenance fee is being 
paid. If the payment includes identification of only the patent number 
(i.e., does not identify the application number of the United States 
application for the patent on which the maintenance fee is being paid), 
the Office may apply the payment to the patent identified by patent 
number in the payment or may return the payment.
    (d) Payment of maintenance fees and any surcharges should identify 
the fee being paid for each patent as to whether it is the 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. 1.27(g).
    (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; 65 FR 54677, Sept. 8, 2000; 65 FR 78960, 
Dec. 18, 2000]



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

[[Page 112]]

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).
    (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.

[[Page 113]]

                           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.
    (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

[[Page 114]]

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 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

[[Page 115]]

    (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. 1.417.  Submission of translation of international application.

    The submission of the international publication or an English 
language translation of an international application pursuant to 35 
U.S.C. 154(d)(4) must clearly identify the international application to 
which it pertains (Sec. 1.5(a)) and, unless it is being submitted 
pursuant to Sec. 1.494 or Sec. 1.495, be clearly identified as a 
submission pursuant to 35 U.S.C. 154(d)(4). Otherwise, the submission 
will be treated as a filing under 35 U.S.C. 111(a). Such submissions 
should be marked ``Box PCT.''

[65 FR 57060, Sept. 20, 2000]



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]

                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.

[[Page 116]]

    (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 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

[[Page 117]]

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 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

[[Page 118]]

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 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:
    (1) Shall include the name, address and signature of the inventor, 
except as provided by Secs. 1.421(d), 1.422, 1.423 and 1.425;
    (2) Shall include 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; and
    (3) May include in the Request a declaration of the inventors as 
provided for in PCT Rule 4.17(iv).

[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66 
FR 16006, Mar. 22, 2001]



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

[[Page 119]]

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.

                                  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, may be refunded. A mere change of purpose 
after the payment of a fee will not entitle a party to a refund of such 
fee. The Office will not refund amounts of twenty-five dollars or less 
unless a refund is specifically requested and will not notify the payor

[[Page 120]]

of such amounts. If the payor or party requesting a refund does not 
provide the banking information necessary for making refunds by 
electronic funds transfer, the Office may use the banking information 
provided on the payment instrument to make any refund by electronic 
funds transfer.
    (b) Any request for refund under paragraph (a) of this section must 
be filed within two years from the date the fee was paid. If the Office 
charges a deposit account by an amount other than an amount specifically 
indicated in an authorization under Sec. 1.25(b), any request for refund 
based upon such charge must be filed within two years from the date of 
the deposit account statement indicating such charge and include a copy 
of that deposit account statement. The time periods set forth in this 
paragraph are not extendable.
    (c) Refund of the supplemental search fees will be made if such 
refund is determined to be warranted by the 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; 65 FR 54677, Sept. 8, 
2000]

                                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 or international application filed with the United States 
Receiving Office is claimed in an international application, the 
applicant may request in the Request or in a letter of transmittal 
accompanying the international application upon filing with the United 
States Receiving Office or in a separate letter filed in the United 
States Receiving Office not later than 16 months after the priority 
date, that the United States Patent and Trademark Office prepare a 
certified copy of the prior application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is set forth in 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 16 months of the priority date, the certified copy of the 
priority document must be furnished by the applicant to the 
International Bureau or to the United States Receiving Office within the 
time limit specified in PCT Rule 17.1(a).
    (d) The applicant may correct or add a priority claim in accordance 
with PCT Rule 26bis.1.

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

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 
1993; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]

                             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,

[[Page 121]]

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 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

[[Page 122]]

that draws attention to the differences between the replaced sheets and 
the replacement sheets. Replacement sheets are not required for the 
deletion of lines of text, the correction of simple typographical 
errors, and one addition or change of not more than five words per 
sheet. These changes may be stated in a letter and, if appropriate, the 
United States Receiving Office will make the deletion or transfer the 
correction to the international application, provided that such 
corrections do not adversely affect the clarity and direct 
reproducibility of the application (PCT Rule 26.4). Amendments that do 
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
    (b) Amendments of claims submitted to the International Bureau shall 
be as prescribed by PCT Rule 46.
    (c) Corrections or additions to the Request of any declarations 
under PCT Rule 4.17 should be submitted to the International Bureau as 
prescribed by PCT Rule 26ter.

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



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, 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]

[[Page 123]]



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 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]

[[Page 124]]



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 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:

[[Page 125]]

    (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.
    (g) If the application whose priority is claimed in the 
international application is in a language other than English, the 
United States International Preliminary Examining Authority may, where 
the validity of the priority claim is relevant for the formulation of 
the opinion referred to in Article 33(1), invite the applicant to 
furnish an English translation of the priority document within two 
months from the date of the invitation. If the translation is not 
furnished within that time limit, the international preliminary 
examination report may be established as if the priority had not been 
claimed.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 
22, 2001]



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:

[[Page 126]]

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

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



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.  1.27(a))..........................      $345.00
By other than a small entity...............................      $690.00
 

    (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

[[Page 127]]

United States Patent and Trademark Office as an International Searching 
Authority:

By a small entity (Sec.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00
 

    (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.  1.27(a))..........................      $500.00
By other than a small entity...............................    $1,000.00
 

    (4) Where the 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.  1.27(a))..........................       $50.00
By other than a small entity...............................      $100.00
 

    (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.  1.27(a))..........................      $430.00
By other than a small entity...............................      $860.00
 

    (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.  1.27(a))..........................       $40.00
By other than a small entity...............................       $80.00
 

    (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.  1.27(a))..........................        $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.  1.27(a))..........................      $135.00
By other than a small entity...............................      $270.00
 

    (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.  1.27(a))..........................       $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; 65 FR 49195, Aug. 11, 
2000; 65 FR 78960, Dec. 18, 2000]



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

[[Page 128]]

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
    (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), and a declaration of inventorship in compliance with 
Sec. 1.497 has not been previously submitted in the international 
application under PCT Rule 4.17(iv) within the time limits provided for 
in PCT Rule 26ter.1, 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, except for a copy of the international publication or 
translation of the international application that is identified as 
provided in Sec. 1.417, 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(a).
    (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; 65 FR 57060, Sept. 20, 2000; 66 FR 16006, Mar. 
22, 2001; 66 FR 28054, May 22, 2001]



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

[[Page 129]]

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.
    (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), and a declaration of inventorship in compliance with 
Sec. 1.497 has not been previously submitted in the international 
application under PCT Rule 4.17(iv) within the time limits provided for 
in PCT Rule 26ter.1, 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 and fees submitted under paragraphs (b) and (c) of 
this section must, except for a copy of the international publication or 
translation of the international application that is identified as 
provided in Sec. 1.417, 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(a).
    (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

[[Page 130]]

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; 65 FR 57060, Sept. 20, 2000; 66 FR 16006, Mar. 
22, 2001; 66 FR 28054, May 22, 2001]



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 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, and a declaration in compliance with this section has not been 
previously submitted in the international application under PCT Rule 
4.17(iv) within the time limits provided for in PCT Rule 26ter.1, 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 application 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 or any supplemental 
oath or declaration is not the inventor (Secs. 1.42, 1.43, or 
Sec. 1.47), the oath or declaration shall state the relationship of the 
person to the inventor, and, upon information and belief, the facts 
which the inventor would have been required to state. If the person 
signing the oath or declaration is the legal representative of a 
deceased inventor, the oath or declaration shall also state that the 
person is a legal representative and the citizenship, residence and 
mailing address of the legal representative.
    (c) Subject to paragraph (f) of this section, 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 or an 
application data sheet will be required in accordance with Sec. 1.67.
    (d) If the oath or declaration filed pursuant to 35 U.S.C. 371(c)(4) 
and this section names an inventive entity different from the inventive 
entity set forth in the international application, or a change to the 
inventive entity has

[[Page 131]]

been effected under PCT Rule 92bis subsequent to the execution of any 
declaration which was filed under PCT Rule 4.17(iv), the oath or 
declaration must be accompanied by:
    (1) A statement from each person being added as an inventor and from 
each person being deleted as an inventor that any error in inventorship 
in the international application occurred without deceptive intention on 
his or her part;
    (2) The processing fee set forth in Sec. 1.17(i); 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) of this 
chapter).
    (e) The Office may require such other information as may be deemed 
appropriate under the particular circumstances surrounding the 
correction of inventorship.
    (f) A new oath or declaration in accordance with this section must 
be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed 
under PCT Rule 4.17(iv), and:
    (1) There was a change in the international filing date pursuant to 
PCT Rule 20.2 after the declaration was executed; or
    (2) A change in the inventive entity was effected under PCT Rule 
92bis after the declaration was executed.
    (g) If a priority claim has been corrected or added pursuant to PCT 
Rule 26bis during the international stage after the declaration of 
inventorship was executed in the international application under PCT 
Rule 4.17(iv), applicant will be required to submit either a new oath or 
declaration or an application data sheet as set forth in Sec. 1.76 
correctly identifying the application upon which priority is claimed.

[61 FR 42807, Aug. 19, 1996, as amended at 65 FR 54677, Sept. 8, 2000; 
66 FR 16006, Mar. 22, 2001; 66 FR 28054, May 22, 2001]



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--Ex Parte 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 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 the 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. Such 
citations shall be entered in the patent file except as set forth in 
Secs. 1.502 and 1.902.
    (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.

[46 FR 29185, May 29, 1981, as amended at 65 FR 76774, Dec. 7, 2000]



Sec. 1.502  Processing of prior art citations during an ex parte reexamination proceeding.

    Citations by the patent owner under Sec. 1.555 and by an ex parte 
reexamination requester under either Sec. 1.510 or Sec. 1.535

[[Page 132]]

will be entered in the reexamination file during a reexamination 
proceeding. The entry in the patent file of citations submitted after 
the date of an order to reexamine pursuant to Sec. 1.525 by persons 
other than the patent owner, or an ex parte reexamination requester 
under either Sec. 1.510 or Sec. 1.535, will be delayed until the 
reexamination proceeding has been terminated. See Sec. 1.902 for 
processing of prior art citations in patent and reexamination files 
during an inter partes reexamination proceeding filed under Sec. 1.913.

[65 FR 76774, Dec. 7, 2000]

                   Request for Ex Parte Reexamination



Sec. 1.510  Request for ex parte reexamination.

    (a) Any person may, at any time during the period of enforceability 
of a patent, file a request for an ex parte reexamination by the Office 
of any claim of the patent on the basis of prior art patents or printed 
publications cited under Sec. 1.501. The request must be accompanied by 
the fee for requesting reexamination set in Sec. 1.20(c)(1).
    (b) Any request for reexamination must include the following parts:
    (1) A statement pointing out each substantial new question of 
patentability based on prior patents and printed publications.
    (2) An identification of every claim for which reexamination is 
requested, and a detailed explanation of the pertinency and manner of 
applying the cited prior art to every claim for which reexamination is 
requested. If appropriate the party requesting reexamination may also 
point out how claims distinguish over cited prior art.
    (3) A copy of every patent or printed publication relied upon or 
referred to in paragraph (b) (1) and (2) of this section accompanied by 
an English language translation of all the necessary and pertinent parts 
of any non-English language patent or printed publication.
    (4) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
    (5) A certification that a copy of the request filed by a person 
other than the patent owner has been served in its entirety on the 
patent owner at the address as provided for in 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.
    (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; 65 FR 54678, Sept. 8, 2000; 65 FR 76775, Dec 
7, 2000]



Sec. 1.515  Determination of the request for ex parte reexamination.

    (a) Within three months following the filing date of a request for 
an ex parte reexamination, an examiner will

[[Page 133]]

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, will become a part of the official file of the patent, 
and will be mailed to the patent owner at the address as provided for in 
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 ex parte 
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 ex parte 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.

[65 FR 76775, Dec. 7, 2000]



Sec. 1.520  Ex parte 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 or Sec. 1.913. The Commissioner 
may initiate ex parte reexamination without a request for reexamination 
pursuant to Sec. 1.510 or Sec. 1.913. Normally requests from outside the 
Office that the Commissioner undertake reexamination on his own 
initiative will not be considered. Any determination to initiate ex 
parte reexamination under this section will become a part of the 
official file of the patent and will be mailed to the patent owner at 
the address as provided for in Sec. 1.33(c).

[65 FR 76775, Dec. 7, 2000]

                         Ex Parte Reexamination



Sec. 1.525  Order for ex parte reexamination.

    (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 
ex parte reexamination of the patent for resolution of the question. If 
the order for ex parte reexamination resulted from a petition pursuant 
to Sec. 1.515(c), the ex parte reexamination will ordinarily be 
conducted by an examiner other than the examiner responsible for the 
initial determination under Sec. 1.515(a).
    (b) The notice published in the Official Gazette under Sec. 1.11(c) 
will be considered to be constructive notice and ex parte reexamination 
will proceed.

[65 FR 76775, Dec. 7, 2000]



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

    (a) Except as provided in Sec. 1.510(e), no statement or other 
response by the patent owner in an ex parte reexamination proceeding 
shall be filed prior to the determinations made in accordance with 
Sec. 1.515 or Sec. 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 ex parte reexamination will set a period of not 
less than two months from the date of the order within which the patent 
owner may file a statement on the new question of patentability, 
including any proposed amendments the patent owner wishes to make.
    (c) Any statement filed by the patent owner shall clearly point out 
why the subject matter as claimed is not anticipated or rendered obvious 
by the prior art patents or printed publications, either alone or in any 
reasonable combinations. Where the reexamination request was filed by a 
third party requester, any statement filed by the

[[Page 134]]

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

[[Page 135]]

    (j) No enlargement of claim scope. No amendment may enlarge the 
scope of the claims of the patent or introduce new matter. No amendment 
may be proposed for entry in an expired patent. Moreover, no amendment, 
other than the cancellation of claims, will be incorporated into the 
patent by a certificate issued after the expiration of the patent.
    (k) Amendments not effective until certificate. Although the Office 
actions will treat proposed amendments as though they have been entered, 
the proposed amendments will not be effective until the reexamination 
certificate is issued.
    (l) Correction of inventorship in an ex parte or inter partes 
reexamination proceeding.
    (1) When it appears in a patent being reexamined that the correct 
inventor or inventors were not named through error without deceptive 
intention on the part of the actual inventor or inventors, the 
Commissioner may, on petition of all the parties set forth in 
Sec. 1.324(b)(1)-(3), including the assignees, and satisfactory proof of 
the facts and payment of the fee set forth in Sec. 1.20(b), or on order 
of a court before which such matter is called in question, include in 
the reexamination certificate to be issued under Sec. 1.570 or 
Sec. 1.977 an amendment naming only the actual inventor or inventors. 
The petition must be submitted as part of the reexamination proceeding 
and must satisfy the requirements of Sec. 1.324.
    (2) Notwithstanding the preceding paragraph (1)(1) of this section, 
if a petition to correct inventorship satisfying the requirements of 
Sec. 1.324 is filed in a reexamination proceeding, and the reexamination 
proceeding is terminated other than by a reexamination certificate under 
Sec. 1.570 or Sec. 1.977, a certificate of correction indicating the 
change of inventorship stated in the petition will be issued upon 
request by the patentee.

[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997; 65 
FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000]



Sec. 1.535  Reply by third party requester in ex parte reexamination.

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

[65 FR 76776, Dec. 7, 2000]



Sec. 1.540  Consideration of responses in ex parte reexamination.

    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 ex parte reexamination requester 
pursuant to Sec. 1.535 will be considered prior to examination.

[65 FR 76776, Dec. 7, 2000]



Sec. 1.550  Conduct of ex parte reexamination proceedings.

    (a) All ex parte reexamination proceedings, including any appeals to 
the Board of Patent Appeals and Interferences, will be conducted with 
special dispatch within the Office. After issuance of the ex parte 
reexamination order and expiration of the time for submitting any 
responses, the examination will be conducted in accordance with 
Secs. 1.104 through 1.116 and will result in the issuance of an ex parte 
reexamination certificate under Sec. 1.570.
    (b) The patent owner in an ex parte reexamination proceeding will be 
given at least thirty days to respond to any Office action. In response 
to any rejection, such response may include further statements and/or 
proposed amendments or new claims to place the patent in a condition 
where all claims, if amended as proposed, would be patentable.
    (c) The time for taking any action by a patent owner in an ex parte 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any

[[Page 136]]

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 or any written statement of an interview 
required under Sec. 1.560(b), the ex parte 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) If a response by the patent owner is not timely filed in the 
Office,
    (1) The delay in filing such response may be excused if it is shown 
to the satisfaction of the Commissioner that the delay was unavoidable; 
a petition to accept an unavoidably delayed response must be filed in 
compliance with Sec. 1.137(a); or
    (2) The response may nevertheless be accepted if the delay was 
unintentional; a petition to accept an unintentionally delayed response 
must be filed in compliance with Sec. 1.137(b).
    (f) The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. After 
filing of a request for ex parte reexamination by a third party 
requester, any document filed by either the patent owner or the third 
party requester must be served on the other party in the reexamination 
proceeding in the manner provided by Sec. 1.248. The document must 
reflect service or the document may be refused consideration by the 
Office.
    (g) The active participation of the ex parte reexamination requester 
ends with the reply pursuant to 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:
    (1) in accordance with Sec. 1.510 or Sec. 1.535; or
    (2) entered in the patent file prior to the date of the order for ex 
parte reexamination pursuant to Sec. 1.525.
    (h) Submissions by third parties, filed after the date of the order 
for ex parte reexamination pursuant to Sec. 1.525, must meet the 
requirements of and will be treated in accordance with Sec. 1.501(a).

[65 FR 76776, Dec. 7, 2000]



Sec. 1.552  Scope of reexamination in ex parte reexamination proceedings.

    (a) Claims in an ex parte reexamination proceeding will be examined 
on the basis of patents or printed publications and, with respect to 
subject matter added or deleted in the reexamination proceeding, on the 
basis of the requirements of 35 U.S.C. 112.
    (b) Claims in an ex parte reexamination proceeding will not be 
permitted to enlarge the scope of the claims of the patent.
    (c) Issues other than those indicated in paragraphs (a) and (b) of 
this section will not be resolved in a reexamination proceeding. If such 
issues are raised by the patent owner or third party requester during a 
reexamination proceeding, the existence of such issues will be noted by 
the examiner in the next Office action, in which case the patent owner 
may consider the advisability of filing a reissue application to have 
such issues considered and resolved.

[65 FR 76776, Dec. 7, 2000]



Sec. 1.555  Information material to patentability in ex parte reexamination and inter partes reexamination proceedings.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective reexamination 
occurs when, at the time a reexamination proceeding is being conducted, 
the Office is aware of and evaluates the teachings of all information 
material to patentability in a reexamination proceeding. Each individual 
associated with the patent owner in a reexamination proceeding has a 
duty of candor and good faith in dealing with the Office, which includes 
a duty to disclose to the Office all information known to that 
individual to be material to patentability in a reexamination 
proceeding. The individuals who have a duty to disclose to the Office 
all information known to them to be material to patentability in a 
reexamination proceeding are the patent owner, each attorney or agent 
who represents the patent owner, and

[[Page 137]]

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

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

[57 FR 2036, Jan 17, 1992, as amended at 65 FR 76776, Dec. 7, 2000]



Sec. 1.560  Interviews in ex parte reexamination proceedings.

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

[[Page 138]]

must be filed as a separate part of a response to an Office action 
outstanding at the time of the interview, or as a separate paper within 
one month from the date of the interview, whichever is later.

[65 FR 76777, Dec. 7, 2000]



Sec. 1.565  Concurrent office proceedings which include an ex parte reexamination proceeding.

    (a) In an ex parte reexamination proceeding before the Office, the 
patent owner must inform the Office of any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissues, ex parte reexaminations, inter partes 
reexaminations, or litigation and the results of such proceedings. See 
Sec. 1.985 for notification of prior or concurrent proceedings in an 
inter partes reexamination proceeding.
    (b) If a patent in the process of ex parte reexamination is or 
becomes involved in litigation, the Commissioner shall determine whether 
or not to suspend the reexamination. See Sec. 1.987 for inter partes 
reexamination proceedings.
    (c) If ex parte reexamination is ordered while a prior ex parte 
reexamination proceeding is pending and prosecution in the prior ex 
parte reexamination proceeding has not been terminated, the ex parte 
reexamination proceedings will be consolidated and result in the 
issuance of a single certificate under Sec. 1.570. For merger of inter 
partes reexamination proceedings, see Sec. 1.989(a). For merger of ex 
parte reexamination and inter partes reexamination proceedings, see 
Sec. 1.989(b).
    (d) If a reissue application and an ex parte 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 suspend one of the two proceedings. 
Where merger of a reissue application and an ex parte reexamination 
proceeding is ordered, the merged examination will be conducted in 
accordance with 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 ex parte reexamination proceeding during the 
pendency of the merged proceeding. The examiner's actions and responses 
by the patent owner in a merged proceeding will apply to both the 
reissue application and the ex parte reexamination proceeding and be 
physically entered into both files. Any ex parte reexamination 
proceeding merged with a reissue application shall be terminated by the 
grant of the reissued patent. For merger of a reissue application and an 
inter partes reexamination, see Sec. 1.991.
    (e) If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Commissioner may suspend the 
reexamination or the interference. The Commissioner will not consider a 
request to suspend an interference unless a motion (Sec. 1.635) to 
suspend the interference has been presented to, and denied by, an 
administrative patent judge, and the request is filed within ten (10) 
days of a decision by an administrative patent judge denying the motion 
for suspension or such other time as the administrative patent judge may 
set. For concurrent inter partes reexamination and interference of a 
patent, see Sec. 1.993.

[65 FR 76776, Dec. 7, 2000]

                   Ex Parte Reexamination Certificate



Sec. 1.570  Issuance of ex parte reexamination certificate after ex parte reexamination proceedings.

    (a) Upon the conclusion of ex parte reexamination proceedings, the 
Commissioner will issue an ex parte reexamination certificate in 
accordance with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.
    (b) An ex parte reexamination certificate will be issued in each 
patent in which an ex parte reexamination proceeding has been ordered 
under Sec. 1.525 and has not been merged with any inter partes 
reexamination proceeding pursuant to Sec. 1.989(a). Any statutory 
disclaimer filed by the patent owner will be made part of the ex parte 
reexamination certificate.
    (c) The ex parte reexamination certificate will be mailed on the day 
of its date to the patent owner at the address as provided for in 
Sec. 1.33(c). A copy of the ex parte reexamination certificate

[[Page 139]]

will also be mailed to the requester of the ex parte reexamination 
proceeding.
    (d) If an ex parte reexamination certificate has been issued which 
cancels all of the claims of the patent, no further Office proceedings 
will be conducted with that patent or any reissue applications or any 
reexamination requests relating thereto.
    (e) If the ex parte reexamination proceeding is terminated by the 
grant of a reissued patent as provided in Sec. 1.565(d), the reissued 
patent will constitute the ex parte reexamination certificate required 
by this section and 35 U.S.C. 307.
    (f) A notice of the issuance of each ex parte reexamination 
certificate under this section will be published in the Official Gazette 
on its date of issuance.

[65 FR 76777, Dec. 7, 2000]



                        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. When there is more than one 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

[[Page 140]]

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.
    (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; 65 FR 56793, Sept. 
20, 2000; 65 FR 70490, Nov. 24, 2000]



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

[[Page 141]]

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 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 application 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.

[65 FR 70490, Nov. 24, 2000]



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,

[[Page 142]]

    (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, 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

[[Page 143]]

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  [Reserved]



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

[[Page 144]]

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.
    (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

[[Page 145]]

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 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

[[Page 146]]

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 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]

[[Page 147]]



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 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]

[[Page 148]]



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 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]

[[Page 149]]



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 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.

[[Page 150]]

    (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]



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

[[Page 151]]

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 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

[[Page 152]]

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 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:

[[Page 153]]

    (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.
    (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

[[Page 154]]

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.
    (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]

[[Page 155]]



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, 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

[[Page 156]]

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 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

[[Page 157]]

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 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

[[Page 158]]

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 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

[[Page 159]]

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.
    (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

[[Page 160]]

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 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).

[[Page 161]]

    (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 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

[[Page 162]]

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]



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.

[[Page 163]]

    (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:
    (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

[[Page 164]]

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 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.

[[Page 165]]



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 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

[[Page 166]]

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).



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(h) 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; 65 FR 54679, Sept. 
8, 2000]



Sec. 1.671  Evidence must comply with rules.

    (a) Evidence consists of affidavits, transcripts of depositions, 
documents and things.
    (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

[[Page 167]]

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 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 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), 
Sec. 1.640(e)(3), or Sec. 1.672, 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

[[Page 168]]

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; 65 FR 56793, Sept. 20, 2000; 65 FR 70490, Nov. 
24, 2000]



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 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

[[Page 169]]

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 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

[[Page 170]]

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
    (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.

[[Page 171]]

    (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:
    (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

[[Page 172]]

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]



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]



Secs. 1.682-1.684  [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]



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

[[Page 173]]

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  [Reserved]



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--Adjustment and Extension of Patent Term

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

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

           Adjustment of Patent Term Due to Examination Delay



Sec. 1.701  Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or 
          after June 8, 1995, and before May 29, 2000).

    (a) A patent, other than for designs, issued on an application filed 
on or after June 8, 1995, is entitled to extension of the patent term if 
the issuance of the patent was delayed due to:
    (1) Interference 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 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

[[Page 174]]

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.
    (e) The provisions of this section apply only to original patents, 
except for design patents, issued on applications filed on or after June 
8, 1995, and before May 29, 2000.

[60 FR 20228, Apr. 25, 1995, as amended at 65 FR 56391, Sept. 18, 2000]



Sec. 1.702  Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than 
          designs, filed on or after May 29, 2000).

    (a) Failure to take certain actions within specified time frames. 
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term 
of an original patent shall be adjusted if the issuance of the patent 
was delayed due to the failure of the Office to:
    (1) Mail at least one of a notification under 35 U.S.C. 132 or a 
notice of allowance under 35 U.S.C. 151 not later than fourteen months 
after the date on which the application was filed under 35 U.S.C. 111(a) 
or fulfilled the requirements of 35 U.S.C. 371 in an international 
application;
    (2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken 
under 35 U.S.C. 134 not later than four months

[[Page 175]]

after the date on which the reply was filed or the appeal was taken;
    (3) Act on an application not later than four months after the date 
of a decision by the Board of Patent Appeals and Interferences under 35 
U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 
145, or 146 where at least one allowable claim remains in the 
application; or
    (4) Issue a patent not later than four months after the date on 
which the issue fee was paid under 35 U.S.C. 151 and all outstanding 
requirements were satisfied.
    (b) Failure to issue a patent within three years of the actual 
filing date of the application. Subject to the provisions of 35 U.S.C. 
154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the failure of 
the Office to issue a patent within three years after the date on which 
the application was filed under 35 U.S.C. 111(a) or the national stage 
commenced under 35 U.S.C. 371(b) or (f) in an international application, 
but not including:
    (1) Any time consumed by continued examination of the application 
under 35 U.S.C. 132(b);
    (2) Any time consumed by an interference proceeding under 35 U.S.C. 
135(a);
    (3) Any time consumed by the imposition of a secrecy order under 35 
U.S.C. 181;
    (4) Any time consumed by review by the Board of Patent Appeals and 
Interferences or a Federal court; or
    (5) Any delay in the processing of the application by the Office 
that was requested by the applicant.
    (c) Delays caused by interference proceedings. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the patent was delayed due 
to interference proceedings under 35 U.S.C. 135(a).
    (d) Delays caused by secrecy order. Subject to the provisions of 35 
U.S.C. 154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the 
application being placed under a secrecy order under 35 U.S.C. 181.
    (e) Delays caused by successful appellate review. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the patent was delayed due 
to review by the Board of Patent Appeals and Interferences under 35 
U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued pursuant to a decision reversing an adverse 
determination of patentability.
    (f) The provisions of this section and Secs. 1.703 through 1.705 
apply only to original applications, except applications for a design 
patent, filed on or after May 29, 2000, and patents issued on such 
applications.

[65 FR 56391, Sept. 18, 2000]



Sec. 1.703  Period of adjustment of patent term due to examination delay.

    (a) The period of adjustment under Sec. 1.702(a) is the sum of the 
following periods:
    (1) The number of days, if any, in the period beginning on the day 
after the date that is fourteen months after the date on which the 
application was filed under 35 U.S.C. 111(a) or fulfilled the 
requirements of 35 U.S.C. 371 and ending on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (2) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply under 
Sec. 1.111 was filed and ending on the date of mailing of either an 
action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 
151, whichever occurs first;
    (3) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply in compliance 
with Sec. 1.113(c) was filed and ending on the date of mailing of either 
an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 
151, whichever occurs first;
    (4) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date an appeal brief in 
compliance with Sec. 1.192 was filed and ending on the date of mailing 
of any of an examiner's answer under Sec. 1.193, an action under 35 
U.S.C. 132, or a notice of allowance

[[Page 176]]

under 35 U.S.C. 151, whichever occurs first;
    (5) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date of a final decision by 
the 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 or 
146 where at least one allowable claim remains in the application and 
ending on the date of mailing of either an action under 35 U.S.C. 132 or 
a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
    (6) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date the issue fee was paid 
and all outstanding requirements were satisfied and ending on the date a 
patent was issued.
    (b) The period of adjustment under Sec. 1.702(b) is the number of 
days, if any, in the period beginning on the day after the date that is 
three years after the date on which the application was filed under 35 
U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or 
(f) in an international application and ending on the date a patent was 
issued, but not including the sum of the following periods:
    (1) The number of days, if any, in the period beginning on the date 
on which a request for continued examination of the application under 35 
U.S.C. 132(b) was filed and ending on the date the patent was issued;
    (2)(i) The number of days, if any, in the period beginning on the 
date an 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 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;
    (3)(i) The number of days, if any, the application was maintained in 
a sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec. 1.193 in the application 
under secrecy order and ending on the date the secrecy order was 
removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference would be declared but 
for the secrecy order and ending on the date the secrecy order was 
removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) of this chapter and ending on the date 
of mailing of the notice of allowance under 35 U.S.C. 151; and,
    (4) The number of days, if any, in the period beginning on the date 
on which a notice of appeal to the Board of Patent Appeals and 
Interferences was filed under 35 U.S.C. 134 and Sec. 1.191 and ending on 
the date of the last decision 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, or on the date of mailing of either 
an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 
151, whichever occurs first, if the appeal did not result in a decision 
by the Board of Patent Appeals and Interferences.
    (c) The period of adjustment under Sec. 1.702(c) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, in the period beginning on the date 
an interference 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
    (2) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Office due to 
interference proceedings under 35 U.S.C. 135(a) not involving the 
application and ending on the date of the termination of the suspension.
    (d) The period of adjustment under Sec. 1.702(d) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;

[[Page 177]]

    (2) 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 was 
removed;
    (3) 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 was removed; 
and
    (4) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) of this chapter and ending on the date 
of mailing of the notice of allowance under 35 U.S.C. 151.
    (e) The period of adjustment under Sec. 1.702(e) is the sum of the 
number of days, if any, in the period beginning on the date on which a 
notice of appeal to the Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 and Sec. 1.191 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.
    (f) The adjustment will run from the expiration date of the patent 
as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of 
adjustment attributable to the grounds specified in Sec. 1.702 overlap, 
the period of adjustment granted under this section shall not exceed the 
actual number of days the issuance of the patent was delayed. The term 
of a patent entitled to adjustment under Sec. 1.702 and this section 
shall be adjusted for the sum of the periods calculated under paragraphs 
(a) through (e) of this section, to the extent that such periods are not 
overlapping, less the sum of the periods calculated under Sec. 1.704. 
The date indicated on any certificate of mailing or transmission under 
Sec. 1.8 shall not be taken into account in this calculation.
    (g) No patent, the term of which has been disclaimed beyond a 
specified date, shall be adjusted under Sec. 1.702 and this section 
beyond the expiration date specified in the disclaimer.

[65 FR 56392, Sept. 18, 2000]



Sec. 1.704  Reduction of period of adjustment of patent term.

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

[[Page 178]]

    (2) Deferral of issuance of a patent under Sec. 1.314, in which case 
the period of adjustment set forth in Sec. 1.703 shall be reduced by the 
number of days, if any, beginning on the date a request for deferral of 
issuance of a patent under Sec. 1.314 was filed and ending on the date 
the patent was issued;
    (3) Abandonment of the application or late payment of the issue fee, 
in which case the period of adjustment set forth in Sec. 1.703 shall be 
reduced by the number of days, if any, beginning on the date of 
abandonment or the date after the date the issue fee was due and ending 
on the earlier of:
    (i) The date of mailing of the decision reviving the application or 
accepting late payment of the issue fee; or
    (ii) The date that is four months after the date the grantable 
petition to revive the application or accept late payment of the issue 
fee was filed;
    (4) Failure to file a petition to withdraw the holding of 
abandonment or to revive an application within two months from the 
mailing date of a notice of abandonment, in which case the period of 
adjustment set forth in Sec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date two months from the 
mailing date of a notice of abandonment and ending on the date a 
petition to withdraw the holding of abandonment or to revive the 
application was filed;
    (5) Conversion of a provisional application under 35 U.S.C. 111(b) 
to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 
U.S.C. 111(b)(5), in which case the period of adjustment set forth in 
Sec. 1.703 shall be reduced by the number of days, if any, beginning on 
the date the application was filed under 35 U.S.C. 111(b) and ending on 
the date a request in compliance with Sec. 1.53(c)(3) to convert the 
provisional application into a nonprovisional application was filed;
    (6) Submission of a preliminary amendment or other preliminary paper 
less than one month before the mailing of an Office action under 35 
U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the 
mailing of a supplemental Office action or notice of allowance, in which 
case the period of adjustment set forth in Sec. 1.703 shall be reduced 
by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the date of mailing of the supplemental Office action or 
notice of allowance; or
    (ii) Four months;
    (7) Submission of a reply having an omission (Sec. 1.135(c)), in 
which case the period of adjustment set forth in Sec. 1.703 shall be 
reduced by the number of days, if any, beginning on the day after the 
date the reply having an omission was filed and ending on the date that 
the reply or other paper correcting the omission was filed;
    (8) Submission of a supplemental reply or other paper, other than a 
supplemental reply or other paper expressly requested by the examiner, 
after a reply has been filed, in which case the period of adjustment set 
forth in Sec. 1.703 shall be reduced by the number of days, if any, 
beginning on the day after the date the initial reply was filed and 
ending on the date that the supplemental reply or other such paper was 
filed;
    (9) Submission of an amendment or other paper after a decision by 
the Board of Patent Appeals and Interferences, other than a decision 
designated as containing a new ground of rejection under Sec. 1.196(b) 
or statement under Sec. 1.196(c), or a decision by a Federal court, less 
than one month before the mailing of an Office action under 35 U.S.C. 
132 or notice of allowance under 35 U.S.C. 151 that requires the mailing 
of a supplemental Office action or supplemental notice of allowance, in 
which case the period of adjustment set forth in Sec. 1.703 shall be 
reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the mailing date of the supplemental Office action or notice 
of allowance; or
    (ii) Four months;
    (10) Submission of an amendment under Sec. 1.312 or other paper 
after a notice of allowance has been given or mailed, in which case the 
period of adjustment set forth in Sec. 1.703 shall be reduced by the 
lesser of:
    (i) The number of days, if any, beginning on the date the amendment 
under

[[Page 179]]

Sec. 1.312 or other paper was filed and ending on the mailing date of 
the Office action or notice in response to the amendment under 
Sec. 1.312 or such other paper; or
    (ii) Four months; and
    (11) Further prosecution via a continuing application, in which case 
the period of adjustment set forth in Sec. 1.703 shall not include any 
period that is prior to the actual filing date of the application that 
resulted in the patent.
    (d) A paper containing only an information disclosure statement in 
compliance with Secs. 1.97 and 1.98 will not be considered a failure to 
engage in reasonable efforts to conclude prosecution (processing or 
examination) of the application under paragraphs (c)(6), (c)(8), (c)(9), 
or (c)(10) of this section if it is accompanied by a statement that each 
item of information contained in the information disclosure statement 
was cited in a communication from a foreign patent office in a 
counterpart application and that this communication was not received by 
any individual designated in Sec. 1.56(c) more than thirty days prior to 
the filing of the information disclosure statement. This thirty-day 
period is not extendable.
    (e) Submission of an application for patent term adjustment under 
Sec. 1.705(b) (with or without request under Sec. 1.705(c) for 
reinstatement of reduced patent term adjustment) will not be considered 
a failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraph (c)(10) 
of this section.

[65 FR 56393, Sept. 18, 2000]



Sec. 1.705  Patent term adjustment determination.

    (a) The notice of allowance will include notification of any patent 
term adjustment under 35 U.S.C. 154(b).
    (b) Any request for reconsideration of the patent term adjustment 
indicated in the notice of allowance, except as provided in paragraph 
(d) of this section, and any request for reinstatement of all or part of 
the term reduced pursuant to Sec. 1.704(b) must be by way of an 
application for patent term adjustment. An application for patent term 
adjustment under this section must be filed no later than the payment of 
the issue fee but may not be filed earlier than the date of mailing of 
the notice of allowance. An application for patent term adjustment under 
this section must be accompanied by:
    (1) The fee set forth in Sec. 1.18(e); and
    (2) A statement of the facts involved, specifying:
    (i) The correct patent term adjustment and the basis or bases under 
Sec. 1.702 for the adjustment;
    (ii) The relevant dates as specified in Secs. 1.703(a) through (e) 
for which an adjustment is sought and the adjustment as specified in 
Sec. 1.703(f) to which the patent is entitled;
    (iii) Whether the patent is subject to a terminal disclaimer and any 
expiration date specified in the terminal disclaimer; and
    (iv)(A) Any circumstances during the prosecution of the application 
resulting in the patent that constitute a failure to engage in 
reasonable efforts to conclude processing or examination of such 
application as set forth in Sec. 1.704; or
    (B) That there were no circumstances constituting a failure to 
engage in reasonable efforts to conclude processing or examination of 
such application as set forth in Sec. 1.704.
    (c) Any application for patent term adjustment under this section 
that requests reinstatement of all or part of the period of adjustment 
reduced pursuant to Sec. 1.704(b) for failing to reply to a rejection, 
objection, argument, or other request within three months of the date of 
mailing of the Office communication notifying the applicant of the 
rejection, objection, argument, or other request must also be 
accompanied by:
    (1) The fee set forth in Sec. 1.18(f); and
    (2) A showing to the satisfaction of the Commissioner that, in spite 
of all due care, the applicant was unable to reply to the rejection, 
objection, argument, or other request within three months of the date of 
mailing of the Office communication notifying the applicant of the 
rejection, objection, argument, or other request. The Office shall not 
grant any request for reinstatement for more than three additional 
months for each reply beyond three months from the date of mailing of 
the Office communication notifying

[[Page 180]]

the applicant of the rejection, objection, argument, or other request.
    (d) If the patent is issued on a date other than the projected date 
of issue and this change necessitates a revision of the patent term 
adjustment indicated in the notice of allowance, the patent will 
indicate the revised patent term adjustment. If the patent indicates a 
revised patent term adjustment due to the patent being issued on a date 
other than the projected date of issue, any request for reconsideration 
of the patent term adjustment indicated in the patent must be filed 
within thirty days of the date the patent issued and must comply with 
the requirements of paragraphs (b)(1) and (b)(2) of this section.
    (e) The periods set forth in this section are not extendable.
    (f) No submission or petition on behalf of a third party concerning 
patent term adjustment under 35 U.S.C. 154(b) will be considered by the 
Office. Any such submission or petition will be returned to the third 
party, or otherwise disposed of, at the convenience of the Office.

[65 FR 56394, Sept. 18, 2000]

            Extension of Patent Term Due to Regulatory Review



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--
    (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 extensions issued pursuant to Secs. 1.701, 1.760, or 
Sec. 1.790;
    (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

[[Page 181]]

the claims in any other patent that has been extended, and has received 
permission for the commercial marketing or use in non-food-producing 
animals and in food-producing animals, and was not extended on the basis 
of the regulatory review period for use in non-food-producing animals, 
the permission for the commercial marketing or use of the drug or 
product after the regulatory review period for use in food-producing 
animals is the first permitted commercial marketing or use of the drug 
or product for administration to a food-producing animal.
    (f) The application is submitted within the sixty-day period 
beginning on the date the product first received permission for 
commercial marketing or use under the provisions of law under which the 
applicable regulatory review period occurred; or in the case of a patent 
claiming a method of manufacturing the product which primarily uses 
recombinant DNA technology in the manufacture of the product, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of a product manufactured under the process claimed in the patent; or in 
the case of a patent that claims a new animal drug or a veterinary 
biological product that is not covered by the claims in any other patent 
that has been extended, and said drug or product has received permission 
for the commercial marketing or use in non-food-producing animals, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of the drug or product for administration to a food-producing animal;
    (g) The term of the patent, including any interim extension issued 
pursuant to Sec. 1.790, has not expired before the submission of an 
application in compliance with Sec. 1.741; and
    (h) No other patent term has been extended for the same regulatory 
review period for the product.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 65 
FR 54679, Sept. 8, 2000]



Sec. 1.730  Applicant for extension of patent term; signature requirements.

    (a) Any application for extension of a patent term must be submitted 
by the owner of record of the patent or its agent and must comply with 
the requirements of Sec. 1.740.
    (b) If the application is submitted by the patent owner, the 
application must be signed either by:
    (1) The patent owner in compliance with Sec. 3.73(b) of this 
chapter; or
    (2) A registered practitioner on behalf of the patent owner.
    (c) If the application is submitted on behalf of the patent owner by 
an agent of the patent owner (e.g., a licensee of the patent owner), the 
application must be signed by a registered practitioner on behalf of the 
agent. The Office may require proof that the agent is authorized to act 
on behalf of the patent owner.
    (d) If the application is signed by a registered practitioner, the 
Office may require proof that the practitioner is authorized to act on 
behalf of the patent owner or agent of the patent owner.

[65 FR 54679, Sept. 8, 2000]



Sec. 1.740  Formal requirements for application for extension of patent term; correction of informalities.

    (a) An application for extension of patent term must be made in 
writing to the Commissioner. A formal application for the extension of 
patent term must include:
    (1) A complete identification of the approved product as by 
appropriate chemical and generic name, physical structure or 
characteristics;
    (2) A complete identification of the Federal statute including the 
applicable provision of law under which the regulatory review occurred;
    (3) An identification of the date on which the product received 
permission for commercial marketing or use under the provision of law 
under which the applicable regulatory review period occurred;
    (4) In the case of a drug product, an identification of each active 
ingredient in the product and as to each active ingredient, a statement 
that it has not

[[Page 182]]

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 at least one such patent claim reads on:
    (i) The approved product, if the listed claims include any claim to 
the approved product;
    (ii) The method of using the approved product, if the listed claims 
include any claim to the method of using the approved product; and
    (iii) The method of manufacturing the approved product, if the 
listed claims include any claim to the method of manufacturing the 
approved product;
    (10) A statement beginning on a new page of the relevant dates and 
information pursuant to 35 U.S.C. 156(g) in order to enable the 
Secretary of Health and Human Services or the Secretary of Agriculture, 
as appropriate, to determine the applicable regulatory review period as 
follows:
    (i) For a patent claiming a human drug, antibiotic, or human 
biological product:
    (A) The effective date of the investigational new drug (IND) 
application and the IND number;
    (B) The date on which a new drug application (NDA) or a Product 
License Application (PLA) was initially submitted and the NDA or PLA 
number; and
    (C) The date on which the NDA was approved or the Product License 
issued;
    (ii) For a patent claiming a new animal drug:
    (A) The date a major health or environmental effects test on the 
drug was initiated, and any available substantiation of that date, or 
the date of an exemption under subsection (j) of Section 512 of the 
Federal Food, Drug, and Cosmetic Act became effective for such animal 
drug;
    (B) The date on which a new animal drug application (NADA) was 
initially submitted and the NADA number; and
    (C) The date on which the NADA was approved;
    (iii) For a patent claiming a veterinary biological product:
    (A) The date the authority to prepare an experimental biological 
product under the Virus-Serum-Toxin Act became effective;
    (B) The date an application for a license was submitted under the 
Virus-Serum-Toxin Act; and
    (C) The date the license issued;
    (iv) For a patent claiming a food or color additive:
    (A) The date a major health or environmental effects test on the 
additive was initiated and any available substantiation of that date;
    (B) The date on which a petition for product approval under the 
Federal Food, Drug and Cosmetic Act was initially submitted and the 
petition number; and
    (C) The date on which the FDA published a Federal Register notice 
listing the additive for use;
    (v) For a patent claiming a medical device:
    (A) The effective date of the investigational device exemption (IDE) 
and the IDE number, if applicable, or the date on which the applicant 
began the

[[Page 183]]

first clinical investigation involving the device, if no IDE was 
submitted, and any available substantiation of that date;
    (B) The date on which the application for product approval or notice 
of completion of a product development protocol under Section 515 of the 
Federal Food, Drug and Cosmetic Act was initially submitted and the 
number of the application; and
    (C) The date on which the application was approved or the protocol 
declared to be completed;
    (11) A brief description beginning on a new page of the significant 
activities undertaken by the marketing applicant during the applicable 
regulatory review period with respect to the approved product and the 
significant dates applicable to such activities;
    (12) A statement beginning on a new page that in the opinion of the 
applicant the patent is eligible for the extension and a statement as to 
the length of extension claimed, including how the length of extension 
was determined;
    (13) A statement that applicant acknowledges a duty to disclose to 
the 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)); and
    (15) The name, address, and telephone number of the person to whom 
inquiries and correspondence relating to the application for patent term 
extension are to be directed.
    (b) The application under this section must be accompanied by two 
additional copies of such application (for a total of three copies).
    (c) If an application for extension of patent term is informal under 
this section, the Office will so notify the applicant. The applicant has 
two months from the mail date of the notice, or such time as is set in 
the notice, within which to correct the informality. Unless the notice 
indicates otherwise, this time period may be extended under the 
provisions of Sec. 1.136.

[54 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 56 
FR 65155, Dec. 13, 1991; 65 FR 54679, Sept. 8, 2000]



Sec. 1.741  Complete application given a filing date; petition procedure.

    (a) The filing date of an application for extension of a patent term 
is the date on which a complete application is received in the Office or 
filed pursuant to the procedures set forth in Sec. 1.8 or Sec. 1.10. A 
complete application must include:
    (1) An identification of the approved product;
    (2) An identification of each Federal statute under which regulatory 
review occurred;
    (3) An identification of the patent for which an extension is being 
sought;
    (4) An identification of each claim of the patent which claims the 
approved product or a method of using or manufacturing the approved 
product;
    (5) Sufficient information to enable the Commissioner to determine 
under subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a 
patent for extension, and the rights that will be derived from the 
extension, and information to enable the 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 an application for extension of patent term is incomplete 
under this section, the Office will so notify the applicant. If 
applicant requests review of a notice that an application is incomplete, 
or review of the filing date accorded an application under this section, 
applicant must file a petition pursuant to this paragraph accompanied by 
the fee set forth in Sec. 1.17(h) within two months of the mail date of 
the notice that the application is incomplete, or the notice according 
the filing date complained of. Unless the notice indicates otherwise, 
this time period may

[[Page 184]]

be extended under the provisions of Sec. 1.136.

[52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61 
FR 64028, Dec. 3, 1996; 65 FR 54680, Sept. 8, 2000]



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 Official Gazette of the United States Patent and 
Trademark Office. The notice will be recorded in the official file of 
the patent and will be considered as part of the original patent. In no 
event will the interim extensions granted under this section be longer 
than the maximum period for extension to which the applicant would be 
eligible.

[65 FR 54680, Sept. 8, 2000]



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,

[[Page 185]]

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]



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

[[Page 186]]

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

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30381, July 20, 1989]



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

[[Page 187]]

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



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

[[Page 188]]

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 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

[[Page 189]]

    (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;
    (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

[[Page 190]]

(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 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

[[Page 191]]

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

[65 FR 54680, Sept. 8, 2000]



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 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

[[Page 192]]

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 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.

[[Page 193]]



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
    (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.

[[Page 194]]

    (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.
    (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.

[[Page 195]]

    (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.
    (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

[[Page 196]]

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 reply to a 
rejection under paragraph (a) of this section by--
    (1) In the case of an applicant for patent, either making an 
acceptable original, replacement, or supplemental deposit, or assuring 
the Office in writing that an acceptable deposit will be made; or, in 
the case of a patent owner, requesting a certificate of correction of 
the patent which meets the terms of paragraphs (b) and (c) of 
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 nonresponsive. The rejection will be repeated until either 
paragraph (b)(1) of this section is satisfied or the examiner is 
convinced that a deposit is not needed.
    (c) If an application for patent is otherwise in condition for 
allowance except for a needed deposit and the Office has received a 
written assurance that an acceptable deposit will be made, applicant 
will be notified and given a period of time within which the deposit 
must be made in order to avoid abandonment. This time period is not 
extendable under Sec. 1.136(a) or (b) if set forth in a ``Notice of 
Allowability'' or in an Office action having a mail date on or after the 
mail date of a ``Notice of Allowability'' (see Sec. 1.136(c)).
    (d) For each deposit made pursuant to these regulations, the 
specification shall contain:
    (1) The accession number for the deposit;
    (2) The date of the deposit;
    (3) A description of the deposited biological material sufficient to 
specifically identify it and to permit examination; and
    (4) The name and address of the depository.
    (e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of 
this section must be filed before or with the payment of the issue fee 
(see Sec. 1.312).

[54 FR 34880, Aug. 22, 1989, as amended at 66 FR 21092, Apr. 27, 2001]

    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.

[[Page 197]]



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 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 or compact disc copy (see Sec. 1.52(e)) disclosing 
the nucleotide and/or amino acid sequences and associated information 
using the symbols and format in accordance with the requirements of 
Secs. 1.822 and 1.823. This paper or compact disc copy is referred to 
elsewhere in this subpart as the ``Sequence Listing.'' Each sequence 
disclosed must appear separately in the ``Sequence Listing.'' Each 
sequence set forth in the ``Sequence Listing'' must be assigned a 
separate sequence identifier. The sequence identifiers must begin with 1 
and increase sequentially by integers. If no sequence is present for a 
sequence identifier, the code ``000'' must be used in place of the 
sequence. The response for the numeric identifier 160> must include the 
total number of SEQ ID NOs, whether followed by a sequence or by the 
code ``000.''

[[Page 198]]

    (d) Where the description or claims of a patent application discuss 
a sequence that is set forth in the ``Sequence Listing'' in accordance 
with paragraph (c) of this section, reference must be made to the 
sequence by use of the sequence identifier, preceded by ``SEQ ID NO:'' 
in the text of the description or claims, even if the sequence is also 
embedded in the text of the description or claims of the patent 
application.
    (e) A copy of the ``Sequence Listing'' referred to in paragraph (c) 
of this section must also be submitted in computer readable form (CRF) 
in accordance with the requirements of Sec. 1.824. The computer readable 
form must be a copy of the ``Sequence Listing'' and may not be retained 
as a part of the patent application file. If the computer readable form 
of a new application is to be identical with the computer readable form 
of another application of the applicant on file in the Office, reference 
may be made to the other application and computer readable form in lieu 
of filing a duplicate computer readable form in the new application if 
the computer readable form in the other application was compliant with 
all of the requirements of this subpart. The new application must be 
accompanied by a letter making such reference to the other application 
and computer readable form, both of which shall be completely 
identified. In the new application, applicant must also request the use 
of the compliant computer readable ``Sequence Listing'' that is already 
on file for the other application and must state that the paper or 
compact disc copy of the ``Sequence Listing'' in the new application is 
identical to the computer readable copy filed for the other application.
    (f) In addition to the paper or compact disc copy required by 
paragraph (c) of this section and the computer readable form required by 
paragraph (e) of this section, a statement that the ``Sequence Listing'' 
content of the paper or compact disc copy and the computer readable copy 
are the same must be submitted with the computer readable form, e.g., a 
statement that ``the sequence listing information recorded in computer 
readable form is identical to the written (on paper or compact disc) 
sequence listing.''
    (g) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing under 35 U.S.C. 111(a) 
or at the time of entering the national stage under 35 U.S.C. 371, 
applicant will be notified and given a period of time within which to 
comply with such requirements in order to prevent abandonment of the 
application. Any submission in reply to a requirement under this 
paragraph must be accompanied by a statement that the submission 
includes no new matter.
    (h) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing an international 
application under the Patent Cooperation Treaty (PCT), which application 
is to be searched by the United States International Searching Authority 
or examined by the United States International Preliminary Examining 
Authority, applicant will be sent a notice necessitating compliance with 
the requirements within a prescribed time period. Any submission in 
reply to a requirement under this paragraph must be accompanied by a 
statement that the submission does not include matter which goes beyond 
the disclosure in the international application as filed. If applicant 
fails to timely provide the required computer readable form, the United 
States International Searching Authority shall search only to the extent 
that a meaningful search can be performed without the computer readable 
form and the United States International Preliminary Examining Authority 
shall examine only to the extent that a meaningful examination can be 
performed without the computer readable form.

[63 FR 29634, June 1, 1998, as amended at 65 FR 54680, Sept. 8, 2000]



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

[[Page 199]]

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 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

[[Page 200]]

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.

    (a)(1) If the ``Sequence Listing'' required by Sec. 1.821(c) is 
submitted on paper: The ``Sequence Listing,'' setting forth the 
nucleotide and/or amino acid sequence and associated information in 
accordance with paragraph (b) of this section, must begin on a new page 
and must be titled ``Sequence Listing.'' The pages of the ``Sequence 
Listing'' preferably should be numbered independently of the numbering 
of the remainder of the application. Each page of the ``Sequence 
Listing'' shall contain no more than 66 lines and each line shall 
contain no more than 72 characters. A fixed-width font should be used 
exclusively throughout the ``Sequence Listing.''
    (2) If the ``Sequence Listing'' required by Sec. 1.821(c) is 
submitted on compact disc: The ``Sequence Listing'' must be submitted on 
a compact disc in compliance with Sec. 1.52(e). The compact disc may 
also contain table information if the application contains table 
information that may be submitted on a compact disc 
(Sec. 1.52(e)(1)(iii)). The specification must contain an incorporation-
by-reference of the Sequence Listing as required by Sec. 1.52(e)(5). The 
presentation of the ``Sequence Listing'' and other materials on compact 
disc under Sec. 1.821(c) does not substitute for the Computer Readable 
Form that must be submitted on disk, compact disc, or tape in accordance 
with Sec. 1.824.
    (b) The ``Sequence Listing'' shall, except as otherwise indicated, 
include the actual nucleotide and/or amino acid sequence, the numeric 
identifiers and their accompanying information as shown in the following 
table. The numeric identifier shall be used only in the ``Sequence 
Listing.'' The order and presentation of the items of information in the 
``Sequence Listing'' shall conform to the arrangement given below. Each 
item of information shall begin on a new line and shall begin with the 
numeric identifier enclosed in angle brackets as shown. The submission 
of those items of information designated with an ``M'' is mandatory. The 
submission of those items of information designated with an ``O'' is 
optional. Numeric identifiers 110> through 170> shall only be set forth 
at the beginning of the ``Sequence Listing.'' The following table 
illustrates the numeric identifiers.

----------------------------------------------------------------------------------------------------------------
                                                                                      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.

[[Page 201]]

 
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.
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.

[[Page 202]]

 
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, as amended at 65 FR 54681, Sept. 8, 2000]



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 requirements:
    (1) The computer readable form shall contain a single ``Sequence 
Listing'' as either a diskette, series of diskettes, or other 
permissible media outlined in paragraph (c) of this section.
    (2) The ``Sequence Listing'' in paragraph (a)(l) of this section 
shall be submitted in American Standard Code for Information Interchange 
(ASCII) text. No other formats shall be allowed.
    (3) The computer readable form may be created by any means, such as 
word processors, nucleotide/amino acid sequence editors' or other custom 
computer programs; however, it shall conform to all requirements 
detailed in this section.
    (4) File compression is acceptable when using diskette media, so 
long as the compressed file is in a self-extracting format that will 
decompress on one of the systems described in paragraph (b) of this 
section.
    (5) Page numbering must not appear within the computer readable form 
version of the ``Sequence Listing'' file.
    (6) All computer readable forms must have a label permanently 
affixed thereto on which has been hand-printed or typed: the name of the 
applicant, the title of the invention, the date on which the data were 
recorded on the computer readable form, the operating system used, a 
reference number, and an application number and filing date, if known. 
If multiple diskettes are submitted, the diskette labels must indicate 
their order (e.g. ``1 of X'').
    (b) Computer readable form submissions must meet these format 
requirements:
    (1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
    (2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or 
Macintosh;
    (3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
    (4) Pagination: Continuous file (no ``hard page break'' codes 
permitted).
    (c) Computer readable form files submitted may be in any of the 
following media:
    (1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 
5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
    (2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 
bits per inch, 9 track; Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (4) Compact disc: Format: ISO 9660 or High Sierra Format.
    (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 
640 Mb.
    (d) Computer readable forms that are submitted to the Office will 
not be returned to the applicant.

[65 FR 54681, Sept. 8, 2000]



Sec. 1.825  Amendments to or replacement of sequence listing and computer readable copy thereof.

    (a) Any amendment to a paper copy of the ``Sequence Listing'' 
(Sec. 1.821(c)) must be made by the submission of substitute sheets and 
include a statement that the substitute sheets include no new matter. 
Any amendment to a compact disc copy of the ``Sequence Listing'' 
(Sec. 1.821(c)) must be made by the submission of a replacement compact 
disc (2 copies) in compliance with Sec. 1.52(e). Amendments must also be 
accompanied by a statement that indicates support for the amendment in 
the application, as filed, and a statement

[[Page 203]]

that the replacement compact disc includes no new matter.
    (b) Any amendment to the paper or compact disc copy of the 
``Sequence Listing,'' in accordance with paragraph (a) of this section, 
must be accompanied by a substitute copy of the computer readable form 
(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, as amended at 65 FR 54681, Sept. 8, 2000]

[[Page 204]]


       Appendix A to Subpart G to Part 1--Sample Sequence Listing
      [GRAPHIC] [TIFF OMITTED] TR01JN98.006
      

[[Page 205]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.007


[[Page 206]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.008


[[Page 207]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.009

[GRAPHIC] [TIFF OMITTED] TR01JN98.010


[[Page 208]]



[63 FR 29639, June 1, 1998]



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

    Source: 65 FR 76777, Dec. 7, 2000, unless otherwise noted.

                           Prior Art Citations



Sec. 1.902  Processing of prior art citations during an inter partes reexamination proceeding.

    Citations by the patent owner in accordance with Sec. 1.933 and by 
an inter partes reexamination third party requester under Sec. 1.915 or 
Sec. 1.948 will be entered in the inter partes reexamination file. The 
entry in the patent file of other citations submitted after the date of 
an order for reexamination pursuant to Sec. 1.931 by persons other than 
the patent owner, or the third party requester under either Sec. 1.915 
or Sec. 1.948, will be delayed until the inter partes reexamination 
proceeding has been terminated. See Sec. 1.502 for processing of prior 
art citations in patent and reexamination files during an ex parte 
reexamination proceeding filed under Sec. 1.510.

         Requirements for Inter Partes Reexamination Proceedings



Sec. 1.903  Service of papers on parties in inter partes reexamination.

    The patent owner and the third party requester will be sent copies 
of Office actions issued during the inter partes reexamination 
proceeding. After filing of a request for inter partes reexamination by 
a third party requester, any document filed by either the patent owner 
or the third party requester must be served on every other party in the 
reexamination proceeding in the manner provided in Sec. 1.248. Any 
document must reflect service or the document may be refused 
consideration by the Office. The failure of the patent owner or the 
third party requester to serve documents may result in their being 
refused consideration.



Sec. 1.904  Notice of inter partes reexamination in Official Gazette.

    A notice of the filing of an inter partes reexamination request will 
be published in the Official Gazette. The notice published in the 
Official Gazette under Sec. 1.11(c) will be considered to be 
constructive notice of the inter partes reexamination proceeding and 
inter partes reexamination will proceed.



Sec. 1.905  Submission of papers by the public in inter partes reexamination.

    Unless specifically provided for, no submissions on behalf of any 
third parties other than third party requesters as defined in 35 U.S.C. 
100(e) will be considered unless such submissions are in accordance with 
Sec. 1.915 or entered in the patent file prior to the date of the order 
for reexamination pursuant to Sec. 1.931. Submissions by third parties, 
other than third party requesters, filed after the date of the order for 
reexamination pursuant to Sec. 1.931, must meet the requirements of 
Sec. 1.501 and will be treated in accordance with Sec. 1.902. 
Submissions which do not meet the requirements of Sec. 1.501 will be 
returned.



Sec. 1.906  Scope of reexamination in inter partes reexamination proceeding.

    (a) Claims in an inter partes reexamination proceeding will be 
examined on the basis of patents or printed publications and, with 
respect to subject matter added or deleted in the reexamination 
proceeding, on the basis of the requirements of 35 U.S.C. 112.
    (b) Claims in an inter partes reexamination proceeding will not be 
permitted to enlarge the scope of the claims of the patent.
    (c) Issues other than those indicated in paragraphs (a) and (b) of 
this section will not be resolved in an inter partes reexamination 
proceeding. If such issues are raised by the patent owner or the third 
party requester during a reexamination proceeding, the existence of such 
issues will be noted by the examiner in the next Office action, in which 
case the patent owner may desire to consider the advisability of filing 
a reissue application to have such issues considered and resolved.

[[Page 209]]



Sec. 1.907  Inter partes reexamination prohibited.

    (a) Once an order to reexamine has been issued under Sec. 1.931, 
neither the third party requester, nor its privies, may file a 
subsequent request for inter partes reexamination of the patent until an 
inter partes reexamination certificate is issued under Sec. 1.997, 
unless authorized by the Commissioner.
    (b) Once a final decision has been entered against a party in a 
civil action arising in whole or in part under 28 U.S.C. 1338 that the 
party has not sustained its burden of proving invalidity of any patent 
claim-in-suit, then neither that party nor its privies may thereafter 
request inter partes reexamination of any such patent claim on the basis 
of issues which that party, or its privies, raised or could have raised 
in such civil action, and an inter partes reexamination requested by 
that party, or its privies, on the basis of such issues may not 
thereafter be maintained by the Office.
    (c) If a final decision in an inter partes reexamination proceeding 
instituted by a third party requester is favorable to patentability of 
any original, proposed amended, or new claims of the patent, then 
neither that party nor its privies may thereafter request inter partes 
reexamination of any such patent claims on the basis of issues which 
that party, or its privies, raised or could have raised in such inter 
partes reexamination proceeding.



Sec. 1.913  Persons eligible to file request for inter partes reexamination.

    Except as provided for in Sec. 1.907, any person may, at any time 
during the period of enforceability of a patent which issued from an 
original application filed in the United States on or after November 29, 
1999, file a request for inter partes reexamination by the Office of any 
claim of the patent on the basis of prior art patents or printed 
publications cited under Sec. 1.501.



Sec. 1.915  Content of request for inter partes reexamination.

    (a) The request must be accompanied by the fee for requesting inter 
partes reexamination set forth in Sec. 1.20(c)(2).
    (b) A request for inter partes reexamination must include the 
following parts:
    (1) An identification of the patent by patent number and every claim 
for which reexamination is requested.
    (2) A citation of the patents and printed publications which are 
presented to provide a substantial new question of patentability.
    (3) A statement pointing out each substantial new question of 
patentability based on the cited patents and printed publications, and a 
detailed explanation of the pertinency and manner of applying the 
patents and printed publications to every claim for which reexamination 
is requested.
    (4) A copy of every patent or printed publication relied upon or 
referred to in paragraphs (b)(1) through (3) of this section, 
accompanied by an English language translation of all the necessary and 
pertinent parts of any non-English language document.
    (5) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
    (6) A certification by the third party requester that a copy of the 
request has been served in its entirety on the patent owner at the 
address provided for in Sec. 1.33(c). The name and address of the party 
served must be indicated. If service was not possible, a duplicate copy 
of the request must be supplied to the Office.
    (7) A certification by the third party requester that the estoppel 
provisions of Sec. 1.907 do not prohibit the inter partes reexamination.
    (8) A statement identifying the real party in interest to the extent 
necessary for a subsequent person filing an inter partes reexamination 
request to determine whether that person is a privy.
    (c) If an inter partes request is filed by an attorney or agent 
identifying another party on whose behalf the request is being filed, 
the attorney or agent must have a power of attorney

[[Page 210]]

from that party or be acting in a representative capacity pursuant to 
Sec. 1.34(a).
    (d) If the inter partes request does not meet all the requirements 
of subsection 1.915(b), the person identified as requesting inter partes 
reexamination may be so notified and given an opportunity to complete 
the formal requirements of the request within a specified time. Failure 
to comply with the notice may result in the inter partes reexamination 
proceeding being vacated.



Sec. 1.919  Filing date of request for inter partes reexamination.

    (a) The filing date of a request for inter partes reexamination is 
the date on which the request satisfies the fee requirement of 
Sec. 1.915(a).
    (b) If the request is not granted a filing date, the request will be 
placed in the patent file as a citation of prior art if it complies with 
the requirements of Sec. 1.501.



Sec. 1.923  Examiner's determination on the request for inter partes reexamination.

    Within three months following the filing date of a request for inter 
partes reexamination under Sec. 1.919, the 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 citation. The examiner's determination will be based 
on the claims in effect at the time of the determination, will become a 
part of the official file of the patent, and will be mailed to the 
patent owner at the address as provided for in Sec. 1.33(c) and to the 
third party requester. If the examiner determines that no substantial 
new question of patentability is present, the examiner shall refuse the 
request and shall not order inter partes reexamination.



Sec. 1.925  Partial refund if request for inter partes reexamination is not ordered.

    Where inter partes reexamination is not ordered, a refund of a 
portion of the fee for requesting inter partes reexamination will be 
made to the requester in accordance with Sec. 1.26(c).



Sec. 1.927  Petition to review refusal to order inter partes reexamination.

    The third party requester may seek review by a petition to the 
Commissioner underSec. 1.181 within one month of the mailing date of the 
examiner's determination refusing to order inter partes reexamination. 
Any such petition must comply with 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.

                  Inter Partes Reexamination of Patents



Sec. 1.931  Order for inter partes reexamination.

    (a) If a substantial new question of patentability is found, the 
determination will include an order for inter partes reexamination of 
the patent for resolution of the question.
    (b) If the order for inter partes reexamination resulted from a 
petition pursuant to Sec. 1.927, the inter partes reexamination will 
ordinarily be conducted by an examiner other than the examiner 
responsible for the initial determination under Sec. 1.923.

          Information Disclosure in Inter Partes Reexamination



Sec. 1.933  Patent owner duty of disclosure in inter partes reexamination proceedings.

    (a) Each individual associated with the patent owner in an inter 
partes reexamination proceeding has a duty of candor and good faith in 
dealing with the Office, which includes a duty to disclose to the Office 
all information known to that individual to be material to patentability 
in a reexamination proceeding as set forth in Sec. 1.555(a) and (b). The 
duty to disclose all information known to be material to patentability 
in an inter partes reexamination proceeding is deemed to be satisfied by 
filing a paper in compliance with the requirements set forth in 
Sec. 1.555(a) and (b).
    (b) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section, and no 
evaluation will be

[[Page 211]]

made by the Office in the reexamination proceeding as to compliance with 
this section. If questions of compliance with this section are raised by 
the patent owner or the third party requester during a reexamination 
proceeding, they will be noted as unresolved questions in accordance 
with Sec. 1.906(c).

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



Sec. 1.935  Initial Office action usually accompanies order for inter partes reexamination.

    The order for inter partes reexamination will usually be accompanied 
by the initial Office action on the merits of the reexamination.



Sec. 1.937  Conduct of inter partes reexamination.

    (a) All inter partes reexamination proceedings, including any 
appeals to the Board of Patent Appeals and Interferences, will be 
conducted with special dispatch within the Office, unless the 
Commissioner makes a determination that there is good cause for 
suspending the reexamination proceeding.
    (b) The inter partes reexamination proceeding will be conducted in 
accordance with Secs. 1.104 through 1.116, the sections governing the 
application examination process, and will result in the issuance of an 
inter partes reexamination certificate under Sec. 1.997, except as 
otherwise provided.
    (c) All communications between the Office and the parties to the 
inter partes reexamination which are directed to the merits of the 
proceeding must be in writing and filed with the Office for entry into 
the record of the proceeding.



Sec. 1.939  Unauthorized papers in inter partes reexamination.

    (a) If an unauthorized paper is filed by any party at any time 
during the inter partes reexamination proceeding it will not be 
considered and may be returned.
    (b) Unless otherwise authorized, no paper shall be filed prior to 
the initial Office action on the merits of the inter partes 
reexamination.



Sec. 1.941  Amendments by patent owner in inter partes reexamination.

    Amendments by patent owner in inter partes reexamination proceedings 
are made by filing a paper in compliance with Secs. 1.530(d)-(k) and 
1.943.



Sec. 1.943  Requirements of responses, written comments, and briefs in inter partes reexamination.

    (a) The form of responses, written comments, briefs, appendices, and 
other papers must be in accordance with the requirements of Sec. 1.52.
    (b) Responses by the patent owner and written comments by the third 
party requester shall not exceed 50 pages in length, excluding 
amendments, appendices of claims, and reference materials such as prior 
art references.
    (c) Appellant's briefs filed by the patent owner and the third party 
requester shall not exceed thirty pages or 14,000 words in length, 
excluding appendices of claims and reference materials such as prior art 
references. All other briefs filed by any party shall not exceed fifteen 
pages in length or 7,000 words. If the page limit for any brief is 
exceeded, a certificate is required stating the number of words 
contained in the brief.



Sec. 1.945  Response to Office action by patent owner in inter partes reexamination.

    The patent owner will be given at least thirty days to file a 
response to any Office action on the merits of the inter partes 
reexamination.



Sec. 1.947  Comments by third party requester to patent owner's response in inter partes reexamination.

    Each time the patent owner files a response to an Office action on 
the merits pursuant to Sec. 1.945, a third party requester may once file 
written comments within a period of 30 days from the date of service of 
the patent owner's response. These comments shall be limited to issues 
raised by the Office action or the patent owner's response. The time for 
submitting comments by the third party requester may not be extended. 
For the purpose of filing the written comments by the third party

[[Page 212]]

requester, the comments will be considered as having been received in 
the Office as of the date of deposit specified in the certificate under 
Sec. 1.8.



Sec. 1.948  Limitations on submission of prior art by third party requester following the order for inter partes reexamination.

    (a) After the inter partes reexamination order, the third party 
requester may only cite additional prior art as defined under Sec. 1.501 
if it is filed as part of a comments submission under Sec. 1.947 or 
Sec. 1.951(b) and is limited to prior art:
    (1) which is necessary to rebut a finding of fact by the examiner;
    (2) which is necessary to rebut a response of the patent owner; or
    (3) which for the first time became known or available to the third 
party requester after the filing of the request for inter partes 
reexamination proceeding. Prior art submitted under paragraph (a)(3) of 
this section must be accompanied by a statement as to when the prior art 
first became known or available to the third party requester and must 
include a discussion of the pertinency of each reference to the 
patentability of at least one claim.
    (b) [Reserved].



Sec. 1.949  Examiner's Office action closing prosecution in inter partes reexamination.

    Upon consideration of the issues a second or subsequent time, or 
upon a determination of patentability of all claims, the examiner shall 
issue an Office action treating all claims present in the inter partes 
reexamination, which may be an action closing prosecution. The Office 
action shall set forth all rejections and determinations not to make a 
proposed rejection, and the grounds therefor. An Office action will not 
usually close prosecution if it includes a new ground of rejection which 
was not previously addressed by the patent owner, unless the new ground 
was necessitated by an amendment.



Sec. 1.951  Options after Office action closing prosecution in inter partes reexamination.

    (a) After an Office action closing prosecution in an inter partes 
reexamination, the patent owner may once file comments limited to the 
issues raised in the Office action closing prosecution. The comments can 
include a proposed amendment to the claims, which amendment will be 
subject to the criteria of Sec. 1.116 as to whether or not it shall be 
admitted. The comments must be filed within the time set for response in 
the Office action closing prosecution.
    (b) When the patent owner does file comments, a third party 
requester may once file comments responsive to the patent owner's 
comments within 30 days from the date of service of patent owner's 
comments on the third party requester.



Sec. 1.953  Examiner's Right of Appeal Notice in inter partes reexamination.

    (a) Upon considering the comments of the patent owner and the third 
party requester subsequent to the Office action closing prosecution in 
an inter partes reexamination, or upon expiration of the time for 
submitting such comments, the examiner shall issue a Right of Appeal 
Notice, unless the examiner reopens prosecution and issues another 
Office action on the merits.
    (b) Expedited Right of Appeal Notice: At any time after the patent 
owner's response to the initial Office action on the merits in an inter 
partes reexamination, the patent owner and all third party requesters 
may stipulate that the issues are appropriate for a final action, which 
would include a final rejection and/or a final determination favorable 
to patentability, and may request the issuance of a Right of Appeal 
Notice. The request must have the concurrence of the patent owner and 
all third party requesters present in the proceeding and must identify 
all the appealable issues and the positions of the patent owner and all 
third party requesters on those issues. If the examiner determines that 
no other issues are present or should be raised, a Right of Appeal 
Notice limited to the identified issues shall be issued. Any appeal by 
the parties shall be conducted in accordance with Secs. 1.959-1.983.
    (c) The Right of Appeal Notice shall be a final action, which 
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each 
determination not to make a

[[Page 213]]

proposed rejection, an identification of the status of each claim, and 
the reasons for decisions favorable to patentability and/or the grounds 
of rejection for each claim. No amendment can be made in response to the 
Right of Appeal Notice. The Right of Appeal Notice shall set a one-month 
time period for either party to appeal. If no notice of appeal is filed, 
the inter partes reexamination proceeding will be terminated, and the 
Commissioner will proceed to issue a certificate under Sec. 1.997 in 
accordance with the Right of Appeal Notice.

           Interviews Prohibited in Inter Partes Reexamination



Sec. 1.955  Interviews prohibited in inter partes reexamination proceedings.

    There will be no interviews in an inter partes reexamination 
proceeding which discuss the merits of the proceeding.

Extensions of Time, Termination of Proceedings, and Petitions To Revive 
                      in Inter Partes Reexamination



Sec. 1.956  Patent owner extensions of time in inter partes reexamination.

    The time for taking any action by a patent owner in an inter partes 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
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.



Sec. 1.957  Failure to file a timely, appropriate or complete response or comment in inter partes reexamination.

    (a) If the third party requester files an untimely or inappropriate 
comment, notice of appeal or brief in an inter partes reexamination, the 
paper will be refused consideration.
    (b) If no claims are found patentable, and the patent owner fails to 
file a timely and appropriate response in an inter partes reexamination 
proceeding, the reexamination proceeding will be terminated and the 
Commissioner will proceed to issue a certificate under Sec. 1.997 in 
accordance with the last action of the Office.
    (c) If claims are found patentable and the patent owner fails to 
file a timely and appropriate response to any Office action in an inter 
partes reexamination proceeding, further prosecution will be limited to 
the claims found patentable at the time of the failure to respond, and 
to any claims added thereafter which do not expand the scope of the 
claims which were found patentable at that time.
    (d) When action by the patent owner is a bona fide attempt to 
respond and to advance the prosecution and is substantially a complete 
response to the Office action, but consideration of some matter or 
compliance with some requirement has been inadvertently omitted, an 
opportunity to explain and supply the omission may be given.



Sec. 1.958  Petition to revive terminated inter partes reexamination or claims terminated for lack of patent owner response.

    (a) If a response by the patent owner is not timely filed in the 
Office, the delay in filing such response may be excused if it is shown 
to the satisfaction of the Commissioner that the delay was unavoidable. 
A grantable petition to accept an unavoidably delayed response must be 
filed in compliance with Sec. 1.137(a).
    (b) Any response by the patent owner not timely filed in the Office 
may be accepted if the delay was unintentional. A grantable petition to 
accept an unintentionally delayed response must be filed in compliance 
with Sec. 1.137(b).

Appeal to the Board of Patent Appeals and Interferences in Inter Partes 
                              Reexamination



Sec. 1.959  Notice of appeal and cross appeal to Board of Patent Appeals and Interferences in inter partes reexamination.

    (a)(1) Upon the issuance of a Right of Appeal Notice under 
Sec. 1.953, the patent owner involved in an inter partes reexamination 
proceeding may appeal to

[[Page 214]]

the Board of Patent Appeals and Interferences with respect to the final 
rejection of any claim of the patent by filing a notice of appeal within 
the time provided in the Right of Appeal Notice and paying the fee set 
forth in Sec. 1.17(b).
    (2) Upon the issuance of a Right of Appeal Notice under Sec. 1.953, 
a third party requester involved in an inter partes reexamination 
proceeding may appeal to the Board of Patent Appeals and Interferences 
with respect to any final decision favorable to the patentability, 
including any final determination not to make a proposed rejection, of 
any original, proposed amended, or new claim of the patent by filing a 
notice of appeal within the time provided in the Right of Appeal Notice 
and paying the fee set forth in Sec. 1.17(b).
    (b)(1) Within fourteen days of service of a third party requester's 
notice of appeal under paragraph (a)(2) of this section and upon payment 
of the fee set forth in Sec. 1.17(b), a patent owner who has not filed a 
notice of appeal may file a notice of cross appeal with respect to the 
final rejection of any claim of the patent.
    (2) Within fourteen days of service of a patent owner's notice of 
appeal under paragraph (a)(1) of this section and upon payment of the 
fee set forth in Sec. 1.17(b), a third party requester who has not filed 
a notice of appeal may file a notice of cross appeal with respect to any 
final decision favorable to the patentability, including any final 
determination not to make a proposed rejection, of any original, 
proposed amended, or new claim of the patent.
    (c) The notice of appeal or cross appeal in an inter partes 
reexamination proceeding must identify the appealed claim(s) and must be 
signed by the patent owner, the third party requester, or their duly 
authorized attorney or agent.
    (d) An appeal or cross appeal, when taken, must be taken from all 
the rejections of the claims in a Right of Appeal Notice which the 
patent owner proposes to contest or from all the determinations 
favorable to patentability, including any final determination not to 
make a proposed rejection, in a Right of Appeal Notice which a third 
party requester proposes to contest. Questions relating to matters not 
affecting the merits of the invention may be required to be settled 
before an appeal is decided.
    (e) The times for filing a notice of appeal or cross appeal may not 
be extended.



Sec. 1.961  Jurisdiction over appeal in inter partes reexamination.

    Jurisdiction over the inter partes reexamination proceeding passes 
to the Board of Patent Appeals and Interferences upon transmittal of the 
file, including all briefs and examiner's answers, to the Board of 
Patent Appeals and Interferences. Prior to the entry of a decision on 
the appeal, the Commissioner may sua sponte order the inter partes 
reexamination proceeding remanded to the examiner for action consistent 
with the Commissioner's order.



Sec. 1.962  Appellant and respondent in inter partes reexamination defined.

    For the purposes of inter partes reexamination, appellant is any 
party, whether the patent owner or a third party requester, filing a 
notice of appeal or cross appeal. If more than one party appeals or 
cross appeals, each appealing or cross appealing party is an appellant 
with respect to the claims to which his or her appeal or cross appeal is 
directed. A respondent is any third party requester responding under 
Sec. 1.967 to the appellant's brief of the patent owner, or the patent 
owner responding under Sec. 1.967 to the appellant's brief of any third 
party requester. No third party requester may be a respondent to the 
appellant brief of any other third party requester.



Sec. 1.963  Time for filing briefs in inter partes reexamination.

    (a)An appellant's brief in an inter partes reexamination must be 
filed no later than two months from the latest filing date of the last-
filed notice of appeal or cross appeal or, if any party to the inter 
partes reexamination is entitled to file an appeal or cross appeal but 
fails to timely do so, the expiration of time for filing (by the last 
party entitled to do so) such notice of appeal or cross appeal. The time 
for filing an appellant's brief may not be extended.
    (b) Once an appellant's brief has been properly filed, any brief 
must be filed

[[Page 215]]

by respondent within one month from the date of service of the 
appellant's brief. The time for filing a respondent's brief may not be 
extended.
    (c) The examiner will consider both the appellant's and respondent's 
briefs and may prepare an examiner's answer under Sec. 1.969.
    (d) Any appellant may file a rebuttal brief under Sec. 1.971 within 
one month of the date of the examiner's answer. The time for filing a 
rebuttal brief may not be extended.
    (e) No further submission will be considered and any such submission 
will be treated in accordance with Sec. 1.939.



Sec. 1.965  Appellant's brief in inter partes reexamination.

    (a)Appellant(s) may once, within time limits for filing set forth in 
Sec. 1.963, file a brief in triplicate and serve the brief on all other 
parties to the inter partes reexamination proceeding in accordance with 
Sec. 1.903. The brief must be signed by the appellant, or the 
appellant's duly authorized attorney or agent and must be accompanied by 
the requisite fee set forth in Sec. 1.17(c). The brief 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) A party's appeal shall stand dismissed upon failure of that 
party to file an appellant's brief, accompanied by the requisite fee, 
within the time allowed.
    (c) The appellant's brief shall contain the following items under 
appropriate headings and in the order indicated below, unless the brief 
is filed by a party who is not represented by a registered practitioner. 
The brief may include an appendix containing only those portions of the 
record on which reliance has been made.
    (1) Real Party in Interest. A statement identifying 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 the 
appellant, the appellant's legal representative, or assignee which will 
directly affect or be directly affected by or have a bearing on the 
decision of the Board of Patent Appeals and Interferences in the pending 
appeal.
    (3) Status of Claims. A statement of the status of all the claims, 
pending or canceled. If the appellant is the patent owner, the appellant 
must also identify the rejected claims whose rejection is being 
appealed. If the appellant is a third party requester, the appellant 
must identify the claims that the examiner has made a determination 
favorable to patentability, which determination is being appealed.
    (4) Status of Amendments. A statement of the status of any amendment 
filed subsequent to the close of prosecution.
    (5) Summary of Invention. A concise explanation of the invention or 
subject matter defined in the claims involved in the appeal, which shall 
refer to the specification by column and line number, and to the 
drawing(s), if any, by reference characters.
    (6) Issues. A concise statement of the issues presented for review. 
No new ground of rejection can be proposed by a third party requester 
appellant.
    (7) Grouping of Claims. If the appellant is the patent owner, for 
each ground of rejection in the Right of Appeal Notice which appellant 
contests and which applies to a group of two or more claims, the Board 
of Patent Appeals and Interferences 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 
this 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 bases therefor, with citations of the authorities, statutes, and 
parts of the record relied on. Each issue should be treated under a 
separate, numbered heading.

[[Page 216]]

    (i) For each rejection under 35 U.S.C. 112, first paragraph, or for 
each determination favorable to patentability, including a determination 
not to make a proposed rejection under 35 U.S.C. 112, first paragraph, 
which appellant contests, the argument shall specify the errors in the 
rejection or the determination and how the first paragraph of 35 U.S.C. 
112 is complied with, if the appellant is the patent owner, or is not 
complied with, if the appellant is a third party requester, including, 
as appropriate, how the specification and drawing(s), if any,
    (A) Describe, if the appellant is the patent owner, or fail to 
describe, if the appellant is a third party requester, the subject 
matter defined by each of the appealed claims; and
    (B) Enable, if the appellant is the patent owner, or fail to enable, 
if the appellant is a third party requester, any person skilled in the 
art to make and use the subject matter defined by each of the appealed 
claims.
    (ii) For each rejection under 35 U.S.C. 112, second paragraph, or 
for each determination favorable to patentability including a 
determination not to make a proposed rejection under 35 U.S.C. 112, 
second paragraph, which appellant contests, the argument shall specify 
the errors in the rejection, if the appellant is the patent owner, or 
the determination, if the appellant is a third party requester, and how 
the claims do, if the appellant is the patent owner, or do not, if the 
appellant is a third party requester, particularly point out and 
distinctly claim the subject matter which the inventor regards as the 
invention.
    (iii) For each rejection under 35 U.S.C. 102 or for each 
determination favorable to patentability including a determination not 
to make a proposed rejection under 35 U.S.C. 102 which appellant 
contests, the argument shall specify the errors in the rejection, if the 
appellant is the patent owner, or determination, if the appellant is a 
third party requester, and why the appealed claims are, if the appellant 
is the patent owner, or are not, if the appellant is a third party 
requester, patentable under 35 U.S.C. 102, including any specific 
limitations in the appealed claims which are or are not described in the 
prior art.
    (iv) For each rejection under 35 U.S.C. 103 or for each 
determination favorable to patentability, including a determination not 
to make a proposed rejection under 35 U.S.C. 103 which appellant 
contests, the argument shall specify the errors in the rejection, if the 
appellant is the patent owner, or determination, if the appellant is a 
third party requester. If appropriate, also state the specific 
limitations in the appealed claims which are or are not described in the 
prior art and explain how such limitations render the claimed subject 
matter obvious, if the appellant is a third party requester, or 
unobvious, if the appellant is the patent owner, over the prior art. If 
the rejection or determination is based upon a combination of 
references, the argument shall explain why the references, taken as a 
whole, do or do not suggest the claimed subject matter. The argument 
should include, as may be appropriate, an explanation of why features 
disclosed in one reference may or may not properly be combined with 
features disclosed in another reference. A general argument that all the 
limitations are or 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 or for each determination favorable to 
patentability, including any determination not to make a proposed 
rejection other than those referred to in paragraphs (c)(8)(i) to (iv) 
of this section which appellant contests, the argument shall specify the 
errors in the rejection, if the appellant is the patent owner, or 
determination, if the appellant is a third party requester, and the 
specific limitations in the appealed claims, if appropriate, or other 
reasons, which cause the rejection or determination to be in error.
    (9) Appendix. An appendix containing a copy of the claims appealed 
by the appellant.
    (10) Certificate of Service. A certification that a copy of the 
brief has been served in its entirety on all other parties to the 
reexamination proceeding. The names and addresses of the parties served 
must be indicated.

[[Page 217]]

    (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 non-
extendable period of one month within which to file an amended brief. If 
the 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, that appellant's 
appeal will stand dismissed.



Sec. 1.967  Respondent's brief in inter partes reexamination.

    (a) Respondent(s) in an inter partes reexamination appeal may once, 
within the time limit for filing set forth in Sec. 1.963, file a 
respondent brief in triplicate and serve the brief on all parties in 
accordance with Sec. 1.903. The brief must be signed by the party, or 
the party's duly authorized attorney or agent, and must be accompanied 
by the requisite fee set forth in Sec. 1.17(c). The brief must state the 
authorities and arguments on which respondent will rely. 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. The respondent brief shall be limited to issues raised in the 
appellant brief to which the respondent brief is directed. A third party 
respondent brief may not address any brief of any other third party.
    (b) The respondent brief shall contain the following items under 
appropriate headings and in the order here indicated, and may include an 
appendix containing only those portions of the record on which reliance 
has been made.
    (1) Real Party in Interest. A statement identifying 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 the 
respondent, the respondent's legal representative, or assignee (if any) 
which will directly affect or be directly affected by or have a bearing 
on the decision of the Board of Patent Appeals and Interferences in the 
pending appeal.
    (3) Status of claims. A statement accepting or disputing appellant's 
statement of the status of claims. If appellant's statement of the 
status of claims is disputed, the errors in appellant's statement must 
be specified with particularity.
    (4) Status of amendments. A statement accepting or disputing 
appellant's statement of the status of amendments. If appellant's 
statement of the status of amendments is disputed, the errors in 
appellant's statement must be specified with particularity.
    (5) Summary of invention. A statement accepting or disputing 
appellant's summary of the invention or subject matter defined in the 
claims involved in the appeal. If appellant's summary of the invention 
or subject matter defined in the claims involved in the appeal is 
disputed, the errors in appellant's summary must be specified.
    (6) Issues. A statement accepting or disputing appellant's statement 
of the issues presented for review. If appellant's statement of the 
issues presented for review is disputed, the errors in appellant's 
statement must be specified. A counter statement of the issues for 
review may be made. No new ground of rejection can be proposed by a 
third party requester respondent.
    (7) Argument. A statement accepting or disputing the contentions of 
the appellant with each of the issues. If a contention of the appellant 
is disputed, the errors in appellant's argument must be specified, 
stating 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. An argument may be made with each of the issues stated 
in the counter statement of the issues, with each counter-stated issue 
being treated under a separate heading. The provisions of Sec. 1.965 
(c)(8)(iii) and (iv) of these regulations shall apply to any argument 
raised under 35 U.S.C. 102 or sec. 103.
    (8) Certificate of Service. A certification that a copy of the 
respondent brief has been served in its entirety on all other parties to 
the reexamination proceeding. The names and addresses of the parties 
served must be indicated.
    (c) If a respondent brief is filed which does not comply with all 
the requirements of paragraph (b) of this section,

[[Page 218]]

respondent will be notified of the reasons for non-compliance and 
provided with a non-extendable period of one month within which to file 
an amended brief. If the respondent 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 respondent brief will not be considered.



Sec. 1.969  Examiner's answer in inter partes reexamination.

    (a) The primary examiner in an inter partes reexamination appeal 
may, within such time as directed by the Commissioner, furnish a written 
statement in answer to the patent owner's and/or third party requester's 
appellant brief or respondent brief including, as may be necessary, such 
explanation of the invention claimed and of the references, the grounds 
of rejection, and the reasons for patentability, including grounds for 
not adopting a proposed rejection. A copy of the answer shall be 
supplied to all parties to the reexamination proceeding. If the primary 
examiner finds that the appeal is not regular in form or does not relate 
to an appealable action, he or she shall so state.
    (b) An examiner's answer may not include a new ground of rejection.
    (c) An examiner's answer may not include a new determination not to 
make a proposed rejection of a claim.
    (d) Any new ground of rejection, or any new determination not to 
make a proposed rejection, must be made in an Office action reopening 
prosecution.



Sec. 1.971  Rebuttal brief in inter partes reexamination.

    Within one month of the examiner's answer in an inter partes 
reexamination appeal, any appellant may once file a rebuttal brief in 
triplicate. The rebuttal brief of the patent owner may be directed to 
the examiner's answer and/or any respondent brief. The rebuttal brief of 
any third party requester may be directed to the examiner's answer and/
or the respondent brief of the patent owner. The rebuttal brief of a 
third party requester may not be directed to the respondent brief of any 
other third party requester. No new ground of rejection can be proposed 
by a third party requester. The time for filing a rebuttal brief may not 
be extended. The rebuttal brief must include a certification that a copy 
of the rebuttal brief has been served in its entirety on all other 
parties to the reexamination proceeding. The names and addresses of the 
parties served must be indicated.



Sec. 1.973  Oral hearing in inter partes reexamination.

    (a) An oral hearing in an inter partes reexamination appeal should 
be requested only in those circumstances in which an appellant or a 
respondent 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 an appeal decided after oral hearing.
    (b) If an appellant or a respondent desires an oral hearing, he or 
she must file a written request for such hearing accompanied by the fee 
set forth in Sec. 1.17(d) within two months after the date of the 
examiner's answer. The time for requesting an oral hearing may not be 
extended.
    (c) An oral argument may be presented at oral hearing by, or on 
behalf of, the primary examiner if considered desirable by either the 
primary examiner or the Board of Patent Appeals and Interferences.
    (d) If an appellant or a respondent has requested an oral hearing 
and has submitted the fee set forth in Sec. 1.17(d), a hearing date will 
be set, and notice given to all parties to the reexamination proceeding, 
as well as the primary examiner. The notice shall set a non-extendable 
period within which all requests for oral hearing shall be submitted by 
any other party to the appeal desiring to participate in the oral 
hearing. A hearing will be held as stated in the notice, and oral 
argument will be limited to thirty minutes for each appellant and 
respondent who has requested an oral hearing, and twenty minutes for the 
primary examiner unless otherwise ordered before the hearing begins. No 
appellant or respondent will be permitted to participate in an

[[Page 219]]

oral hearing unless he or she has requested an oral hearing and 
submitted the fee set forth in Sec. 1.17(d).
    (e) If no request and fee for oral hearing have been timely filed by 
an appellant or a respondent, the appeal will be assigned for 
consideration and decision on the written record.



Sec. 1.975  Affidavits or declarations after appeal in inter partes reexamination.

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



Sec. 1.977  Decision by the Board of Patent Appeals and Interferences; remand to examiner in inter partes reexamination.

    (a) The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse each decision of the examiner on all issues raised 
on each appealed claim, or remand the reexamination proceeding to the 
examiner for further consideration. The reversal of the examiner's 
determination not to make a rejection proposed by the third party 
requester constitutes a decision adverse to the patentability of the 
claims which are subject to that proposed rejection which will be set 
forth in the decision of the Board of Patent Appeals and Interferences 
as a new ground of rejection under paragraph (b) of this section. 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 raised 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 shall constitute a new 
ground of rejection of the claim. A decision which includes 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 patent owner, within one month from the date of 
the decision, must exercise one of the following two options with 
respect to the new ground of rejection to avoid termination of the 
appeal proceeding as to the rejected claim:
    (1) The patent owner may submit an appropriate amendment of the 
claim so rejected or a showing of facts relating to the claim, or both.
    (2) The patent owner may file a request for rehearing of the 
decision of the Board of Patent Appeals and Interferences under 
Sec. 1.979(a).
    (c) Where the patent owner has responded under paragraph (b)(1) of 
this section, any third party requester, within one month of the date of 
service of the patent owner response, may once file comments on the 
response. Such written comments must be limited to the issues raised by 
the decision of the Board of Patent Appeals and Interferences and the 
patent owner's response. Any third party requester that had not 
previously filed an appeal or cross appeal and is seeking under this 
subsection to file comments or a reply to the comments is subject to the 
appeal and brief fees under Sec. 1.17(b) and (c), respectively, which 
must accompany the comments or reply.
    (d) Following any response by the patent owner under paragraph 
(b)(1) of this section and any written comments from a third party 
requester under paragraph (c) of this section, the reexamination 
proceeding will be remanded to the examiner. The statement of the Board 
of Patent Appeals and Interferences shall be 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. The examiner will consider any response under paragraph 
(b)(1) of this section and any written comments by a third party 
requester under paragraph (c) of this section and issue a determination 
that the rejection should be maintained or has been overcome.
    (e) Within one month of the examiner's determination pursuant to 
paragraph (d) of this section, the patent owner or any third party 
requester may once submit comments in response to the examiner's 
determination. Within one month of the date of service of comments in 
response to the

[[Page 220]]

examiner's determination, any party may file a reply to the comments. No 
third party requester reply may address the comments of any other third 
party requester reply. Any third party requester that had not previously 
filed an appeal or cross appeal and is seeking under this subsection to 
file comments or a reply to the comments is subject to the appeal and 
brief fees under Sec. 1.17(b) and (c), respectively, which must 
accompany the comments or reply.
    (f) After submission of any comments and any reply pursuant to 
paragraph (e) of this section, or after time has expired, the 
reexamination proceeding will be returned to the Board of Patent Appeals 
and Interferences which shall reconsider the matter and issue a new 
decision. The new decision will incorporate the earlier decision, except 
for those portions specifically withdrawn.
    (g) The time period set forth in paragraph (b) of this section is 
subject to the extension of time provisions of Sec. 1.956. The time 
periods set forth in paragraphs (c) and (e) of this section may not be 
extended.



Sec. 1.979  Action following decision by the Board of Patent Appeals and Interferences or dismissal of appeal in inter partes reexamination.

    (a) Parties to the appeal may file a request for rehearing of the 
decision within one month of the date of:
    (1) The original decision of the Board of Patent Appeals and 
Interferences under Sec. 1.977(a),
    (2) The original Sec. 1.977(b) decision under the provisions of 
Sec. 1.977(b)(2),
    (3) The expiration of the time for the patent owner to take action 
under Sec. 1.977(b)(2), or
    (4) The new decision of the Board of Patent Appeals and 
Interferences under Sec. 1.977(f).
    (b) Within one month of the date of service of any request for 
rehearing under paragraph (a) of this section, or any further request 
for rehearing under paragraph (c) of this section, any party to the 
appeal may once file comments in opposition to the request for rehearing 
or the further request for rehearing. The comments in opposition must be 
limited to the issues raised in the request for rehearing or the further 
request for rehearing.
    (c) If a party to an appeal files a request for rehearing under 
paragraph (a) of this section, or a further request for rehearing under 
this section, the Board of Patent Appeals and Interferences will issue a 
decision on rehearing. This decision is deemed to incorporate the 
earlier decision, except for those portions specifically withdrawn. If 
the decision on rehearing becomes, in effect, a new decision, and the 
Board of Patent Appeals and Interferences so states, then any party to 
the appeal may, within one month of the new decision, file a further 
request for rehearing of the new decision under this subsection.
    (d) Any request for rehearing shall state the points believed to 
have been misapprehended or overlooked in rendering the decision and 
also state all other grounds upon which rehearing is sought.
    (e) The patent owner may not appeal to the U.S. Court of Appeals for 
the Federal Circuit under Sec. 1.983 until all parties' rights to 
request rehearing have been exhausted, at which time the decision of the 
Board of Patent Appeals and Interferences is final and appealable by the 
patent owner.
    (f) An appeal by a third party requester is considered terminated by 
the dismissal of the third party requester's appeal, the failure of the 
third party requester to timely request rehearing under Sec. 1.979(a) or 
(c), or a final decision under Sec. 1.979(e). The date of such 
termination is the date on which the appeal is dismissed, the date on 
which the time for rehearing expires, or the decision of the Board of 
Patent Appeals and Interferences is final. An appeal by the patent owner 
is considered terminated by the dismissal of the patent owner's appeal, 
the failure of the patent owner to timely request rehearing under 
Sec. 1.979(a) or (c), or the failure of the patent owner to timely file 
an appeal to the U.S. Court of Appeals for the Federal Circuit under 
Sec. 1.983. The date of such termination is the date on which the appeal 
is dismissed, the date on which the time for rehearing expires, or the 
date on which the time for the patent owner's appeal to the U.S.

[[Page 221]]

Court of Appeals for the Federal Circuit expires. If an appeal to the 
U.S. Court of Appeals for the Federal Circuit has been filed, the patent 
owner's appeal is considered terminated when the mandate is received by 
the Office. Upon termination of an appeal, if no other appeal is 
present, the reexamination proceeding will be terminated and the 
Commissioner will issue a certificate under Sec. 1.997.
    (g) The times for requesting rehearing under paragraph (a) of this 
section, for requesting further rehearing under paragraph (c) of this 
section, and for submitting comments under paragraph (b) of this section 
may not be extended.



Sec. 1.981  Reopening after decision by the Board of Patent Appeals and Interferences in inter partes reexamination.

    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. 1.977 without the written 
authority of the Commissioner, and then only for the consideration of 
matters not already adjudicated, sufficient cause being shown.

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



Sec. 1.983  Patent owner appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.

    (a) The patent owner in a reexamination proceeding who is 
dissatisfied with the decision of the Board of Patent Appeals and 
Interferences may, subject to Sec. 1.979(e), appeal to the U.S. Court of 
Appeals for the Federal Circuit. The appellant must take the following 
steps in such an appeal:
    (1) In the U. S. Patent and Trademark Office, file a timely written 
notice of appeal directed to the Commissioner in accordance with 
Secs. 1.302 and 1.304; and
    (2) In the Court, file a copy of the notice of appeal and pay the 
fee, as provided for in the rules of the Court.

      Concurrent Proceedings Involving Same Patent in Inter Partes 
                              Reexamination



Sec. 1.985  Notification of prior or concurrent proceedings in inter partes reexamination.

    (a) In any inter partes reexamination proceeding, the patent owner 
shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved, including but not 
limited to interference, reissue, reexamination, or litigation and the 
results of such proceedings.
    (b) Notwithstanding any provision of the rules, any person at any 
time may file a paper in an inter partes reexamination proceeding 
notifying the Office of a prior or concurrent proceedings in which the 
same patent is or was involved, including but not limited to 
interference, reissue, reexamination, or litigation and the results of 
such proceedings. Such paper must be limited to merely providing notice 
of the other proceeding without discussion of issues of the current 
inter partes reexamination proceeding. Any paper not so limited will be 
returned to the sender.



Sec. 1.987  Suspension of inter partes reexamination proceeding due to litigation.

    If a patent in the process of inter partes reexamination is or 
becomes involved in litigation, the Commissioner shall determine whether 
or not to suspend the inter partes reexamination proceeding.



Sec. 1.989  Merger of concurrent reexamination proceedings.

    (a) If any reexamination is ordered while a prior inter partes 
reexamination proceeding is pending for the same patent and prosecution 
in the prior inter partes reexamination proceeding has not been 
terminated, a decision may be made to merge the two proceedings or to 
suspend one of the two proceedings. Where merger is ordered, the merged 
examination will normally result in the issuance of a single 
reexamination certificate under Sec. 1.997.
    (b) An inter partes reexamination proceeding filed under Sec. 1.913 
which is merged with an ex parte reexamination proceeding filed under 
Sec. 1.510 will result

[[Page 222]]

in the merged proceeding being governed by Secs. 1.902 through 1.997, 
except that the rights of any third party requester of the ex parte 
reexamination shall be governed by Secs. 1.510 through 1.560.



Sec. 1.991  Merger of concurrent reissue application and inter partes reexamination proceeding.

    If a reissue application and an inter partes reexamination 
proceeding on which an order pursuant to Sec. 1.931 has been mailed are 
pending concurrently on a patent, a decision may be made to merge the 
two proceedings or to suspend one of the two proceedings. Where merger 
of a reissue application and an inter partes reexamination proceeding is 
ordered, the merged proceeding will be conducted in accordance with 
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 
inter partes reexamination proceeding during the pendency of the merged 
proceeding. In a merged proceeding the third party requester may 
participate to the extent provided under Secs. 1.902 through 1.997, 
except that such participation shall be limited to issues within the 
scope of inter partes reexamination. The examiner's actions and any 
responses by the patent owner or third party requester in a merged 
proceeding will apply to both the reissue application and the inter 
partes reexamination proceeding and be physically entered into both 
files. Any inter partes reexamination proceeding merged with a reissue 
application shall be terminated by the grant of the reissued patent.



Sec. 1.993  Suspension of concurrent interference and inter partes reexamination proceeding.

    If a patent in the process of inter partes reexamination is or 
becomes involved in an interference, the Commissioner may suspend the 
inter partes reexamination or the interference. The Commissioner will 
not consider a request to suspend an interference unless a motion under 
Sec. 1.635 to suspend the interference has been presented to, and denied 
by, an administrative patent judge and the request is filed within ten 
(10) days of a decision by an administrative patent judge denying the 
motion for suspension or such other time as the administrative patent 
judge may set.



Sec. 1.995  Third party requester's participation rights preserved in merged proceeding.

    When a third party requester is involved in one or more proceedings, 
including an inter partes reexamination proceeding, the merger of such 
proceedings will be accomplished so as to preserve the third party 
requester's right to participate to the extent specifically provided for 
in these regulations. In merged proceedings involving different 
requesters, any paper filed by one party in the merged proceeding shall 
be served on all other parties of the merged proceeding.

         Reexamination Certificate in Inter Partes Reexamination



Sec. 1.997  Issuance of inter partes reexamination certificate.

    (a) Upon the conclusion of an inter partes reexamination proceeding, 
the Commissioner will issue a certificate in accordance with 35 U.S.C. 
316 setting forth the results of the inter partes reexamination 
proceeding and the content of the patent following the inter partes 
reexamination proceeding.
    (b) A certificate will be issued in each patent in which an inter 
partes reexamination proceeding has been ordered under Sec. 1.931. Any 
statutory disclaimer filed by the patent owner will be made part of the 
certificate.
    (c) The certificate will be sent to the patent owner at the address 
as provided for in Sec. 1.33(c). A copy of the certificate will also be 
sent to the third party requester of the inter partes reexamination 
proceeding.
    (d) If a certificate has been issued which cancels all of the claims 
of the patent, no further Office proceedings will be conducted with that 
patent or any reissue applications or any reexamination requests 
relating thereto.
    (e) If the inter partes reexamination proceeding is terminated by 
the grant of a reissued patent as provided in Sec. 1.991, the reissued 
patent will constitute the reexamination certificate required by this 
section and 35 U.S.C. 316.

[[Page 223]]

    (f) A notice of the issuance of each certificate under this section 
will be published in the Official Gazette.



PART 2--RULES OF PRACTICE IN TRADEMARK CASES




    Editorial Note: Part 2 is placed in the separate grouping of parts 
pertaining to trademarks regulations. It appears on page 265 of this 
volume.



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. 2(b)(2).

    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

[[Page 224]]

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]



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.

    Documents and cover sheets to be recorded should be addressed to the 
Commissioner, United States Patent and Trademark Office, Box Assignment, 
Washington, D.C. 20231, unless they are

[[Page 225]]

filed together with new applications or with a request under Sec. 3.81.

[65 FR 54681, Sept. 8, 2000]



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 226]]



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 227]]

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.

    (a) Patents--conducting of prosecution. One or more assignees as 
defined in paragraph (b) of this section may, after becoming of record 
pursuant to paragraph (c) of this section, conduct prosecution of a 
national patent application or a reexamination proceeding to the 
exclusion of either the inventive entity, or the assignee(s) previously 
entitled to conduct prosecution.
    (b) Patents--Assignee(s) who can prosecute. The assignee(s) who may 
conduct either the prosecution of a national application for patent or a 
reexamination proceeding are:
    (1) A single assignee. An assignee of the entire right, title and 
interest in the application or patent being reexamined who is of record, 
or
    (2) Partial assignee(s) together or with inventor(s). All partial 
assignees, or all partial assignees and inventors who have not assigned 
their right, title and interest in the application or patent being 
reexamined, who together own the entire right, title and interest in the 
application or patent being reexamined. A partial assignee is any 
assignee of record having less than the entire right, title and interest 
in the application or patent being reexamined.
    (c) Patents--Becoming of record. An assignee becomes of record 
either in a national patent application or a reexamination proceeding by 
filing a statement in compliance with Sec. 3.73(b) that is signed by a 
party who is authorized to act on behalf of the assignee.
    (d) Trademarks. The assignee of a trademark application or 
registration may prosecute a trademark application, submit documents to 
maintain a trademark registration, or file papers against a third party 
in reliance on the assignee's trademark application or registration, to 
the exclusion of the original applicant or previous assignee. The 
assignee must establish ownership in compliance with Sec. 3.73(b).

[65 FR 54682, Sept. 8, 2000]



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 or registration, unless there is an assignment.
    (b)(1) In order to request or take action in a patent or trademark 
matter,

[[Page 228]]

the assignee must establish its ownership of the patent or trademark 
property of paragraph (a) of this section to the satisfaction of the 
Commissioner. The establishment of ownership by the assignee may be 
combined with the paper that requests or takes the action. Ownership is 
established by submitting to the Office a signed statement identifying 
the assignee, accompanied by either:
    (i) Documentary evidence of a chain of title from the original owner 
to the assignee (e.g., copy of an executed assignment). The documents 
submitted to establish ownership may be required to be recorded pursuant 
to Sec. 3.11 in the assignment records of the Office as a condition to 
permitting the assignee to take action in a matter pending before the 
Office; or
    (ii) A statement specifying where documentary evidence of a chain of 
title from the original owner to the assignee is recorded in the 
assignment records of the Office (e.g., reel and frame number).
    (2) The submission establishing ownership must show that the person 
signing the submission is a person authorized to act on behalf of the 
assignee by:
    (i) Including a statement that the person signing the submission is 
authorized to act on behalf of the assignee; or
    (ii) Being signed by a person having apparent authority to sign on 
behalf of the assignee, e.g., an officer of the assignee.
    (c) For patent matters only:
    (1) Establishment of ownership by the assignee must be submitted 
prior to, or at the same time as, the paper requesting or taking action 
is submitted.
    (2) If the submission under this section is by an assignee of less 
than the entire right, title and interest, such assignee must indicate 
the extent (by percentage) of its ownership interest, or the Office may 
refuse to accept the submission as an establishment of ownership.

[65 FR 54682, Sept. 8, 2000]

                          Issuance to Assignee



Sec. 3.81  Issue of patent to assignee.

    (a) With payment of the issue fee: An application may issue in the 
name(s) of the assignee(s) consistent with the application's assignment 
where a request for such issuance is submitted with payment of the issue 
fee, provided the assignment has been previously recorded in the Office. 
If the assignment has not been previously recorded, the request should 
be accompanied by the assignment and either a direction to record the 
assignment in the Office pursuant to Sec. 3.28, or a statement under 
Sec. 3.73(b).
    (b) After payment of the issue fee: An application may issue in the 
name(s) of the assignee(s) consistent with the application's assignment 
where a request for such issuance along with the processing fee set 
forth in Sec. 1.17(i) of this chapter is submitted after the date of 
payment of the issue fee, but prior to issuance of the patent, provided 
the assignment has been previously recorded in the Office. If the 
assignment has not been previously recorded, the request should be 
accompanied by the assignment and either a direction to record the 
assignment in the Office pursuant to Sec. 3.28, or a statement under 
Sec. 3.73(b).
    (c) Partial assignees. (1) If one or more assignee(s) together with 
one or more inventor(s) hold the entire right, title, and interest in 
the application, the patent may issue in the names of the assignee(s) 
and the inventor(s).
    (2) If multiple assignees hold the entire right, title, and interest 
to the exclusion of all the inventors, the patent may issue in the names 
of the multiple assignees.

[65 FR 54682, Sept. 8, 2000]



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

[[Page 229]]

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 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.

[[Page 230]]

    (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  Applications and correspondence involving national security.
5.2  Secrecy order.
5.3  Prosecution of application under secrecy orders; withholding 
          patent.
5.4  Petition for rescission of secrecy order.
5.5  Permit to disclose or modification of secrecy order.
5.6-5.8  [Reserved]

                Licenses for Foreign Exporting and Filing

5.11  License for filing in 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.

[[Page 231]]

                                 General

5.31-5.33  [Reserved]

    Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the Patent 
Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 
1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751 et seq.; 
the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; the 
Nuclear Non Proliferation Act of 1978, 22 U.S.C. 3201 et seq.; and the 
delegations in the regulations under these Acts to the 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  Applications and correspondence involving national security.

    (a) All correspondence in connection with this part, including 
petitions, should be addressed to ``Commissioner for Patents (Attention 
Licensing and Review), Washington, D.C. 20231.''
    (b) Application as used in this part includes provisional 
applications filed under 35 U.S.C. 111(b) (Sec. 1.9(a)(2) of this 
chapter), nonprovisional applications filed under 35 U.S.C. 111(a) or 
entering the national stage from an international application after 
compliance with 35 U.S.C. 371 (Sec. 1.9(a)(3)), or international 
applications filed under the Patent Cooperation Treaty prior to entering 
the national stage of processing (Sec. 1.9(b)).
    (c) Patent applications and documents relating thereto that are 
national security classified (see Sec. 1.9(i) of this chapter) and 
contain authorized national security markings (e.g., ``Confidential,'' 
``Secret'' or ``Top Secret'') are accepted by the Office. National 
security classified documents filed in the Office must be either hand-
carried to Licensing and Review or mailed to the Office in compliance 
with paragraph (a) of this section.
    (d) The applicant in a national security classified patent 
application must obtain a secrecy order pursuant to Sec. 5.2(a). If a 
national security classified patent application is filed without a 
notification pursuant to Sec. 5.2(a), the Office will set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant to 
Sec. 5.2(a), or the applicant must submit evidence of a good faith 
effort to obtain a secrecy order pursuant to Sec. 5.2(a) from the 
relevant department or agency in order to prevent abandonment of the 
application. If evidence of a good faith effort to obtain a secrecy 
order pursuant to Sec. 5.2(a) from the relevant department or agency is 
submitted by the applicant within the time period set by the Office, but 
the application has not been declassified or placed under a secrecy 
order pursuant to Sec. 5.2(a), the Office will again set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant to 
Sec. 5.2(a), or the applicant must submit evidence of a good faith 
effort to again obtain a secrecy order pursuant to Sec. 5.2(a) from the 
relevant department or agency in order to prevent abandonment of the 
application.
    (e) An application will not be published under Sec. 1.211 of this 
chapter or allowed under Sec. 1.311 of this chapter if publication or 
disclosure of the application would be detrimental to national security. 
An application under national security review will not be published at 
least until six months from its filing date or three months from the 
date the application was referred to a defense agency, whichever is 
later. A national security classified patent application will not be 
published under Sec. 1.211 of this chapter or allowed under Sec. 1.311 
of this chapter until the application is declassified and any secrecy 
order under Sec. 5.2(a) has been rescinded.
    (f) Applications on inventions made outside the United States and on 
inventions in which a U.S. Government defense agency has a property 
interest will not be made available to defense agencies.

[65 FR 54682, Sept. 8, 2000, as amended at 65 FR 57060, Sept. 20, 2000]



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.

[[Page 232]]

    (b) Any request for compensation as provided in 35 U.S.C. 183 must 
not be made to the Patent and Trademark Office, but directly to the 
department or agency which caused the secrecy order to be issued.
    (c) An application disclosing any significant part of the subject 
matter of an application under a secrecy order pursuant to paragraph (a) 
of this section also falls within the scope of such secrecy order. Any 
such application that is pending before the Office must be promptly 
brought to the attention of Licensing and Review, unless such 
application is itself under a secrecy order pursuant to paragraph (a) of 
this section. Any subsequently filed application containing any 
significant part of the subject matter of an application under a secrecy 
order pursuant to paragraph (a) of this section must either be hand-
carried to Licensing and Review or mailed to the Office in compliance 
with Sec. 5.1(a).

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53203, Oct. 10, 1997; 
65 FR 54683, Sept. 8, 2000]



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 
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

[[Page 233]]

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 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

[[Page 234]]

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 a license is granted. If the initial automatic 
petition is not granted, a subsequent petition may be filed under 
paragraph (b) of this section.
    (b) A petition for license must include the fee set forth in 
Sec. 1.17(h) of this chapter, the petitioner's address, and full 
instructions for delivery of the requested license when it is to be 
delivered to other than the petitioner. The petition should be presented 
in letter form.

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

[48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62 
FR 53204, Oct. 10, 1997; 65 FR 54683, Sept. 8, 2000]



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

[[Page 235]]

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
    (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

[[Page 236]]

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.
    (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

[[Page 237]]

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 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

    Editorial Note: Part 6 is placed in the separate grouping of parts 
pertaining to trademarks regulations. It appears on page 323 of this 
volume.

                           PART 7  [RESERVED]

[[Page 239]]

                   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
Express abandonment................................................1.138
Processing and retention fee.....................................1.21(l)
Referred to in issued patents.......................................1.14
Revival of.........................................................1.137
When open for public inspection.....................................1.14
Abandonment of application. (See Abandoned applications.)
Abstract of the disclosure.(content, physical requirements)
                                                                    1.72
Separate sheet required for..........................1.52(b)(4), 1.72(b)
Arrangement in overall application...........................1.77, 1.163
Access to pending applications (limited)
                                                                    1.14
Action by applicant
                                                1.111-1.116, 1.121-1.138
Address, Correspondence, only one recognized by Office
                                                                 1.33(c)
Address for notice to 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)
Adjustment of patent term. (See Patent term adjustment.)
Administrator, executor, or other legal representative may make 
application and receive patent
                                                              1.42, 1.43
Oath or declaration.................................................1.64
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 (before or with issue fee)...............1.312
Deferral of issuance...............................................1.314
Delivery of patent.................................................1.315
Failure to pay issue fee.................................1.137(c), 1.316
Issuance of patent.................................................1.314
Notice of allowance................................................1.311

[[Page 240]]

Patent to issue upon payment of issue fee..........................1.314
Patent to lapse if issue fee is not paid in full...................1.317
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
Amended application
                                                                1.215(c)
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
Claims......................................................1.111, 1.121
Copying claim of another application for interference..............1.603
Copying claim of issued patent..............................1.606, 1.607
Disclosure.........................................................1.121
Drawings........................................................1.121(d)
In application subject to publication...........................1.215(c)
Manner of making...................................................1.121
May be required....................................................1.121
New matter prohibited.................................1.121(f), 1.173(a)
Not covered by original oath.....................................1.67(b)
Numbering of claims................................................1.126
Of amendments......................................................1.121
Paper and writing...................................................1.52
Petition from refusal to admit.....................................1.127
Proposed during interference.......................................1.615
Provisional application................................1.53(c), 1.121(j)
Reexamination proceedings.......................................1.121(i)
Reissue.....................................1.121(a), 1.121(h), 1.173(b)
Requisites of........................1.33(b), 1.111, 1.116, 1.121, 1.125
Right to amend.........................1.111, 1.114, 1.116, 1.121, 1.127
Signature to.....................................................1.33(b)
Specification......................................................1.121
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.........................................1.121(e)
To correspond to original drawing or specification..............1.121(e)
To preliminary statement in interference...........................1.628
To reissues..............................................1.121(h), 1.173
To save from abandonment...........................................1.135
Amino Acid Sequences. (See Nucleotide and/or Amino 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 241]]

Reexamination, inter partes proceeding........................1.959-1981
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
Two rejections sufficient to permit................................1.191
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
Reexamination, inter partes proceeding.............................1.983
Time for....................................................1.302, 1.304
Applicant for patent
                                                               1.41-1.48
Change..............................................................1.48
Deceased or insane inventor..........................1.42, 1.43, 1.64(b)
Executor or administrator...........................................1.42
Informed of application number...................................1.54(b)
Joint changed to sole...............................................1.48
Letters for, sent to attorney or agent...........................1.33(a)
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............................1.4(g)
Sole changed to joint...............................................1.48
Sole changed to another sole........................................1.48
Application data sheet
                                                                    1.76
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(b)
Alteration after execution.......................................1.52(c)
Alteration before execution...................................1.52(c)(1)
Application number and filing date..................................1.54
Arrangement...........................................1.77, 1.154, 1.163
Classification suggested by applicant.........................1.76(b)(3)
Continuation or division, reexecution not required............1.63(d)(1)
Continued Prosecution Application (CPA)..........................1.53(d)
Copies of, furnished to applicants...............................1.59(c)
Cross-references of related applications............................1.78
Deceased or insane inventor..........................1.42, 1.43, 1.64(b)
Declaration in lieu of oath.........................................1.68
Duty of disclosure..................................................1.56
Elements of, order and arrangement of.................1.77, 1.154, 1.163
Filed 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)(2)
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)(2)
Filed apparently without all figures of drawing:
Petition asserting all figures of drawing were filed..........1.53(e)(2)
Petition and filing of missing figures with new oath or 
declaration seeking new filing date................................1.182
Filing date.........................................................1.53
Filing and national fees..............................1.16, 1.445, 1.492
Foreign language oath or declaration................................1.69

[[Page 242]]

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(c)(1)
Language, paper, writing, margin....................................1.52
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(b)(1)(ii)
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(f)
Papers forming part of the original disclosure not to be expunged 
                                                              1.59(a)(2)
Parts filed separately..............................................1.54
Parts of application desirably filed together.......................1.54
Parts of complete application.......................................1.51
Processing fees.....................................................1.17
Provisional application............1.9(a)(2), 1.51(c), 1.53(c), 1.121(j)
Publication. (See Publication of applications.)
Relating to atomic energy........................................1.14(f)
Reservation for future application not permitted....................1.79
Retention fee........................................1.21(l), 1.53(f)(5)
Secrecy order....................................................5.1-5.6
Secret while pending................................................1.14
Tables and formulas.................................................1.58
To be made to Commissioner of Patents and Trademarks................1.51
To claim but one independent and distinct invention................1.141
Two or more by same party with conflicting claims................1.78(b)
Application number
                                                1.5(a), 1.53(a), 1.54(b)
Arbitration award filing
                                                                   1.335
Arbitration in interference
                                                                   1.690
Assertion of small entity status
                                                                 1.27(c)
Assignee:
Correspondence held with assignee of entire interest..........3.71, 3.73
If of entire interest, patent may issue to....................1.46, 3.81
If of undivided part interest, correspondence will be held with 
inventor............................................................1.33
If of undivided part interest, must assent to application for 
reissue of patent..................................................1.172
If of undivided part interest, patent may issue jointly.......1.46, 3.81
May conduct prosecution of application........................3.71, 3.73
May take action in interference....................................1.643
Published application..............................................1.215
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)(5)
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

[[Page 243]]

Must be submitted to 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
Atomic energy applications reported to Department of Energy
                                                                 1.14(f)
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)(4)
Fee on admission.................................................1.21(a)
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
Basic national fee
                                                                   1.492
Benefit of earlier application
                                                                    1.78
Bill in equity. (See Civil action.)
Biological material. (See Deposit of Biological material)
Board of Patent Appeals and Interferences. (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
Fee..............................................................1.20(a)
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

[[Page 244]]

Citation of references by examiner
                                                                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
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
Classification of application suggested by applicant
                                                              1.76(b)(3)
Color drawing
                                                              1.84(a)(2)
Color photographs
                                                              1.84(b)(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)
Compact discs:
Computer program listings...........................................1.96
Reissues........................................................1.173(b)
Sequence listings...............................................1.821(c)
Specifications...................................................1.52(e)
Tables..............................................................1.58
Complaints against examiners, how presented
                                                                     1.3
Composition of matter, specimens of ingredients may be required
                                                                    1.93
Computer program listings
                                                                    1.96
Concurrent office proceedings
                                                                   1.565
Conduct of reexamination proceedings
                                                                   1.550
Conflicting claims, same applicant or owner in two or more 
applications
                                                                    1.78
Conspicuous nonpublication request and rescinding thereof
                                                      1.213(a), 1.213(b)
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)
Corrected publication of application
                                                                   1.221
Correction, certificate of
                                                            1.322, 1.323
Correction of inventorship
                                                             1.48, 1.324
Correspondence:
Address, only one recognized.....................................1.33(c)

[[Page 245]]

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
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
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, 1.9(h)
Daytime telephone number
                                                                 1.33(a)
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:
National and international applications..............................1.9
Nonprofit organization........................................1.27(a)(3)
Nonprovisional application...........................................1.9
Person........................................................1.27(a)(1)
Provisional application..............................................1.9
Service of process.....................................15 C.F.R. Part 15
Small business concern........................................1.27(a)(2)
Small entities...................................................1.27(a)
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

[[Page 246]]

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(a)
Description.....................................................1.153(a)
Drawing............................................................1.152
Expedited examination..............................................1.155
Filing fee.......................................................1.16(f)
Issue fee........................................................1.18(b)
Oath............................................................1.153(b)
Rules applicable...................................................1.151
Title...........................................................1.153(a)
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 document fee
                                                                 1.21(c)
Discovery in interferences
                                                             1.672-1.687
Division. (See Restriction of application.)
Division of patent on reissue
                                                                   1.177
Document supply fees
                                                                    1.19
Drawing:
Amendment of....................................................1.121(d)
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
Conventional features............................................1.83(a)
Copyright notice.................................................1.84(s)
Correction....................................1.84(w), 1.85(c), 1.121(d)
Cost of copies of...................................................1.19
Descriptions, brief and detailed....................................1.74
Design application.................................................1.152
Figure for:
Official Gazette, patent publication.............................1.84(j)
Published application................................1.76(b)(3), 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 objected to..................1.85
Ink...........................................................1.84(a)(1)

[[Page 247]]

Lead lines.......................................................1.84(q)
Legends..........................................................1.84(o)
Letters..........................................................1.84(p)
Location of names................................................1.84(c)
Margin...........................................................1.84(g)
Mask work notice.................................................1.84(s)
Must show every feature of the invention.........................1.83(a)
No return or release.............................................1.85(b)
Numbering of sheets..............................................1.84(t)
Numbering of views...............................................1.84(u)
Numbers..........................................................1.84(p)
Original should be retained by applicant.........................1.81(a)
Paper............................................................1.84(e)
Part of application papers.......................................1.52(b)
Photographs......................................................1.84(b)
Plant patent application.....................................1.81, 1.165
Printed and published by the Office when patented...................1.84
Published application.........................................1.76(b)(3)
Reference letters, numerals, and characters................1.74, 1.84(p)
Reissue......................................................1.173(a)(2)
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
Duplicate copies
                                                                  1.4(b)
Duty of disclosure
                                                      1.56, 1.555, 1.933
Patent term extension..............................................1.765

                                 E

Early publication of application
                                                                   1.219
Eighteen-month publication of applications. (See Publication of 
applications.)
Election of species
                                                                   1.146
Electronic filing of application
                                               1.215(c), 1.217(b), 1.221
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(a)(1)
Citation of references..........................................1.104(d)
Completeness of examiner's action...............................1.104(b)
Examination of original claims upon reissue........................1.176
Examiner's action............................................1.104(a)(1)
International-type search....................................1.104(a)(3)
Nature of examination...........................................1.104(a)
Reasons for allowance...........................................1.104(e)
Reexamination after rejection if requested.........................1.111
Reissue............................................................1.176
Rejection of claims.............................................1.104(c)
Request for continued examination (RCE)............................1.114

[[Page 248]]

Suspension of action by the Office.................................1.103
Examiners:
Answers on appeal..................................................1.193
Complaints against...................................................1.3
Interviews with.............................................1.133, 1.560
Executors
                                                              1.42, 1.64
Exhibits. (See Models and exhibits.)
Expedited examination of design application
                                                                   1.155
Export of technical data
                                                              5.19, 5.20
Express abandonment
                                                                   1.138
To avoid publication............................................1.138(c)
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
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.........................................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, time for taking action
                                                             1.7, 1.9(h)
Federal law violation
                                                                1.211(d)
FEDERAL REGISTER, publication of rules in
                                                                   1.351
Fees and payment of money:

[[Page 249]]

Coupons.............................................................1.24
Credit card......................................................1.23(b)
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(a)
Foreign filing license petition..................................1.17(h)
For international-type search report.............................1.21(e)
Itemization or may be returned...................................1.22(b)
Method of payment...................................................1.23
Money by mail at risk of sender..................................1.23(a)
Money paid by mistake or in excess..................................1.26
Petitions........................................................1.17(h)
Processing.......................................................1.17(i)
Publication of application.............................1.18(d), 1.211(e)
Reexamination request............................................1.20(c)
Refunds.......................................................1.26, 1.28
Relating to international applications......................1.445, 1.492
Schedule of fees and charges...................................1.16-1.21
Files and papers of abandoned applications, disposition
                                                                    1.14
Files open to the public
                                                              1.11, 1.14
Filing date of application
                                                                    1.53
Filing fee part of complete application
                                                                    1.51
Filing and national fees
                                                      1.16, 1.445, 1.492
Filing in Post Office
                                                         1.8(a)(2), 1.10
Filing of interference settlement agreements
                                                                   1.666
Final rejection:
Appeal from........................................................1.191
Response to...................................1.113, 1.114, 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
                                                           1.27(h), 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

[[Page 250]]

                                 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. (See Person).
Information disclosure statement:
At time of filing application....................................1.51(d)
Content of..........................................................1.98
Not permitted in provisional applications........................1.51(d)
Reexamination......................................................1.555
To comply with duty of disclosure...................................1.97
Information, Public
                                                                    1.15
Information reasonably necessary to properly examine or treat a 
matter
                                                             1.105(a)(1)
Insane inventor, application by guardian of
                                                                    1.43
Inter partes reexamination
                                                             1.902-1.997
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
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
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)

[[Page 251]]

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..............................................1.603-1.608
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
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
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

[[Page 252]]

Inventorship and date of invention of the subject matter of 
individual claims
                                                                   1.110
Issue fee
                                                                    1.18
Issue of patent. (See Allowance and issue of patent.)
                                 J

Joinder of inventions in one application
                                                             1.141-1.146
Joint inventors
                                                 1.45, 1.47, 1.48, 1.324
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, 1.313
Of contested case..................................................1.614

                                 L

Lapsed patents
                                                            1.137, 1.317
Legal representative of deceased or incapacitated inventor
                                                        1.42, 1.43, 1.64
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)
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
Material mistake
                                                                1.221(b)
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

[[Page 253]]

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, 1.48(f)(1)
New matter inadmissible in application
                                 1.52(c)(3), 1.53(b), 1.121(f), 1.173(a)
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....................................................1.27(a)(3)
Nonpublication request
                                                                   1.213
Notice:
Of allowance of application........................................1.311
Of appeal to the Court of Appeals for the Federal Circuit...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)
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
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, 1.64, 1.67
By guardian of insane.............................1.43, 1.63, 1.64, 1.67
Certificate of Officer administering................................1.66
Continuation-in-part.............................................1.63(e)
Declaration in lieu of oath.........................................1.68
Foreign language....................................................1.69
Identification of specification to which it is directed.............1.63
International application, National Stage..........................1.497
Inventor's Certificate..............................................1.63
Made by inventor..............................................1.41, 1.63
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...................................................1.4, 1.63

[[Page 254]]

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
                                                            1.172, 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
Inventor refuses to sign or cannot be reached....................1.47(c)
One view of drawing published in.................................1.84(j)
Reexamination order published in.........................1.525(b), 1.904
Service of notices in..............................................1.646
Oral statements
                                                                     1.2
Order to reexamine
                                                                   1.525
Ownership, statement establishing ownership by assignee
                                                                 3.73(b)

                                 P

Papers (requirements to become part of Office permanent records, 
e.g. legibility, capable of reproducti