[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 2007 Edition]
[From the U.S. Government Printing Office]
[[Page i]]
37
Revised as of July 1, 2007
Patents, Trademarks, and Copyrights
________________________
Containing a codification of documents of general
applicability and future effect
As of July 1, 2007
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 OFFICIAL EDITION NOTICE
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[[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 443
Chapter III--Copyright Royalty Board, Library of
Congress 677
Chapter IV--Assistant Secretary for Technology
Policy, Department of Commerce 717
Chapter V--Under Secretary for Technology,
Department of Commerce 741
Finding Aids:
Material Approved for Incorporation by Reference........ 749
Table of CFR Titles and Chapters........................ 751
Alphabetical List of Agencies Appearing in the CFR...... 769
List of CFR Sections Affected........................... 779
[[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, 2007), 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
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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, 2001, consult either the List of CFR Sections Affected, 1949-
1963, 1964-1972, 1973-1985, or 1986-2000, published in 11 separate
volumes. For the period beginning January 1, 2001, 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 202-741-6010.
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 textual material
appearing in the Code of Federal Regulations.
INQUIRIES
For a legal interpretation or explanation of any regulation in this
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register. The NARA site also contains links to GPO Access.
Raymond A. Mosley,
Director,
Office of the Federal Register.
July 1, 2007.
[[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, 2007.
The parts in chapter I, subchapter A, are regrouped according to
subject matter. All parts pertaining to patents--parts 1, 3, 4, and 5--
appear sequentially. All parts pertaining to trademarks--parts 2, 6, and
7--follow, also in sequence. Part 3, which pertains to both patents and
trademarks, follows the first part.
For this volume, Moja N. Mwaniki was Chief Editor. The Code of
Federal Regulations publication program is under the direction of
Frances D. McDonald, assisted by Ann Worley.
[[Page 1]]
TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
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Part
chapter i--United States Patent and Trademark Office,
Department of Commerce.................................... 1
chapter ii--Copyright Office, Library of Congress........... 201
chapter iii--Copyright Royalty Board, Library of Congress... 301
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
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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. For further explanation see This Title, page ix.
SUBCHAPTER A--GENERAL
PATENTS
Part Page
1 Rules of practice in patent cases........... 5
3 Assignment, recording and rights of assignee 189
4 Complaints regarding invention promoters.... 196
5 Secrecy of certain inventions and licenses
to export and file applications in
foreign countries....................... 197
Index I--Rules relating to patents.......... 207
TRADEMARKS
2 Rules of practice in trademark cases........ 229
6 Classification of goods and services under
the Trademark Act....................... 298
7 Rules of practice in filings pursuant to the
protocol relating to the Madrid
agreement concerning the international
registration of marks................... 301
Index II--Rules relating to trademarks...... 313
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
10 Representation of others before the Patent
and Trademark Office.................... 334
11 Representation of others before the United
States Patent and Trademark Office...... 360
15-15a [Reserved]
41 Practice before the Board of Patent Appeals
and Interferences....................... 373
[[Page 4]]
Index III--Rules relating to practice before
the Patent and Trademark Office......... 405
SUBCHAPTER B--ADMINISTRATION
100-101 [Reserved]
102 Disclosure of government information........ 411
104 Legal processes............................. 435
SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150 Requests for Presidential proclamations
pursuant to 17 U.S.C. 902(a)(2)......... 440
[[Page 5]]
SUBCHAPTER A_GENERAL
PATENTS--Table of Contents
PART 1_RULES OF PRACTICE IN PATENT CASES--Table of Contents
Subpart A_General Provisions
General Information and Correspondence
Sec.
1.1 Addresses for non-trademark correspondence with the United States
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 patent, patent application, or patent-related
proceeding.
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, search, and examination 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 Applicant may be represented by one or more patent practitioners or
joint inventors.
1.32 Power of attorney.
1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
1.34 Acting in a representative capacity.
1.36 Revocation of power of attorney; withdrawal of patent 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, compact disc specifications.
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 Incorporation by reference.
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]
[[Page 6]]
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 and affidavits or other evidence after final action and
prior to 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 or limited
reexamination prosecution, 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.
[[Page 7]]
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 [Reserved]
Petitions and Action by the Director
1.181 Petition to the Director.
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.
1.192-1.196 [Reserved]
1.197 Return of jurisdiction from the Board of Patent Appeals and
Interferences; termination of proceedings.
1.198 Reopening after a final decision of the Board of Patent Appeals
and Interferences.
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.
[[Page 8]]
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 publication.
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.
The International Application
1.431 International application requirements.
1.432 Designation of States by filing an international application.
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.
1.494 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.
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
[[Page 9]]
1.520 Ex parte reexamination at the initiative of the Director.
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 and publication of ex parte reexamination certificate
concludes ex parte reexamination proceeding.
Subpart E [Reserved]
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.
[[Page 10]]
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, Terminating of Reexamination Prosecution, 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 inter partes reexamination prosecution
terminated for lack of patent owner response.
Appeal to the Board of Patent Appeals and Interferences in Inter Partes
Reexamination
1.959 Appeal in inter partes reexamination.
1.961-1.977 [Reserved]
1.979 Return of Jurisdiction from the Board of Patent Appeals and
Interferences; termination of appeal proceedings.
1.981 Reopening after a final decision of the Board of Patent Appeals
and Interferences.
Appeal to the United States Court of Appeals for the Federal Circuit in
Inter Partes Reexamination
1.983 Appeal to the United States Court of Appeals for the Federal
Circuit in inter partes reexamination.
Concurrent Proceedings Involving Same Patent in Inter 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.
[[Page 11]]
Reexamination Certificate in Inter Partes Reexamination
1.997 Issuance and publication of inter partes reexamination certificate
concludes inter partes reexamination proceeding.
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.
Editorial Notes: 1. In Patent and Trademark Office publications and
usage the part number is omitted from the numbers of Sec. Sec. 1.1 to
1.352 and the numbers to the right of the decimal point correspond with
the respective rule numbers.
2. For nomenclature changes to part 1, see 68 FR 14335, Mar. 25,
2003.
Subpart A_General Provisions
General Information and Correspondence
Sec. 1.1 Addresses for non-trademark correspondence with the United States
Patent and Trademark Office.
(a) In general. Except as provided in paragraphs (a)(3)(i),
(a)(3)(ii), and (d)(1) of this section, all correspondence intended for
the United States Patent and Trademark Office must be addressed to
either ``Director of the United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, Virginia 22313-1450'' or to specific areas within
the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this
section. When appropriate, correspondence should also be marked for the
attention of a particular office or individual.
(1) Patent correspondence. (i) In general. All correspondence
concerning patent matters processed by organizations reporting to the
Commissioner for Patents should be addressed to: Commissioner for
Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
(ii) Board of Patent Appeals and Interferences. See Sec. 41.10 of
this title. Notices of appeal, appeal briefs, reply briefs, requests for
oral hearing, as well as all other correspondence in an application or a
patent involved in an appeal to the Board for which an address is not
otherwise specified, should be addressed as set out in paragraph
(a)(1)(i) of this section.
(2) [Reserved]
(3) Office of General Counsel correspondence--(i) Litigation and
service. Correspondence relating to pending litigation or otherwise
within the scope of part 104 of this title shall be addressed as
provided in Sec. 104.2.
(ii) Disciplinary proceedings. Correspondence to counsel for the
Director of the Office of Enrollment and Discipline relating to
disciplinary proceedings pending before an Administrative Law Judge or
the Director shall be mailed to: Office of the Solicitor, PO Box 16116,
Arlington, Virginia 22215.
(iii) Solicitor, in general. Correspondence to the Office of the
Solicitor not otherwise provided for shall be addressed to: Mail Stop 8,
Director of the United States Patent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313-1450.
(iv) General Counsel. Correspondence to the Office of the General
Counsel not otherwise provided for, including correspondence to the
General Counsel relating to disciplinary proceedings, shall be addressed
to: General Counsel, United States Patent and Trademark Office, PO Box
1450, Alexandria, Virginia 22313-1450.
(v) Improper correspondence. Correspondence improperly addressed to
a Post Office Box specified in paragraphs (a)(3)(i) and(a)(3)(ii) of
this section will not be filed elsewhere in the United States Patent and
Trademark Office, and may be returned.
(4) Office of Public Records correspondence. (i) Assignments. All
patent-related documents submitted by mail to be recorded by Assignment
Services Division, except for documents filed together with a new
application, should be addressed to: Mail Stop Assignment Recordation
Services, Director of the United States Patent and Trademark Office,
P.O. Box 1450, Alexandria, Virginia 22313-1450. See Sec. 3.27.
(5) Office of Enrollment and Discipline correspondence. All
correspondence directed to the Office of Enrollment and Discipline
concerning enrollment, registration, and investigation matters should be
addressed to Mail Stop OED, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(ii) Documents. All requests for certified or uncertified copies of
patent
[[Page 12]]
documents should be addressed to: Mail Stop Document Services, Director
of the United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450.
(b) Patent Cooperation Treaty. 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 ``Mail Stop PCT.''
(c) For reexamination proceedings. (1) Requests for ex parte
reexamination (original request papers) and all subsequent ex parte
reexamination correspondence filed in the Office, other than
correspondence to the Office of the General Counsel pursuant to Sec.
1.1(a)(3) and Sec. 1.302(c), should be additionally marked ``Mail Stop
Ex Parte Reexam.''
(2) Requests for inter partes reexamination (original request
papers) and all subsequent inter partes reexamination correspondence
filed in the Office, other than correspondence to the Office of the
General Counsel pursuant to Sec. 1.1(a)(3) and Sec. 1.302(c), should
be additionally marked ``Mail Stop Inter partes Reexam.''
(d) Maintenance fee correspondence.--(1) Payments. Payments of
maintenance fees in patents not submitted electronically should be
mailed to: United States Patent and Trademark Office, P.O. Box 371611,
Pittsburgh, Pennsylvania 15250-1611.
(2) Other correspondence. Correspondence related to maintenance fees
other than payments of maintenance fees in patents is not to be mailed
to P.O. Box 371611, Pittsburgh, Pennsylvania 15250-1611, but must be
mailed to: Mail Stop M Correspondence, Director of the United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450.
(e) Patent term extension. All applications for extension of patent
term under 35 U.S.C. 156 and any communications relating thereto
intended for the United States Patent and Trademark Office should be
additionally marked ``Mail Stop Patent Ext.'' When appropriate, the
communication should also be marked to the attention of a particular
individual, as where a decision has been rendered.
(f) [Reserved]
[68 FR 14335, Mar. 25, 2003; 68 FR 19371, Apr. 21, 2003, as amended at
68 FR 48287, Aug. 13, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 29877, May
26, 2004; 69 FR 35451, June 24, 2004; 69 FR 49997, Aug. 12, 2004; 72 FR
18904, Apr. 16, 2007]
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 United States Patent and Trademark Office with
decorum and courtesy. Papers presented in violation of this requirement
will be submitted to the Director and will not be entered. A notice of
the non-entry of the paper will be provided. Complaints against
examiners and other employees must be made in correspondence separate
from other papers.
[68 FR 38624, June 30, 2003]
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, 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, Sec. Sec. 1.31 to 1.378; of international applications in
subpart C, Sec. Sec. 1.401 to 1.499; of ex parte reexaminations of
patents in subpart D,
[[Page 13]]
Sec. Sec. 1.501 to 1.570; of extension of patent term in subpart F,
Sec. Sec. 1.710 to 1.785; of inter partes reexaminations of patents in
subpart H, Sec. Sec. 1.902 to 1.997; and of the Board of Patent Appeals
and Interferences in part 41 of this title.
(b) Since each file must be complete in itself, a separate copy of
every paper to be filed in a patent application, patent 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 file
of an application, patent, 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, 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) Handwritten signature. Each piece of correspondence, except
as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section,
filed in an application, patent file, or other proceeding in the Office
which requires a person's signature, must:
(i) Be an original, that is, have an original handwritten signature
personally signed, in permanent dark ink or its equivalent, 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.
(2) S-signature. An S-signature is a signature inserted between
forward slash marks, but not a handwritten signature as defined by Sec.
1.4(d)(1). An S-signature includes any signature made by electronic or
mechanical means, and any other mode of making or applying a signature
not covered by a handwritten signature of Sec. 1.4(d)(1).
Correspondence being filed in the Office in paper, by facsimile
transmission as provided in Sec. 1.6(d), or via the Office electronic
filing system as an attachment as provided in Sec. 1.6(a)(4), for a
patent application, patent, or a reexamination proceeding may be S-
signature signed instead of being personally signed (i.e., with a
handwritten signature) as provided for in paragraph (d)(1) of this
section. The requirements for an S-signature under this paragraph (d)(2)
of this section are as follows.
(i) The S-signature must consist only of letters, or Arabic
numerals, or both, with appropriate spaces and commas, periods,
apostrophes, or hyphens for punctuation, and the person signing the
correspondence must insert his or her own S-signature with a first
single forward slash mark before, and a second single forward slash mark
after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (Sec. 1.32(a)(1)), signing pursuant to
Sec. Sec. 1.33(b)(1) or 1.33(b)(2), must supply his/her registration
number either as part of the S-signature, or immediately below or
adjacent to the S-signature. The number () character may be
used only as part of the S-signature when appearing before a
practitioner's registration number; otherwise the number character may
not be used in an S-signature.
(iii) The signer's name must be:
(A) Presented in printed or typed form preferably immediately below
or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer
can be readily recognized.
(3) Forms. The Office provides forms to the public to use in certain
situations to assist in the filing of correspondence for a certain
purpose and to meet certain requirements for patent applications and
proceedings. Use of the forms for purposes for which they were not
designed is prohibited. No changes to certification statements on the
Office forms (e.g., oath or declaration forms, terminal disclaimer
forms, petition forms, and nonpublication request form) may be made. The
existing text of a form, other than a certification statement, may be
modified, deleted, or added to, if all text identifying the form as an
Office form
[[Page 14]]
is removed. The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any Office form with text
identifying the form as an Office form by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Sec. 10.18(b) of this chapter that the existing text and any
certification statements on the form have not been altered other than
permitted by EFS-Web customization.
(4) Certifications. (i) Section 10.18 certifications: 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) of this chapter may also be
subject to disciplinary action. See Sec. Sec. 10.18(d) and 10.23(c)(15)
of this chapter.
(ii) Certifications as to the signature:
(A) Of another: A person submitting a document signed by another
under paragraph (d)(2) of this section is obligated to have a reasonable
basis to believe that the person whose signature is present on the
document was actually inserted by that person, and should retain
evidence of authenticity of the signature.
(B) Self certification: The person inserting a signature under
paragraph (d)(2) of this section in a document submitted to the Office
certifies that the inserted signature appearing in the document is his
or her own signature.
(e) Correspondence requiring a person's signature and relating to
registration practice before the Patent and Trademark Office in patent
cases, enrollment and disciplinary investigations, or disciplinary
proceedings must be submitted with an original handwritten signature
personally signed in permanent dark ink or its equivalent 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.
(h) Ratification/confirmation/evidence of authenticity: The Office
may require ratification, confirmation (which includes submission of a
duplicate document but with a proper signature), or evidence of
authenticity of a signature, such as when the Office has reasonable
doubt as to the authenticity (veracity) of the signature, e.g., where
there are variations of a signature, or where the signature and the
typed or printed name, do not clearly identify the person signing.
(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; 67 FR 79522, Dec. 30,
2002; 68 FR 48287, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR
56535, Sept. 21, 2004; 70 FR 56126, Sept. 26, 2005; 72 FR 2775, Jan. 23,
2007]
Sec. 1.5 Identification of patent, patent application, or patent-related
proceeding.
(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) [Reserved]
(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) [Reserved]
(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; 68 FR 48288, Aug. 13,
2003; 69 FR 49997, Aug. 12, 2004]
Sec. 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit. Correspondence
received in the Patent and Trademark Office is stamped with the date of
receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile under paragraph (a)(3) of this section, or filed
electronically under paragraph (a)(4) of this section, no correspondence
is received in the Office on Saturdays, Sundays, or Federal holidays
within the District of Columbia.
(2) Correspondence filed in accordance with Sec. 1.10 will be
stamped with the date of deposit as ``Express Mail'' with the United
States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and
Trademark Office will be stamped with the date on which the complete
transmission is received in the Patent and Trademark Office unless that
date is a Saturday, Sunday, or Federal holiday within the District of
Columbia, in which case the date stamped will be the next succeeding day
which is not a Saturday, Sunday, or Federal holiday within the District
of Columbia.
(4) Correspondence may be submitted using the Office electronic
filing system only in accordance with the Office electronic filing
system requirements. Correspondence submitted to the Office
[[Page 16]]
by way of the Office electronic filing system will be accorded a receipt
date, which is the date the correspondence is received at the
correspondence address for the Office set forth in Sec. 1.1 when it was
officially submitted.
(b) [Reserved]
(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 United States 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 United States Patent
and Trademark Office. The application number of a patent application,
the control number of a reexamination proceeding, the interference
number of an interference proceeding, or the patent number of a patent
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), 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) Color drawings submitted under Sec. Sec. 1.81, 1.83 through
1.85, 1.152, 1.165, 1.173, or 1.437;
(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 Sec. Sec. 5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;
(7)-(8) [Reserved]
(9) In contested cases before the Board of Patent Appeals and
Interferences except as the Board may expressly authorize.
(e) [Reserved]
(f) Facsimile transmission of a patent application under Sec.
1.53(d). In the event that the Office has no evidence of receipt of an
application under Sec. 1.53(d) (a continued prosecution application)
transmitted to the Office by facsimile transmission, the party who
transmitted the application under Sec. 1.53(d) may petition the
Director 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 Director 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.
(g) Submission of the national stage correspondence required by
Sec. 1.495 via the Office electronic filing system. In the event that
the Office has no evidence of receipt of the national stage
correspondence required by Sec. 1.495, which was submitted to the
Office by the Office electronic filing system, the party who
[[Page 17]]
submitted the correspondence may petition the Director to accord the
national stage correspondence a receipt date as of the date the
correspondence is shown to have been officially submitted to the Office.
(1) The petition of this paragraph (g) requires that the party who
submitted such national stage correspondence:
(i) Informs the Office of the previous submission of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence under Sec. 1.495;
(ii) Supplies an additional copy of the previously submitted
correspondence;
(iii) Includes a statement that attests on a personal knowledge
basis, or to the satisfaction of the Director, that the correspondence
was previously officially submitted; and
(iv) Supplies a copy of an acknowledgment receipt generated by the
Office electronic filing system, or equivalent evidence, confirming the
submission to support the statement of paragraph (g)(1)(iii) of this
section.
(2) The Office may require additional evidence to determine if the
national stage correspondence was submitted to 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; 68 FR 14336, Mar.
25, 2003; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007]
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 situations enumerated in paragraph (a)(2) of this
section or as otherwise expressly excluded in this chapter,
correspondence required to be filed in the U.S. 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;
(B) Transmitted by facsimile to the Patent and Trademark Office in
accordance with Sec. 1.6(d); or
(C) Transmitted via the Office electronic filing system in
accordance with Sec. 1.6(a)(4); and
(ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person
signing the certificate should have reasonable basis to expect that the
correspondence would be mailed or transmitted on or before the date
indicated.
(2) The procedure described in paragraph (a)(1) of this section does
not apply to, and no benefit will be given to a Certificate of Mailing
or Transmission on the following:
(i) Relative to Patents and Patent Applications--
(A) The filing of a national patent application specification and
drawing or other correspondence for the purpose of obtaining an
application filing date, including a request for a continued prosecution
application under Sec. 1.53(d);
(B) [Reserved]
[[Page 18]]
(C) Papers filed in contested cases before the Board of Patent
Appeals and Interferences, which are governed by Sec. 41.106(f) of this
title;
(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. 1.495(b).
(ii) [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 U.S. Patent and Trademark Office after
a reasonable amount of time has elapsed from the time of mailing or
transmitting of the correspondence, or after the application is held to
be abandoned, or after the proceeding is dismissed or decided with
prejudice, or the prosecution of a reexamination proceeding is
terminated pursuant to Sec. 1.550(d) or Sec. 1.957(b) or limited
pursuant to Sec. 1.957(c), or a requester paper is refused
consideration pursuant to Sec. 1.957(a), 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 that attests on a personal knowledge basis
or to the satisfaction of the Director to the previous timely mailing,
transmission or submission. 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. If the
correspondence was transmitted via the Office electronic filing system,
a copy of an acknowledgment receipt generated by the Office electronic
filing system confirming submission 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; 67 FR 523, Jan. 4,
2002; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 72 FR 18904, Apr. 16,
2007]
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 Board of Patent Appeals and Interferences
proceedings, see part 41 of this title.
(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
[[Page 19]]
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 and, in fact, properly classified pursuant to such Act of
Congress or Executive Order.
(j) Director as used in this chapter, except for part 10 of this
section, means the Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office.
(k) Paper as used in this chapter means a document that may exist in
electronic form, or in physical form, and therefore does not necessarily
imply physical sheets of paper.
(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; 68 FR 14336, Mar.
25, 2003; 68 FR 38624, June 30, 2003; 69 FR 49997, Aug. 12, 2004]
Sec. 1.10 Filing of correspondence by ``Express Mail.''
(a)(1) Any correspondence received by the U.S. Patent and Trademark
Office (USPTO) that was delivered by the ``Express Mail Post Office to
Addressee'' service of the United States Postal Service (USPS) will be
considered filed with the USPTO on the date of deposit with the USPS.
(2) The date of deposit with USPS is shown by the ``date in'' on the
``Express Mail'' label or other official USPS notation. If the USPS
deposit date cannot be determined, the correspondence will be accorded
the USPTO 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 Director 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 Director 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
[[Page 20]]
correspondence prior to the original mailing by ``Express Mail''; and
(3) The petition includes a showing which establishes, to the
satisfaction of the Director, that the requested filing date was the
date the correspondence was deposited in the ``Express Mail Post Office
to Addressee'' service prior to the last scheduled pickup for that day.
Any showing pursuant to this paragraph must be corroborated by evidence
from the USPS or that came into being after deposit and within one
business day of the deposit of the correspondence in the ``Express Mail
Post Office to Addressee'' service of the USPS.
(e) Any person mailing correspondence addressed as set out in Sec.
1.1(a) to the Office with sufficient postage utilizing the ``Express
Mail Post Office to Addressee'' service of the USPS but not received by
the Office, may petition the Director 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 Director, 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.
(g) Any person who mails 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 has
the correspondence returned by the USPS due to an interruption or
emergency in ``Express Mail'' service, may petition the Director to
consider such correspondence as filed on a particular date in the
Office, provided that:
(1) The petition is filed promptly after the person becomes aware of
the return 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 the original correspondence or a copy of
the original correspondence showing the number of the ``Express Mail''
mailing label thereon and a copy of the ``Express Mail'' mailing label
showing the ``date-in''; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Director, the original deposit of the correspondence
and that the correspondence or copy of the correspondence is the
original correspondence or a true copy of the correspondence originally
deposited with the USPS on the requested filing date. The Office may
require additional evidence to determine if the correspondence was
returned by the USPS due to an interruption or emergency in ``Express
Mail'' service.
(h) Any person who attempts to mail correspondence addressed as set
out in Sec. 1.1(a) to the Office with sufficient postage utilizing the
``Express Mail
[[Page 21]]
Post Office to Addressee'' service of the USPS, but has the
correspondence refused by an employee of the USPS due to an interruption
or emergency in ``Express Mail'' service, may petition the Director to
consider such correspondence as filed on a particular date in the
Office, provided that:
(1) The petition is filed promptly after the person becomes aware of
the refusal 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
attempted mailing by ``Express Mail'';
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the ``Express Mail''
mailing label thereon; and
(4) The petition includes a statement by the person who originally
attempted to deposit the correspondence with the USPS which establishes,
to the satisfaction of the Director, the original attempt to deposit the
correspondence and that the correspondence or copy of the correspondence
is the original correspondence or a true copy of the correspondence
originally attempted to be deposited with the USPS on the requested
filing date. The Office may require additional evidence to determine if
the correspondence was refused by an employee of the USPS due to an
interruption or emergency in ``Express Mail'' service.
(i) Any person attempting to file correspondence under this section
that was unable to be deposited with the USPS due to an interruption or
emergency in ``Express Mail'' service which has been so designated by
the Director, may petition the Director to consider such correspondence
as filed on a particular date in the Office, provided that:
(1) The petition is filed in a manner designated by the Director
promptly after the person becomes aware of the designated interruption
or emergency in ``Express Mail'' service;
(2) The petition includes the original correspondence or a copy of
the original correspondence; and
(3) The petition includes a statement which establishes, to the
satisfaction of the Director, that the correspondence would have been
deposited with the USPS but for the designated interruption or emergency
in ``Express Mail'' service, and that the correspondence or copy of the
correspondence is the original correspondence or a true copy of the
correspondence originally attempted to be deposited with the USPS on the
requested filing date.
[61 FR 56447, Nov. 1, 1996 as amended at 62 FR 53181, Oct. 10, 1997; 67
FR 36101, May 23, 2002; 68 FR 48288, Aug. 13, 2003; 69 FR 56536, Sept.
21, 2004]
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: A published application; 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). If
an application was published in redacted form pursuant to Sec. 1.217,
the complete file wrapper and contents of the patent application will
not be available if: The requirements of paragraphs (d)(1), (d)(2), and
(d)(3) of Sec. 1.217 have been met in the application; and the
application is still pending. See Sec. 2.27 of this title 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 all the requirements of
Sec. 1.510 or Sec. 1.915 have been satisfied will be announced in the
Official Gazette. Any reexaminations at the initiative of the
[[Page 22]]
Director 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
Director initiated order control number, patent number, title, class and
subclass, name of the inventor, name of the patent owner of record, and
the examining group to which the reexamination is assigned.
(d) All papers or copies thereof relating to a reexamination
proceeding which have been entered of record in the patent or
reexamination file are open to inspection by the general public, and
copies may be furnished upon paying the fee therefor.
(e) Except as prohibited in Sec. 41.6(b), the file of any
interference is open to public inspection and copies of the file may be
obtained upon payment of the fee therefor.
(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; 69 FR 49997, Aug. 12, 2004; 70 FR
56126, Sept. 26, 2005; 71 FR 44223, Aug. 4, 2006]
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),
and published patent applications, are open to public inspection at the
United States Patent and Trademark Office, and copies of patent
assignment records may be obtained upon request and payment of the fee
set forth in Sec. 1.19 of this chapter. See Sec. 2.200 of this chapter
regarding trademark assignment records.
(2) All records of assignments of patents recorded before May 1,
1957, 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 is open to the public pursuant to
Sec. 1.11 or for which copies or access may be supplied pursuant to
Sec. 1.14, are available to the public. Copies of any assignment
records, digests, and indexes that are not available to the public shall
be obtainable only upon written authority of the applicant or
applicant's assignee or patent attorney or patent 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(g); 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; 68 FR 48288, Aug.
13, 2003; 69 FR 29877, May 26, 2004; 69 FR 56536, Sept. 21, 2004]
Sec. 1.13 Copies and certified copies.
(a) Non-certified copies of patents, and patent application
publications 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
[[Page 23]]
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. See Sec.
2.201 of this chapter regarding copies of trademark records.
(b) 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 or persons entitled thereto will
be authenticated by the seal of the United States Patent and Trademark
Office and certified by the Director, or in his or her name, upon
payment of the fee for the certified copy.
[68 FR 48288, Aug. 13, 2003, as amended at 68 FR 71006, Dec. 22, 2003]
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) Records associated with patent applications (see paragraph (g)
for international applications) may be available in the following
situations:
(i) Patented applications and statutory invention registrations. The
file of an application that has issued as a patent or published as a
statutory invention registration is available to the public as set forth
in Sec. 1.11(a). A copy of the patent application-as-filed, the file
contents of the application, or a specific document in the file of such
an application may be provided upon request and payment of the
appropriate fee set forth in Sec. 1.19(b).
(ii) Published abandoned applications. The file of an abandoned
application that has been published as a patent application publication
is available to the public as set forth in Sec. 1.11(a). A copy of the
application-as-filed, the file contents of the published application, or
a specific document in the file of the published application may be
provided to any person upon request, and payment of the appropriate fee
set forth in Sec. 1.19(b).
(iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in
the file of a pending application that has been published as a patent
application publication may be provided to any person upon request, and
payment of the appropriate fee set forth in Sec. 1.19(b). 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. The Office will not provide access to the paper file of a
pending application that has been published, except as provided in
paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications (including provisional
applications) that are identified or relied upon. The file contents of
an unpublished, abandoned application may be made available to the
public if the application is identified in a U.S. patent, a statutory
invention registration, a U.S. patent application publication, or an
international patent application publication of an international
application that was published in accordance with PCT Article 21(2). An
application is considered to have been identified in a document, such as
a patent, when the application number or serial number and filing date,
first named inventor, title and filing date or other application
specific information are provided in the text of the patent, but not
when the same identification is made in a paper in the file contents of
the patent and is not included in the printed patent. Also, the file
contents may be made available to the public, upon a written request, if
benefit of the abandoned application is claimed under 35 U.S.C. 119(e),
120, 121, or 365 in an application that has issued as a U.S. patent, or
has published as a statutory invention registration, a U.S. patent
application publication, or an international patent application that was
published in accordance with PCT Article 21(2). A copy of the
application-as-filed, the file
[[Page 24]]
contents of the application, or a specific document in the file of the
application may be provided to any person upon written request, and
payment of the appropriate fee (Sec. 1.19(b)).
(v) Unpublished pending applications (including provisional
applications) whose benefit is claimed. A copy of the file contents of
an unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (Sec. 1.19(b)), if
the benefit of the application is claimed under 35 U.S.C. 119(e), 120,
121, or 365 in an application that has issued as a U.S. patent, an
application that has published as a statutory invention registration, a
U.S. patent application publication, or an international patent
application publication that was published in accordance with PCT
Article 21(2). A copy of the application-as-filed, or a specific
document in the file of the pending application may also be provided to
any person upon written request, and payment of the appropriate fee
(Sec. 1.19(b)). The Office will not provide access to the paper file of
a pending application, except as provided in paragraph (c) or (i) of
this section.
(vi) Unpublished pending applications (including provisional
applications) that are incorporated by reference or otherwise
identified. A copy of the application as originally filed of an
unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (Sec. 1.19(b)), if
the application is incorporated by reference or otherwise identified in
a U.S. patent, a statutory invention registration, a U.S. patent
application publication, or an international patent application
publication that was published in accordance with PCT Article 21(2). The
Office will not provide access to the paper file of a pending
application, except as provided in paragraph (c) or (i) of this section.
(vii) When a petition for access or a power to inspect is required.
Applications that were not published or patented, that are not the
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in
an application that has issued as a U.S. patent, an application that has
published as a statutory invention registration, a U.S. patent
application publication, or an international patent application
publication that was published in accordance with PCT Article 21(2), or
are not identified in a U.S. patent, a statutory invention registration,
a U.S. patent application publication, or an international patent
application that was published in accordance with PCT Article 21(2), are
not available to the public. If an application is identified in the file
contents of another application, but not the published patent
application or patent itself, a granted petition for access (see
paragraph (i)), or a power to inspect (see paragraph (c)) is necessary
to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be communicated
to the public if the patent application is identified in a published
patent document or in an application as set forth in paragraphs
(a)(1)(i) through (a)(1)(vi) of this section. The information that may
be communicated to the public (i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C.
122(b);
(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; and
(iv) Whether another application claims the benefit of the
application (i.e., whether there are any applications that claim the
benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of
the application), and if there are any such applications, the numerical
identifier of the application, the specified relationship between the
applications (e.g., continuation), whether the application is pending,
abandoned or patented, and whether the application has been published
under 35 U.S.C. 122(b).
(b) Electronic access to an application. Where a copy of the
application file or access to the application may be made available
pursuant to this section, the Office may at its discretion provide
access to only an electronic copy of the
[[Page 25]]
specification, drawings, and file contents of the application.
(c) 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 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. 1.495, if an executed oath or declaration
pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
(d) 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).
(e) Decisions by the Director. Any decision by the Director that
would not otherwise be open to public inspection may be published or
made available for public inspection if:
(1) The Director believes the decision involves an interpretation of
patent laws or regulations that would be of precedential value; and
(2) The applicant 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.
(f) 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).
(g) 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)), if:
(i) With respect to the Home Copy (the copy of the international
application kept by the Office in its capacity as the Receiving Office,
see PCT Article 12(1)), the international application was filed with the
U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy of an international
application kept by the Office in its capacity as the International
Searching Authority, see PCT Article 12(1)), the U.S. acted as the
International Searching Authority, except for the written opinion of the
International Searching Authority which shall not be available until the
expiration of thirty months from the priority date; or
(iii) With respect to the Examination Copy (the copy of an
international application kept by the Office in its capacity as the
International Preliminary Examining Authority), the United States acted
as the International Preliminary Examining Authority, an International
Preliminary Examination Report has issued, and the United States was
elected.
(2) A copy of an English language translation of a publication of an
international application which has been filed in the United States
Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be
furnished upon written request including a showing that the
[[Page 26]]
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)(4)).
(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 permitted in accordance with PCT Articles 30
and 38 and PCT Rules 44ter.1, 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 (a) 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
(a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be
permitted with respect to the Examination Copy in accordance with PCT
Article 38.
(h) Access by a Foreign Intellectual Property Office. (1) Access to
the application-as-filed may be provided to any foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (participating foreign
intellectual property office), if the application contains written
authority granting such access. Written authority under this paragraph
should be submitted prior to filing a subsequent foreign application
with a participating intellectual property office in which priority is
claimed to the patent application.
(2) Written authority provided under paragraph (h)(1) of this
section must include the title of the invention (Sec. 1.71(a)), comply
with the requirements of paragraph (c) of this section, and be submitted
on a separate document (Sec. 1.4(c)).
(3) Written authority provided under paragraph (h)(1) of this
section will be treated as authorizing the Office to provide to all
participating foreign intellectual property offices indicated in the
written authority in accordance with their respective agreements with
the Office:
(i) A copy of the application-as-filed; and
(ii) A copy of the application-as-filed with respect to any
application the filing date of which is claimed by the application in
which written authority under paragraph (h)(1) of this section is filed.
(i) 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(g); 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.
[68 FR 38624, June 30, 2003, as amended at 68 FR 59886, Oct. 20, 2003;
68 FR 67805, Dec. 4, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 49997, Aug.
12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR 1667, Jan. 16, 2007]
Sec. 1.15 [Reserved]
Fees and Payment of Money
Sec. 1.16 National application filing, search, and examination fees.
(a) Basic fee for filing each application under 35 U.S.C. 111 for an
original patent, except design, plant, or provisional applications:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a)) if the application is submitted in
compliance with the Office electronic filing system (Sec. 1.27(b)(2))--
$75.00.
By a small entity (Sec. 1.27(a))--$150.00.
By other than a small entity--$300.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))--$395.00.
By other than a small entity--$790.00.
(b) Basic fee for filing each application for an original design
patent:
[[Page 27]]
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a))--$100.00.
By other than a small entity--$200.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))--$175.00.
By other than a small entity--$350.00.
(c) Basic fee for filing each application for an original plant
patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a))--$100.00.
By other than a small entity--$200.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))--$275.00.
By other than a small entity--$550.00.
(d) Basic fee for filing each provisional application:
By a small entity (Sec. 1.27(a))--$100.00.
By other than a small entity--$200.00.
(e) Basic fee for filing each application for the reissue of a
patent:
(1) For an application filed on or after December 8, 2004:
By a small entity (Sec. 1.27(a))--$150.00.
By other than a small entity--$300.00.
(2) For an application filed before December 8, 2004:
By a small entity (Sec. 1.27(a))--$395.00.
By other than a small entity--$790.00.
(f) Surcharge for filing any of the basic filing fee, the search
fee, the examination fee, or the 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
(g) 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.
(h) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim in independent form in excess of 3:
By a small entity (Sec. 1.27(a))--$100.00.
By other than a small entity--$200.00.
(i) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim (whether dependent or independent) 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))--$25.00.
By other than a small entity--$50.00.
(j) In addition to the basic filing fee in an application, other
than a provisional application, that contains, or is amended to contain,
a multiple dependent claim, per application:
By a small entity (Sec. 1.27(a))--$180.00.
By other than a small entity--$360.00.
(k) Search fee for each application filed under 35 U.S.C. 111 on or
after December 8, 2004, for an original patent, except design, plant, or
provisional applications:
By a small entity (Sec. 1.27(a))--$250.00.
By other than a small entity--$500.00.
(l) Search fee for each application filed on or after December 8,
2004, for an original design patent:
By a small entity (Sec. 1.27(a))--$50.00.
By other than a small entity--$100.00.
(m) Search fee for each application filed on or after December 8,
2004, for an original plant patent:
By a small entity (Sec. 1.27(a))--$150.00.
By other than a small entity--$300.00.
(n) Search fee for each application filed on or after December 8,
2004, for the reissue of a patent:
By a small entity (Sec. 1.27(a))--$250.00.
By other than a small entity--$500.00.
(o) Examination fee for each application filed under 35 U.S.C. 111
on or after December 8, 2004, for an original patent, except design,
plant, or provisional applications:
By a small entity (Sec. 1.27(a))--$100.00.
By other than a small entity--$200.00.
(p) Examination fee for each application filed on or after December
8, 2004, for an original design patent:
By a small entity (Sec. 1.27(a))--$65.00.
By other than a small entity--$130.00.
(q) Examination fee for each application filed on or after December
8, 2004, for an original plant patent:
By a small entity (Sec. 1.27(a))--$80.00.
By other than a small entity--$160.00.
(r) Examination fee for each application filed on or after December
8, 2004, for the reissue of a patent:
By a small entity (Sec. 1.27(a))--$300.00.
By other than a small entity--$600.00.
(s) Application size fee for any application under 35 U.S.C. 111
filed on or
[[Page 28]]
after December 8, 2004, the specification and drawings of which exceed
100 sheets of paper, for each additional 50 sheets or fraction thereof
(see Sec. 1.52(f) for applications submitted in whole or in part on an
electronic medium):
By a small entity (Sec. 1.27(a))--$125.00
By other than a small entity--$250.00
Note to Sec. 1.16: See Sec. Sec. 1.445, 1.482 and 1.492 for
international application filing and processing fees.
[70 FR 3887, Jan. 27, 2005, as amended at 70 FR 30365, May 26, 2005]
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))--$60.00.
By other than a small entity--$120.00.
(2) For reply within second month:
By a small entity (Sec. 1.27(a))--$225.00.
By other than a small entity--$450.00.
(3) For reply within third month:
By a small entity (Sec. 1.27(a))--$510.00.
By other than a small entity--$1,020.00.
(4) For reply within fourth month:
By a small entity (Sec. 1.27(a))--$795.00.
By other than a small entity--$1,590.00.
(5) For reply within fifth month:
By a small entity (Sec. 1.27(a))--$1,080.00.
By other than a small entity--$2,160.00.
(b) For fees in proceedings before the Board of Patent Appeals and
Interferences, see Sec. 41.20 of this title.
(c)-(d) [Reserved]
(e) To request continued examination pursuant to Sec. 1.114:
By a small entity (Sec. 1.27(a)).......................... $395.00
By other than a small entity................................ $790.00
(f) For filing a petition under one of the following sections which
refers to this paragraph: $400.00.
Sec. 1.36(a)--for revocation of a power of attorney by fewer than
all of the applicants.
Sec. 1.53(e)--to accord a filing date.
Sec. 1.57(a)--to accord a filing date.
Sec. 1.182--for decision on a question not specifically provided
for.
Sec. 1.183--to suspend the rules.
Sec. 1.378(e)--for reconsideration of decision on petition refusing
to accept delayed payment of maintenance fee in an expired patent.
Sec. 1.741(b)--to accord a filing date to an application under
Sec. 1.740 for extension of a patent term.
(g) For filing a petition under one of the following sections which
refers to this paragraph: $200.00
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. 1.59--for expungement of information.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.136(b)--for review of a request for extension of time when
the provisions of Sec. 1.136(a) are not available.
Sec. 1.295--for review of refusal to publish a statutory invention
registration.
Sec. 1.296--to withdraw a request for publication of a statutory
invention registration filed on or after the date the notice of intent
to publish issued.
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. 1.550(c)--for patent owner requests for extension of time in
ex parte reexamination proceedings.
Sec. 1.956--for patent owner requests for extension of time in
inter partes reexamination proceedings.
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.
(h) For filing a petition under one of the following sections which
refers to this paragraph: $130.00.
Sec. 1.19(g)--to request documents in a form other than that
provided in this part.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.102(d)--to make an application special.
Sec. 1.138(c)--to expressly abandon an application to avoid
publication.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
[[Page 29]]
(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. 1.71(g)(2)--for processing a belated amendment under Sec.
1.71(g).
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 for a design patent (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. 1.291(c)(5)--for processing a second or subsequent protest by
the same real party in interest.
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.
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 or limited reexamination
prosecution under 35 U.S.C. 133 (Sec. 1.137(a)):
By a small entity (Sec. 1.27(a))--$250.00.
By other than a small entity--$500.00.
(m) For filing a petition for the 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 or limited reexamination prosecution under 35 U.S.C. 41(a)(7)
(Sec. 1.137(b)):
By a small entity (Sec. 1.27(a))--$750.00.
By other than a small entity--$1,500.00.
(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)).......................... $395.00
By other than a small entity................................ $790.00
(s) For each additional invention requested to be examined under
Sec. 1.129(b):
By a small entity (Sec. 1.27(a)).......................... $395.00
[[Page 30]]
By other than a small entity................................ $790.00
(t) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c):
(Sec. Sec. 1.55 and 1.78)................................ $1,370.00
[56 FR 65152, Dec. 13, 1991]
Editorial Note: For Federal Register citations affecting Sec. 1.17,
see the List of CFR Sections Affected, which appears in the Finding Aids
section of the printed volume and on GPO Access.
Sec. 1.18 Patent post allowance (including issue) fees.
(a) Issue fee for issuing each original patent, except a design or
plant patent, or for issuing each reissue patent:
By a small entity (Sec. 1.27(a))--$700.00.
By other than a small entity--$1,400.00.
(b) Issue fee for issuing an original design patent:
By a small entity (Sec. 1.27(a))--$400.00.
By other than a small entity--$800.00.
(c) Issue fee for issuing an original plant patent:
By a small entity (Sec. 1.27(a))--$550.00.
By other than a small entity--$1,100.00.
(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; 68 FR 41534,
July 14, 2003; 69 FR 52606, Aug. 27, 2004; 70 FR 3888, Jan. 27, 2005]
Sec. 1.19 Document supply fees.
The United States Patent and Trademark Office will supply copies of
the following patent-related documents upon payment of the fees
indicated. Paper 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. Service includes preparation of
copies by the Office within two to three business days and
delivery by United States Postal Service; and preparation
of copies by the Office within one business day of receipt
and delivery to an Office Box or by electronic means
(e.g., facsimile, electronic mail)--$3.00.................
(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) Copies of Office documents to be provided in paper, or in
electronic form, as determined by the Director (for other patent-related
materials see Sec. 1.21(k)):
(1) Copy of a patent application as filed, or a patent-related file
wrapper and contents, stored in paper in a paper file wrapper, in an
image format in an image file wrapper, or if color documents, stored in
paper in an Artifact Folder:
(i) If provided on paper:
(A) Application as filed: $20.00.
(B) File wrapper and contents of 400 or fewer pages: $200.00.
(C) Additional fee for each additional 100 pages or portion thereof
of file wrapper and contents: $40.00.
(D) Individual application documents, other than application as
filed, per document: $25.00.
(ii) If provided on compact disc or other physical electronic medium
in a single order:
(A) Application as filed: $20.00.
(B) File wrapper and contents, first physical electronic medium:
$55.00.
(C) Additional fee for each continuing physical electronic medium in
[[Page 31]]
the single order of paragraph (b)(1)(ii)(B) of this section: $15.00.
(iii) If provided electronically (e.g., by electronic transmission)
other than on a physical electronic medium as specified in paragraph
(b)(1)(ii) of this section:
(A) Application as filed: $20.00.
(B) File wrapper and contents: $55.00.
(iv) If provided to a foreign intellectual property office pursuant
to a priority document exchange agreement (see Sec. 1.14(h)(1)) ......
0.00.
(2) Copy of patent-related file wrapper contents that were submitted
and are stored on compact disc or other electronic form (e.g., compact
discs stored in an Artifact Folder), other than as available in
paragraph (b)(1) of this section:
(i) If provided on compact disc or other physical electronic medium
in a single order:
(A) First physical electronic medium in a single order: $55.00.
(B) Additional fee for each continuing physical electronic medium in
the single order of paragraph (b)(2)(i) of this section: $15.00.
(ii) If provided electronically other than on a physical electronic
medium per order: $55.00.
(3) Copy of Office records, except copies available under paragraph
(b)(1) or (2) of this section: $25.00.
(4) For assignment records, abstract of title and certification, per
patent: $25.00.
(c) Library service (35 U.S.C. 13): For providing to libraries
copies of all patents issued annually, per annum--$50.00
(d) For list of all United States patents and statutory invention
registrations in a subclass--$3.00
(e) Uncertified statement as to status of the payment of maintenance
fees due on a patent or expiration of a patent--$10.00
(f) Uncertified copy of a non-United States patent document, per
document--$25.00
(g) Petitions for documents in a form other than that provided by
this part, or in a form other than that generally provided by the
Director, will be decided in accordance with the merits of each
situation. Any petition seeking a decision under this section must be
accompanied by the petition fee set forth in Sec. 1.17(h) and, if the
petition is granted, the documents will be provided at cost.
(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; 67 FR 70849, Nov. 27, 2002; 69 FR 56537, Sept.
21, 2004; 72 FR 1668, Jan. 16, 2007]
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.
(3) For filing with a request for reexamination or later
presentation at any other time of each claim in independent form in
excess of 3 and also in excess of the number of claims in independent
form in the patent under reexamination:
By a small entity (Sec. 1.27(a))--$100.00.
By other than a small entity--$200.00.
(4) For filing with a request for reexamination or later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 and also in excess of the number of claims
in the patent under reexamination (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))--$25.00.
By other than a small entity--$50.00.
(5) If the excess claims fees required by paragraphs (c)(3) and
(c)(4) are not paid with the request for reexamination or on later
presentation of the claims for which the excess claims fees are due, the
fees required by paragraphs (c)(3) and (c)(4) must be paid or the claims
canceled by amendment prior to the expiration of the time period set for
reply by the Office in any notice of fee deficiency in order to avoid
abandonment.
(d) For filing each statutory disclaimer (Sec. 1.321):
By a small entity (Sec. 1.27(a))--$65.00.
[[Page 32]]
By other than a small entity--$130.00.
(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 being due by three years and
six months after the original grant:
By a small entity (Sec. 1.27(a))--$450.00.
By other than a small entity--$900.00.
(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 being due by seven years and
six months after the original grant:
By a small entity (Sec. 1.27(a))--$1,150.00.
By other than a small entity--$2,300.00.
(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 being due by eleven years
and six months after the original grant:
By a small entity (Sec. 1.27(a))--$1,900.00.
By other than a small entity--$3,800.00.
(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 Director 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 76772, Dec.
7, 2000; 65 FR 78960, Dec. 18, 2000; 65 FR 80755, Dec. 22, 2000; 68 FR
41534, July 14, 2003; 69 FR 52606, Aug. 27, 2004; 70 FR 3888, Jan. 27,
2005]
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
(A) For test administration by commercial entity--$200.00
(B) For test administration by the USPTO--$450.00
(2) On registration to practice or grant of limited recognition
under Sec. 11.9(b) or (c)--$100.00
(3) For reinstatement to practice--$40.00
(4) For certificate of good standing as an attorney or agent--$10.00
(i) Suitable for framing--$20.00
(ii) [Reserved]
(5) For review of decision:
(i) By the Director of Enrollment and Discipline under Sec.
11.2(c)--$130.00
(ii) Of the Director of Enrollment and Discipline under Sec.
11.2(d)--$130.00
(6)-(9) [Reserved]
(10) On application by a person for recognition or registration
after disbarment or suspension on ethical grounds, or resignation
pending disciplinary proceedings in any other jurisdiction; on
application by a person for recognition or registration who is asserting
rehabilitation from prior conduct that resulted in an adverse decision
in the Office regarding the person's moral character; and on application
by a person for recognition or registration after being convicted of a
felony or crime involving moral turpitude or breach of fiduciary duty;
on petition for reinstatement by a person excluded
[[Page 33]]
or suspended on ethical grounds, or excluded on consent from practice
before the Office.--$1,600.00
(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) [Reserved]
(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 Director finds may be supplied,
for which fees are not specified by statute or by this part, such
charges as may be determined by the Director with respect to each such
item or service--Actual Cost
(l) [Reserved]
(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
[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; 66 FR 39450, July 31, 2001; 69 FR 35451, June
24, 2004; 70 FR 30365, May 26, 2005; 71 FR 64639, Nov. 3, 2006]
Sec. 1.22 Fees payable in advance.
(a) Patent fees and charges payable to the United States 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, 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.
[68 FR 48288, Aug. 13, 2003]
Sec. 1.23 Methods of payment.
(a) All payments of money required for United States Patent and
Trademark Office fees, including fees for the processing of
international applications (Sec. 1.445), shall be made in U.S. dollars
and in the form of a cashier's or certified check, Treasury note,
national bank notes, or United States Postal Service money order. If
sent in any other form, the Office may delay or cancel the credit until
collection is made. Checks and money orders must be made payable to the
Director of the United States Patent and Trademark Office. (Checks made
payable to the Commissioner of Patents and Trademarks will continue to
be accepted.) Payments from foreign countries must be payable and
immediately negotiable
[[Page 34]]
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, except for
replenishing a deposit account. 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, as amended at 69 FR 43752, July 22, 2004]
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 Sec. Sec. 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 fees under Sec. 1.16 in an
international application entering the national stage under 35 U.S.C.
371 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. 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.
(c) A deposit account holder may replenish the deposit account by
submitting a payment to the United States Patent and Trademark Office. A
payment to replenish a deposit account must be submitted by one of the
methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of
this section.
(1) A payment to replenish a deposit account may be submitted by
electronic funds transfer through the Federal Reserve Fedwire System,
which requires that the following information be provided to the deposit
account holder's bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
[[Page 35]]
(iii) United States Patent and Trademark Office account number with
the Department of the Treasury, which is 13100001; and
(iv) The deposit account holder's company name and deposit account
number.
(2) A payment to replenish a deposit account may be submitted by
electronic funds transfer over the Office's Internet Web site
(www.uspto.gov).
(3) A payment to replenish a deposit account may be submitted by
mail with the USPS to: Director of the United States Patent and
Trademark Office, P.O. Box 70541, Chicago, Illinois 60673.
(4) A payment to replenish a deposit account may be submitted by
mail with a private delivery service or by hand-carrying the payment to:
Director of the U.S. Patent and Trademark Office, Attn: Deposit
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
(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
76772, Dec. 7, 2000; 67 FR 523, Jan. 4, 2002; 68 FR 14336, Mar. 25,
2003; 69 FR 43752, July 22, 2004; 70 FR 56127, Sept. 26, 2005]
Sec. 1.26 Refunds.
(a) The Director 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 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 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 Director 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 Director 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; 68 FR 48289, Aug. 13, 2003]
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,
[[Page 36]]
grant, convey, or license, any rights in the invention. An inventor or
other individual who has transferred some rights in the invention to one
or more parties, 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; and
(ii) Meets the size standards set forth in 13 CFR 121.801 through
121.805 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, SW.,
Washington, DC 20416.
(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.
(5) Security Interest. A security interest does not involve an
obligation to transfer rights in the invention for the purposes of
paragraphs (a)(1) through (a)(3) of this section unless the security
interest is defaulted upon.
(b) Establishment of small entity status permits payment of reduced
fees. (1) 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)(1).
(2) Submission of an original utility application in compliance with
the Office electronic filing system by an applicant who has properly
asserted entitlement to small entity status pursuant to paragraph (c) of
this section in that application allows the payment of a reduced filing
fee pursuant to 35 U.S.C. 41(h)(3).
(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
[[Page 37]]
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
Sec. Sec. 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.
(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 Sec. Sec. 1.16(a),
1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national
fee set forth in Sec. 1.492(a), 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(f), or
Sec. 1.16(g).
(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
[[Page 38]]
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. 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, as amended at 69 FR 56538, Sept. 21, 2004;
70 FR 3889, Jan. 27, 2005]
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:
[[Page 39]]
(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 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 Applicant may be represented by one or more patent practitioners
or joint inventors.
An applicant for patent may file and prosecute his or her own case,
or he or she may give a power of attorney so as to be represented by one
or more patent practitioners or joint inventors. The United States
Patent and Trademark Office cannot aid in the selection of a patent
practitioner.
[70 FR 56127, Sept. 26, 2005]
Sec. 1.32 Power of attorney.
(a) Definitions. (1) Patent practitioner means a registered patent
attorney or registered patent agent under Sec. 11.6.
(2) Power of attorney means a written document by which a principal
authorizes one or more patent practitioners or joint inventors to act on
his or her behalf.
(3) Principal means either an applicant for patent (Sec. 1.41(b))
or an assignee of entire interest of the applicant for patent or in a
reexamination proceeding, the assignee of the entirety of ownership of a
patent. The principal
[[Page 40]]
executes a power of attorney designating one or more patent
practitioners or joint inventors to act on his or her behalf.
(4) Revocation means the cancellation by the principal of the
authority previously given to a patent practitioner or joint inventor to
act on his or her behalf.
(5) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application or
patent such that the correspondence address for the patent application,
patent or other patent proceeding would be the address associated with
the Customer Number;
(ii) Designate the fee address (Sec. 1.363) of a patent such that
the fee address for the patent would be the address associated with the
Customer Number; and
(iii) Submit a list of patent practitioners such that those patent
practitioners associated with the Customer Number would have power of
attorney.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with (c) of this
section;
(3) Give the representative power to act on behalf of the principal;
and
(4) Be signed by the applicant for patent (Sec. 1.41(b)) or the
assignee of the entire interest of the applicant.
(c) A power of attorney may only name as representative:
(1) One or more joint inventors (Sec. 1.45);
(2) Those registered patent practitioners associated with a Customer
Number;
(3) Ten or fewer patent practitioners, stating the name and
registration number of each patent practitioner. Except as provided in
paragraph (c)(1) or (c)(2) of this section, the Office will not
recognize more than ten patent practitioners as being of record in an
application or patent. If a power of attorney names more than ten patent
practitioners, such power of attorney must be accompanied by a separate
paper indicating which ten patent practitioners named in the power of
attorney are to be recognized by the Office as being of record in the
application or patent to which the power of attorney is directed.
[69 FR 29877, May 26, 2004, as amended at 70 FR 56127, Sept. 26, 2005]
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 Sec. Sec.
1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office
will direct, or otherwise make available, all notices, official letters,
and other communications relating to the application to the person
associated with the correspondence address. For correspondence submitted
via the Office's electronic filing system, however, an electronic
acknowledgment receipt will be sent to the submitter. The Office will
generally not engage in double correspondence with an applicant and a
patent practitioner, or with more than one patent practitioner except as
deemed necessary by the Director. If more than one correspondence
address is specified in a single document, the Office will select one of
the specified addresses for use as the correspondence address and, if
given, will select the address associated with a Customer Number over a
typed 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 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 patent
practitioner, any other patent practitioner named in the transmittal
papers
[[Page 41]]
may also change the correspondence address. Thus, the inventor(s), any
patent 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
for written assertions pursuant to Sec. 1.27(c)(2)(ii) of this part,
filed in the application must be signed by:
(1) A patent practitioner of record appointed in compliance with
Sec. 1.32(b);
(2) A patent practitioner not of record who acts in a representative
capacity under the provisions of Sec. 1.34;
(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 correspondence address. 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. 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.
(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.
(e) A change of address filed in a patent application or patent does
not change the address for a patent practitioner in the roster of patent
attorneys and agents. See Sec. 11.11 of this title.
[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; 69 FR 29877, May 26, 2004; 69 FR
35452, June 24, 2004; 70 FR 3889, Jan. 27, 2005; 70 FR 56127, Sept. 26,
2005; 72 FR 2776, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007]
Sec. 1.34 Acting in a representative capacity.
When a patent practitioner acting in a representative capacity
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 on whose behalf he or she acts. In filing such a paper,
the patent practitioner must set forth his or her registration number,
his or her name and signature. Further proof of authority to act in a
representative capacity may be required.
[70 FR 56127, Sept. 26, 2005]
Sec. 1.36 Revocation of power of attorney; withdrawal of patent attorney or
agent.
(a) A power of attorney, pursuant to Sec. 1.32(b), may be revoked
at any stage in the proceedings of a case by an applicant for patent
(Sec. 1.41(b)) or an assignee of the entire interest of the applicant,
or the owner of the entire interest of a patent. A power of attorney to
the patent practitioners associated with a Customer Number will be
treated as a request to revoke any powers of attorney previously given.
Fewer than all of the applicants (or fewer than all of the assignees of
the entire interest of the applicant or, in a reexamination proceeding,
fewer than all the owners
[[Page 42]]
of the entire interest of a patent) may revoke the power of attorney
only upon a showing of sufficient cause, and payment of the petition fee
set forth in Sec. 1.17(f). A patent practitioner will be notified of
the revocation of the power of attorney. Where power of attorney is
given to the patent practitioners associated with a Customer Number
(Sec. 1.32(c)(2)), the practitioners so appointed will also be notified
of the revocation of the power of attorney when the power of attorney to
all of the practitioners associated with the Customer Number is revoked.
The notice of revocation will be mailed to the correspondence address
for the application (Sec. 1.33) in effect before the revocation. An
assignment will not of itself operate as a revocation of a power
previously given, but the assignee of the entire interest of the
applicant may revoke previous powers of attorney and give another power
of attorney of the assignee's own selection as provided in Sec.
1.32(b).
(b) A registered patent attorney or patent agent who has been given
a power of attorney pursuant to Sec. 1.32(b) may withdraw as attorney
or agent of record upon application to and approval by the Director. The
applicant or patent owner will be notified of the withdrawal of the
registered patent attorney or patent agent. Where power of attorney is
given to the patent practitioners associated with a Customer Number, a
request to delete all of the patent practitioners associated with the
Customer Number may not be granted if an applicant has given power of
attorney to the patent practitioners associated with the Customer Number
in an application that has an Office action to which a reply is due, but
insufficient time remains for the applicant to file a reply. See Sec.
41.5 of this title for withdrawal during proceedings before the Board of
Patent Appeals and Interferences.
[69 FR 49997, Aug. 12, 2004, as amended at 70 FR 56128, Sept. 26, 2005]
Who May Apply for a Patent
Sec. 1.41 Applicant for patent.
(a) A patent is applied for in the name or names of the actual
inventor or inventors.
(1) The inventorship of a nonprovisional application is that
inventorship set forth in the oath or declaration as prescribed by Sec.
1.63, except as provided for in Sec. Sec. 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 inventorship of an international application entering the
national stage under 35 U.S.C. 371 is that inventorship set forth in the
international application, which includes any change effected under PCT
Rule 92bis. See Sec. 1.497(d) and (f) for filing an oath or declaration
naming an inventive entity different from the inventive entity named in
the international application, or if a change to the inventive entity
has been effected under PCT Rule 92bis subsequent to the execution of
any declaration filed under PCT Rule 4.17(iv) (Sec. 1.48(f)(1) does not
apply to an international application entering the national stage under
35 U.S.C. 371).
(b) Unless the contrary is indicated the word ``applicant'' when
used in these sections refers to the inventor or
[[Page 43]]
joint inventors who are applying for a patent, or to the person
mentioned in Sec. Sec. 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; 67 FR 523, Jan. 4,
2002]
Sec. 1.42 When the inventor is dead.
In case of the death of the inventor, the legal representative
(executor, administrator, etc.) of the deceased inventor may make the
necessary oath or declaration, and apply for and obtain the patent.
Where the inventor dies during the time intervening between the filing
of the application and the granting of a patent thereon, the letters
patent may be issued to the legal representative upon proper
intervention.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2709, Jan. 20, 1983]
Sec. 1.43 When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally incapacitated,
the legal representative (guardian, conservator, etc.) of such inventor
may make the necessary oath or declaration, and apply for and obtain the
patent.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2709, Jan. 20, 1983]
Sec. 1.44 [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
[[Page 44]]
facts, the fee set forth in Sec. 1.17(g), 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(g), 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, as amended at 69 FR 56538, Sept. 21, 2004]
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 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. 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 Sec. Sec. 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.
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.
Amendment of the inventorship requires:
[[Page 45]]
(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 Sec. Sec. 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 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 Sec. Sec. 1.41(a)(4) and 1.497(d) and (f) for
submission of an executed oath or declaration to enter the national
stage under 35 U.S.C. 371 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 Sec. Sec. 1.171 and 1.175 for
correction of inventorship in a patent via a reissue application.
(i) Correction of inventorship in patent. See Sec. 1.324 for
correction of inventorship in a patent.
(j) Correction of inventorship in a contested case before the Board
of Patent Appeals and Interferences. In a contested case under part 41,
subpart D, of this title, a request for correction of an application
must be in the form of a motion under Sec. 41.121(a)(2) of this title
and
[[Page 46]]
must comply with the requirements of this section.
[65 FR 54663, Sept. 8, 2000, as amended at 67 FR 523, Jan. 4, 2002; 69
FR 49998, Aug. 12, 2004]
The Application
Sec. 1.51 General requisites of an application.
(a) Applications for patents must be made to the Director of the
United States Patent and Trademark Office.
(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 Sec. Sec. 1.71 to 1.77;
(2) An oath or declaration, see Sec. Sec. 1.63 and 1.68;
(3) Drawings, when necessary, see Sec. Sec. 1.81 to 1.85; and
(4) The prescribed filing fee, search fee, examination fee, and
application size fee, see Sec. 1.16.
(c) A complete provisional application filed under Sec. 1.53(c)
comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see Sec.
1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if
applicable),
(vi) The docket number used by the person filing the application to
identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government
contract number (if the invention was made by an agency of the U.S.
Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by the first paragraph of 35
U.S.C. 112, see Sec. 1.71;
(3) Drawings, when necessary, see Sec. Sec. 1.81 to 1.85; and
(4) The prescribed filing fee and application size 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;
68 FR 14336, Mar. 25, 2003; 70 FR 3889, Jan. 27, 2005]
Sec. 1.52 Language, paper, writing, margins, compact disc specifications.
(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 submitted on paper or by facsimile transmission, and 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, not permanently bound
together, 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 submitted on paper or by facsimile
transmission and 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 paper forms
provided by the Office, or to the copy of the patent submitted on
[[Page 47]]
paper 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) Papers that are submitted electronically to the Office must be
formatted and transmitted in compliance with the Office's electronic
filing system requirements.
(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 Sec. Sec. 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, preferably a font size of 12) lettering style having
capital letters which should be at least 0.3175 cm. (0.125 inch) high,
but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size
of 6); and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate physical sheet
or electronic page (Sec. 1.75(h)).
(4) The abstract must commence on a separate physical sheet or
electronic page 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.
(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
[[Page 48]]
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.
(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) Any individual table (see Sec. 1.58) if the table is more
than 50 pages in length, or if the total number of pages of all the
tables in an application exceeds 100 pages in length, where a table page
is a page printed on paper in conformance with paragraph (b) of this
section and Sec. 1.58(c).
(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 (e.g., tables in
landscape orientation should be identified as landscape orientation or
be identified when inquired about) 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
[[Page 49]]
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)(5)), 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 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.
(f)(1) Any sequence listing in an electronic medium in compliance
with Sec. Sec. 1.52(e) and 1.821(c) or (e), and any computer program
listing filed in an electronic medium in compliance with Sec. Sec.
1.52(e) and 1.96, will be excluded when determining the application size
fee required by Sec. 1.16(s) or Sec. 1.492(j). For purposes of
determining the application size fee required by Sec. 1.16(s) or Sec.
1.492(j), for an application the specification and drawings of which,
excluding any sequence listing in compliance with Sec. 1.821(c) or (e),
and any computer program listing filed in an electronic medium in
compliance with Sec. Sec. 1.52(e) and 1.96, are submitted in whole or
in part on an electronic medium other than the Office electronic filing
system, each three kilobytes of content submitted on an electronic
medium shall be counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph, the paper size
equivalent of the specification and drawings of an application submitted
via the Office electronic filing system will be considered to be
seventy-five percent of the number of sheets of paper present in the
specification and drawings of the application when entered into the
Office file wrapper after being rendered by the Office electronic filing
system for purposes of determining the application size fee required by
Sec. 1.16(s). Any sequence listing in compliance with Sec. 1.821(c) or
(e), and any computer program listing in compliance with Sec. 1.96,
submitted via the Office electronic filing system will be excluded when
determining the application size fee required by Sec. 1.16(s) if the
listing is submitted in ASCII text as part of an associated file.
(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; 68 FR 38627, June 30,
2003; 69 FR 56538, Sept. 21, 2004; 70 FR 3889, Jan. 27, 2005; 70 FR
30365, May 26, 2005; 70 FR 54266, Sept. 14, 2005; 70 FR 56128, Sept. 26,
2005]
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
[[Page 50]]
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 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
[[Page 51]]
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, search fee, and
examination fee for a nonprovisional application, an oath or declaration
by the applicant pursuant to Sec. Sec. 1.63, 1.162, or 1.175, and the
surcharge required by Sec. 1.16(f) 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 paragraph (c) of this section.
(4) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or Sec.
1.78 of any other application. No claim for priority under 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 Sec. Sec. 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 application is for a design patent;
(ii) The prior nonprovisional application is a design application
that is complete as defined by Sec. 1.51(b); and
(iii) The application under this paragraph is filed before the
earliest of:
(A) Payment of the issue fee on the prior application, unless a
petition under Sec. 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the
date on which a request on a separate paper for an application under
this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior
application;
(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph,
will utilize the file jacket and contents of the prior application,
including the specification, drawings and oath or declaration from the
prior application, to constitute the new application, and will be
assigned the application number of the prior application for
identification purposes; and
(v) Is a request to expressly abandon the prior application as of
the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued
prosecution application filed under this paragraph are the basic filing
fee as set forth in Sec. 1.16(b), the search fee as set forth in Sec.
1.16(l), and the examination fee as set forth in Sec. 1.16(p).
(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
[[Page 52]]
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) 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 period of time within which to correct the filing
error. If, however, a request for an application under paragraph (d) of
this section does not meet the requirements of that paragraph because
the application in which the request was filed is not a design
application, and if the application in which the request was filed was
itself filed on or after June 8, 1995, the request for an application
under paragraph (d) of this section will be treated as a request for
continued examination under Sec. 1.114.
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph accompanied by the fee set
forth in Sec. 1.17(f). 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, the
search fee, or the examination 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
Sec. Sec. 1.63, 1.162 or Sec. 1.175, and applicant has provided a
correspondence address
[[Page 53]]
(Sec. 1.33(a)), applicant will be notified and given a period of time
within which to pay the basic filing fee, search fee, and examination
fee, file an oath or declaration in an application under paragraph (b)
of this section, and pay the surcharge if required by Sec. 1.16(f) 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,
the search fee, the examination fee, or an oath or declaration by the
applicant pursuant to Sec. Sec. 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, search fee, and examination fee, file
an oath or declaration, and pay the surcharge if required by Sec.
1.16(f) to avoid abandonment.
(3) If the excess claims fees required by Sec. Sec. 1.16(h) and (i)
and multiple dependent claim fee required by Sec. 1.16(j) are not paid
on filing or on later presentation of the claims for which the excess
claims or multiple dependent claim fees are due, the fees required by
Sec. Sec. 1.16(h), (i), and (j) must be paid or the claims canceled by
amendment prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency. If the application size fee
required by Sec. 1.16(s) (if any) is not paid on filing or on later
presentation of the amendment necessitating a fee or additional fee
under Sec. 1.16(s), the fee required by Sec. 1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
(4) 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.
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 the basic filing fee 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(d)), 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(g) 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(d)), 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(g) to
avoid abandonment.
(3) If the application size fee required by Sec. 1.16(s) (if any)
is not paid on filing, the fee required by Sec. 1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
(4) 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 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).
[[Page 54]]
(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; 68 FR 14336, Mar. 25, 2003; 68 FR
32380, May 30, 2003; 69 FR 29878, May 26, 2004; 69 FR 56539, Sept. 21,
2004; 70 FR 3890, Jan. 27, 2005; 70 FR 30365, May 26, 2005]
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
periods in this paragraph do not apply in an application under 35 U.S.C.
111(a) if the application is:
(A) A design application; or
(B) An application filed before November 29, 2000.
(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) 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:
(i) When the application becomes involved in an interference (see
Sec. 41.202 of this title),
(ii) When necessary to overcome the date of a reference relied upon
by the examiner, or
(iii) When deemed necessary by the examiner.
(4)(i) An English language translation of a non-English language
foreign application is not required except:
(A) When the application is involved in an interference (see Sec.
41.202 of this title),
(B) When necessary to overcome the date of a reference relied upon
by the examiner, or
(C) When specifically required by the examiner.
(ii) 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
[[Page 55]]
of one or more applications for an inventor's certificate in a country
granting both inventor's certificates and patents. To claim the right of
priority on the basis of an application for an inventor's certificate in
such a country under 35 U.S.C. 119(d), the applicant when submitting a
claim for such right as specified in paragraph (a) of this section,
shall include an affidavit or declaration. The affidavit or declaration
must include a specific statement that, upon an investigation, he or she
is satisfied that to the best of his or her knowledge, the applicant,
when filing the application for the inventor's certificate, had the
option to file an application for either a patent or an inventor's
certificate as to the subject matter of the identified claim or claims
forming the basis for the claim of priority.
(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)-(d) 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)-(d) 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)-
(d) or 365(a) must be accompanied by:
(1) The claim under 35 U.S.C. 119(a)-(d) or 365(a) and this section
to the prior foreign application, unless previously submitted;
(2) The surcharge set forth in Sec. 1.17(t); and
(3) 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 Director may require additional information
where there is a question whether the delay was unintentional.
(d)(1) The requirement in this section for the certified copy of the
foreign application will be considered satisfied if:
(i) The applicant files a request, in a separate document, that the
Office obtain a copy of the foreign application from a foreign
intellectual property office participating with the Office in a
bilateral or multilateral priority document exchange agreement
(participating foreign intellectual property office (see Sec.
1.14(h)(1));
(ii) The foreign application is identified in the oath or
declaration (Sec. 1.63(c)) or an application data sheet (Sec.
1.76(a)(6)); and
(iii) The copy of the foreign application is received by the Office
within the period set forth in paragraph (a) of this section. Such a
request should be made within the later of four months from the filing
date of the application or sixteen months from the filing date of the
foreign application.
(2) If the foreign application was filed at a foreign intellectual
property office that is not participating with the Office in a priority
document exchange agreement, but a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office, the request under paragraph (d)(1)(i) of
this section must identify the participating foreign intellectual
property office and the application number of the subsequent application
in which a copy of the foreign application was filed.
[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997;
65 FR 57053, Sept. 20, 2000; 65 FR 66502, Nov. 6, 2000; 66 FR 67094,
Dec. 28, 2001; 69 FR 49998, Aug. 12, 2004; 72 FR 1668, Jan. 16, 2007]
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
[[Page 56]]
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 Sec. Sec. 1.97(b)-(d) and 1.98. However, no patent will
be granted on an application in connection with which fraud on the
Office was practiced or attempted or the duty of disclosure was violated
through bad faith or intentional misconduct. The Office encourages
applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in
a counterpart application, and
(2) The closest information over which individuals associated with
the filing or prosecution of a patent application believe any pending
claim patentably defines, to make sure that any material information
contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability
when it is not cumulative to information already of record or being made
of record in the application, and
(1) It establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant
takes in:
(i) Opposing an argument of unpatentability relied on by the Office,
or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the
information compels a conclusion that a claim is unpatentable under the
preponderance of evidence, burden-of-proof standard, giving each term in
the claim its broadest reasonable construction consistent with the
specification, and before any consideration is given to evidence which
may be submitted in an attempt to establish a contrary conclusion of
patentability.
(c) Individuals associated with the filing or prosecution of a
patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the
application; and
(3) Every other person who is substantively involved in the
preparation or prosecution of the application and who is associated with
the inventor, with the assignee or with anyone to whom there is an
obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may
comply with this section by disclosing information to the attorney,
agent, or inventor.
(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 Incorporation by reference.
(a) Subject to the conditions and requirements of this paragraph, if
all or a portion of the specification or drawing(s) is inadvertently
omitted from an application, but the application contains a claim under
Sec. 1.55 for priority of a prior-filed foreign application, or a claim
under Sec. 1.78 for the benefit of a prior-filed provisional,
nonprovisional, or international application, that was present on the
filing date of the application, and the inadvertently omitted portion of
the specification or drawing(s) is completely contained in the prior-
filed application, the claim under
[[Page 57]]
Sec. 1.55 or Sec. 1.78 shall also be considered an incorporation by
reference of the prior-filed application as to the inadvertently omitted
portion of the specification or drawing(s).
(1) The application must be amended to include the inadvertently
omitted portion of the specification or drawing(s) within any time
period set by the Office, but in no case later than the close of
prosecution as defined by Sec. 1.114(b), or abandonment of the
application, whichever occurs earlier. The applicant is also required
to:
(i) Supply a copy of the prior-filed application, except where the
prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translation of any prior-filed
application that is in a language other than English; and
(iii) Identify where the inadvertently omitted portion of the
specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to this
paragraph shall be effective only as to the United States, and shall
have no effect on the international filing date of the application. In
addition, no request to add the inadvertently omitted portion of the
specification or drawings in an international application designating
the United States will be acted upon by the Office prior to the entry
and commencement of the national stage (Sec. 1.491) or the filing of an
application under 35 U.S.C. 111(a) which claims benefit of the
international application.
(3) If an application is not otherwise entitled to a filing date
under Sec. 1.53(b), the amendment must be by way of a petition pursuant
to this paragraph accompanied by the fee set forth in Sec. 1.17(f).
(b) Except as provided in paragraph (a) of this section, an
incorporation by reference must be set forth in the specification and
must:
(1) Express a clear intent to incorporate by reference by using the
root words ``incorporat(e)'' and ``reference'' (e.g., ``incorporate by
reference''); and
(2) Clearly identify the referenced patent, application, or
publication.
(c) ``Essential material'' may be incorporated by reference, but
only by way of an incorporation by reference to a U.S. patent or U.S.
patent application publication, which patent or patent application
publication does not itself incorporate such essential material by
reference. ``Essential material'' is material that is necessary to:
(1) Provide a written description of the claimed invention, and of
the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make
and use the same, and set forth the best mode contemplated by the
inventor of carrying out the invention as required by the first
paragraph of 35 U.S.C. 112;
(2) Describe the claimed invention in terms that particularly point
out and distinctly claim the invention as required by the second
paragraph of 35 U.S.C. 112; or
(3) Describe the structure, material, or acts that correspond to a
claimed means or step for performing a specified function as required by
the sixth paragraph of 35 U.S.C. 112.
(d) Other material (``Nonessential material'') may be incorporated
by reference to U.S. patents, U.S. patent application publications,
foreign patents, foreign published applications, prior and concurrently
filed commonly owned U.S. applications, or non-patent publications. An
incorporation by reference by hyperlink or other form of browser
executable code is not permitted.
(e) The examiner may require the applicant to supply a copy of the
material incorporated by reference. If the Office requires the applicant
to supply a copy of material incorporated by reference, the material
must be accompanied by a statement that the copy supplied consists of
the same material incorporated by reference in the referencing
application.
(f) Any insertion of material incorporated by reference into the
specification or drawings of an application must be by way of an
amendment to the specification or drawings. Such an amendment must be
accompanied by a
[[Page 58]]
statement that the material being inserted is the material previously
incorporated by reference and that the amendment contains no new matter.
(g) An incorporation of material by reference that does not comply
with paragraphs (b), (c), or (d) of this section is not effective to
incorporate such material unless corrected within any time period set by
the Office, but in no case later than the close of prosecution as
defined by Sec. 1.114(b), or abandonment of the application, whichever
occurs earlier. In addition:
(1) A correction to comply with paragraph (b)(1) of this section is
permitted only if the application as filed clearly conveys an intent to
incorporate the material by reference. A mere reference to material does
not convey an intent to incorporate the material by reference.
(2) A correction to comply with paragraph (b)(2) of this section is
only permitted for material that was sufficiently described to uniquely
identify the document.
[69 FR 56539, Sept. 21, 2004]
Sec. 1.58 Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical
and mathematical formulae, but shall not contain drawings or flow
diagrams. The description portion of the specification may contain
tables, but the same tables may only be included in both the drawings
and description portion of the specification if the application was
filed under 35 U.S.C. 371. 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 (Sec. Sec. 1.96(c)
and 1.821(c)) must maintain the spatial relationships (e.g., alignment
of columns and rows) of the table elements when displayed so as to
visually preserve the relational 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 should be at least 0.422 cm. (0.166 inch) high (e.g.,
preferably Arial, Times Roman, or Courier with a font size of 12), but
may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of
6). 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.
[69 FR 56540, Sept. 21, 2004]
Sec. 1.59 Expungement of information or copy of papers in application file.
(a)(1) Information in an application will not be expunged, except as
provided in paragraph (b) of this section or Sec. 41.7(a) of this
title.
(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 Sec. Sec. 1.63 and 1.175) will not be expunged from
the application file.
(b) An applicant may request that the Office expunge information,
other than what is excluded by paragraph (a)(2) of this section, by
filing a petition under this paragraph. Any petition to expunge
information from an application must include the fee set forth in Sec.
1.17(g) and establish to the satisfaction of the Director that the
expungement of the information is appropriate in which case a notice
granting the petition for expungement will be provided.
(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. Sec. 1.53(e), (f) and
[[Page 59]]
(g)). The Office cannot provide or certify copies of an application that
has been disposed of.
[68 FR 38628, June 30, 2003, as amended at 69 FR 49999, Aug. 12, 2004;
69 FR 56540, Sept. 21, 2004]
Sec. Sec. 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 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
[[Page 60]]
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 correspondence address was
changed during the prosecution of the prior application, the change in
power of attorney 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 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; 69 FR 56540, Sept. 21, 2004]
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 Sec. Sec. 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 (Sec. Sec. 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
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
[[Page 61]]
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 (Sec. Sec. 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) (Sec. Sec. 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 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 in a form provided by the Patent and Trademark Office or
in accordance with PCT Rule 4.17(iv), 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
[[Page 62]]
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; 69 FR 56540, Sept. 21, 2004; 70 FR 3890, Jan.
27, 2005]
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, ``(copyright) 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.
(f) The specification must commence on a separate sheet. Each sheet
including part of the specification may not include other parts of the
application or other information. The claim(s), abstract and sequence
listing (if any) should not be included on a sheet including any other
part of the application.
(g)(1) The specification may disclose or be amended to disclose the
names of the parties to a joint research agreement (35 U.S.C.
103(c)(2)(C)).
(2) An amendment under paragraph (g)(1) of this section must be
accompanied by the processing fee set forth in Sec. 1.17(i) if not
filed within one of the following time periods:
(i) Within three months of the filing date of a national
application;
(ii) Within three months of the date of entry of the national stage
as set forth in Sec. 1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of
a request for continued examination under Sec. 1.114.
(3) If an amendment under paragraph (g)(1) of this section is filed
after the
[[Page 63]]
date the issue fee is paid, the patent as issued may not necessarily
include the names of the parties to the joint research agreement. If the
patent as issued does not include the names of the parties to the joint
research agreement, the patent must be corrected to include the names of
the parties to the joint research agreement by a certificate of
correction under 35 U.S.C. 255 and Sec. 1.323 for the amendment to be
effective.
[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988;
58 FR 38723, July 20, 1993; 68 FR 38628, June 30, 2003; 70 FR 1823, Jan.
11, 2005; 70 FR 54266, Sept. 14, 2005]
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.
(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 sheet or sheets presenting the abstract may not
include other parts of the application or other material. 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.
[65 FR 54667, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000;
68 FR 38628, June 30, 2003]
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(j). 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.
[[Page 64]]
(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 Sec. Sec. 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.
(h) The claim or claims must commence on a separate physical sheet
or electronic page. Any sheet including a claim or portion of a claim
may not contain any other parts of the application or other material.
(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; 68 FR 38628, June 30, 2003; 70 FR
3891, Jan. 27, 2005]
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. An application data sheet must be
titled ``Application Data Sheet'' and must contain all of the section
headings listed in paragraph (b) of this section, with any appropriate
data for each section heading. 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 (Sec. Sec. 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,
[[Page 65]]
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 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 in the application (see Sec. 1.32).
(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)(5), 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.
(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) Must be titled ``Supplemental Application Data Sheet,'' include
all of the section headings listed in paragraph (b) of this section,
include all appropriate data for each section heading, and must identify
the information that is being changed, preferably with underlining for
insertions, and strike-through or brackets for text removed.
(d) Inconsistencies between application data sheet and other
documents. For inconsistencies between information that is supplied by
both an application data sheet under this section and other documents.
(1) The latest submitted information will govern notwithstanding
whether supplied by an application data sheet, an amendment to the
specification, a designation of a correspondence address, 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 an
amendment to the specification, a designation of correspondence address,
or 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 capture bibliographic information from the
application data sheet (notwithstanding whether an oath or declaration
governs the information). Thus, the Office shall generally, for example,
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 corrected if
applicant submits a request therefor and a supplemental application data
sheet.
[65 FR 54668, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000;
69 FR 56540, Sept. 21, 2004; 70 FR 54266, Sept. 14, 2005]
[[Page 66]]
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) The names of the parties to a joint research agreement.
(5) 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.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the several views of the drawing.
(9) Detailed description of the invention.
(10) A claim or claims.
(11) Abstract of the disclosure.
(12) ``Sequence Listing,'' if on paper (see Sec. Sec. 1.821 through
1.825).
(c) The text of the specification sections defined in paragraphs
(b)(1) through (b)(12) 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, as amended at 70 FR 1823, Jan. 11, 2005]
Sec. 1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a)(1) A nonprovisional application or international application
designating the United States of America may claim an invention
disclosed in one or more prior-filed copending nonprovisional
applications or international applications designating the United States
of America. In order for an application to claim the benefit of a prior-
filed copending nonprovisional application or international application
designating the United States of America, each prior-filed application
must name as an inventor at least one inventor named in the later-filed
application and disclose the named inventor's invention claimed in at
least one claim of the later-filed application in the manner provided by
the first paragraph of 35 U.S.C. 112. In addition, each prior-filed
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) Entitled to a filing date as set forth in Sec. 1.53(b) or
Sec. 1.53(d) and have paid therein the basic filing fee set forth in
Sec. 1.16 within the pendency of the application.
(2)(i) Except for a continued prosecution application filed under
Sec. 1.53(d), any nonprovisional application or international
application designating the United States of America claiming the
benefit of one or more prior-filed copending nonprovisional applications
or international applications designating the United States of America
must contain or be amended to contain a reference to each such prior-
filed 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. Cross references to other related applications may be made
when appropriate (see Sec. 1.14).
(ii) This reference must be submitted during the pendency of the
later-filed application. If the later-filed application is an
application filed under 35 U.S.C. 111(a), this reference must also be
submitted within the later of four months from the actual filing date of
the later-filed application or sixteen months from the filing date of
the prior-filed application. If the later-filed
[[Page 67]]
application is a nonprovisional application which entered the national
stage from an international application after compliance with 35 U.S.C.
371, this reference must also be submitted within the later of four
months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f) in the later-filed international application or
sixteen months from the filing date of the prior-filed application.
These time periods are not extendable. 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 paragraph (a)(2)(i) of this section is
considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c)
to such prior-filed application. The time periods in this paragraph do
not apply if the later-filed application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(C) A nonprovisional application which entered the national stage
after compliance with 35 U.S.C. 371 from an international application
filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first sentence(s)
following the title.
(iv) 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-filed application. The identification of an application by
application number under this section is the identification of every
application assigned that application number necessary for a specific
reference required by 35 U.S.C. 120 to every such application assigned
that application number.
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2)
of this section is presented after the time period provided by paragraph
(a)(2)(ii) 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-filed
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 reference required by 35 U.S.C. 120 and paragraph (a)(2) of
this section to the prior-filed application, unless previously
submitted;
(ii) The surcharge set forth in Sec. 1.17(t); and
(iii) A statement that the entire delay between the date the claim
was due under paragraph (a)(2)(ii) of this section and the date the
claim was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(4) A nonprovisional application, other than for a design patent, or
an international application designating the United States of America
may claim an invention disclosed in one or more prior-filed provisional
applications. In order for an application to claim the benefit of one or
more prior-filed provisional applications, each prior-filed provisional
application must name as an inventor at least one inventor named in the
later-filed application and disclose the named inventor's invention
claimed in at least one claim of the later-filed application in the
manner provided by the first paragraph of 35 U.S.C. 112. In addition,
each prior-filed 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(d) must be paid within the time period set forth in Sec.
1.53(g).
(5)(i) Any nonprovisional application or international application
designating the United States of America claiming the benefit of one or
more prior-filed provisional applications must contain or be amended to
contain a reference to each such prior-filed provisional application,
identifying it by the provisional application number (consisting of
series code and serial number).
[[Page 68]]
(ii) This reference must be submitted during the pendency of the
later-filed application. If the later-filed application is an
application filed under 35 U.S.C. 111(a), this reference must also be
submitted within the later of four months from the actual filing date of
the later-filed application or sixteen months from the filing date of
the prior-filed provisional application. If the later-filed application
is a nonprovisional application which entered the national stage from an
international application after compliance with 35 U.S.C. 371, this
reference must also be submitted within the later of four months from
the date on which the national stage commenced under 35 U.S.C. 371(b) or
(f) in the later-filed international application or sixteen months from
the filing date of the prior-filed provisional application. These time
periods are not extendable. Except as provided in paragraph (a)(6) of
this section, the failure to timely submit the reference is considered a
waiver of any benefit under 35 U.S.C. 119(e) to such prior-filed
provisional application. The time periods in this paragraph do not apply
if the later-filed application is:
(A) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(B) A nonprovisional application which entered the national stage
after compliance with 35 U.S.C. 371 from an international application
filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a non-provisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first sentence(s)
following the title.
(iv) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, applicant will be notified and given a period
of time within which to file, in the prior-filed provisional
application, the translation and the statement. If the notice is mailed
in a pending nonprovisional application, a timely reply to such a notice
must include the filing in the nonprovisional application of either a
confirmation that the translation and statement were filed in the
provisional application, or an amendment or Supplemental Application
Data Sheet withdrawing the benefit claim, or the nonprovisional
application will be abandoned. The translation and statement may be
filed in the provisional application, even if the provisional
application has become abandoned.
(6) If the reference 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)(ii) 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
later-filed application if the reference identifying the prior-filed
application by provisional application number was 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 reference required by 35 U.S.C. 119(e) and paragraph (a)(5)
of this section to the prior-filed provisional application, unless
previously submitted;
(ii) The surcharge set forth in Sec. 1.17(t); and
(iii) A statement that the entire delay between the date the claim
was due under paragraph (a)(5)(ii) of this section and the date the
claim was filed was unintentional. The Director 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
person and contain conflicting claims, and there is no
[[Page 69]]
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 person at the time
the later invention was made, and if not, indicate which named inventor
is the prior inventor. Even if 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 conflicting claims may be
rejected under the doctrine of double patenting in view of such commonly
owned or assigned applications or patents under reexamination.
(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; 66 FR 67095, Dec. 28, 2001; 68 FR 71006, Dec. 22, 2003; 69 FR
56541, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 70 FR 30365, May 26,
2005; 70 FR 56128, Sept. 26, 2005]
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). In addition, tables and sequence listings that are
included in the specification are, except for applications filed under
35 U.S.C. 371, not permitted to be included in the drawings.
(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.
[[Page 70]]
(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; 69 FR 56541, Sept. 21, 2004]
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 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; and
(iii) 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 should be
provided, and 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
within the top margin. Each drawing sheet submitted after the filing
date of an application must be identified as either ``Replacement
Sheet'' or ``New Sheet'' pursuant to Sec. 1.121(d). If a marked-up copy
of any amended drawing figure including annotations indicating the
changes made is filed, such marked-up copy must be clearly labeled as
``Annotated Sheet'' pursuant to Sec. 1.121(d)(1).
(d) Graphic forms in drawings. Chemical or mathematical formulae,
tables,
[[Page 71]]
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.
(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
[[Page 72]]
the section is cut by a broken line. The ends of the broken line should
be designated by Arabic or Roman numerals corresponding to the view
number of the sectional view, and should have arrows to indicate the
direction of sight. Hatching must be used to indicate section portions
of an object, and must be made by regularly spaced oblique parallel
lines spaced sufficiently apart to enable the lines to be distinguished
without difficulty. Hatching should not impede the clear reading of the
reference characters and lead lines. If it is not possible to place
reference characters outside the hatched area, the hatching may be
broken off wherever reference characters are inserted. Hatching must be
at a substantial angle to the surrounding axes or principal lines,
preferably 45[deg]. A cross section must be set out and drawn to show
all of the materials as they are shown in the view from which the cross
section was taken. The parts in cross section must show proper
material(s) by hatching with regularly spaced parallel oblique strokes,
the space between strokes being chosen on the basis of the total area to
be hatched. The various parts of a cross section of the same item should
be hatched in the same manner and should accurately and graphically
indicate the nature of the material(s) that is illustrated in cross
section. The hatching of juxtaposed different elements must be angled in
a different way. In the case of large areas, hatching may be confined to
an edging drawn around the entire inside of the outline of the area to
be hatched. Different types of hatching should have different
conventional meanings as regards the nature of a material seen in cross
section.
(4) Alternate position. A moved position may be shown by a broken
line superimposed upon a suitable view if this can be done without
crowding; otherwise, a separate view must be used for this purpose.
(5) Modified forms. Modified forms of construction must be shown in
separate views.
(i) Arrangement of views. One view must not be placed upon another
or within the outline of another. All views on the same sheet should
stand in the same direction and, if possible, stand so that they can be
read with the sheet held in an upright position. If views wider than the
width of the sheet are necessary for the clearest illustration of the
invention, the sheet may be turned on its side so that the top of the
sheet, with the appropriate top margin to be used as the heading space,
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top
becomes the right side, except for graphs utilizing standard scientific
convention to denote the axis of abscissas (of X) and the axis of
ordinates (of Y).
(j) 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
[[Page 73]]
to indicate the surface or shape of spherical, cylindrical, and conical
elements of an object. Flat parts may also be lightly shaded. Such
shading is preferred in the case of parts shown in perspective, but not
for cross sections. See paragraph (h)(3) of this section. Spaced lines
for shading are preferred. These lines must be thin, as few in number as
practicable, and they must contrast with the rest of the drawings. As a
substitute for shading, heavy lines on the shade side of objects can be
used except where they superimpose on each other or obscure reference
characters. Light should come from the upper left corner at an angle of
45[deg]. Surface delineations should preferably be shown by proper
shading. Solid black shading areas are not permitted, except when used
to represent bar graphs or color.
(n) Symbols. Graphical drawing symbols may be used for conventional
elements when appropriate. The elements for which such symbols and
labeled representations are used must be adequately identified in the
specification. Known devices should be illustrated by symbols which have
a universally recognized conventional meaning and are generally accepted
in the art. Other symbols which are not universally recognized may be
used, subject to approval by the Office, if they are not likely to be
confused with existing conventional symbols, and if they are readily
identifiable.
(o) Legends. Suitable descriptive legends may be used 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
[[Page 74]]
(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,
``(copyright) 1983 John Doe'' (17 U.S.C. 401) and ``*M* John
Doe'' (17 U.S.C. 909) would be properly limited and, under current
statutes, legally sufficient notices of copyright and mask work,
respectively. Inclusion of a copyright or mask work notice will be
permitted only if the authorization language set forth in Sec. 1.71(e)
is included at the beginning (preferably as the first paragraph) of the
specification.
(t) Numbering of sheets of drawings. The sheets of drawings should
be numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number, and the
second being the total number of sheets of drawings, with no other
marking.
(u) Numbering of views. (1) The different views must be numbered in
consecutive Arabic numerals, starting with 1, independent of the
numbering of the sheets and, if possible, in the order in which they
appear on the drawing sheet(s). Partial views intended to form one
complete view, on one or several sheets, must be identified by the same
number followed by a capital letter. View numbers must be preceded by
the abbreviation ``FIG.'' Where only a single view is used in an
application to illustrate the claimed invention, it must not be numbered
and the abbreviation ``FIG.'' must not appear.
(2) Numbers and letters identifying the views must be simple and
clear and must not be used in association with brackets, circles, or
inverted commas. The view numbers must be larger than the numbers used
for reference characters.
(v) Security markings. Authorized security markings may be placed on
the drawings provided they are outside the sight, preferably centered in
the top margin.
(w) Corrections. Any corrections on drawings submitted to the Office
must be durable and permanent.
(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. 1.173(a)(2) 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; 69 FR 56541, Sept.
21, 2004; 70 FR 3891, Jan. 27, 2005]
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.
[[Page 75]]
(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 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;
69 FR 56541, Sept. 21, 2004]
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
(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.
(c) Unless the model or exhibit substantially conforms to the
requirements of Sec. 1.52 or Sec. 1.84 under paragraph (a)(1) of this
section, it must be accompanied by photographs that show multiple views
of the material features of the model or exhibit and that substantially
conform to the requirements of Sec. 1.84.
[62 FR 53190, Oct. 10, 1997, as amended at 65 FR 54670, Sept. 8, 2000;
69 FR 56541, Sept. 21, 2004]
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.
(a) Models, exhibits, or specimens may be returned to the applicant
if no longer necessary for the conduct of business before the Office.
When applicant is notified that a model, exhibit, or specimen is no
longer necessary for the conduct of business before the Office and will
be returned, applicant must arrange for the return of the model,
exhibit, or specimen at the applicant's expense. The Office will dispose
of perishables without notice to applicant unless applicant notifies the
Office upon submission of the model, exhibit or specimen that a return
is desired and makes arrangements for its return promptly upon
notification by the Office that the model, exhibit or specimen is no
longer necessary for the conduct of business before the Office.
(b) Applicant is responsible for retaining the actual model,
exhibit, or specimen for the enforceable life of any patent resulting
from the application. The provisions of this paragraph do not apply to a
model or exhibit that substantially conforms to the requirements of
Sec. 1.52 or Sec. 1.84, where the model or exhibit has been described
by photographs that substantially conform to Sec. 1.84, or where the
model, exhibit or specimen is perishable.
(c) Where applicant is notified, pursuant to paragraph (a) of this
section, of the need to arrange for return of a model, exhibit or
specimen, applicant must arrange for the return within the period set in
such notice, to avoid disposal of the model, exhibit or specimen by the
Office. Extensions of time are available under Sec. 1.136, except in
the case of perishables. Failure to establish that the return of the
item has been arranged for within the period set or failure to have the
item removed from Office storage within a reasonable amount of time
notwithstanding any
[[Page 76]]
arrangement for return, will permit the Office to dispose of the model,
exhibit or specimen.
[69 FR 56542, Sept. 21, 2004]
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 Director.
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)(5).
(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 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;
70 FR 54266, Sept. 14, 2005]
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
[[Page 77]]
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 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 the items listed in paragraphs (a)(1), (a)(2) and (a)(3)
of this section.
(1) A list of all patents, publications, applications, or other
information submitted for consideration by the Office. U.S. patents and
U.S. patent application publications must be listed in a section
separately from citations of other documents. Each page of the list must
include:
(i) The application number of the application in which the
information disclosure statement is being submitted;
(ii) A column that provides a space, next to each document to be
considered, for the examiner's initials; and
[[Page 78]]
(iii) A heading that clearly indicates that the list is an
information disclosure statement.
(2) A legible copy of:
(i) Each foreign patent;
(ii) Each publication or that portion which caused it to be listed,
other than U.S. patents and U.S. patent application publications unless
required by the Office;
(iii) For each cited pending unpublished 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.
(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 as specified in
paragraph (a) of this section 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;
68 FR 38628, June 30, 2003; 69 FR 56542, Sept. 21, 2004]
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 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;
[[Page 79]]
(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 not enter 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 not be entered.
(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, as amended at
68 FR 38628, June 30, 2003]
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
Director 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 Director, 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:
(1) The applicant's age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy
resources; or
(iii) Contribute to countering terrorism.
(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; 69 FR 56542, Sept. 21, 2004]
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 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
[[Page 80]]
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(g), 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. 1.495;
(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 Director 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 part 41, subpart D, of this title.
[65 FR 50104, Aug. 16, 2000, as amended at 65 FR 57056, Sept. 20, 2000;
67 FR 523, Jan. 4, 2002; 69 FR 49999, Aug. 12, 2004; 69 FR 56542, Sept.
21, 2004]
Sec. 1.104 Nature of examination.
(a) Examiner's action. (1) On taking up an application for
examination or a patent in a reexamination proceeding, the examiner
shall make a thorough study thereof and shall make a thorough
investigation of the available prior art relating to the subject matter
of the claimed invention. The examination shall be complete with respect
both to compliance of the application or patent under reexamination with
the applicable statutes and rules and to the patentability of the
invention as claimed, as well as with respect to matters of form, unless
otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding,
both the patent owner and the requester, will be notified of the
examiner's action. The
[[Page 81]]
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 subject to an obligation of
assignment to the same person at the time the claimed invention was
made.
(i) Subject matter developed by another person and a claimed
invention shall be deemed to have been commonly owned by the same
person, or subject to an obligation of assignment to the same person in
any application and in any patent granted on or after December 10, 2004,
if:
(A) The claimed invention and the subject matter was made by or on
behalf of parties to a joint research agreement that was in effect on or
before the date the claimed invention was made;
(B) The claimed invention was made as a result of activities
undertaken within the scope of the joint research agreement; and
(C) The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint research
agreement.
(ii) For purposes of paragraph (c)(4)(i) of this section, the term
``joint research agreement'' means a written contract, grant, or
cooperative agreement entered into by two or more persons or entities
for the performance of experimental, developmental, or research work in
the field of the claimed invention.
(iii) To overcome a rejection under 35 U.S.C. 103(a) based upon
subject matter which qualifies as prior art under only one or more of 35
U.S.C. 102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the applicant must
provide a statement to the effect that the prior art and the claimed
invention were made by or on the behalf of parties to a joint research
agreement, within the meaning of 35 U.S.C. 103(c)(3) and paragraph
(c)(4)(ii) of this section, that was in effect on or before the date the
claimed invention was made, and that the claimed invention
[[Page 82]]
was made as a result of activities undertaken within the scope of the
joint research agreement.
(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 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; 70 FR 1823,
Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005]
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.
[[Page 83]]
(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.
(viii) Technical information known to applicant. Technical
information known to applicant concerning the related art, the
disclosure, the claimed subject matter, other factual information
pertinent to patentability, or concerning the accuracy of the examiner's
stated interpretation of such items.
(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) Requirements for factual information known to applicant may be
presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking
applicant's factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or
disagree.
(4) Any reply to a requirement for information pursuant to this
section that states either that the information required to be submitted
is unknown to or is not readily available to the party or parties from
which it was requested may 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 Sec. Sec. 1.135 and 1.136.
[65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004]
Sec. Sec. 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 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 Sec. Sec. 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 Sec. Sec. 1.135 and 1.136
for time for reply to avoid abandonment.
(2) Supplemental replies. (i) A reply that is supplemental to a
reply that is in compliance with Sec. 1.111(b) will not be entered as a
matter of right except as provided in paragraph (a)(2)(ii) of this
section. The Office may enter a supplemental reply if the supplemental
reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was
filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
[[Page 84]]
(ii) A supplemental reply will be entered if the supplemental reply
is filed within the period during which action by the Office is
suspended under Sec. 1.103(a) or (c).
(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; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, Jan.
27, 2005]
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 action indicates that it is made final
(Sec. 1.113) or an appeal (Sec. 41.31 of this title) 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).
[69 FR 49999, Aug. 12, 2004]
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. 41.31 of this title), or to amendment as specified in
Sec. 1.114 or Sec. 1.116. Petition may be taken to the Director 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; 69
FR 49999, Aug. 12, 2004]
[[Page 85]]
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 (Sec. 41.37 of this
title) or a reply brief (Sec. 41.41 of this title), 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, as amended at 69 FR 49999, Aug. 12, 2004]
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. The patent application publication may include
preliminary amendments (Sec. 1.215(a)).
(1) A preliminary amendment that is present on the filing date of an
application is part of the original disclosure of the application.
(2) A preliminary amendment filed after the filing date of the
application is not part of the original disclosure of the application.
(b) A preliminary amendment in compliance with Sec. 1.121 will be
entered unless disapproved by the Director.
(1) A preliminary amendment seeking cancellation of all the claims
without presenting any new or substitute claims will be disapproved.
(2) 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.
(3) A preliminary amendment will not be disapproved under (b)(2) of
this section 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
[[Page 86]]
(iii) Three months from the date the national stage is entered as
set forth in Sec. 1.491 in an international application.
(4) The time periods specified in paragraph (b)(3) of this section
are not extendable.
[69 FR 56543, Sept. 21, 2004]
Sec. 1.116 Amendments and affidavits or other evidence after final action
and prior to appeal.
(a) An amendment after final action 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, but before or on the same date of
filing an appeal (Sec. 41.31 or Sec. 41.61 of this title):
(1) An amendment may be made canceling claims or complying with any
requirement of form expressly set forth in a previous Office action;
(2) An amendment presenting rejected claims in better form for
consideration on appeal may be admitted; or
(3) An amendment touching the merits of the application or patent
under reexamination may be admitted upon a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented.
(c) 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
reexamination proceeding from its condition as subject to appeal or to
save the application from abandonment under Sec. 1.135, or the
reexamination prosecution from termination under Sec. 1.550(d) or Sec.
1.957(b) or limitation of further prosecution under Sec. 1.957(c).
(d)(1) Notwithstanding the provisions of paragraph (b) of this
section, no amendment other than canceling claims, where such
cancellation does not affect the scope of any other pending claim in the
proceeding, can be made in an inter partes reexamination proceeding
after the right of appeal notice under Sec. 1.953 except as provided in
Sec. 1.981 or as permitted by Sec. 41.77(b)(1) of this title.
(2) Notwithstanding the provisions of paragraph (b) of this section,
an amendment made after a final rejection or other final action (Sec.
1.113) 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 may not cancel claims where such
cancellation affects the scope of any other pending claim in the
reexamination proceeding except as provided in Sec. 1.981 or as
permitted by Sec. 41.77(b)(1) of this title.
(e) An affidavit or other evidence submitted 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
but before or on the same date of filing an appeal (Sec. 41.31 or Sec.
41.61 of this title), may be admitted upon a showing of good and
sufficient reasons why the affidavit or other evidence is necessary and
was not earlier presented.
(f) Notwithstanding the provisions of paragraph (e) of this section,
no affidavit or other evidence can be made in an inter partes
reexamination proceeding after the right of appeal notice under Sec.
1.953 except as provided in Sec. 1.981 or as permitted by Sec.
41.77(b)(1) of this title.
(g) After decision on appeal, amendments, affidavits and other
evidence can only be made as provided in Sec. Sec. 1.198 and 1.981, or
to carry into effect a recommendation under Sec. 41.50(c) of this
title.
[69 FR 49999, Aug. 12, 2004]
Sec. Sec. 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. Amendments to the specification, other than the
claims, computer listings (Sec. 1.96) and sequence listings (Sec.
1.825), must be made by adding, deleting or replacing a paragraph,
[[Page 87]]
by replacing a section, or by a substitute specification, in the manner
specified in this section.
(1) Amendment to delete, replace, or add a paragraph. Amendments to
the specification, including amendment to a section heading or the title
of the invention which are considered for amendment purposes to be an
amendment of a paragraph, must be made by submitting:
(i) An instruction, which unambiguously identifies the location, to
delete one or more paragraphs of the specification, replace a paragraph
with one or more replacement paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph with markings to
show all the changes relative to the previous version of the paragraph.
The text of any added subject matter must be shown by underlining the
added text. The text of any deleted matter must be shown by strike-
through except that double brackets placed before and after the deleted
characters may be used to show deletion of five or fewer consecutive
characters. The text of any deleted subject matter must be shown by
being placed within double brackets if strike-through cannot be easily
perceived;
(iii) The full text of any added paragraphs without any underlining;
and
(iv) The text of a paragraph to be deleted must not be presented
with strike-through or placed within double brackets. The instruction to
delete may identify a paragraph by its paragraph number or include a few
words from the beginning, and end, of the paragraph, if needed for
paragraph identification purposes.
(2) Amendment by replacement section. If the sections of the
specification contain section headings as provided in Sec. 1.77(b),
Sec. 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,
which unambiguously identifies the location, to delete that section of
the specification and to replace such deleted section with a replacement
section; and
(ii) A replacement section with markings to show all changes
relative to the previous version of the section. The text of any added
subject matter must be shown by underlining the added text. The text of
any deleted matter must be shown by strike-through except that double
brackets placed before and after the deleted characters may be used to
show deletion of five or fewer consecutive characters. The text of any
deleted subject matter must be shown by being placed within double
brackets if strike-through cannot be easily perceived.
(3) Amendment by substitute specification. The specification, other
than the claims, may also be amended by submitting:
(i) An instruction to replace the specification; and
(ii) A substitute specification in compliance with Sec. Sec.
1.125(b) and (c).
(4) Reinstatement of previously deleted paragraph or section. A
previously deleted paragraph or section may be reinstated only by a
subsequent amendment adding the previously deleted paragraph or section.
(5) Presentation in subsequent amendment document. Once a paragraph
or section is amended in a first amendment document, the paragraph or
section shall not be re-presented in a subsequent amendment document
unless it is amended again or a substitute specification is provided.
(c) Claims. Amendments to a claim must be made by rewriting the
entire claim with all changes (e.g., additions and deletions) as
indicated in this subsection, except when the claim is being canceled.
Each amendment document that includes a change to an existing claim,
cancellation of an existing claim or addition of a new claim, must
include a complete listing of all claims ever presented, including the
text of all pending and withdrawn claims, in the application. The claim
listing, including the text of the claims, in the amendment document
will serve to replace all prior versions of the claims, in the
application. In the claim listing, the status of every claim must be
indicated after its claim number by using one of the following
identifiers in a parenthetical expression: (Original), (Currently
amended), (Canceled), (Withdrawn), (Previously presented), (New), and
(Not entered).
[[Page 88]]
(1) Claim listing. All of the claims presented in a claim listing
shall be presented in ascending numerical order. Consecutive claims
having the same status of ``canceled'' or ``not entered'' may be
aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim
listing shall commence on a separate sheet of the amendment document and
the sheet(s) that contain the text of any part of the claims shall not
contain any other part of the amendment.
(2) When claim text with markings is required. All claims being
currently amended in an amendment paper shall be presented in the claim
listing, indicate a status of ``currently amended,'' and be submitted
with markings to indicate the changes that have been made relative to
the immediate prior version of the claims. The text of any added subject
matter must be shown by underlining the added text. The text of any
deleted matter must be shown by strike-through except that double
brackets placed before and after the deleted characters may be used to
show deletion of five or fewer consecutive characters. The text of any
deleted subject matter must be shown by being placed within double
brackets if strike-through cannot be easily perceived. Only claims
having the status of ``currently amended,'' or ``withdrawn'' if also
being amended, shall include markings. If a withdrawn claim is currently
amended, its status in the claim listing may be identified as
``withdrawn--currently amended.''
(3) When claim text in clean version is required. The text of all
pending claims not being currently amended shall be presented in the
claim listing in clean version, i.e., without any markings in the
presentation of text. The presentation of a clean version of any claim
having the status of ``original,'' ``withdrawn'' or ``previously
presented'' will constitute an assertion that it has not been changed
relative to the immediate prior version, except to omit markings that
may have been present in the immediate prior version of the claims of
the status of ``withdrawn'' or ``previously presented.'' Any claim added
by amendment must be indicated with the status of ``new'' and presented
in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim. (i)
No claim text shall be presented for any claim in the claim listing with
the status of ``canceled'' or ``not entered.''
(ii) Cancellation of a claim shall be effected by an instruction to
cancel a particular claim number. Identifying the status of a claim in
the claim listing as ``canceled'' will constitute an instruction to
cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was
previously canceled may be reinstated only by adding the claim as a
``new'' claim with a new claim number.
(d) Drawings: One or more application drawings shall be amended in
the following manner: Any changes to an application drawing must be in
compliance with Sec. 1.84 and must be submitted on a replacement sheet
of drawings which shall be an attachment to the amendment document and,
in the top margin, labeled ``Replacement Sheet.'' Any replacement sheet
of drawings shall include all of the figures appearing on the immediate
prior version of the sheet, even if only one figure is amended. Any new
sheet of drawings containing an additional figure must be labeled in the
top margin as ``New Sheet.'' All changes to the drawings shall be
explained, in detail, in either the drawing amendment or remarks section
of the amendment paper.
(1) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, may be included. The marked-up
copy must be clearly labeled as ``Annotated Sheet'' and must be
presented in the amendment or remarks section that explains the change
to the drawings.
(2) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, must be provided when required
by the examiner.
(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.
[[Page 89]]
(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) of this section is not required.
(h) Amendment sections. Each section of an amendment document (e.g.,
amendment to the claims, amendment to the specification, replacement
drawings, and remarks) must begin on a separate sheet.
(i) Amendments in reissue applications. Any amendment to the
description and claims in reissue applications must be made in
accordance with Sec. 1.173.
(j) Amendments in reexamination proceedings. Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings must be made in accordance with Sec. 1.530.
(k) Amendments in provisional applications. Amendments in
provisional applications are not usually 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.
[68 FR 38628, June 30, 2003, as amended at 69 FR 56543, Sept. 21, 2004]
Sec. Sec. 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) Subject to Sec. 1.312, a substitute specification, excluding
the claims, may be filed at any point up to payment of the issue fee if
it is accompanied by a statement that the substitute specification
includes no new matter.
(c) A substitute specification submitted under this section must be
submitted with markings showing all the changes relative to the
immediate prior version of the specification of record. The text of any
added subject matter must be shown by underlining the added text. The
text of any deleted matter must be shown by strike-through except that
double brackets placed before and after the deleted characters may be
used to show deletion of five or fewer consecutive characters. The text
of any deleted subject matter must be shown by being placed within
double brackets if strike-through cannot be easily perceived. An
accompanying clean version (without markings) must also be supplied.
Numbering the paragraphs of the specification of record is not
considered a change that must be shown pursuant to this paragraph.
(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;
68 FR 38630, June 30, 2003]
Sec. 1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout
the prosecution. When claims are canceled the remaining claims must not
be renumbered. When claims are added, they must be numbered by the
applicant consecutively beginning with the number next following the
highest numbered claim previously presented (whether entered or not).
When the application is ready for allowance, the examiner, if necessary,
will renumber the claims consecutively in the order in which they appear
or in such order as may have been requested by applicant.
[62 FR 53194, Oct. 10, 1997]
Sec. 1.127 Petition from refusal to admit amendment.
From the refusal of the primary examiner to admit an amendment, in
whole or in part, a petition will lie to the Director under Sec. 1.181.
[[Page 90]]
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 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
[[Page 91]]
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) [Reserved]
[61 FR 42805, Aug. 19, 1996, as amended at 65 FR 57056, Sept. 20, 2000;
70 FR 1824, Jan. 11, 2005]
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 Sec. Sec. 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.
41.203(a) of this title, in which case an applicant may suggest an
interference pursuant to Sec. 41.202(a) of this title; 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 records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their absence
must be 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; 69 FR 49999, Aug. 12, 2004; 69 FR 56543, Sept. 21, 2004]
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]
[[Page 92]]
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 Director.
(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 or the
examiner determines that such an interview would advance prosecution of
the 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 Sec. Sec. 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; 70 FR 56128, Sept. 26, 2005]
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. 41.41 of
this title;
(iii) The reply is a request for an oral hearing submitted pursuant
to Sec. 41.47(a) of this title;
(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Sec. 1.304 or to Sec. 41.50 or Sec. 41.52
of this title; or
(v) The application is involved in a contested case (Sec. 41.101(a)
of this title).
(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
[[Page 93]]
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. 1.304 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. Sec. 41.4(a) and 41.121(a)(3) of this title for extensions of time
in contested cases before the Board of Patent Appeals and Interferences.
(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. 1.550(c) for extensions of time in ex parte reexamination
proceedings; Sec. 1.956 for extensions of time in inter partes
reexamination proceedings; and Sec. Sec. 41.4(a) and 41.121(a)(3) of
this title for extensions of time in contested cases before the Board of
Patent Appeals and Interferences. Any request under this section must be
accompanied by the petition fee set forth in Sec. 1.17(g).
(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; 69 FR 50000, Aug.
12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005]
Sec. 1.137 Revival of abandoned application, terminated or limited
reexamination prosecution, 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 prosecution terminated
under Sec. 1.550(d) or Sec. 1.957(b) or limited under Sec. 1.957(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(l);
(3) A showing to the satisfaction of the Director 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.
[[Page 94]]
(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
prosecution terminated under Sec. 1.550(d) or Sec. 1.957(b) or limited
under Sec. 1.957(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 Director 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, to reissue applications, 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 or limited reexamination prosecution, 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;
(2) The provisions of Sec. 1.550(c) for a terminated ex parte
reexamination prosecution, where the ex parte reexamination was filed
under Sec. 1.510; or
(3) The provisions of Sec. 1.956 for a terminated inter partes
reexamination prosecution or an inter partes reexamination limited as to
further prosecution, where the inter partes reexamination was filed
under Sec. 1.913.
[[Page 95]]
(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, as amended at 69 FR 56543, Sept. 21, 2004;
72 FR 18904, Apr. 16, 2007]
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
paragraph 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. Applicants
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.
(d) An applicant seeking to abandon an application filed under 35
U.S.C. 111(a) and Sec. 1.53(b) on or after December 8, 2004, to obtain
a refund of the search fee and excess claims fee paid in the
application, must submit a declaration of express abandonment by way of
a petition under this paragraph before an examination has been made of
the application. The date indicated on any certificate of mailing or
transmission under Sec. 1.8 will not be taken into account in
determining whether a petition under Sec. 1.138(d) was filed before an
examination has been made of the application. If a request for refund of
the search fee and excess claims fee paid in the application is not
filed with the declaration of express abandonment under this paragraph
or within two months from the date on which the declaration of express
abandonment under this paragraph was filed, the Office may retain the
entire search fee and excess claims fee paid in the application. This
two-month period is not extendable. If a petition and declaration of
express abandonment under this paragraph are not filed before an
examination has been made of the application, the Office will not refund
any part of the search fee and excess claims fee paid in the application
except as provided in Sec. 1.26.
[65 FR 54674, Sept. 8, 2000, as amended at 65 FR 57058, Sept. 20, 2000;
71 FR 12284, Mar. 10, 2006]
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.
[[Page 96]]
Sec. 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be
claimed in one national application, except that more than one species
of an invention, not to exceed a reasonable number, may be specifically
claimed in different claims in one national application, provided the
application also includes an allowable claim generic to all the claimed
species and all the claims to species in excess of one are written in
dependent form (Sec. 1.75) or otherwise include all the limitations of
the generic claim.
(b) Where claims to all three categories, product, process of
making, and process of use, are included in a national application, a
three way requirement for restriction can only be made where the process
of making is distinct from the product. If the process of making and the
product are not distinct, the process of using may be joined with the
claims directed to the product and the process of making the product
even though a showing of distinctness between the product and process of
using the product can be made.
[52 FR 20046, May 28, 1987]
Sec. 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed
in a single application, the examiner in an Office action will require
the applicant in the reply to that action to elect an invention to which
the claims will be restricted, this official action being called a
requirement for restriction (also known as a requirement for division).
Such requirement will normally be made before any action on the merits;
however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not
canceled, are nevertheless withdrawn from further consideration by the
examiner by the election, subject however to reinstatement in the event
the requirement for restriction is withdrawn or overruled.
[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997]
Sec. 1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he
may request reconsideration and withdrawal or modification of the
requirement, giving the reasons therefor. (See Sec. 1.111.) In
requesting reconsideration the applicant must indicate a provisional
election of one invention for prosecution, which invention shall be 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 Director 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 Sec. Sec.
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
[[Page 97]]
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 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;
[[Page 98]]
(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.
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 Sec. Sec. 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
[[Page 99]]
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 must be submitted.
[58 FR 38726, July 20, 1993, as amended at 65 FR 57058, Sept. 20, 2000;
69 FR 56543, Sept. 21, 2004]
Sec. 1.166 Specimens.
The applicant may be required to furnish specimens of the plant, or
its flower or fruit, in a quantity and at a time in its stage of growth
as may be designated, for study and inspection. Such specimens, properly
packed, must be forwarded in conformity with instructions furnished to
the applicant. When it is not possible to forward such specimens, plants
must be made available for official inspection where grown.
(35 U.S.C. 114, 161)
Sec. 1.167 Examination.
Applications may be submitted by the Patent and Trademark Office to
the Department of Agriculture for study and report.
[62 FR 53196, Oct. 10, 1997]
Reissues
Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.
Sec. 1.171 Application for reissue.
An application for reissue must contain the same parts required for
an application for an original patent, complying with all the rules
relating thereto except as otherwise provided, and in 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
Sec. Sec. 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 (Sec. Sec. 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
[[Page 100]]
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, as follows:
(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
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 Sec. Sec. 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. One or more patent drawings shall be amended in the
following manner: Any changes to a patent drawing must be submitted as a
replacement sheet of drawings which shall be an attachment to the
amendment document. Any replacement sheet of drawings must be in
compliance with Sec. 1.84 and shall include all of the figures
appearing on the original version of the sheet, even if only one figure
is amended. 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.'' All changes to the drawing(s) shall be explained, in
detail, beginning on a separate sheet accompanying the papers including
the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, may be included. The marked-up
copy must be clearly labeled as ``Annotated Marked-up Drawings'' and
must be presented in the amendment or remarks section that explains the
change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, must be provided when required
by the examiner.
(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 (Sec. Sec. 1.96 and 1.821(c)).
Matter added by reissue on compact discs must be preceded with
``'' and end with ``'' to properly identify
the material being added.
[[Page 101]]
(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, as amended at 68 FR 38630, June 30, 2003;
69 FR 56543, Sept. 21, 2004]
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 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).
(e) The filing of any continuing reissue application which does not
replace its parent reissue application must include an oath or
declaration which, pursuant to paragraph (a)(1) of this section,
identifies at least one error in the original patent which has not been
corrected by the parent reissue application or an earlier reissue
application. All other requirements relating to oaths or declarations
must also be met.
[62 FR 53196, Oct. 10, 1997, as amended at 69 FR 56544, Sept. 21, 2004]
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
[[Page 102]]
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]
Sec. 1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an
offer to surrender that patent, and the surrender shall take effect upon
reissue of the patent. Until a reissue application is granted, the
original patent shall remain in effect.
(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, as amended at 69 FR 56544, Sept. 21, 2004]
Sec. 1.179 [Reserved]
Petitions and Action by the Director
Authority: 35 U.S.C. 6; 15 U.S.C. 1113, 1123.
Sec. 1.181 Petition to the Director.
(a) Petition may be taken to the Director:
(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 Director; and
(3) To invoke the supervisory authority of the Director in
appropriate circumstances. For petitions involving action of the Board
of Patent Appeals and Interferences, see Sec. 41.3 of this title.
(b) Any such petition must contain a statement of the facts involved
and the point or points to be reviewed and the action requested. Briefs
or memoranda, if any, in support thereof should accompany or be embodied
in the petition; and where facts are to be proven,
[[Page 103]]
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 Director 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 Director 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 Director.
(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 Director 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; 69 FR 50000, Aug. 12, 2004]
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 Director, 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(f).
[69 FR 56544, Sept. 21, 2004]
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 Director or the
Director'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(f).
[69 FR 56544, Sept. 21, 2004]
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.
Appeals to the Board of Patent Appeals and Interferences under 35
U.S.C. 134(a) and (b) are conducted according to part 41 of this title.
[69 FR 50000, Aug. 12, 2004]
Sec. Sec. 1.192-1.196 [Reserved]
Sec. 1.197 Return of jurisdiction from the Board of Patent Appeals and
Interferences; termination of proceedings.
(a) Return of jurisdiction from the Board of Patent Appeals and
Interferences. Jurisdiction over an application or patent under ex parte
reexamination proceeding passes to the examiner after a decision by the
Board of Patent Appeals and Interferences upon transmittal of the file
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 or patent under ex parte reexamination
proceeding may require, to carry into effect the decision of the Board
of Patent Appeals and Interferences.
[[Page 104]]
(b) Termination of proceedings. (1) Proceedings on an application
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:
(i) Where claims stand allowed in an application; or
(ii) Where the nature of the decision requires further action by the
examiner.
(2) The date of termination of proceedings on an application is the
date on which the appeal is dismissed or the date on which the time for
appeal to the U.S. Court of Appeals for the Federal Circuit or review by
civil action (Sec. 1.304) expires in the absence of further appeal or
review. If an appeal to the U.S. Court of Appeals for the Federal
Circuit or a civil action has been filed, proceedings on an application
are considered terminated when the appeal or civil action is terminated.
A civil action is terminated when the time to appeal the judgment
expires. An appeal to the U.S. Court of Appeals for the Federal Circuit,
whether from a decision of the Board or a judgment in a civil action, is
terminated when the mandate is issued by the Court.
[69 FR 50000, Aug. 12, 2004]
Sec. 1.198 Reopening after a final decision of the Board of Patent Appeals
and Interferences.
When a decision by the Board of Patent Appeals and Interferences on
appeal has become final for judicial review, prosecution of the
proceeding before the primary examiner will not be reopened or
reconsidered by the primary examiner except under the provisions of
Sec. 1.114 or Sec. 41.50 of this title without the written authority
of the Director, and then only for the consideration of matters not
already adjudicated, sufficient cause being shown.
[69 FR 50000, Aug. 12, 2004]
Publication of Applications
Source: 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(c)), 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 any application size fee
required by the Office under Sec. 1.16(s) or Sec. 1.492(j), 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 Sec. Sec. 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
[[Page 105]]
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.
[65 FR 57058, Sept. 20, 2000, as amended at 70 FR 3891, Jan. 27, 2005]
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
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 specification and
drawings deposited on the filing date of the application, as well as the
executed oath or declaration submitted to complete the application. The
patent application publication may also be based upon amendments to the
specification (other than the abstract or the claims) that are reflected
in a substitute specification under Sec. 1.125(b), amendments to the
abstract under Sec. 1.121(b), amendments to the claims that are
reflected in a complete claim listing under Sec. 1.121(c), and
amendments to the drawings under Sec. 1.121(d), provided that such
substitute specification or amendment is submitted in sufficient time to
be entered into the Office file wrapper of the application before
technical preparations for publication of the application have begun.
Technical preparations for publication of an application generally begin
four months prior to the projected date of publication. The patent
application publication of an application that has entered the national
stage under 35 U.S.C. 371 may also include amendments made during the
international stage. See paragraph (c) of this section for publication
of an application based upon a copy of the application submitted via the
Office electronic filing system.
(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
[[Page 106]]
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, provided that applicant supplies such a
copy in compliance with the Office electronic filing system requirements
within one month of the mailing date of the first Office communication
that includes a confirmation number for 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.
[65 FR 57058, Sept. 20, 2000, as amended at 69 FR 56544, Sept. 21, 2004]
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:
[[Page 107]]
(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.
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
[[Page 108]]
mailing will be regarded as the date of service;
(5) Whenever it shall be satisfactorily shown to the Director 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. 41.106(e) of this title for service of papers in
contested cases before the Board of Patent Appeals and Interferences.
[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984; 69
FR 50000, Aug. 12, 2004; 69 FR 58260, Sept. 30, 2004]
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 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) A protest may be filed by a member of the public against a
pending application, and it will be matched with the application file if
it adequately identifies the patent application. A
[[Page 109]]
protest submitted within the time frame of paragraph (b) of this
section, which is not matched, or not matched in a timely manner to
permit review by the examiner during prosecution, due to inadequate
identification, may not be entered and may be returned to the protestor
where practical, or, if return is not practical, discarded.
(b) The protest will be entered into the record of the application
if, in addition to complying with paragraph (c) of this section, the
protest has been served upon the applicant in accordance with Sec.
1.248, or filed with the Office in duplicate in the event service is not
possible; and, except for paragraph (b)(1) of this section, the protest
was filed prior to the date the application was published under Sec.
1.211, or a notice of allowance under Sec. 1.311 was mailed, whichever
occurs first.
(1) If a protest is accompanied by the written consent of the
applicant, the protest will be considered if the protest is matched with
the application in time to permit review during prosecution.
(2) A statement must accompany a protest that it is the first
protest submitted in the application by the real party in interest who
is submitting the protest; or the protest must comply with paragraph
(c)(5) of this section. This section does not apply to the first protest
filed in an application.
(c) In addition to compliance with paragraphs (a) and (b) of this
section, a protest must include:
(1) A listing of the patents, publications, or other information
relied upon;
(2) A concise explanation of the relevance of each item listed
pursuant to paragraph (c)(1) of this section;
(3) A copy of each listed patent, publication, or other item of
information in written form, or at least the pertinent portions thereof;
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent, publication, or
other item of information relied upon; and
(5) If it is a second or subsequent protest by the same real party
in interest, an explanation as to why the issue(s) raised in the second
or subsequent protest are significantly different than those raised
earlier and why the significantly different issue(s) were not presented
earlier, and a processing fee under Sec. 1.17(i) must be submitted.
(d) A member of the public filing a protest in an application under
this section will not receive any communication 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. The limited involvement of the member of the public filing a
protest pursuant to this section ends with the filing of the protest,
and no further submission on behalf of the protestor will be considered,
unless the submission is made pursuant to paragraph (c)(5) of this
section.
(e) Where a protest raising inequitable conduct issues satisfies the
provisions of this section for entry, it will be entered into the
application file, generally without comment on the inequitable conduct
issues raised in it.
(f) In the absence of a request by the Office, an applicant has no
duty to, and need not, reply to a protest.
(g) Protests that fail to comply with paragraphs (b) or (c) of this
section may not be entered, and if not entered, will be returned to the
protestor, or discarded, at the option of the Office.
[69 FR 56544, Sept. 21, 2004]
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 Director to determine whether a public use proceeding
should be instituted. If instituted, the Director 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 part 41, subpart D, of this title. 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.
[[Page 110]]
(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 motion under Sec. 41.121(a)(1) of this title.
(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; 69 FR 50000, Aug.
12, 2004]
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
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
[[Page 111]]
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
Director accompanied by the fee set forth in Sec. 1.17(g) 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. 41.31 of this title. 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, as amended at 69 FR 50001, Aug. 12, 2004; 69
FR 56545, Sept. 21, 2004]
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 on which 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 on which
the notice of intent to publish issued pursuant to Sec. 1.294(c) must
be in the form of a petition accompanied by the fee set forth in Sec.
1.17(g).
[69 FR 56545, Sept. 21, 2004]
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
[[Page 112]]
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 Director (see Sec. Sec. 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 appeals by
patent owners and third party requesters in inter partes reexamination
proceedings filed under Sec. 1.913, Sec. 1.983 is controlling.
[68 FR 71006, Dec. 22, 2003]
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 Director
within the time specified in Sec. 1.304.
(b) In interferences, the notice must be served as provided in Sec.
41.106(e) of this title.
(c) In ex parte reexamination proceedings, the notice must be served
as provided in Sec. 1.550(f).
(d) In inter partes reexamination proceedings, the notice must be
served as provided in Sec. 1.903.
(e) Notices of appeal directed to the Director shall be mailed to or
served by hand on the General Counsel as provided in Sec. 104.2.
[68 FR 71006, Dec. 22, 2003, as amended at 69 FR 50001, Aug. 12, 2004;
69 FR 58260, Sept. 30, 2004]
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 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 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 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) A notice of election under 35 U.S.C. 141 to have all further
proceedings on review conducted as provided in 35 U.S.C. 146 must be
filed with the Office of the Solicitor and served as provided in Sec.
41.106(e) of this title.
(d) For an ex parte reexamination proceeding filed on or after
November 29, 1999, and for any inter partes reexamination proceeding, 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 76774, Dec. 7, 2000; 68 FR 71007, Dec.
22, 2003; 69 FR 50001, Aug. 12, 2004; 69 FR 58260, Sept. 30, 2004]
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. 41.52(a), Sec. 41.79(a), or Sec. 41.127(d) of this title,
the time for filing an appeal or commencing a civil action shall expire
two months after action on the request. In contested cases before the
[[Page 113]]
Board of Patent Appeals and 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), or Sec. 1.956, or of
Sec. 41.4 of this title.
(3) The Director 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; 68 FR 71007, Dec.
22, 2003; 69 FR 50001, Aug. 12, 2004]
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 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(e)) 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 fee 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
or any publication fee due to any deposit account identified in a
previously filed authorization to charge such fees:
(1) An incorrect issue fee or publication fee; or
(2) A fee transmittal form (or letter) for payment of issue fee or
publication fee.
[65 FR 57060, Sept. 20, 2000, as amended at 66 FR 67096, Dec. 28, 2001;
69 FR 56545, Sept. 21, 2004]
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 Director, without withdrawing the application
from issue.
[65 FR 14873, Mar. 20, 2000]
[[Page 114]]
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 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
[[Page 115]]
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 judicially created
double patenting in a patent application or in a reexamination
proceeding except as provided for in paragraph (d) of this section,
must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4)
of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if
filed in a patent application or in accordance with paragraph (a)(1) of
this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application
or any patent subject to the reexamination proceeding shall be
enforceable only for and during such period that said patent is commonly
owned with the application or patent which formed the basis for the
judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent application or in
a reexamination proceeding to obviate double patenting based upon a
patent or application that is not commonly owned but was disqualified
under 35 U.S.C. 103(c) as resulting from activities undertaken within
the scope of a joint research agreement, 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 be signed in accordance with paragraph
(a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision waiving the right to separately enforce any
patent granted on that application or any patent subject to the
reexamination proceeding and the patent or any patent granted on the
application which formed the basis for the double patenting, and that
any patent granted on that application or any patent subject to the
reexamination proceeding shall be enforceable only for and during such
period that said patent and the patent, or any patent granted on the
application, which formed the basis for the double patenting are not
separately enforced.
[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996;
70 FR 1824, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005]
Correction of Errors in Patent
Sec. 1.322 Certificate of correction of Office mistake.
(a)(1) The Director 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
[[Page 116]]
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. 41.121(a)(2) or Sec. 41.121(a)(3)
of this title.
(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
Director 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; 69 FR 50001, Aug. 12, 2004]
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. 41.121(a)(2) or Sec. 41.121(a)(3)
of this title.
[69 FR 50001, Aug. 12, 2004]
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 Director, pursuant to 35 U.S.C. 256, may, on application
of all the parties and assignees, 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.
41.121(a)(2) or Sec. 41.121(a)(3) of this title.
(b) Any request to correct inventorship of a patent 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).
(c) For correction of inventorship in an application, see Sec. Sec.
1.48 and 1.497.
(d) In a contested case before the Board of Patent Appeals and
Interferences under part 41, subpart D, of this title, a request for
correction of a patent must be in the form of a motion
[[Page 117]]
under Sec. 41.121(a)(2) or Sec. 41.121(a)(3) of this title.
[62 FR 53199, Oct. 10, 1997, as amended at 65 FR 54677, Sept. 8, 2000;
69 FR 50001, Aug. 12, 2004; 69 FR 56545, Sept. 21, 2004; 70 FR 3891,
Jan. 27, 2005]
Sec. 1.325 Other mistakes not corrected.
Mistakes other than those provided for in Sec. Sec. 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. 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 Sec. Sec. 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 118]]
(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 Sec. Sec. 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.
(c) A fee address must be an address associated with a Customer
Number.
[49 FR 34725, Aug. 31, 1984, as amended at 69 FR 29878, May 26, 2004]
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
[[Page 119]]
and any necessary surcharge are paid. A maintenance fee or surcharge may
be paid in the manner set forth in Sec. 1.23 or by an authorization to
charge a deposit account established pursuant to Sec. 1.25. Payment of
a maintenance fee and any necessary surcharge or the authorization to
charge a deposit account must be submitted within the periods set forth
in Sec. 1.362 (d), (e), or (f). Any payment or authorization of
maintenance fees and surcharges filed at any other time will not be
accepted and will not serve as a payment of the maintenance fee except
insofar as a delayed payment of the maintenance fee is accepted by the
Director 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 Sec. Sec. 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 Director to
accept and record the maintenance fee.
(b) Any petition under this section must be filed within two months
of the action complained of, or within such other time as may be set in
the action
[[Page 120]]
complained of, and must be accompanied by the fee set forth in Sec.
1.17(g). The petition may include a request that the petition fee be
refunded if the refusal to accept and record the maintenance fee is
determined to result from an error by the Patent and Trademark Office.
(c) Any petition filed under this section must comply with the
requirements of Sec. 1.181(b) and must be signed by an attorney or
agent registered to practice before the Patent and Trademark Office, or
by the patentee, the assignee, or other party in interest.
[49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997;
69 FR 56545, Sept. 21, 2004]
Sec. 1.378 Acceptance of delayed payment of maintenance fee in expired
patent to reinstate patent.
(a) The Director 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
Director 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 Director 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(f).
After the decision on the petition for reconsideration, no further
reconsideration or review of the matter will be undertaken by the
Director. 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; 69 FR 56545, Sept.
21, 2004]
[[Page 121]]
Subpart C_International Processing Provisions
Authority: Pub. L. 94-131, 89 Stat. 685; Pub. L. 99-616, 35 U.S.C.
351 through 376.
Source: 43 FR 20466, May 11, 1978, unless otherwise noted.
General Information
Sec. 1.401 Definitions of terms under the Patent Cooperation Treaty.
(a) The abbreviation PCT and the term Treaty mean the Patent
Cooperation Treaty.
(b) International Bureau means the World Intellectual Property
Organization located in Geneva, Switzerland.
(c) Administrative Instructions means that body of instructions for
operating under the Patent Cooperation Treaty referred to in PCT Rule
89.
(d) Request, when capitalized, means that element of the
international application described in PCT Rules 3 and 4.
(e) International application, as used in this subchapter is defined
in Sec. 1.9(b).
(f) Priority date for the purpose of computing time limits under the
Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also Sec.
1.465.
(g) Demand, when capitalized, means that document filed with the
International Preliminary Examining Authority which requests an
international preliminary examination.
(h) Annexes means amendments made to the claims, description or the
drawings before the International Preliminary Examining Authority.
(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
[[Page 122]]
agreed upon by the Director, in accordance with the agreement between
the Patent and Trademark Office and the International Bureau (PCT Art.
16(3)(b)).
(b) The Patent and Trademark Office, when acting as an International
Searching Authority, will be identified by the full title ``United
States International Searching Authority'' or by the abbreviation ``ISA/
US.''
(c) The major functions of the International Searching Authority
include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type searches and
preparing international and international-type search reports (PCT Art.
15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing
declarations that no international search report will be established
(PCT Article 17(2)(a));
(4) Preparing written opinions of the International Searching
Authority in accordance with PCT Rule 43bis (when necessary); and
(5) Transmitting the international search report and the written
opinion of the International Searching Authority to the applicant and
the International Bureau.
[43 FR 20466, May 11, 1978, as amended at 68 FR 59886, Oct. 20, 2003]
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 Director, 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;
[[Page 123]]
(2) Forwarding Demands in accordance with PCT Rule 59.3;
(3) Collecting the handling fee for the International Bureau and the
preliminary examination fee for the United States International
Preliminary Examining Authority;
(4) Informing applicant of receipt of the Demand;
(5) Considering the matter of unity of invention;
(6) Providing an international preliminary examination report which
is a non-binding opinion on the questions of whether the claimed
invention appears: to be novel, to involve an inventive step (to be
nonobvious), and to be industrially applicable; and
(7) Transmitting the international preliminary examination report to
applicant and the International Bureau.
[52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998]
Sec. 1.417 Submission of translation of international publication.
The submission of an English language translation of the publication
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 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 ``Mail Stop
PCT.''
[68 FR 71007, Dec. 22, 2003]
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)(4), 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, for the purposes
of the designation of the United States, an international application
must be filed, and will be accepted by the Patent and Trademark Office
for the national stage only if filed, by the inventor or as provided in
Sec. Sec. 1.422 or 1.423. Joint inventors must jointly apply for an
international application.
(c) For the purposes of designations other than the United States,
international applications may be filed by the assignee or owner.
(d) A registered attorney or agent of the applicant may sign the
international application Request and file the international application
for the
[[Page 124]]
applicant. A separate power of attorney from each applicant may be
required.
(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) Requests for changes in the indications concerning the
applicant, agent, or common representative of an international
application shall be made in accordance with PCT Rule 92bis and may be
required to be signed by all applicants.
(g) Requests for withdrawals of the international application,
designations, priority claims, the Demand, or elections shall be made in
accordance with PCT Rule 90bis and must be signed by all applicants. A
separate power of attorney from the applicants will be required for the
purposes of any request for a withdrawal in accordance with PCT Rule
90bis which is not signed by all applicants. The submission of a
separate power of attorney may be excused upon the request of another
applicant where one or more inventors cannot be found or reached after
diligent effort. Such a request must be accompanied by a statement
explaining to the satisfaction of the Director the lack of the signature
concerned.
[43 FR 20466, May 11, 1978, as amended at 53 FR 47810, Nov. 28, 1988; 60
FR 21440, May 2, 1995; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4,
2003]
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.
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 prescribed (note Sec. Sec.
1.421-1.423);
(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 international filing fee (PCT Rule 15.2) and the
transmittal and search fees (Sec. 1.445) may be made in full at the
time the international application papers required by paragraph (b) of
this section are deposited or within one month thereafter. The
international filing, transmittal, and search fee payable is the
international filing, transmittal, and search fee in effect on the
receipt date of the international application.
(1) If the international filing, 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 which
imposes a late payment fee, applicant will be notified and
[[Page 125]]
given one month within which to pay the deficient fees plus the late
payment fee. Subject to paragraph (c)(2) of this section, the late
payment fee will be equal to the greater of:
(i) Fifty percent of the amount of the deficient fees; or
(ii) An amount equal to the transmittal fee;
(2) The late payment fee shall not exceed an amount equal to fifty
percent of the international filing fee not taking into account any fee
for each sheet of the international application in excess of thirty
sheets (PCT Rule 16bis).
(3) The one-month time limit set pursuant to paragraph (c) of this
section to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the
international filing fee, the search 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; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003]
Sec. 1.432 Designation of States by filing an international application.
The filing of an international application request shall constitute:
(a) The designation of all Contracting States that are bound by the
Treaty on the international filing date;
(b) An indication that the international application is, in respect
of each designated State to which PCT Article 43 or 44 applies, for the
grant of every kind of protection which is available by way of the
designation of that State; and
(c) An indication that the international application is, in respect
of each designated State to which PCT Article 45(1) applies, for the
grant of a regional patent and also, unless PCT Article 45(2) applies, a
national patent.
[68 FR 59887, Oct. 20, 2003]
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 (21.0x29.7 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 United
States Patent and Trademark Office. Letters requesting printed forms
should be marked ``Mail Stop 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) For the purposes of the designation of the United States of
America, an international application shall include:
(1) The name of the inventor; and
(2) A reference to any prior-filed national application or
international application designating the United States of America, if
the benefit of the filing date for the prior-filed application is to be
claimed.
(e) An international application may also 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; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, Mar.
25, 2003; 68 FR 59887, Oct. 20, 2003]
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.
[[Page 126]]
(b) In international applications designating the United States the
description must contain upon filing an indication of the best mode
contemplated by the inventor for carrying out the claimed invention.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]
Sec. 1.436 The claims.
The requirements as to the content and format of claims are set
forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered
to. The number of the claims shall be reasonable, considering the nature
of the invention claimed.
Sec. 1.437 The drawings.
(a) Subject to paragraph (b) of this section, when drawings are
necessary for the understanding of the invention, or are mentioned in
the description, they must be part of an international application as
originally filed in the United States Receiving Office in order to
maintain the international filing date during the national stage (PCT
Art. 7).
(b) Drawings missing from the application upon filing will be
accepted if such drawings are received within 30 days of the date of
first receipt of the incomplete papers. If the missing drawings are
received within the 30-day period, the international filing date shall
be the date on which such drawings are received. If such drawings are
not timely received, all references to drawings in the international
application shall be considered non-existent (PCT Art. 14(2),
Administrative Instruction 310).
(c) The physical requirements for drawings are set forth in PCT Rule
11 and shall be adhered to.
Sec. 1.438 The abstract.
(a) Requirements as to the content and form of the abstract are set
forth in PCT Rule 8, and shall be adhered to.
(b) Lack of an abstract upon filing of an international application
will not affect the granting of a filing date. However, failure to
furnish an abstract within one month from the date of the notification
by the Receiving Office will result in the international appplication
being declared withdrawn.
Fees
Sec. 1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications
are established by the Director under the authority of 35 U.S.C. 376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)--
$300.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) If a corresponding prior United States national application
under 35 U.S.C. 111(a) has been filed on or after December 8, 2004, the
basic filing fee under Sec. 1.16(a), search fee under Sec. 1.16(k),
and examination fee under Sec. 1.16(o) have been paid therein, and the
corresponding prior United States national application is identified by
application number, if known, or if the application number is not known
by the filing date, title, and name of applicant (and preferably the
application docket number), in the international application or
accompanying papers at the time of filing the international
application--$300.00.
(ii) If a corresponding prior United States national application
under 35 U.S.C. 111(a) has been filed before December 8, 2004, the basic
filing fee under Sec. 1.16 has been paid therein, and the corresponding
prior United States national application is identified by application
number, if known, or if the application number is not known by the
filing date, title, and name of applicant (and preferably the
application docket number), in the international application or
accompanying papers at the time of filing the international
application--$300.00.
(iii) For all situations not provided for in paragraphs (a)(2)(i) or
(a)(2)(ii) of this section--$1000.00.
(3) A supplemental search fee when required, per additional
invention--$1,000.00
(4) 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).
[[Page 127]]
(b) The international filing fee shall be as prescribed in PCT Rule
15.
[68 FR 59888, Oct. 20, 2003, as amended at 70 FR 3891, Jan. 27, 2005]
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
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 Director or the Director'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).
[[Page 128]]
(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 United States
Patent and Trademark Office or by an applicant appointed as a common
representative (PCT Art. 49, Rules 4.8 and 90 and Sec. 11.9). 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
applicant, in the Demand form, signed by applicant, 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; 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June
24, 2004]
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
[[Page 129]]
Office shall proceed under PCT Rule 26bis.2.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]
Sec. 1.468 Delays in meeting time limits.
Delays in meeting time limits during international processing of
international applications may only be excused as provided in PCT Rule
82. For delays in meeting time limits in a national application, see
Sec. 1.137.
Amendments
Sec. 1.471 Corrections and amendments during international processing.
(a) Except as otherwise provided in this paragraph, all corrections
submitted to the United States Receiving Office or United States
International Searching Authority must be in English, in the form of
replacement sheets in compliance with PCT Rules 10 and 11, and
accompanied by a letter that draws attention to the differences between
the replaced sheets and the replacement sheets. Replacement sheets are
not required for the deletion of lines of text, the correction of simple
typographical errors, and one addition or change of not more than five
words per sheet. These changes may be stated in a letter and, if
appropriate, the United States Receiving Office will make the deletion
or transfer the correction to the international application, provided
that such corrections do not adversely affect the clarity and direct
reproducibility of the application (PCT Rule 26.4). Amendments that do
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) Amendments of claims submitted to the International Bureau shall
be as prescribed by PCT Rule 46.
(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
[[Page 130]]
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]
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 Director or the Director'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
[[Page 131]]
examination. The preliminary examination fee (Sec. 1.482(a)(1)) and the
handling fee (Sec. 1.482(b)) shall be due within the applicable time
limit set forth in PCT Rule 57.3.
(b) The Demand shall be made on a standardized form (PCT Rule 53).
Copies of the printed Demand forms are available from the United States
Patent and Trademark Office. Letters requesting printed Demand forms
should be marked ``Mail Stop PCT.''
(c) 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).
(d) The filing of a Demand shall constitute the election of all
Contracting States which are designated and are bound by Chapter II of
the Treaty on the international filing date (PCT Rule 53.7).
(e) Any Demand filed after the expiration of the applicable time
limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had
not been submitted (PCT Rule 54bis.1(b)).
[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; 67 FR 523, Jan. 4,
2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888, Oct. 20, 2003]
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 payment.
(1) If the handling and preliminary examination 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, as amended at 68 FR 59888, Oct. 20, 2003]
Sec. 1.482 International preliminary examination fees.
(a) The following fees and charges for international preliminary
examination are established by the Director under the authority of 35
U.S.C. 376:
(1) The following preliminary examination fee is due on filing the
Demand:
(i) If 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--
$600.00
(ii) If the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office--$750.00
(2) An additional preliminary examination fee when required, per
additional invention--$600.00
(b) The handling fee is due on filing the Demand and shall be as
prescribed in PCT Rule 57.
[68 FR 59888, Oct. 20, 2003]
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 in accordance
with PCT Rule 69.1.
(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
[[Page 132]]
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) The written opinion established by the International Searching
Authority under PCT Rule 43bis.1 shall be considered to be a written
opinion of the United States International Preliminary Examining
Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority may establish
further written opinions under paragraph (d) of this section.
(g) If no written opinion under paragraph (d) of this section is
necessary, or if no further written opinion under paragraph (f) of this
section is to be established, 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.
(h) An applicant will be permitted a personal or telephone interview
with the examiner, which may be requested after the filing of a Demand,
and must be conducted during the period between the establishment of the
written opinion and the establishment of the international preliminary
examination report. 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 or, if not filed by applicant be made of record in the file by
the examiner.
(i) 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 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; 68 FR 59888, Oct. 20, 2003]
Sec. 1.485 Amendments by applicant during international preliminary
examination.
(a) The applicant may make amendments at the time of filing the
Demand. The applicant may also make amendments within the time limit set
by the International Preliminary Examining Authority for reply to any
notification under Sec. 1.484(b) or to any written opinion. Any such
amendments must:
(1) Be made by submitting a replacement sheet in compliance with PCT
Rules 10 and 11.1 to 11.13 for every sheet of the application which
differs from the sheet it replaces unless an entire sheet is cancelled;
and
(2) Include a description of how the replacement sheet differs from
the replaced sheet. Amendments that do not comply with PCT Rules 10 and
11.1 to 11.13 may not be entered.
(b) If an amendment cancels an entire sheet of the international
application, that amendment shall be communicated in a letter.
[58 FR 4346, Jan. 14, 1993, as amended at 63 FR 29620, June 1, 1998]
Sec. 1.488 Determination of unity of invention before the International
Preliminary Examining Authority.
(a) Before establishing any written opinion or the international
preliminary examination report, the International Preliminary Examining
Authority will determine whether the international application complies
with the requirement of unity of invention as set forth in Sec. 1.475.
(b) If the International Preliminary Examining Authority considers
that the international application does not comply with the requirement
of unity of invention, it may:
(1) Issue a written opinion and/or an international preliminary
examination
[[Page 133]]
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 Director or the Director'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 National stage commencement and entry.
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence
with the expiration of the applicable time limit under PCT Article 22
(1) or (2), or under PCT Article 39(1)(a).
(b) 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 period set in Sec. 1.495.
[67 FR 523, Jan. 4, 2002]
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 for an international application entering
the national stage under 35 U.S.C. 371 if the basic national fee was not
paid before December 8, 2004:
By a small entity (Sec. 1.27(a))--$150.00.
By other than a small entity--$300.00.
(b) Search fee for an international application entering the
national stage under 35 U.S.C. 371 if the basic national fee was not
paid before December 8, 2004:
[[Page 134]]
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority 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 of the claims presented
in the application entering the national stage:
By a small entity (Sec. 1.27(a))........................... $0.00
By other than a small entity................................. $0.00
(2) If the 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:
By a small entity (Sec. 1.27(a))........................... $50.00
By other than a small entity................................. $100.00
(3) If an international search report on the international
application has been prepared by an International Searching Authority
other than the United States International Searching Authority and is
provided, or has been previously communicated by the International
Bureau, to the Office:
By a small entity (Sec. 1.27(a))........................... $200.00
By other than a small entity................................. $400.00
(4) In all situations not provided for in paragraphs (b)(1), (b)(2),
or (b)(3) of this section:
By a small entity (Sec. 1.27(a))........................... $250.00
By other than a small entity................................. $500.00
(c) The examination fee for an international application entering
the national stage under 35 U.S.C. 371 if the basic national fee was not
paid before December 8, 2004:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority 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 of the claims presented
in the application entering the national stage:
By a small entity (Sec. 1.27(a))........................... $0.00
By other than a small entity................................. $0.00
(2) In all situations not provided for in paragraph (c)(1) of this
section:
By a small entity (Sec. 1.27(a))........................... $100.00
By other than a small entity................................. $200.00
(d) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim in independent form in
excess of 3:
By a small entity (Sec. 1.27(a))--$100.00.
By other than a small entity--$200.00.
(e) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim (whether dependent or
independent) 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))--$25.00.
By other than a small entity--$50.00.
(f) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim, per
application:
By a small entity (Sec. 1.27(a))--$180.00.
By other than a small entity--$360.00.
(g) If the excess claims fees required by paragraphs (d) and (e) of
this section and multiple dependent claim fee required by paragraph (f)
of this section are not paid with the basic national fee or on later
presentation of the claims for which the excess claims or multiple
dependent claim fees are due, the fees required by paragraphs (d), (e),
and (f) of this section must be paid or the claims canceled by amendment
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
(h) Surcharge for filing any of the search fee, the examination fee,
or the oath or declaration after the date of the commencement of the
national stage (Sec. 1.491(a)) pursuant to Sec. 1.495(c):
By a small entity (Sec. 1.27(a))--$65.00
By other than a small entity--$130.00
(i) For filing an English translation of an international
application or of any annexes to an international preliminary
examination report later than
[[Page 135]]
thirty months after the priority date (Sec. Sec. 1.495(c) and (e))--
$130.00.
(j) Application size fee for any international application for which
the basic national fee was not paid before December 8, 2004, the
specification and drawings of which exceed 100 sheets of paper, for each
additional 50 sheets or fraction thereof (see Sec. 1.52(f) for
applications submitted in whole or in part on an electronic medium):
By a small entity (Sec. 1.27(a))--$125.00
By other than a small entity--$250.00
[70 FR 3892, Jan. 27, 2005, as amended at 70 FR 5054, Feb. 1, 2005; 70
FR 30365, May 26, 2005; 70 FR 35378, June 20, 2005]
Sec. 1.495 Entering the national stage in the United States of America.
(a) The applicant in an international application must fulfill the
requirements of 35 U.S.C. 371 within the time periods set forth in
paragraphs (b) and (c) of this section in order to prevent the
abandonment of the international application as to the United States of
America. The thirty-month time period set forth in paragraphs (b), (c),
(d), (e) and (h) of this section may not be extended. 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 thirty 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)).
(c)(1) If applicant complies with paragraph (b) of this section
before expiration of thirty months from the priority date, the Office
will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into
the English language, if it was originally filed in another language and
if any English language translation of the publication of the
international application previously submitted under 35 U.S.C. 154(d)
(Sec. 1.417) is not also a translation of the international application
as filed (35 U.S.C. 371(c)(2));
(ii) The oath or declaration of the inventor (35 U.S.C. 371(c)(4)
and Sec. 1.497), if 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;
(iii) The search fee set forth in Sec. 1.492(b);
(iv) The examination fee set forth in Sec. 1.492(c); and
(v) Any application size fee required by Sec. 1.492(j).
(2) A notice under paragraph (c)(1) of this section will set a
period of time within which applicant must provide any omitted
translation, oath or declaration of the inventor, search fee set forth
in Sec. 1.492(b), examination fee set forth in Sec. 1.492(c), and any
application size fee required by Sec. 1.492(j) in order to avoid
abandonment of the application.
(3) The payment of the processing fee set forth in Sec. 1.492(i) is
required for acceptance of an English translation later than the
expiration of thirty months after the priority date. The payment of the
surcharge set forth in Sec. 1.492(h) is required for acceptance of any
of the search fee, the examination fee, or the oath or declaration of
the inventor after the date of the commencement of the national stage
(Sec. 1.491(a)).
(4) 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 thirty months from the priority date. Amendments under PCT
Article 19 which are not received by the expiration of thirty months
from the priority date will be considered to be canceled.
[[Page 136]]
(e) A translation into English of any annexes to an international
preliminary examination report (if applicable), if the annexes were made
in another language, must be furnished not later than the expiration of
thirty months from the priority date. Translations of the annexes which
are not received by the expiration of thirty 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 canceled.
(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 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 thirty months from the priority date if the requirements of
paragraph (b) of this section have not been complied with within thirty
months from the priority date. If the requirements of paragraph (b) of
this section are complied with within thirty months from the priority
date but either of any required translation of the international
application as filed 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; 67 FR 523, Jan. 4,
2002; 68 FR 71007, Dec. 22, 2003; 70 FR 3892, Jan. 27, 2005; 70 FR
30365, May 26, 2005]
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) National stage applications having paid therein the search fee
as set forth in Sec. 1.492(b)(1) and the examination fee as set forth
in Sec. 1.492(c)(1) 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 will be advanced out of turn for examination.
[52 FR 20051, May 28, 1987, as amended at 70 FR 5055, Feb. 1, 2005; 70
FR 35378, June 20, 2005]
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 Sec. 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 Sec. Sec. 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 Sec. Sec. 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 (Sec. Sec. 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
[[Page 137]]
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 Sec. 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 if a change to the
inventive entity has been effected under PCT Rule 92bis subsequent to
the execution of any oath or declaration which was filed in the
application under PCT Rule 4.17(iv) or this section and the inventive
entity thus changed is different from the inventive entity identified in
any such oath or declaration, applicant must submit:
(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);
(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); and
(4) Any new oath or declaration required by paragraph (f) of this
section.
(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 and no declaration which sets
forth and is executed by the inventive entity as so changed has been
filed in the application.
(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; 67 FR 524, Jan.
4, 2002; 67 FR 6075, Feb. 8, 2002]
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 Sec. Sec. 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
[[Page 138]]
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
Sec. Sec. 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 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 concluded by the issuance and publication of a reexamination
certificate. 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.
[72 FR 18905, Apr. 16, 2007]
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 ex parte
reexamination required by paragraph (a) of this section and meet all the
requirements by paragraph (b) of this section, then
[[Page 139]]
the person identified as requesting reexamination will be so notified
and will generally be given an opportunity to complete the request
within a specified time. Failure to comply with the notice will result
in the ex parte reexamination request not being granted a filing date,
and will result in placement of the request in the patent file as a
citation if it complies with the requirements of Sec. 1.501.
(d) The filing date of the request for ex parte reexamination is the
date on which the request satisfies all the requirements of this
section.
(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.
(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; 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006; 72 FR
18905, Apr. 16, 2007]
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 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 Director
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]