37 Patents, Trademarks, and Copyrights 1 2002-07-01 2002-07-01 false Table Of Contents Patents, Trademarks, and Copyrights UNITED STATES PATENT AND TRADEMARK OFFICE,DEPARTMENT OF COMMERCE GENERAL RULES OF PRACTICE IN PATENT CASES 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. 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. 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. 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 National stage commencement and entry 1.492 National stage fees. 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 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. 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—Sample Sequence Listing Subpart H—Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or After November 29, 1999 Prior Art Citations 1.902 Processing of prior art citations during an inter partes reexamination proceeding. Requirements for Inter Partes Reexamination Proceedings 1.903 Service of papers on parties in inter partes reexamination. 1.904 Notice of inter partes reexamination in Official Gazette. 1.905 Submission of papers by the public in inter partes reexamination. 1.906 Scope of reexamination in inter partes reexamination proceeding. 1.907 Inter partes reexamination prohibited. 1.913 Persons eligible to file 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. 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 §§ 1.1 to 1.352 and the numbers to the right of the decimal point correspond with the respective rule numbers.