[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 2008 Edition]
[From the U.S. Government Printing Office]



[[Page i]]

          

          37

                         Revised as of July 1, 2008


          Patents, Trademarks, and Copyrights
          



________________________

          Containing a codification of documents of general 
          applicability and future effect

          As of July 1, 2008
          With Ancillaries
                    Published by
                    Office of the Federal Register
                    National Archives and Records
                    Administration
                    A Special Edition of the Federal Register

[[Page ii]]

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                            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        461
          Chapter III--Copyright Royalty Board, Library of 
          Congress                                                 695
          Chapter IV--Assistant Secretary for Technology 
          Policy, Department of Commerce                           761
          Chapter V--Under Secretary for Technology, 
          Department of Commerce                                   785
  Finding Aids:
      Material Approved for Incorporation by Reference........     793
      Table of CFR Titles and Chapters........................     795
      Alphabetical List of Agencies Appearing in the CFR......     815
      List of CFR Sections Affected...........................     825

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

                     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, 2008), consult the ``List of CFR 
Sections Affected (LSA),'' which is issued monthly, and the ``Cumulative 
List of Parts Affected,'' which appears in the Reader Aids section of 
the daily Federal Register. These two lists will identify the Federal 
Register page number of the latest amendment of any given rule.

EFFECTIVE AND EXPIRATION DATES

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

OMB CONTROL NUMBERS

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

[[Page vi]]

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

OBSOLETE PROVISIONS

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

INCORPORATION BY REFERENCE

    What is incorporation by reference? Incorporation by reference was 
established by statute and allows Federal agencies to meet the 
requirement to publish regulations in the Federal Register by referring 
to materials already published elsewhere. For an incorporation to be 
valid, the Director of the Federal Register must approve it. The legal 
effect of incorporation by reference is that the material is treated as 
if it were published in full in the Federal Register (5 U.S.C. 552(a)). 
This material, like any other properly issued regulation, has the force 
of law.
    What is a proper incorporation by reference? The Director of the 
Federal Register will approve an incorporation by reference only when 
the requirements of 1 CFR part 51 are met. Some of the elements on which 
approval is based are:
    (a) The incorporation will substantially reduce the volume of 
material published in the Federal Register.
    (b) The matter incorporated is in fact available to the extent 
necessary to afford fairness and uniformity in the administrative 
process.
    (c) The incorporating document is drafted and submitted for 
publication in accordance with 1 CFR part 51.
    Properly approved incorporations by reference in this volume are 
listed in the Finding Aids at the end of this volume.
    What if the material incorporated by reference cannot be found? If 
you have any problem locating or obtaining a copy of material listed in 
the Finding Aids of this volume as an approved incorporation by 
reference, please contact the agency that issued the regulation 
containing that incorporation. If, after contacting the agency, you find 
the material is not available, please notify the Director of the Federal 
Register, National Archives and Records Administration, Washington DC 
20408, or call 202-741-6010.

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 material appearing 
in the Code of Federal Regulations.

INQUIRIES

    For a legal interpretation or explanation of any regulation in this 
volume, contact the issuing agency. The issuing agency's name appears at 
the top of odd-numbered pages.
    For inquiries concerning CFR reference assistance, call 202-741-6000 
or write to the Director, Office of the Federal Register, National 
Archives and Records Administration, Washington, DC 20408 or e-mail 
fedreg.info@nara.gov.

SALES

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ELECTRONIC SERVICES

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CFR Sections Affected), The United States Government Manual, the Federal 
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    The Office of the Federal Register also offers a free service on the 
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site for public law numbers, Federal Register finding aids, and related 
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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, 2008.







[[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, 2008.

    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.

    Indexes appear after parts 5,7 and 41, within chapter I. An index to 
Chapter II appears at the end of the chapter.

    For this volume, Susannah C. Hurley and Moja N. Mwaniki were Chief 
Editors. The Code of Federal Regulations publication program is under 
the direction of Michael L. White, assisted by Ann Worley.


[[Page 1]]



              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS




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

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

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

chapter 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




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


  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         197
4               Complaints regarding invention promoters....         204
5               Secrecy of certain inventions and licenses 
                    to export and file applications in 
                    foreign countries.......................         205
                Index I--Rules relating to patents..........         215

                               TRADEMARKS

2               Rules of practice in trademark cases........         237
6               Classification of goods and services under 
                    the Trademark Act.......................         308
7               Rules of practice in filings pursuant to the 
                    protocol relating to the Madrid 
                    agreement concerning the international 
                    registration of marks...................         311
                Index II--Rules relating to trademarks......         323

             PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

10              Representation of others before the Patent 
                    and Trademark Office....................         344
11              Representation of others before the United 
                    States Patent and Trademark Office......         370
15-15a

[Reserved]

41              Practice before the Board of Patent Appeals 
                    and Interferences.......................         383

[[Page 4]]

                Index III--Rules relating to practice before 
                    the Patent and Trademark Office.........         423
                      SUBCHAPTER B--ADMINISTRATION
100-101

[Reserved]

102             Disclosure of government information........         429
104             Legal processes.............................         453
             SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150             Requests for Presidential proclamations 
                    pursuant to 17 U.S.C. 902(a)(2).........         458

[[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 Refund due to cancellation of claim.
1.118-1.119 [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.

[[Page 7]]

1.163 Specification and arrangement of application elements in a plant 
          application.
1.164 Claim.
1.165 Plant drawings.
1.166 Specimens.
1.167 Examination.

                                Reissues

1.171 Application for reissue.
1.172 Applicants, assignees.
1.173 Reissue specification, drawings, and amendments.
1.174 [Reserved]
1.175 Reissue oath or declaration.
1.176 Examination of reissue.
1.177 Issuance of multiple reissue patents.
1.178 Original patent; continuing duty of applicant.
1.179 [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.
1.265 Examination support document.

                   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.
1.452 Restoration of right of priority.

                             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 of ex parte reexamination certificate after ex parte 
          reexamination proceedings.

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          $75.00
 submitted in compliance with the Office electronic filing
 system (Sec.  1.27(b)(2))..................................
By a small entity (Sec.  1.27(a))...........................    $155.00
By other than a small entity.................................    $310.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.  1.27(a))...........................    $405.00
By other than a small entity.................................    $810.00
 


[[Page 27]]

    (b) Basic fee for filing each application for an original design 
patent:
    (1) For an application filed on or after December 8, 2004:

By a small entity (Sec.  1.27(a))...........................    $105.00
By other than a small entity.................................    $210.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.  1.27(a))...........................    $180.00
By other than a small entity.................................    $360.00
 

    (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))...........................    $105.00
By other than a small entity.................................    $210.00
 

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.  1.27(a))...........................    $285.00
By other than a small entity.................................    $570.00
 

    (d) Basic fee for filing each provisional application:

By a small entity (Sec.  1.27(a))...........................    $105.00
By other than a small entity.................................    $210.00
 

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

    (2) For an application filed before December 8, 2004:

By a small entity (Sec.  1.27(a))...........................    $405.00
By other than a small entity.................................    $810.00
 

    (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))...........................    $105.00
By other than a small entity.................................    $210.00
 

    (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))...........................    $185.00
By other than a small entity.................................    $370.00
 

    (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))...........................    $255.00
By other than a small entity.................................    $510.00
 

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

    (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))...........................    $255.00
By other than a small entity.................................    $510.00
 

    (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))...........................    $105.00
By other than a small entity.................................    $210.00
 

    (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

[[Page 28]]

 
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))...........................    $310.00
By other than a small entity.................................    $620.00
 

    (s) Application size fee for any application under 35 U.S.C. 111 
filed on or 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))...........................    $130.00
By other than a small entity.................................    $260.00
 


    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; 72 
FR 46901, Aug. 22, 2007]



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))...........................    $230.00
By other than a small entity.................................    $460.00
 

    (3) For reply within third month:

By a small entity (Sec.  1.27(a)).........................      $525.00
By other than a small entity...............................    $1,050.00
 

    (4) For reply within fourth month:

By a small entity (Sec.  1.27(a)).........................      $820.00
By other than a small entity...............................    $1,640.00
 

    (5) For reply within fifth month:

By a small entity (Sec.  1.27(a)).........................    $1,115.00
By other than a small entity...............................    $2,230.00
 

    (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))...........................    $405.00
By other than a small entity.................................    $810.00
 

    (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. 1.78(d)(1)(vi)--for a continuing application not provided for 
in Sec. Sec. 1.78(d)(1)(i) through (d)(1)(v).
    Sec. 1.114(g)--for a request for continued examination not provided 
for in Sec. 1.114(f).
    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.

[[Page 29]]

    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.
    (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 reexamination proceeding under 
35 U.S.C. 133 (Sec. 1.137(a)):

By a small entity (Sec.  1.27(a))...........................    $255.00
By other than a small entity.................................    $510.00
 

    (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 reexamination proceeding under 35 U.S.C. 41(a)(7) (Sec. 
1.137(b)):

By a small entity (Sec.  1.27(a)).........................      $770.00
By other than a small entity...............................    $1,540.00
 

    (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.

[[Page 30]]

    (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))...........................    $405.00
By other than a small entity.................................    $810.00
 

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

By a small entity (Sec.  1.27(a))...........................    $405.00
By other than a small entity.................................    $810.00
 

    (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) or for filing a request for the restoration of the right 
of priority under Sec. 1.452--1,410.00.

[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)).........................      $720.00
By other than a small entity...............................    $1,440.00
 

    (b) Issue fee for issuing an original design patent:

By a small entity (Sec.  1.27(a))...........................    $410.00
By other than a small entity.................................    $820.00
 

    (c) Issue fee for issuing an original plant patent:

By a small entity (Sec.  1.27(a)).........................      $565.00
By other than a small entity...............................    $1,130.00
 

    (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; 72 
FR 46902, Aug. 22, 2007]



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

[[Page 31]]

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 
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))...........................    $105.00
By other than a small entity.................................    $210.00
 


[[Page 32]]

    (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.
    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))...........................    $465.00
By other than a small entity.................................    $930.00
 

    (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)).........................    $1,180.00
By other than a small entity...............................    $2,360.00
 

    (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)).........................    $1,955.00
By other than a small entity...............................    $3,910.00
 

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

By a small entity (Sec.  1.27(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; 72 FR 46902, Aug. 22, 2007]



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

[[Page 33]]

    (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 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]

[[Page 34]]



Sec. 1.23  Methods of payment.

    (a) All payments of money required for United States Patent and 
Trademark Office fees, including fees for the processing of 
international applications (Sec. 1.445), shall be made in U.S. dollars 
and in the form of a cashier's or certified check, Treasury note, 
national bank notes, or United States Postal Service money order. If 
sent in any other form, the Office may delay or cancel the credit until 
collection is made. Checks and money orders must be made payable to the 
Director of the United States Patent and Trademark Office. (Checks made 
payable to the Commissioner of Patents and Trademarks will continue to 
be accepted.) Payments from foreign countries must be payable and 
immediately negotiable in the United States for the full amount of the 
fee required. Money sent to the Office by mail will be at the risk of 
the sender, and letters containing money should be registered with the 
United States Postal Service.
    (b) Payments of money required for United States Patent and 
Trademark Office fees may also be made by credit card, 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

[[Page 35]]

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;
    (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. Except as provided in Sec. 1.117 or Sec. 1.138(d), 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), Sec. 1.117(b), or Sec. 1.138(d). 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

[[Page 36]]

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; 72 FR 46836, Aug. 21, 
2007]



Sec. 1.27  Definition of small entities and establishing status as a small 

entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement 
          to small entity status are required; fraud on the Office.

    (a) Definition of small entities. A small entity as used in this 
chapter means any party (person, small business concern, or nonprofit 
organization) under paragraphs (a)(1) through (a)(3) of this section.
    (1) Person. A person, as used in paragraph (c) of this section, 
means any inventor or other individual (e.g., an individual to whom an 
inventor has transferred some rights in the invention) who has not 
assigned, granted, conveyed, or licensed, and is under no obligation 
under contract or law to assign, grant, convey, or license, any rights 
in the invention. An inventor or other individual who has transferred 
some rights 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

[[Page 37]]

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 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

[[Page 38]]

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

[[Page 39]]

month time period is not extendable under Sec. 1.136. Status as a small 
entity is waived for any fee by the failure to establish the status 
prior to paying, at the time of paying, or within three months of the 
date of payment of, the full fee.
    (b) Date of payment. (1) The three-month period for requesting a 
refund, pursuant to paragraph (a) of this section, starts on the date 
that a full fee has been paid;
    (2) The date when a deficiency payment is paid in full determines 
the amount of deficiency that is due, pursuant to paragraph (c) of this 
section.
    (c) How errors in small entity status are excused. If status as a 
small entity is established in good faith, and fees as a small entity 
are paid in good faith, in any application or patent, and it is later 
discovered that such status as a small entity was established in error, 
or that through error the Office was not notified of a loss of 
entitlement to small entity status as required by Sec. 1.27(g)(2), the 
error will be excused upon: compliance with the separate submission and 
itemization requirements of paragraphs (c)(1) and (c)(2) of this 
section, and the deficiency payment requirement of paragraph (c)(2) of 
this section:
    (1) Separate submission required for each application or patent. Any 
paper submitted under this paragraph must be limited to the deficiency 
payment (all fees paid in error), required by paragraph (c)(2) of this 
section, for one application or one patent. Where more than one 
application or patent is involved, separate submissions of deficiency 
payments (e.g., checks) and itemizations are required for each 
application or patent. See Sec. 1.4(b).
    (2) Payment of deficiency owed. The deficiency owed, resulting from 
the previous erroneous payment of small entity fees, must be paid.
    (i) Calculation of the deficiency owed. The deficiency owed for each 
previous fee erroneously paid as a small entity is the difference 
between the current fee amount (for other than a small entity) on the 
date the deficiency is paid in full and the amount of the previous 
erroneous (small entity) fee payment. The total deficiency payment owed 
is the sum of the individual deficiency owed amounts for each fee amount 
previously erroneously paid as a small entity. Where a fee paid in error 
as a small entity was subject to a fee decrease between the time the fee 
was paid in error and the time the deficiency is paid in full, the 
deficiency owed is equal to the amount (previously) paid in error;
    (ii) Itemization of the deficiency payment. An itemization of the 
total deficiency payment is required. The itemization must include the 
following information:
    (A) Each particular type of fee that was erroneously paid as a small 
entity, (e.g., basic statutory filing fee, two-month extension of time 
fee) along with the current fee amount for a non-small entity;
    (B) The small entity fee actually paid, and when. This will permit 
the Office to differentiate, for example, between two one-month 
extension of time 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]

[[Page 40]]



                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 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

[[Page 41]]

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 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

[[Page 42]]

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 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),

[[Page 43]]

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 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

[[Page 44]]

matter disclosed in the provisional application and the provisional 
application will be considered to be a joint application under 35 U.S.C. 
116.

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

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



Sec. 1.46  Assigned inventions and patents.

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

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

[57 FR 29642, July 6, 1992]



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

    (a) If a joint inventor refuses to join in an application for patent 
or cannot be found or reached after diligent effort, the application may 
be made by the other inventor on behalf of himself or herself and the 
nonsigning inventor. The oath or declaration in such an application must 
be accompanied by a petition including proof of the pertinent facts, the 
fee set forth in Sec. 1.17(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).

[[Page 45]]

    (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:
    (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

[[Page 46]]

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 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;

[[Page 47]]

    (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 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

[[Page 48]]

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 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 and the benefit of such provisional 
application is claimed in a nonprovisional application, an English 
language translation of the non-English language provisional application 
will be required in the provisional application. See Sec. 1.78(b).
    (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

[[Page 49]]

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 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

[[Page 50]]

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; 72 FR 46836, Aug. 21, 2007]



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

    (a) Application number. Any papers received in the Patent and 
Trademark Office which purport to be an application for a patent will be 
assigned an application number for identification purposes.
    (b) Application filing requirements--Nonprovisional application. The 
filing date of an application for patent filed under this section, 
except for a provisional application under paragraph (c) of this section 
or a continued prosecution application under paragraph (d) of this 
section, is the date on which a specification as prescribed by 35 U.S.C. 
112 containing a description pursuant to Sec. 1.71 and at least one 
claim pursuant to Sec. 1.75, and any drawing required by Sec. 1.81(a) 
are filed in the Patent and Trademark Office. No new matter may be 
introduced into an application after its filing date. A continuing 
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under this section if the conditions 
specified in 35 U.S.C. 120, 121, or 365(c) and Sec. 1.78 are met.
    (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 paragraph (b) or (d) of this section. A 
continuation or divisional application naming an inventor not named in 
the prior application must be filed under paragraph (b) of this section. 
See Sec. 1.78(a)(2) for the definition of a divisional application and 
Sec. 1.78(a)(3) for the definition of a continuation application.
    (2) A continuation-in-part application must be filed under paragraph 
(b) of this section. See Sec. 1.78(a)(4) for the definition of a 
continuation-in-part application.
    (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

[[Page 51]]

    (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 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 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;

[[Page 52]]

    (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 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.

[[Page 53]]

    (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 (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

[[Page 54]]

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).
    (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; 72 FR 46836, 
Aug. 21, 2007]



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

[[Page 55]]

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 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

[[Page 56]]

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 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

[[Page 57]]

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 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 under this section 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. Any omitted portion of the international 
application which applicant desires to be effective as to all designated 
States, subject to PCT Rule 20.8(b), must be submitted in accordance 
with PCT Rule 20.
    (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

[[Page 58]]

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 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, as amended at 72 FR 51563, Sept. 10, 2007]



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

[[Page 59]]

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 
(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:

[[Page 60]]

    (i) The prior nonprovisional application contained an oath or 
declaration as prescribed by paragraphs (a) through (c) of this section;
    (ii) The continuation or divisional application was filed by all or 
by fewer than all of the inventors named in the prior application;
    (iii) The specification and drawings filed in the continuation or 
divisional application contain no matter that would have been new matter 
in the prior application; and
    (iv) A copy of the executed oath or declaration filed in the prior 
application, showing the signature or an indication thereon that it was 
signed, is submitted for the continuation or divisional application.
    (2) The copy of the executed oath or declaration submitted under 
this paragraph for a continuation or divisional application must be 
accompanied by a statement requesting the deletion of the name or names 
of the person or persons who are not inventors in the continuation or 
divisional application.
    (3) Where the executed oath or declaration of which a copy is 
submitted for a continuation or divisional application was originally 
filed in a prior application accorded status under Sec. 1.47, the copy 
of the executed oath or declaration for such prior application must be 
accompanied by:
    (i) A copy of the decision granting a petition to accord Sec. 1.47 
status to the prior application, unless all inventors or legal 
representatives have filed an oath or declaration to join in an 
application accorded status under Sec. 1.47 of which the continuation 
or divisional application claims a benefit under 35 U.S.C. 120, 121, or 
365(c); and
    (ii) If one or more inventor(s) or legal representative(s) who 
refused to join in the prior application or could not be found or 
reached has subsequently joined in the prior application or another 
application of which the continuation or divisional application claims a 
benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently 
executed oath(s) or declaration(s) filed by the inventor or legal 
representative to join in the application.
    (4) Where the power of attorney or 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

[[Page 61]]

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

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

[47 FR 41275, Sept. 17, 1982]



Sec. 1.67  Supplemental oath or declaration.

    (a) 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]

[[Page 62]]



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 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.

[[Page 63]]

    (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 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

[[Page 64]]

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. One or more 
claims may be presented in dependent form, referring back to and further 
limiting another claim or claims in the same application. A dependent 
claim must contain a reference to a claim previously set forth in the 
same application, incorporate by reference all the limitations of the 
previous claim to which such dependent claim refers, and specify a 
further limitation of the subject matter of the previous claim.
    (1) An applicant must file an examination support document in 
compliance with Sec. 1.265 that covers each claim (whether in 
independent or dependent form) before the issuance of a first Office 
action on the merits of the application if the application contains or 
is amended to contain more than five independent claims or more than 
twenty-five total claims. An application may not contain or be amended 
to contain more than five independent claims or more than twenty-five 
total claims if an examination support document in compliance with Sec. 
1.265 has not been filed before the issuance of a first Office action on 
the merits of the application.
    (2) A claim that refers to another claim but does not incorporate by 
reference all of the limitations of the claim to which such claim refers 
will be treated as an independent claim for fee calculation purposes 
under Sec. 1.16 (or Sec. 1.492) and for purposes of paragraph (b) of 
this section. A claim that refers to a claim of a different statutory 
class of invention will also be treated as an independent claim for fee 
calculation purposes under Sec. 1.16 (or Sec. 1.492) and for purposes 
of paragraph (b) of this section.
    (3) The applicant will be notified if the application contains or is 
amended to contain more than five independent claims or more than 
twenty-five total claims but the applicant has not complied with the 
requirements set forth in paragraph (b)(1) or (b)(4) of this section. If 
the non-compliance appears to have been inadvertent, the notice will set 
a two-month time period that is not extendable under Sec. 1.136(a) 
within which, to avoid abandonment of the application, the applicant 
must comply with the requirements set forth in paragraph (b) of this 
section.
    (4) If a nonprovisional application contains at least one claim that 
is patentably indistinct from at least one claim in one or more other 
pending nonprovisional applications, and if such one or more other 
nonprovisional applications and the first nonprovisional application are 
owned by the same person, or are subject to an obligation of assignment 
to the same person, the Office will treat the claims (whether in 
independent or dependent form) in the first nonprovisional application 
and in each of such other pending nonprovisional applications as present 
in each of the nonprovisional applications for purposes of paragraph (b) 
of this section.
    (5) Claims withdrawn from consideration under Sec. Sec. 1.141 
through 1.146 or Sec. 1.499 as drawn to a non-elected invention or 
inventions will not, unless they are reinstated or rejoined, be taken 
into account in determining whether an application exceeds the five 
independent claim and twenty-five total claim threshold set forth in 
paragraphs (b)(1), (b)(3), and (b)(4) of this section.
    (c) 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 (or Sec. 1.492) and for purposes of paragraph (b) of 
this section, a multiple dependent claim will be considered to be that 
number of claims to which direct reference is made therein. For fee 
calculation purposes under Sec. 1.16 (or Sec. 1.492) and for purposes 
of paragraph (b) of this section, any claim depending from a multiple 
dependent claim will be considered to

[[Page 65]]

be that number of claims to which direct reference is made in that 
multiple dependent claim. In addition to the other filing fees, any 
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). A multiple dependent claim shall be construed to incorporate by 
reference all the limitations of each of the particular claims in 
relation to which it is being considered.
    (d)(1) The claim or claims must conform to the invention as set 
forth in the remainder of the specification and the terms and phrases 
used in the claims must find clear support or antecedent basis in the 
description so that the meaning of the terms in the claims may be 
ascertainable by reference to the description. (See Sec. 1.58(a).)
    (2) See 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; 72 FR 46836, Aug. 21, 2007]



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

[[Page 66]]

nonprovisional application), any docket number assigned to the 
application, the type of application (e.g., utility, plant, design, 
reissue, provisional), whether the application discloses any significant 
part of the subject matter of an application under a secrecy order 
pursuant to Sec. 5.2 of this chapter (see Sec. 5.2(c)), and, for plant 
applications, the Latin name of the genus and species of the plant 
claimed, as well as the variety denomination. The suggested 
classification and Technology Center information should be supplied for 
provisional applications whether or not claims are present. If claims 
are not present in a provisional application, the suggested 
classification and Technology Center should be based upon the 
disclosure.
    (4) Representative information. This information includes the 
registration number of each practitioner having a power of attorney 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, and relationship of each 
application for which a benefit is claimed under 35 U.S.C. 120, 121, or 
365(c). This information includes the application number and the filing 
date of each application for which a benefit is claimed under 35 U.S.C. 
119(e). Providing this information in the application data sheet also 
constitutes the specific reference required by 35 U.S.C. 119(e) or 120, 
and Sec. 1.78(b)(3) or Sec. 1.78(d)(3), 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

[[Page 67]]

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;; 72 FR 46837, 
Aug. 21, 2007]



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) Definitions--(1) Continuing application. A continuing 
application is a nonprovisional application or an international 
application designating the United States of America that claims the 
benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed 
nonprovisional application or international application designating the 
United States of America. An application that does not claim the benefit 
under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application is not 
a continuing application even if the application claims the benefit 
under 35 U.S.C. 119(e) of a provisional application, claims priority 
under 35 U.S.C. 119(a)-(d) or 365(b) to a foreign application, or claims 
priority under 35 U.S.C. 365(a) or (b) to an international application 
designating at least one country other than the United States of 
America.
    (2) Divisional application. A divisional application is a continuing 
application as defined in paragraph (a)(1) of this section that 
discloses and claims only an invention or inventions that were disclosed 
and claimed in a prior-filed application, but were subject to a 
requirement to comply with the requirement of unity of invention under 
PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the 
prior-filed application, and were not elected for examination and were 
not examined in any prior-filed application.
    (3) Continuation application. A continuation application is a 
continuing application as defined in paragraph

[[Page 68]]

(a)(1) of this section that discloses and claims only an invention or 
inventions that were disclosed in the prior-filed application.
    (4) Continuation-in-part application. A continuation-in-part 
application is a continuing application as defined in paragraph (a)(1) 
of this section that discloses subject matter that was not disclosed in 
the prior-filed application.
    (b) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application. A nonprovisional application, other than for a 
design patent, or an international application designating the United 
States of America may claim the benefit of one or more prior-filed 
provisional applications under the conditions set forth in 35 U.S.C. 
119(e) and paragraph (b) of this section.
    (1) The nonprovisional application or international application 
designating the United States of America must be filed not later than 
twelve months after the date on which the provisional application was 
filed. This twelve-month period is subject to 35 U.S.C. 21(b) and Sec. 
1.7(a).
    (2) Each prior-filed provisional application must name as an 
inventor at least one inventor named in the later-filed application. 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 have been paid for such provisional 
application within the time period set forth in Sec. 1.53(g).
    (3) Any nonprovisional application or international application 
designating the United States of America that claims 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). 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.
    (4) The reference required by paragraph (b)(3) of this section 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. Except as provided in paragraph (c) 
of this section, failure to timely submit the reference is considered a 
waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed 
provisional application. The time periods in this paragraph do not apply 
if the later-filed application is:
    (i) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (ii) An international application filed under 35 U.S.C. 363 before 
November 29, 2000.
    (5) 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 the translation and the statement in the 
prior-filed provisional application. 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.

[[Page 69]]

    (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a 
prior-filed provisional application. If the reference required by 35 
U.S.C. 119(e) and paragraph (b)(3) of this section is presented in a 
nonprovisional application after the time period provided by paragraph 
(b)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit 
of a prior-filed provisional application may be accepted if submitted 
during the pendency of the later-filed application and 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:
    (1) The reference required by 35 U.S.C. 119(e) and paragraph (b)(3) 
of this section to the prior-filed provisional 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 (b)(4) 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) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a 
prior-filed nonprovisional or international application. A 
nonprovisional application (including an international application that 
has entered the national stage after compliance with 35 U.S.C. 371) may 
claim the benefit of one or more prior-filed copending nonprovisional 
applications or international applications designating the United States 
of America under the conditions set forth in 35 U.S.C. 120 and paragraph 
(d) of this section.
    (1) A nonprovisional application that claims the benefit of one or 
more prior-filed copending nonprovisional applications or international 
applications designating the United States of America must satisfy the 
conditions set forth in at least one of paragraphs (d)(1)(i) through 
(d)(1)(vi) of this section. The Office will refuse to enter, or will 
delete if present, any specific reference to a prior-filed application 
that is not permitted by at least one of paragraphs (d)(1)(i) through 
(d)(1)(vi) of this section. The Office's entry of, or failure to delete, 
a specific reference to a prior-filed application that is not permitted 
by at least one of paragraphs (d)(1)(i) through (d)(1)(vi) of this 
section does not constitute a waiver of the provisions of paragraph 
(d)(1) of this section.
    (i)(A) The nonprovisional application is either a continuation 
application as defined in paragraph (a)(3) of this section or a 
continuation-in-part application as defined in paragraph (a)(4) of this 
section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of 
no more than two prior-filed applications; and
    (B) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such nonprovisional application has its benefit 
claimed in no more than one other nonprovisional application, not 
including any nonprovisional application that satisfies the conditions 
set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this 
section.
    (ii)(A) The nonprovisional application is a divisional application 
as defined in paragraph (a)(2) of this section that claims the benefit 
under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application that 
was subject to a requirement to comply with the requirement of unity of 
invention under PCT Rule 13 or a requirement for restriction under 35 
U.S.C. 121; and
    (B) The divisional application contains only claims directed to an 
invention or inventions that were identified in such requirement to 
comply with the requirement of unity of invention or requirement for 
restriction but were not elected for examination and were not examined 
in the prior-filed application or in any other nonprovisional 
application, except for a nonprovisional application that claims the 
benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional 
application and satisfies the conditions set forth in paragraph 
(d)(1)(iii) or (d)(1)(vi) of this section.
    (iii)(A) The nonprovisional application is a continuation 
application as defined in paragraph (a)(3) of this section that claims 
the benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional

[[Page 70]]

application that satisfies the conditions set forth in paragraph 
(d)(1)(ii) of this section;
    (B) The nonprovisional application discloses and claims only an 
invention or inventions that were disclosed and claimed in such 
divisional application;
    (C) The nonprovisional application claims the benefit under 35 
U.S.C. 120, 121, or 365(c) of only the divisional application, any 
application to which such divisional application claims benefit under 35 
U.S.C. 120, 121, or 365(c) in compliance with the conditions set forth 
in paragraph (d)(1)(ii) of this section, and no more than one 
intervening prior-filed nonprovisional application; and
    (D) The divisional application whose benefit is claimed under 35 
U.S.C. 120, 121, or 365(c) in such nonprovisional application has its 
benefit claimed in no more than one other nonprovisional application, 
not including any other divisional application that satisfies the 
conditions set forth in paragraph (d)(1)(ii) or any nonprovisional 
application that claims the benefit under 35 U.S.C. 120 or 365(c) of 
such other divisional application and satisfies the conditions set forth 
in paragraph (d)(1)(iii) or (d)(1)(vi) of this section.
    (iv)(A) The nonprovisional application claims benefit under 35 
U.S.C. 120 or 365(c) of a prior-filed international application 
designating the United States of America, and a Demand has not been 
filed and the basic national fee (Sec. 1.492(a)) has not been paid in 
the prior-filed international application and the prior-filed 
international application does not claim the benefit of any other 
nonprovisional application or international application designating the 
United States of America;
    (B) The nonprovisional application is either a continuation 
application as defined in paragraph (a)(3) of this section or a 
continuation-in-part application as defined in paragraph (a)(4) of this 
section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of 
no more than three prior-filed applications; and
    (C) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such nonprovisional application has its benefit 
claimed in no more than two other nonprovisional applications, not 
including any nonprovisional application that satisfies the conditions 
set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this 
section.
    (v)(A) The nonprovisional application claims benefit under 35 U.S.C. 
120 or 365(c) of a prior-filed nonprovisional application filed under 35 
U.S.C. 111(a), and such nonprovisional application became abandoned due 
to the failure to timely reply to an Office notice issued under Sec. 
1.53(f) and does not claim the benefit of any other nonprovisional 
application or international application designating the United States 
of America;
    (B) The nonprovisional application is either a continuation 
application as defined in paragraph (a)(3) of this section or a 
continuation-in-part application as defined in paragraph (a)(4) of this 
section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of 
no more than three prior-filed applications; and
    (C) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such nonprovisional application has its benefit 
claimed in no more than two other nonprovisional applications, not 
including any nonprovisional application that satisfies the conditions 
set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this 
section.
    (vi) The nonprovisional application is a continuing application as 
defined in paragraph (a)(1) of this section that claims the benefit 
under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application, is 
filed to obtain consideration of an amendment, argument, or evidence 
that could not have been submitted during the prosecution of the prior-
filed application, and does not satisfy the conditions set forth in any 
of paragraphs (d)(1)(i) through (d)(1)(v) of this section. A petition 
must be filed in such nonprovisional application that is accompanied by 
the fee set forth in Sec. 1.17(f) and a showing that the amendment, 
argument, or evidence sought to be entered could not have been submitted 
during the prosecution of the prior-filed application. If the continuing 
application is an application filed under 35 U.S.C. 111(a), this 
petition must be submitted within four months from the actual filing 
date of

[[Page 71]]

the continuing application. If the continuing application is a 
nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371, this 
petition must be submitted within four months from the date on which the 
national stage commenced under 35 U.S.C. 371(b) or (f) in the 
international application.
    (2) Each prior-filed application must name as an inventor at least 
one inventor named in the later-filed application. In addition, each 
prior-filed application must either 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) A nonprovisional application under 35 U.S.C. 111(a) that is 
entitled to a filing date as set forth in Sec. 1.53(b) or Sec. 1.53(d) 
for which the basic filing fee set forth in Sec. 1.16 has been paid 
within the pendency of the application.
    (3) Except for a continued prosecution application filed under Sec. 
1.53(d), any nonprovisional application, or international application 
designating the United States of America, that claims the benefit of one 
or more prior-filed 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. The reference must also identify the relationship of the 
applications (i.e., whether the later-filed application is a 
continuation, divisional, or continuation-in-part of the prior-filed 
nonprovisional application or international application). If an 
application is identified as a continuation-in-part application, the 
applicant must identify the claim or claims in the continuation-in-part 
application for which the subject matter is disclosed in the manner 
provided by the first paragraph of 35 U.S.C. 112 in the prior-filed 
application. 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.
    (4) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of 
this section 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 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. Except as provided in paragraph (e) of 
this section, failure to timely submit the reference required by 35 
U.S.C. 120 and paragraph (d)(3) of this section is considered a waiver 
of any benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed 
application. The time periods in this paragraph do not apply if the 
later-filed application is:
    (i) An application for a design patent;
    (ii) An application filed under 35 U.S.C. 111(a) before November 29, 
2000; or
    (iii) An international application filed under 35 U.S.C. 363 before 
November 29, 2000.
    (5) 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.
    (6) Cross-references to other related applications may be made when 
appropriate. Cross-references to applications for which a benefit is not 
claimed under title 35, United States Code,

[[Page 72]]

must be located in a paragraph that is separate from the paragraph 
containing the references to applications for which a benefit is claimed 
under 35 U.S.C. 119(e), 120, 121, or 365(c) that is required by 35 
U.S.C. 119(e) or 120 and this section.
    (e) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the 
benefit of a prior-filed nonprovisional application or international 
application. If the reference required by 35 U.S.C. 120 and paragraph 
(d)(3) of this section is presented after the time period provided by 
paragraph (d)(4) 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:
    (1) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of 
this section to the prior-filed 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 (d)(4) 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.
    (f) Applications and patents naming at least one inventor in common. 
(1)(i) The applicant in a nonprovisional application that has not been 
allowed (Sec. 1.311) must identify by application number (i.e., series 
code and serial number) and patent number (if applicable) each other 
pending or patented nonprovisional application, in a separate paper, for 
which the following conditions are met:
    (A) The nonprovisional application has a filing date that is the 
same as or within two months of the filing date of the other pending or 
patented nonprovisional application, taking into account any filing date 
for which a benefit is sought under title 35, United States Code;
    (B) The nonprovisional application names at least one inventor in 
common with the other pending or patented nonprovisional application; 
and
    (C) The nonprovisional application is owned by the same person, or 
subject to an obligation of assignment to the same person, as the other 
pending or patented nonprovisional application.
    (ii) The identification of such one or more other pending or 
patented nonprovisional applications if required by paragraph (f)(1)(i) 
of this section must be submitted within the later of:
    (A) Four months from the actual filing date in a nonprovisional 
application filed under 35 U.S.C. 111(a);
    (B) Four months from the date on which the national stage commenced 
under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering 
the national stage from an international application under 35 U.S.C. 
371; or
    (C) Two months from the mailing date of the initial filing receipt 
in such other nonprovisional application for which identification is 
required by paragraph (f)(1)(i) of this section.
    (2)(i) A rebuttable presumption shall exist that a nonprovisional 
application contains at least one claim that is not patentably distinct 
from at least one of the claims in another pending or patented 
nonprovisional application if the following conditions are met:
    (A) The nonprovisional application has a filing date that is the 
same as the filing date of the other pending or patented nonprovisional 
application, taking into account any filing date for which a benefit is 
sought under title 35, United States Code;
    (B) The nonprovisional application names at least one inventor in 
common with the other pending or patented nonprovisional application;
    (C) The nonprovisional application is owned by the same person, or 
subject to an obligation of assignment to the same person, as the other 
pending or patented nonprovisional application; and

[[Page 73]]

    (D) The nonprovisional application and the other pending or patented 
nonprovisional application contain substantial overlapping disclosure. 
Substantial overlapping disclosure exists if the other pending or 
patented nonprovisional application has written description support 
under the first paragraph of 35 U.S.C. 112 for at least one claim in the 
nonprovisional application.
    (ii) If the conditions specified in paragraph (f)(2)(i) of this 
section exist, the applicant in the nonprovisional application must, 
unless the nonprovisional application has been allowed (Sec. 1.311), 
take one of the following actions within the time period specified in 
paragraph (f)(2)(iii) of this section:
    (A) Rebut this presumption by explaining how the application 
contains only claims that are patentably distinct from the claims in 
each of such other pending nonprovisional applications or patents; or
    (B) Submit a terminal disclaimer in accordance with Sec. 1.321(c). 
In addition, where one or more other pending nonprovisional applications 
have been identified, the applicant must explain why there are two or 
more pending nonprovisional applications naming at least one inventor in 
common and owned by the same person, or subject to an obligation of 
assignment to the same person, which contain patentably indistinct 
claims.
    (iii) If the conditions specified in paragraph (f)(2)(i) of this 
section exist, the applicant in the nonprovisional application must, 
unless the nonprovisional application has been allowed (Sec. 1.311), 
take one of the actions specified in paragraph (f)(2)(ii) of this 
section within the later of:
    (A) Four months from the actual filing date of a nonprovisional 
application filed under 35 U.S.C. 111(a);
    (B) Four months from the date on which the national stage commenced 
under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering 
the national stage from an international application under 35 U.S.C. 
371;
    (C) The date on which a claim that is not patentably distinct from 
at least one of the claims in the one or more other pending or patented 
nonprovisional applications is presented; or
    (D) Two months from the mailing date of the initial filing receipt 
in the one or more other pending or patented nonprovisional 
applications.
    (3) In the absence of good and sufficient reason for there being two 
or more pending nonprovisional applications owned by the same person, or 
subject to an obligation of assignment to the same person, which contain 
patentably indistinct claims, the Office may require elimination of the 
patentably indistinct claims from all but one of the applications.
    (g) Applications or patents under reexamination naming different 
inventors and containing patentably indistinct claims. If an application 
or a patent under reexamination and at least one other application 
naming different inventors are owned by the same party and contain 
patentably indistinct claims, and there is no statement of record 
indicating that the claimed inventions were commonly owned or subject to 
an obligation of assignment to the same person at the time the later 
invention was made, the Office may require the assignee to state whether 
the claimed inventions were commonly owned or subject to an obligation 
of assignment to the same person at the time the later invention was 
made, and if not, indicate which named inventor is the prior inventor.
    (h) Parties to a joint research agreement. If an application 
discloses or is amended to disclose the names of parties to a joint 
research agreement under 35 U.S.C. 103(c)(2)(C), the parties to the 
joint research agreement are considered to be the same person for 
purposes of this section. If the application is amended to disclose the 
names of parties to a joint research agreement, the identification of 
such one or more other nonprovisional applications as required by 
paragraph (f)(1) of this section must be submitted with such amendment 
unless such identification is or has been submitted within the four-
month period specified in paragraph (f)(1) of this section.
    (i) Time periods not extendable: The time periods set forth in this 
section are not extendable.

[72 FR 46837, Aug. 21, 2007]

[[Page 74]]



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.
    (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

[[Page 75]]

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, 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.

[[Page 76]]

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 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

[[Page 77]]

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 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

[[Page 78]]

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
    (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,

[[Page 79]]

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.
    (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.

[[Page 80]]



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 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

[[Page 81]]

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 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

[[Page 82]]

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
    (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

[[Page 83]]

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;
    (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

[[Page 84]]

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 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

[[Page 85]]

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, rules, and other requirements, and to the 
patentability of the invention as claimed, as well as with respect to 
matters of form, unless otherwise indicated.
    (2) The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified of the 
examiner's action. The reasons for any adverse action or any objection 
or requirement will be stated 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.

[[Page 86]]

    (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.
    (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 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.

[[Page 87]]

    (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; 72 FR 46841, Aug. 21, 2007]



Sec. 1.105  Requirements for information.

    (a)(1) In the course of examining or treating a matter in a pending 
or abandoned application filed under 35 U.S.C. 111 or 371 (including a 
reissue application), in a patent, or in a reexamination proceeding, the 
examiner or other Office employee may require the submission, from 
individuals identified under Sec. 1.56(c), or any assignee, of such 
information as may be reasonably necessary to properly examine or treat 
the matter, for example:
    (i) Commercial databases: The existence of any particularly relevant 
commercial database known to any of the inventors that could be searched 
for a particular aspect of the invention.
    (ii) Search: Whether a search of the prior art was made, and if so, 
what was searched.
    (iii) Related information: A copy of any non-patent literature, 
published application, or patent (U.S. or foreign), by any of the 
inventors, that relates to the claimed invention.
    (iv) Information used to draft application: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used to draft the application.
    (v) Information used in invention process: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used in the invention process, such as by designing around or providing 
a solution to accomplish an invention result.
    (vi) Improvements: Where the claimed invention is an improvement, 
identification of what is being improved.
    (vii) In use: Identification of any use of the claimed invention 
known to any of the inventors at the time the application was filed 
notwithstanding the date of the use.
    (viii) Technical information known to applicant. Technical 
information known to applicant concerning the related art, the 
disclosure, the claimed

[[Page 88]]

subject matter, other factual information pertinent to patentability, or 
concerning the accuracy of the examiner's stated interpretation of such 
items.
    (ix) Support in the specification: Where (by page and line or 
paragraph number) in the specification of the application, or any 
application the benefit of whose filing date is sought under title 35, 
United States Code, there is written description support for the 
invention as defined in the claims (whether in independent or dependent 
form), 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 invention, under the first paragraph of 35 U.S.C. 
112.
    (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; 
72 FR 46841, Aug. 21, 2007]



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 Office may require an applicant, patentee, or owner to identify the 
inventive entity of the subject matter of each claim in the application 
or patent when necessary for purposes of an Office proceeding. 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 
and 1.130.

[72 FR 46841, Aug. 21, 2007]

              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.
    (ii) A supplemental reply will be entered if the supplemental reply 
is filed

[[Page 89]]

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 90]]



Sec. 1.114  Request for continued examination.

    (a) If prosecution in an application is closed, an applicant may, 
subject to the conditions of this section, file a request for continued 
examination of the application accompanied by a submission, the fee set 
forth in Sec. 1.17(e), and if required, a petition under paragraph (g) 
of this section accompanied by the fee set forth in Sec. 1.17(f), 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 files a request for continued examination under 
this section after appeal, but prior to a decision on the appeal, the 
request for continued examination will also 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), 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.
    (f) An applicant may file a request for continued examination under 
this section in an application without a petition under paragraph (g) of 
this section if the conditions set forth in at least one of paragraphs 
(f)(1), (f)(2), or (f)(3) of this section are satisfied:
    (1) A request for continued examination under this section has not 
previously been filed in any of:
    (i) The application;
    (ii) Any application whose benefit is claimed under 35 U.S.C. 120, 
121, or 365(c) in such application; and
    (iii) Any application that claims the benefit under 35 U.S.C. 120, 
121, or 365(c) of such application, not including any nonprovisional 
application that satisfies the conditions set forth in Sec. 
1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).
    (2) The application is a divisional application that satisfies the 
conditions set forth in Sec. 1.78(d)(1)(ii), and a request for 
continued examination under this section has not previously been filed 
in any of:
    (i) The divisional application; and
    (ii) Any application that claims the benefit under 35 U.S.C. 120, 
121, or 365(c) of such divisional application, not including any 
nonprovisional application that satisfies the conditions set forth in 
Sec. 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).
    (3) The application is a continuation application that claims the 
benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional application 
and satisfies the conditions set forth in Sec. 1.78(d)(1)(iii), and a 
request for continued examination under this section has not been filed 
in any of:
    (i) The continuation application;
    (ii) The divisional application; and
    (iii) Any other application that claims the benefit under 35 U.S.C. 
120, 121, or 365(c) of such divisional application, not including any 
nonprovisional application that satisfies the conditions set forth in 
Sec. 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).
    (g) A request for continued examination must include a petition 
accompanied by the fee set forth in Sec. 1.17(f) and a showing that the 
amendment, argument, or evidence sought to be entered could not have 
been submitted

[[Page 91]]

prior to the close of prosecution in the application, except as 
otherwise provided in paragraph (f) of this section.
    (h) The filing of an improper request for continued examination, 
including a request for continued examination with a petition under 
paragraph (g) of this section that is not grantable, will not stay any 
period for reply that may be running against the application, nor act as 
a stay of other proceedings.

[65 FR 50104, Aug. 16, 2000, as amended at 69 FR 49999, Aug. 12, 2004; 
72 FR 46841, Aug. 21, 2007]

                               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
    (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

[[Page 92]]

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. 1.117  Refund due to cancellation of claim.

    (a) If an amendment canceling a claim is filed before an examination 
on the merits has been made of the application, the applicant may 
request a refund of any fee under Sec. 1.16(h), (i), or (j) or under 
Sec. 1.492(d), (e), or (f) paid on or after December 8, 2004, for such 
claim. If an amendment adding one or more claims is also filed before 
the application has been taken up for examination on the merits, the 
Office may apply any refund under Sec. 1.117 to any excess claims fees 
due as a result of such an amendment. The date indicated on any 
certificate of mailing or transmission under Sec. 1.8 will not be taken 
into account in determining whether an amendment canceling a claim was 
filed before an examination on the merits has been made of the 
application.
    (b) If a request for refund under this section is not filed within 
two months from the date on which the claim was canceled, the Office may 
retain the excess claims fee paid in the application. This two-month 
period is not extendable. If an amendment canceling a claim is not filed 
before an examination on the merits has been made of the application, 
the Office will not refund any part of the excess claims fee paid in the 
application except as provided in Sec. 1.26.

[72 FR 46841, Aug. 21, 2007]



Sec. Sec. 1.118-1.119  [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, 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

[[Page 93]]

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).
    (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

[[Page 94]]

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.
    (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.

[[Page 95]]

    (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.

                         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

[[Page 96]]

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 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]

[[Page 97]]

                    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]

                               Interviews



Sec. 1.133  Interviews.

    (a)(1) Interviews with examiners concerning applications and other 
matters

[[Page 98]]

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 to a notice requiring compliance with Sec. 
1.75(b) or Sec. 1.265;
    (iii) The reply is a reply brief submitted pursuant to Sec. 41.41 
of this title;
    (iv) The reply is a request for an oral hearing submitted pursuant 
to Sec. 41.47(a) of this title;
    (v) 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
    (vi) 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 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

[[Page 99]]

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; 72 FR 
46842, Aug. 21, 2007]



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.
    (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

[[Page 100]]

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.
    (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

[[Page 101]]

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.



Sec. 1.141  Different inventions in one national application.

    (a) Two or more independent and distinct inventions may not be 
claimed in

[[Page 102]]

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 may 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.
    (c) If two or more independent and distinct inventions are claimed 
in a single application, the applicant may file a suggested requirement 
for restriction under this paragraph. Any suggested requirement for 
restriction must be filed prior to the earlier of the first Office 
action on the merits or an Office action that contains a requirement to 
comply with the requirement of unity of invention under PCT Rule 13 or a 
requirement for restriction under 35 U.S.C. 121 in the application. Any 
suggested requirement for restriction must also be accompanied by an 
election without traverse of an invention to which there are no more 
than five independent claims and no more than twenty-five total claims, 
and must identify the claims to the elected invention. If the suggested 
requirement for restriction is accepted, the applicant will be notified 
in an Office action that will contain a requirement for restriction 
under paragraph (a) of this section. Any claim to the non-elected 
invention or inventions, if not canceled, is by the election withdrawn 
from further consideration.

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997; 
72 FR 46842, Aug. 21, 2007]



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]

[[Page 103]]



Sec. 1.145  Subsequent presentation of claims for different invention.

    If, after an Office action on the merits on an application, the 
applicant presents claims directed to an invention distinct from and 
independent of the invention previously claimed, the applicant may 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.

[72 FR 46842, Aug. 21, 2007]



Sec. 1.146  Election of species.

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

[62 FR 53195, Oct. 10, 1997]

                             Design Patents



Sec. 1.151  Rules applicable.

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

(35 U.S.C. 171)



Sec. 1.152  Design drawings.

    The design must be represented by a drawing that complies with the 
requirements of Sec. 1.84 and must contain a sufficient number of views 
to constitute a complete disclosure of the appearance of the design. 
Appropriate and adequate surface shading should be 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.

[[Page 104]]

    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Description of the figure or figures of the drawing.
    (5) Feature description.
    (6) A single claim.
    (c) The text of the specification sections defined in paragraph (b) 
of this section, if applicable, should be preceded by a section heading 
in uppercase letters without underlining or bold type.

[65 FR 54674, Sept. 8, 2000]



Sec. 1.155  Expedited examination of design applications.

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

[65 FR 54674, Sept. 8, 2000]

                              Plant Patents



Sec. 1.161  Rules applicable.

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



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.

[[Page 105]]

    (d) The text of the specification or sections defined in paragraph 
(c) of this section, if applicable, should be preceded by a section 
heading in upper case, without underlining or bold type.

[65 FR 54675, Sept. 8, 2000]



Sec. 1.164  Claim.

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

(35 U.S.C. 162)



Sec. 1.165  Plant drawings.

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

[[Page 106]]

    (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 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

[[Page 107]]

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.
    (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

[[Page 108]]

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 
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:

[[Page 109]]

    (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, 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.

[[Page 110]]

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.
    (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

[[Page 111]]

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 
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

[[Page 112]]

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 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;

[[Page 113]]

    (2) A translation of each such foreign-filed application that is in 
a language other than English, and a statement that the translation is 
accurate;
    (3) A marked-up copy of the application showing the redactions in 
brackets; and
    (4) A certification that the redacted copy of the application 
eliminates only the part or description of the invention that is not 
contained in any application filed in a foreign country, directly or 
through a multilateral international agreement, that corresponds to the 
application filed in the Office.
    (d) The Office will provide a copy of the complete file wrapper and 
contents of an application for which a redacted copy was submitted under 
this section to any person upon written request pursuant to Sec. 
1.14(c)(2), unless applicant complies with the requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
    (1) Applicant must accompany the submission required by paragraph 
(c) of this section with the following:
    (i) A copy of any Office correspondence previously received by 
applicant including any desired redactions, and a second copy of all 
Office correspondence previously received by applicant showing the 
redacted material in brackets; and
    (ii) A copy of each submission previously filed by the applicant 
including any desired redactions, and a second copy of each submission 
previously filed by the applicant showing the redacted material in 
brackets.
    (2) In addition to providing the submission required by paragraphs 
(c) and (d)(1) of this section, applicant must:
    (i) Within one month of the date of mailing of any correspondence 
from the Office, file a copy of such Office correspondence including any 
desired redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; and
    (ii) With each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets.
    (3) Each submission under paragraph (d)(1) or (d)(2) of this 
paragraph must also be accompanied by the processing fee set forth in 
Sec. 1.17(i) and a certification that the redactions are limited to the 
elimination of material that is relevant only to the part or description 
of the invention that was not contained in the redacted copy of the 
application submitted for publication.
    (e) The provisions of Sec. 1.8 do not apply to the time periods set 
forth in this section.



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

[[Page 114]]

other than as provided in paragraph (a) of this section must be filed 
within two months from the date of the patent application publication. 
This period is not extendable.

                        Miscellaneous Provisions



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

    (a) Service of papers must be on the attorney or agent of the party 
if there be such or on the party if there is no attorney or agent, and 
may be made in any of the following ways:
    (1) By delivering a copy of the paper to the person served;
    (2) By leaving a copy at the usual place of business of the person 
served with someone in his employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with some person of suitable 
age and discretion who resides there;
    (4) Transmission by first class mail. When service is by mail the 
date of mailing will be regarded as the date of service;
    (5) Whenever it shall be satisfactorily shown to the 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.

[[Page 115]]

    (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]



Sec. 1.265  Examination support document.

    (a) An examination support document as used in this part means a 
document that includes the following:
    (1) A statement that a preexamination search in compliance with 
paragraph (b) of this section was conducted, including an identification 
of the field of search by United States class and subclass and the date 
of the search, where applicable, and, for database searches, the search 
logic or chemical structure or sequence used as a query, the name of the 
file or files searched and the database service, and the date of the 
search;
    (2) A listing of the reference or references deemed most closely 
related to the subject matter of each of the claims (whether in 
independent or dependent form) in compliance with paragraph (c) of this 
section;
    (3) For each reference cited, an identification of all of the 
limitations of each of the claims (whether in independent or dependent 
form) that are disclosed by the reference;
    (4) A detailed explanation particularly pointing out how each of the 
independent claims is patentable over the cited references; and
    (5) A showing of where each limitation of each of the claims 
(whether in independent or dependent form) finds support under the first 
paragraph of 35 U.S.C. 112 in the written description of the 
specification. If the application claims the benefit of one or more 
applications under title 35, United States Code, the showing must also 
include where each limitation of each of the claims finds support under 
the first paragraph of 35 U.S.C. 112 in each such priority or benefit 
application in which such support exists.
    (b) The preexamination search referred to in paragraph (a)(1) of 
this section must involve U.S. patents and patent application 
publications, foreign patent documents, and non-patent literature, 
unless the applicant justifies with reasonable certainty that no 
references more pertinent than those already identified are likely to be 
found in the eliminated source and includes such a justification with 
the statement required by paragraph (a)(1) of this section. The 
preexamination search referred to in paragraph (a)(1) of this section 
must be directed to the claimed invention and encompass all of the 
limitations of each of the claims (whether in independent or dependent 
form), giving the claims the broadest reasonable interpretation.
    (c) The listing of references required under paragraph (a)(2) of 
this section as part of an examination support document must include a 
list identifying each of the cited references in compliance with 
paragraphs (c)(1) and (c)(2) of this section, a copy of each reference 
if required by paragraph (c)(3) of this section, and each English 
language translation if required by paragraph (c)(4) of this section.
    (1) The list of cited references must itemize U.S. patents and U.S. 
patent application publications (including international applications 
designating the U.S.) in a section separate from the list of other 
references. Each page of the list of the cited references must include:
    (i) The application number, if known, of the application in which 
the examination support document is being filed;
    (ii) A column that provides a space next to each cited reference for 
the examiner's initials; and
    (iii) A heading that clearly indicates that the list is part of an 
examination support document listing of references.
    (2) The list of cited references must identify each cited reference 
as follows:

[[Page 116]]

    (i) Each U.S. patent must be identified by first named patentee, 
patent number, and issue date.
    (ii) Each U.S. patent application publication must be identified by 
applicant, patent application publication number, and publication date.
    (iii) Each U.S. application must be identified by the applicant, 
application number, and filing date.
    (iv) Each foreign patent or published foreign patent application 
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.
    (v) Each publication must be identified by publisher (e.g., name of 
journal), author (if any), title, relevant pages of the publication, 
date, and place of publication.
    (3) The listing of references required under paragraph (a)(2) of 
this section must also be accompanied by a legible copy of each cited 
reference, except for references that are U.S. patents or U.S. patent 
application publications.
    (4) If a non-English language document is being cited in the listing 
of references required under paragraph (a)(2) of this section as part of 
an examination support document, any existing English language 
translation of the non-English language document must also be submitted 
if the translation is within the possession, custody, or control of, or 
is readily available to any individual identified in Sec. 1.56(c).
    (d) If an information disclosure statement is filed in an 
application in which an examination support document is required and has 
been filed, the applicant must also file a supplemental examination 
support document addressing the reference or references in the manner 
required under paragraphs (a)(3) and (a)(4) of this section unless the 
information disclosure statement cites only references that are less 
closely related to the subject matter of one or more claims (whether in 
independent or dependent form) than the references cited in the 
examination support document listing of references under paragraph 
(a)(2) of this section.
    (e) If an examination support document is required, but the 
examination support document or preexamination search is deemed to be 
insufficient, or the claims have been amended such that the examination 
support document no longer covers each of the claims, applicant will be 
notified and given a two-month time period that is not extendable under 
Sec. 1.136(a) within which, to avoid abandonment of the application, 
the applicant must:
    (1) File a corrected or supplemental examination support document in 
compliance with this section that covers each of the claims (whether in 
independent or dependent form); or
    (2) Amend the application such that it contains no more than five 
independent claims and no more than twenty-five total claims.
    (f) An examination support document, or a corrected or supplemental 
examination support document, is not required to comply with the 
requirements set forth in paragraph (a)(3) of this section if the 
examination support document is accompanied by a certification that any 
rights in the application have not been assigned, granted, conveyed, or 
licensed, and there is no obligation under contract or law to assign, 
grant, convey, or license any rights in the application, other than a 
security interest that has not been defaulted upon, to any entity other 
than:
    (1) A business or other concern:
    (i) Whose number of employees, including affiliates, does not exceed 
500 persons; and
    (ii) Which has not assigned, granted, conveyed, or licensed (and is 
under no obligation to do so) any rights in the invention to any person 
who made it and could not be classified as an independent inventor, or 
to any concern which would not qualify as a non-profit organization or a 
small business concern under paragraph (f)(1)(i) of this section.
    (2) A not-for-profit enterprise which is independently owned and 
operated and is not dominant in its field; or
    (3) A government of a city, county, town, township, village, school 
district, or special district, with a population of less than fifty 
thousand.

[72 FR 46842, Aug. 21, 2007]

[[Page 117]]

                   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 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

[[Page 118]]

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.
    (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

[[Page 119]]

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

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



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

    (a) Any requester who is dissatisfied with the final refusal to 
publish a statutory invention registration for reasons other than 
compliance with 35 U.S.C. 112 may obtain review of the refusal to 
publish the statutory invention registration by filing a petition to the 
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:


[[Page 120]]


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

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

        Review of Patent and Trademark Office Decisions by Court



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

    Any applicant, or any owner of a patent involved in any ex parte 
reexamination proceeding filed under Sec. 1.510, dissatisfied with the 
decision of the Board of Patent Appeals and Interferences, and any party 
to an interference dissatisfied with the decision of the Board of Patent 
Appeals and Interferences, may appeal to the U.S. Court of Appeals for 
the Federal Circuit. The appellant must take the following steps in such 
an appeal: In the U. S. Patent and Trademark Office, file a written 
notice of appeal directed to the 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

[[Page 121]]

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 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 122]]



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 123]]

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 124]]

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 125]]

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 126]]

    (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 127]]

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 128]]

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 129]]



              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 130]]

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 131]]

    (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 132]]

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 133]]

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 134]]

    (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) Drawings are required when they are necessary for the 
understanding of the invention (PCT Art. 7).
    (b) The physical requirements for drawings are set forth in PCT Rule 
11 and shall be adhered to.

[72 FR 51563, Sept. 10, 2007]



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)..........$1,800.00.
    (3) A supplemental search fee when required, per additional 
invention..........$1,800.00.
    (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).
    (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; 72 
FR 51563, Sept. 10, 2007]



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

[[Page 135]]

Searching Authority. The transmittal fee will not be refunded.
    (e) The handling fee (Sec. 1.482(b)) will be refunded (PCT Rule 
57.6) only if:
    (1) The Demand is withdrawn before the Demand has been sent by the 
International Preliminary Examining Authority to the International 
Bureau, or
    (2) The Demand is considered not to have been submitted (PCT Rule 
54.4(a)).

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

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50 
FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8, 
2000]

                                Priority



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

    (a) The claim for priority must, subject to paragraph (d) of this 
section, be made on the Request (PCT Rule 4.10) in a manner complying 
with sections 110 and 115 of the Administrative Instructions.
    (b) Whenever the priority of an earlier United States national 
application or international application filed with the United States 
Receiving Office is claimed in an international application, the 
applicant may request in the Request or in a letter of transmittal 
accompanying the international application upon filing with the United 
States Receiving Office or in a separate letter filed in the United 
States Receiving Office not later than 16 months after the priority 
date, that the United States Patent and Trademark Office prepare a 
certified copy of the prior application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is set forth in Sec. 1.19(b)(1).
    (c) If a certified copy of the priority document is not submitted 
together with the international application on filing, or, if the 
priority application was filed in the United States and a request and 
appropriate payment for preparation of such a certified copy do not 
accompany the international application on filing or are not filed 
within 16 months of the priority date, the certified copy of the 
priority document must be furnished by the applicant to the 
International Bureau or to the United States Receiving Office within the 
time limit specified in PCT Rule 17.1(a).
    (d) The applicant may correct or add a priority claim in accordance 
with PCT Rule 26bis.1.

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

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



Sec. 1.452  Restoration of right of priority.

    (a) If the international application has an international filing 
date which is later than the expiration of the priority period as 
defined by PCT Rule 2.4 but within two months from the expiration of the 
priority period, the right of priority in the international application 
may be restored upon request if the delay in filing the international 
application within the priority period was unintentional.
    (b) A request to restore the right of priority in an international 
application under paragraph (a) of this section must be filed not later 
than two months from the expiration of the priority period and must 
include:
    (1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if 
the priority claim in respect of the earlier application is not 
contained in the international application;
    (2) The fee set forth in Sec. 1.17(t); and
    (3) A statement that the delay in filing the international 
application within the priority period was unintentional. The Director 
may require additional information where there is a question whether the 
delay was unintentional.
    (c) If the applicant makes a request for early publication under PCT 
Article 21(2)(b), any requirement under paragraph (b) of this section 
filed after the technical preparations for international publication 
have been completed by the International Bureau shall be considered as 
not having been submitted in time.
    (d) Restoration of a right of priority to a prior application by the 
United States Receiving Office under this section, or by any other 
Receiving Office under the provisions of PCT Rule 26bis.3, will not 
entitle applicants to a

[[Page 136]]

right of priority in any application which has entered the national 
stage under 35 U.S.C. 371, or in any application filed under 35 U.S.C. 
111(a) which claims benefit under 35 U.S.C. 120 and 365(c) to an 
international application in which the right to priority has been 
restored.

[72 FR 51563, Sept. 10, 2007]

                             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 under PCT Rule 
26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a), 
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 filing date of the earliest 
remaining priority claim under PCT Article 8 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

[[Page 137]]

priority date or dates, the Receiving Office shall proceed under PCT 
Rule 26bis.2.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 72 
FR 51564, Sept. 10, 2007]



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 138]]

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 139]]

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 140]]

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 141]]

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

    (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 142]]

    (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))..........................     $205.00
By other than a small entity................................     $410.00
 

    (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))..........................     $255.00
By other than a small entity................................     $510.00
 

    (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))...........................    $105.00
By other than a small entity.................................    $210.00
 

    (d) In addition to the basic national fee, for filing or on a later 
presentation at any other time of each claim in independent form in 
excess of 3:

By a small entity (Sec.  1.27(a))...........................    $105.00
By other than a small entity.................................    $210.00
 

    (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))...........................    $185.00
By other than a small entity.................................    $370.00
 

    (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

[[Page 143]]

any annexes to an international preliminary examination report later 
than 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))...........................    $130.00
By other than a small entity.................................    $260.00
 


[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; 72 FR 46902, Aug. 
22, 2007; 72 FR 55055, Sept. 28, 2007]



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 144]]

    (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. If the documents and fees contain 
conflicting indications as between an application under 35 U.S.C. 111 
and a submission to enter the national stage under 35 U.S.C. 371, the 
documents and fees will be treated as a submission to enter the national 
stage under 35 U.S.C. 371.
    (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; 72 FR 46843, Aug. 21, 2007]



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

[[Page 145]]

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 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 20.5(c) 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; 72 FR 51564, Sept. 10, 2007; 72 FR 
57863, Oct. 11, 2007]



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]

[[Page 146]]



               Subpart D_Ex Parte Reexamination of Patents

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

                          Citation of Prior Art



Sec. 1.501  Citation of prior art in patent files.

    (a) At any time during the period of enforceability of a patent, any 
person may cite, to the Office in writing, prior art consisting of 
patents or printed publications which that person states to be pertinent 
and applicable to the patent and believes to have a bearing on the 
patentability of any claim of the patent. If the citation is made by the 
patent owner, the explanation of pertinency and applicability may 
include an explanation of how the claims differ from the prior art. Such 
citations shall be entered in the patent file except as set forth in 
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

[[Page 147]]

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 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]



Sec. 1.520  Ex parte reexamination at the initiative of the Director.

    The Director, at any time during the period of enforceability of a 
patent, may determine whether or not a substantial new question of 
patentability is raised by patents or printed publications which have 
been discovered by the Director or which have been brought to the 
Director's attention, even though no request for reexamination has been 
filed in accordance with Sec. 1.510 or Sec. 1.913. The Director may 
initiate ex parte reexamination without a request for reexamination 
pursuant to Sec. 1.510 or Sec. 1.913. Normally requests from outside 
the Office that the Director undertake reexamination on his own 
initiative will not be considered. Any determination to initiate ex 
parte reexamination under this section will become a part of the 
official file of the patent and will be mailed to the patent owner at 
the address as provided for in Sec. 1.33(c).

[65 FR 76775, Dec. 7, 2000]

                         Ex Parte Reexamination



Sec. 1.525  Order for ex parte reexamination.

    (a) If a substantial new question of patentability is found pursuant 
to Sec. 1.515 or Sec. 1.520, the determination will include an order 
for ex parte reexamination of the patent for resolution of the

[[Page 148]]

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

[65 FR 76775, Dec. 7, 2000]



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

    (a) Except as provided in Sec. 1.510(e), no statement or other 
response by the patent owner in an ex parte reexamination proceeding 
shall be filed prior to the determinations made in accordance with Sec. 
1.515 or Sec. 1.520. If a premature statement or other response is 
filed by the patent owner, it will not be acknowledged or considered in 
making the determination, and it will be returned or discarded (at the 
Office's option).
    (b) The order for ex parte reexamination will set a period of not 
less than two months from the date of the order within which the patent 
owner may file a statement on the new question of patentability, 
including any proposed amendments the patent owner wishes to make.
    (c) Any statement filed by the patent owner shall clearly point out 
why the subject matter as claimed is not anticipated or rendered obvious 
by the prior art patents or printed publications, either alone or in any 
reasonable combinations. Where the reexamination request was filed by a 
third party requester, any statement filed by the patent owner must be 
served upon the ex parte reexamination requester in accordance with 
Sec. 1.248.
    (d) Making amendments in a reexamination proceeding. A proposed 
amendment in an ex parte or an inter partes reexamination proceeding is 
made by filing a paper directing that proposed specified changes be made 
to the patent specification, including the claims, or to the drawings. 
An amendment paper directing that proposed specified changes be made in 
a reexamination proceeding may be submitted as an accompaniment to a 
request filed by the patent owner in accordance with Sec. 1.510(e), as 
part of a patent owner statement in accordance with paragraph (b) of 
this section, or, where permitted, during the prosecution of the 
reexamination proceeding pursuant to Sec. 1.550(a) or Sec. 1.937.
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph including markings 
pursuant to paragraph (f) of this section, except that an entire 
paragraph may be deleted by a statement deleting the paragraph, without 
presentation of the text of the paragraph. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted on 
paper or compact disc (see Sec. Sec. 1.96 and 1.825).
    (2) Claims. An amendment paper must include the entire text of each 
patent claim which is being proposed to be changed by such amendment 
paper and of each new claim being proposed to be added by such amendment 
paper. For any claim changed by the amendment paper, a parenthetical 
expression ``amended,'' ``twice amended,'' etc., should follow the claim 
number. Each patent claim proposed to be changed and each proposed added 
claim must include markings pursuant to paragraph (f) of this section, 
except that a patent claim or proposed added claim should be canceled by 
a statement canceling the claim, without presentation of the text of the 
claim.
    (3) Drawings. Any change to the patent drawings must be submitted as 
a sketch on a separate paper showing the proposed changes in red for 
approval by the examiner. Upon approval of the changes by the examiner, 
only new sheets of drawings including the changes and in compliance with 
Sec. 1.84 must be filed. Amended figures must be identified as 
``Amended,'' and any added figure must be identified as ``New.'' In the 
event a figure is canceled, the figure must be surrounded by brackets 
and identified as ``Canceled.''

[[Page 149]]

    (4) The formal requirements for papers making up the reexamination 
proceeding other than those set forth in this section are set out in 
Sec. 1.52.
    (e) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (d) of this section, 
there must also be supplied, on pages separate from the pages containing 
the changes, the status (i.e., pending or canceled), as of the date of 
the amendment, of all patent claims and of all added claims, and an 
explanation of the support in the disclosure of the patent for the 
changes to the claims made by the amendment paper.
    (f) Changes shown by markings. Any changes relative to the patent 
being reexamined which are made to the specification, including the 
claims, must include the following markings:
    (1) The matter to be omitted by the reexamination proceeding must be 
enclosed in brackets; and
    (2) The matter to be added by the reexamination proceeding must be 
underlined.
    (g) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claims added in the reexamination 
proceeding must follow the number of the highest numbered patent claim.
    (h) Amendment of disclosure may be required. The disclosure must be 
amended, when required by the Office, to correct inaccuracies of 
description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, and the 
drawings.
    (i) Amendments made relative to patent. All amendments must be made 
relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing the request for 
reexamination.
    (j) No enlargement of claim scope. No amendment may enlarge the 
scope of the claims of the patent or introduce new matter. No amendment 
may be proposed for entry in an expired patent. Moreover, no amendment, 
other than the cancellation of claims, will be incorporated into the 
patent by a certificate issued after the expiration of the patent.
    (k) Amendments not effective until certificate. Although the Office 
actions will treat proposed amendments as though they have been entered, 
the proposed amendments will not be effective until the reexamination 
certificate is issued and published.
    (l) Correction of inventorship in an ex parte or inter partes 
reexamination proceeding.  (1) When it appears in a patent being 
reexamined that the correct inventor or inventors were not named through 
error without deceptive intention on the part of the actual inventor or 
inventors, the Director may, on petition of all the parties set forth in 
Sec. 1.324(b)(1)-(3), including the assignees, and satisfactory proof 
of the facts and payment of the fee set forth in Sec. 1.20(b), or on 
order of a court before which such matter is called in question, include 
in the reexamination certificate to be issued under Sec. 1.570 or Sec. 
1.997 an amendment naming only the actual inventor or inventors. The 
petition must be submitted as part of the reexamination proceeding and 
must satisfy the requirements of Sec. 1.324.
    (2) Notwithstanding paragraph (l)(1) of this section, if a petition 
to correct inventorship satisfying the requirements of Sec. 1.324 is 
filed in a reexamination proceeding, and the reexamination proceeding is 
concluded other than by a reexamination certificate under Sec. 1.570 or 
Sec. 1.997, a certificate of correction indicating the change of 
inventorship stated in the petition will be issued upon request by the 
patentee.

[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997; 65 
FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000; 72 FR 18905, Apr. 
16, 2007]



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

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

[65 FR 76776, Dec. 7, 2000]

[[Page 150]]



Sec. 1.540  Consideration of responses in ex parte reexamination.

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

[65 FR 76776, Dec. 7, 2000]



Sec. 1.550  Conduct of ex parte reexamination proceedings.

    (a) All ex parte reexamination proceedings, including any appeals to 
the Board of Patent Appeals and Interferences, will be conducted with 
special dispatch within the Office. After issuance of the ex parte 
reexamination order and expiration of the time for submitting any 
responses, the examination will be conducted in accordance with 
Sec. Sec. 1.104 through 1.116 and will result in the issuance of an ex 
parte reexamination certificate under Sec. 1.570.
    (b) The patent owner in an ex parte reexamination proceeding will be 
given at least thirty days to respond to any Office action. In response 
to any rejection, such response may include further statements and/or 
proposed amendments or new claims to place the patent in a condition 
where all claims, if amended as proposed, would be patentable.
    (c) The time for taking any action by a patent owner in an ex parte 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
Any request for such extension must be accompanied by the petition fee 
set forth in Sec. 1.17(g). See Sec. 1.304(a) for extensions of time 
for filing a notice of appeal to the U.S. Court of Appeals for the 
Federal Circuit or for commencing a civil action.
    (d) If the patent owner fails to file a timely and appropriate 
response to any Office action or any written statement of an interview 
required under Sec. 1.560(b), the prosecution in the ex parte 
reexamination proceeding will be a terminated prosecution, and the 
Director will proceed to issue and publish a certificate concluding the 
reexamination proceeding under Sec. 1.570 in accordance with the last 
action of the Office.
    (e) If a response by the patent owner is not timely filed in the 
Office,
    (1) The delay in filing such response may be excused if it is shown 
to the satisfaction of the Director that the delay was unavoidable; a 
petition to accept an unavoidably delayed response must be filed in 
compliance with Sec. 1.137(a); or
    (2) The response may nevertheless be accepted if the delay was 
unintentional; a petition to accept an unintentionally delayed response 
must be filed in compliance with Sec. 1.137(b).
    (f) The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. After 
filing of a request for ex parte reexamination by a third party 
requester, any document filed by either the patent owner or the third 
party requester must be served on the other party in the reexamination 
proceeding in the manner provided by Sec. 1.248. The document must 
reflect service or the document may be refused consideration by the 
Office.
    (g) The active participation of the ex parte reexamination requester 
ends with the reply pursuant to Sec. 1.535, and no further submissions 
on behalf of the reexamination requester will be acknowledged or 
considered. Further, no submissions on behalf of any third parties will 
be acknowledged or considered unless such submissions are:
    (1) in accordance with Sec. 1.510 or Sec. 1.535; or
    (2) entered in the patent file prior to the date of the order for ex 
parte reexamination pursuant to Sec. 1.525.
    (h) Submissions by third parties, filed after the date of the order 
for ex parte reexamination pursuant to Sec. 1.525, must meet the 
requirements of and will be treated in accordance with Sec. 1.501(a).

[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 56545, Sept. 21, 2004; 
72 FR 18905, Apr. 16, 2007]

[[Page 151]]



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

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

[65 FR 76776, Dec. 7, 2000]



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

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective reexamination 
occurs when, at the time a reexamination proceeding is being conducted, 
the Office is aware of and evaluates the teachings of all information 
material to patentability in a reexamination proceeding. Each individual 
associated with the patent owner in a reexamination proceeding has a 
duty of candor and good faith in dealing with the Office, which includes 
a duty to disclose to the Office all information known to that 
individual to be material to patentability in a reexamination 
proceeding. The individuals who have a duty to disclose to the Office 
all information known to them to be material to patentability in a 
reexamination proceeding are the patent owner, each attorney or agent 
who represents the patent owner, and every other individual who is 
substantively involved on behalf of the patent owner in a reexamination 
proceeding. The duty to disclose the information exists with respect to 
each claim pending in the reexamination proceeding until the claim is 
cancelled. Information material to the patentability of a cancelled 
claim need not be submitted if the information is not material to 
patentability of any claim remaining under consideration in the 
reexamination proceeding. The duty to disclose all information known to 
be material to patentability in a reexamination proceeding is deemed to 
be satisfied if all information known to be material to patentability of 
any claim in the patent after issuance of the reexamination certificate 
was cited by the Office or submitted to the Office in an information 
disclosure statement. However, the duties of candor, good faith, and 
disclosure have not been complied with if any fraud on the Office was 
practiced or attempted or the duty of disclosure was violated through 
bad faith or intentional misconduct by, or on behalf of, the patent 
owner in the reexamination proceeding. Any information disclosure 
statement must be filed with the items listed in Sec. 1.98(a) as 
applied to individuals associated with the patent owner in a 
reexamination proceeding, and should be filed within two months of the 
date of the order for reexamination, or as soon thereafter as possible.
    (b) Under this section, information is material to patentability in 
a reexamination proceeding when it is not cumulative to information of 
record or being made of record in the reexamination proceeding, and
    (1) It is a patent or printed publication that establishes, by 
itself or in combination with other patents or printed publications, a 
prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the patent owner 
takes in:
    (i) Opposing an argument of unpatentability relied on by the Office, 
or
    (ii) Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in a 
reexamination proceeding is established when the information compels a 
conclusion that a claim is unpatentable under the preponderance of 
evidence, burden-of-proof standard, giving each term in the

[[Page 152]]

claim its broadest reasonable construction consistent with the 
specification, and before any consideration is given to evidence which 
may be submitted in an attempt to establish a contrary conclusion of 
patentability.
    (c) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section and no 
evaluation will be made by the Office in the reexamination proceeding as 
to compliance with this section. If questions of compliance with this 
section are raised by the patent owner or the third party requester 
during a reexamination proceeding, they will be noted as unresolved 
questions in accordance with Sec. 1.552(c).

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



Sec. 1.560  Interviews in ex parte reexamination proceedings.

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

[65 FR 76777, Dec. 7, 2000]



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

    (a) In an ex parte reexamination proceeding before the Office, the 
patent owner must inform the Office of any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissues, ex parte reexaminations, inter partes 
reexaminations, or litigation and the results of such proceedings. See 
Sec. 1.985 for notification of prior or concurrent proceedings in an 
inter partes reexamination proceeding.
    (b) If a patent in the process of ex parte reexamination is or 
becomes involved in litigation, the Director shall determine whether or 
not to suspend the reexamination. See Sec. 1.987 for inter partes 
reexamination proceedings.
    (c) If ex parte reexamination is ordered while a prior ex parte 
reexamination proceeding is pending and prosecution in the prior ex 
parte reexamination proceeding has not been terminated, the ex parte 
reexamination proceedings will usually be merged and result in the 
issuance and publication of a single certificate under Sec. 1.570. For 
merger of inter partes reexamination proceedings, see Sec. 1.989(a). 
For merger of ex parte reexamination and inter partes reexamination 
proceedings, see Sec. 1.989(b).
    (d) If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant to Sec. 1.525 has been mailed are 
pending concurrently on a patent, a decision will usually be made to 
merge the two proceedings or to suspend one of the two proceedings. 
Where merger of a reissue application and an ex parte reexamination 
proceeding is ordered, the merged examination will be conducted in 
accordance with Sec. Sec. 1.171 through 1.179, and the patent owner 
will be required to place and maintain the same claims in the reissue 
application and the ex parte reexamination proceeding during the 
pendency of the merged proceeding. The examiner's actions and responses 
by the patent owner in a merged proceeding will apply to both the 
reissue

[[Page 153]]

application and the ex parte reexamination proceeding and will be 
physically entered into both files. Any ex parte reexamination 
proceeding merged with a reissue application shall be concluded by the 
grant of the reissued patent. For merger of a reissue application and an 
inter partes reexamination, see Sec. 1.991.
    (e) If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Director may suspend the 
reexamination or the interference. The Director will not consider a 
request to suspend an interference unless a motion (Sec. 41.121(a)(3) 
of this title) to suspend the interference has been presented to, and 
denied by, an administrative patent judge, and the request is filed 
within ten (10) days of a decision by an administrative patent judge 
denying the motion for suspension or such other time as the 
administrative patent judge may set. For concurrent inter partes 
reexamination and interference of a patent, see Sec. 1.993.

[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 50001, Aug. 12, 2004; 72 
FR 18905, Apr. 16, 2007]

                   Ex Parte Reexamination Certificate



Sec. 1.570  Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.

    (a) To conclude an ex parte reexamination proceeding, the Director 
will issue and publish an ex parte reexamination certificate in 
accordance with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.
    (b) An ex parte reexamination certificate will be issued and 
published in each patent in which an ex parte reexamination proceeding 
has been ordered under Sec. 1.525 and has not been merged with any 
inter partes reexamination proceeding pursuant to Sec. 1.989(a). Any 
statutory disclaimer filed by the patent owner will be made part of the 
ex parte reexamination certificate.
    (c) The ex parte reexamination certificate will be mailed on the day 
of its date to the patent owner at the address as provided for in Sec. 
1.33(c). A copy of the ex parte reexamination certificate will also be 
mailed to the requester of the ex parte reexamination proceeding.
    (d) If an ex parte reexamination certificate has been issued and 
published which cancels all of the claims of the patent, no further 
Office proceedings will be conducted with that patent or any reissue 
applications or any reexamination requests relating thereto.
    (e) If the ex parte reexamination proceeding is terminated by the 
grant of a reissued patent as provided in Sec. 1.565(d), the reissued 
patent will constitute the ex parte reexamination certificate required 
by this section and 35 U.S.C. 307.
    (f) A notice of the issuance of each ex parte reexamination 
certificate under this section will be published in the Official Gazette 
on its date of issuance.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18905, Apr. 16, 2007]

Subpart E [Reserved]



            Subpart F_Adjustment and Extension of Patent Term

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

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

           Adjustment of Patent Term Due to Examination Delay



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

    (a) A patent, other than for designs, issued on an application filed 
on or after June 8, 1995, is entitled to extension of the patent term if 
the issuance of the patent was delayed due to:
    (1) Interference proceedings under 35 U.S.C. 135(a); and/or
    (2) The application being placed under a secrecy order under 35 
U.S.C. 181; and/or
    (3) Appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued pursuant to a decision in the review reversing an 
adverse determination of patentability and if the patent is not subject 
to a terminal disclaimer due to the issuance of another patent claiming

[[Page 154]]

subject matter that is not patentably distinct from that under appellate 
review. If an application is remanded by a panel of the Board of Patent 
Appeals and Interferences and the remand is the last action by a panel 
of the Board of Patent Appeals and Interferences prior to the mailing of 
a notice of allowance under 35 U.S.C. 151 in the application, the remand 
shall be considered a decision in the review reversing an adverse 
determination of patentability as that phrase is used in 35 U.S.C. 
154(b)(2) as amended by section 532(a) of the Uruguay Round Agreements 
Act, Public Law 103-465, 108 Stat. 4809, 4983-85 (1994), and a final 
decision in favor of the applicant under paragraph (c)(3) of this 
section. A remand by a panel of the Board of Patent Appeals and 
Interferences shall not be considered a decision in the review reversing 
an adverse determination of patentability as provided in this paragraph 
if there is filed a request for continued examination under 35 U.S.C. 
132(b) that was not first preceded by the mailing, after such remand, of 
at least one of an action under 35 U.S.C. 132 or a notice of allowance 
under 35 U.S.C. 151.
    (b) The term of a patent entitled to extension under paragraph (a) 
of this section shall be extended for the sum of the periods of delay 
calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this 
section, to the extent that these periods are not overlapping, up to a 
maximum of five years. The extension will run from the expiration date 
of the patent.
    (c)(1) The period of delay under paragraph (a)(1) of this section 
for an application is the sum of the following periods, to the extent 
that the periods are not overlapping:
    (i) With respect to each interference in which the application was 
involved, the number of days, if any, in the period beginning on the 
date the interference was declared or redeclared to involve the 
application in the interference and ending on the date that the 
interference was terminated with respect to the application; and
    (ii) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Patent and Trademark 
Office due to interference proceedings under 35 U.S.C. 135(a) not 
involving the application and ending on the date of the termination of 
the suspension.
    (2) The period of delay under paragraph (a)(2) of this section for 
an application is the sum of the following periods, to the extent that 
the periods are not overlapping:
    (i) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order and any renewal thereof was removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference would be declared but 
for the secrecy order and ending on the date the secrecy order and any 
renewal thereof was removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) and ending on the date of mailing of 
the notice of allowance under Sec. 1.311.
    (3) The period of delay under paragraph (a)(3) of this section is 
the sum of the number of days, if any, in the period beginning on the 
date on which an appeal to the Board of Patent Appeals and Interferences 
was filed under 35 U.S.C. 134 and ending on the date of a final decision 
in favor of the applicant by the Board of Patent Appeals and 
Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or 
a civil action under 35 U.S.C. 145.
    (d) The period of delay set forth in paragraph (c)(3) shall be 
reduced by:
    (1) Any time during the period of appellate review that occurred 
before three years from the filing date of the first national 
application for patent presented for examination; and
    (2) Any time during the period of appellate review, as determined by 
the Director, during which the applicant for patent did not act with due 
diligence. In determining the due diligence of an applicant, the 
Director may examine the facts and circumstances of the applicant's 
actions during the period of appellate review to determine

[[Page 155]]

whether the applicant exhibited that degree of timeliness as may 
reasonably be expected from, and which is ordinarily exercised by, a 
person during a period of appellate review.
    (e) The provisions of this section apply only to original patents, 
except for design patents, issued on applications filed on or after June 
8, 1995, and before May 29, 2000.

[60 FR 20228, Apr. 25, 1995, as amended at 65 FR 56391, Sept. 18, 2000; 
69 FR 21710, Apr. 22, 2004; 69 FR 50001, Aug. 12, 2004]



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

    (a) Failure to take certain actions within specified time frames. 
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term 
of an original patent shall be adjusted if the issuance of the patent 
was delayed due to the failure of the Office to:
    (1) Mail at least one of a notification under 35 U.S.C. 132 or a 
notice of allowance under 35 U.S.C. 151 not later than fourteen months 
after the date on which the application was filed under 35 U.S.C. 111(a) 
or fulfilled the requirements of 35 U.S.C. 371 in an international 
application;
    (2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken 
under 35 U.S.C. 134 not later than four months after the date on which 
the reply was filed or the appeal was taken;
    (3) Act on an application not later than four months after the date 
of a decision by the Board of Patent Appeals and Interferences under 35 
U.S.C. 134 or 135 or a decision by a Federal court under 35 U.S.C. 141, 
145, or 146 where at least one allowable claim remains in the 
application; or
    (4) Issue a patent not later than four months after the date on 
which the issue fee was paid under 35 U.S.C. 151 and all outstanding 
requirements were satisfied.
    (b) Failure to issue a patent within three years of the actual 
filing date of the application. Subject to the provisions of 35 U.S.C. 
154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the failure of 
the Office to issue a patent within three years after the date on which 
the application was filed under 35 U.S.C. 111(a) or the national stage 
commenced under 35 U.S.C. 371(b) or (f) in an international application, 
but not including:
    (1) Any time consumed by continued examination of the application 
under 35 U.S.C. 132(b);
    (2) Any time consumed by an interference proceeding under 35 U.S.C. 
135(a);
    (3) Any time consumed by the imposition of a secrecy order under 35 
U.S.C. 181;
    (4) Any time consumed by review by the Board of Patent Appeals and 
Interferences or a Federal court; or
    (5) Any delay in the processing of the application by the Office 
that was requested by the applicant.
    (c) Delays caused by interference proceedings. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the patent was delayed due 
to interference proceedings under 35 U.S.C. 135(a).
    (d) Delays caused by secrecy order. Subject to the provisions of 35 
U.S.C. 154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the 
application being placed under a secrecy order under 35 U.S.C. 181.
    (e) Delays caused by successful appellate review. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the patent was delayed due 
to review by the Board of Patent Appeals and Interferences under 35 
U.S.C. 134 or by a Federal court under 35 U.S.C. 141 or 145, if the 
patent was issued under a decision in the review reversing an adverse 
determination of patentability. If an application is remanded by a panel 
of the Board of Patent Appeals and Interferences and the remand is the 
last action by a panel of the Board of Patent Appeals and Interferences 
prior to the mailing of a notice of allowance under 35 U.S.C. 151 in the 
application, the remand shall be considered a decision by the Board of 
Patent Appeals and Interferences as that phrase is used in 35 U.S.C. 
154(b)(1)(A)(iii), a decision in the review

[[Page 156]]

reversing an adverse determination of patentability as that phrase is 
used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of 
the applicant under Sec. 1.703(e). A remand by a panel of the Board of 
Patent Appeals and Interferences shall not be considered a decision in 
the review reversing an adverse determination of patentability as 
provided in this paragraph if there is filed a request for continued 
examination under 35 U.S.C. 132(b) that was not first preceded by the 
mailing, after such remand, of at least one of an action under 35 U.S.C. 
132 or a notice of allowance under 35 U.S.C. 151.
    (f) The provisions of this section and Sec. Sec. 1.703 through 
1.705 apply only to original applications, except applications for a 
design patent, filed on or after May 29, 2000, and patents issued on 
such applications.

[65 FR 56391, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004]



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

    (a) The period of adjustment under Sec. 1.702(a) is the sum of the 
following periods:
    (1) The number of days, if any, in the period beginning on the day 
after the date that is fourteen months after the date on which the 
application was filed under 35 U.S.C. 111(a) or fulfilled the 
requirements of 35 U.S.C. 371 and ending on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (2) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply under Sec. 
1.111 was filed and ending on the date of mailing of either an action 
under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, 
whichever occurs first;
    (3) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply in compliance 
with Sec. 1.113(c) was filed and ending on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (4) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date an appeal brief in 
compliance with Sec. 41.37 of this title was filed and ending on the 
date of mailing of any of an examiner's answer under Sec. 41.39 of this 
title, an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (5) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date of a final decision by 
the Board of Patent Appeals and Interferences or by a Federal court in 
an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 
146 where at least one allowable claim remains in the application and 
ending on the date of mailing of either an action under 35 U.S.C. 132 or 
a notice of allowance under 35 U.S.C. 151, whichever occurs first; and
    (6) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date the issue fee was paid 
and all outstanding requirements were satisfied and ending on the date a 
patent was issued.
    (b) The period of adjustment under Sec. 1.702(b) is the number of 
days, if any, in the period beginning on the day after the date that is 
three years after the date on which the application was filed under 35 
U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or 
(f) in an international application and ending on the date a patent was 
issued, but not including the sum of the following periods:
    (1) The number of days, if any, in the period beginning on the date 
on which a request for continued examination of the application under 35 
U.S.C. 132(b) was filed and ending on the date the patent was issued;
    (2)(i) The number of days, if any, in the period beginning on the 
date an interference was declared or redeclared to involve the 
application in the interference and ending on the date that the 
interference was terminated with respect to the application; and
    (ii) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Office due to 
interference proceedings under 35 U.S.C. 135(a) not involving the 
application and ending on

[[Page 157]]

the date of the termination of the suspension;
    (3)(i) The number of days, if any, the application was maintained in 
a sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order was removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference would be declared but 
for the secrecy order and ending on the date the secrecy order was 
removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) of this chapter and ending on the 
date of mailing of the notice of allowance under 35 U.S.C. 151; and,
    (4) The number of days, if any, in the period beginning on the date 
on which a notice of appeal to the Board of Patent Appeals and 
Interferences was filed under 35 U.S.C. 134 and Sec. 41.31 of this 
title and ending on the date of the last decision by the Board of Patent 
Appeals and Interferences or by a Federal court in an appeal under 35 
U.S.C. 141 or a civil action under 35 U.S.C. 145, or on the date of 
mailing of either an action under 35 U.S.C. 132, or a notice of 
allowance under 35 U.S.C. 151, whichever occurs first, if the appeal did 
not result in a decision by the Board of Patent Appeals and 
Interferences.
    (c) The period of adjustment under Sec. 1.702(c) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, in the period beginning on the date 
an interference was declared or redeclared to involve the application in 
the interference and ending on the date that the interference was 
terminated with respect to the application; and
    (2) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Office due to 
interference proceedings under 35 U.S.C. 135(a) not involving the 
application and ending on the date of the termination of the suspension.
    (d) The period of adjustment under Sec. 1.702(d) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;
    (2) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer under Sec. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order was removed;
    (3) The number of days, if any, in the period beginning on the date 
applicant was notified that an interference would be declared but for 
the secrecy order and ending on the date the secrecy order was removed; 
and
    (4) The number of days, if any, in the period beginning on the date 
of notification under Sec. 5.3(c) of this chapter and ending on the 
date of mailing of the notice of allowance under 35 U.S.C. 151.
    (e) The period of adjustment under Sec. 1.702(e) is the sum of the 
number of days, if any, in the period beginning on the date on which a 
notice of appeal to the Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 and Sec. 41.31 of this title and ending on 
the date of a final decision in favor of the applicant by the Board of 
Patent Appeals and Interferences or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
    (f) The adjustment will run from the expiration date of the patent 
as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay 
attributable to the grounds specified in Sec. 1.702 overlap, the period 
of adjustment granted under this section shall not exceed the actual 
number of days the issuance of the patent was delayed. The term of a 
patent entitled to adjustment under Sec. 1.702 and this section shall 
be adjusted for the sum of the periods calculated under paragraphs (a) 
through (e) of this section, to the extent that such periods are not 
overlapping, less the sum of the periods calculated under Sec. 1.704. 
The date indicated on any certificate of mailing or transmission under 
Sec. 1.8 shall not be taken into account in this calculation.
    (g) No patent, the term of which has been disclaimed beyond a 
specified date, shall be adjusted under Sec. 1.702 and

[[Page 158]]

this section beyond the expiration date specified in the disclaimer.

[65 FR 56392, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
69 FR 50001, Aug. 12, 2004]



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

    (a) The period of adjustment of the term of a patent under 
Sec. Sec. 1.703(a) through (e) shall be reduced by a period equal to 
the period of time during which the applicant failed to engage in 
reasonable efforts to conclude prosecution (processing or examination) 
of the application.
    (b) With respect to the grounds for adjustment set forth in 
Sec. Sec. 1.702(a) through (e), and in particular the ground of 
adjustment set forth in Sec. 1.702(b), an applicant shall be deemed to 
have failed to engage in reasonable efforts to conclude processing or 
examination of an application for the cumulative total of any periods of 
time in excess of three months that are taken to reply to any notice or 
action by the Office making any rejection, objection, argument, or other 
request, measuring such three-month period from the date the notice or 
action was mailed or given to the applicant, in which case the period of 
adjustment set forth in Sec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date that is three months 
after the date of mailing or transmission of the Office communication 
notifying the applicant of the rejection, objection, argument, or other 
request and ending on the date the reply was filed. The period, or 
shortened statutory period, for reply that is set in the Office action 
or notice has no effect on the three-month period set forth in this 
paragraph.
    (c) Circumstances that constitute a failure of the applicant to 
engage in reasonable efforts to conclude processing or examination of an 
application also include the following circumstances, which will result 
in the following reduction of the period of adjustment set forth in 
Sec. 1.703 to the extent that the periods are not overlapping:
    (1) Suspension of action under Sec. 1.103 at the applicant's 
request, in which case the period of adjustment set forth in Sec. 1.703 
shall be reduced by the number of days, if any, beginning on the date a 
request for suspension of action under Sec. 1.103 was filed and ending 
on the date of the termination of the suspension;
    (2) Deferral of issuance of a patent under Sec. 1.314, in which 
case the period of adjustment set forth in Sec. 1.703 shall be reduced 
by the number of days, if any, beginning on the date a request for 
deferral of issuance of a patent under Sec. 1.314 was filed and ending 
on the date the patent was issued;
    (3) Abandonment of the application or late payment of the issue fee, 
in which case the period of adjustment set forth in Sec. 1.703 shall be 
reduced by the number of days, if any, beginning on the date of 
abandonment or the date after the date the issue fee was due and ending 
on the earlier of:
    (i) The date of mailing of the decision reviving the application or 
accepting late payment of the issue fee; or
    (ii) The date that is four months after the date the grantable 
petition to revive the application or accept late payment of the issue 
fee was filed;
    (4) Failure to file a petition to withdraw the holding of 
abandonment or to revive an application within two months from the 
mailing date of a notice of abandonment, in which case the period of 
adjustment set forth in Sec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date two months from the 
mailing date of a notice of abandonment and ending on the date a 
petition to withdraw the holding of abandonment or to revive the 
application was filed;
    (5) Conversion of a provisional application under 35 U.S.C. 111(b) 
to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 
U.S.C. 111(b)(5), in which case the period of adjustment set forth in 
Sec. 1.703 shall be reduced by the number of days, if any, beginning on 
the date the application was filed under 35 U.S.C. 111(b) and ending on 
the date a request in compliance with Sec. 1.53(c)(3) to convert the 
provisional application into a nonprovisional application was filed;
    (6) Submission of a preliminary amendment or other preliminary paper 
less than one month before the mailing of an Office action under 35 
U.S.C. 132

[[Page 159]]

or notice of allowance under 35 U.S.C. 151 that requires the mailing of 
a supplemental Office action or notice of allowance, in which case the 
period of adjustment set forth in Sec. 1.703 shall be reduced by the 
lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the date of mailing of the supplemental Office action or 
notice of allowance; or
    (ii) Four months;
    (7) Submission of a reply having an omission (Sec. 1.135(c)), in 
which case the period of adjustment set forth in Sec. 1.703 shall be 
reduced by the number of days, if any, beginning on the day after the 
date the reply having an omission was filed and ending on the date that 
the reply or other paper correcting the omission was filed;
    (8) Submission of a supplemental reply or other paper, other than a 
supplemental reply or other paper expressly requested by the examiner, 
after a reply has been filed, in which case the period of adjustment set 
forth in Sec. 1.703 shall be reduced by the number of days, if any, 
beginning on the day after the date the initial reply was filed and 
ending on the date that the supplemental reply or other such paper was 
filed;
    (9) Submission of an amendment or other paper after a decision by 
the Board of Patent Appeals and Interferences, other than a decision 
designated as containing a new ground of rejection under Sec. 41.50(b) 
of this title or statement under Sec. 41.50(c) of this title, or a 
decision by a Federal court, less than one month before the mailing of 
an Office action under 35 U.S.C. 132 or notice of allowance under 35 
U.S.C. 151 that requires the mailing of a supplemental Office action or 
supplemental notice of allowance, in which case the period of adjustment 
set forth in Sec. 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the mailing date of the supplemental Office action or notice 
of allowance; or
    (ii) Four months;
    (10) Submission of an amendment under Sec. 1.312 or other paper 
after a notice of allowance has been given or mailed, in which case the 
period of adjustment set forth in Sec. 1.703 shall be reduced by the 
lesser of:
    (i) The number of days, if any, beginning on the date the amendment 
under Sec. 1.312 or other paper was filed and ending on the mailing 
date of the Office action or notice in response to the amendment under 
Sec. 1.312 or such other paper; or
    (ii) Four months; and
    (11) Failure to comply with Sec. 1.75(b), in which case the period 
of adjustment set forth in Sec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date that is the later of 
the filing date of the amendment resulting in the non-compliance with 
Sec. 1.75(b), or four months from the filing date of the application in 
an application under 35 U.S.C. 111(a) or from the date on which the 
national stage commenced under 35 U.S.C. 371(b) or (f) in an application 
which entered the national stage from an international application after 
compliance with 35 U.S.C. 371, and ending on the date that an 
examination support document in compliance with Sec. 1.265, an election 
in reply to a requirement under Sec. 1.142(a), 1.146 or 1.499 resulting 
in compliance with Sec. 1.75(b), an amendment resulting in compliance 
with Sec. 1.75(b), or a suggested restriction requirement in compliance 
with Sec. 1.142(c), was filed;
    (12) Further prosecution via a continuing application, in which case 
the period of adjustment set forth in Sec. 1.703 shall not include any 
period that is prior to the actual filing date of the application that 
resulted in the patent.
    (d) A paper containing only an information disclosure statement in 
compliance with Sec. Sec. 1.97 and 1.98 will not be considered a 
failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraphs (c)(6), 
(c)(8), (c)(9), or (c)(10) of this section if it is accompanied by a 
statement that each item of information contained in the information 
disclosure statement was first cited in any communication from a foreign 
patent office in a counterpart application and that this communication 
was not received by any individual designated in Sec. 1.56(c) more than 
thirty

[[Page 160]]

days prior to the filing of the information disclosure statement. This 
thirty-day period is not extendable.
    (e) Submission of an application for patent term adjustment under 
Sec. 1.705(b) (with or without request under Sec. 1.705(c) for 
reinstatement of reduced patent term adjustment) will not be considered 
a failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraph (c)(10) 
of this section.

[65 FR 56393, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
69 FR 50002, Aug. 12, 2004; 72 FR 46843, Aug. 21, 2007]



Sec. 1.705  Patent term adjustment determination.

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

[[Page 161]]

term adjustment under 35 U.S.C. 154(b) will be considered by the Office. 
Any such submission or petition will be returned to the third party, or 
otherwise disposed of, at the convenience of the Office.

[65 FR 56394, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004]

            Extension of Patent Term Due to Regulatory Review



Sec. 1.710  Patents subject to extension of the patent term.

    (a) A patent is eligible for extension of the patent term if the 
patent claims a product as defined in paragraph (b) of this section, 
either alone or in combination with other ingredients that read on a 
composition that received permission for commercial marketing or use, or 
a method of using such a product, or a method of manufacturing such a 
product, and meets all other conditions and requirements of this 
subpart.
    (b) The term product referred to in paragraph (a) of this section 
means--
    (1) The active ingredient of a new human drug, antibiotic drug, or 
human biological product (as those terms are used in the Federal Food, 
Drug, and Cosmetic Act and the Public Health Service Act) including any 
salt or ester of the active ingredient, as a single entity or in 
combination with another active ingredient; or
    (2) The active ingredient of a new animal drug or veterinary 
biological product (as those terms are used in the Federal Food, Drug, 
and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily 
manufactured using recombinant DNA, recombinant RNA, hybridoma 
technology, or other processes including site specific genetic 
manipulation techniques, including any salt or ester of the active 
ingredient, as a single entity or in combination with another active 
ingredient; or
    (3) Any medical device, food additive, or color additive subject to 
regulation under the Federal Food, Drug, and Cosmetic Act.

[54 FR 30379, July 20, 1989]



Sec. 1.720  Conditions for extension of patent term.

    The term of a patent may be extended if:
    (a) The patent claims a product or a method of using or 
manufacturing a product as defined in Sec. 1.710;
    (b) The term of the patent has never been previously extended, 
except for extensions issued pursuant to Sec. Sec. 1.701, 1.760, or 
Sec. 1.790;
    (c) An application for extension is submitted in compliance with 
Sec. 1.740;
    (d) The product has been subject to a regulatory review period as 
defined in 35 U.S.C. 156(g) before its commercial marketing or use;
    (e) The product has received permission for commercial marketing or 
use and--
    (1) The permission for the commercial marketing or use of the 
product is the first received permission for commercial marketing or use 
under the provision of law under which the applicable regulatory review 
occurred, or
    (2) In the case of a patent other than one directed to subject 
matter within Sec. 1.710(b)(2) claiming a method of manufacturing the 
product that primarily uses recombinant DNA technology in the 
manufacture of the product, the permission for the commercial marketing 
or use is the first received permission for the commercial marketing or 
use of a product manufactured under the process claimed in the patent, 
or
    (3) In the case of a patent claiming a new animal drug or a 
veterinary biological product that is not covered by the claims in any 
other patent that has been extended, and has received permission for the 
commercial marketing or use in non-food-producing animals and in food-
producing animals, and was not extended on the basis of the regulatory 
review period for use in non-food-producing animals, the permission for 
the commercial marketing or use of the drug or product after the 
regulatory review period for use in food-producing animals is the first 
permitted commercial marketing or use of the drug or product for 
administration to a food-producing animal.
    (f) The application is submitted within the sixty-day period 
beginning on the date the product first received permission for 
commercial marketing or

[[Page 162]]

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

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



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

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

[65 FR 54679, Sept. 8, 2000]



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

    (a) An application for extension of patent term must be made in 
writing to the Director. A formal application for the extension of 
patent term must include:
    (1) A complete identification of the approved product as by 
appropriate chemical and generic name, physical structure or 
characteristics;
    (2) A complete identification of the Federal statute including the 
applicable provision of law under which the regulatory review occurred;
    (3) An identification of the date on which the product received 
permission for commercial marketing or use under the provision of law 
under which the applicable regulatory review period occurred;
    (4) In the case of a drug product, an identification of each active 
ingredient in the product and as to each active ingredient, a statement 
that it has not been previously approved for commercial marketing or use 
under the Federal Food, Drug, and Cosmetic Act, the Public Health 
Service Act, or the Virus-Serum-Toxin Act, or a statement of when the 
active ingredient was approved for commercial marketing or use (either 
alone or in combination with other active ingredients), the use for 
which it was approved, and the provision of law under which it was 
approved.
    (5) A statement that the application is being submitted within the 
sixty day period permitted for submission pursuant to Sec. 1.720(f) and 
an identification of the date of the last day on which the application 
could be submitted;
    (6) A complete identification of the patent for which an extension 
is being sought by the name of the inventor, the patent number, the date 
of issue, and the date of expiration;

[[Page 163]]

    (7) A copy of the patent for which an extension is being sought, 
including the entire specification (including claims) and drawings;
    (8) A copy of any disclaimer, certificate of correction, receipt of 
maintenance fee payment, or reexamination certificate issued in the 
patent;
    (9) A statement that the patent claims the approved product, or a 
method of using or manufacturing the approved product, and a showing 
which lists each applicable patent claim and demonstrates the manner in 
which at least one such patent claim reads on:
    (i) The approved product, if the listed claims include any claim to 
the approved product;
    (ii) The method of using the approved product, if the listed claims 
include any claim to the method of using the approved product; and
    (iii) The method of manufacturing the approved product, if the 
listed claims include any claim to the method of manufacturing the 
approved product;
    (10) A statement beginning on a new page of the relevant dates and 
information pursuant to 35 U.S.C. 156(g) in order to enable the 
Secretary of Health and Human Services or the Secretary of Agriculture, 
as appropriate, to determine the applicable regulatory review period as 
follows:
    (i) For a patent claiming a human drug, antibiotic, or human 
biological product:
    (A) The effective date of the investigational new drug (IND) 
application and the IND number;
    (B) The date on which a new drug application (NDA) or a Product 
License Application (PLA) was initially submitted and the NDA or PLA 
number; and
    (C) The date on which the NDA was approved or the Product License 
issued;
    (ii) For a patent claiming a new animal drug:
    (A) The date a major health or environmental effects test on the 
drug was initiated, and any available substantiation of that date, or 
the date of an exemption under subsection (j) of Section 512 of the 
Federal Food, Drug, and Cosmetic Act became effective for such animal 
drug;
    (B) The date on which a new animal drug application (NADA) was 
initially submitted and the NADA number; and
    (C) The date on which the NADA was approved;
    (iii) For a patent claiming a veterinary biological product:
    (A) The date the authority to prepare an experimental biological 
product under the Virus-Serum-Toxin Act became effective;
    (B) The date an application for a license was submitted under the 
Virus-Serum-Toxin Act; and
    (C) The date the license issued;
    (iv) For a patent claiming a food or color additive:
    (A) The date a major health or environmental effects test on the 
additive was initiated and any available substantiation of that date;
    (B) The date on which a petition for product approval under the 
Federal Food, Drug and Cosmetic Act was initially submitted and the 
petition number; and
    (C) The date on which the FDA published a Federal Register notice 
listing the additive for use;
    (v) For a patent claiming a medical device:
    (A) The effective date of the investigational device exemption (IDE) 
and the IDE number, if applicable, or the date on which the applicant 
began the first clinical investigation involving the device, if no IDE 
was submitted, and any available substantiation of that date;
    (B) The date on which the application for product approval or notice 
of completion of a product development protocol under Section 515 of the 
Federal Food, Drug and Cosmetic Act was initially submitted and the 
number of the application; and
    (C) The date on which the application was approved or the protocol 
declared to be completed;
    (11) A brief description beginning on a new page of the significant 
activities undertaken by the marketing applicant during the applicable 
regulatory review period with respect to the approved product and the 
significant dates applicable to such activities;

[[Page 164]]

    (12) A statement beginning on a new page that in the opinion of the 
applicant the patent is eligible for the extension and a statement as to 
the length of extension claimed, including how the length of extension 
was determined;
    (13) A statement that applicant acknowledges a duty to disclose to 
the Director of the United States Patent and Trademark Office and the 
Secretary of Health and Human Services or the Secretary of Agriculture 
any information which is material to the determination of entitlement to 
the extension sought (see Sec. 1.765);
    (14) The prescribed fee for receiving and acting upon the 
application for extension (see Sec. 1.20(j)); and
    (15) The name, address, and telephone number of the person to whom 
inquiries and correspondence relating to the application for patent term 
extension are to be directed.
    (b) The application under this section must be accompanied by two 
additional copies of such application (for a total of three copies).
    (c) If an application for extension of patent term is informal under 
this section, the Office will so notify the applicant. The applicant has 
two months from the mail date of the notice, or such time as is set in 
the notice, within which to correct the informality. Unless the notice 
indicates otherwise, this time period may be extended under the 
provisions of Sec. 1.136.

[54 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 56 
FR 65155, Dec. 13, 1991; 65 FR 54679, Sept. 8, 2000; 68 FR 14337, Mar. 
25, 2003]



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

    (a) The filing date of an application for extension of a patent term 
is the date on which a complete application is received in the Office or 
filed pursuant to the procedures set forth in Sec. 1.8 or Sec. 1.10. A 
complete application must include:
    (1) An identification of the approved product;
    (2) An identification of each Federal statute under which regulatory 
review occurred;
    (3) An identification of the patent for which an extension is being 
sought;
    (4) An identification of each claim of the patent which claims the 
approved product or a method of using or manufacturing the approved 
product;
    (5) Sufficient information to enable the Director to determine under 
subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a patent for 
extension, and the rights that will be derived from the extension, and 
information to enable the Director and the Secretary of Health and Human 
Services or the Secretary of Agriculture to determine the length of the 
regulatory review period; and
    (6) A brief description of the activities undertaken by the 
marketing applicant during the applicable regulatory review period with 
respect to the approved product and the significant dates applicable to 
such activities.
    (b) If an application for extension of patent term is incomplete 
under this section, the Office will so notify the applicant. If 
applicant requests review of a notice that an application is incomplete, 
or review of the filing date accorded an application under this section, 
applicant must file a petition pursuant to this paragraph accompanied by 
the fee set forth in Sec. 1.17(f) within two months of the mail date of 
the notice that the application is incomplete, or the notice according 
the filing date complained of. Unless the notice indicates otherwise, 
this time period may be extended under the provisions of Sec. 1.136.

[52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61 
FR 64028, Dec. 3, 1996; 65 FR 54680, Sept. 8, 2000; 69 FR 56546, Sept. 
21, 2004]



Sec. 1.750  Determination of eligibility for extension of patent term.

    A determination as to whether a patent is eligible for extension may 
be made by the Director solely on the basis of the representations 
contained in the application for extension filed in compliance with 
Sec. 1.740 or Sec. 1.790. This determination may be delegated to 
appropriate Patent and Trademark Office officials and may be made at any 
time before the certificate of extension is issued. The Director or 
other appropriate officials may require from applicant further 
information or make such

[[Page 165]]

independent inquiries as desired before a final determination is made on 
whether a patent is eligible for extension. In an application for 
extension filed in compliance with Sec. 1.740, a notice will be mailed 
to applicant containing the determination as to the eligibility of the 
patent for extension and the period of time of the extension, if any. 
This notice shall constitute the final determination as to the 
eligibility and any period of extension of the patent. A single request 
for reconsideration of a final determination may be made if filed by the 
applicant within such time as may be set in the notice of final 
determination or, if no time is set, within one month from the date of 
the final determination. The time periods set forth herein are subject 
to the provisions of Sec. 1.136.

[60 FR 25618, May 12, 1995]



Sec. 1.760  Interim extension of patent term under 35 U.S.C. 156(e)(2).

    An applicant who has filed a formal application for extension in 
compliance with Sec. 1.740 may request one or more interim extensions 
for periods of up to one year each pending a final determination on the 
application pursuant to Sec. 1.750. Any such request should be filed at 
least three months prior to the expiration date of the patent. The 
Director may issue interim extensions, without a request by the 
applicant, for periods of up to one year each until a final 
determination is made. The patent owner or agent will be notified when 
an interim extension is granted and notice of the extension will be 
published in the Official Gazette of the United States Patent and 
Trademark Office. The notice will be recorded in the official file of 
the patent and will be considered as part of the original patent. In no 
event will the interim extensions granted under this section be longer 
than the maximum period for extension to which the applicant would be 
eligible.

[65 FR 54680, Sept. 8, 2000]



Sec. 1.765  Duty of disclosure in patent term extension proceedings.

    (a) A duty of candor and good faith toward the Patent and Trademark 
Office and the Secretary of Health and Human Services or the Secretary 
of Agriculture rests on the patent owner or its agent, on each attorney 
or agent who represents the patent owner and on every other individual 
who is substantively involved on behalf of the patent owner in a patent 
term extension proceeding. All such individuals who are aware, or become 
aware, of material information adverse to a determination of entitlement 
to the extension sought, which has not been previously made of record in 
the patent term extension proceeding must bring such information to the 
attention of the Office or the Secretary, as appropriate, in accordance 
with paragraph (b) of this section, as soon as it is practical to do so 
after the individual becomes aware of the information. Information is 
material where there is a substantial likelihood that the Office or the 
Secretary would consider it important in determinations to be made in 
the patent term extension proceeding.
    (b) Disclosures pursuant to this section must be accompanied by a 
copy of each written document which is being disclosed. The disclosure 
must be made to the Office or the Secretary, as appropriate, unless the 
disclosure is material to determinations to be made by both the Office 
and the Secretary, in which case duplicate copies, certified as such, 
must be filed in the Office and with the Secretary. Disclosures pursuant 
to this section may be made to the Office or the Secretary, as 
appropriate, through an attorney or agent having responsibility on 
behalf of the patent owner or its agent for the patent term extension 
proceeding or through a patent owner acting on his or her own behalf. 
Disclosure to such an attorney, agent or patent owner shall satisfy the 
duty of any other individual. Such an attorney, agent or patent owner 
has no duty to transmit information which is not material to the 
determination of entitlement to the extension sought.
    (c) No patent will be determined eligible for extension and no 
extension will be issued if it is determined that fraud on the Office or 
the Secretary was practiced or attempted or the duty of disclosure was 
violated through bad faith or gross negligence in connection

[[Page 166]]

with the patent term extension proceeding. If it is established by clear 
and convincing evidence that any fraud was practiced or attempted on the 
Office or the Secretary in connection with the patent term extension 
proceeding or that there was any violation of the duty of disclosure 
through bad faith or gross negligence in connection with the patent term 
extension proceeding, a final determination will be made pursuant to 
Sec. 1.750 that the patent is not eligible for extension.
    (d) The duty of disclosure pursuant to this section rests on the 
individuals identified in paragraph (a) of this section and no 
submission on behalf of third parties, in the form of protests or 
otherwise, will be considered by the Office. Any such submissions by 
third parties to the Office will be returned to the party making the 
submission, or otherwise disposed of, without consideration by the 
Office.

[24 FR 10332, Dec. 22, 1959, as amended at 54 FR 30381, July 20, 1989; 
60 FR 25618, May 12, 1995]



Sec. 1.770  Express withdrawal of application for extension of patent term.

    An application for extension of patent term may be expressly 
withdrawn before a determination is made pursuant to Sec. 1.750 by 
filing in the Office, in duplicate, a written declaration of withdrawal 
signed by the owner of record of the patent or its agent. An application 
may not be expressly withdrawn after the date permitted for reply to the 
final determination on the application. An express withdrawal pursuant 
to this section is effective when acknowledged in writing by the Office. 
The filing of an express withdrawal pursuant to this section and its 
acceptance by the Office does not entitle applicant to a refund of the 
filing fee (Sec. 1.20(j)) or any portion thereof.

[62 FR 53201, Oct. 10, 1997]



Sec. 1.775  Calculation of patent term extension for a human drug, antibiotic drug or human biological product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a human drug, antibiotic drug or human biological product is 
eligible for extension, the term shall be extended by the time as 
calculated in days in the manner indicated by this section. The patent 
term extension will run from the original expiration date of the patent 
or any earlier date set by terminal disclaimer (Sec. 1.321).
    (b) The term of the patent for a human drug, antibiotic drug or 
human biological product will be extended by the length of the 
regulatory review period for the product as determined by the Secretary 
of Health and Human Services, reduced as appropriate pursuant to 
paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a human drug, 
antibiotic drug or human biological product will be determined by the 
Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it 
is the sum of--
    (1) The number of days in the period beginning on the date an 
exemption under subsection (i) of section 505 or subsection (d) of 
section 507 of the Federal Food, Drug, and Cosmetic Act became effective 
for the approved product and ending on the date the application was 
initially submitted for such product under those sections or under 
section 351 of the Public Health Service Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved product under 
section 351 of the Public Health Service Act, subsection (b) of section 
505 or section 507 of the Federal Food, Drug, and Cosmetic Act and 
ending on the date such application was approved under such section.
    (d) The term of the patent as extended for a human drug, antibiotic 
drug or human biological product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services

[[Page 167]]

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

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



Sec. 1.776  Calculation of patent term extension for a food additive or color additive.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a food additive or color additive is eligible for extension, the 
term shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or earlier date set by terminal 
disclaimer (Sec. 1.321).
    (b) The term of the patent for a food additive or color additive 
will be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Health and Human Services, 
reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of 
this section.
    (c) The length of the regulatory review period for a food additive 
or color additive will be determined by the Secretary of Health and 
Human Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of--
    (1) The number of days in the period beginning on the date a major 
health or environmental effects test on the additive was initiated and 
ending on the date a petition was initially submitted with respect to 
the approved product under the Federal Food, Drug, and Cosmetic Act 
requesting the issuance of a regulation for use of the product; and
    (2) The number of days in the period beginning on the date a 
petition was initially submitted with respect to the approved product 
under the Federal Food, Drug, and Cosmetic Act requesting the issuance 
of a regulation for use of the product, and ending on the date such 
regulation became effective or, if objections were filed to such 
regulation, ending on the date such objections were resolved and 
commercial

[[Page 168]]

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



Sec. 1.777  Calculation of patent term extension for a medical device.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a medical device is eligible for extension, the term shall be 
extended by the time as calculated in days in the manner indicated by 
this section. The patent term extension will run from the original 
expiration date of the patent or earlier date as set by terminal 
disclaimer (Sec. 1.321).
    (b) The term of the patent for a medical device will be extended by 
the length of the regulatory review period for the product as determined 
by the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a medical device 
will be

[[Page 169]]

determined by the Secretary of Health and Human Services. Under 35 
U.S.C. 156(g)(3)(B), it is the sum of
    (1) The number of days in the period beginning on the date a 
clinical investigation on humans involving the device was begun and 
ending on the date an application was initially submitted with respect 
to the device under section 515 of the Federal Food, Drug, and Cosmetic 
Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted with respect to the device under 
section 515 of the Federal Food, Drug, and Cosmetic Act, and ending on 
the date such application was approved under such Act or the period 
beginning on the date a notice of completion of a product development 
protocol was initially submitted under section 515(f)(5) of the Act and 
ending on the date the protocol was declared completed under section 
515(f)(6) of the Act.
    (d) The term of the patent as extended for a medical device will be 
determined by--
    (1) Substracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period 
pursuant to paragraph (c) of this section:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 515 of the Federal Food, Drug, and Cosmetic Act or the 
date a product development protocol was declared completed under section 
515(f)(6) of the Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no clinical investigation on humans involving the device was 
begun or no product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a clinical investigation on humans involving the device was 
begun or a product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984 and the commercial marketing or use of the product was not 
approved before September 24, 1984, by
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.



Sec. 1.778  Calculation of patent term extension for an animal drug product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for an animal drug is eligible for extension, the term shall be extended 
by the time as calculated in days in the manner indicated by this 
section. The patent term

[[Page 170]]

extension will run from the original expiration date of the patent or 
any earlier date set by terminal disclaimer (Sec. 1.321).
    (b) The term of the patent for an animal drug will be extended by 
the length of the regulatory review period for the drug as determined by 
the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for an animal drug 
will be determined by the Secretary of Health and Human Services. Under 
35 U.S.C. 156(g)(4)(B), it is the sum of--
    (1) The number of days in the period beginning on the earlier of the 
date a major health or environmental effects test on the drug was 
initiated or the date an exemption under subsection (j) of section 512 
of the Federal Food, Drug, and Cosmetic Act became effective for the 
approved animal drug and ending on the date an application was initially 
submitted for such animal drug under section 512 of the Federal Food, 
Drug, and Cosmetic Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved animal drug under 
subsection (b) of section 512 of the Federal Food, Drug, and Cosmetic 
Act and ending on the date such application was approved under such 
section.
    (d) The term of the patent as extended for an animal drug will be 
determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section that were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 512 of the Federal Food, Drug, and Cosmetic Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no major health or environmental effects test on the drug was 
initiated and no request was submitted for an exemption under subsection 
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a major health or environmental effects test was initiated 
or a request for an exemption under subsection (j) of section 512 of the 
Federal Food, Drug, and Cosmetic Act was submitted before November 16, 
1988, and the application for commercial marketing or use of the animal 
drug was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and

[[Page 171]]

(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

[54 FR 30381, July 20, 1989]



Sec. 1.779  Calculation of patent term extension for a veterinary biological product.

    (a) If a determination is made pursuant to Sec. 1.750 that a patent 
for a veterinary biological product is eligible for extension, the term 
shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or any earlier date set by 
terminal disclaimer (Sec. 1.321).
    (b) The term of the patent for a veterinary biological product will 
be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Agriculture, reduced as 
appropriate pursuant to paragraphs (d)(1) through (d)(6) of this 
section.
    (c) The length of the regulatory review period for a veterinary 
biological product will be determined by the Secretary of Agriculture. 
Under 35 U.S.C. 156(g)(5)(B), it is the sum of--
    (1) The number of days in the period beginning on the date the 
authority to prepare an experimental biological product under the Virus-
Serum-Toxin Act became effective and ending on the date an application 
for a license was submitted under the Virus-Serum-Toxin Act; and
    (2) The number of days in the period beginning on the date an 
application for a license was initially submitted for approval under the 
Virus-Serum-Toxin Act and ending on the date such license was issued.
    (d) The term of the patent as extended for a veterinary biological 
product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Agriculture to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section that were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Agriculture that applicant did not act 
with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of the issuance of a license 
under the Virus-Serum-Toxin Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, and the commercial marketing or use of the product 
was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and

[[Page 172]]

(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30382, July 20, 1989]



Sec. 1.780  Certificate or order of extension of patent term.

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

[65 FR 54680, Sept. 8, 2000]



Sec. 1.785  Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product.

    (a) Only one patent may be extended for a regulatory review period 
for any product (Sec. 1.720(h)). If more than one application for 
extension of the same patent is filed, the certificate of extension of 
patent term, if appropriate, will be issued based upon the first filed 
application for extension.
    (b) If more than one application for extension is filed by a single 
applicant which seeks the extension of the term of two or more patents 
based upon the same regulatory review period, and the patents are 
otherwise eligible for extension pursuant to the requirements of this 
subpart, in the absence of an election by the applicant, the certificate 
of extension of patent term, if appropriate, will be issued upon the 
application for extension of the patent term having the earliest date of 
issuance of those patents for which extension is sought.
    (c) If an application for extension is filed which seeks the 
extension of the term of a patent based upon the same regulatory review 
period as that relied upon in one or more applications for extension 
pursuant to the requirements of this subpart, the certificate of 
extension of patent term will be issued on the application only if the 
patent owner or its agent is the holder of the regulatory approval 
granted with respect to the regulatory review period.
    (d) An application for extension shall be considered complete and 
formal regardless of whether it contains the identification of the 
holder of the regulatory approval granted with respect to the regulatory 
review period. When an application contains such information, or is 
amended to contain such information, it will be considered in 
determining whether an application is eligible for an extension under 
this section. A request may be made of any applicant to supply such 
information within a non-extendable period of not less than one month 
whenever multiple applications for extension of more than one patent are 
received and rely upon the same regulatory review period. Failure to 
provide such information within the period for reply set shall be 
regarded as conclusively establishing that the applicant is not the 
holder of the regulatory approval.
    (e) Determinations made under this section shall be included in the 
notice of final determination of eligibility for extension of the patent 
term pursuant to Sec. 1.750 and shall be regarded as part of that 
determination.

[60 FR 25618, May 12, 1995, as amended at 62 FR 53201, Oct. 10, 1997]



Sec. 1.790  Interim extension of patent term under 35 U.S.C. 156(d)(5).

    (a) An owner of record of a patent or its agent who reasonably 
expects that the applicable regulatory review period

[[Page 173]]

described in paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), 
or (5)(B)(ii) of subsection (g) that began for a product that is the 
subject of such patent may extend beyond the expiration of the patent 
term in effect may submit one or more applications for interim 
extensions for periods of up to one year each. The initial application 
for interim extension must be filed during the period beginning 6 months 
and ending 15 days before the patent term is due to expire. Each 
subsequent application for interim extension must be filed during the 
period beginning 60 days before and ending 30 days before the expiration 
of the preceding interim extension. In no event will the interim 
extensions granted under this section be longer than the maximum period 
of extension to which the applicant would be entitled under 35 U.S.C. 
156(c).
    (b) A complete application for interim extension under this section 
shall include all of the information required for a formal application 
under Sec. 1.740 and a complete application under Sec. 1.741. Sections 
(a)(1), (a)(2), (a)(4), and (a)(6)-(a)(17) of Sec. 1.740 and Sec. 
1.741 shall be read in the context of a product currently undergoing 
regulatory review. Sections (a)(3) and (a)(5) of Sec. 1.740 are not 
applicable to an application for interim extension under this section.
    (c) The content of each subsequent interim extension application may 
be limited to a request for a subsequent interim extension along with a 
statement that the regulatory review period has not been completed along 
with any materials or information required under Sec. Sec. 1.740 and 
1.741 that are not present in the preceding interim extension 
application.

[60 FR 25619, May 12, 1995]



Sec. 1.791  Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use.

    Any interim extension granted under 35 U.S.C. 156(d)(5) terminates 
at the end of the 60-day period beginning on the date on which the 
product involved receives permission for commercial marketing or use. If 
within that 60-day period the patent owner or its agent files an 
application for extension under Sec. Sec. 1.740 and 1.741 including any 
additional information required under 35 U.S.C. 156(d)(1) not contained 
in the application for interim extension, the patent shall be further 
extended in accordance with the provisions of 35 U.S.C. 156.

[60 FR 25619, May 12, 1995]



              Subpart G_Biotechnology Invention Disclosures

                     Deposit of Biological Material

    Source: 54 FR 34880, Aug. 22, 1989, unless otherwise noted.



Sec. 1.801  Biological material.

    For the purposes of these regulations pertaining to the deposit of 
biological material for purposes of patents for inventions under 35 
U.S.C. 101, the term biological material shall include material that is 
capable of self-replication either directly or indirectly. 
Representative examples include bacteria, fungi including yeast, algae, 
protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses, 
plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles 
and other non-living material existing in and reproducible from a living 
cell may be deposited by deposit of the host cell capable of reproducing 
the non-living material.



Sec. 1.802  Need or opportunity to make a deposit.

    (a) Where an invention is, or relies on, a biological material, the 
disclosure may include reference to a deposit of such biological 
material.
    (b) Biological material need not be deposited unless access to such 
material is necessary for the satisfaction of the statutory requirements 
for patentability under 35 U.S.C. 112. If a deposit is necessary, it 
shall be acceptable if made in accordance with these regulations. 
Biological material need not be deposited, inter alia, if it is known 
and readily avaliable to the public or can be made or isolated without 
undue experimentation. Once deposited in a depository complying with 
these regulations, a biological material will be considered to be 
readily available even though some requirement of law or regulation of 
the United States or of the

[[Page 174]]

country in which the depository institution is located permits access to 
the material only under conditions imposed for safety, public health or 
similar reasons.
    (c) The reference to a biological material in a specification 
disclosure or the actual deposit of such material by an applicant or 
patent owner does not create any presumption that such material is 
necessary to satisfy 35 U.S.C. 112 or that deposit in accordance with 
these regulations is or was required.



Sec. 1.803  Acceptable depository.

    (a) A deposit shall be recognized for the purposes of these 
regulations if made in
    (1) Any International Depositary Authority (IDA) as established 
under the Budapest Treaty on the International Recognition of the 
Deposit of Microorganisms for the Purposes of Patent Procedure, or
    (2) Any other depository recognized to be suitable by the Office. 
Suitability will be determined by the Director on the basis of the 
administrative and technical competence, and agreement of the depository 
to comply with the terms and conditions applicable to deposits for 
patent purposes. The Director may seek the advice of impartial 
consultants on the suitability of a depository. The depository must:
    (i) Have a continuous existence;
    (ii) Exist independent of the control of the depositor;
    (iii) Possess the staff and facilities sufficient to examine the 
viability of a deposit and store the deposit in a manner which ensures 
that it is kept viable and uncontaminated;
    (iv) Provide for sufficient safety measures to minimize the risk of 
losing biological material deposited with it;
    (v) Be impartial and objective;
    (vi) Furnish samples of the deposited material in an expeditious and 
proper manner; and
    (vii) Promptly notify depositors of its inability to furnish 
samples, and the reasons why.
    (b) A depository seeking status under paragraph (a)(2) of this 
section must direct a communication to the Director which shall:
    (1) Indicate the name and address of the depository to which the 
communication relates;
    (2) Contain detailed information as to the capacity of the 
depository to comply with the requirements of paragraph (a)(2) of this 
section, including information on its legal status, scientific standing, 
staff and facilities;
    (3) Indicate that the depository intends to be available, for the 
purposes of deposit, to any depositor under these same conditions;
    (4) Where the depository intends to accept for deposit only certain 
kinds of biological material, specify such kinds;
    (5) Indicate the amount of any fees that the depository will, upon 
acquiring the status of suitable depository under paragraph (a)(2) of 
this section, charge for storage, viability statements and furnishings 
of samples of the deposit.
    (c) A depository having status under paragraph (a)(2) of this 
section limited to certain kinds of biological material may extend such 
status to additional kinds of biological material by directing a 
communication to the Director in accordance with paragraph (b) of this 
section. If a previous communication under paragraph (b) of this section 
is of record, items in common with the previous communication may be 
incorporated by reference.
    (d) Once a depository is recognized to be suitable by the Director 
or has defaulted or discontinued its performance under this section, 
notice thereof will be published in the Office Gazette of the Patent and 
Trademark Office.



Sec. 1.804  Time of making an original deposit.

    (a) Whenever a biological material is specifically identified in an 
application for patent as filed, an original deposit thereof may be made 
at any time before filing the application for patent or, subject to 
Sec. 1.809, during pendency of the application for patent.
    (b) When the original deposit is made after the effective filing 
date of an application for patent, the applicant must promptly submit a 
statement

[[Page 175]]

from a person in a position to corroborate the fact, stating that the 
biological material which is deposited is a biological material 
specifically identified in the application as filed.

[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]



Sec. 1.805  Replacement or supplement of deposit.

    (a) A depositor, after receiving notice during the pendency of an 
application for patent, application for reissue patent or reexamination 
proceeding, that the depository possessing a deposit either cannot 
furnish samples thereof or can furnish samples thereof but the deposit 
has become contaminated or has lost its capability to function as 
described in the specification, shall notify the Office in writing, in 
each application for patent or patent affected. In such a case, or where 
the Office otherwise learns, during the pendency of an application for 
patent, application for reissue patent or reexamination proceeding, that 
the depository possessing a deposit either cannot furnish samples 
thereof or can furnish samples thereof but the deposit has become 
contaminated or has lost its capability to function as described in the 
specification, the need for making a replacement or supplemental deposit 
will be governed by the same considerations governing the need for 
making an original deposit under the provisions set forth in Sec. 
1.802(b). A replacement or supplemental deposit made during the pendency 
of an application for patent shall not be accepted unless it meets the 
requirements for making an original deposit under these regulations, 
including the requirement set forth under Sec. 1.804(b). A replacement 
or supplemental deposit made in connection with a patent, whether or not 
made during the pendency of an application for reissue patent or a 
reexamination proceeding or both, shall not be accepted unless a 
certificate of correction under Sec. 1.323 is requested by the patent 
owner which meets the terms of paragraphs (b) and (c) of this section.
    (b) A request for certificate of correction under this section shall 
not be granted unless the certificate identifies:
    (1) The accession number for the replacement or supplemental 
deposit;
    (2) The date of the deposit; and
    (3) The name and address of the depository.
    (c) A request for a certificate of correction under this section 
shall not be granted unless the request is made promptly after the 
replacement or supplemental deposit has been made and the request:
    (1) Includes a statement of the reason for making the replacement or 
supplemental deposit;
    (2) Includes a statement from a person in a position to corroborate 
the fact, and stating that the replacement or supplemental deposit is of 
a biological material which is identical to that originally deposited;
    (3) Includes a showing that the patent owner acted diligently--
    (i) In the case of a replacement deposit, in making the deposit 
after receiving notice that samples could no longer be furnished from an 
earlier deposit; or
    (ii) In the case of a supplemental deposit, in making the deposit 
after receiving notice that the earlier deposit had become contaminated 
or had lost its capability to function as described in the 
specification;
    (4) Includes a statement that the term of the replacement or 
supplemental deposit expires no earlier than the term of the deposit 
being replaced or supplemented; and
    (5) Otherwise establishes compliance with these regulations.
    (d) A depositor's failure to replace a deposit, or in the case of a 
patent, to diligently replace a deposit and promptly thereafter request 
a certificate of correction which meets the terms of paragraphs (b) and 
(c) of this section, after being notified that the depository possessing 
the deposit cannot furnish samples thereof, shall cause the application 
or patent involved to be treated in any Office proceeding as if no 
deposit were made.
    (e) In the event a deposit is replaced according to these 
regulations, the Office will apply a rebuttable presumption of identity 
between the original and the replacement deposit where a patent making 
reference to the deposit

[[Page 176]]

is relied upon during any Office proceeeding.
    (f) A replacement or supplement deposit made during the pendency of 
an application for patent may be made for any reason.
    (g) In no case is a replacement or supplemental deposit of a 
biological material necessary where the biological material, in 
accordance with Sec. 1.802(b), need not be deposited.
    (h) No replacement deposit of a biological material is necessary 
where a depository can furnish samples thereof but the depository for 
national security, health or environmental safety reasons is unable to 
provide samples to requesters outside of the jurisdiction where the 
depository is located.
    (i) The Office will not recognize in any Office proceeding a 
replacement deposit of a biological material made by a patent owner 
where the depository could furnish samples of the deposit being 
replaced.

[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]



Sec. 1.806  Term of deposit.

    A deposit made before or during pendency of an application for 
patent shall be made for a term of at least thirty (30) years and at 
least five (5) years after the most recent request for the furnishing of 
a sample of the deposit was received by the depository. In any case, 
samples must be stored under agreements that would make them available 
beyond the enforceable life of the patent for which the deposit was 
made.



Sec. 1.807  Viability of deposit.

    (a) A deposit of biological material that is capable of self-
replication either directly or indirectly must be viable at the time of 
deposit and during the term of deposit. Viability may be tested by the 
depository. The test must conclude only that the deposited material is 
capable of reproduction. No evidence is necessarily required regarding 
the ability of the deposited material to perform any function described 
in the patent application.
    (b) A viability statement for each deposit of a biological material 
defined in paragraph (a) of this section not made under the Budapest 
Treaty on the International Recognition of the Deposit of Microorganisms 
for the Purposes of Patent Procedure must be filed in the application 
and must contain:
    (1) The name and address of the depository;
    (2) The name and address of the depositor;
    (3) The date of deposit;
    (4) The identity of the deposit and the accession number given by 
the depository;
    (5) The date of the viability test;
    (6) The procedures used to obtain a sample if the test is not done 
by the depository; and
    (7) A statement that the deposit is capable of reproduction.
    (c) If a viability test indicates that the deposit is not viable 
upon receipt, or the examiner cannot, for scientific or other valid 
reasons, accept the statement of viability received from the applicant, 
the examiner shall proceed as if no deposit has been made. The examiner 
will accept the conclusion set forth in a viability statement issued by 
a depository recognized under Sec. 1.803(a).



Sec. 1.808  Furnishing of samples.

    (a) A deposit must be made under conditions that assure that:
    (1) Access to the deposit will be available during pendency of the 
patent application making reference to the deposit to one determined by 
the Director to be entitled thereto under Sec. 1.14 and 35 U.S.C. 122, 
and
    (2) Subject to paragraph (b) of this section, all restrictions 
imposed by the depositor on the availability to the public of the 
deposited material will be irrevocably removed upon the granting of the 
patent.
    (b) The depositor may contract with the depository to require that 
samples of a deposited biological material shall be furnished only if a 
request for a sample, during the term of the patent:
    (1) Is in writing or other tangible form and dated;
    (2) Contains the name and address of the requesting party and the 
accession number of the deposit; and
    (3) Is communicated in writing by the depository to the depositor 
along with the date on which the sample was furnished and the name and 
address of the

[[Page 177]]

party to whom the sample was furnished.
    (c) Upon request made to the Office, the Office will certify whether 
a deposit has been stated to have been made under conditions which make 
it available to the public as of the issue date of the patent grant 
provided the request contains:
    (1) The name and address of the depository;
    (2) The accession number given to the deposit;
    (3) The patent number and issue date of the patent referring to the 
deposit; and
    (4) The name and address of the requesting party.



Sec. 1.809  Examination procedures.

    (a) The examiner shall determine pursuant to Sec. 1.104 in each 
application for patent, application for reissue patent or reexamination 
proceeding if a deposit is needed, and if needed, if a deposit actually 
made is acceptable for patent purposes. If a deposit is needed and has 
not been made or replaced or supplemented in accordance with these 
regulations, the examiner, where appropriate, shall reject the affected 
claims under the appropriate provision of 35 U.S.C. 112, explaining why 
a deposit is needed and/or why a deposit actually made cannot be 
accepted.
    (b) The applicant for patent or patent owner shall reply to a 
rejection under paragraph (a) of this section by--
    (1) In the case of an applicant for patent, either making an 
acceptable original, replacement, or supplemental deposit, or assuring 
the Office in writing that an acceptable deposit will be made; or, in 
the case of a patent owner, requesting a certificate of correction of 
the patent which meets the terms of paragraphs (b) and (c) of Sec. 
1.805, or
    (2) Arguing why a deposit is not needed under the circumstances of 
the application or patent considered and/or why a deposit actually made 
should be accepted. Other replies to the examiner's action shall be 
considered nonresponsive. The rejection will be repeated until either 
paragraph (b)(1) of this section is satisfied or the examiner is 
convinced that a deposit is not needed.
    (c) If an application for patent is otherwise in condition for 
allowance except for a needed deposit and the Office has received a 
written assurance that an acceptable deposit will be made, applicant 
will be notified and given a period of time within which the deposit 
must be made in order to avoid abandonment. This time period is not 
extendable under Sec. 1.136(a) or (b) if set forth in a ``Notice of 
Allowability'' or in an Office action having a mail date on or after the 
mail date of a ``Notice of Allowability'' (see Sec. 1.136(c)).
    (d) For each deposit made pursuant to these regulations, the 
specification shall contain:
    (1) The accession number for the deposit;
    (2) The date of the deposit;
    (3) A description of the deposited biological material sufficient to 
specifically identify it and to permit examination; and
    (4) The name and address of the depository.
    (e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of 
this section must be filed before or with the payment of the issue fee 
(see Sec. 1.312).

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

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

    Source: Sections 1.821 through 1.825 appear at 55 FR 18245, May 1, 
1990, unless otherwise noted.



Sec. 1.821  Nucleotide and/or amino acid sequence disclosures in patent applications.

    (a) Nucleotide and/or amino acid sequences as used in Sec. Sec. 
1.821 through 1.825 are interpreted to mean an unbranched sequence of 
four or more amino acids or an unbranched sequence of ten or more 
nucleotides. Branched sequences are specifically excluded from this 
definition. Sequences with fewer than four specifically defined 
nucleotides or amino acids are specifically excluded from this section. 
``Specifically defined'' means those amino acids other than ``Xaa'' and 
those nucleotide bases other than ``n''defined in accordance with the 
World Intellectual Property

[[Page 178]]

Organization (WIPO) Handbook on Industrial Property Information and 
Documentation, Standard ST.25: Standard for the Presentation of 
Nucleotide and Amino Acid Sequence Listings in Patent Applications 
(1998), including Tables 1 through 6 in Appendix 2, herein incorporated 
by reference. (Hereinafter ``WIPO Standard ST.25 (1998)''). This 
incorporation by reference was approved by the Director of the Federal 
Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of 
WIPO Standard ST.25 (1998) may be obtained from the World Intellectual 
Property Organization; 34 chemin des Colombettes; 1211 Geneva 20 
Switzerland. Copies may also be inspected at the National Archives and 
Records Administration (NARA). For information on the availability of 
this material at NARA, call 202-741-6030, or go to: http://
www.archives.gov/federal--register/code--of--federal--regulations/ibr--
locations.html. Nucleotides and amino acids are further defined as 
follows:
    (1) Nucleotides: Nucleotides are intended to embrace only those 
nucleotides that can be represented using the symbols set forth in WIPO 
Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., 
methylated bases, may be described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 2, but shall not be shown explicitly in the 
nucleotide sequence.
    (2) Amino acids: Amino acids are those L-amino acids commonly found 
in naturally occurring proteins and are listed in WIPO Standard ST.25 
(1998), Appendix 2, Table 3. Those amino acid sequences containing D-
amino acids are not intended to be embraced by this definition. Any 
amino acid sequence that contains post-translationally modified amino 
acids may be described as the amino acid sequence that is initially 
translated using the symbols shown in WIPO Standard ST.25 (1998), 
Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or 
glycosylations, being described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 4, but these modifications shall not be shown 
explicitly in the amino acid sequence. Any peptide or protein that can 
be expressed as a sequence using the symbols in WIPO Standard ST.25 
(1998), Appendix 2, Table 3 in conjunction with a description in the 
Feature section to describe, for example, modified linkages, cross links 
and end caps, non-peptidyl bonds, etc., is embraced by this definition.
    (b) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences, in accordance with the definition in paragraph 
(a) of this section, shall, with regard to the manner in which the 
nucleotide and/or amino acid sequences are presented and described, 
conform exclusively to the requirements of Sec. Sec. 1.821 through 
1.825.
    (c) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences must contain, as a separate part of the 
disclosure, a paper or compact disc copy (see Sec. 1.52(e)) disclosing 
the nucleotide and/or amino acid sequences and associated information 
using the symbols and format in accordance with the requirements of 
Sec. Sec. 1.822 and 1.823. This paper or compact disc copy is referred 
to elsewhere in this subpart as the ``Sequence Listing.'' Each sequence 
disclosed must appear separately in the ``Sequence Listing.'' Each 
sequence set forth in the ``Sequence Listing'' must be assigned a 
separate sequence identifier. The sequence identifiers must begin with 1 
and increase sequentially by integers. If no sequence is present for a 
sequence identifier, the code ``000'' must be used in place of the 
sequence. The response for the numeric identifier <160 must 
include the total number of SEQ ID NOs, whether followed by a sequence 
or by the code ``000.''
    (d) Where the description or claims of a patent application discuss 
a sequence that is set forth in the ``Sequence Listing'' in accordance 
with paragraph (c) of this section, reference must be made to the 
sequence by use of the sequence identifier, preceded by ``SEQ ID NO:'' 
in the text of the description or claims, even if the sequence is also 
embedded in the text of the description or claims of the patent 
application.
    (e) A copy of the ``Sequence Listing'' referred to in paragraph (c) 
of this section must also be submitted in computer readable form (CRF) 
in accordance with the requirements of Sec. 1.824. The computer 
readable form must be a

[[Page 179]]

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

[63 FR 29634, June 1, 1998, as amended at 65 FR 54680, Sept. 8, 2000; 69 
FR 18803, Apr. 9, 2004; 70 FR 10489, Mar. 4, 2005]



Sec. 1.822  Symbols and format to be used for nucleotide and/or amino acid sequence data.

    (a) The symbols and format to be used for nucleotide and/or amino 
acid sequence data shall conform to the requirements of paragraphs (b) 
through (e) of this section.
    (b) The code for representing the nucleotide and/or amino acid 
sequence characters shall conform to the code set forth in the tables in 
WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This 
incorporation by reference was approved by the Director of the Federal 
Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of 
ST.25 may be obtained from the World Intellectual Property Organization; 
34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies may also 
be inspected at the National Archives and Records Administration (NARA). 
For information on the availability of this material at NARA, call 202-
741-6030, or go to: http://www.archives.gov/federal--register/

[[Page 180]]

code--of--federal--regulations/ibr--locations.html. No code other than 
that specified in these sections shall be used in nucleotide and amino 
acid sequences. A modified base or modified or unusual amino acid may be 
presented in a given sequence as the corresponding unmodified base or 
amino acid if the modified base or modified or unusual amino acid is one 
of those listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and 
4, and the modification is also set forth in the Feature section. 
Otherwise, each occurrence of a base or amino acid not appearing in WIPO 
Standard ST.25 (1998), Appendix 2, Tables 1 and 3, shall be listed in a 
given sequence as ``n'' or ``Xaa,'' respectively, with further 
information, as appropriate, given in the Feature section, preferably by 
including one or more feature keys listed in WIPO Standard ST.25 (1998), 
Appendix 2, Tables 5 and 6.
    (c) Format representation of nucleotides. (1) A nucleotide sequence 
shall be listed using the lower-case letter for representing the one-
letter code for the nucleotide bases set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 1.
    (2) The bases in a nucleotide sequence (including introns) shall be 
listed in groups of 10 bases except in the coding parts of the sequence. 
Leftover bases, fewer than 10 in number, at the end of noncoding parts 
of a sequence shall be grouped together and separated from adjacent 
groups of 10 or 3 bases by a space.
    (3) The bases in the coding parts of a nucleotide sequence shall be 
listed as triplets (codons). The amino acids corresponding to the codons 
in the coding parts of a nucleotide sequence shall be typed immediately 
below the corresponding codons. Where a codon spans an intron, the amino 
acid symbol shall be typed below the portion of the codon containing two 
nucleotides.
    (4) A nucleotide sequence shall be listed with a maximum of 16 
codons or 60 bases per line, with a space provided between each codon or 
group of 10 bases.
    (5) A nucleotide sequence shall be presented, only by a single 
strand, in the 5 to 3 direction, from left to right.
    (6) The enumeration of nucleotide bases shall start at the first 
base of the sequence with number 1. The enumeration shall be continuous 
through the whole sequence in the direction 5 to 3. The enumeration 
shall be marked in the right margin, next to the line containing the 
one-letter codes for the bases, and giving the number of the last base 
of that line.
    (7) For those nucleotide sequences that are circular in 
configuration, the enumeration method set forth in paragraph (c)(6) of 
this section remains applicable with the exception that the designation 
of the first base of the nucleotide sequence may be made at the option 
of the applicant.
    (d) Representation of amino acids. (1) The amino acids in a protein 
or peptide sequence shall be listed using the three-letter abbreviation 
with the first letter as an upper case character, as in WIPO Standard 
ST.25 (1998), Appendix 2, Table 3.
    (2) A protein or peptide sequence shall be listed with a maximum of 
16 amino acids per line, with a space provided between each amino acid.
    (3) An amino acid sequence shall be presented in the amino to 
carboxy direction, from left to right, and the amino and carboxy groups 
shall not be presented in the sequence.
    (4) The enumeration of amino acids may start at the first amino acid 
of the first mature protein, with the number 1. When presented, the 
amino acids preceding the mature protein, e.g., pre-sequences, pro-
sequences, pre-pro-sequences and signal sequences, shall have negative 
numbers, counting backwards starting with the amino acid next to number 
1. Otherwise, the enumeration of amino acids shall start at the first 
amino acid at the amino terminal as number 1. It shall be marked below 
the sequence every 5 amino acids. The enumeration method for amino acid 
sequences that is set forth in this section remains applicable for amino 
acid sequences that are circular in configuration, with the exception 
that the designation of the first amino acid of the sequence may be made 
at the option of the applicant.
    (5) An amino acid sequence that contains internal terminator symbols 
(e.g., ``Ter'', ``*'', or ``.'', etc.) may not be

[[Page 181]]

represented as a single amino acid sequence, but shall be presented as 
separate amino acid sequences.
    (e) A sequence with a gap or gaps shall be presented as a plurality 
of separate sequences, with separate sequence identifiers, with the 
number of separate sequences being equal in number to the number of 
continuous strings of sequence data. A sequence that is made up of one 
or more noncontiguous segments of a larger sequence or segments from 
different sequences shall be presented as a separate sequence.

[63 FR 29635, June 1, 1998, as amended at 69 FR 18803, Apr. 9, 2004; 70 
FR 10489, Mar. 4, 2005]



Sec. 1.823  Requirements for nucleotide and/or amino acid sequences as part of the application.

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

----------------------------------------------------------------------------------------------------------------
                                                                                      Mandatory (M) or optional
    Numeric identifier            Definition              Comments and format                   (O).
----------------------------------------------------------------------------------------------------------------
<110..........  Applicant...............  Preferably max. of 10 names;   M.
                                                      one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
<120..........  Title of Invention......  .............................  M.
<130..........  File Reference..........  Personal file reference......  M when filed prior to
                                                                                     assignment of appl. number.
<140..........  Current Application       Specify as: US 07/999,999 or   M, if available.
                            Number.                   PCT/US96/99999.
<141..........  Current Filing Date.....  Specify as: yyyy-mm-dd.......  M, if available.
<150..........  Prior Application Number  Specify as: US 07/999,999 or   M, if applicable include
                                                      PCT/US96/99999.                priority documents under 35
                                                                                     USC 119 and 120.
<151..........  Prior Application Filing  Specify as: yyyy-mm-dd.......  M, if applicable.
                            Date.
<160..........  Number of SEQ ID NOs....  Count includes total number    M.
                                                      of SEQ ID NOs.
<170..........  Software................  Name of software used to       O.
                                                      create the Sequence Listing.

[[Page 182]]

 
<210..........  SEQ ID NO::....  Response shall be an integer   M.
                                                      representing the SEQ ID NO
                                                      shown.
<211..........  Length..................  Respond with an integer        M.
                                                      expressing the number of
                                                      bases or amino acid residues.
<212..........  Type....................  Whether presented sequence     M.
                                                      molecule is DNA, RNA, or PRT
                                                      (protein). If a nucleotide
                                                      sequence contains both DNA
                                                      and RNA fragments, the type
                                                      shall be ``DNA.'' In
                                                      addition, the combined DNA/
                                                      RNA molecule shall be
                                                      further described in the
                                                      <220 to <223 feature section.
<213..........  Organism................  Scientific name, i.e. Genus/   M
                                                      species, Unknown or
                                                      Artificial Sequence. In
                                                      addition, the ``Unknown'' or
                                                      ``Artificial Sequence''
                                                      organisms shall be further
                                                      described in the <220 to <223
                                                      feature section.
<220..........  Feature.................  Leave blank after <220. <221-223       conditions: if ``n,''
                                                      provide for a description of   ``Xaa,'' or a modified or
                                                      points of biological           unusual L-amino acid or
                                                      significance in the            modified base was used in a
                                                      sequence..                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown''; if molecule is
                                                                                     combined DNA/RNA''
<221..........  Name/Key................  Provide appropriate            M, under the following
                                                      identifier for feature,        conditions: if ``n,''
                                                      preferably from WIPO           ``Xaa,'' or a modified or
                                                      Standard ST.25 (1998),         unusual L-amino acid or
                                                      Appendix 2, Tables 5 and 6.    modified base was used in a
                                                                                     sequence.
<222..........  Location................  Specify location within        M, under the following
                                                      sequence; where appropriate    conditions: if ``n,''
                                                      state number of first and      ``Xaa,'' or a modified or
                                                      last bases/amino acids in      unusual L-amino acid or
                                                      feature.                       modified base was used in a
                                                                                     sequence.
<223..........  Other Information.......  Other relevant information;    M, under the following
                                                      four lines maximum.            conditions: if ``n,''
                                                                                     ``Xaa,'' or a modified or
                                                                                     unusual L-amino acid or
                                                                                     modified base was used in a
                                                                                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown''; if molecule is
                                                                                     combined DNA/RNA.
<300..........  Publication Information.  Leave blank after <300.
<301..........  Authors.................  Preferably max of ten named    O.
                                                      authors of publication;
                                                      specify one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
<302..........  Title...................  .............................  O.
<303..........  Journal.................  .............................  O.
<304..........  Volume..................  .............................  O.
<305..........  Issue...................  .............................  O.
<306..........  Pages...................  .............................  O.
<307..........  Date....................  Journal date on which data     O.
                                                      published; specify as yyyy-
                                                      mm-dd, MMM-yyyy or Season-
                                                      yyyy.
<308..........  Database Accession        Accession number assigned by   O.
                            Number.                   database including database
                                                      name.
<309..........  Database Entry Date.....  Date of entry in database;     O.
                                                      specify as yyyy-mm-dd or MMM-
                                                      yyyy.
<310..........  Patent Document Number..  Document number; for patent-   O.
                                                      type citations only. Specify
                                                      as, for example, US 07/
                                                      999,999.
<311..........  Patent Filing Date......  Document filing date, for      O.
                                                      patent-type citations only;
                                                      specify as yyyy-mm-dd.
<312..........  Publication Date........  Document publication date,     O.
                                                      for patent-type citations
                                                      only; specify as yyyy-mm-dd.
<313..........  Relevant Residues.......  FROM (position) TO (position)  O.
<400..........  Sequence................  SEQ ID NO should follow the    M.
                                                      numeric identifier and
                                                      should appear on the line
                                                      preceding the actual
                                                      sequence.
----------------------------------------------------------------------------------------------------------------


[63 FR 29636, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000; 68 
FR 38630, June 30, 2003]

[[Page 183]]



Sec. 1.824  Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.

    (a) The computer readable form required by Sec. 1.821(e) shall meet 
the following requirements:
    (1) The computer readable form shall contain a single ``Sequence 
Listing'' as either a diskette, series of diskettes, or other 
permissible media outlined in paragraph (c) of this section.
    (2) The ``Sequence Listing'' in paragraph (a)(l) of this section 
shall be submitted in American Standard Code for Information Interchange 
(ASCII) text. No other formats shall be allowed.
    (3) The computer readable form may be created by any means, such as 
word processors, nucleotide/amino acid sequence editors' or other custom 
computer programs; however, it shall conform to all requirements 
detailed in this section.
    (4) File compression is acceptable when using diskette media, so 
long as the compressed file is in a self-extracting format that will 
decompress on one of the systems described in paragraph (b) of this 
section.
    (5) Page numbering must not appear within the computer readable form 
version of the ``Sequence Listing'' file.
    (6) All computer readable forms must have a label permanently 
affixed thereto on which has been hand-printed or typed: the name of the 
applicant, the title of the invention, the date on which the data were 
recorded on the computer readable form, the operating system used, a 
reference number, and an application number and filing date, if known. 
If multiple diskettes are submitted, the diskette labels must indicate 
their order (e.g. ``1 of X'').
    (b) Computer readable form submissions must meet these format 
requirements:
    (1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
    (2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or 
Macintosh;
    (3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
    (4) Pagination: Continuous file (no ``hard page break'' codes 
permitted).
    (c) Computer readable form files submitted may be in any of the 
following media:
    (1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage; 
5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
    (2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250 
bits per inch, 9 track; Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (4) Compact disc: Format: ISO 9660 or High Sierra Format.
    (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 
640 Mb.
    (d) Computer readable forms that are submitted to the Office will 
not be returned to the applicant.

[65 FR 54681, Sept. 8, 2000]



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

    (a) Any amendment to a paper copy of the ``Sequence Listing'' (Sec. 
1.821(c)) must be made by the submission of substitute sheets and 
include a statement that the substitute sheets include no new matter. 
Any amendment to a compact disc copy of the ``Sequence Listing'' (Sec. 
1.821(c)) must be made by the submission of a replacement compact disc 
(2 copies) in compliance with Sec. 1.52(e). Amendments must also be 
accompanied by a statement that indicates support for the amendment in 
the application, as filed, and a statement that the replacement compact 
disc includes no new matter.
    (b) Any amendment to the paper or compact disc copy of the 
``Sequence Listing,'' in accordance with paragraph (a) of this section, 
must be accompanied by a substitute copy of the computer readable form 
(Sec. 1.821(e)) including all previously submitted data with the 
amendment incorporated therein, accompanied by a statement that the copy 
in computer readable form is the same as the substitute copy of the 
``Sequence Listing.''
    (c) Any appropriate amendments to the ``Sequence Listing'' in a 
patent; e.g., by reason of reissue or certificate

[[Page 184]]

of correction, must comply with the requirements of paragraphs (a) and 
(b) of this section.
    (d) If, upon receipt, the computer readable form is found to be 
damaged or unreadable, applicant must provide, within such time as set 
by the Director, a substitute copy of the data in computer readable form 
accompanied by a statement that the substitute data is identical to that 
originally filed.

[63 FR 29638, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000]



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

[GRAPHIC] [TIFF OMITTED] TR01JN98.006

[[Page 185]]

[GRAPHIC] [TIFF OMITTED] TR01JN98.007

[[Page 186]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.008


[[Page 187]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.009

[GRAPHIC] [TIFF OMITTED] TR01JN98.010


[63 FR 29639, June 1, 1998]

[[Page 188]]



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

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

                           Prior Art Citations



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

    Citations by the patent owner in accordance with Sec. 1.933 and by 
an inter partes reexamination third party requester under Sec. 1.915 or 
Sec. 1.948 will be entered in the inter partes reexamination file. The 
entry in the patent file of other citations submitted after the date of 
an order for reexamination pursuant to Sec. 1.931 by persons other than 
the patent owner, or the third party requester under either Sec. 1.913 
or Sec. 1.948, will be delayed until the inter partes reexamination 
proceeding has been concluded by the issuance and publication of a 
reexamination certificate. See Sec. 1.502 for processing of prior art 
citations in patent and reexamination files during an ex parte 
reexamination proceeding filed under Sec. 1.510.

[72 FR 18906, Apr. 16, 2007]

         Requirements for Inter Partes Reexamination Proceedings



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

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



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

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



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

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



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

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

[[Page 189]]



Sec. 1.907  Inter partes reexamination prohibited.

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



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

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

[68 FR 71007, Dec. 22, 2003]



Sec. 1.915  Content of request for inter partes reexamination.

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

[[Page 190]]

    (c) If an inter partes request is filed by an attorney or agent 
identifying another party on whose behalf the request is being filed, 
the attorney or agent must have a power of attorney from that party or 
be acting in a representative capacity pursuant to Sec. 1.34.
    (d) If the inter partes request does not include the fee for 
requesting inter partes reexamination required by paragraph (a) of this 
section and meet all the requirements of paragraph (b) of this section, 
then the person identified as requesting inter partes 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 inter partes 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.

[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006; 71 
FR 44223, Aug. 4, 2006; 72 FR 18906, Apr. 16, 2007]



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

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

[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006]



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

    Within three months following the filing date of a request for inter 
partes reexamination under Sec. 1.915, the examiner will consider the 
request and determine whether or not a substantial new question of 
patentability affecting any claim of the patent is raised by the request 
and the prior art citation. The examiner's determination will be based 
on the claims in effect at the time of the determination, will become a 
part of the official file of the patent, and will be mailed to the 
patent owner at the address as provided for in Sec. 1.33(c) and to the 
third party requester. If the examiner determines that no substantial 
new question of patentability is present, the examiner shall refuse the 
request and shall not order inter partes reexamination.

[72 FR 18906, Apr. 16, 2007]



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

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



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

    The third party requester may seek review by a petition to the 
Director underSec. 1.181 within one month of the mailing date of the 
examiner's determination refusing to order inter partes reexamination. 
Any such petition must comply with Sec. 1.181(b). If no petition is 
timely filed or if the decision on petition affirms that no substantial 
new question of patentability has been raised, the determination shall 
be final and nonappealable.

                  Inter Partes Reexamination of Patents



Sec. 1.931  Order for inter partes reexamination.

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

          Information Disclosure in Inter Partes Reexamination



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

    (a) Each individual associated with the patent owner in an inter 
partes reexamination proceeding has a duty of

[[Page 191]]

candor and good faith in dealing with the Office, which includes a duty 
to disclose to the Office all information known to that individual to be 
material to patentability in a reexamination proceeding as set forth in 
Sec. 1.555(a) and (b). The duty to disclose all information known to be 
material to patentability in an inter partes reexamination proceeding is 
deemed to be satisfied by filing a paper in compliance with the 
requirements set forth in Sec. 1.555(a) and (b).
    (b) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section, and no 
evaluation will be made by the Office in the reexamination proceeding as 
to compliance with this section. If questions of compliance with this 
section are raised by the patent owner or the third party requester 
during a reexamination proceeding, they will be noted as unresolved 
questions in accordance with Sec. 1.906(c).

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



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

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



Sec. 1.937  Conduct of inter partes reexamination.

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



Sec. 1.939  Unauthorized papers in inter partes reexamination.

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



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

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



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

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



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

    (a) The patent owner will be given at least thirty days to file a 
response to any Office action on the merits of the inter partes 
reexamination.
    (b) Any supplemental response to the Office action will be entered 
only

[[Page 192]]

where the supplemental response is accompanied by a showing of 
sufficient cause why the supplemental response should be entered. The 
showing of sufficient cause must include:
    (1) An explanation of how the requirements of Sec. 1.111(a)(2)(i) 
are satisfied;
    (2) An explanation of why the supplemental response was not 
presented together with the original response to the Office action; and
    (3) A compelling reason to enter the supplemental response.

[72 FR 18906, Apr. 16, 2007]



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

    Each time the patent owner files a response to an Office action on 
the merits pursuant to Sec. 1.945, a third party requester may once 
file written comments within a period of 30 days from the date of 
service of the patent owner's response. These comments shall be limited 
to issues raised by the Office action or the patent owner's response. 
The time for submitting comments by the third party requester may not be 
extended. For the purpose of filing the written comments by the third 
party requester, the comments will be considered as having been received 
in the Office as of the date of deposit specified in the certificate 
under Sec. 1.8.



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

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



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

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



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

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



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

    (a) Upon considering the comments of the patent owner and the third 
party requester subsequent to the Office action closing prosecution in 
an inter partes reexamination, or upon expiration of the time for 
submitting such comments, the examiner shall issue a

[[Page 193]]

Right of Appeal Notice, unless the examiner reopens prosecution and 
issues another Office action on the merits.
    (b) Expedited Right of Appeal Notice: At any time after the patent 
owner's response to the initial Office action on the merits in an inter 
partes reexamination, the patent owner and all third party requesters 
may stipulate that the issues are appropriate for a final action, which 
would include a final rejection and/or a final determination favorable 
to patentability, and may request the issuance of a Right of Appeal 
Notice. The request must have the concurrence of the patent owner and 
all third party requesters present in the proceeding and must identify 
all of the appealable issues and the positions of the patent owner and 
all third party requesters on those issues. If the examiner determines 
that no other issues are present or should be raised, a Right of Appeal 
Notice limited to the identified issues shall be issued.
    (c) The Right of Appeal Notice shall be a final action, which 
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each 
determination not to make a proposed rejection, an identification of the 
status of each claim, and the reasons for decisions favorable to 
patentability and/or the grounds of rejection for each claim. No 
amendment can be made in response to the Right of Appeal Notice. The 
Right of Appeal Notice shall set a one-month time period for either 
party to appeal. If no notice of appeal is filed, prosecution in the 
inter partes reexamination proceeding will be terminated, and the 
Director will proceed to issue and publish a certificate under Sec. 
1.997 in accordance with the Right of Appeal Notice.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]

           Interviews Prohibited in Inter Partes Reexamination



Sec. 1.955  Interviews prohibited in inter partes reexamination proceedings.

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

   Extensions of Time, Terminating of Reexamination Prosecution, and 
            Petitions To Revive in Inter Partes Reexamination



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

    The time for taking any action by a patent owner in an inter partes 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
Any request for such extension must be accompanied by the petition fee 
set forth in Sec. 1.17(g). See Sec. 1.304(a) for extensions of time 
for filing a notice of appeal to the U.S. Court of Appeals for the 
Federal Circuit.

[69 FR 56546, Sept. 21, 2004]



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

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

[[Page 194]]

some matter or compliance with some requirement has been inadvertently 
omitted, an opportunity to explain and supply the omission may be given.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]



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

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

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



Sec. 1.959  Appeal in inter partes reexamination.

    Appeals to the Board of Patent Appeals and Interferences under 35 
U.S.C. 134(c) are conducted according to part 41 of this title.

[69 FR 50002, Aug. 12, 2004]



Sec. Sec. 1.961-1.977  [Reserved]



Sec. 1.979  Return of Jurisdiction from the Board of Patent Appeals and Interferences; termination of appeal proceedings.

    (a) Jurisdiction over an inter partes 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 each appellant's right of appeal or other review, for such further 
action as the condition of the inter partes reexamination proceeding may 
require, to carry into effect the decision of the Board of Patent 
Appeals and Interferences.
    (b) Upon judgment in the appeal before the Board of Patent Appeals 
and Interferences, if no further appeal has been taken (Sec. 1.983), 
the prosecution in the inter partes reexamination proceeding will be 
terminated and the Director will issue and publish a certificate under 
Sec. 1.997 concluding the proceeding. If an appeal to the U.S. Court of 
Appeals for the Federal Circuit has been filed, that appeal is 
considered terminated when the mandate is issued by the Court.

[69 FR 50002, Aug. 12, 2004, as amended at 72 FR 18907, Apr. 16, 2007]



Sec. 1.981  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 inter 
partes reexamination proceeding will not be reopened or reconsidered by 
the primary examiner except under the provisions of Sec. 41.77 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 50002, Aug. 12, 2004]

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



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

    (a) The patent owner or third party requester in an inter partes 
reexamination proceeding who is a party to an appeal to the Board of 
Patent Appeals and Interferences and who is dissatisfied with the 
decision of the Board of Patent Appeals and Interferences may, subject 
to Sec. 41.81, appeal to the U.S. Court of Appeals for the Federal 
Circuit and may be a party to any appeal thereto taken from a 
reexamination decision of the Board of Patent Appeals and Interferences.
    (b) The appellant must take the following steps in such an appeal:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice of

[[Page 195]]

appeal directed to the Director in accordance with Sec. Sec. 1.302 and 
1.304;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice of appeal and pay the fee, as provided for in the 
rules of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice of appeal on every other party in the 
reexamination proceeding in the manner provided in Sec. 1.248.
    (c) If the patent owner has filed a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit, the third party requester may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Board of Patent Appeals and 
Interferences.
    (d) If the third party requester has filed a notice of appeal to the 
U.S. Court of Appeals for the Federal Circuit, the patent owner may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Board of Patent Appeals and 
Interferences.
    (e) A party electing to participate in an appellant's appeal must, 
within fourteen days of service of the appellant's notice of appeal 
under paragraph (b) of this section, or notice of cross appeal under 
paragraphs (c) or (d) of this section, take the following steps:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice directed to the Director electing to participate in the 
appellant's appeal to the U.S. Court of Appeals for the Federal Circuit 
by mail to, or hand service on, the General Counsel as provided in Sec. 
104.2;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice electing to participate in accordance with the rules 
of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice electing to participate on every 
other party in the reexamination proceeding in the manner provided in 
Sec. 1.248.
    (f) Notwithstanding any provision of the rules, in any reexamination 
proceeding commenced prior to November 2, 2002, the third party 
requester is precluded from appealing and cross appealing any decision 
of the Board of Patent Appeals and Interferences to the U.S. Court of 
Appeals for the Federal Circuit, and the third party requester is 
precluded from participating in any appeal taken by the patent owner to 
the U.S. Court of Appeals for the Federal Circuit.

[68 FR 71008, Dec. 22, 2003, as amended at 72 FR 18907, Apr. 16, 2007]

      Concurrent Proceedings Involving Same Patent in Inter Partes 
                              Reexamination



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

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



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

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



Sec. 1.989  Merger of concurrent reexamination proceedings.

    (a) If any reexamination is ordered while a prior inter partes 
reexamination proceeding is pending for the same patent and prosecution 
in the prior inter partes reexamination proceeding has not been 
terminated, a decision may be made to merge the two proceedings or

[[Page 196]]

to suspend one of the two proceedings. Where merger is ordered, the 
merged examination will normally result in the issuance and publication 
of a single reexamination certificate under Sec. 1.997.
    (b) An inter partes reexamination proceeding filed under Sec. 1.913 
which is merged with an ex parte reexamination proceeding filed under 
Sec. 1.510 will result in the merged proceeding being governed by 
Sec. Sec. 1.902 through 1.997, except that the rights of any third 
party requester of the ex parte reexamination shall be governed by 
Sec. Sec. 1.510 through 1.560.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]



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

    If a reissue application and an inter partes reexamination 
proceeding on which an order pursuant to Sec. 1.931 has been mailed are 
pending concurrently on a patent, a decision may be made to merge the 
two proceedings or to suspend one of the two proceedings. Where merger 
of a reissue application and an inter partes reexamination proceeding is 
ordered, the merged proceeding will be conducted in accordance with 
Sec. Sec. 1.171 through 1.179, and the patent owner will be required to 
place and maintain the same claims in the reissue application and the 
inter partes reexamination proceeding during the pendency of the merged 
proceeding. In a merged proceeding the third party requester may 
participate to the extent provided under Sec. Sec. 1.902 through 1.997 
and 41.60 through 41.81, except that such participation shall be limited 
to issues within the scope of inter partes reexamination. The examiner's 
actions and any responses by the patent owner or third party requester 
in a merged proceeding will apply to both the reissue application and 
the inter partes reexamination proceeding and be physically entered into 
both files. Any inter partes reexamination proceeding merged with a 
reissue application shall be concluded by the grant of the reissued 
patent.

[72 FR 18907, Apr. 16, 2007]



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

    If a patent in the process of inter partes reexamination is or 
becomes involved in an interference, the Director may suspend the inter 
partes reexamination or the interference. The Director will not consider 
a request to suspend an interference unless a motion under Sec. 
41.121(a)(3) of this title to suspend the interference has been 
presented to, and denied by, an administrative patent judge and the 
request is filed within ten (10) days of a decision by an administrative 
patent judge denying the motion for suspension or such other time as the 
administrative patent judge may set.

[69 FR 50002, Aug. 12, 2004]



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

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

         Reexamination Certificate in Inter Partes Reexamination



Sec. 1.997  Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.

    (a) To conclude an inter partes reexamination proceeding, the 
Director will issue and publish an inter partes reexamination 
certificate in accordance with 35 U.S.C. 316 setting forth the results 
of the inter partes reexamination proceeding and the content of the 
patent following the inter partes reexamination proceeding.
    (b) A certificate will be issued and published in each patent in 
which an inter partes reexamination proceeding has been ordered under 
Sec. 1.931. Any

[[Page 197]]

statutory disclaimer filed by the patent owner will be made part of the 
certificate.
    (c) The certificate will be sent to the patent owner at the address 
as provided for in Sec. 1.33(c). A copy of the certificate will also be 
sent to the third party requester of the inter partes reexamination 
proceeding.
    (d) If a certificate has been issued and published which cancels all 
of the claims of the patent, no further Office proceedings will be 
conducted with that patent or any reissue applications or any 
reexamination requests relating thereto.
    (e) If the inter partes reexamination proceeding is terminated by 
the grant of a reissued patent as provided in Sec. 1.991, the reissued 
patent will constitute the reexamination certificate required by this 
section and 35 U.S.C. 316.
    (f) A notice of the issuance of each certificate under this section 
will be published in the Official Gazette.

[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]



PART 2_RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




    Editorial Note: Part 2 is placed in the separate grouping of parts 
pertaining to trademarks regulations.



PART 3_ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE--Table of Contents




Sec.
3.1 Definitions.

                    Documents Eligible for Recording

3.11 Documents which will be recorded.
3.16 Assignability of trademarks prior to filing of an allegation of 
          use.

                       Requirements for Recording

3.21 Identification of patents and patent applications.
3.24 Requirements for documents and cover sheets relating to patents and 
          patent applications.
3.25 Recording requirements for trademark applications and 
          registrations.
3.26 English language requirement.
3.27 Mailing address for submitting documents to be recorded.
3.28 Requests for recording.

                        Cover Sheet Requirements

3.31 Cover sheet content.
3.34 Correction of cover sheet errors.

                                  Fees

3.41 Recording fees.

                      Date and Effect of Recording

3.51 Recording date.
3.54 Effect of recording.
3.56 Conditional assignments.
3.58 Governmental registers.

                         Domestic Representative

3.61 Domestic representative.

                        Action Taken by Assignee

3.71 Prosecution by assignee.
3.73 Establishing right of assignee to take action.

                          Issuance to Assignee

3.81 Issue of patent to assignee.
3.85 Issue of registration to assignee.

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).

    Source: 57 FR 29642, July 6, 1992, unless otherwise noted.

    Editorial Note: Nomenclature changes to part 3 appear at 68 FR 
14337, Mar. 25, 2003.



Sec. 3.1  Definitions.

    For purposes of this part, the following definitions shall apply:
    Application means a national application for patent, an 
international patent application that designates the United States of 
America, or an application to register a trademark under section 1 or 44 
of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise 
indicated.
    Assignment means a transfer by a party of all or part of its right, 
title and interest in a patent, patent application, registered mark or a 
mark for which an application to register has been filed.
    Document means a document which a party requests to be recorded in 
the Office pursuant to Sec. 3.11 and which affects some interest in an 
application, patent, or registration.
    Office means the United States Patent and Trademark Office.
    Recorded document means a document which has been recorded in the 
Office pursuant to Sec. 3.11.

[[Page 198]]

    Registration means a trademark registration issued by the Office.

[69 FR 29878, May 26, 2004]

                    Documents Eligible for Recording



Sec. 3.11  Documents which will be recorded.

    (a) Assignments of applications, patents, and registrations, 
accompanied by completed cover sheets as specified in Sec. Sec. 3.28 
and 3.31, will be recorded in the Office. Other documents, accompanied 
by completed cover sheets as specified in Sec. Sec. 3.28 and 3.31, 
affecting title to applications, patents, or registrations, will be 
recorded as provided in this part or at the discretion of the Director.
    (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 
1943-1948 Comp., p. 303) requires the several departments and other 
executive agencies of the Government, including Government-owned or 
Government-controlled corporations, to forward promptly to the Director 
for recording all licenses, assignments, or other interests of the 
Government in or under patents or patent applications. Assignments and 
other documents affecting title to patents or patent applications and 
documents not affecting title to patents or patent applications required 
by Executive Order 9424 to be filed will be recorded as provided in this 
part.
    (c) A joint research agreement or an excerpt of a joint research 
agreement will also be recorded as provided in this part.

[62 FR 53202, Oct. 10, 1997, as amended at 70 FR 1824, Jan. 11, 2005; 70 
FR 54267, Sept. 14, 2005]



Sec. 3.16  Assignability of trademarks prior to filing of an allegation of use.

    Before an allegation of use under either 15 U.S.C. 1051(c) or 15 
U.S.C. 1051(d) is filed, an applicant may only assign an application to 
register a mark under 15 U.S.C. 1051(b) to a successor to the 
applicant's business, or portion of the business to which the mark 
pertains, if that business is ongoing and existing.

[64 FR 48926, Sept. 8, 1999]

                       Requirements for Recording



Sec. 3.21  Identification of patents and patent applications.

    An assignment relating to a patent must identify the patent by the 
patent number. An assignment relating to a national patent application 
must identify the national patent application by the application number 
(consisting of the series code and the serial number, e.g., 07/123,456). 
An assignment relating to an international patent application which 
designates the United States of America must identify the international 
application by the international application number (e.g., PCT/US90/
01234). If an assignment of a patent application filed under Sec. 
1.53(b) is executed concurrently with, or subsequent to, the execution 
of the patent application, but before the patent application is filed, 
it must identify the patent application by the name of each inventor and 
the title of the invention so that there can be no mistake as to the 
patent application intended. If an assignment of a provisional 
application under Sec. 1.53(c) is executed before the provisional 
application is filed, it must identify the provisional application by 
the name of each inventor and the title of the invention so that there 
can be no mistake as to the provisional application intended.

[69 FR 29878, May 26, 2004]



Sec. 3.24  Requirements for documents and cover sheets relating to patents and patent applications.

    (a) For electronic submissions: Either a copy of the original 
document or an extract of the original document may be submitted for 
recording. All documents must be submitted as digitized images in Tagged 
Image File Format (TIFF) or another form as prescribed by the Director. 
When printed to a paper size of either 21.6 by 27.9 cm (8\1/2\ by 11 
inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible 
and a 2.5 cm (one-inch) margin must be present on all sides.
    (b) For paper or facsimile submissions: Either a copy of the 
original document or an extract of the original document must be 
submitted for recording. Only one side of each page may be used. The 
paper size must be either 21.6 by 27.9

[[Page 199]]

cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either 
case, a 2.5 cm (one-inch) margin must be present on all sides. For paper 
submissions, the paper used should be flexible, strong white, non-shiny, 
and durable. The Office will not return recorded documents, so original 
documents must not be submitted for recording.

[69 FR 29879, May 26, 2004]



Sec. 3.25  Recording requirements for trademark applications and registrations.

    (a) Documents affecting title. To record documents affecting title 
to a trademark application or registration, a legible cover sheet (see 
Sec. 3.31) and one of the following must be submitted:
    (1) A copy of the original document;
    (2) A copy of an extract from the document evidencing the effect on 
title; or
    (3) A statement signed by both the party conveying the interest and 
the party receiving the interest explaining how the conveyance affects 
title.
    (b) Name changes. Only a legible cover sheet is required (See Sec. 
3.31).
    (c) All documents. (1) For electronic submissions: All documents 
must be submitted as digitized images in Tagged Image File Format (TIFF) 
or another form as prescribed by the Director. When printed to a paper 
size of either 21.6 by 27.9 cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm 
(DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides.
    (2) For paper or facsimile submissions: All documents should be 
submitted on white and non-shiny paper that is either 8\1/2\ by 11 
inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-
inch (2.5 cm) margin on all sides in either case. Only one side of each 
page may be used. The Office will not return recorded documents, so 
original documents should not be submitted for recording.

[69 FR 29879, May 26, 2004]



Sec. 3.26  English language requirement.

    The Office will accept and record non-English language documents 
only if accompanied by an English translation signed by the individual 
making the translation.

[62 FR 53202, Oct. 10, 1997]



Sec. 3.27  Mailing address for submitting documents to be recorded.

    Documents and cover sheets submitted by mail for recordation 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, unless they are filed together with new 
applications.

[69 FR 29879, May 26, 2004]



Sec. 3.28  Requests for recording.

    Each document submitted to the Office for recording must include a 
single cover sheet (as specified in Sec. 3.31) referring either to 
those patent applications and patents, or to those trademark 
applications and registrations, against which the document is to be 
recorded. If a document to be recorded includes interests in, or 
transactions involving, both patents and trademarks, then separate 
patent and trademark cover sheets, each accompanied by a copy of the 
document to be recorded, must be submitted. If a document to be recorded 
is not accompanied by a completed cover sheet, the document and the 
incomplete cover sheet will be returned pursuant to Sec. 3.51 for 
proper completion, in which case the document and a completed cover 
sheet should be resubmitted.

[70 FR 56128, Sept. 26, 2005]

                        Cover Sheet Requirements



Sec. 3.31  Cover sheet content.

    (a) Each patent or trademark cover sheet required by Sec. 3.28 must 
contain:
    (1) The name of the party conveying the interest;
    (2) The name and address of the party receiving the interest;
    (3) A description of the interest conveyed or transaction to be 
recorded;
    (4) Identification of the interests involved:
    (i) For trademark assignments and trademark name changes: Each 
trademark registration number and each trademark application number, if 
known, against which the Office is to record the document. If the 
trademark application number is not known, a

[[Page 200]]

copy of the application or a reproduction of the trademark must be 
submitted, along with an estimate of the date that the Office received 
the application; or
    (ii) For any other document affecting title to a trademark or patent 
application, registration or patent: Each trademark or patent 
application number or each trademark registration number or patent 
against which the document is to be recorded, or an indication that the 
document is filed together with a patent application;
    (5) The name and address of the party to whom correspondence 
concerning the request to record the document should be mailed;
    (6) The date the document was executed;
    (7) The signature of the party submitting the document. For an 
assignment document or name change filed electronically, the person who 
signs the cover sheet must either:
    (i) Place a symbol comprised of letters, numbers, and/or punctuation 
marks between forward slash marks (e.g. /Thomas O'Malley III/) in the 
signature block on the electronic submission; or
    (ii) Sign the cover sheet using some other form of electronic 
signature specified by the Director.
    (b) A cover sheet should not refer to both patents and trademarks, 
since any information, including information about pending patent 
applications, submitted with a request for recordation of a document 
against a trademark application or trademark registration will become 
public record upon recordation.
    (c) Each patent cover sheet required by Sec. 3.28 seeking to record 
a governmental interest as provided by Sec. 3.11(b) must:
    (1) Indicate that the document relates to a Government interest; and
    (2) Indicate, if applicable, that the document to be recorded is not 
a document affecting title (see Sec. 3.41(b)).
    (d) Each trademark cover sheet required by Sec. 3.28 seeking to 
record a document against a trademark application or registration should 
include, in addition to the serial number or registration number of the 
trademark, identification of the trademark or a description of the 
trademark, against which the Office is to record the document.
    (e) Each patent or trademark cover sheet required by Sec. 3.28 
should contain the number of applications, patents or registrations 
identified in the cover sheet and the total fee.
    (f) Each trademark cover sheet should include the citizenship of the 
party conveying the interest and the citizenship of the party receiving 
the interest. In addition, if the party receiving the interest is a 
partnership or joint venture, the cover sheet should set forth the 
names, legal entities, and national citizenship (or the state or country 
of organization) of all general partners or active members that compose 
the partnership or joint venture.
    (g) The cover sheet required by Sec. 3.28 seeking to record a joint 
research agreement or an excerpt of a joint research agreement as 
provided by Sec. 3.11(c) must:
    (1) Identify the document as a ``joint research agreement'' (in the 
space provided for the description of the interest conveyed or 
transaction to be recorded if using an Office-provided form);
    (2) Indicate the name of the owner of the application or patent (in 
the space provided for the name and address of the party receiving the 
interest if using an Office-provided form);
    (3) Indicate the name of each other party to the joint research 
agreement party (in the space provided for the name of the party 
conveying the interest if using an Office-provided form); and
    (4) Indicate the date the joint research agreement was executed.

[57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997; 64 
FR 48927, Sept. 8, 1999; 67 FR 79523, Dec. 30, 2002; 69 FR 29879, May 
26, 2004; 70 FR 1824, Jan. 11, 2005; 70 FR 56128, Sept. 26, 2005]



Sec. 3.34  Correction of cover sheet errors.

    (a) An error in a cover sheet recorded pursuant to Sec. 3.11 will 
be corrected only if:
    (1) The error is apparent when the cover sheet is compared with the 
recorded document to which it pertains, and
    (2) A corrected cover sheet is filed for recordation.

[[Page 201]]

    (b) The corrected cover sheet must be accompanied by a copy of the 
document originally submitted for recording and by the recording fee as 
set forth in Sec. 3.41.

[69 FR 29879, May 26, 2004]

                                  Fees



Sec. 3.41  Recording fees.

    (a) All requests to record documents must be accompanied by the 
appropriate fee. Except as provided in paragraph (b) of this section, a 
fee is required for each application, patent and registration against 
which the document is recorded as identified in the cover sheet. The 
recording fee is set in Sec. 1.21(h) of this chapter for patents and in 
Sec. 2.6(b)(6) of this chapter for trademarks.
    (b) No fee is required for each patent application and patent 
against which a document required by Executive Order 9424 is to be filed 
if:
    (1) The document does not affect title and is so identified in the 
cover sheet (see Sec. 3.31(c)(2)); and
    (2) The document and cover sheet are either: Faxed or electronically 
submitted as prescribed by the Director, or mailed to the Office in 
compliance with Sec. 3.27.

[63 FR 52159, Sept. 30, 1998, as amended at 69 FR 29879, May 26, 2004]

                      Date and Effect of Recording



Sec. 3.51  Recording date.

    The date of recording of a document is the date the document meeting 
the requirements for recording set forth in this part is filed in the 
Office. A document which does not comply with the identification 
requirements of Sec. 3.21 will not be recorded. Documents not meeting 
the other requirements for recording, for example, a document submitted 
without a completed cover sheet or without the required fee, will be 
returned for correction to the sender where a correspondence address is 
available. The returned papers, stamped with the original date of 
receipt by the Office, will be accompanied by a letter which will 
indicate that if the returned papers are corrected and resubmitted to 
the Office within the time specified in the letter, the Office will 
consider the original date of filing of the papers as the date of 
recording of the document. The procedure set forth in Sec. 1.8 or Sec. 
1.10 of this chapter may be used for resubmissions of returned papers to 
have the benefit of the date of deposit in the United States Postal 
Service. If the returned papers are not corrected and resubmitted within 
the specified period, the date of filing of the corrected papers will be 
considered to be the date of recording of the document. The specified 
period to resubmit the returned papers will not be extended.

[62 FR 53203, Oct. 10, 1997]



Sec. 3.54  Effect of recording.

    The recording of a document pursuant to Sec. 3.11 is not a 
determination by the Office of the validity of the document or the 
effect that document has on the title to an application, a patent, or a 
registration. When necessary, the Office will determine what effect a 
document has, including whether a party has the authority to take an 
action in a matter pending before the Office.



Sec. 3.56  Conditional assignments.

    Assignments which are made conditional on the performance of certain 
acts or events, such as the payment of money or other condition 
subsequent, if recorded in the Office, are regarded as absolute 
assignments for Office purposes until cancelled with the written consent 
of all parties or by the decree of a court of competent jurisdiction. 
The Office does not determine whether such conditions have been 
fulfilled.



Sec. 3.58  Governmental registers.

    (a) The Office will maintain a Departmental Register to record 
governmental interests required to be recorded by Executive Order 9424. 
This Departmental Register will not be open to public inspection but 
will be available for examination and inspection by duly authorized 
representatives of the Government. Governmental interests recorded on 
the Departmental Register will be available for public inspection as 
provided in Sec. 1.12.

[[Page 202]]

    (b) The Office will maintain a Secret Register to record 
governmental interests required to be recorded by Executive Order 9424. 
Any instrument to be recorded will be placed on this Secret Register at 
the request of the department or agency submitting the same. No 
information will be given concerning any instrument in such record or 
register, and no examination or inspection thereof or of the index 
thereto will be permitted, except on the written authority of the head 
of the department or agency which submitted the instrument and requested 
secrecy, and the approval of such authority by the Director. No 
instrument or record other than the one specified may be examined, and 
the examination must take place in the presence of a designated official 
of the Patent and Trademark Office. When the department or agency which 
submitted an instrument no longer requires secrecy with respect to that 
instrument, it must be recorded anew in the Departmental Register.

[62 FR 53203, Oct. 10, 1997]

                         Domestic Representative



Sec. 3.61  Domestic representative.

    If the assignee of a patent, patent application, trademark 
application or trademark registration is not domiciled in the United 
States, the assignee may designate a domestic representative in a 
document filed in the United States Patent and Trademark Office. The 
designation should state the name and address of a person residing 
within the United States on whom may be served process or notice of 
proceedings affecting the application, patent or registration or rights 
thereunder.

[67 FR 79522, Dec. 30, 2002]

                        Action Taken by Assignee



Sec. 3.71  Prosecution by assignee.

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

[65 FR 54682, Sept. 8, 2000]



Sec. 3.73  Establishing right of assignee to take action.

    (a) The inventor is presumed to be the owner of a patent 
application, and any patent that may issue therefrom, unless there is an 
assignment. The original applicant is presumed to be the owner of a 
trademark application or registration, unless there is an assignment.
    (b)(1) In order to request or take action in a patent or trademark 
matter, the assignee must establish its ownership of the patent or 
trademark property of paragraph (a) of this section to

[[Page 203]]

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

[65 FR 54682, Sept. 8, 2000, as amended at 70 FR 56128, Sept. 26, 2005]

                          Issuance to Assignee



Sec. 3.81  Issue of patent to assignee.

    (a) With payment of the issue fee: An application may issue in the 
name of the assignee consistent with the application's assignment where 
a request for such issuance is submitted with payment of the issue fee, 
provided the assignment has been previously recorded in the Office. If 
the assignment has not been previously recorded, the request must state 
that the document has been filed for recordation as set forth in Sec. 
3.11.
    (b) After payment of the issue fee: Any request for issuance of an 
application in the name of the assignee submitted after the date of 
payment of the issue fee, and any request for a patent to be corrected 
to state the name of the assignee, must state that the assignment was 
submitted for recordation as set forth in Sec. 3.11 before issuance of 
the patent, and must include a request for a certificate of correction 
under Sec. 1.323 of this chapter (accompanied by the fee set forth in 
Sec. 1.20(a)) and the processing fee set forth in Sec. 1.17(i) of this 
chapter.
    (c) Partial assignees. (1) If one or more assignee, together with 
one or more inventor, holds the entire right, title, and interest in the 
application, the patent may issue in the names of the assignee and the 
inventor.
    (2) If multiple assignees hold the entire right, title, and interest 
to the exclusion of all the inventors, the patent may issue in the names 
of the multiple assignees.

[69 FR 29879, May 26, 2004]



Sec. 3.85  Issue of registration to assignee.

    The certificate of registration may be issued to the assignee of the 
applicant, or in a new name of the applicant, provided that the party 
files a written request in the trademark application by the time the 
application is being prepared for issuance of the certificate of 
registration, and the appropriate document is recorded in the Office. If 
the assignment or name change

[[Page 204]]

document has not been recorded in the Office, then the written request 
must state that the document has been filed for recordation. The address 
of the assignee must be made of record in the application file.



PART 4_COMPLAINTS REGARDING INVENTION PROMOTERS--Table of Contents




Sec.
4.1 Complaints regarding invention promoters.
4.2 Definitions.
4.3 Submitting complaints.
4.4 Invention promoter reply.
4.5 Notice by publication.
4.6 Attorneys and Agents.

    Authority: 35 U.S.C. 2(b)(2) and 297.

    Source: 65 FR 3129, Jan. 20, 2000, unless otherwise noted.



Sec. 4.1  Complaints regarding invention promoters.

    These regulations govern the Patent and Trademark Office's (Office) 
responsibilities under the Inventors' Rights Act of 1999, which can be 
found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to 
provide a forum for the publication of complaints concerning invention 
promoters. The Office will not conduct any independent investigation of 
the invention promoter. Although the Act provides additional civil 
remedies for persons injured by invention promoters, those remedies must 
be pursued by the injured party without the involvement of the Office.



Sec. 4.2  Definitions.

    (a) Invention Promoter means any person, firm, partnership, 
corporation, or other entity who offers to perform or performs invention 
promotion services for, or on behalf of, a customer, and who holds 
itself out through advertising in any mass media as providing such 
services, but does not include--
    (1) Any department or agency of the Federal Government or of a State 
or local government;
    (2) Any nonprofit, charitable, scientific, or educational 
organization qualified under applicable State law or described under 
section 170(b)(1)(A) of the Internal Revenue Code of 1986;
    (3) Any person or entity involved in the evaluation to determine 
commercial potential of, or offering to license or sell, a utility 
patent or a previously filed nonprovisional utility patent application;
    (4) Any party participating in a transaction involving the sale of 
the stock or assets of a business; or
    (5) Any party who directly engages in the business of retail sales 
of products or the distribution of products.
    (b) Customer means any individual who enters into a contract with an 
invention promoter for invention promotion services.
    (c) Contract for Invention Promotion Services means a contract by 
which an invention promoter undertakes invention promotion services for 
a customer.
    (d) Invention Promotion Services means the procurement or attempted 
procurement for a customer of a firm, corporation, or other entity to 
develop and market products or services that include the invention of 
the customer.



Sec. 4.3  Submitting complaints.

    (a) A person may submit a complaint concerning an invention promoter 
with the Office. A person submitting a complaint should understand that 
the complaint may be forwarded to the invention promoter and may become 
publicly available. The Office will not accept any complaint that 
requests that it be kept confidential.
    (b) A complaint must be clearly marked, or otherwise identified, as 
a complaint under these rules. The complaint must include:
    (1) The name and address of the complainant;
    (2) The name and address of the invention promoter;
    (3) The name of the customer;
    (4) The invention promotion services offered or performed by the 
invention promoter;
    (5) The name of the mass media in which the invention promoter 
advertised providing such services;
    (6) An explanation of the relationship between the customer and the 
invention promoter; and
    (7) A signature of the complainant.

[[Page 205]]

    (c) The complaint should fairly summarize the action of the 
invention promoter about which the person complains. Additionally, the 
complaint should include names and addresses of persons believed to be 
associated with the invention promoter. Complaints, and any replies, 
must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box 
1450, Alexandria, Virginia 22313-1450.
    (d) Complaints that do not provide the information requested in 
paragraphs (b) and (c) of this section will be returned. If 
complainant's address is not provided, the complaint will be destroyed.
    (e) No originals of documents should be included with the complaint.
    (f) A complaint can be withdrawn by the complainant or the named 
customer at any time prior to its publication.

[65 FR 3129, Jan. 20, 2000, as amended at 68 FR 14338, Mar. 25, 2003]



Sec. 4.4  Invention promoter reply.

    (a) If a submission appears to meet the requirements of a complaint, 
the invention promoter named in the complaint will be notified of the 
complaint and given 30 days to respond. The invention promoter's 
response will be made available to the public along with the complaint. 
If the invention promoter fails to reply within the 30-day time period 
set by the Office, the complaint will be made available to the public. 
Replies sent after the complaint is made available to the public will 
also be published.
    (b) A response must be clearly marked, or otherwise identified, as a 
response by an invention promoter. The response must contain:
    (1) The name and address of the invention promoter;
    (2) A reference to a complaint forwarded to the invention promoter 
or a complaint previously published;
    (3) The name of the individual signing the response; and
    (4) The title or authority of the individual signing the response.



Sec. 4.5  Notice by publication.

    If the copy of the complaint that is mailed to the invention 
promoter is returned undelivered, then the USPTO will primarily publish 
a Notice of Complaint Received on the USPTO's Internet home page at 
http://www.uspto.gov. Only where the USPTO's Web site is unavailable for 
publication will the USPTO publish the Notice of Complaint in the 
Official Gazette and/or the Federal Register. The invention promoter 
will be given 30 days from such notice to submit a reply to the Notice 
of Complaint. If the USPTO does not receive a reply from the invention 
promoter within 30 days, the complaint alone will become publicly 
available.

[68 FR 9553, Feb. 28, 2003]



Sec. 4.6  Attorneys and Agents.

    Complaints against registered patent attorneys and agents will not 
be treated under this section, unless a complaint fairly demonstrates 
that invention promotion services are involved. Persons having 
complaints about registered patent attorneys or agents should contact 
the Office of Enrollment and Discipline at Mail Stop OED, Director of 
the United States Patent and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450, and the attorney discipline section of the 
attorney's state licensing bar if an attorney is involved.

[68 FR 14338, Mar. 25, 2003]



PART 5_SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents




                             Secrecy Orders

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

                Licenses for Foreign Exporting and Filing

5.11 License for filing in a foreign country an application on an 
          invention made in the United States or for transmitting 
          international application.
5.12 Petition for license.
5.13 Petition for license; no corresponding application.

[[Page 206]]

5.14 Petition for license; corresponding U.S. application.
5.15 Scope of license.
5.16-5.17 [Reserved]
5.18 Arms, ammunition, and implements of war.
5.19 Export of technical data.
5.20 Export of technical data relating to sensitive nuclear technology.
5.25 Petition for retroactive license.

                                 General

5.31-5.33 [Reserved]

    Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the Patent 
Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 
1567; the Arms Export Control Act, as amended, 22 U.S.C. 2571 et seq.; 
the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; the 
Nuclear Non Proliferation Act of 1978; 22 U.S.C. 3201 et seq.; and the 
delegations in the regulations under these Acts to the Director (15 CFR 
734.3(b)(1)(v), 22 CFR 125.04, and 10 CFR 810.7), as well as the Export 
Administration Act of 1979, 50 U.S.C. app. 2401 et seq.; the 
International Emergency Economic Powers Act, 50 U.S.C. 1701 et seq.; 
E.O. 12938, 59 FR 59099, 3 CFR, 1994 Comp., p. 950; E.O. 13222, 66 FR 
44025, 3 CFR, 2001 Comp., p. 783; Notice of August 2, 2005, 70 FR 45273 
(August 5, 2005).

    Source: 24 FR 10381, Dec. 22, 1959, unless otherwise noted.

    Editorial Note: Nomenclature changes to part 5 appear at 68 FR 
14338, Mar. 25, 2003.

                             Secrecy Orders



Sec. 5.1  Applications and correspondence involving national security.

    (a) All correspondence in connection with this part, including 
petitions, should be addressed to: Mail Stop L&R, Commissioner for 
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    (b) Application as used in this part includes provisional 
applications filed under 35 U.S.C. 111(b) (Sec. 1.9(a)(2) of this 
chapter), nonprovisional applications filed under 35 U.S.C. 111(a) or 
entering the national stage from an international application after 
compliance with 35 U.S.C. 371 (Sec. 1.9(a)(3)), or international 
applications filed under the Patent Cooperation Treaty prior to entering 
the national stage of processing (Sec. 1.9(b)).
    (c) Patent applications and documents relating thereto that are 
national security classified (see Sec. 1.9(i) of this chapter) and 
contain authorized national security markings (e.g., ``Confidential,'' 
``Secret'' or ``Top Secret'') are accepted by the Office. National 
security classified documents filed in the Office must be either hand-
carried to Licensing and Review or mailed to the Office in compliance 
with paragraph (a) of this section.
    (d) The applicant in a national security classified patent 
application must obtain a secrecy order pursuant to Sec. 5.2(a). If a 
national security classified patent application is filed without a 
notification pursuant to Sec. 5.2(a), the Office will set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant to Sec. 
5.2(a), or the applicant must submit evidence of a good faith effort to 
obtain a secrecy order pursuant to Sec. 5.2(a) from the relevant 
department or agency in order to prevent abandonment of the application. 
If evidence of a good faith effort to obtain a secrecy order pursuant to 
Sec. 5.2(a) from the relevant department or agency is submitted by the 
applicant within the time period set by the Office, but the application 
has not been declassified or placed under a secrecy order pursuant to 
Sec. 5.2(a), the Office will again set a time period within which 
either the application must be declassified, or the application must be 
placed under a secrecy order pursuant to Sec. 5.2(a), or the applicant 
must submit evidence of a good faith effort to again obtain a secrecy 
order pursuant to Sec. 5.2(a) from the relevant department or agency in 
order to prevent abandonment of the application.
    (e) An application will not be published under Sec. 1.211 of this 
chapter or allowed under Sec. 1.311 of this chapter if publication or 
disclosure of the application would be detrimental to national security. 
An application under national security review will not be published at 
least until six months from its filing date or three months from the 
date the application was referred to a defense agency, whichever is 
later. A national security classified patent application will not be 
published under Sec. 1.211 of this chapter or allowed under Sec. 1.311 
of this chapter until the application is declassified and any secrecy 
order under Sec. 5.2(a) has been rescinded.

[[Page 207]]

    (f) Applications on inventions made outside the United States and on 
inventions in which a U.S. Government defense agency has a property 
interest will not be made available to defense agencies.

[65 FR 54682, Sept. 8, 2000, as amended at 65 FR 57060, Sept. 20, 2000; 
68 FR 14338, Mar. 25, 2003; 69 FR 29880, May 26, 2004]



Sec. 5.2  Secrecy order.

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

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



Sec. 5.3  Prosecution of application under secrecy orders; withholding patent.

    Unless specifically ordered otherwise, action on the application by 
the Office and prosecution by the applicant will proceed during the time 
an application is under secrecy order to the point indicated in this 
section:
    (a) National applications under secrecy order which come to a final 
rejection must be appealed or otherwise prosecuted to avoid abandonment. 
Appeals in such cases must be completed by the applicant but unless 
otherwise specifically ordered by the Commissioner for Patents will not 
be set for hearing until the secrecy order is removed.
    (b) An interference will not be declared involving a national 
application under secrecy order. An applicant whose application is under 
secrecy order may suggest an interference (Sec. 41.202(a) of this 
title), but the Office will not act on the request while the application 
remains under a secrecy order.
    (c) When the national application is found to be in condition for 
allowance except for the secrecy order the applicant and the agency 
which caused the secrecy order to be issued will be notified. This 
notice (which is not a notice of allowance under Sec. 1.311 of this 
chapter) does not require reply by the applicant and places the national 
application in a condition of suspension until the secrecy order is 
removed. When the secrecy order is removed the Patent and Trademark 
Office will issue a notice of allowance under Sec. 1.311 of this 
chapter, or take such other action as may then be warranted.
    (d) International applications under secrecy order will not be 
mailed, delivered or otherwise transmitted to the international 
authorities or the applicant. International applications under secrecy 
order will be processed up to the point where, if it were not for the 
secrecy order, record and search copies would be transmitted to the 
international authorities or the applicant.

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

[43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988; 62 
FR 53203, Oct. 10, 1997; 69 FR 50002, Aug. 12, 2004]



Sec. 5.4  Petition for rescission of secrecy order.

    (a) A petition for rescission or removal of a secrecy order may be 
filed by, or on behalf of, any principal affected thereby. Such petition 
may be in letter form, and it must be in duplicate.
    (b) The petition must recite any and all facts that purport to 
render the order ineffectual or futile if this is the

[[Page 208]]

basis of the petition. When prior publications or patents are alleged 
the petition must give complete data as to such publications or patents 
and should be accompanied by copies thereof.
    (c) The petition must identify any contract between the Government 
and any of the principals, under which the subject matter of the 
application or any significant part thereof was developed, or to which 
the subject matter is otherwise related. If there is no such contract, 
the petition must so state.
    (d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 
181, from a secrecy order cannot be taken until after a petition for 
rescission of the secrecy order has been made and denied. Appeal must be 
taken within sixty days from the date of the denial, and the party 
appealing, as well as the department or agency which caused the order to 
be issued, will be notified of the time and place of hearing.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204, Oct. 10, 1997]



Sec. 5.5  Permit to disclose or modification of secrecy order.

    (a) Consent to disclosure, or to the filing of an application 
abroad, as provided in 35 U.S.C. 182, shall be made by a ``permit'' or 
``modification'' of the secrecy order.
    (b) Petitions for a permit or modification must fully recite the 
reason or purpose for the proposed disclosure. Where any proposed 
disclosee is known to be cleared by a defense agency to receive 
classified information, adequate explanation of such clearance should be 
made in the petition including the name of the agency or department 
granting the clearance and the date and degree thereof. The petition 
must be filed in duplicate.
    (c) In a petition for modification of a secrecy order to permit 
filing abroad, all countries in which it is proposed to file must be 
made known, as well as all attorneys, agents and others to whom the 
material will be consigned prior to being lodged in the foreign patent 
office. The petition should include a statement vouching for the loyalty 
and integrity of the proposed disclosees and where their clearance 
status in this or the foreign country is known all details should be 
given.
    (d) Consent to the disclosure of subject matter from one application 
under secrecy order may be deemed to be consent to the disclosure of 
common subject matter in other applications under secrecy order so long 
as not taken out of context in a manner disclosing material beyond the 
modification granted in the first application.
    (e) Organizations requiring consent for disclosure of applications 
under secrecy order to persons or organizations in connection with 
repeated routine operation may petition for such consent in the form of 
a general permit. To be successful such petitions must ordinarily recite 
the security clearance status of the disclosees as sufficient for the 
highest classification of material that may be involved.

[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204 Oct. 10, 1997]



Sec. Sec. 5.6-5.8  [Reserved]

                Licenses for Foreign Exporting and Filing



Sec. 5.11  License for filing in a foreign country an application on an invention made in the United States or for transmitting an international application.

    (a) A license from the Commissioner for Patents under 35 U.S.C. 184 
is required before filing any application for patent including any 
modifications, amendments, or supplements thereto or divisions thereof 
or for the registration of a utility model, industrial design, or model, 
in a foreign patent office or any foreign patent agency or any 
international agency other than the United States Receiving Office, if 
the invention was made in the United States and:
    (1) An application on the invention has been on file in the United 
States less than six months prior to the date on which the application 
is to be filed, or
    (2) No application on the invention has been filed in the United 
States.
    (b) The license from the Commissioner for Patents referred to in 
paragraph (a) would also authorize the export of technical data abroad 
for purposes relating to the preparation, filing

[[Page 209]]

or possible filing and prosecution of a foreign patent application 
without separately complying with the regulations contained in 22 CFR 
parts 121 through 130 (International Traffic in Arms Regulations of the 
Department of State), 15 CFR parts 730-774 (Regulations of the Bureau of 
Industry and Security, Department of Commerce) and 10 CFR part 810 
(Foreign Atomic Energy Programs of the Department of Energy).
    (c) Where technical data in the form of a patent application, or in 
any form, are being exported for purposes related to the preparation, 
filing or possible filing and prosecution of a foreign patent 
application, without the license from the Commissioner for Patents 
referred to in paragraphs (a) or (b) of this section, or on an invention 
not made in the United States, the export regulations contained in 22 
CFR parts 120 through 130 (International Traffic in Arms Regulations of 
the Department of State), 15 CFR parts 730-774 (Bureau of Industry and 
Security Regulations, Department of Commerce) and 10 CFR part 810 
(Assistance to Foreign Atomic Energy Activities Regulations of the 
Department of Energy) must be complied with unless a license is not 
required because a United States application was on file at the time of 
export for at least six months without a secrecy order under Sec. 5.2 
being placed thereon. The term ``exported'' means export as it is 
defined in 22 CFR part 120, 15 CFR part 734 and activities covered by 10 
CFR part 810.
    (d) If a secrecy order has been issued under Sec. 5.2, an 
application cannot be exported to, or filed in, a foreign country 
(including an international agency in a foreign country), except in 
accordance with Sec. 5.5.
    (e) No license pursuant to paragraph (a) of this section is 
required:
    (1) If the invention was not made in the United States, or
    (2) If the corresponding United States application is not subject to 
a secrecy order under Sec. 5.2, and was filed at least six months prior 
to the date on which the application is filed in a foreign country, or
    (3) For subsequent modifications, amendments and supplements 
containing additional subject matter to, or divisions of, a foreign 
patent application if:
    (i) A license is not, or was not, required under paragraph (e)(2) of 
this section for the foreign patent application;
    (ii) The corresponding United States application was not required to 
be made available for inspection under 35 U.S.C. 181; and
    (iii) Such modifications, amendments, and supplements do not, or did 
not, change the general nature of the invention in a manner which would 
require any corresponding United States application to be or have been 
available for inspection under 35 U.S.C. 181.
    (f) A license pursuant to paragraph (a) of this section can be 
revoked at any time upon written notification by the Patent and 
Trademark Office. An authorization to file a foreign patent application 
resulting from the passage of six months from the date of filing of a 
United States patent application may be revoked by the imposition of a 
secrecy order.

[49 FR 13461, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 
FR 53204, Oct. 10, 1997; 70 FR 56129, Sept. 26, 2005]



Sec. 5.12  Petition for license.

    (a) Filing of an application for patent for inventions made in the 
United States will be considered to include a petition for license under 
35 U.S.C. 184 for the subject matter of the application. The filing 
receipt will indicate if a license is granted. If the initial automatic 
petition is not granted, a subsequent petition may be filed under 
paragraph (b) of this section.
    (b) A petition for license must include the fee set forth in Sec. 
1.17(g) of this chapter, the petitioner's address, and full instructions 
for delivery of the requested license when it is to be delivered to 
other than the petitioner. The petition should be presented in letter 
form.

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

[48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62 
FR 53204, Oct. 10, 1997; 65 FR 54683, Sept. 8, 2000; 69 FR 56546, Sept. 
21, 2004]

[[Page 210]]



Sec. 5.13  Petition for license; no corresponding application.

    If no corresponding national or international application has been 
filed in the United States, the petition for license under Sec. 5.12(b) 
must also be accompanied by a legible copy of the material upon which a 
license is desired. This copy will be retained as a measure of the 
license granted.

[62 FR 53204, Oct. 10, 1997]



Sec. 5.14  Petition for license; corresponding U.S. application.

    (a) When there is a corresponding United States application on file, 
a petition for license under Sec. 5.12(b) must also identify this 
application by application number, filing date, inventor, and title, but 
a copy of the material upon which the license is desired is not 
required. The subject matter licensed will be measured by the disclosure 
of the United States application.
    (b) Two or more United States applications should not be referred to 
in the same petition for license unless they are to be combined in the 
foreign or international application, in which event the petition should 
so state and the identification of each United States application should 
be in separate paragraphs.
    (c) When the application to be filed or exported abroad contains 
matter not disclosed in the United States application or applications, 
including the case where the combining of two or more United States 
applications introduces subject matter not disclosed in any of them, a 
copy of the application as it is to be filed in the foreign country or 
international application which is to be transmitted to a foreign 
international or national agency for filing in the Receiving Office, 
must be furnished with the petition. If however, all new matter in the 
foreign or international application to be filed is readily 
identifiable, the new matter may be submitted in detail and the 
remainder by reference to the pertinent United States application or 
applications.

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

[43 FR 20471, May 11, 1978, as amended at 49 FR 13462, Apr. 4, 1984; 62 
FR 53204, Oct. 10, 1997]



Sec. 5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Sec. Sec. 
5.12 through 5.14, which were not required to be made available for 
inspection by defense agencies under 35 U.S.C. 181, will be eligible for 
a license of the scope provided in this paragraph. This license permits 
subsequent modifications, amendments, and supplements containing 
additional subject matter to, or divisions of, a foreign patent 
application, if such changes to the application do not alter the general 
nature of the invention in a manner which would require the United 
States application to have been made available for inspection under 35 
U.S.C. 181. Grant of this license authorizing the export and filing of 
an application in a foreign country or the transmitting of an 
international application to any foreign patent agency or international 
patent agency when the subject matter of the foreign or international 
application corresponds to that of the domestic application. This 
license includes authority:
    (1) To export and file all duplicate and formal application papers 
in foreign countries or with international agencies;
    (2) To make amendments, modifications, and supplements, including 
divisions, changes or supporting matter consisting of the illustration, 
exemplification, comparison, or explanation of subject matter disclosed 
in the application; and
    (3) To take any action in the prosecution of the foreign or 
international application provided that the adding of subject matter or 
taking of any action under paragraphs (a)(1) or (2) of this section does 
not change the general nature of the invention disclosed in the 
application in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 by including 
technical data pertaining to:
    (i) Defense services or articles designated in the United States 
Munitions List applicable at the time of foreign filing, the unlicensed 
exportation of which is prohibited pursuant to the Arms Export Control 
Act, as amended, and 22 CFR parts 121 through 130; or

[[Page 211]]

    (ii) Restricted Data, sensitive nuclear technology or technology 
useful in the production or utilization of special nuclear material or 
atomic energy, dissemination of which is subject to restrictions of the 
Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation 
Act of 1978, as implemented by the regulations for Unclassified 
Activities in Foreign Atomic Energy Programs, 10 CFR part 810, in effect 
at the time of foreign filing.
    (b) Applications or other materials which were required to be made 
available for inspection under 35 U.S.C. 181 will be eligible for a 
license of the scope provided in this paragraph. Grant of this license 
authorizes the export and filing of an application in a foreign country 
or the transmitting of an international application to any foreign 
patent agency or international patent agency. Further, this license 
includes authority to export and file all duplicate and formal papers in 
foreign countries or with foreign and international patent agencies and 
to make amendments, modifications, and supplements to, file divisions 
of, and take any action in the prosecution of the foreign or 
international application, provided subject matter additional to that 
covered by the license is not involved.
    (c) A license granted under Sec. 5.12(b) pursuant to Sec. 5.13 or 
Sec. 5.14 shall have the scope indicated in paragraph (a) of this 
section, if it is so specified in the license. A petition, accompanied 
by the required fee (Sec. 1.17(g) of this chapter), may also be filed 
to change a license having the scope indicated in paragraph (b) of this 
section to a license having the scope indicated in paragraph (a) of this 
section. No such petition will be granted if the copy of the material 
filed pursuant to Sec. 5.13 or any corresponding United States 
application was required to be made available for inspection under 35 
U.S.C. 181. The change in the scope of a license will be effective as of 
the date of the grant of the petition.
    (d) In those cases in which no license is required to file the 
foreign application or transmit the international application, no 
license is required to file papers in connection with the prosecution of 
the foreign or international application not involving the disclosure of 
additional subject matter.
    (e) Any paper filed abroad or transmitted to an international patent 
agency following the filing of a foreign or international application 
which changes the general nature of the subject matter disclosed at the 
time of filing in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 or which involves 
the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii) 
of this section must be separately licensed in the same manner as a 
foreign or international application. Further, if no license has been 
granted under Sec. 5.12(a) on filing the corresponding United States 
application, any paper filed abroad or with an international patent 
agency which involves the disclosure of additional subject matter must 
be licensed in the same manner as a foreign or international 
application.
    (f) Licenses separately granted in connection with two or more 
United States applications may be exercised by combining or dividing the 
disclosures, as desired, provided:
    (1) Subject matter which changes the general nature of the subject 
matter disclosed at the time of filing or which involves subject matter 
listed in paragraph (a)(3) (i) or (ii) of this section is not 
introduced, and
    (2) In the case where at least one of the licenses was obtained 
under Sec. 5.12(b), additional subject matter is not introduced.
    (g) A license does not apply to acts done before the license was 
granted. See Sec. 5.25 for petitions for retroactive licenses.

[49 FR 13462, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 
FR 53204, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004]



Sec. Sec. 5.16-5.17  [Reserved]



Sec. 5.18  Arms, ammunition, and implements of war.

    (a) The exportation of technical data relating to arms, ammunition, 
and implements of war generally is subject to the International Traffic 
in Arms Regulations of the Department of State (22 CFR parts 120 through 
130); the articles designated as arms, ammunitions, and

[[Page 212]]

implements of war are enumerated in the U.S. Munitions List (22 CFR part 
121). However, if a patent applicant complies with regulations issued by 
the Commissioner for Patents under 35 U.S.C. 184, no separate approval 
from the Department of State is required unless the applicant seeks to 
export technical data exceeding that used to support a patent 
application in a foreign country. This exemption from Department of 
State regulations is applicable regardless of whether a license from the 
Commissioner for Patents is required by the provisions of Sec. Sec. 
5.11 and 5.12 (22 CFR part 125).
    (b) When a patent application containing subject matter on the 
Munitions List (22 CFR part 121) is subject to a secrecy order under 
Sec. 5.2 and a petition is made under Sec. 5.5 for a modification of 
the secrecy order to permit filing abroad, a separate request to the 
Department of State for authority to export classified information is 
not required (22 CFR part 125).

[62 FR 53205, Oct. 10, 1997]



Sec. 5.19  Export of technical data.

    (a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the 
Department of Commerce, a license is not required in any case to file a 
patent application or part thereof in a foreign country if the foreign 
filing is in accordance with the regulations (Sec. Sec. 5.11 through 
5.25) of the U.S. Patent and Trademark Office.
    (b) An export license is not required for data contained in a patent 
application prepared wholly from foreign-origin technical data where 
such application is being sent to the foreign inventor to be executed 
and returned to the United States for subsequent filing in the U.S. 
Patent and Trademark Office (15 CFR 734.10(a)).

[70 FR 56129, Sept. 26, 2005]



Sec. 5.20  Export of technical data relating to sensitive nuclear technology.

    Under regulations (10 CFR 810.7) established by the United States 
Department of Energy, an application filed in accordance with the 
regulations (Sec. Sec. 5.11 through 5.25) of the Patent and Trademark 
Office and eligible for foreign filing under 35 U.S.C. 184, is 
considered to be information available to the public in published form 
and a generally authorized activity for the purposes of the Department 
of Energy regulations.

[62 FR 53205, Oct. 10, 1997]



Sec. 5.25  Petition for retroactive license.

    (a) A petition for a retroactive license under 35 U.S.C. 184 shall 
be presented in accordance with Sec. 5.13 or Sec. 5.14(a), and shall 
include:
    (1) A listing of each of the foreign countries in which the 
unlicensed patent application material was filed,
    (2) The dates on which the material was filed in each country,
    (3) A verified statement (oath or declaration) containing:
    (i) An averment that the subject matter in question was not under a 
secrecy order at the time it was filed aboard, and that it is not 
currently under a secrecy order,
    (ii) A showing that the license has been diligently sought after 
discovery of the proscribed foreign filing, and
    (iii) An explanation of why the material was filed abroad through 
error and without deceptive intent without the required license under 
Sec. 5.11 first having been obtained, and
    (4) The required fee (Sec. 1.17(g) of this chapter).
    (b) The explanation in paragraph (a) of this section must include a 
showing of facts rather than a mere allegation of action through error 
and without deceptive intent. The showing of facts as to the nature of 
the error should include statements by those persons having personal 
knowledge of the acts regarding filing in a foreign country and should 
be accompanied by copies of any necessary supporting documents such as 
letters of transmittal or instructions for filing. The acts which are 
alleged to constitute error without deceptive intent should cover the 
period leading up to and including each of the proscribed foreign 
filings.
    (c) If a petition for a retroactive license is denied, a time period 
of not less than thirty days shall be set, during which the petition may 
be renewed. Failure to renew the petition within the set time period 
will result in a final denial of the petition. A final denial of a 
petition stands unless a petition is filed under Sec. 1.181 within two 
months of

[[Page 213]]

the date of the denial. If the petition for a retroactive license is 
denied with respect to the invention of a pending application and no 
petition under Sec. 1.181 has been filed, a final rejection of the 
application under 35 U.S.C. 185 will be made.

[49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62 
FR 53206, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004]

                                 General



Sec. Sec. 5.31-5.33  [Reserved]



PART 6_CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT--Table of Contents




    Editorial Note: Part 6 is placed in the separate grouping of parts 
pertaining to trademarks regulations.



PART 7_RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS--Table of Contents




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

[[Page 215]]

                    INDEX I_RULES RELATING TO PATENTS

  Editorial Note: This listing is provided for informational purposes 
only. It is compiled and kept current by the Department of Commerce. 
This index is updated as of July 1, 2008.

                                                                 Section

                                 A

Abandoned applications:
Abandonment by failure to prosecute................................1.135
Abandonment during interference.............................41.127(b)(1)
Abandonment for failure to pay issue fee...........................1.137
Destruction after 20 yrs. unless marked for preservation.........1.14(b)
Express abandonment................................................1.138
Processing and retention fee.....................................1.21(l)
Referred to in issued patents.......................................1.14
Revival of.........................................................1.137
When to public inspection...........................................1.14
Abandonment of application. (See Abandoned applications)
Abstract of the disclosure.(content, physical requirements).........1.72
Separate sheet required for commencement of......................1.72(b)
Arrangement in overall application...........................1.77, 1.163
Access to pending applications (limited)............................1.14
Action by applicant..........................................1.111-1.138
Address, Correspondence, only one recognized by Office...........1.33(c)
Address for notice to Commissioner of appeal to Fed. Cir........1.302(c)
Address of Solicitor's Office..................................1.1(a)(3)
Address of the Patent and Trademark Office...........................1.1
Box CPA.......................................................1.53(d)(9)
Box Interference..................................................1.1(a)
Box M. Fee........................................................1.1(d)
Box Patent Ext....................................................1.1(f)
Box PCT...........................................................1.1(b)
Box Provisional Patent Application................................1.1(i)
Box Reexam........................................................1.1(c)
Administrator or executor, may make application and receive patent
                                                                    1.42
Proof of authority..................................................1.44
Admission to practice. (See Attorneys and agents)
Affidavit (see also Oath in patent application):
After appeal....................................................41.33(d)
In support of application for reissue..............................1.175
To disqualify commonly owned patent as prior art...................1.130
To overcome cited patent or publication............................1.131
Traversing grounds of rejection....................................1.132
Agents. (See Attorneys and agents)
Allowance and issue of patent:
Amendment after allowance..........................................1.312
Deferral of issuance...............................................1.314
Delayed payment of issue fee.......................................1.137
Delivery of patent.................................................1.315
Issuance of patent..........................................1.155, 1.314
Notice of allowance.........................................1.155, 1.311

[[Page 216]]

Patent to issue upon payment of issue fee..........................1.314
Patent to lapse if issue fee is not paid in full...................1.317
Patent withheld for nonpayment of issue fee.................1.155, 1.316
Reasons for.....................................................1.104(e)
Withdrawal from issue..............................................1.313
Amendment:
Adding or substituting claims...............................1.111, 1.121
After appeal.......................................................1.116
After decision on appeal, based on new rejection of Board of 
Patent Appeals and Interferences................................41.50(b)
After final action..........................................1.116, 41.33
After final action (transitional procedures).......................1.129
After notice of allowance..........................................1.312
By patent owner....................................................1.530
Drawings...........................................................1.121
Erasures and insertions............................................1.121
Involving a departure from original invention......................1.121
Manner of making...................................................1.121
May be required....................................................1.121
Not covered by original oath........................................1.67
Numbering of claims................................................1.126
Of amendments......................................................1.121
Of claims...................................................1.111, 1.121
Of disclosure......................................................1.121
Of drawing.........................................................1.121
Of specification...................................................1.121
Paper and writing...................................................1.52
Petition from refusal to admit.....................................1.127
Proposed during interference..............................41.121, 41.208
Provisional application..........................................1.53(c)
Reissue...........................................1.121(b), 1.173, 1.174
Requisites of...........................1.33, 1.111, 1.116, 1.121, 1.125
Right to amend................................1.111, 1.116, 1.121, 1.127
Signature to........................................................1.33
Substitute specification...........................................1.125
Time for...........................................................1.134
To applications in interference...........................41.121, 41.208
To correct inaccuracies or prolixity...............................1.121
To correspond to original drawing or specification.................1.121
To reissues.................................................1.173, 1.174
To save from abandonment...........................................1.135
Amino Acid Sequences. (See Nucleotide and/or Amino A Acid Sequences)
Appeal to Board of Patent Appeals and Interferences:
Action following decision..........................................41.54
Affidavits after appeal.........................................41.33(d)
Brief..............................................................41.37
Decision by Board...............................................41.50(b)
Examiner's answer..................................................41.39
Fees...............................................................41.20
Hearing of.........................................................41.47
New grounds for rejecting a claim...............................41.50(b)
Notice of appeal...................................................41.31
Rehearing..........................................................41.52
Reopening after decision...........................................1.198
Reply brief........................................................41.41
Statement of grounds for rejecting, by Board of Patent Appeals and 
Interferences......................................................41.50
Appeal to Court of Appeals for the Federal Circuit:

[[Page 217]]

Fee provided by rules of court.....................................1.301
From Board of Patent Appeals and Interferences.....................1.301
Notice and reasons of appeal.......................................1.302
Time for....................................................1.302, 1.304
Applicant for patent...........................................1.41-1.48
Change..............................................................1.48
Deceased or insane inventor...................................1.42, 1.43
Executor or administrator...........................................1.42
Informed of application number......................................1.54
Joint changed to sole...............................................1.48
Letters for, sent to attorney or agent..............................1.33
May be represented by an attorney or agent..........................1.31
Personal attendance unnecessary......................................1.2
Required to conduct business with decorum and courtesy...............1.3
Required to report assistance received..............................1.33
Sole changed to joint...............................................1.48
Sole changed to another sole........................................1.48
Application for patent (see also Abandoned applications, Claims, 
Drawing, Examination of application Reissues, Provisional applications, 
Specification):
Accepted and filed for examination only when complete...............1.53
Access to...........................................................1.14
Acknowledgement of filing...........................................1.54
Alteration after execution..........................................1.67
Alteration before execution.........................................1.52
Arrangement...........................................1.77, 1.154, 1.163
Continuation or division, reexecution not required...............1.53(b)
Continued Prosecution Application (CPA)..........................1.53(d)
Copies of, furnished to applicants..................................1.59
Cross-references of related applications............................1.78
Deceased or insane inventor...................................1.42, 1.43
Declaration.........................................................1.68
Duty of disclosure..................................................1.56
Elements of, order and arrangement of.................1.77, 1.154, 1.163
Execution in blank..................................................1.67
Filed by other than inventor............................1.42, 1.43, 1.47
Filed apparently without all pages of specification, petition 
asserting all pages were filed...................................1.53(e)
Filed apparently without any drawing, petition asserting drawing 
was filed, or was not necessary, or adding drawing along with new 
oath or declaration and seeking new filing date..................1.53(e)
Filed apparently without all figures of drawing:
Petition asserting all figures of drawing were filed.............1.53(e)
Petition and filing of missing figures with new oath or 
declaration seeking new filing date................................1.182
Filing date.........................................................1.53
Foreign language oath or declaration................................1.69
Formulas and tables.................................................1.58
General requisites..................................................1.51
Identification required in letters concerning........................1.5
Incomplete papers not accepted and filed for examination............1.53
Interlineations, etc., to be indicated..............................1.52
Language, paper, writing, margin....................................1.52
Later filing of oath and filing fee..............................1.53(f)
Must be made by actual inventor, with exceptions..............1.41, 1.46
Names of all inventors required...............................1.41, 1.53
Non-English language................................................1.52
Nonprovisional filed without at least one claim, filing of 
petition to convert to a provisional application..............1.53(c)(2)

[[Page 218]]

Owned by Government................................................1.103
Papers having filing date not to be returned........................1.59
Parts filed separately..............................................1.54
Parts of application desirably filed together.......................1.54
Parts of complete application.......................................1.51
Processing fees.....................................................1.17
Provisional application............................1.9, 1.51(c), 1.53(c)
Relating to atomic energy........................................1.14(c)
Reservation for future application not permitted....................1.79
Retention fee....................................................1.53(f)
Secrecy order....................................................5.1-5.6
Secret while pending................................................1.14
Serial number and filing date.......................................1.54
Tables and formulas.................................................1.58
To contain but one invention unless connected......................1.141
To whom made........................................................1.51
Two or more by same party with conflicting claims................1.78(b)
Application number.......................................1.5(a), 1.53(a)
Arbitration award filing...........................................1.335
Arbitration in interference.......................................41.126
Assignee:
Correspondence held with assignee of entire interest..........3.71, 3.73
If of entire interest, patent may issue to him................1.46, 3.81
If of undivided part interest, correspondence will be held with 
inventor............................................................1.33
If of undivided part interest, must assent to application for 
reissue of patent...........................................1.171, 1.172
If of undivided part interest, patent may issue jointly.......1.46, 3.81
May conduct prosecution of application........................3.71, 3.73
May take action in interference.....................................41.9
Taking of action in a patent matter before the Office by the 
Assignee, Assignee must establish its ownership of the patent 
application or patent involved to the satisfaction of the 
Commissioner.....................................................3.73(b)
Assignments and recording:
Abstracts of title, fee for......................................1.19(b)
Conditional assignments.............................................3.56
Date of receipt is date of record...................................3.51
Fees.......................................................1.21(h), 3.41
Cover Sheet required..........................................3.28, 3.31
Correction of Cover Sheet errors....................................3.34
Effect of recording.................................................3.54
Requirements for recording.....................................3.21-3.41
If recorded before payment of issue fee, patent may issue to 
assignee............................................................3.81
Must be recorded in Patent and Trademark Office to issue patent to 
assignee............................................................3.81
Orders for copies of................................................1.12
Patent may issue to assignee........................................3.81
Recording of assignments............................................3.11
Records open to public inspection...................................1.12
Must identify patent or application.................................3.21
What will be accepted for recording.................................3.11
Atomic energy applications reported to Department of Energy.........1.14
Attorneys and agents:
Acting in a representative capacity...........................1.33, 1.34
Assignment will not operate as a revocation of power................1.36
Associate...........................................................1.34
Certificate of good standing.....................................1.21(a)

[[Page 219]]

Fee on admission.................................................1.21(a)
General powers not recognized.......................................1.34
Office cannot aid in selection of...................................1.31
Personal interviews with examiners.................................1.133
Power of attorney or authorization of agent.........................1.34
Representative capacity.......................................1.33, 1.34
Required to conduct business with decorum and courtesy...............1.3
Revocation of power.................................................1.36
Withdrawal of.......................................................1.36
Authorization of agents. (See Attorneys and agents)
Award in arbitration...............................................1.335

                                 B

Balance in deposit account..........................................1.25
Basic filing fee....................................................1.16
Benefit of earlier application......................................1.78
Bill in equity. (See Civil action)
Biological material. (See Deposit of Biological material)
Board of Patent Appeals and Interferences. (See Appeal to Board of 
Patent Appeals and Interferences, Interferences)
Box CPA.......................................................1.53(d)(9)
Box PCT...........................................................1.1(b)
Box Reexam........................................................1.1(c)
Briefs:
In petitions to Commissioner.......................................1.181
On appeal to Board of Patent Appeals and Interferences.............41.37
Business to be conducted with decorum and courtesy...................1.3
Business to be transacted in writing.................................1.2

                                 C

Certificate of correction...................................1.322, 1.323
Fees................................................................1.20
Mistakes not corrected.............................................1.325
Certificate of mailing (as first class mail) or transmission.........1.8
Certificate of mailing by ``Express Mail'' no longer required, 
effective December 2, 1996..........................................1.10
Certificate, Reexamination.........................................1.570
Certified copies of records, papers, etc............................1.13
Fee for certification............................................1.19(b)
Chemical and mathematical formulas and tables.......................1.58
Citation of prior art in patent....................................1.501
Citation of references..........................................1.104(d)
Civil action................................................1.303, 1.304
Claims (see also Examination of applications):
Amendment of.......................................................1.121
Conflicting, same applicant or owner................................1.78
Date of invention of...............................................1.110
Dependent...........................................................1.75
Design patent......................................................1.153
May be in dependent form............................................1.75
More than one permitted.............................................1.75
Multiple dependent..................................................1.75
Must conform to invention and specification.........................1.75
Notice of rejection of.............................................1.104
Numbering of.......................................................1.126
Part of complete application........................................1.51
Plant patent.......................................................1.164

[[Page 220]]

Rejection of....................................................1.104(c)
Required............................................................1.75
Separate Sheet required for commencement of claim(s).............1.52(b)
Twice or finally rejected before appeal.........................41.31(a)
Color drawing.................................................1.84(a)(2)
Commissioner of Patents and Trademarks (see also Petition to 
Commissioner):
Address of...........................................................1.1
All communications to Patent and Trademark Office to be addressed 
to...................................................................1.1
Cases finally decided by Board reopened only by....................1.198
Initiates reexamination............................................1.520
Reissue in divisions referred to...................................1.177
Return of papers in violation of rule on decorum and courtesy........1.3
Common Ownership, statement by assignee may be required..........1.78(c)
Complaints against examiners, how presented..........................1.3
Composition of matter, specimens of ingredients may be required.....1.93
Computer program listings...........................................1.96
Concurrent office proceedings......................................1.565
Conduct of reexamination proceedings...............................1.550
Conflicting claims, same applicant or owner in two or more 
applications........................................................1.78
Continuing application for invention disclosed and claimed in 
prior application................................................1.53(b)
Continued Prosecution Application (CPA)..........................1.53(d)
Copies of patents, records, etc.........................1.11, 1.12, 1.13
Copies of records, fees....................................1.19(b), 1.59
Copyright notice in specification................................1.71(d)
Copyright notice in drawings.....................................1.84(s)
Correction, certificate of..................................1.322, 1.323
Correction of inventorship..........................................1.48
Correspondence:
Address, only one recognized.....................................1.33(c)
Addresses for non-trademark correspondence...........................1.1
Business with the Office to be transacted by.........................1.2
Discourteous communications returned.................................1.3
Double, with different parties in interest not allowed..............1.33
Facsimile transmissions...........................................1.6(d)
Held with attorney or agent.........................................1.33
Identification of application or patent in letter relating to........1.5
May be held exclusively with assignee of entire interest............3.81
Nature of............................................................1.4
Patent owners in reexamination...................................1.33(c)
Receipt of letters and papers........................................1.6
Resumed with principal, if power or authorization is revoked........1.36
Rules for conducting in general..................................1.1-1.8
Secrecy, License to Export or File in Foreign Countries..............5.1
Separate letter for each subject of inquiry..........................1.4
Signature requirements............................................1.4(d)
When no attorney or agent...........................................1.33
With attorney or agent after power or authorization is filed........1.33
Coupons sold by the Office..........................................1.24
Court of Appeals for the Federal Circuit, appeal to. (See Appeal to 
Court of Appeals for the Federal Circuit)
CPA (Continued Prosecution Application)..........................1.53(d)

                                 D

Date of invention of subject matter of individual claims...........1.110

[[Page 221]]

Day for taking any action or paying any fee falling on Saturday, 
Sunday, or Federal holiday...........................................1.7
Death or insanity of inventor.................................1.42, 1.43
Decision on appeal by the Board of Patent Appeals and 
Interferences......................................................41.50
Action following decision..........................................41.54
Declaration (See also Oath in patent application).
Foreign language....................................................1.69
In lieu of oath.....................................................1.68
In patent application...............................................1.68
Definitions:
Independent inventor.................................................1.9
National and international applications..............................1.9
Nonprofit organization...............................................1.9
Nonprovisional application...........................................1.9
Provisional application..............................................1.9
Service of process.....................................15 C.F.R. Part 15
Small business concern...............................................1.9
Small entity.........................................................1.9
Terms under Patent Cooperation Treaty..............................1.401
Testimony by employees................................15 C.F.R. Part 15a
Delivery of patent.................................................1.315
Deposit accounts....................................................1.25
Fees.............................................................1.21(b)
Deposit of computer program listings................................1.96
Deposit of Biological Material:
Acceptable depository..............................................1.803
Biological material................................................1.801
Examination procedures.............................................1.809
Furnishing of samples..............................................1.808
Need or Opportunity to make a deposit..............................1.802
Replacement or supplemental deposit................................1.805
Term of deposit....................................................1.806
Time of making original deposit....................................1.804
Viability of deposit...............................................1.807
Depositions (See also Testimony in interferences):
Certificate of officer to accompany............................41.157(e)
Formalities to be observed in preparing...........................41.157
Person before whom taken..........................................41.157
Description of invention. (See Specification)
Design Patent Applications:
Arrangement of specification.......................................1.154
Claim..............................................................1.153
Drawing............................................................1.152
Filing fee.......................................................1.16(f)
Issue and term.....................................................1.155
Issue fee........................................................1.18(b)
Oath...............................................................1.153
Rules applicable...................................................1.151
Title, description and claim.......................................1.153
Determination of request for reexamination.........................1.515
Disclaimer, statutory:
During interference............................................41.127(b)
Fee..............................................................1.20(d)
Requirements of....................................................1.321
Terminal...........................................................1.321
Disclosure, amendments to not permitted............................1.121
Disclosure document fee..........................................1.21(c)

[[Page 222]]

Discovery in interferences........................................41.150
Division. (See Restriction of application)
Division of patent on reissue......................................1.177
Document supply fees................................................1.19
Drawing:
Amendment of.......................................................1.121
Arrangement of views.............................................1.84(h)
Arrows...........................................................1.84(r)
Character of lines...............................................1.84(l)
Color.........................................................1.84(a)(2)
Content of drawing..................................................1.83
Copyright notice.................................................1.84(s)
Correction.......................................1.84(w), 1.85(c), 1.121
Cost of copies of...................................................1.19
Design application.................................................1.152
Extraneous matter................................................1.83(a)
Figure for Official Gazette......................................1.84(j)
Filed with application..............................................1.81
Hatching and shading.............................................1.84(m)
Holes............................................................1.84(x)
Identification...................................................1.84(c)
If of an improvement, must show connection with old structure....1.83(b)
Inferior or defective drawings will be rejected.....................1.85
Informal drawings...................................................1.85
Ink...........................................................1.84(a)(1)
Lead lines.......................................................1.84(q)
Legends..........................................................1.84(o)
Letters..........................................................1.84(p)
Location of names................................................1.84(c)
Margin...........................................................1.84(g)
Mask work notice.................................................1.84(s)
Must be described in and referred to specification..................1.74
Must show every feature of the invention............................1.83
No return or release.............................................1.85(b)
Numbering of sheets..............................................1.84(t)
Numbering of views...............................................1.84(u)
Numbers..........................................................1.84(p)
Original may be used with application for reissue..................1.174
Original should be retained by applicant.........................1.81(a)
Paper............................................................1.84(e)
Part of application papers.......................................1.52(b)
Photographs......................................................1.84(b)
Plant patent application.....................................1.81, 1.165
Printed and published by the Office when patented...................1.84
Reference characters.......................................1.74, 1.84(p)
Reissue............................................................1.174
Release not permitted............................................1.85(b)
Required by law when necessary for understanding....................1.81
Scale............................................................1.84(k)
Security markings................................................1.84(v)
Shading..........................................................1.84(m)
Size of sheet....................................................1.84(f)
Specific rules relating to preparation of drawings will be 
enforced............................................................1.85
Standards for drawings..............................................1.84
Symbols..........................................................1.84(n)
Views............................................................1.84(h)
When necessary, part of complete application........................1.51
Duty of disclosure...........................................1.56, 1.555

[[Page 223]]

Patent term extension..............................................1.765

                                 E

Election of species................................................1.146
Employee testimony (see Testimony by Office employees)
Establishing small entity status..............................1.27, 1.28
Evidence. (See Testimony in interferences)
Examination of applications:
Advancement of examination.........................................1.102
As to form.........................................................1.104
Citation of references..........................................1.104(d)
Completeness of examiner's action...............................1.104(b)
Examiner's action...............................................1.104(a)
International-type search.......................................1.104(a)
Nature of examination...........................................1.104(a)
Reasons for allowance...........................................1.104(e)
Reexamination after rejection if requested.........................1.111
Reexamination of original claims upon reissue......................1.176
Reissue............................................................1.176
Rejection of claims.............................................1.104(c)
Suspension of......................................................1.103
Examination of papers by attorney or agent not permitted without 
authorization.......................................................1.34
Examiners:
Answers on appeal..................................................41.39
Complaints against...................................................1.3
Interviews with....................................................1.133
Executors.....................................................1.42, 1.44
Exhibits. (See Models and exhibits)
Export of technical data......................................5.19, 5.20
Express abandonment................................................1.138
Express Mail, Addressee Only, USPS..................................1.10
Certificate of mailing by, not required eff. 12/2/96................1.10
Date of Receipt of...................................................1.6
Petition in regard to...............................................1.10
Extension of patent term:
Due to regulatory review period (35 U.S.C. 156):
Applicant for......................................................1.730
Application for....................................................1.740
Calculation of term:
Animal Drug Product................................................1.778
Food or color additive.............................................1.776
Human drug product.................................................1.775
Medical device.....................................................1.777
Veterinary biological product......................................1.779
Certificate........................................................1.780
Conditions for..............................................1.701, 1.720
Determination of eligibility.......................................1.750
Duty of disclosure.................................................1.765
Filing date of application.........................................1.741
Complete application, what constitutes..........................1.741(a)
Review of determination via 1.181...............................1.741(b)
Interim extension..................................................1.760
Multiple applications..............................................1.785
Patents subject to..........................................1.701, 1.710
Withdrawal of application..........................................1.770
Due to prosecution delay (35 U.S.C. 154):

[[Page 224]]

Conditions for..................................................1.701(a)
Appellate review.............................................1.701(a)(3)
Interference proceeding......................................1.701(a)(1)
Secrecy order................................................1.701(a)(2)
Calculation of term:
Appellate Review.............................................1.701(c)(3)
Interference proceeding......................................1.701(c)(1)
Maximum extension...............................................1.701(b)
Reduction of extension..........................................1.701(d)
Secrecy order................................................1.701(c)(2)
Extension of time..................................................1.136
Fees.........................................................1.17(a)-(d)
Interference proceedings............................................41.4
Reexamination proceedings.......................................1.550(c)

                                 F

Facsimile transmissions......................................1.6(d), 1.8
Federal Holiday, defined for 35 USC 21 purposes...................1.9(h)
FEDERAL REGISTER, publication of rules in..........................1.351
Fees and payment of money:
Coupons.............................................................1.24
Deposit account.....................................................1.25
Extension of time................................................1.17(a)
Fee on appeal to the Court of Appeals for the Federal Circuit 
provided by rules of court.........................................1.301
Fees in case of petitions.......................................1.181(d)
Fees payable in advance.............................................1.22
Foreign filing license petition..................................1.17(h)
For international-type search report.............................1.21(e)
Method of payment...................................................1.23
Money by mail at risk of sender.....................................1.23
Money paid by mistake...............................................1.26
Petitions...........................................................1.17
Reexamination request............................................1.20(c)
Refunds.............................................................1.26
Relating to international applications.............................1.445
Schedule of fees and charges...................................1.16-1.21
Files and papers of abandoned applications, disposition.............1.14
Files open to the public............................................1.11
Filing date of application..........................................1.53
Filing fee part of complete application.............................1.51
Filing fees.........................................................1.16
Filing in Post Office....................................1.8(a)(2), 1.10
Filing of interference settlement agreements......................41.205
Final rejection:
Appeal from........................................................1.191
Response to..........................................1.113, 1.116, 1.129
When and how given.................................................1.113
First Class Mail (Priority Mail and Express Mail)..............1.8, 1.10
Foreign application.................................................1.55
License to file................................................5.11-5.25
Foreign country:
Taking oath in......................................................1.66
Taking testimony in.......................................41.156, 41.157
Foreign mask work protection....................................Part 150
Evaluation of request..............................................150.4
Definition.........................................................150.1

[[Page 225]]

Duration of proclamation...........................................150.5
Initiation of evaluation...........................................150.2
Mailing address....................................................150.6
Submission of requests.............................................150.3
Foreign patent rights acquired by government................101.1-101.11
Licensing....................................................102.1-102.6
Formulas and tables in patent applications..........................1.58
Fraud practiced or attempted on Office.....................1.28(d), 1.56

                                 G

Gazette. (See Official Gazette.)
General authorization to charge deposit account.....................1.25
General information and correspondence.....................1.1-1.8, 1.10
Government acquisition of foreign patent rights.................Part 501
Government employee invention...................................Part 501
Guardian of insane person may apply for patent......................1.43

                                 H

Hearings:
Before the Board of Patents Appeals and Interferences..............41.47
Fee for appeal hearing.............................................41.20
In disciplinary proceedings.......................................10.144
Of motions in interferences.......................................41.124
Holiday, time for action expiring on............................1.6, 1.7

                                 I

Identification of application, patent or registration................1.5
Independent inventor:
Definition...........................................................1.9
Status statement....................................................1.27
Information disclosure statement:
At time of filing application.......................................1.51
Content of..........................................................1.98
Not permitted in provisional applications...........................1.51
Reexamination......................................................1.555
To comply with duty of disclosure...................................1.97
Information, Public.................................................1.15
Insane inventor, application by guardian of.........................1.43
Interferences (See also Depositions, Notice, Priority Statement in 
interferences, Testimony in interferences):
Abandonment of the contest.....................................41.127(b)
Access to applications............................................41.109
Action by examiner after interference.............................41.127
Addition of new party by judge....................................41.203
Amendment during..........................................41.121, 41.208
Appeal to the Court of Appeals for the Federal Circuit......1.301, 1.302
Applicant requests................................................41.202
Arbitration.......................................................41.126
Burden of proof................................................41.121(b)
Civil action.......................................................1.303
Concession of priority.........................................41.127(b)
Correspondence.....................................................41.10
Decision on motions...............................................41.125
Declaration of interference.......................................41.203
Definition................................................41.100, 41.201
Disclaimer to avoid interference...............................41.127(b)

[[Page 226]]

Discovery.........................................................41.150
Extensions of time..................................................41.4
Identifying claim from patent.....................................41.202
In what cases declared............................................41.203
Inspection of cases of opposing parties...........................41.109
Interference with a patent........................................41.202
Judgment..........................................................41.127
Junior party fails to overcome filing date of senior party........41.204
Jurisdiction of interference......................................41.103
Manner of service of papers.......................................41.106
Motions...........................................41.121, 41.155, 41.208
Notice and access to applications of opposing parties.............41.109
Notice of basis for relief................................41.120, 41.204
Notice of reexamination, reissue, protest or litigation.............41.8
Notice to file civil action........................................1.303
Oral argument.....................................................41.124
Ownership of applications or patents involved.....................41.206
Petitions...........................................................41.3
Preparation for...................................................41.202
Priority statement................................................41.204
Prosecution by assignee.............................................41.9
Recommendation by Board of Patent Appeals and Interferences.......41.127
Record and exhibits.......................................41.106, 41.154
Records of, when open to public...............................1.11, 41.6
Reissue filed by patentee during..................................41.203
Request by applicant..............................................41.202
Return of unauthorized papers.....................................41.128
Review of decision by civil action.................................1.303
Same party........................................................41.206
Sanctions for failure to comply with rules or order...............41.128
Sanctions for taking and maintaining a frivolous position.........41.128
Secrecy order cases...............................................5.3(b)
Service of papers.................................................41.106
Statement of, from examiner to Board..............................41.202
Status of claims of defeated applicant after interference.........41.127
Statutory disclaimer by patentee during........................41.127(b)
Suggestion of claims for interference.............................41.202
Suspension of ex parte prosecution................................41.103
Testimony copies..................................................41.157
Time period for completion........................................41.200
Times for discovery and taking testimony..........41.150, 41.156, 41.157
Translation of document in foreign language.......................41.154
International application. (See Patent Cooperation Treaty)
International Preliminary Examining Authority......................1.416
Interview summary..................................................1.133
Interviews with examiner....................................1.133, 1.560
Inventor (see also Applicant for patent, Oath in patent application):
Death or insanity of..........................................1.42, 1.43
Refuses to sign application.........................................1.47
To make application.................................................1.41
Unavailable.........................................................1.47
Inventor's certificate priority benefit.............................1.55
Inventorship and date of invention of the subject matter of 
individual claims..................................................1.110
Issue fee...........................................................1.18
Issue of patent. (See Allowance and issue of patent)

[[Page 227]]

                                 J

Joinder of inventions in one application...........................1.141
Joint inventors........................................1.45, 1.47, 1.324
Joint patent to inventor and assignee.........................1.46, 3.81
Jurisdiction:
After decision by Board of Patent Appeals and Interferences........1.197
After notice of allowance..........................................1.312
Of involved files in contested case...............................41.103

                                 L

Lapsed patents..............................................1.137, 1.317
Legal representative of deceased or incapacitated inventor....1.42, 1.43
Legibility of papers which are to become part of the permanent 
Office records...................................................1.52(a)
Letters to the Office. (See Correspondence)
Library service fee..............................................1.19(c)
License for foreign filing.....................................5.11-5.15
Licensing of government owned foreign patents................102.1-102.6
List of U.S. Patents classified in a subclass, cost of...........1.19(d)
Local delivery box rental........................................1.21(d)

                                 M

Maintenance fees.............................................1.20(e)-(i)
Acceptance of delayed payment of...................................1.378
Fee address for....................................................1.363
Review of decision refusing to accept..............................1.377
Submission of......................................................1.366
Time for payment of................................................1.362
Mask work notice in specification................................1.71(d)
Mask work notice on drawing......................................1.84(s)
Mask work protection, foreign...................................Part 150
Microfiche deposit..................................................1.96
Microorganisms. (See Deposit of Biological Material)
Minimum balance in deposit accounts.................................1.25
Misjoinder of inventor.......................................1.48, 1.324
Missing pages when application filed
Petition alleging there were no missing pages....................1.53(e)
Petition with new oath or declaration and later submission of 
missing pages seeking new filing date..............................1.182
Mistake in patent, certificate thereof issued...............1.322, 1.323
Models and exhibits:
Copies of...........................................................1.95
If not claimed within reasonable time, may be disposed of by 
Commissioner........................................................1.94
If on examination model be found necessary request therefor will 
be made.............................................................1.91
In contested cases................................................41.154
May be required..................................................1.91(b)
Model not generally required as part of application or patent.......1.91
Not to be taken from the Office except in custody of sworn 
employee............................................................1.95
Return of...........................................................1.94
Working model may be required....................................1.91(b)
Money. (See Fees and payment of money)
Motions in interference...........................41.121, 41.155, 41.208
To take testimony in foreign country......................41.156, 41.157

[[Page 228]]

                                 N

Name of applicant...................................................1.41
New matter inadmissible in application.............................1.121
New matter inadmissible in reexamination..............1.530(d), 1.552(b)
New matter inadmissible in reissue.................................1.173
Non-English language specification fee...........................1.17(k)
Nonprofit organization:
Definition...........................................................1.9
Status statement....................................................1.27
Notice:
Of allowance of application........................................1.311
Of appeal to the Court of Appeals for the Federal Circuit...1.301, 1.302
Of arbitration award...............................................1.335
Of defective reexamination request..............................1.510(c)
Of interference...........................................41.101, 41.203
Of oral hearings on appeals before Board of Patent Appeals and 
Interference.......................................................41.47
Of rejection of an application..................................1.104(a)
Nucleotide and/or Amino Acid Sequences:
Amendments to......................................................1.825
Disclosure in patent application...................................1.821
Format for sequence data...........................................1.822
Form and format for computer readable form.........................1.824
Replacement of.....................................................1.825
Requirements.......................................................1.823

                                 O

Oath or declaration in patent application:
Apostilles..........................................................1.66
Before whom taken in foreign countries..............................1.66
Before whom taken in the United States..............................1.66
By administrator or executor..................................1.42, 1.63
By guardian of insane.........................................1.43, 1.63
Certificate of Officer administering................................1.66
Continuation-in-part.............................................1.63(e)
Declaration.........................................................1.68
Foreign language....................................................1.69
Identification of specification to which it is directed.............1.63
International application, National Stage..........................1.497
Inventor's Certificate..............................................1.63
Made by inventor..............................................1.41, 1.63
Officers authorized to administer oaths.............................1.66
Part of complete application........................................1.51
Person making.......................................................1.64
Plant patent application...........................................1.162
Requirements of.....................................................1.63
Ribboned to other papers............................................1.66
Sealed..............................................................1.66
Signature to........................................................1.63
Supplemental oath for matter disclosed but not originally claimed, 
or for other noncompliance with 1.63................................1.67
To acknowledge duty of disclosure...................................1.63
When taken abroad to seal all papers................................1.66
Oath or declaration in reissue application.........................1.175
Object of the invention.............................................1.73
Office action time for response....................................1.134
Office fees. (See Fees and payment of money)

[[Page 229]]

Official action, based exclusively upon the written record...........1.2
Official business, should be transacted in writing...................1.2
Official Gazette:
Amendments to rules published in...................................1.351
One view of drawing published in.................................1.84(j)
Reexamination order published in is returned undelivered........1.525(b)
Service of notices in.............................................41.101
Oral statements......................................................1.2
Order to reexamine.................................................1.525

                                 P

Papers (requirements to become part of Office permanent records, 
e.g. legibility, capable of reproduction, etc)......................1.52
Handwritten, no longer permitted.................................1.52(a)
Papers not received on Saturday, Sunday or holidays..................1.6
Patent application (See Application for patent and Provisional patent 
applications)
Patent attorneys and agents. (See Attorneys and agents)
Patent Cooperation Treaty:
Amendments and corrections during international processing.........1.471
Amendments during international preliminary examination............1.485
Applicant for international application............................1.421
Changes in person, name and address, where filed.........1.421(f), 1.472
Conduct of international preliminary examination...................1.484
Definition of terms................................................1.401
Delays in meeting time limits......................................1.468
Demand for international preliminary examination...................1.480
Designation of States..............................................1.432
Entry into national stage..........................................1.491
As a designated office.............................................1.494
As an elected office...............................................1.495
Examination at national stage......................................1.496
Fees:
Designation fees...................................................1.432
Due on filing of international application......................1.431(c)
Failure to pay results in withdrawal of application......1.431(d), 1.432
Filing and processing fees.........................................1.445
International preliminary examining................................1.482
National stage.....................................................1.492
Refunds............................................................1.446
Filing by other than inventor......................................1.425
International application requirements.............................1.431
Abstract...........................................................1.438
Claims.............................................................1.436
Description........................................................1.435
Drawings...........................................................1.437
Physical requirements..............................................1.433
Request............................................................1.434
International Bureau...............................................1.415
International Preliminary Examining Authority......................1.416
Inventor deceased..................................................1.422
Inventor insane or legally incapacitated...........................1.423
Inventors, joint...................................................1.424
National stage examination.........................................1.496
Oath or declaration at national stage..............................1.497
Priority, claim for................................................1.451
Record copy to International Bureau, Transmittal procedures........1.461

[[Page 230]]

Representation by attorney or agent................................1.455
Rule 13............................................................1.475
Time limits for processing applications.....................1.465, 1.468
United States as:
Designated Office...........................................1.414, 1.497
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unity of invention:
Before International Searching Authority....................1.475, 1.476
Before International Preliminary Examining Authority...............1.488
National stage.....................................................1.499
Protest to lack of..........................................1.477, 1.489
Patent policy, government...................................100.1-100.11
Patentee notified of interference.........................41.101, 41.203
Patents (see also Allowance and issue of Patent):
Available for license or sale, publication of notice.............1.21(i)
Certified copies of.................................................1.13
Correction of errors in.......................1.171, 1.322, 1.323, 1.324
Date, duration and form............................................1.137
Delivery of........................................................1.315
Disclaimer.........................................................1.321
Identification required in letters concerning........................1.5
Lapsed, for nonpayment of issue fee................................1.137
Obtainable by civil action.........................................1.303
Price of copies.....................................................1.19
Records of, open to public..........................................1.11
Reissuing of, when defective.................................1.171-1.179
Payment of fees.....................................................1.23
Personal attendance unnecessary......................................1.2
Petition for reissue........................................1.171, 1.172
Petition to Commissioner:
Fees................................................................1.17
For delayed payment of issue fee...................................1.137
For license for foreign filing......................................5.12
For the revival of an abandoned application........................1.137
From formal objections or requirements......................1.113, 1.181
From requirement for restriction............................1.129, 1.144
General requirements...............................................1.181
In interferences....................................................41.3
In reexamination................................................1.515(c)
On refusal of examiner to admit amendment..........................1.127
Questions not specifically provided for............................1.182
Suspension of rules................................................1.183
To exercise supervisory authority..................................1.181
To make special....................................................1.102
Plant patent applications:
Applicant..........................................................1.162
Claim..............................................................1.164
Declaration........................................................1.162
Description........................................................1.162
Drawings...........................................................1.165
Examination........................................................1.167
Fee for copies......................................................1.19
Filing fee.......................................................1.16(g)
Issue fee........................................................1.18(c)
Oath...............................................................1.162
Rules applicable...................................................1.161
Specification......................................................1.163

[[Page 231]]

Specimens..........................................................1.166
Post issuance fees..................................................1.20
Post Office receipt as filing date..................................1.10
Postal emergency or interruption..................................1.6(e)
Power of attorney. (See Attorneys and agents)
Priority statement in interferences:
Contents of.......................................................41.204
Correction of statement on motion.................................41.120
Effect of statement...............................................41.204
Failure to file...................................................41.204
In case of motion to amend interference...........................41.208
May be amended if defective.......................................41.120
Reliance on prior application.....................................41.204
Requirement for...................................................41.204
Service on opposing parties.......................................41.204
When opened to inspection.........................................41.204
Preserved in confidence, applications.........................1.12, 1.14
Exceptions (status, access or copies available).....................1.14
Prior art citation in patent.......................................1.501
Prior Art, disqualification of commonly owned patent as............1.130
Prior art may be made of record in patent file.....................1.501
Prior art statement:
Content of..........................................................1.98
In reexamination...................................................1.555
To comply with duty of disclosure...................................1.97
Prior Invention, affidavit or declaration of, to overcome cited 
patent or publication..............................................1.131
Priority, right of, under treaty or law.............................1.55
Processing and retention fee............................1.21(l), 1.53(f)
Proclamation as to protection of foreign mask works.............Part 150
Production of documents in legal proceedings..........15 C.F.R. Part 15a
Protests to grant of patent........................................1.291
Provisional patent applications:
Claiming the benefit of.......................................1.78(a)(3)
Converting a nonprovisional to a provisional..................1.53(c)(2)
Filing date.........................................................1.53
Filing fee.......................................................1.16(k)
General requisites............................................1.51(b)(2)
Later filing of filing fee and cover sheet.......................1.53(g)
Names of all inventors required............................1.41, 1.53(c)
No right of priority..........................................1.53(c)(2)
No examination...................................................1.53(i)
Papers concerning, must identify provisional applications as such, 
and by application number.........................................1.5(f)
Parts of complete provisional application........................1.51(c)
Processing fees.....................................................1.17
Revival of.........................................................1.137
When abandoned................................................1.53(e)(2)
Public information..................................................1.15
Public use proceedings.............................................1.292
Fee..............................................................1.17(j)
Publication of reexamination certificate........................1.570(f)

                                 R

Reasons for allowance...........................................1.104(e)
Reconsideration of Office action...................................1.112
Recording of assignments. (See Assignments and recording)

[[Page 232]]

Records of the Patent and Trademark Office.....................1.11-1.15
Records used as evidence in interference..........................41.153
Reexamination:
Amendments, manner of making....................................1.121(c)
Announcement in Official Gazette.................................1.11(c)
Appeal to Board......................................1.191, 41.31, 41.61
Appeal to Court of Appeals for the Federal Circuit.................1.301
Certificate........................................................1.570
Civil action.......................................................1.303
Common ownership, statement by assignee may be required..........1.78(c)
Concurrent office proceedings......................................1.565
Conduct of proceedings.............................................1.550
Correspondence address...........................................1.33(c)
Decision of request................................................1.515
Duty of disclosure.................................................1.555
Examiner's action..................................................1.104
Fee..............................................................1.20(c)
Fee charged to deposit account......................................1.25
Fee refund..........................................................1.26
Identification in letter..........................................1.5(d)
Initiated by Commissioner..........................................1.520
Interference.......................................................1.565
Interviews.........................................................1.560
Open to public...................................................1.11(d)
Order..............................................................1.525
Reconsideration....................................................1.112
Refund of fee.......................................................1.26
Reply by requester.................................................1.535
Reply to action....................................................1.111
Request............................................................1.510
Response consideration.............................................1.540
Scope..............................................................1.552
Service............................................................1.248
Statement of patent owner..........................................1.530
Reference characters in drawings...........................1.74, 1.84(p)
References cited on examination.................................1.104(d)
Refund of money paid by mistake.....................................1.26
Register of Government interest in patents.......................7.1-7.7
Rehearing:
Of appeal decisions by Board of Patent Appeals and Interferences 
                                                                   41.52
Request for, time for appeal after action on.......................1.304
Reissues:
Applicants, assignees..............................................1.172
Application for reissue............................................1.171
Application made and sworn to by inventor, if living...............1.172
Amendment to specification.........................................1.173
Declaration........................................................1.175
Drawings...........................................................1.174
Examination of reissue.............................................1.176
Filed during interference.................................41.202, 41.203
Filing during reexamination........................................1.565
Filing fee..........................................................1.16
Filing of announced in Official Gazette..........................1.11(b)
Grounds for and requirements.................................1.171-1.179
Issue fee........................................................1.18(a)
Loss of original patent............................................1.178
Notice of reissue application......................................1.179
Oath...............................................................1.175

[[Page 233]]

Open to public......................................................1.11
Original claims subject to reexamination...........................1.176
Original patent surrendered........................................1.178
Reissue in divisions...............................................1.177
Specification......................................................1.173
Take precedence in order of examination............................1.176
To contain no new matter...........................................1.173
What must accompany application.............................1.171, 1.172
Rejection:
After two rejections appeal may be taken from examiner to Board of 
Appeals.....................................................1.191, 41.31
Applicant will be notified of rejection with reasons and 
references.........................................................1.104
Examiner may rely on admissions by applicant or patent owner, or 
facts within examiner's knowledge...............................1.104(c)
Final..............................................................1.113
Formal objections..................................................1.104
On account of invention shown by others but not claimed, how 
overcome...........................................................1.131
References will be cited........................................1.104(c)
Requisites of notice of............................................1.104
Reply brief........................................................41.41
Reply by applicant or patent owner.................................1.111
Reply by requester.................................................1.535
Representative capacity..........................................1.34(a)
Request for reconsideration........................................1.112
Request for reexamination..........................................1.510
Reservation clauses not permitted...................................1.79
Response time to Office action.....................................1.134
Restriction of application...................................1.141-1.146
Claims to nonelected invention withdrawn...........................1.142
Constructive election..............................................1.145
Petition from requirements for..............................1.129, 1.144
Provisional election...............................................1.143
Reconsideration of requirement.....................................1.143
Requirement for....................................................1.142
Subsequent presentation of claims for different invention..........1.145
Transitional procedures............................................1.129
Retention fees..........................................1.21(l), 1.53(f)
Return of correspondence..........................................1.5(a)
Return of papers having a filing date...............................1.59
Revival of abandoned application...................................1.137
Unavoidable abandonment fee......................................1.17(l)
Unintentional abandonment fee....................................1.17(m)
Revocation of power of attorney or authorization of agent...........1.36
Rules of Practice, amendments to rules will be published...........1.351

                                 S

Saturday, when last day falls on.....................................1.7
Scope of reexamination proceedings.................................1.552
Secrecy order....................................................5.1-5.6
Serial number of application (Obsolete terminology) (see 
Application Number)..........................1.5, 1.53, 1.54(b), 1.62(e)
Service of notices:
For taking testimony..............................................41.157
In contested cases................................................41.101
Of appeal to the Court of Appeals for the Federal Circuit..........1.301
Service of papers..................................................1.248

[[Page 234]]

Service of process.....................................15 C.F.R. Part 15
Acceptance of service of process....................................15.3
Definition..........................................................15.2
Scope and purpose...................................................15.1
Shortened period for response......................................1.134
Signature:
Original required for certain correspondence......................1.4(d)
Copy Acceptable for some correspondence...........................1.4(d)
To amendments, etc..................................................1.33
To express abandonment.............................................1.138
To oath.............................................................1.63
To reissue oath or declaration.....................................1.172
Small business concern:
Definition...........................................................1.9
Status statement....................................................1.27
Small entity:
Definition...........................................................1.9
License to Federal Agency...........................................1.27
Statement...........................................................1.27
Statement in parent application.....................................1.28
Status establishment..........................................1.27, 1.28
Status update.......................................................1.28
Solicitor's address............................................1.1(a)(3)
Species of invention claimed................................1.141, 1.146
Specification (see also Application for patent, Claims):
Abstract............................................................1.72
Amendments to...............................................1.121, 1.125
Arrangement of........................................1.77, 1.154, 1.163
Best mode...........................................................1.71
Claim...............................................................1.75
Contents of....................................................1.71-1.75
Copyright notice.................................................1.71(d)
Cross-references to other applications..............................1.78
Description of the invention........................................1.71
Erasures and insertions must not be made by applicant..............1.121
If defective, reissue to correct.............................1.171-1.179
Mask work notice.................................................1.71(d)
Must conclude with specific and distinct claim......................1.75
Must point out new improvements specifically........................1.71
Must refer by figures to drawings...................................1.74
Must set forth the precise invention................................1.71
Not returned after completion.......................................1.59
Object of the invention.............................................1.73
Order of arrangement in framing.....................................1.77
Paper, writing, margins.............................................1.52
Part of complete application........................................1.51
Reference to drawings...............................................1.74
Requirements of................................................1.71-1.75
Reservation clauses not permitted...................................1.79
Substitute.........................................................1.125
Summary of the invention............................................1.73
Title of the invention..............................................1.72
To be rewritten, if necessary......................................1.125
Specimens. (See Models and exhibits)
Specimens of composition of matter to be furnished when required 
                                                                    1.93
Specimens of plants................................................1.166
Statement of status as small entity.................................1.27
Statutory disclaimer fee.........................................1.20(d)

[[Page 235]]

Statutory invention registrations..................................1.293
Examination of.....................................................1.294
Publication of.....................................................1.297
Review of decision finally refusing to publish.....................1.295
Withdrawal of request for publication of...........................1.296
Sufficient funds in deposit account.................................1.25
Suit in equity. (See Civil action)
Summary of invention................................................1.73
Sunday, when last day falls on.......................................1.7
Supervisory authority, petition to Commissioner to exercise........1.181
Supplemental oath for amendment presenting claims for matter 
disclosed but not originally claimed................................1.67
Surcharge for oath or basic filing fee filed after filing date 
                                                        1.16(e), 1.53(f)
Suspension of action...............................................1.103
Suspension of ex parte prosecution during interference............41.103
Suspension of rules................................................1.183
Symbols for drawings.............................................1.84(n)
Symbols for nucleotide and/or amino acid sequence data.............1.822

                                 T

Tables in patent applications.......................................1.58
Terminal disclaimer................................................1.321
Testimony by Office employees.........................15 C.F.R. Part 15a
Definition..........................................15 C.F.R. Part 15a.2
Policy re demand for testimony or document production.....15 C.F.R. Part 
                                                                   15a.3
Procedures re demand for testimony or document production......15 C.F.R. 
                                                              Part 15a.4
Private litigation..................................15 C.F.R. Part 15a.6
Proceedings involving the United States.............15 C.F.R. Part 15a.7
Requests for confidential documents.................15 C.F.R. Part 15a.7
Scope...............................................15 C.F.R. Part 15a.1
Subpoena of Office employee.........................15 C.F.R. Part 15a.5
Testimony of employees in proceedings involving U.S.......15 C.F.R. Part 
                                                                   15a.8
Testimony in interferences:
Additional time for taking..........................................41.4
Assignment of times for taking....................................41.157
Certification and filing by officer...............................41.157
Copies of.........................................................41.157
Depositions must be filed.........................................41.157
Discovery.........................................................41.150
Effect of errors and irregularities in deposition.........41.155, 41.157
Evidence must comply with rules...................................41.152
Examination of witnesses..........................................41.157
Form of deposition................................................41.157
Formal objections to......................................41.155, 41.157
Formalities in preparing depositions..............................41.157
In foreign countries......................................41.156, 41.157
Manner of taking testimony of witnesses...........................41.157
Notice of examination of witnesses................................41.157
Objections noted in depositions...........................41.155, 41.157
Objections to formal matters..............................41.155, 41.157
Official records and printed publications.................41.153, 41.154
Officer's certificate.............................................41.157
Persons before whom depositions may be taken......................41.157
Service of notice.................................................41.157
Stipulations or agreements concerning.............................41.157
Taken by depositions..............................................41.157

[[Page 236]]

Time for taking...................................................41.157
Time expiring on Saturday, Sunday, or holiday........................1.7
Time for payment of issue fee......................................1.311
Time for response by applicant..............................1.134, 1.136
Time for response by patent owner..................................1.530
Time for response by requester.....................................1.535
Time for response to Office action..........................1.134, 1.136
Time, periods of.....................................................1.7
Timely filing of correspondence................................1.8, 1.10
Title of invention..................................................1.72
Title reports, fee for........................................1.19(b)(4)
Transitional procedures............................................1.129

                                 U

Unavoidable abandonment............................................1.137
Unintentional abandonment..........................................1.137
United States as:
Designated Office...........................................1.414, 1.497
Elected Office.....................................................1.414
International Preliminary Examining Authority......................1.416
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unsigned continuation or divisional application.....................1.53
Use of file of parent application................................1.53(d)

                                 V

Verified statement of small entity status...........................1.27

                                 W

Waiver of secrecy.............................................1.53(d)(6)
Withdrawal from issue..............................................1.313
Withdrawal of attorney or agent.....................................1.36
Withdrawal of request for statutory invention registration.........1.296
Written Description allegedly missing
Petition contesting this allegation..............................1.53(e)
Petition with new oath or declaration and later submission of 
missing specification seeking new filing date....................1.53(e)

[[Page 237]]









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




    Editorial Note: Part 1 is placed in the separate grouping of parts 
pertaining to patents regulations.



TRADEMARKS--Table of Contents






PART 2_RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents




Sec.
2.1 [Reserved]
2.2 Definitions.
2.6 Trademark fees.
2.7 Fastener recordal fees.

         Representation by Attorneys or Other Authorized Persons

2.11 Representation before the Office.
2.12-2.16 [Reserved]
2.17 Recognition for representation.
2.18 Correspondence, with whom held.
2.19 Revocation of power of attorney; withdrawal.

                              Declarations

2.20 Declarations in lieu of oaths.

                      Application for Registration

2.21 Requirements for receiving a filing date.
2.22 Filing requirements for a TEAS Plus application.
2.23 Additional requirements for TEAS Plus application.
2.24 Designation of domestic representative by foreign applicant.
2.24 Designation of representative by foreign applicant.
2.25 Papers not returnable.
2.26 Use of old drawing in new application.
2.27 Pending trademark application index; access to applications.

                         The Written Application

2.31 [Reserved]
2.32 Requirements for a complete application.
2.33 Verified statement.
2.34 Bases for filing.
2.35 Adding, deleting, or substituting bases.
2.36 Identification of prior registrations.
2.37 Description of mark.
2.38 Use by predecessor or by related companies.
2.39 [Reserved]
2.41 Proof of distinctiveness under section 2(f).
2.42 Concurrent use.
2.43 Service mark.
2.44 Collective mark.
2.45 Certification mark.
2.46 Principal Register.
2.47 Supplemental Register.

                                 Drawing

2.51 Drawing required.
2.52 Types of drawings and format for drawings.
2.53 Requirements for drawings filed through the TEAS.
2.54 Requirements for drawings submitted on paper.

                                Specimens

2.56 Specimens.
2.57-2.58 [Reserved]
2.59 Filing substitute specimen(s).

           Examination of Application and Action by Applicants

2.61 Action by examiner.
2.62 Period for response.
2.63 Reexamination.
2.64 Final action.
2.65 Abandonment.
2.66 Revival of abandoned applications.
2.67 Suspension of action by the Patent and Trademark Office.
2.68 Express abandonment (withdrawal) of application.
2.69 Compliance with other laws.

                        Amendment of Application

2.71 Amendments to correct informalities.
2.72 Amendments to description or drawing of the mark.
2.73 Amendment to recite concurrent use.
2.74 Form of amendment.
2.75 Amendment to change application to different register.
2.76 Amendment to allege use.
2.77 Amendments between notice of allowance and statement of use.

                    Publication and Post Publication

2.80 Publication for opposition.
2.81 Post publication.
2.82 Marks on Supplemental Register published only upon registration.
2.83 Conflicting marks.
2.84 Jurisdiction over published applications.

                             Classification

2.85 Classification schedules.
2.86 Application may include multiple classes.

[[Page 238]]

2.87 Dividing an application.

                        Post Notice of Allowance

2.88 Filing statement of use after notice of allowance.
2.89 Extensions of time for filing a statement of use.

              Interferences and Concurrent Use Proceedings

2.91 Declaration of interference.
2.92 Preliminary to interference.
2.93 Institution of interference.
2.94-2.95 [Reserved]
2.96 Issue; burden of proof.
2.97 [Reserved]
2.98 Adding party to interference.
2.99 Application to register as concurrent user.

                               Opposition

2.101 Filing an opposition.
2.102 Extension of time for filing an opposition.
2.104 Contents of opposition.
2.105 Notification to parties of opposition proceeding(s).
2.106 Answer.
2.107 Amendment of pleadings in an opposition proceeding.

                              Cancellation

2.111 Filing petition for cancellation.
2.112 Contents of petition for cancellation.
2.113 Notification to parties of cancellation proceeding.
2.114 Answer.
2.115 Amendment of pleadings in a cancellation proceeding.

                  Procedure in Inter Partes Proceedings

2.116 Federal Rules of Civil Procedure.
2.117 Suspension of proceedings.
2.118 Undelivered Office notices.
2.119 Service and signing of papers.
2.120 Discovery.
2.121 Assignment of times for taking testimony.
2.122 Matters in evidence.
2.123 Trial testimony in inter partes cases.
2.124 Depositions upon written questions.
2.125 Filing and service of testimony.
2.126 Form of submissions to the Trademark Trial and Appeal Board.
2.127 Motions.
2.128 Briefs at final hearing.
2.129 Oral argument; reconsideration.
2.130 New matter suggested by the trademark examining attorney.
2.131 Remand after decision in inter partes proceeding.
2.132 Involuntary dismissal for failure to take testimony.
2.133 Amendment of application or registration during proceedings.
2.134 Surrender or voluntary cancellation of registration.
2.135 Abandonment of application or mark.
2.136 Status of application on termination of proceeding.

                                 Appeals

2.141 Ex parte appeals from the Examiner of Trademarks.
2.142 Time and manner of ex parte appeals.
2.144 Reconsideration of decision on ex parte appeal.
2.145 Appeal to court and civil action.

                  Petitions and Action by the Director

2.146 Petitions to the Director.
2.147 [Reserved]
2.148 Director may suspend certain rules.

                               Certificate

2.151 Certificate.

             Publication of Marks Registered Under 1905 Act

2.153 Publication requirements.
2.154 Publication inOfficial Gazette.
2.155 Notice of publication.
2.156 Not subject to opposition; subject to cancellation.

           Reregistration of Marks Registered Under Prior Acts

2.158 Reregistration of marks registered under Acts of 1881, 1905, and 
          1920.

 Cancellation for Failure To File Affidavit or Declaration During Sixth 
                                  Year

2.160 Affidavit or declaration of continued use or excusable nonuse 
          required to avoid cancellation of registration.
2.161 Requirements for a complete affidavit or declaration of continued 
          use or excusable nonuse.
2.162 Notice to registrant.
2.163 Acknowledgment of receipt of affidavit or declaration.
2.164 Correcting deficiencies in affidavit or declaration.
2.165 Petition to Director to review refusal.
2.166 Affidavit of continued use or excusable nonuse combined with 
          renewal application.

                Affidavit or Declaration Under Section 15

2.167 Affidavit or declaration under section 15.
2.168 Affidavit or declaration under section 15 combined with affidavit 
          or declaration under section 8, or with renewal application.

                 Correction, Disclaimer, Surrender, Etc.

2.171 New certificate on change of ownership.

[[Page 239]]

2.172 Surrender for cancellation.
2.173 Amendment of registration.
2.174 Correction of Office mistake.
2.175 Correction of mistake by registrant.
2.176 Consideration of above matters.

                            Term and Renewal

2.181 Term of original registrations and renewals.
2.182 Time for filing renewal application.
2.183 Requirements for a complete renewal application.
2.184 Refusal of renewal.
2.185 Correcting deficiencies in renewal application.
2.186 Petition to Director to review refusal of renewal.
2.187 [Reserved]

        General Information and Correspondence in Trademark Cases

2.188-2.189 [Reserved]
2.190 Addresses for trademark correspondence with the United States 
          Patent and Trademark Office.
2.191 Business to be transacted in writing.
2.192 Business to be conducted with decorum and courtesy.
2.193 Trademark correspondence and signature requirements.
2.194 Identification of trademark application or registration.
2.195 Receipt of trademark correspondence.
2.196 Times for taking action: Expiration on Saturday, Sunday or Federal 
          holiday.
2.197 Certificate of mailing or transmission.
2.198 Filing of correspondence by ``Express Mail.''

     Trademark Records and Files of the Patent and Trademark Office

2.200 Assignment records open to public inspection.
2.201 Copies and certified copies.

              Fees and Payment of Money in Trademark Cases

2.206 Trademark fees payable in advance.
2.207 Methods of payment.
2.208 Deposit accounts.
2.209 Refunds.

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted.

    Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

    Editorial Note: Nomenclature changes to part 2 appear at 68 FR 
14337, Mar. 25, 2003.



Sec. 2.1  [Reserved]



Sec. 2.2  Definitions.

    (a) The Act as used in this part means the Trademark Act of 1946, 60 
Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.
    (b) Entity as used in this part includes both natural and juristic 
persons.
    (c) Director as used in this chapter, except for part 10, means the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
    (d) Federal holiday within the District of Columbia means any day, 
except Saturdays and Sundays, when the United States Patent and 
Trademark Office is officially closed for business for the entire day.
    (e) The term Office means the United States Patent and Trademark 
Office.
    (f) The acronym TEAS means the Trademark Electronic Application 
System, available online at http://www.uspto.gov.
    (g) The acronym ESTTA means the Electronic System for Trademark 
Trials and Appeals, available at www.uspto.gov.
    (h) The term international application means an application for 
international registration that is filed under the Protocol Relating to 
the Madrid Agreement Concerning the International Registration of Marks.

[54 FR 37588, Sept. 11, 1989, as amended at 68 FR 48289, Aug. 13, 2003; 
68 FR 55762, Sept. 26, 2003]



Sec. 2.6  Trademark fees.

    The Patent and Trademark Office requires the following fees and 
charges:
    (a) Trademark process fees.

(1) Application filing fees.
(i) For filing an application on paper, per class................$375.00
(ii) For filing an application through TEAS, per class...........$325.00
(iii) For filing a TEAS Plus application under Sec. 2.22, per class 
                                                                 $275.00
(iv) Additional processing fee under Sec. Sec. 2.22(b) and 2.23(b), per 
class.............................................................$50.00
(2) For filing an amendment to allege use under section 1(c) of the Act, 
per class........................................................$100.00
(3) For filing a statement of use under section 1(d)(1) of the Act, per 
class............................................................$100.00
(4) For filing a request under section 1(d)(2) of the Act for a six-
month extension of time for filing a statement of use under section 
1(d)(1) of the Act, per class....................................$150.00

[[Page 240]]

(5) For filing an application for renewal of a registration, per class 
                                                                 $400.00
(6) Additional fee for filing a renewal application during the grace 
period, per class................................................$100.00
(7) For filing to publish a mark under section 12(c), per class 
                                                                 $100.00
(8) For issuing a new certificate of registration upon request of 
assignee.........................................................$100.00
(9) For a certificate of correction of registrant's error........$100.00
(10) For filing a disclaimer to a registration...................$100.00
(11) For filing an amendment to a registration...................$100.00
(12) For filing an affidavit under section 8 of the Act, per class 
                                                                 $100.00
(13) For filing an affidavit under Sec. 15 of the Act, per class 
                                                                 $200.00
(14) Additional fee for filing a section 8 affidavit during the grace 
period, per class................................................$100.00
(15) For petitions to the Director...............................$100.00
(16) For filing a petition to cancel, per class..................$300.00
(17) For filing a notice of opposition, per class................$300.00
(18) For ex parte appeal to the Trademark Trial and Appeal Board, per 
class............................................................$100.00
(19) Dividing an application, per new application (file wrapper) created
                                                                 $100.00
(20) For correcting a deficiency in a section 8 affidavit........$100.00
(21) For correcting a deficiency in a renewal application........$100.00

    (b) Trademark service fees.

(1) For printed copy of registered mark, copy only. 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) Certified or uncertified copy of trademark application as filed 
processed within seven calendar days--$15.00
(3) Certified or uncertified copy of a trademark-related file wrapper 
and contents......................................................$50.00

(4) Certified copy of a registered mark, showing title and/or status:

(i) Regular service...............................................$15.00
(ii) Expedited local service......................................$30.00
(5) Certified or uncertified copy of trademark records, per document 
except as otherwise provided in this section......................$25.00
(6) For recording each trademark assignment, agreement or other paper 
relating to the property in a registration or application
(i) First property in a document..................................$40.00
(ii) For each additional property in the same document............$25.00
(7) For assignment records, abstract of title and certification, per 
registration......................................................$25.00
(8) Marginal cost, paid in advance, for each hour of terminal session 
time, including print time, using X-Search capabilities, prorated for 
the actual time used. The Director may waive the payment by an 
individual for access to X-Search upon a showing of need or hardship, 
and if such waiver is in the public interest......................$40.00
(9) Self-service copy charge, per page.............................$0.25
(10) Labor charges for services, per hour or fraction thereof.....$40.00
(11) For items and services that the 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
(12) For processing each payment refused (including a check returned 
``unpaid'') or charged back by a financial institution............$50.00
(13) Deposit accounts:
(i) For establishing a deposit account............................$10.00
(ii) Service charge for each month when the balance at the end of the 
month is below $1,000.............................................$25.00

[56 FR 65155, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991, as amended at 
57 FR 38196, Aug. 21, 1992; 59 FR 257, Jan. 4, 1994; 60 FR 41023, Aug. 
11, 1995; 62 FR 40453, July 29, 1997; 64 FR 48918, Sept. 8, 1999; 64 FR 
67486, Dec. 2, 1999; 64 FR 67777, Dec. 3, 1999; 67 FR 79522, Dec. 30, 
2002; 67 FR 70850, Nov. 27, 2002; 68 FR 48289, Aug. 13, 2003; 70 FR 
2953, Jan. 19, 2005; 70 FR 38773, July 6, 2005]



Sec. 2.7  Fastener recordal fees.

(a) Application fee for recordal of insignia......................$20.00
(b) Renewal of insignia recordal..................................$20.00
(c) Surcharge for late renewal of insignia recordal...............$20.00

[61 FR 55223, Oct. 25, 1996]

         Representation by Attorneys or Other Authorized Persons

    Authority: Secs. 2.11 to 2.19 also issued under 35 U.S.C. 31, 32.

[[Page 241]]



Sec. 2.11  Representation before the Office.

    Representation before the Office is governed by Sec. 10.14 of this 
chapter. The Office cannot aid in the selection of an attorney.

[68 FR 55762, Sept. 26, 2003]



Sec. Sec. 2.12-2.16  [Reserved]



Sec. 2.17  Recognition for representation.

    (a) When an attorney as defined in Sec. 10.1(c) of this chapter 
acting in a representative capacity appears in person or signs a 
document in practice before the United States Patent and Trademark 
Office in a trademark 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 Sec. 10.14 and the law, 
he or she is authorized to represent the particular party in whose 
behalf he or she acts. Further proof of authority to act in a 
representative capacity may be required.
    (b) Before any non-lawyer, as specified in Sec. 10.14(b) of this 
chapter, will be allowed to take action of any kind with respect to an 
application, registration or proceeding, a written authorization from 
the applicant, registrant, party to the proceeding, or other person 
entitled to prosecute such application or proceeding must be filed.
    (c) To be recognized as a representative, an attorney as defined in 
Sec. 10.1(c) of this chapter may file a power of attorney, appear in 
person, or sign a document on behalf of an applicant or registrant that 
is filed with the Office in a trademark case.
    (d) A party may file a power of attorney that relates to more than 
one trademark application or registration, or to all existing and future 
applications and registrations of that party. A party relying on such a 
power of attorney must:
    (1) Include a copy of the previously filed power of attorney; or
    (2) Refer to the power of attorney, specifying the filing date of 
the previously filed power of attorney; the application serial number 
(if known), registration number, or inter partes proceeding number for 
which the original power of attorney was filed; and the name of the 
party who signed the power of attorney; or, if the application serial 
number is not known, submit a copy of the application or a copy of the 
mark, and specify the filing date.

[30 FR 13193, Oct. 16, 1965, as amended at 50 FR 5171, Feb. 6, 1985; 64 
FR 48918, Sept. 8, 1999; 68 FR 55762, Sept. 26, 2003]



Sec. 2.18  Correspondence, with whom held.

    (a) If documents are transmitted by an attorney, or a written power 
of attorney is filed, the Office will send correspondence to the 
attorney transmitting the documents, or to the attorney designated in 
the power of attorney, provided that the attorney is an attorney as 
defined in Sec. 10.1(c) of this chapter.
    (b) The Office will not undertake double correspondence. If two or 
more attorneys appear or sign a document, the Office's reply will be 
sent to the address already established in the record until the 
applicant, registrant or party, or its duly appointed attorney, requests 
in writing that correspondence be sent to another address.
    (c) If an application, registration or proceeding is not being 
prosecuted by an attorney but a domestic representative has been 
appointed, the Office will send correspondence to the domestic 
representative, unless the applicant, registrant or party designates in 
writing another correspondence address.
    (d) If the application, registration or proceeding is not being 
prosecuted by an attorney and no domestic representative has been 
appointed, the Office will send correspondence directly to the 
applicant, registrant or party, unless the applicant, registrant or 
party designates in writing another correspondence address.

[68 FR 55762, Sept. 26, 2003]



Sec. 2.19  Revocation of power of attorney; withdrawal.

    (a) Authority to represent an applicant, registrant or a party to a 
proceeding may be revoked at any stage in the proceedings of a case upon 
written notification to the Director; and when it is revoked, the Office 
will communicate directly with the applicant, registrant or party to the 
proceeding, or

[[Page 242]]

with the new attorney or domestic representative if one has been 
appointed. The Office will notify the person affected of the revocation 
of his or her authorization.
    (b) If the requirements of Sec. 10.40 of this chapter are met, an 
attorney authorized under Sec. 10.14 to represent an applicant, 
registrant or party in a trademark case may withdraw upon application to 
and approval by the Director.

[68 FR 55762, Sept. 26, 2003]

                              Declarations



Sec. 2.20  Declarations in lieu of oaths.

    Instead of an oath, affidavit, verification, or sworn statement, the 
language of 28 U.S.C. 1746, or the following language, may be used:

The undersigned being warned that willful false statements and the like 
are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, 
and that such willful false statements and the like may jeopardize the 
validity of the application or document or any registration resulting 
therefrom, declares that all statements made of his/her own knowledge 
are true; and all statements made on information and belief are believed 
to be true.

[64 FR 48918, Sept. 8, 1999]

                      Application for Registration

    Authority: Secs. 2.21 to 2.47 also issued under sec. 1, 60 Stat. 
427; 15 U.S.C. 1051.



Sec. 2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application under 
section 1 or section 44 of the Act that contains all of the following:
    (1) The name of the applicant;
    (2) A name and address for correspondence;
    (3) A clear drawing of the mark;
    (4) A listing of the goods or services; and
    (5) The filing fee for at least one class of goods or services, 
required by Sec. 2.6.
    (b) If the applicant does not submit all the elements required in 
paragraph (a) of this section, the Office may return the papers with an 
explanation of why the filing date was denied.
    (c) The applicant may correct and resubmit the application papers. 
If the resubmitted papers and fee meet all the requirements of paragraph 
(a) of this section, the Office will grant a filing date as of the date 
the Office receives the corrected papers.

[64 FR 48918, Sept. 8, 1999, as amended at 68 FR 55762, Sept. 26, 2003]



Sec. 2.22  Filing requirements for a TEAS Plus application.

    (a) A trademark/service mark application for registration on the 
Principal Register under section 1 and/or section 44 of the Act will be 
entitled to a reduced filing fee under Sec. 2.6(a)(1)(iii) if it is 
filed through TEAS and includes:
    (1) The applicant's name and address;
    (2) The applicant's legal entity;
    (3) The citizenship of an individual applicant, or the state or 
country of incorporation or organization of a juristic applicant;
    (4) If the applicant is a partnership, the names and citizenship of 
the applicant's general partners;
    (5) A name and address for correspondence;
    (6) An e-mail address for correspondence, and an authorization for 
the Office to send correspondence concerning the application to the 
applicant or applicant's attorney by e-mail;
    (7) One or more bases for filing that satisfy all the requirements 
of Sec. 2.34. If more than one basis is set forth, the applicant must 
comply with the requirements of Sec. 2.34 for each asserted basis;
    (8) Correctly classified goods and/or services, with an 
identification of goods and/or services from the Office's Acceptable 
Identification of Goods and Services Manual, available through the TEAS 
Plus form and at http://www.uspto.gov. In an application based on 
section 44 of the Act, the scope of the goods and/or services covered by 
the section 44 basis may not exceed the scope of the goods and/or 
services in the foreign application or registration;
    (9) If the application contains goods and/or services in more than 
one class, compliance with Sec. 2.86;
    (10) A filing fee for each class of goods and/or services, as 
required by Sec. 2.6(a)(1)(iii);
    (11) A verified statement that meets the requirements of Sec. 2.33, 
dated and signed by a person properly authorized

[[Page 243]]

to sign on behalf of the applicant pursuant to Sec. 2.33(a);
    (12) A clear drawing of the mark. If the applicant does not claim 
standard characters, the applicant must attach a digitized image of the 
mark in .jpg format. If the mark includes color, the drawing must show 
the mark in color;
    (13) If the mark is in standard characters, a mark comprised of only 
characters in the Office's standard character set, currently available 
at http://www.uspto.gov, typed in the appropriate field of the TEAS Plus 
form;
    (14) If the mark includes color, a statement naming the color(s) and 
describing where the color(s) appears on the mark, and a claim that the 
color(s) is a feature of the mark;
    (15) If the mark is not in standard characters, a description of the 
mark;
    (16) If the mark includes non-English wording, an English 
translation of that wording;
    (17) If the mark includes non-Latin characters, a transliteration of 
those characters;
    (18) If the mark includes an individual's name or portrait, either 
(i) a statement that identifies the living individual whose name or 
likeness the mark comprises and written consent of the individual, or 
(ii) a statement that the name or portrait does not identify a living 
individual (see section 2(c) of the Act);
    (19) If the applicant owns one or more registrations for the same 
mark, a claim of ownership of the registration(s) identified by the 
registration number(s), pursuant to Sec. 2.36; and
    (20) If the application is a concurrent use application, compliance 
with Sec. 2.42.
    (b) If an application does not meet the requirements of paragraph 
(a) of this section at the time of filing, the applicant must pay the 
fee required by Sec. 2.6(a)(1)(iv). The application will retain its 
original filing date, provided that when filed, the application met the 
filing date requirements of Sec. 2.21.
    (c) The following types of applications cannot be filed as TEAS Plus 
applications under paragraph (a) of this section:
    (1) Applications for certification marks (see Sec. 2.45);
    (2) Applications for collective marks (see Sec. 2.44);
    (3) Applications for collective membership marks (see Sec. 2.44); 
and
    (4) Applications for registration on the Supplemental Register (see 
Sec. 2.47).

[70 FR 38773, July 6, 2005]



Sec. 2.23  Additional requirements for TEAS Plus application.

    (a) In addition to the filing requirements under Sec. 2.22(a), the 
applicant must:
    (1) File the following communications through TEAS:
    (i) Responses to Office actions (except notices of appeal under 
section 20 of the Trademark Act);
    (ii) Requests to change the correspondence address and owner's 
address;
    (iii) Appointment and/or revocation of power of attorney;
    (iv) Appointment and/or revocation of domestic representative;
    (v) Preliminary amendments;
    (vi) Amendments to allege use under section 1(c) of the Act or 
statements of use under section 1(d) of the Act;
    (vii) Request(s) for extensions of time to file a statement of use 
under section 1(d) of the Act; and
    (viii) Request(s) to delete a section 1(b) basis.
    (2) Continue to receive communications from the Office by electronic 
mail.
    (b) If an application does not meet the requirements of paragraph 
(a) of this section, the applicant must pay the fee required by Sec. 
2.6(a)(1)(iv).

[70 FR 38773, July 6, 2005]



Sec. 2.24  Designation of domestic representative by foreign applicant.

    If an applicant is not domiciled in the United States, the applicant 
may designate by a document filed in the United States Patent and 
Trademark Office the name and address of some person resident in the 
United States on whom may be served notices or process in proceedings 
affecting the mark. If the applicant does not file a document 
designating the name and address of a person resident in the United 
States on whom may be served notices or process in proceedings affecting 
the mark, or if the last person designated cannot be

[[Page 244]]

found at the address given in the designation, then notices or process 
in proceedings affecting the mark may be served on the Director. The 
mere designation of a domestic representative does not authorize the 
person designated to prosecute the application unless qualified under 
paragraph (a), (b) or (c) of Sec. 10.14 of this subchapter and 
authorized under Sec. 2.17(b).

[67 FR 79522, Dec. 30, 2002]



Sec. 2.25  Papers not returnable.

    After an application is filed the papers will not be returned for 
any purpose whatever; but the Office will furnish copies to the 
applicant upon request and payment of the fee.



Sec. 2.26  Use of old drawing in new application.

    In an application filed in place of an abandoned or rejected 
application, or in an application for reregistration (Sec. 2.158), a 
new complete application is required, but the old drawing, if suitable, 
may be used. The application must be accompanied by a request for the 
transfer of the drawing, and by a permanent photographic copy, or an 
order for such copy, of the drawing to be placed in the original file. A 
drawing so transferred, or to be transferred, cannot be amended.



Sec. 2.27  Pending trademark application index; access to applications.

    (a) An index of pending applications including the name and address 
of the applicant, a reproduction or description of the mark, the goods 
or services with which the mark is used, the class number, the dates of 
use, and the serial number and filing date of the application will be 
available for public inspection as soon as practicable after filing.
    (b) Except as provided in paragraph (e) of this section, access to 
the file of a particular pending application will be permitted prior to 
publication under Sec. 2.80 upon written request.
    (c) Decisions of the Director and the Trademark Trial and Appeal 
Board in applications and proceedings relating thereto are published or 
available for inspection or publication.
    (d) Except as provided in paragraph (e) of this section, after a 
mark has been registered, or published for opposition, the file of the 
application and all proceedings relating thereto are available for 
public inspection and copies of the papers may be furnished upon paying 
the fee therefor.
    (e) Anything ordered to be filed under seal pursuant to a protective 
order issued or made by any court or by the Trademark Trial and Appeal 
Board in any proceeding involving an application or a registration shall 
be kept confidential and shall not be made available for public 
inspection or copying unless otherwise ordered by the court or the 
Board, or unless the party protected by the order voluntarily discloses 
the matter subject thereto. When possible, only confidential portions of 
filings with the Board shall be filed under seal.

[36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48 
FR 27225, June 14, 1983]

                         The Written Application



Sec. 2.31  [Reserved]



Sec. 2.32  Requirements for a complete application.

    (a) The application must be in English and include the following:
    (1) A request for registration;
    (2) The name of the applicant(s);
    (3)(i) The citizenship of the applicant(s); or
    (ii) If the applicant is a corporation, association, partnership or 
other juristic person, the jurisdiction (usually state or nation) under 
the laws of which the applicant is organized; and
    (iii) If the applicant is a partnership, the names and citizenship 
of the general partners;
    (4) The address of the applicant;
    (5) One or more bases, as required by Sec. 2.34(a);
    (6) A list of the particular goods or services on or in connection 
with which the applicant uses or intends to use the mark. In a United 
States application filed under section 44 of the Act, the scope of the 
goods or services covered by the section 44 basis may not exceed the 
scope of the goods or services in the foreign application or 
registration; and
    (7) The international class of goods or services, if known. See 
Sec. 6.1 of this

[[Page 245]]

chapter for a list of the international classes of goods and services.
    (8) If the mark is not in standard characters, a description of the 
mark.
    (b) The application must include a verified statement that meets the 
requirements of Sec. 2.33.
    (c) The application must include a drawing that meets the 
requirements of Sec. Sec. 2.51 and 2.52.
    (d) The application must include fee required by Sec. 2.6 for each 
class of goods or services.
    (e) For the requirements for a multiple class application, see Sec. 
2.86.

[64 FR 48918, Sept. 8, 1999, as amended at 73 FR 13784, Mar. 14, 2008]



Sec. 2.33  Verified statement.

    (a) The application must include a statement that is signed and 
verified (sworn to) or supported by a declaration under Sec. 2.20 by a 
person properly authorized to sign on behalf of the applicant. A person 
who is properly authorized to sign on behalf of the applicant is:
    (1) A person with legal authority to bind the applicant; or
    (2) A person with firsthand knowledge of the facts and actual or 
implied authority to act on behalf of the applicant; or
    (3) An attorney as defined in Sec. 10.1(c) of this chapter who has 
an actual or implied written or verbal power of attorney from the 
applicant.
    (b)(1) In an application under section 1(a) of the Act, the verified 
statement must allege:

That the applicant has adopted and is using the mark shown in the 
accompanying drawing; that the applicant believes it is the owner of the 
mark; that the mark is in use in commerce; that to the best of the 
declarant's knowledge and belief, no other person has the right to use 
the mark in commerce, either in the identical form or in such near 
resemblance as to be likely, when applied to the goods or services of 
the other person, to cause confusion or mistake, or to deceive; that the 
specimen shows the mark as used on or in connection with the goods or 
services; and that the facts set forth in the application are true.

    (2) In an application under section 1(b) or section 44 of the Act, 
the verified statement must allege:

That the applicant has a bona fide intention to use the mark shown in 
the accompanying drawing in commerce on or in connection with the 
specified goods or services; that the applicant believes it is entitled 
to use the mark in commerce; that to the best of the declarant's 
knowledge and belief, no other person has the right to use the mark in 
commerce, either in the identical form or in such near resemblance as to 
be likely, when applied to the goods or services of the other person, to 
cause confusion or mistake, or to deceive; and that the facts set forth 
in the application are true.

    (c) If the verified statement is not filed within a reasonable time 
after it is signed, the Office may require the applicant to submit a 
substitute verification or declaration under Sec. 2.20 of the 
applicant's continued use or bona fide intention to use the mark in 
commerce.
    (d) Where an electronically transmitted filing is permitted, the 
person who signs the verified statement must either:
    (1) Place a symbol comprised of numbers and/or letters between two 
forward slash marks in the signature block on the electronic submission; 
or
    (2) Sign the verified statement using some other form of electronic 
signature specified by the Director.
    (e) In an application under section 66(a) of the Act, the verified 
statement is part of the international registration on file at the 
International Bureau. The verified statement must allege that:
    (1) The applicant/holder has a bona fide intention to use the mark 
in commerce that the United States Congress can regulate on or in 
connection with the goods/services identified in the international 
application/subsequent designation;
    (2) The signatory is properly authorized to execute this declaration 
on behalf of the applicant/holder;
    (3) The signatory believes the applicant/holder to be entitled to 
use the mark in commerce that the United States Congress can regulate on 
or in connection with the goods/services identified in the international 
application/registration; and
    (4) To the best of his/her knowledge and belief, no other person, 
firm, corporation, association, or other legal entity has the right to 
use the mark in

[[Page 246]]

commerce that the United States Congress can regulate, either in the 
identical form thereof or in such near resemblance thereto as to be 
likely, when used on or in connection with the goods/services of such 
other person, firm, corporation, association, or other legal entity, to 
cause confusion, or to cause mistake, or to deceive.

[64 FR 48918, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002; 
68 FR 55762, Sept. 26, 2003]



Sec. 2.34  Bases for filing.

    (a) The application must include one or more of the following five 
filing bases:
    (1) Use in commerce under section 1(a) of the Act. The requirements 
for an application based on section 1(a) of the Act are:
    (i) The trademark owner's verified statement that the mark is in use 
in commerce on or in connection with the goods or services listed in the 
application. If the verification is not filed with the initial 
application, the verified statement must allege that the mark was in use 
in commerce on or in connection with the goods or services listed in the 
application as of the application filing date;
    (ii) The date of the applicant's first use of the mark anywhere on 
or in connection with the goods or services;
    (iii) The date of the applicant's first use of the mark in commerce 
as a trademark or service mark; and
    (iv) One specimen showing how the applicant actually uses the mark 
in commerce.
    (2) Intent-to-use under section 1(b) of the Act. In an application 
under section 1(b) of the Act, the applicant must verify that it has a 
bona fide intention to use the mark in commerce on or in connection with 
the goods or services listed in the application. If the verification is 
not filed with the initial application, the verified statement must 
allege that the applicant had a bona fide intention to use the mark in 
commerce on or in connection with the goods or services listed in the 
application as of the filing date of the application.
    (3) Registration of a mark in a foreign applicant's country of 
origin under section 44(e) of the Act. The requirements for an 
application under section 44(e) of the Act are:
    (i) The applicant's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the goods 
or services listed in the application. If the verification is not filed 
with the initial application, the verified statement must allege that 
the applicant had a bona fide intention to use the mark in commerce as 
of the filing date of the application.
    (ii) A true copy, a photocopy, a certification, or a certified copy 
of a registration in the applicant's country of origin showing that the 
mark has been registered in that country, and that the registration is 
in full force and effect. The certification or copy of the foreign 
registration must show the name of the owner, the mark, and the goods or 
services for which the mark is registered. If the foreign registration 
is not in the English language, the applicant must submit a translation.
    (iii) If the record indicates that the foreign registration will 
expire before the United States registration will issue, the applicant 
must submit a true copy, a photocopy, a certification, or a certified 
copy from the country of origin to establish that the foreign 
registration has been renewed and will be in force at the time the 
United States registration will issue. If the foreign registration is 
not in the English language, the applicant must submit a translation.
    (4) Claim of priority, based upon an earlier-filed foreign 
application, under section 44(d) of the Act. The requirements for an 
application under section 44(d) of the Act are:
    (i) A claim of priority, filed within six months of the filing date 
of the foreign application. Before publication or registration on the 
Supplemental Register, the applicant must either:
    (A) Specify the filing date, serial number and country of the first 
regularly filed foreign application; or
    (B) State that the application is based upon a subsequent regularly 
filed application in the same foreign country, and that any prior-filed 
application has been withdrawn, abandoned or otherwise disposed of, 
without having been laid open to public inspection and without having 
any rights outstanding,

[[Page 247]]

and has not served as a basis for claiming a right of priority.
    (ii) The applicant's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the goods 
or services listed in the application. If the verification is not filed 
with the initial application, the verified statement must allege that 
the applicant had a bona fide intention to use the mark in commerce as 
of the filing date of the application.
    (iii) Before the application can be approved for publication, or for 
registration on the Supplemental Register, the applicant must establish 
a basis under section 1(a), section 1(b) or section 44(e) of the Act.
    (5) Extension of protection of an international registration under 
section 66(a) of the Act. In an application under section 66(a) of the 
Act, the international application or subsequent designation requesting 
an extension of protection to the United States must contain a signed 
declaration that meets the requirements of Sec. 2.33.
    (b)(1) In an application under section 1 or section 44 of the Act, 
an applicant may claim more than one basis, provided the applicant 
satisfies all requirements for the bases claimed. However, the applicant 
may not claim both sections 1(a) and 1(b) for the identical goods or 
services in the same application.
    (2) In an application under section 1 or section 44 of the Act, if 
an applicant claims more than one basis, the applicant must list each 
basis, followed by the goods or services to which that basis applies. If 
some or all of the goods or services are covered by more than one basis, 
this must be stated.
    (3) A basis under section 66(a) of the Act cannot be combined with 
any other basis.
    (c) The word ``commerce'' means commerce that Congress may lawfully 
regulate, as specified in section 45 of the Act.

[64 FR 48919, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002; 
68 FR 55763, Sept. 26, 2003]



Sec. 2.35  Adding, deleting, or substituting bases.

    (a) In an application under section 66(a) of the Act, an applicant 
may not add, substitute or delete a basis, unless the applicant meets 
the requirements for transformation under section 70(c) of the Act and 
Sec. 7.31 of this chapter.
    (b) In an application under section 1 or section 44 of the Act:
    (1) Before publication for opposition, an applicant may add or 
substitute a basis, if the applicant meets all requirements for the new 
basis, as stated in Sec. 2.34. The applicant may delete a basis at any 
time.
    (2) After publication, an applicant may add or substitute a basis in 
an application that is not the subject of an inter partes proceeding 
before the Trademark Trial and Appeal Board, but only with the express 
permission of the Director, after consideration on petition. 
Republication will be required. The amendment of an application that is 
the subject of an inter partes proceeding before the Board is governed 
by Sec. 2.133(a).
    (3) When an applicant substitutes one basis for another, the Office 
will presume that there was a continuing valid basis, unless there is 
contradictory evidence in the record, and the application will retain 
the original filing date, including a priority filing date under section 
44(d), if appropriate.
    (4) If an applicant properly claims a section 44(d) basis in 
addition to another basis, the applicant will retain the priority filing 
date under section 44(d) no matter which basis the applicant perfects.
    (5) The applicant may add or substitute a section 44(d) basis only 
within the six-month priority period following the filing date of the 
foreign application.
    (6) When the applicant adds or substitutes a basis, the applicant 
must list each basis, followed by the goods or services to which that 
basis applies.
    (7) When the applicant deletes a basis, the applicant must also 
delete any goods or services covered solely by the deleted basis.
    (8) Once an applicant claims a section 1(b) basis as to any or all 
of the goods or services, the applicant may not

[[Page 248]]

amend the application to seek registration under section 1(a) of the Act 
for those goods or services unless the applicant files an allegation of 
use under section 1(c) or section 1(d) of the Act.

[68 FR 55763, Sept. 26, 2003]



Sec. 2.36  Identification of prior registrations.

    Prior registrations of the same or similar marks owned by the 
applicant should be identified in the application.



Sec. 2.37  Description of mark.

    A description of the mark must be included if the mark is not in 
standard characters. In an application where the mark is in standard 
characters, a description may be included and must be included if 
required by the trademark examining attorney.

[73 FR 13784, Mar. 14, 2008]



Sec. 2.38  Use by predecessor or by related companies.

    (a) If the first use of the mark was by a predecessor in title or by 
a related company (sections 5 and 45 of the Act), and the use inures to 
the benefit of the applicant, the dates of first use (Sec. Sec. 
2.34(a)(1) (ii) and (iii)) may be asserted with a statement that first 
use was by the predecessor in title or by the related company, as 
appropriate.
    (b) If the mark is not in fact being used by the applicant but is 
being used by one or more related companies whose use inures to the 
benefit of the applicant under section 5 of the Act, such facts must be 
indicated in the application.
    (c) The Office may require such details concerning the nature of the 
relationship and such proofs as may be necessary and appropriate for the 
purpose of showing that the use by related companies inures to the 
benefit of the applicant and does not affect the validity of the mark.

(Sec. 5, 60 Stat. 429; 15 U.S.C. 1055)

[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989; 
64 FR 48920, Sept. 8, 1999]



Sec. 2.39  [Reserved]



Sec. 2.41  Proof of distinctiveness under section 2(f).

    (a) When registration is sought of a mark which would be 
unregistrable by reason of section 2(e) of the Act but which is said by 
applicant to have become distinctive in commerce of the goods or 
services set forth in the application, applicant may, in support of 
registrability, submit with the application, or in response to a request 
for evidence or to a refusal to register, affidavits, or declarations in 
accordance with Sec. 2.20, depositions, or other appropriate evidence 
showing duration, extent and nature of use in commerce and advertising 
expenditures in connection therewith (identifying types of media and 
attaching typical advertisements), and affidavits, or declarations in 
accordance with Sec. 2.20, letters or statements from the trade or 
public, or both, or other appropriate evidence tending to show that the 
mark distinguishes such goods.
    (b) In appropriate cases, ownership of one or more prior 
registrations on the Principal Register or under the Act of 1905 of the 
same mark may be accepted as prima facie evidence of distinctiveness. 
Also, if the mark is said to have become distinctive of applicant's 
goods by reason of substantially exclusive and continuous use in 
commerce thereof by applicant for the five years before the date on 
which the claim of distinctiveness is made, a showing by way of 
statements which are verified or which include declarations in 
accordance with Sec. 2.20, in the application may, in appropriate 
cases, be accepted as prima facie evidence of distinctiveness. In each 
of these situations, however, further evidence may be required.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.42  Concurrent use.

    An application for registration as a lawful concurrent user shall 
specify and contain all the elements required by the preceding sections. 
The applicant in addition shall state in the application the area, the 
goods, and the mode of use for which applicant seeks registration; and 
also shall state, to the extent of the applicant's knowledge, the 
concurrent lawful use of the

[[Page 249]]

mark by others, setting forth their names and addresses; registrations 
issued to or applications filed by such others, if any; the areas of 
such use; the goods on or in connection with which such use is made; the 
mode of such use; and the periods of such use.

[54 FR 34897, Aug. 22, 1989]



Sec. 2.43  Service mark.

    In an application to register a service mark, the application shall 
specify and contain all the elements required by the preceding sections 
for trademarks, but shall be modified to relate to services instead of 
to goods wherever necessary.

(Sec. 3, 60 Stat. 429; 15 U.S.C. 1052)



Sec. 2.44  Collective mark.

    (a) In an application to register a collective mark under section 
1(a) of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks, 
but shall, in addition, specify the class of persons entitled to use the 
mark, indicating their relationship to the applicant, and the nature of 
the applicant's control over the use of the mark.
    (b) In an application to register a collective mark under section 
1(b) or 44 of the Act, the application shall specify and contain all 
applicable elements required by the preceding sections for trademarks, 
but shall, in addition, specify the class of persons intended to be 
entitled to use the mark, indicating what their relationship to the 
applicant will be, and the nature of the control applicant intends to 
exercise over the use of the mark.

[54 FR 37590, Sept. 11, 1989]



Sec. 2.45  Certification mark.

    (a) In an application to register a certification mark under section 
1(a) of the Act, the application shall include all applicable elements 
required by the preceding sections for trademarks. In addition, the 
application must: Specify the conditions under which the certification 
mark is used; allege that the applicant exercises legitimate control 
over the use of the mark; allege that the applicant is not engaged in 
the production or marketing of the goods or services to which the mark 
is applied; and include a copy of the standards that determine whether 
others may use the certification mark on their goods and/or in 
connection with their services.
    (b) In an application to register a certification mark under section 
1(b) or section 44 of the Act, the application shall include all 
applicable elements required by the preceding sections for trademarks. 
In addition, the application must: specify the conditions under which 
the certification mark is intended to be used; allege that the applicant 
intends to exercise legitimate control over the use of the mark; and 
allege that the applicant will not engage in the production or marketing 
of the goods or services to which the mark is applied. When the 
applicant files an amendment to allege use under section 1(c) of the 
Act, or a statement of use under section 1(d) of the Act, the applicant 
must submit a copy of the standards that determine whether others may 
use the certification mark on their goods and/or in connection with 
their services.

[64 FR 48920, Sept. 8, 1999]



Sec. 2.46  Principal Register.

    All applications will be treated as seeking registration on the 
Principal Register unless otherwise stated in the application. Service 
marks, collective marks, and certification marks, registrable in 
accordance with the applicable provisions of section 2 of the Act, are 
registered on the Principal Register.



Sec. 2.47  Supplemental Register.

    (a) In an application to register on the Supplemental Register under 
section 23 of the Act, the application shall so indicate and shall 
specify that the mark has been in lawful use in commerce, specifying the 
nature of such commerce, by the applicant.
    (b) In an application to register on the Supplemental Register under 
section 44 of the Act, the application shall so indicate. The statement 
of lawful use in commerce may be omitted.
    (c) An application under section 66(a) of the Act is not eligible 
for registration on the Supplemental Register.

[[Page 250]]

    (d) A mark in an application to register on the Principal Register 
under section 1(b) of the Act is eligible for registration on the 
Supplemental Register only after an acceptable amendment to allege use 
under Sec. 2.76 or statement of use under Sec. 2.88 has been timely 
filed.
    (e) An application for registration on the Supplemental Register 
must conform to the requirements for registration on the Principal 
Register under section 1(a) of the Act, so far as applicable.

[54 FR 37590, Sept. 11, 1989, as amended at 68 FR 55763, Sept. 26, 2003]

                                 Drawing

    Authority: Secs. 2.51 to 2.55 also issued under sec. 1, 60 Stat. 
427; 15 U.S.C. 1051.



Sec. 2.51  Drawing required.

    (a) In an application under section 1(a) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as 
used on or in connection with the goods and/or services.
    (b) In an application under section 1(b) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as 
intended to be used on or in connection with the goods and/or services 
specified in the application, and once an amendment to allege use under 
Sec. 2.76 or a statement of use under Sec. 2.88 has been filed, the 
drawing of the mark must be a substantially exact representation of the 
mark as used on or in connection with the goods and/or services.
    (c) In an application under section 44 of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as it 
appears in the drawing in the registration certificate of a mark duly 
registered in the applicant's country of origin.
    (d) In an application under section 66(a) of the Act, the drawing of 
the mark must be a substantially exact representation of the mark as it 
appears in the international registration.

[68 FR 55763, Sept. 26, 2003]



Sec. 2.52  Types of drawings and format for drawings.

    A drawing depicts the mark sought to be registered. The drawing must 
show only one mark. The applicant must include a clear drawing of the 
mark when the application is filed. There are two types of drawings:
    (a) Standard character (typed) drawing. Applicants who seek to 
register words, letters, numbers, or any combination thereof without 
claim to any particular font style, size, or color must submit a 
standard character drawing that shows the mark in black on a white 
background. An applicant may submit a standard character drawing if:
    (1) The application includes a statement that the mark is in 
standard characters and no claim is made to any particular font style, 
size, or color;
    (2) The mark does not include a design element;
    (3) All letters and words in the mark are depicted in Latin 
characters;
    (4) All numerals in the mark are depicted in Roman or Arabic 
numerals; and
    (5) The mark includes only common punctuation or diacritical marks.
    (b) Special form drawing. Applicants who seek to register a mark 
that includes a two or three-dimensional design; color; and/or words, 
letters, or numbers or the combination thereof in a particular font 
style or size must submit a special form drawing. The drawing must show 
the mark in black on a white background, unless the mark includes color.
    (1) Color marks. If the mark includes color, the drawing must show 
the mark in color, and the applicant must name the color(s), describe 
where the color(s) appear on the mark, and submit a claim that the 
color(s) is a feature of the mark.
    (2) Three dimensional marks. If the mark has three-dimensional 
features, the drawing must depict a single rendition of the mark, and 
the applicant must indicate that the mark is three-dimensional.
    (3) Motion marks. If the mark has motion, the drawing may depict a 
single point in the movement, or the drawing may depict up to five 
freeze frames

[[Page 251]]

showing various points in the movement, whichever best depicts the 
commercial impression of the mark. The applicant must also describe the 
mark.
    (4) Broken lines to show placement. If necessary to adequately 
depict the commercial impression of the mark, the applicant may be 
required to submit a drawing that shows the placement of the mark by 
surrounding the mark with a proportionately accurate broken-line 
representation of the particular goods, packaging, or advertising on 
which the mark appears. The applicant must also use broken lines to show 
any other matter not claimed as part of the mark. For any drawing using 
broken lines to indicate placement of the mark, or matter not claimed as 
part of the mark, the applicant must describe the mark and explain the 
purpose of the broken lines.
    (5) Description of mark. A description of the mark must be included.
    (c) TEAS drawings. A drawing filed through TEAS must meet the 
requirements of Sec. 2.53.
    (d) Paper drawings. A paper drawing must meet the requirements of 
Sec. 2.54.
    (e) Sound, scent, and non-visual marks. An applicant is not required 
to submit a drawing if the mark consists only of a sound, a scent, or 
other completely non-visual matter. For these types of marks, the 
applicant must submit a detailed description of the mark.

[68 FR 55763, Sept. 26, 2003, as amended at 73 FR 13784, Mar. 14, 2008]



Sec. 2.53  Requirements for drawings filed through the TEAS.

    The drawing must meet the requirements of Sec. 2.52. In addition, 
in a TEAS submission, the drawing must meet the following requirements:
    (a)(1) Standard character drawings in TEAS Plus applications filed 
under Sec. 2.22: If an applicant is filing a standard character 
drawing, the applicant must enter the mark in the appropriate field on 
the TEAS Plus form.
    (2) Standard character drawings in all other TEAS submissions: If an 
applicant is filing a standard character drawing, the applicant must 
either:
    (i) Enter the mark in the appropriate field on the TEAS form; or
    (ii) Attach a digitized image of the mark to the TEAS submission 
that meets the requirements of paragraph (c) of this section, and check 
the box to claim that the mark consists of standard characters.
    (b) Special form drawings: If an applicant is filing a special form 
drawing, the applicant must attach a digitized image of the mark to the 
TEAS submission that meets the requirements of paragraph (c) of this 
section.
    (c) Requirements for digitized image: The image must be in .jpg 
format and scanned at no less than 300 dots per inch and no more than 
350 dots per inch with a length and width of no less than 250 pixels and 
no more than 944 pixels. All lines must be clean, sharp and solid, not 
fine or crowded, and produce a high quality image when copied.

[68 FR 55764, Sept. 26, 2003, as amended at 70 FR 38774, July 6, 2005]



Sec. 2.54  Requirements for drawings submitted on paper.

    The drawing must meet the requirements of Sec. 2.52. In addition, 
in a paper submission, the drawing should:
    (a) Be on non-shiny white paper that is separate from the 
application;
    (b) Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 
11 to 11.69 inches (27.9 to 29.7 cm.) long. One of the shorter sides of 
the sheet should be regarded as its top edge. The image must be no 
larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
    (c) Include the caption ``DRAWING PAGE'' at the top of the drawing 
beginning one inch (2.5 cm.) from the top edge; and
    (d) Depict the mark in black ink, or in color if color is claimed as 
a feature of the mark.
    (e) Drawings must be typed or made with a pen or by a process that 
will provide high definition when copied. A photolithographic, printer's 
proof copy, or other high quality reproduction of the mark may be used. 
All lines must be clean, sharp and solid, and must not be fine or 
crowded.

[68 FR 55764, Sept. 26, 2003]



Sec. 2.56  Specimens.

    (a) An application under section 1(a) of the Act, an amendment to 
allege use under Sec. 2.76, and a statement of use

[[Page 252]]

under Sec. 2.88 must each include one specimen showing the mark as used 
on or in connection with the goods, or in the sale or advertising of the 
services in commerce.
    (b)(1) A trademark specimen is a label, tag, or container for the 
goods, or a display associated with the goods. The Office may accept 
another document related to the goods or the sale of the goods when it 
is not possible to place the mark on the goods or packaging for the 
goods.
    (2) A service mark specimen must show the mark as actually used in 
the sale or advertising of the services.
    (3) A collective trademark or collective service mark specimen must 
show how a member uses the mark on the member's goods or in the sale or 
advertising of the member's services.
    (4) A collective membership mark specimen must show use by members 
to indicate membership in the collective organization.
    (5) A certification mark specimen must show how a person other than 
the owner uses the mark to certify regional or other origin, material, 
mode of manufacture, quality, accuracy, or other characteristics of that 
person's goods or services; or that members of a union or other 
organization performed the work or labor on the goods or services.
    (c) A photocopy or other reproduction of a specimen of the mark as 
actually used on or in connection with the goods, or in the sale or 
advertising of the services, is acceptable. However, a photocopy of the 
drawing required by Sec. 2.51 is not a proper specimen.
    (d)(1) The specimen should be flat, and not larger than 8\1/2\ 
inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long. If a specimen of 
this size is not available, the applicant may substitute a suitable 
photograph or other facsimile.
    (2) If the applicant files a specimen exceeding these size 
requirements (a ``bulky specimen''), the Office will create a facsimile 
of the specimen that meets the requirements of the rule (i.e., is flat 
and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 
cm.) long) and put it in the file wrapper.
    (3) In the absence of non-bulky alternatives, the Office may accept 
an audio or video cassette tape recording, CD-ROM, or other appropriate 
medium.
    (4) For a TEAS submission, the specimen must be a digitized image in 
.jpg format.

[64 FR 48921, Sept. 8, 1999, as amended at 68 FR 55764, Sept. 26, 2003]



Sec. Sec. 2.57-2.58  [Reserved]



Sec. 2.59  Filing substitute specimen(s).

    (a) In an application under section 1(a) of the Act, the applicant 
may submit substitute specimens of the mark as used on or in connection 
with the goods, or in the sale or advertising of the services. The 
applicant must verify by an affidavit or declaration under Sec. 2.20 
that the substitute specimens were in use in commerce at least as early 
as the filing date of the application. Verification is not required if 
the specimen is a duplicate or facsimile of a specimen already of record 
in the application.
    (b) In an application under section 1(b) of the Act, after filing 
either an amendment to allege use under Sec. 2.76 or a statement of use 
under Sec. 2.88, the applicant may submit substitute specimens of the 
mark as used on or in connection with the goods, or in the sale or 
advertising of the services. If the applicant submits substitute 
specimen(s), the applicant must:
    (1) For an amendment to allege use under Sec. 2.76, verify by 
affidavit or declaration under Sec. 2.20 that the applicant used the 
substitute specimen(s) in commerce prior to filing the amendment to 
allege use.
    (2) For a statement of use under Sec. 2.88, verify by affidavit or 
declaration under Sec. 2.20 that the applicant used the substitute 
specimen(s) in commerce either prior to filing the statement of use or 
prior to the expiration of the deadline for filing the statement of use.

[64 FR 48921, Sept. 8, 1999]

           Examination of Application and Action by Applicants

    Authority: Secs. 2.61 to 2.69 also issued under sec. 12, 60 Stat. 
432; 15 U.S.C. 1062.

[[Page 253]]



Sec. 2.61  Action by examiner.

    (a) Applications for registration, including amendments to allege 
use under section 1(c) of the Act, and statements of use under section 
1(d) of the Act, will be examined and, if the applicant is found not 
entitled to registration for any reason, applicant will be notified and 
advised of the reasons therefor and of any formal requirements or 
objections.
    (b) The examiner may require the applicant to furnish such 
information and exhibits as may be reasonably necessary to the proper 
examination of the application.
    (c) Whenever it shall be found that two or more parties whose 
interests are in conflict are represented by the same attorney, each 
party and also the attorney shall be notified of this fact.

[30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb. 9, 1972; 54 
FR 37592, Sept. 11, 1989]



Sec. 2.62  Period for response.

    The applicant has six months from the date of mailing of any action 
by the examiner to respond thereto. Such response may be made with or 
without amendment and must include such proper action by the applicant 
as the nature of the action and the condition of the case may require.



Sec. 2.63  Reexamination.

    (a) After response by the applicant, the application will be 
reexamined or reconsidered. If registration is again refused or any 
formal requirement[s] is repeated, but the examiner's action is not 
stated to be final, the applicant may respond again.
    (b) After reexamination the applicant may respond by filing a timely 
petition to the Director for relief from a formal requirement if: (1) 
The requirement is repeated, but the examiner's action is not made 
final, and the subject matter of the requirement is appropriate for 
petition to the Director (see Sec. 2.146(b)); or (2) the examiner's 
action is made final and such action is limited to subject matter 
appropriate for petition to the Director. If the petition is denied, the 
applicant shall have until six months from the date of the Office action 
which repeated the requirement or made it final or thirty days from the 
date of the decision on the petition, whichever date is later, to comply 
with the requirement. A formal requirement which is the subject of a 
petition decided by the Director may not subsequently be the subject of 
an appeal to the Trademark Trial and Appeal Board.

[48 FR 23134, May 23, 1983]



Sec. 2.64  Final action.

    (a) On the first or any subsequent reexamination or reconsideration 
the refusal of the registration or the insistence upon a requirement may 
be stated to be final, whereupon applicant's response is limited to an 
appeal, or to a compliance with any requirement, or to a petition to the 
Director if permitted by Sec. 2.63(b).
    (b) During the period between a final action and expiration of the 
time for filing an appeal, the applicant may request the examiner to 
reconsider the final action. The filing of a request for reconsideration 
will not extend the time for filing an appeal or petitioning the 
Director, but normally the examiner will reply to a request for 
reconsideration before the end of the six-month period if the request is 
filed within three months after the date of the final action. Amendments 
accompanying requests for reconsideration after final action will be 
entered if they comply with the rules of practice in trademark cases and 
the Act of 1946.
    (c)(1) If an applicant in an application under section 1(b) of the 
Act files an amendment to allege use under Sec. 2.76 during the six-
month response period after issuance of a final action, the examiner 
shall examine the amendment. The filing of such an amendment will not 
extend the time for filing an appeal or petitioning the Director.
    (2) If the amendment to allege use under Sec. 2.76 is acceptable in 
all respects, the applicant will be notified of its acceptance.
    (3) If, as a result of the examination of the amendment to allege 
use under Sec. 2.76, the applicant is found not entitled to 
registration for any reason not previously stated, applicant will be 
notified and advised of the reasons and of any formal requirements or 
refusals. The Trademark Examining Attorney

[[Page 254]]

shall withdraw the final action previously issued and shall incorporate 
all unresolved refusals or requirements previously stated in the new 
non-final action.

[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989]



Sec. 2.65  Abandonment.

    (a) If an applicant fails to respond, or to respond completely, 
within six months after the date an action is mailed, the application 
shall be deemed abandoned unless the refusal or requirement is expressly 
limited to only certain goods and/or services. If the refusal or 
requirement is expressly limited to only certain goods and/or services, 
the application will be abandoned only as to those particular goods and/
or services. A timely petition to the Director pursuant to Sec. Sec. 
2.63(b) and 2.146, if appropriate, is a response that avoids abandonment 
of an application.
    (b) When action by the applicant filed within the six-month response 
period is a bona fide attempt to advance the examination of the 
application and is substantially a complete response to the examiner's 
action, but consideration of some matter or compliance with some 
requirement has been inadvertently omitted, opportunity to explain and 
supply the omission may be given before the question of abandonment is 
considered.
    (c) If an applicant in an application under section 1(b) of the Act 
fails to timely file a statement of use under Sec. 2.88, the 
application shall be deemed to be abandoned.

[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989; 
68 FR 55764, Sept. 26, 2003]



Sec. 2.66  Revival of abandoned applications.

    (a) The applicant may file a petition to revive an application 
abandoned because the applicant did not timely respond to an Office 
action or notice of allowance, if the delay was unintentional. The 
applicant must file the petition:
    (1) Within two months of the mailing date of the notice of 
abandonment; or
    (2) Within two months of actual knowledge of the abandonment, if the 
applicant did not receive the notice of abandonment, and the applicant 
was diligent in checking the status of the application every six months 
in accordance with Sec. 2.146(i).
    (b) The requirements for filing a petition to revive an application 
abandoned because the applicant did not timely respond to an Office 
action are:
    (1) The petition fee required by Sec. 2.6;
    (2) A statement, signed by someone with firsthand knowl