PART 7—RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS Editorial Note:

Part 7 is placed in the separate grouping of parts pertaining to trademarks regulations.

 37 CFR Ch. I (7-1-04 Edition) Index I INDEX I—RULES RELATING TO PATENTS Editorial Note:

This listing is provided for informational purposes only. It is compiled and kept current by the Department of Commerce. This index is updated as of July 1, 2002.

 Section A Abandoned applications: Abandonment by failure to prosecute 1.135 Abandonment during interference 1.662(a) Abandonment for failure to pay issue fee 1.137 Destruction after 20 yrs. unless marked for preservation .1.14(b) Express abandonment 1.138 Processing and retention fee 1.21(l) Referred to in issued patents 1.14 Revival of 1.137 When to public inspection 1.14 Abandonment of application. (See Abandoned applications.) Abstract of the disclosure.(content, physical requirements) 1.72 Separate sheet required for commencement of 1.72(b) Arrangement in overall application 1.77, 1.163 Access to pending applications (limited) 1.14 Action by applicant 1.111-1.138 Address, Correspondence, only one recognized by Office 1.33(c) Address for notice to Commissioner of appeal to Fed. Cir 1.302(c) Address of Solicitor's Office 1.1(a)(3) Address of the Patent and Trademark Office 1.1 Box CPA 1.53(d)(9) Box Interference 1.1(e) Box M. Fee 1.1(d) Box Patent Ext 1.1(f) Box PCT 1.1(b) Box Provisional Patent Application 1.1(i) Box Reexam 1.1(c) Administrator or executor, may make application and receive patent 1.42 Proof of authority 1.44 Admission to practice. (See Attorneys and agents.) Affidavit (see also Oath in patent application): After appeal 1.195 In support of application for reissue 1.175 To disqualify commonly owned patent as prior art 1.130 To overcome cited patent or publication 1.131 Traversing grounds of rejection 1.132 Agents. (See Attorneys and agents.) Allowance and issue of patent: Amendment after allowance 1.312 Deferral of issuance 1.314 Delayed payment of issue fee 1.137 Delivery of patent 1.315 Issuance of patent 1.155, 1.314 Notice of allowance 1.155, 1.311 Patent to issue upon payment of issue fee 1.314 Patent to lapse if issue fee is not paid in full 1.317 Patent withheld for nonpayment of issue fee 1.155, 1.316 Reasons for 1.104(e) Withdrawal from issue 1.313 Allowed claims statement of grounds for rejecting, by Board of Patent Appeals and Interferences 1.196 Amendment: Adding or substituting claims 1.111, 1.121 After appeal 1.116 After decision on appeal, based on new rejection of Board of Patent Appeals and Interferences 1.196 After final action 1.116 After final action (transitional procedures) 1.129 After notice of allowance 1.312 By patent owner 1.530 Copying claim of another application for interference 1.603 Copying claim of issued patent 1.606, 1.607 Drawings 1.121 Erasures and insertions 1.121 Involving a departure from original invention 1.121 Manner of making 1.121 May be required 1.121 Not covered by original oath 1.67 Numbering of claims 1.126 Of amendments 1.121 Of claims 1.111, 1.121 Of disclosure 1.121 Of drawing 1.121 Of specification 1.121 Paper and writing 1.52 Petition from refusal to admit 1.127 Proposed during interference 1.615 Provisional application 1.53(c) Reissue 1.121(b), 1.173, 1.174 Requisites of 1.33, 1.111, 1.116, 1.121, 1.125 Right to amend 1.111, 1.116, 1.121, 1.127 Signature to 1.33 Substitute specification 1.125 Time for 1.134 To accompany motion to amend interference 1.633 To applications in interference 1.633 To correct inaccuracies or prolixity 1.121 To correspond to original drawing or specification 1.121 To preliminary statement in interference 1.628 To reissues 1.173, 1.174 To save from abandonment 1.135 Amino Acid Sequences. (See Nucleotide and/or Amino A Acid Sequences.) Appeal to Board of Patent Appeals and Interferences: Action following decision 1.197 Affidavits after appeal 1.195 Brief 1.192 Decision by Board 1.196 Examiner's answer 1.193 Fees 1.17 Hearing of 1.194 New grounds for refusing a patent 1.196 Notice of appeal 1.191 Rehearing 1.197 Reopening after decision 1.198 Reply brief 1.193 Statement of grounds for rejecting, by Board of Patent Appeals and Interferences 1.196 Appeal to Court of Appeals for the Federal Circuit: Fee provided by rules of court 1.301 From Board of Patent Appeals and Interferences 1.301 Notice and reasons of appeal 1.302 Time for 1.302, 1.304 Applicant for patent 1.41-1.48 Change 1.48 Deceased or insane inventor 1.42, 1.43 Executor or administrator 1.42 Informed of application number 1.54 Joint changed to sole 1.48 Letters for, sent to attorney or agent 1.33 May be represented by an attorney or agent 1.31 Personal attendance unnecessary 1.2 Required to conduct business with decorum and courtesy 1.3 Required to report assistance received 1.33 Sole changed to joint 1.48 Sole changed to another sole 1.48 Application for patent (see also Abandoned applications, Claims, Drawing, Examination of application Reissues, Provisional applications, Specification): Accepted and filed for examination only when complete 1.53 Access to 1.14 Acknowledgement of filing 1.54 Alteration after execution 1.67 Alteration before execution 1.52 Arrangement 1.77, 1.154, 1.163 Continuation or division, reexecution not required 1.53(b) Continued Prosecution Application (CPA) 1.53(d) Copies of, furnished to applicants 1.59 Cross-references of related applications 1.78 Deceased or insane inventor 1.42, 1.43 Declaration 1.68 Duty of disclosure 1.56 Elements of, order and arrangement of 1.77, 1.154, 1.163 Execution in blank 1.67 Filed by other than inventor 1.42, 1.43, 1.47 Filed apparently without all pages of specification, petition asserting all pages were filed 1.53(e) Filed apparently without any drawing, petition asserting drawing was filed, or was not necessary, or adding drawing along with new oath or declaration and seeking new filing date 1.53(e) Filed apparently without all figures of drawing: Petition asserting all figures of drawing were filed 1.53(e) Petition and filing of missing figures with new oath or declaration seeking new filing date 1.182 Filing date 1.53 Foreign language oath or declaration 1.69 Formulas and tables 1.58 General requisites 1.51 Identification required in letters concerning 1.5 Incomplete papers not accepted and filed for examination 1.53 Interlineations, etc., to be indicated 1.52 Language, paper, writing, margin 1.52 Later filing of oath and filing fee 1.53(f) Must be made by actual inventor, with exceptions 1.41, 1.46 Names of all inventors required 1.41, 1.53 Non-English language 1.52 Nonprovisional filed without at least one claim, filing of petition to convert to a provisional application 1.53(c)(2) Owned by Government 1.103 Papers having filing date not to be returned 1.59 Parts filed separately 1.54 Parts of application desirably filed together 1.54 Parts of complete application 1.51 Processing fees 1.17 Provisional application 1.9, 1.51(c), 1.53(c) Relating to atomic energy 1.14(c) Reservation for future application not permitted 1.79 Retention fee 1.53(f) Secrecy order 5.1-5.6 Secret while pending 1.14 Serial number and filing date 1.54 Tables and formulas 1.58 To contain but one invention unless connected 1.141 To whom made 1.51 Two or more by same party with conflicting claims 1.78(b) Application number 1.5(a), 1.53(a) Arbitration award filing 1.335 Arbitration in interference 1.690 Assignee: Correspondence held with assignee of entire interest 3.71, 3.73 If of entire interest, patent may issue to him 1.46, 3.81 If of undivided part interest, correspondence will be held with inventor 1.33 If of undivided part interest, must assent to application for reissue of patent 1.171, 1.172 If of undivided part interest, patent may issue jointly 1.46, 3.81 May conduct prosecution of application 3.71, 3.73 May take action in interference 1.643 Taking of action in a patent matter before the Office by the Assignee, Assignee must establish its ownership of the patent application or patent involved to the satisfaction of the Commissioner 3.73(b) Assignments and recording: Abstracts of title, fee for 1.19(b) Conditional assignments 3.56 Date of receipt is date of record 3.51 Fees 1.21(h), 3.41 Cover Sheet required 3.28, 3.31 Correction of Cover Sheet errors 3.34 Effect of recording 3.54 Requirements for recording 3.21-3.41 If recorded before payment of issue fee, patent may issue to assignee 3.81 Must be recorded in Patent and Trademark Office to issue patent to assignee 3.81 Orders for copies of 1.12 Patent may issue to assignee 3.81 Recording of assignments 3.11 Records open to public inspection 1.12 Must identify patent or application 3.21 What will be accepted for recording 3.11 Atomic energy applications reported to Department of Energy 1.14 Attorneys and agents: Acting in a representative capacity 1.33, 1.34 Assignment will not operate as a revocation of power 1.36 Associate 1.34 Certificate of good standing 1.21(a) Fee on admission 1.21(a) General powers not recognized 1.34 Office cannot aid in selection of 1.31 Personal interviews with examiners 1.133 Power of attorney or authorization of agent 1.34 Representative capacity 1.33, 1.34 Representing conflicting parties 1.613 Required to conduct business with decorum and courtesy 1.3 Revocation of power 1.36 Withdrawal of 1.36 Authorization of agents. (See Attorneys and agents.) Award in arbitration 1.335 B Balance in deposit account 1.25 Basic filing fee 1.16 Benefit of earlier application 1.78 Bill in equity. (See Civil action.) Biological material. (See Deposit of Biological material) Board of Patent Appeals and Interferences. (See Appeal to Board of Patent Appeals and Interferences, Interferences.) Box CPA 1.53(d)(9) Box PCT 1.1(b) Box Reexam 1.1(c) Briefs: At final hearing in interference 1.656 In petitions to Commissioner 1.181 On appeal to Board of Patent Appeals and Interferences 1.192 Business to be conducted with decorum and courtesy 1.3 Business to be transacted in writing 1.2 C Certificate of correction 1.322, 1.323 Fees 1.20 Mistakes not corrected 1.325 Certificate of mailing (as first class mail) or transmission 1.8 Certificate of mailing by “Express Mail” no longer required, effective December 2, 1996 1.10 Certificate, Reexamination 1.570 Certified copies of records, papers, etc 1.13 Fee for certification 1.19(b) Chemical and mathematical formulas and tables 1.58 Citation of prior art in patent 1.501 Citation of references 1.104(d) Civil action 1.303, 1.304 Claims (see also Examination of applications): Amendment of 1.121 Conflicting, same applicant or owner 1.78 Date of invention of 1.110 Dependent 1.75 Design patent 1.153 May be in dependent form 1.75 More than one permitted 1.75 Multiple dependent 1.75 Must conform to invention and specification 1.75 Notice of rejection of 1.104 Numbering of 1.126 Part of complete application 1.51 Plant patent 1.164 Rejection of 1.104(c) Required 1.75 Separate Sheet required for commencement of claim(s) 1.52(b) Twice or finally rejected before appeal 1.191 Color drawing 1.84(a)(2) Commissioner of Patents and Trademarks (see also Petition to Commissioner): Address of 1.1 All communications to Patent and Trademark Office to be addressed to 1.1 Cases decided by Board reopened only by 1.198 Initiates reexamination 1.520 Reissue in divisions referred to 1.177 Return of papers in violation of rule on decorum and courtesy 1.3 Common Ownership, statement by assignee may be required 1.78(c) Complaints against examiners, how presented 1.3 Composition of matter, specimens of ingredients may be required 1.93 Computer program listings 1.96 Concurrent office proceedings 1.565 Conduct of reexamination proceedings 1.550 Conflicting claims, same applicant or owner in two or more applications 1.78 Continuing application for invention disclosed and claimed in prior application 1.53(b) Continued Prosecution Application (CPA) 1.53(d) Copies of patents, records, etc 1.11, 1.12, 1.13 Copies of records, fees 1.19(b), 1.59 Copyright notice in specification 1.71(d) Copyright notice in drawings 1.84(s) Correction, certificate of 1.322, 1.323 Correction of inventorship 1.48 Correspondence: Address, only one recognized 1.33(c) All letters and communications to the Office to be addressed to (a) Assistant Commissioner for Patents; or (b) Assistant Commissioner for Trademarks; or (c) Commissioner of Patents and Trademarks 1.1 Business with the Office to be transacted by 1.2 Discourteous communications returned 1.3 Double, with different parties in interest not allowed 1.33 Facsimile transmissions 1.6(d) Held with attorney or agent 1.33 Identification of application or patent in letter relating to 1.5 May be held exclusively with assignee of entire interest 3.81 Nature of 1.4 Patent owners in reexamination 1.33(c) Receipt of letters and papers 1.6 Resumed with principal, if power or authorization is revoked 1.36 Rules for conducting in general 1.1-1.8 Secrecy, License to Export or File in Foreign Countries 5.1 Separate letter for each subject of inquiry 1.4 Signature requirements 1.4(d) When no attorney or agent 1.33 With attorney or agent after power or authorization is filed 1.33 Coupons sold by the Office 1.24 Court of Appeals for the Federal Circuit, appeal to. (See Appeal to Court of Appeals for the Federal Circuit.) CPA (Continued Prosecution Application) 1.53(d) D Date of invention of subject matter of individual claims 1.110 Day for taking any action or paying any fee falling on Saturday, Sunday, or Federal holiday 1.7 Death or insanity of inventor 1.42, 1.43 Decision on appeal by the Board of Patent Appeals and Interferences 1.196 Action following decision 1.197 Declaration (See also Oath in patent application). Foreign language 1.69 In lieu of oath 1.68 In patent application 1.68 Definitions: Independent inventor 1.9 National and international applications 1.9 Nonprofit organization 1.9 Nonprovisional application 1.9 Provisional application 1.9 Service of process 15 C.F.R. Part 15 Small business concern 1.9 Small entity 1.9 Terms under Patent Cooperation Treaty 1.401 Testimony by employees 15 C.F.R. Part 15a Delivery of patent 1.315 Deposit accounts 1.25 Fees 1.21(b) Deposit of computer program listings 1.96 Deposit of Biological Material: Acceptable depository 1.803 Biological material 1.801 Examination procedures 1.809 Furnishing of samples 1.808 Need or Opportunity to make a deposit 1.802 Replacement or supplemental deposit 1.805 Term of deposit 1.806 Time of making original deposit 1.804 Viability of deposit 1.807 Depositions (See also Testimony in interferences): Certificate of officer to accompany 1.676 Formalities to be observed in preparing 1.677 Person before whom taken 1.674 To be sealed up, addressed, and forwarded to the Commissioner 1.676 When transcript must be filed 1.678 Description of invention. (See Specification.) Design Patent Applications: Arrangement of specification 1.154 Claim 1.153 Drawing 1.152 Filing fee 1.16(f) Issue and term 1.155 Issue fee 1.18(b) Oath 1.153 Rules applicable 1.151 Title, description and claim 1.153 Determination of request for reexamination 1.515 Disclaimer, statutory: During interference 1.662(a) Fee 1.20(d) Requirements of 1.321 Terminal 1.321 Disclosure, amendments to not permitted 1.121 Disclosure document fee 1.21(c) Discovery in interferences 1.672-1.688 Division. (See Restriction of application.) Division of patent on reissue 1.177 Document supply fees 1.19 Drawing: Amendment of 1.121 Arrangement of views 1.84(h) Arrows 1.84(r) Character of lines 1.84(l) Color 1.84(a)(2) Content of drawing 1.83 Copyright notice 1.84(s) Correction 1.84(w), 1.85(c), 1.121 Cost of copies of 1.19 Design application 1.152 Extraneous matter 1.83(a) Figure for Official Gazette 1.84(j) Filed with application 1.81 Hatching and shading 1.84(m) Holes 1.84(x) Identification 1.84(c) If of an improvement, must show connection with old structure 1.83(b) Inferior or defective drawings will be rejected 1.85 Informal drawings 1.85 Ink 1.84(a)(1) Lead lines 1.84(q) Legends 1.84(o) Letters 1.84(p) Location of names 1.84(c) Margin 1.84(g) Mask work notice 1.84(s) Must be described in and referred to specification 1.74 Must show every feature of the invention 1.83 No return or release 1.85(b) Numbering of sheets 1.84(t) Numbering of views 1.84(u) Numbers 1.84(p) Original may be used with application for reissue 1.174 Original should be retained by applicant 1.81(a) Paper 1.84(e) Part of application papers 1.52(b) Photographs 1.84(b) Plant patent application 1.81, 1.165 Printed and published by the Office when patented 1.84 Reference characters 1.74, 1.84(p) Reissue 1.174 Release not permitted 1.85(b) Required by law when necessary for understanding 1.81 Scale 1.84(k) Security markings 1.84(v) Shading 1.84(m) Size of sheet 1.84(f) Specific rules relating to preparation of drawings will be enforced 1.85 Standards for drawings 1.84 Symbols 1.84(n) Views 1.84(h) When necessary, part of complete application 1.51 Duty of disclosure 1.56, 1.555 Patent term extension 1.765 E Election of species 1.146 Employee testimony (see Testimony by Office employees) Establishing small entity status 1.27, 1.28 Evidence. (See Testimony in interferences.) Examination of applications: Advancement of examination 1.102 As to form 1.104 Citation of references 1.104(d) Completeness of examiner's action 1.104(b) Examiner's action 1.104(a) International-type search 1.104(a) Nature of examination 1.104(a) Reasons for allowance 1.104(e) Reexamination after rejection if requested 1.111 Reexamination of original claims upon reissue 1.176 Reissue 1.176 Rejection of claims 1.104(c) Suspension of 1.103 Examination of papers by attorney or agent not permitted without authorization 1.34 Examiners: Answers on appeal 1.193 Complaints against 1.3 Interviews with 1.133 Executors 1.42, 1.44 Exhibits. (See Models and exhibits.) Export of technical data 5.19, 5.20 Express abandonment 1.138 Express Mail, Addressee Only, USPS 1.10 Certificate of mailing by, not required eff. 12/2/96 1.10 Date of Receipt of 1.6 Petition in regard to 1.10 Extension of patent term Due to regulatory review period (35 U.S.C. 156): Applicant for 1.730 Application for 1.740 Calculation of term: Animal Drug Product 1.778 Food or color additive 1.776 Human drug product 1.775 Medical device 1.777 Veterinary biological product 1.779 Certificate 1.780 Conditions for 1.701, 1.720 Determination of eligibility 1.750 Duty of disclosure 1.765 Filing date of application 1.741 Complete application, what constitutes 1.741(a) Review of determination via 1.181 1.741(b) Interim extension 1.760 Multiple applications 1.785 Patents subject to 1.701, 1.710 Withdrawal of application 1.770 Due to prosecution delay (35 U.S.C. 154): Conditions for 1.701(a) Appellate review 1.701(a)(3) Interference proceeding 1.701(a)(1) Secrecy order 1.701(a)(2) Calculation of term: Appellate Review 1.701(c)(3) Interference proceeding 1.701(c)(1) Maximum extension 1.701(b) Reduction of extension 1.701(d) Secrecy order 1.701(c)(2) Extension of time 1.136 Fees 1.17(a)-(d) Interference proceedings 1.645 Reexamination proceedings 1.550(c) F Facsimile transmissions 1.6(d), 1.8 Federal Holiday, defined for 35 USC 21 purposes 1.9(h) FEDERAL REGISTER, publication of rules in 1.351 Fees and payment of money: Coupons 1.24 Deposit account 1.25 Extension of time 1.17(a) Fee on appeal to the Court of Appeals for the Federal Circuit provided by rules of court 1.301 Fees in case of petitions 1.181(d) Fees payable in advance 1.22 Foreign filing license petition 1.17(h) For international-type search report 1.21(e) Method of payment 1.23 Money by mail at risk of sender 1.23 Money paid by mistake 1.26 Petitions 1.17 Reexamination request 1.20(c) Refunds 1.26 Relating to international applications 1.445 Schedule of fees and charges 1.16-1.21 Files and papers of abandoned applications, disposition 1.14 Files open to the public 1.11 Filing date of application 1.53 Filing fee part of complete application 1.51 Filing fees 1.16 Filing in Post Office 1.8(a)(2), 1.10 Filing of interference settlement agreements 1.666 Final rejection: Appeal from 1.191 Response to 1.113, 1.116, 1.129 When and how given 1.113 First Class Mail (Priority Mail and Express Mail) 1.8, 1.10 Foreign application 1.55 License to file 5.11-5.25 Foreign country: Taking oath in 1.66 Taking testimony in 1.671 Foreign mask work protection Part 150 Evaluation of request 150.4 Definition 150.1 Duration of proclamation 150.5 Initiation of evaluation 150.2 Mailing address 150.6 Submission of requests 150.3 Foreign patent rights acquired by government 101.1-101.11 Licensing 102.1-102.6 Formulas and tables in patent applications 1.58 Fraud practiced or attempted on Office 1.28(d), 1.56 G Gazette. (See Official Gazette.) General authorization to charge deposit account 1.25 General information and correspondence 1.1-1.8, 1.10 Government acquisition of foreign patent rights Part 501 Government employee invention Part 501 Guardian of insane person may apply for patent 1.43 H Hearings: Before the Board of Patents Appeals and Interferences 1.194 Fee for appeal hearing 1.17 In disciplinary proceedings 10.144 Of motions in interferences 1.640 Holiday, time for action expiring on 1.6, 1.7 I Identification of application, patent or registration 1.5 Independent inventor: Definition 1.9 Status statement 1.27 Information disclosure statement: At time of filing application 1.51 Content of 1.98 Not permitted in provisional applications 1.51 Reexamination 1.555 To comply with duty of disclosure 1.97 Information, Public 1.15 Insane inventor, application by guardian of 1.43 Interferences (See also Depositions, Notice, Preliminary Statement in interferences, Testimony in interferences): Abandonment of the contest 1.662 Access to applications 1.612 Access to preliminary statement 1.631 Action by examiner after interference 1.664 Action if statutory bar appears 1.641, 1.659 Addition of new party by judge 1.642 Amendment during 1.615, 1.634, 1.637 Appeal to the Court of Appeals for the Federal Circuit 1.301, 1.302 Applicant requests 1.604 Arbitration 1.690 Briefs at final hearing 1.656 Burden of proof 1.657 Civil action 1.303 Claims copied from patent 1.606, 1.607 Claims of defeated parties stand finally disposed of 1.663 Concession of priority 1.662 Conflicting parties having same attorney 1.613 Copying claims from patent 1.606, 1.607 Correspondence 1.5(e) Declaration of interference 1.611 Definition 1.601 Disclaimer to avoid interference 1.662(a) Discovery 1.671, 1.688 Dissolution of 1.633 Dissolution on motion of judge 1.641 Extensions of time 1.645 Failure of junior party to take testimony 1.652 Failure to prepare for 1.603-1.606 Final decision 1.658 Final hearing 1.654 Final hearing briefs 1.656 Identifying claim from patent 1.607(a)(3), 1.637(e)(1)(vi) In what cases declared 1.602 Inspection of cases of opposing parties 1.612 Interference with a patent 1.606-1.608 Junior party fails to overcome filing date of senior party 1.640 Jurisdiction of interference 1.614 Manner of service of papers 1.646 Matters considered in at final hearing 1.655 Motions 1.633-1.638 NAFTA country 1.601(r) Nonpatentability argued at final hearing 1.655 Notice and access to applications of opposing parties 1.612 Notice of intent to argue abandonment 1.632 Notice of reexamination, reissue, protest or litigation 1.660 Notice to file civil action 1.303 Notices and statements 1.611 Order to show cause, judgment on the record 1.640 Ownership of applications or patents involved 1.602 Petitions 1.644 Preliminary statement 1.621-1.631 Preparation for 1.603-1.609 Presumption as to order of invention 1.657 Prosecution by assignee 1.643 Recommendation by Board of Patent Appeals and Interferences 1.659 Record and exhibits 1.653 Records of, when open to public 1.11 Reissue filed by patentee during 1.662 Request by applicant 1.604 Requests for findings of fact and conclusions of law 1.656 Return of unauthorized papers 1.618 Review of decision by civil action 1.303 Same party 1.602 Sanctions for failure to comply with rules or order 1.616 Sanctions for taking and maintaining a frivolous position 1.616 Second interference between same parties 1.665 Secrecy order cases 5.3(b) Service of papers 1.646 Statement of, from examiner to Board 1.609 Status of claims of defeated applicant after interference 1.663 Statutory disclaimer by patentee during 1.662 Suggestion of claims for interference 1.605 Summary judgement 1.617 Suspension of ex parte prosecution 1.615 Termination of interference 1.661 Testimony copies 1.653 Time period for completion 1.610 Times for discovery and taking testimony 1.651 Translation of document in foreign language 1.647 WTO member country 1.601(s) International application. (See Patent Cooperation Treaty.) International Preliminary Examining Authority 1.416 Interview summary 1.133 Interviews with examiner 1.133, 1.560 Inventor (see also Applicant for patent, Oath in patent application): Death or insanity of 1.42, 1.43 Refuses to sign application 1.47 To make application 1.41 Unavailable 1.47 Inventor's certificate priority benefit 1.55 Inventorship and date of invention of the subject matter of individual claims 1.110 Issue fee 1.18 Issue of patent. (See Allowance and issue of patent.) J Joinder of inventions in one application 1.141 Joint inventors 1.45, 1.47, 1.324 Joint patent to inventor and assignee 1.46, 3.81 Jurisdiction: After decision by Board of Patent Appeals and Interferences 1.197, 1.198 After notice of allowance 1.312 Of contested case 1.614 L Lapsed patents 1.137, 1.317 Legal representative of deceased or incapacitated inventor 1.42, 1.43 Legibility of papers which are to become part of the permanent Office records 1.52(a) Letters to the Office. (See Correspondence.) Library service fee 1.19(c) License for foreign filing 5.11-5.15 Licensing of government owned foreign patents 102.1-102.6 List of U.S. Patents classified in a subclass, cost of 1.19(d) Local delivery box rental 1.21(d) M Maintenance fees 1.20(e)-(i) Acceptance of delayed payment of 1.378 Fee address for 1.363 Review of decision refusing to accept 1.377 Submission of 1.366 Time for payment of 1.362 Mask work notice in specification 1.71(d) Mask work notice on drawing 1.84(s) Mask work protection, foreign Part 150 Microfiche deposit 1.96 Microorganisms. (see) Deposit of Biological Material.) Minimum balance in deposit accounts 1.25 Misjoinder of inventor 1.48, 1.324 Missing pages when application filed Petition alleging there were no missing pages 1.53(e) Petition with new oath or declaration and later submission of missing pages seeking new filing date 1.182 Mistake in patent, certificate thereof issued 1.322, 1.323 Models and exhibits: Copies of 1.95 If not claimed within reasonable time, may be disposed of by Commissioner 1.94 If on examination model be found necessary request therefor will be made 1.91 In contested cases 1.676 May be required 1.91(b) Model not generally required as part of application or patent 1.91 Not to be taken from the Office except in custody of sworn employee 1.95 Return of 1.94 Working model may be required 1.91(b) Money. (See Fees and payment of money.) Motions in interference 1.633-1.637 To take testimony in foreign country 1.671 N Name of applicant 1.41 New matter inadmissible in application 1.121 New matter inadmissible in reexamination 1.530(d), 1.552(b) New matter inadmissible in reissue 1.173 Non-English language specification fee 1.17(k) Nonprofit organization: Definition 1.9 Status statement 1.27 Notice: Of allowance of application 1.311 Of appeal to the Court of Appeals for the Federal Circuit 1.301, 1.302 Of arbitration award 1.335 Of defective reexamination request 1.510(c) Of interference 1.611 Of oral hearings on appeals before Board of Patent Appeals and Interference 1.194 Of rejection of an application 1.104(a) Of use of official records as evidence 1.682 To conflicting parties with same attorney or agent 1.613 Nucleotide and/or Amino Acid Sequences: Amendments to 1.825 Disclosure in patent application 1.821 Format for sequence data 1.822 Form and format for computer readable form 1.824 Replacement of 1.825 Requirements 1.823 O Oath or declaration in patent application: Apostilles 1.66 Before whom taken in foreign countries 1.66 Before whom taken in the United States 1.66 By administrator or executor 1.42, 1.63 By guardian of insane 1.43, 1.63 Certificate of Officer administering 1.66 Continuation-in-part 1.63(e) Declaration 1.68 Foreign language 1.69 Identification of specification to which it is directed 1.63 International application, National Stage 1.497 Inventor's Certificate 1.63 Made by inventor 1.41, 1.63 Officers authorized to administer oaths 1.66 Part of complete application 1.51 Person making 1.64 Plant patent application 1.162 Requirements of 1.63 Ribboned to other papers 1.66 Sealed 1.66 Signature to 1.63 Supplemental oath for matter disclosed but not originally claimed, or for other noncompliance with 1.63 1.67 To acknowledge duty of disclosure 1.63 When taken abroad to seal all papers 1.66 Oath or declaration in reissue application 1.175 Object of the invention 1.73 Office action time for response 1.134 Office fees. (See Fees and payment of money.) Official action, based exclusively upon the written record 1.2 Official business, should be transacted in writing 1.2 Official Gazette: Amendments to rules published in 1.351 One view of drawing published in 1.84(j) Reexamination order published in is returned undelivered 1.525(b) Service of notices in 1.646 Oral statements 1.2 Order to reexamine 1.525 P Papers (requirements to become part of Office permanent records, e.g. legibility, capable of reproduction, etc.) 1.52 Handwritten, no longer permitted 1.52(a) Papers not received on Saturday, Sunday or holidays 1.6 Patent application (See Application for patent and Provisional patent applications.) Patent attorneys and agents. (See Attorneys and agents.) Patent Cooperation Treaty: Amendments and corrections during international processing 1.471 Amendments during international preliminary examination 1.485 Applicant for international application 1.421 Changes in person, name and address, where filed 1.421(f), 1.472 Conduct of international preliminary examination 1.484 Definition of terms 1.401 Delays in meeting time limits 1.468 Demand for international preliminary examination 1.480 Designation of States 1.432 Entry into national stage 1.491 As a designated office 1.494 As an elected office 1.495 Examination at national stage 1.496 Fees: Designation fees 1.432 Due on filing of international application 1.431(c) Failure to pay results in withdrawal of application 1.431(d), 1.432 Filing and processing fees 1.445 International preliminary examining 1.482 National stage 1.492 Refunds 1.446 Filing by other than inventor 1.425 International application requirements 1.431 Abstract 1.438 Claims 1.436 Description 1.435 Drawings 1.437 Physical requirements 1.433 Request 1.434 International Bureau 1.415 International Preliminary Examining Authority 1.416 Inventor deceased 1.422 Inventor insane or legally incapacitated 1.423 Inventors, joint 1.424 National stage examination 1.496 Oath or declaration at national stage 1.497 Priority, claim for 1.451 Record copy to International Bureau, Transmittal procedures 1.461 Representation by attorney or agent 1.455 Rule 13 1.475 Time limits for processing applications 1.465, 1.468 United States as: Designated Office 1.414, 1.497 International Searching Authority 1.413 Receiving Office 1.412 Unity of invention: Before International Searching Authority 1.475, 1.476 Before International Preliminary Examining Authority 1.488 National stage 1.499 Protest to lack of 1.477, 1.489 Patent policy, government 100.1-100.11 Patentee notified of interference 1.602 Patents (see also Allowance and issue of Patent): Available for license or sale, publication of notice 1.21(i) Certified copies of 1.13 Copying claims of 1.606, 1.607 Correction of errors in 1.171, 1.322, 1.323, 1.324 Date, duration and form 1.137 Delivery of 1.315 Disclaimer 1.321 Identification required in letters concerning 1.5 Lapsed, for nonpayment of issue fee 1.137 Obtainable by civil action 1.303 Price of copies 1.19 Records of, open to public 1.11 Reissuing of, when defective 1.171-1.179 Payment of fees 1.23 Personal attendance unnecessary 1.2 Petition for reissue 1.171, 1.172 Petition to Commissioner: Fees 1.17 For delayed payment of issue fee 1.137 For license for foreign filing 5.12 For the revival of an abandoned application 1.137 From formal objections or requirements 1.113, 1.181 From requirement for restriction 1.129, 1.144 General requirements 1.181 In interferences 1.644 In reexamination 1.515(c) On refusal of examiner to admit amendment 1.127 Questions not specifically provided for 1.182 Suspension of rules 1.183 To exercise supervisory authority 1.181 To make special 1.102 Upon objection that appeal is informal 1.193 Plant patent applications: Applicant 1.162 Claim 1.164 Declaration 1.162 Description 1.162 Drawings 1.165 Examination 1.167 Fee for copies 1.19 Filing fee 1.16(g) Issue fee 1.18(c) Oath 1.162 Rules applicable 1.161 Specification 1.163 Specimens 1.166 Post issuance fees 1.20 Post Office receipt as filing date 1.10 Postal emergency or interruption 1.6(e) Power of attorney. (See Attorneys and agents.) Preliminary statement in interferences: Access to 1.631 Contents to 1.622-1.627 Contents of, invention made in other than the United States, a NAFTA country, or a WTO member country 1.624 Correction of statement on motion 1.628 Effect of statement 1.629 Failure to file 1.639, 1.640 In case of motion to amend interference 1.633 May be amended if defective 1.628 Not evidence 1.630 Reliance on prior application 1.626 Requirement for 1.621 Sealed before filing 1.627 Service on opposing parties 1.621 Subsequent testimony alleging prior dates excluded 1.629 When opened to inspection 1.631 Preserved in confidence, applications 1.12 and 1.14 Exceptions (status, access or copies available) 1.14 Printing testimony 1.653 Prior art citation in patent 1.501 Prior Art, disqualification of commonly owned patent as 1.130 Prior art may be made of record in patent file 1.501 Prior art statement: Content of 1.98 In reexamination 1.555 To comply with duty of disclosure 1.97 Prior Invention, affidavit or declaration of, to overcome cited patent or publication 1.131 Priority, right of, under treaty or law 1.55 Processing and retention fee 1.21(l), 1.53(f) Proclamation as to protection of foreign mask works Part 150 Production of documents in legal proceedings 15 C.F.R. Part 15a Protests to grant of patent 1.291 Provisional patent applications: Claiming the benefit of 1.78(a)(3) Converting a nonprovisional to a provisional 1.53(c)(2) Filing date 1.53 Filing fee 1.16(k) General requisites 1.51(b)(2) Later filing of filing fee and cover sheet 1.53(g) Names of all inventors required 1.41, 1.53(c) No right of priority 1.53(c)(2) No examination 1.53(i) Papers concerning, must identify provisional applications as such, and by application number 1.5(f) Parts of complete provisional application 1.51(c) Processing fees 1.17 Revival of 1.137 When abandoned 1.53(e)(2) Public information 1.15 Public use proceedings 1.292 Fee 1.17(j) Publication: Of reexamination certificate 1.570(f) R Reasons for allowance 1.104(e) Reconsideration of Office action 1.112 Recording of assignments. (See Assignments and recording.) Records of the Patent and Trademark Office 1.11-1.15 Records used as evidence in interference 1.682 Reexamination: Amendments, manner of making 1.121(c) Announcement in Official Gazette 1.11(c) Appeal to Board 1.191 Appeal to Court of Appeals for the Federal Circuit 1.301 Certificate 1.570 Civil action 1.303 Common ownership, statement by assignee may be required 1.78(c) Concurrent office proceedings 1.565 Conduct of proceedings 1.550 Correspondence address 1.33(c) Decision of request 1.515 Duty of disclosure 1.555 Examiner's action 1.104 Fee 1.20(c) Fee charged to deposit account 1.25 Fee refund 1.26 Identification in letter 1.5(d) Initiated by Commissioner 1.520 Interference 1.565 Interviews 1.560 Open to public 1.11(d) Order 1.525 Reconsideration 1.112 Refund of fee 1.26 Reply by requester 1.535 Reply to action 1.111 Request 1.510 Response consideration 1.540 Scope 1.552 Service 1.248 Statement of patent owner 1.530 Reference characters in drawings 1.74, 1.84(p) References cited on examination 1.104(d) Refund of money paid by mistake 1.26 Register of Government interest in patents 7.1-7.7 Rehearing: Of appeal decisions by Board of Patent Appeals and Interferences 1.197(b) Request for, time for appeal after action on 1.304 Reissues: Applicants, assignees 1.172 Application for reissue 1.171 Application made and sworn to by inventor, if living 1.172 Amendment to specification 1.173 Declaration 1.175 Drawings 1.174 Examination of reissue 1.176 Filed during interference 1.662(b) Filing during reexamination 1.565 Filing fee 1.16 Filing of announced in Official Gazette 1.11(b) Grounds for and requirements 1.171-1.179 Issue fee 1.18(a) Loss of original patent 1.178 Notice of reissue application 1.179 Oath 1.175 Open to public 1.11 Original claims subject to reexamination 1.176 Original patent surrendered 1.178 Reissue in divisions 1.177 Specification 1.173 Take precedence in order of examination 1.176 To contain no new matter 1.173 What must accompany application 1.171, 1.172 When in interference 1.660 Rejection: After two rejections appeal may be taken from examiner to Board of Appeals 1.191 Applicant will be notified of rejection with reasons and references 1.104 Examiner may rely on admissions by applicant or patent owner, or facts within examiner's knowledge 1.104(c) Final 1.113 Formal objections 1.104 On account of invention shown by others but not claimed, how overcome 1.131 References will be cited 1.104(c) Requisites of notice of 1.104 Reply brief 1.193 Reply by applicant or patent owner 1.111 Reply by requester 1.535 Representative capacity 1.34(a) Request for reconsideration 1.112 Request for reexamination 1.510 Reservation clauses not permitted 1.79 Response time to Office action 1.134 Restriction of application 1.141-1.146 Claims to nonelected invention withdrawn 1.142 Constructive election 1.145 Petition from requirements for 1.129, 1.144 Provisional election 1.143 Reconsideration of requirement 1.143 Requirement for 1.142 Subsequent presentation of claims for different invention 1.145 Transitional procedures 1.129 Retention fees 1.21(l), 1.53(f) Return of correspondence 1.5(a) Return of papers having a filing date 1.59 Revival of abandoned application 1.137 Unavoidable abandonment fee 1.17(l) Unintentional abandonment fee 1.17(m) Revocation of power of attorney or authorization of agent 1.36 Rules of Practice: Amendments to rules will be published 1.351 S Saturday, when last day falls on 1.7 Scope of reexamination proceedings 1.552 Secrecy order 5.1-5.6 Serial number of application (Obsolete terminology) (see Application Number) 1.5, 1.53, 1.54(b), 1.62(e) Service of notices: For taking testimony 1.673 In interference cases 1.611 Of appeal to the Court of Appeals for the Federal Circuit 1.301 Service of papers 1.248 Service of process 15 C.F.R. Part 15 Acceptance of service of process 15.3 Definition 15.2 Scope and purpose 15.1 Shortened period for response 1.134 Signature: Original required for certain correspondence 1.4(d) Copy Acceptable for some correspondence 1.4(d) To amendments, etc 1.33 To express abandonment 1.138 To oath 1.63 To reissue oath or declaration 1.172 Small business concern: Definition 1.9 Status statement 1.27 Small entity: Definition 1.9 License to Federal Agency 1.27 Statement 1.27 Statement in parent application 1.28 Status establishment 1.27, 1.28 Status update 1.28 Solicitor's address 1.1(a)(3) Species of invention claimed 1.141, 1.146 Specification (see also Application for patent, Claims): Abstract 1.72 Amendments to 1.121, 1.125 Arrangement of 1.77, 1.154, 1.163 Best mode 1.71 Claim 1.75 Contents of 1.71-1.75 Copyright notice 1.71(d) Cross-references to other applications 1.78 Description of the invention 1.71 Erasures and insertions must not be made by applicant 1.121 If defective, reissue to correct 1.171-1.179 Mask work notice 1.71(d) Must conclude with specific and distinct claim 1.75 Must point out new improvements specifically 1.71 Must refer by figures to drawings 1.74 Must set forth the precise invention 1.71 Not returned after completion 1.59 Object of the invention 1.73 Order of arrangement in framing 1.77 Paper, writing, margins 1.52 Part of complete application 1.51 Reference to drawings 1.74 Requirements of 1.71-1.75 Reservation clauses not permitted 1.79 Substitute 1.125 Summary of the invention 1.73 Title of the invention 1.72 To be rewritten, if necessary 1.125 Specimens. (See Models and exhibits.) Specimens of composition of matter to be furnished when required 1.93 Specimens of plants 1.166 Statement of status as small entity 1.27 Statutory disclaimer fee 1.20(d) Statutory invention registrations 1.293 Examination of 1.294 Publication of 1.297 Review of decision finally refusing to publish 1.295 Withdrawal of request for publication of 1.296 Sufficient funds in deposit account 1.25 Suit in equity. (See Civil action.) Summary of invention 1.73 Sunday, when last day falls on 1.7 Supervisory authority, petition to Commissioner to exercise 1.181 Supplemental oath for amendment presenting claims for matter disclosed but not originally claimed 1.67 Surcharge for oath or basic filing fee filed after filing date 1.16(e), 1.53(f) Suspension of action 1.103 Suspension of ex parte prosecution during interference 1.615 Suspension of rules 1.183 Symbols for drawings 1.84(n) Symbols for nucleotide and/or amino acid sequence data 1.822 T Tables in patent applications 1.58 Terminal disclaimer 1.321 Testimony by Office employees 15 C.F.R. Part 15a Definition 15 C.F.R. Part 15a.2 Policy re demand for testimony or document production 15 C.F.R. Part 15a.3 Procedures re demand for testimony or document production 15 C.F.R. Part 15a.4 Private litigation 15 C.F.R. Part 15a.6 Proceedings involving the United States 15 C.F.R. Part 15a.7 Requests for confidential documents 15 C.F.R. Part 15a.7 Scope 15 C.F.R. Part 15a.1 Subpoena of Office employee 15 C.F.R. Part 15a.5 Testimony of employees in proceedings involving U.S 15 C.F.R. Part 15a.8 Testimony in interferences: Additional time for taking 1.645 Assignment of times for taking 1.651 Certification and filing by officer 1.676 Copies of 1.653 Depositions must be filed 1.678 Discovery 1.687 Effect of errors and irregularities in deposition 1.685 Evidence must comply with rules 1.671 Examination of witnesses 1.675 Failure to take 1.652 Form of deposition 1.677 Formal objections to 1.685 Formalities in preparing depositions 1.674-1.677 In foreign countries 1.671 Inspection of testimony 1.679 Manner of taking testimony of witnesses 1.672 Motion to extend time for taking 1.645 Not considered if not taken and filed in compliance with rules 1.671 Notice of examination of witnesses 1.673 Notice of intent to rely on affidavit 1.671(e) Objections noted in depositions 1.675 Weight of deposition testimony taken in foreign country 1.671(j) Objections to formal matters 1.685 Official records and printed publications 1.682 Officer's certificate 1.676 Persons before whom depositions may be taken 1.674 Printing of 1.653 Service of notice 1.673 Stipulations or agreements concerning 1.672 Taken by depositions 1.672 Testimony taken in another interference or action, use of 1.683 Time for taking 1.651 To be inspected by parties to the case only 1.679 Time expiring on Saturday, Sunday, or holiday 1.7 Time for payment of issue fee 1.311 Time for response by applicant 1.134, 1.136 Time for response by patent owner 1.530 Time for response by requester 1.535 Time for response to Office action 1.134, 1.136 Time, periods of 1.7 Timely filing of correspondence 1.8, 1.10 Title of invention 1.72 Title reports, fee for 1.19(b)(4) Transitional procedures 1.129 U Unavoidable abandonment 1.137 Unintentional abandonment 1.137 United States as: Designated Office 1.414, 1.497 Elected Office 1.414 International Preliminary Examining Authority 1.416 International Searching Authority 1.413 Receiving Office 1.412 Unsigned continuation or divisional application 1.53 Use of file of parent application 1.53(d) V Verified statement of small entity status 1.27 W Waiver of secrecy 1.53(d)(6) Withdrawal from issue 1.313 Withdrawal of attorney or agent 1.36 Withdrawal of request for statutory invention registration 1.296 Written Description allegedly missing Petition contesting this allegation 1.53(e) Petition with new oath or declaration and later submission of missing specification seeking new filing date 1.53(e) 37 CFR Ch. I (7-1-04 Edition) U.S. Patent and Trademark Office, Commerce