[Federal Register Volume 78, Number 203 (Monday, October 21, 2013)]
[Rules and Regulations]
[Pages 62367-62409]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2013-24471]



Vol. 78

Monday,

No. 203

October 21, 2013

Part II





Department of Commerce





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 Patent and Trademark Office





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37 CFR Parts 1, 3 and 11





 Changes To Implement the Patent Law Treaty; Final Rule

Federal Register / Vol. 78, No. 203 / Monday, October 21, 2013 / 
Rules and Regulations

[[Page 62368]]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3 and 11

[Docket No. PTO-P-2013-0007]
RIN 0651-AC85


Changes To Implement the Patent Law Treaty

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent Law Treaties Implementation Act of 2012 (PLTIA) 
amends the patent laws to implement the provisions of the Hague 
Agreement Concerning International Registration of Industrial Designs 
(Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title 
II. The PLT harmonizes and streamlines formal procedures pertaining to 
the filing and processing of patent applications. This final rule 
revises the rules of practice for consistency with the changes in the 
PLT and title II of the PLTIA. The United States Patent and Trademark 
Office (Office) is implementing the Hague Agreement and title I of the 
PLTIA in a separate rulemaking. The notable changes in the PLT and 
title II of the PLTIA pertain to: The filing date requirements for a 
patent application; the restoration of patent rights via the revival of 
abandoned applications and acceptance of delayed maintenance fee 
payments; and the restoration of the right of priority to a foreign 
application or the benefit of a provisional application in a subsequent 
application filed within two months of the expiration of the twelve-
month period (six-month period for design applications) for filing such 
a subsequent application. This final rule also revises the patent term 
adjustment provisions to provide for a reduction of any patent term 
adjustment if an application is not in condition for examination within 
eight months of its filing date or date of commencement of national 
stage in an international application, and contains miscellaneous 
changes pertaining to the supplemental examination, inventor's oath or 
declaration, and first inventor to file provisions of the Leahy-Smith 
America Invents Act (AIA).

DATES: Effective date: December 18, 2013.
    Applicability date: The changes to 37 CFR 1.1, 1.4, 1.5, 1.6, 1.7, 
1.17, 1.20, 1.23, 1.25, 1.29, 1.33, 1.51, 1.52, 1.54, 1.55(b) through 
(e) and (h), 1.57(b) through (i), 1.58, 1.72, 1.76(d)(2), (f) and (g), 
1.78, 1.83, 1.85, 1.131, 1.136, 1.137, 1.138, 1.197, 1.290, 1.311, 
1.366, 1.378, 1.452, 1.550, 1.809, 1.958, 3.11, 3.31, and 11.18, and 
the removal of 37 CFR 1.317, apply to any patent application filed 
before, on, or after December 18, 2013, to any patent resulting from an 
application filed before, on, or after December 18, 2013, and to any 
reexamination proceeding and any request for supplemental examination 
filed before, on, or after December 18, 2013. The changes to 37 CFR 
1.16, 1.53(b) and (c), 1.57(a), 1.76(b)(3), and 1.81 apply only to 
patent applications filed under 35 U.S.C. 111 on or after December 18, 
2013. The changes to 37 CFR 1.53(f) and 1.495 apply only to patent 
applications filed under 35 U.S.C. 111(a) or 363 on or after September 
16, 2012. The changes to 37 CFR 1.55(f) and 37 CFR 1.704 apply only to 
patent applications filed under 35 U.S.C. 111 on or after December 18, 
2013, and international patent applications in which the national stage 
commenced under 35 U.S.C. 371 on or after December 18, 2013.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Counsel, 
Office of Patent Examination Policy, at (571) 272-8090.

SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: The PLT 
harmonizes and streamlines formal procedures pertaining to the filing 
and processing of patent applications. Title II of the PLTIA amends the 
patent laws to implement the provisions of the PLT. This final rule 
revises the rules of practice for consistency with the changes in the 
PLT and title II of the PLTIA.
    Summary of Major Provisions: The major changes in the PLT and title 
II of the PLTIA pertain to: (1) The filing date requirements for a 
patent application; (2) the restoration of patent rights via the 
revival of abandoned applications and acceptance of delayed maintenance 
fee payments; and (3) the restoration of the right of priority to a 
foreign application or the benefit of a provisional application in a 
subsequent application filed within two months of the expiration of the 
twelve-month period (six-month period for design applications) for 
filing such a subsequent application. This final rule also revises the 
patent term adjustment provisions to provide for a reduction of any 
patent term adjustment if an application is not in condition for 
examination within eight months of its filing date or date of 
commencement of national stage in an international application.
    The Office is specifically revising the rules of practice 
pertaining to the filing date requirements for a patent application to 
provide that a claim is not required for a nonprovisional application 
(other than for a design patent) to be entitled to a filing date (a 
claim has never been required for a provisional application to be 
entitled to a filing date). The Office is also providing for the filing 
of a nonprovisional application ``by reference'' to a previously filed 
application in lieu of filing the specification and drawings. An 
application filed either without at least one claim or ``by reference'' 
to a previously filed application in lieu of the specification and 
drawings will be treated in a manner analogous to the pre-existing 
provisions for treating an application that is missing application 
components not required for a filing date under 35 U.S.C. 111(a) (37 
CFR 1.53(f)), in that the applicant will be given a period of time 
within which to supply a claim and/or claims or a copy of the 
specification and drawings of the previously filed application.
    The Office is also revising the rules of practice pertaining to the 
revival of abandoned applications (37 CFR 1.137) and acceptance of 
delayed maintenance fee payments (37 CFR 1.378) to provide for the 
revival of abandoned applications and acceptance of delayed maintenance 
fee payments solely on the basis of ``unintentional'' delay. The PLTIA 
eliminates the provisions of the patent statutes relating to revival of 
abandoned applications or acceptance of delayed maintenance fee 
payments on the basis of a showing of ``unavoidable'' delay.
    The Office is further revising the rules of practice pertaining to 
priority and benefit claims to provide for the restoration of the right 
of priority to a prior-filed foreign application and the restoration of 
the right to benefit of a prior-filed provisional application. The 
Office is providing with respect to the right of priority to a prior-
filed foreign application that if the subsequent application is filed 
after the expiration of the twelve-month period (six-month period in 
the case of a design application) set forth in 35 U.S.C. 119(a), but 
within two months from the expiration of the twelve-month period (six-
month period in the case of a design application), the right of 
priority in the subsequent application may be restored upon petition 
and payment of the applicable fee if the delay in filing the subsequent 
application within the twelve- or six-month period was unintentional. 
The Office is providing with respect to benefit of a prior-filed

[[Page 62369]]

provisional application that if the subsequent application is filed 
after the expiration of the twelve-month period set forth in 35 U.S.C. 
119(e), but within two months from the expiration of the twelve-month 
period, the benefit of the provisional application may be restored upon 
petition and payment of the applicable fee if the delay in filing the 
subsequent application within the twelve-month period was 
unintentional.
    Lastly, the Office is revising the patent term adjustment 
provisions to provide for a reduction of any patent term adjustment if 
an application is not in condition for examination within eight months 
of its filing date or date of commencement of national stage in an 
international application. The PLT and PLTIA provide applicants with 
additional opportunities to delay the examination process (e.g., the 
ability to file an application without any claims and to file an 
application merely by reference to a previously filed application). 
This change to the patent term adjustment rules is to avoid the 
situation in which an applicant obtains patent term adjustment because 
the applicant takes advantage of the additional opportunities to delay 
the examination process provided by the PLT and PLTIA.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    Background: The PLT was concluded on June 1, 2000, and entered into 
force on April 28, 2005. The PLT harmonizes and streamlines formal 
procedures pertaining to the filing and processing of patent 
applications. With the exception of the filing date requirements 
specified in PLT Article 5, the PLT specifies maximum form and content 
requirements that an Office that is a party to the PLT (a Contracting 
Party) may apply. A Contracting Party is free to provide for form and 
content requirements that are more permissive from the viewpoint of 
applicants and patent owners. The PLT does not apply to design, plant, 
provisional, or reissue applications. See PLT Art. 3 (the PLT applies 
to the types of applications that are permitted to be filed as 
international applications under the Patent Cooperation Treaty (PCT)). 
The PLT Articles and Regulations under the PLT are available on the 
World Intellectual Property Organization (WIPO) Internet Web site 
(www.wipo.int).
    The United States Senate ratified the PLT on December 7, 2007. The 
PLT did not enter into force in the United States upon ratification in 
2007 as the PLT is not a self-executing treaty. See Patent Law Treaty 
and Regulations under Patent Law Treaty, Executive Report 110-6 at 3-4 
(2007). Legislation (title II of the PLTIA) to amend the provisions of 
title 35, United States Code, to implement the PLT was enacted on 
December 18, 2012. See Public Law 112-211, sections 201 through 203, 
126 Stat. 1527, 1533-37 (2012). The changes in title II (sections 201 
through 203) of the PLTIA are divided into three groups: (1) The 
changes pertaining to a patent application filing date; (2) the changes 
pertaining to the revival of abandoned applications and acceptance of 
delayed maintenance fee payments; and (3) the changes pertaining to the 
restoration of the right of priority to a foreign application or the 
benefit of a provisional application. See id. The major provisions of 
the PLT and title II of the PLTIA are as follows:
    PLT Article 5 sets forth the requirements for obtaining a filing 
date. PLT Article 5(1) provides that a filing date will be accorded to 
an application upon compliance with three formal requirements: (1) An 
indication that the elements received by the Office are intended to be 
an application for a patent for an invention; (2) indications that 
would allow the Office to identify and to contact the applicant; and 
(3) a part which appears to be a description of the invention. No 
additional elements (such as a claim or a drawing) can be required for 
a filing date to be accorded to an application. Pre-PLTIA 35 U.S.C. 
111(a) provides that the filing date of an application shall be the 
date on which ``the specification and any required drawing'' are 
received in the Office, and thus requires that an application contain a 
drawing where necessary for an understanding of the invention (35 
U.S.C. 113(first sentence)) and at least one claim to be entitled to a 
filing date. See Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1333 
(Fed. Cir. 1998) (both statute and regulation make clear the 
requirement that a patent application must include, inter alia, a 
specification containing claims and a drawing, and the omission of any 
of these component parts makes a patent application incomplete and thus 
not entitled to a filing date). Section 201(a) of the PLTIA amends 35 
U.S.C. 111(a) to provide that the filing date of an application (other 
than for a design patent) is the date on which a specification, ``with 
or without claims,'' is received in the Office. See 126 Stat. at 1533.
    PLT Article 5(1)(b) permits a Contracting Party to accept a drawing 
as a description of the invention in appropriate circumstances. This is 
considered to be consistent with pre-existing jurisprudence in the 
United States and thus no change in that regard is necessary. See Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (``under 
proper circumstances, drawings alone may provide a `written 
description' of an invention as required by [35 U.S.C.] 112'').
    PLT Article 5 and PLTIA 35 U.S.C. 111(a) specify the formal 
requirements necessary for an application to be entitled to a filing 
date, and compliance with these requirements ensures only that the 
disclosure present upon filing in the application will be entitled to a 
filing date. An application whose disclosure satisfies only the 
requirements of 35 U.S.C. 111(a) to be entitled to a filing date may 
nonetheless not meet the requirements of 35 U.S.C. 112 and 113 
necessary for the applicant to be entitled to a patent for any claimed 
invention presented in the application, or even for the application to 
effectively serve as a priority or benefit application for an 
application subsequently filed in the United States or abroad. 
Therefore, the ability to file an application without a claim or 
drawing should be viewed as a safeguard against the loss of a filing 
date due to a technicality and not as a best practice.
    PLT Article 5(2) permits the description of the invention to be 
filed in any language.
    As discussed previously, the filing date requirements in PLT 
Article 5 are not simply the maximum requirements but instead 
constitute the absolute minimum and maximum requirements for an 
application to be accorded a filing date. See PLT Art. 2(1).
    Finally, as discussed previously, the PLT does not apply to design 
applications. Section 202(a) of the PLTIA amends 35 U.S.C. 171 to 
provide that the filing date of an application for design patent shall 
be the date on which the specification as prescribed by 35 U.S.C. 112 
and any required drawings are filed. See 126 Stat. at 1535. Therefore, 
a design application must contain a claim and any required drawings to 
be entitled to a filing date.
    35 U.S.C. 111(a) as in effect prior to the PLTIA provides that the 
fee and oath or declaration may be submitted after the specification 
and any required drawing are submitted, within such period and under 
such conditions, including the payment of a surcharge, as may be 
prescribed by the Director, and that upon failure to submit the fee and 
oath or declaration within such prescribed period, the application 
shall be regarded as abandoned. See 35 U.S.C. 111(a)(3) and (a)(4). 
Section 201(a) of the PLTIA amends 35 U.S.C. 111(a)(3) and (a)(4) to 
provide that the fee, oath or declaration, and claim or claims may be 
submitted after the filing date of the

[[Page 62370]]

application, within such period and under such conditions, including 
the payment of a surcharge, as may be prescribed by the Office, and 
that upon failure to submit the fee, oath or declaration, and claim or 
claims within the period prescribed by the Office, the application 
shall be regarded as abandoned. See 126 Stat. at 1533.
    Section 201(a) of the PLTIA further amends 35 U.S.C. 111 to: (1) 
More closely align the corresponding provisions for nonprovisional 
applications in 35 U.S.C. 111(a) and provisional applications in 35 
U.S.C. 111(b); (2) more clearly distinguish the filing date 
requirements in those sections from the more substantive requirements 
of 35 U.S.C. 112 and 113; and (3) delete the reference to the 
``unavoidable or unintentional'' standard in favor of an 
``unintentional'' standard in new 35 U.S.C. 27. See id.
    PLT Article 5(6) pertains to applications containing a missing part 
of the description or a missing drawing. PLT Article 5(6)(a) provides 
that if the missing part of the description or a missing drawing is 
timely filed, the filing date of the application shall be the date on 
which the Office has received that part of the description or that 
drawing. PLT Article 5(6)(c) provides that if the missing part of the 
description or the missing drawing is timely withdrawn by the 
applicant, the filing date of the application shall be the date on 
which the applicant complied with requirements provided for in PLT 
Article 5(1) and (2). PLT Article 5(6)(b) provides that where (i) a 
prior-filed application contains the missing part of the description 
and/or missing drawing, (ii) the application as filed claims the 
priority to the prior-filed application, and (iii) the applicant timely 
files a copy of the prior-filed application (and translation if 
necessary), the filing date of the application (including the missing 
part of the description and/or missing drawing) shall be the date on 
which the applicant complied with requirements provided for in PLT 
Article 5(1) and (2). The Office's procedures concerning the handling 
of applications containing a missing part of the description or a 
missing drawing are set forth in sections 601.01(d) (applications filed 
without all pages of the specification) and 601.01(g) (applications 
filed without all figures of drawings) of the Manual of Patent 
Examining Procedure (8th ed. 2001) (Rev. 9, Aug. 2012) (MPEP).
    PLT Article 5(7) provides that a reference to a previously filed 
application, made upon the filing of the application, shall replace the 
description and any drawings of the application for purposes of the 
filing date of the application. PLT Rule 2(5) requires that this 
reference to the previously filed application indicate that, for the 
purposes of the filing date, the description and any drawings of the 
application are replaced by the reference to the previously filed 
application, and also indicate the application number and the office 
(intellectual property authority or country) where the previously filed 
application was filed. PLT Rule 2(5) further provides that a 
Contracting Party may require that: (1) A copy of the previously filed 
application and a translation of the previously filed application (if 
not in a language accepted by the Office) be filed with the Office 
within a time limit of not less than two months from the date on which 
the application containing the reference was received by the Office; 
and (2) a certified copy of the previously filed application be filed 
with the Office within a time limit of not less than four months from 
the date on which the application containing the reference was received 
by the Office.
    Section 201(a) of the PLTIA amends 35 U.S.C. 111 to provide for 
this reference filing in a new 35 U.S.C. 111(c). New 35 U.S.C. 111(c) 
provides that a reference made upon the filing of an application to a 
previously filed application shall, as prescribed by the Office, 
constitute the specification and any drawings of the subsequent 
application for purposes of a filing date. See 126 Stat. at 1533-34. 
New 35 U.S.C. 111(c) specifically provides that the Director may 
prescribe the conditions, including the payment of a surcharge, under 
which a reference made upon the filing of an application under 35 
U.S.C. 111(a) to a previously filed application, specifying the 
previously filed application by application number and the intellectual 
property authority or country in which the application was filed, shall 
constitute the specification and any drawings of the subsequent 
application for purposes of a filing date. See 126 Stat. at 1533. New 
35 U.S.C. 111(c) further provides that a copy of the specification and 
any drawings of the previously filed application shall be submitted 
within such period and under such conditions as may be prescribed by 
the Director, and that a failure to submit the copy of the 
specification and any drawings of the previously filed application 
within the prescribed period shall result in the application being 
regarded as abandoned. See 126 Stat. at 1533-34. New 35 U.S.C. 111(c) 
finally provides that such an abandoned application shall be treated as 
having never been filed, unless: (1) The application is revived under 
35 U.S.C. 27; and (2) a copy of the specification and any drawings of 
the previously filed application are submitted to the Director. See 126 
Stat. at 1534.
    PLT Article 6 standardizes application format requirements by 
providing that a Contracting Party may not impose form or content 
requirements different from or in addition to the form and content 
requirements provided for in the PCT, or permitted by the PCT for 
international applications during national processing or examination, 
or as prescribed in the PLT Regulations. The United States has taken a 
reservation with respect to PLT Article 6, in that PLT Article 6(1) 
shall not apply to any requirement relating to unity of invention 
applicable under the PCT to an international application. See Patent 
Law Treaty and Regulations under Patent Law Treaty, Executive Report 
110-6 at 6. The Office appreciates that patent stakeholders prefer that 
the Office move from the ``independent and distinct'' restriction 
standard of 35 U.S.C. 121 to the ``unity of invention'' standard of PCT 
Rule 13. The Office is in the process of studying the changes to the 
patent statute, regulations, examination practices, and filing fees 
that would be necessary to move from the ``independent and distinct'' 
restriction standard of 35 U.S.C. 121 to the ``unity of invention'' 
standard of PCT Rule 13 in a practical manner.
    The PLT further provides for the establishment of standardized 
Model International Forms, which will have to be accepted by all 
Contracting Parties. The following Model International Forms have been 
established under the PLT: (1) Model International Request Form; (2) 
Model International Power of Attorney Form; (3) Model International 
Request for Recordation of Change in Name or Address Form; (4) Model 
International Request for Correction of Mistakes Form; (5) Model 
International Request for Recordation of Change in Applicant or Owner 
Form; (6) Model International Certificate of Transfer Form; (7) Model 
International Request for Recordation of a License/Cancellation of the 
Recordation of a License Form; and (8) Model International Request for 
Recordation of a Security Interest/Cancellation of the Recordation of a 
Security Interest Form.
    PLT Articles 6, 7, and 8 provide for simplified procedures, such as 
exceptions from mandatory representation for certain actions, 
restrictions on requiring evidence on a systematic basis, permitting a 
single

[[Page 62371]]

communication for more than one application or patent from the same 
person in certain situations (e.g., powers of attorney), and 
restrictions on the requirement to submit a copy and any necessary 
translation of an earlier application.
    PLT Rule 7(2)(b) specifically provides that a single power of 
attorney is sufficient even where it relates to more than one 
application or patent of the same person, and also that a power of 
attorney will be sufficient where it relates to future applications of 
such person. PLT Rule 7(2)(b) permits the Office to require a separate 
copy of the power of attorney be filed in each application and patent 
to which it relates. The Office permits a single power of attorney for 
multiple applications or patents of the same person, but requires a 
separate copy of the power of attorney be filed in each application or 
patent to which it relates. See 37 CFR 1.4(b). A person may give a 
power of attorney that is not specific to an application or patent, 
similar to the General Power of Attorney used in PCT practice (general 
power of attorney), and a practitioner having authority from such 
person may submit a copy of the general power of attorney in any 
application or patent of that person.
    PLT Articles 11, 12, and 13 provide procedures to avoid the loss of 
substantive rights as a result of an unintentional failure to comply 
with formality requirements or time periods.
    PLT Article 11 requires a Contracting Party to provide for either 
extensions of time (or an alternative to reinstate the applicant's or 
owner's rights) for time limits fixed by the Contracting Party. The PLT 
distinguishes between time limits fixed by applicable law and time 
limits fixed by the Contracting Party. A time limit is fixed by 
applicable law when the time limit is provided for in a statute (e.g., 
the three-month period in 35 U.S.C. 151) or regulation (e.g., the 
three-month period in 37 CFR 1.85(c)). A time limit is fixed by the 
Contracting Party when the applicable statute or regulation provides 
for a time period to be set, but does not specify the time limit itself 
(e.g., 35 U.S.C. 133, 37 CFR 1.53(f)(1), or 37 CFR 1.134). While many 
time limits fixed by regulation are extendable (e.g., 37 CFR 
1.53(f)(1), and 1.137(e)), PLT Article 11 applies only to time limits 
that are not fixed by statute or regulation. The PLT also provides that 
extensions of time under PLT Article 11(1) must not be for less than 
two months from the date of the expiration of the unextended time 
period (PLT Rule 12(2)(a)).
    PLT Article 12 provides for reinstatement of rights on the basis of 
unintentional delay (or alternatively if the failure occurred in spite 
of due care). Section 201(b) of the PLTIA adds a new section 27 to 
title 35. New 35 U.S.C. 27 provides that the Director may establish 
procedures to revive an unintentionally abandoned application for 
patent, accept an unintentionally delayed payment of the fee for 
issuing each patent, or accept an unintentionally delayed response by 
the patent owner in a reexamination proceeding, upon petition by the 
applicant for patent or patent owner. See 126 Stat. at 1534. As 
discussed previously, the PLTIA eliminates the provisions of the patent 
statutes relating to revival or acceptance of delayed maintenance fee 
payments on the basis of a showing of ``unavoidable'' delay. Thus, the 
PLTIA provides a single standard (unintentional delay) for reviving 
abandoned applications, accepting delayed issue fee and maintenance fee 
payments, and accepting delayed responses by the patent owner in a 
reexamination proceeding.
    Section 202(b)(1)(A) of the PLTIA amends 35 U.S.C. 41(a)(7) to 
provide that the Office shall charge $1,700.00 on filing each petition 
for the revival of an abandoned application for a patent, for the 
delayed payment of the fee for issuing each patent, for the delayed 
response by the patent owner in any reexamination proceeding, for the 
delayed payment of the fee for maintaining a patent in force, for the 
delayed submission of a priority or benefit claim, or for the extension 
of the twelve-month period for filing a subsequent application. See 126 
Stat. at 1535.
    Section 202(b)(1)(A) of the PLTIA also amends 35 U.S.C. 41(a)(7) to 
provide that the Director may refund any part of this fee in 
exceptional circumstances as determined by the Director. See id. The 
Office has a practice of waiving surcharges not required by statute in 
situations in which the failure to take the required action or pay the 
required fee was due to a widespread disaster, such as a hurricane, 
earthquake, or flood. See, e.g., Relief Available to Patent and 
Trademark Applicants, Patentees and Trademark Owners Affected by 
Hurricane Sandy, 1385 Off. Gaz. Pat. Office 162 (Dec. 18, 2012), Relief 
Available to Patent and Trademark Applicants, Patentees and Trademark 
Owners Affected by the Severe Earthquakes in Northern Italy, 1381 Off. 
Gaz. Pat. Office 213 (Aug. 21, 2012), Relief Available to Patent and 
Trademark Applicants, Patentees and Trademark Owners Affected by the 
Catastrophic Flooding in Thailand, 1375 Off. Gaz. Pat. Office 188 (Feb. 
21, 2012), Relief Available to Patent and Trademark Applicants, 
Patentees and Trademark Owners Affected by the Catastrophic Events of 
March 11, 2011, in Japan, 1365 Off. Gaz. Pat. Office 170 (Apr. 19, 
2011), and Petitions to Accept a Delayed Patent Maintenance Fee Payment 
where Non-Payment was due to the Effects of Hurricane Katrina, 1299 
Off. Gaz. Pat. Office 20 (Oct. 4, 2005). This provision of PLTIA 35 
U.S.C. 41(a)(7) permits the Office to refund (or waive) the fee 
specified in 35 U.S.C. 41(a)(7) in situations in which the failure to 
take the required action or pay the required fee was due to a 
widespread disaster, such as a hurricane, earthquake, or flood, in the 
manner that the Office would waive surcharges that are not required by 
statute.
    Section 202(b)(1)(B) of the PLTIA also amends 35 U.S.C. 41(c)(1) to 
conform procedures for the late payment of maintenance fees with those 
provided in new 35 U.S.C. 27. Section 202(b)(1)(B) of the PLTIA 
specifically amends 35 U.S.C. 41(c)(1) to delete the twenty-four month 
time limit for unintentionally delayed maintenance fee payments and the 
reference to an unavoidable standard. PLTIA 35 U.S.C. 41(c)(1) provides 
that: (1) The Director may accept the payment of any maintenance fee 
required by 35 U.S.C. 41(b) after the six-month grace period if the 
delay is shown to the satisfaction of the Director to have been 
unintentional; (2) the Director may require the payment of the fee 
specified in 35 U.S.C. 41(a)(7) as a condition of accepting payment of 
any maintenance fee after the six-month grace period; and (3) if the 
Director accepts payment of a maintenance fee after the six-month grace 
period, the patent shall be considered as not having expired at the end 
of the grace period (subject to the pre-existing intervening rights 
provision of 35 U.S.C. 41(c)(2)). See 126 Stat. at 1535-36.
    Section 202(b) of the PLTIA also amends 35 U.S.C. 
122(b)(2)(B)(iii), 133, 151, 364(b), and 371(d) to delete the reference 
to an unavoidable standard in light of new 35 U.S.C. 27. See 126 Stat. 
at 1536.
    Section 202(b)(6) of the PLTIA amends 35 U.S.C. 151 to provide 
that: (1) If it appears that an applicant is entitled to a patent under 
the law, a written notice of allowance of the application shall be 
given or mailed to the applicant; (2) the notice of allowance shall 
specify a sum, constituting the issue fee and any

[[Page 62372]]

required publication fee, which shall be paid within three months 
thereafter; and (3) upon payment of this sum, the patent may issue, but 
if payment is not timely made, the application shall be regarded as 
abandoned. See id. Under former 35 U.S.C. 151: (1) The Office issues a 
notice of allowance if it appears that applicant is entitled to a 
patent under the law; (2) the notice of allowance specifies a sum, 
which constitutes the issue fee or a portion thereof; (3) the sum 
specified in the notice of allowance must be paid within three months; 
(4) the patent shall issue if the sum specified in the notice of 
allowance is timely paid, but the application is abandoned if the sum 
specified in the notice of allowance is not timely paid; (5) any 
remaining balance of the issue fee must be paid within three months 
from the mailing of a notice that the balance of the issue fee is due; 
and (6) the patent shall lapse if any remaining balance of the issue 
fee is not paid within three months from the mailing of a notice that 
the balance of the issue fee is due. See In re Mill, 12 USPQ2d 1847 
(1989) (discussing the practice prescribed in 35 U.S.C. 151 for 
obtaining the balance of the issue fee due in an application in which 
the sum specified in the notice of allowance is timely paid). The PLTIA 
amends 35 U.S.C. 151 to provide that the sum specified by the notice of 
allowance constitutes the issue fee and any required publication fee 
(rather than the issue fee or a portion thereof), and eliminates the 
provisions (the third and fourth paragraphs of former 35 U.S.C. 151) 
pertaining to the lapsed patent practice.
    The lapsed patent provisions of former 35 U.S.C. 151 were relevant 
when the issue fee was revised after a notice of allowance is issued 
but before the issue fee is paid. Under former 35 U.S.C. 151: (1) If 
the fee specified in the notice of allowance was timely paid, the 
Office would issue a notice that any balance of the issue fee is due 
and give the applicant three months to pay the balance of the issue 
fee; and (2) if the balance of the issue fee was not paid within this 
three-month period, then the patent would lapse. See Mill, 12 USPQ2d at 
1848. Under the changes to 35 U.S.C. 151 in the PLTIA, the sum 
specified in the notice of allowance will constitute the issue fee and 
any required publication fee, and the Office will proceed to issue a 
patent when the applicant pays the sum specified in the notice of 
allowance, regardless of the issue fee and/or publication fee in effect 
on the date the sum specified in the notice of allowance is paid.
    The Office published a final rule in March of 2013, setting and 
adjusting patent fees under section 10 of the AIA. See Setting and 
Adjusting Patent Fees, 78 FR 4212 (Jan. 18, 2013) (fee setting final 
rule). The fee setting final rule reduces issue fees and publication 
fees paid on or after January 1, 2014. See Setting and Adjusting Patent 
Fees, 78 FR at 4235-36, 4286-87. To allow applicants whose notice of 
allowance is mailed between October 1, 2013, and December 31, 2013, to 
take advantage of the reduced issue and publication fee, any notice of 
allowance mailed between October 1, 2013, and December 31, 2013, will 
indicate that the issue and publication fee due is the lower of: (1) 
The issue fee plus publication fee in effect on the date the notice of 
allowance is mailed; or (2) the issue and publication fee in effect on 
the date the issue and publication fee is paid. Thus, the sum specified 
in a notice of allowance mailed between October 1, 2013, and December 
31, 2013, will be the issue fee in effect on January 1, 2014, for 
applicants who receive a notice of allowance before January 1, 2014, 
but who pay the issue fee on or after January 1, 2014.
    PLT Article 13 provides for the restoration of the right of 
priority where there is a failure to timely claim priority to the prior 
application, and also where there is a failure to file the subsequent 
application within twelve months of the filing date of the priority 
application. Section 201(c) of the PLTIA amends 35 U.S.C. 119 to 
provide that the twelve-month periods set forth in 35 U.S.C. 119(a) and 
(e) may be extended by an additional two months if the delay in filing 
an application claiming priority to a foreign application or the 
benefit of a provisional application within that twelve-month period 
was unintentional. Section 201(c) of the PLTIA also amends 35 U.S.C. 
119(a) and 365(b) to provide for unintentionally delayed claims for 
priority under the PCT and the Regulations under the PCT, and priority 
claims to an application not filed within the priority period specified 
in the PCT and the Regulations under the PCT but filed within the 
additional two-month period.
    Section 201(c) of the PLTIA specifically amends 35 U.S.C. 119(a) by 
adding that the Director may prescribe regulations, including the 
requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), 
pursuant to which the twelve-month period set forth in 35 U.S.C. 119(a) 
may be extended by an additional two months if the delay in filing the 
application in the United States within the twelve-month period was 
unintentional. See 126 Stat. at 1534.
    Section 201(c) of the PLTIA specifically amends 35 U.S.C. 119(e)(1) 
by adding that the Director may prescribe regulations, including the 
requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), 
pursuant to which the twelve-month period set forth in 35 U.S.C. 119(e) 
may be extended by an additional two months if the delay in filing the 
application under 35 U.S.C. 111(a) or 363 within the twelve-month 
period was unintentional. See id.
    Section 201(c) of the PLTIA amends 35 U.S.C. 119(e)(3) by adding 
that for a patent application filed under 35 U.S.C. 363 in a Receiving 
Office other than the United States Patent and Trademark Office, the 
twelve-month and additional two-month period set forth in 35 U.S.C. 
119(e) shall be extended as provided under the PCT and PCT Regulations. 
See 126 Stat. at 1534-35.
    Section 201(c) of the PLTIA amends 35 U.S.C. 365(b) by adding that 
the Director may establish procedures, including the requirement for 
payment of the fee specified in 35 U.S.C. 41(a)(7), to accept an 
unintentionally delayed claim for priority under the PCT and PCT 
Regulations, and to accept a priority claim that pertains to an 
application that was not filed within the priority period specified in 
the PCT and PCT Regulations, but was filed within the additional two-
month period specified under 35 U.S.C. 119(a) or the PCT or PCT 
Regulations. See 126 Stat. at 1535.
    Sections 201(c) and 202(b)(2) and (b)(3) of the PLTIA amend 35 
U.S.C. 119(b), 119(e), and 120 to change the phrase ``including the 
payment of a surcharge'' in the provision pertaining to the submission 
of delayed priority or benefit claims to ``including the requirement 
for payment of the fee specified in [35 U.S.C.] 41(a)(7).'' See 126 
Stat. at 1534 and 1536.
    PLT Article 14 and PLT Rules 15, 16, and 17 pertain to requests for 
a change in the applicant's or owner's name or address, requests for a 
change in the applicant or owner (e.g., due to an assignment), requests 
for recordation of a license or a security interest, and requests for 
correction of a mistake.
    35 U.S.C. 261 as in effect prior to the PLTIA provides that: 
``Subject to the provisions of this title, patents shall have the 
attributes of personal property.'' Section 201(d) of the PLTIA amends 
35 U.S.C. 261, first paragraph, by adding: ``[t]he [United States] 
Patent and Trademark Office shall maintain a register of interests in 
applications for patents and patents and shall record any document 
related thereto upon request, and may require a fee therefor.'' See 126

[[Page 62373]]

Stat. at 1535. Section 201(d) of the PLTIA also amends 35 U.S.C. 261, 
fourth paragraph, to read as follows: ``An interest that constitutes an 
assignment, grant or conveyance shall be void as against any subsequent 
purchaser or mortgagee for a valuable consideration, without notice, 
unless it is recorded in the [United States] Patent and Trademark 
Office within three months from its date or prior to the date of such 
subsequent purchase or mortgage.'' See id.
    PLT Rule 15(3)(b) provides that a single request for recordation of 
a change in the name and/or address of the applicant or owner is 
sufficient even where it relates to more than one application or patent 
of the same person, but also permits the Office to require a separate 
copy of the request for each application and patent to which it 
relates. PLT Rules 16(5) and 17(5) provide that a single request for 
recordation of a change in the applicant or owner and a single request 
for recordation of a license or security interest is sufficient even 
where it relates to more than one application or patent of the same 
person, but also permits the Office to require a separate copy of the 
request for each application and patent to which it relates. The Office 
will permit a single request for recordation of a change in the name 
and/or address of the applicant or owner, single request for 
recordation of a change in the applicant or owner, and a single request 
for recordation of a license or security interest for multiple 
applications or patents of the same person, but will require a separate 
copy of such a request for each application and patent to which it 
relates. See 37 CFR 1.4(b).
    PLT Rule 18(3) provides that a single request for correction of a 
mistake is sufficient even where it relates to more than one 
application or patent of the same person, provided that the mistake and 
correction are common to all applications or patents concerned, but 
also permits the Office to require a separate copy of the request for 
each application and patent to which it relates. The Office will permit 
a single request for correction of a mistake to more than one 
application or patent of the same person, provided that the mistake and 
correction are common to all applications or patents concerned, but 
will require a separate copy of such a request for each application and 
patent to which it relates. See 37 CFR 1.4(b).
    The PLT also provides for a minimum two-month time period for 
replies to notifications concerning noncompliance pertaining to: (1) 
Filing date issues or omitted drawings or pages of specification (PLT 
Rule 2(1)); (2) the form or content of an application (PLT Rule 6(1)); 
(3) the appointment of a representative (PLT Rule 7(5)); (4) the formal 
requirements for communications from the applicant or patent owner (PLT 
Rule 11(1)); (5) requests for recordation of a change in name or 
address (PLT Rule 15(6); (6) requests for recordation of a change in 
the applicant or patent owner (PLT Rule 16(8)); (7) requests for 
recordation of a license or a security interest (PLT Rule 17(8)); and 
(8) requests for correction of a mistake (PLT Rule 18(6)).
    The Office has and may continue to develop certain pilot programs 
that are not encompassed by the PLT. These pilot programs will continue 
to set time periods of less than two months in certain situations as 
necessary to avoid delays and permit the timely evaluation of the 
effectiveness of the program.
    The first is the pre-appeal brief conference program. The Notice of 
Panel Decision from Pre-Appeal Brief Review will continue to set a time 
period of one month from the mailing of the Notice of Panel Decision 
from Pre-Appeal Brief Review, or the balance of the two-month time 
period running from the notice of appeal, whichever is longer, to file 
an appeal brief in order to avoid dismissal of the appeal if the result 
of the pre-appeal brief review is that the applicant must proceed to 
the Patent Trial and Appeal Board. The Notice of Non-Compliant Pre-
Appeal Brief Request for Review will continue to set a time period of 
one month from the mailing of the Notice of Non-Compliant Pre-Appeal 
Brief Request for Review, or the balance of the two-month time period 
running from the notice of appeal, whichever is longer, to file an 
appeal brief in order to avoid dismissal of the appeal.
    The second is the pre-first Office action on the merits interview 
program. The Notice of Non-Compliant First Action Interview Request 
will continue to set a non-extendable time period of one month or 
thirty days, whichever is longer, for an applicant to correct the 
deficiencies to avoid the application being removed from the Full First 
Office Action Interview Pilot Program and examined in regular course. 
The First Action Interview Pilot Program Pre-Interview Communication 
will continue to set a time period of one month or thirty days, 
whichever is longer (extendable by only one month) for an applicant to 
schedule an interview and submit a proposed amendment or arguments to 
avoid the application being removed from the Full First Office Action 
Interview Pilot Program and examined in regular course. However, the 
Office is revising the Full First Action Interview program to provide 
that the First Action Interview Office Action Summary will set a time 
period of two months (extendable by two months) in order for an 
applicant to reply to the Office action.
    The Office is revising the Accelerated Examination program in view 
of the PLT. The Office adopted an Accelerated Examination program in 
2006, which provided for Office actions setting a one-month non-
extendable time period for replies. See Changes to Practice for 
Petitions in Patent Applications To Make Special and for Accelerated 
Examination, 71 FR 36323, 36325 (June 25, 2006); see also MPEP 
708.02(a). The Office is revising the Accelerated Examination program 
to provide that Office actions (other than a notice of allowance) will 
set a shortened statutory period for reply of at least two months. In 
addition, extensions of this shortened statutory period under 37 CFR 
1.136(a) will be permitted, but filing a petition for an extension of 
time will result in the application being taken out of the Accelerated 
Examination program, in the same manner as filing a petition for an 
extension of time will result in the application being taken out of the 
Prioritized Examination program. Cf. Changes To Implement the 
Prioritized Examination Track (Track I) of the Enhanced Examination 
Timing Control Procedures Under the Leahy-Smith America Invents Act, 76 
FR 59050, 59051 (Sept. 23, 2011).
    Section 203(a) provides that the amendments made by title II of the 
PLTIA take effect on December 18, 2013 (the date that is one year after 
the date of the enactment of the PLTIA) and apply to: (1) Any patent 
issued before, on, or after December 18, 2013; and (2) any application 
for patent that is pending on or filed after December 18, 2013. See 126 
Stat. at 1536. Section 203(b) provides that the amendments to 35 U.S.C. 
111 made by title II of the PLTIA apply only to applications that are 
filed on or after December 18, 2013. Section 203(b) also provides that 
the amendments made by title II of the PLTIA shall have no effect with 
respect to any patent that is the subject of litigation in an action 
commenced before December 18, 2013. See 126 Stat. at 1537.
    As discussed previously, the PLT does not apply to design, plant, 
provisional, or reissue applications. The changes in the PLTIA and this 
final rule to implement the PLT, however, are applicable to design, 
plant, provisional, and reissue applications, except that PLTIA 35 
U.S.C. 171 and 37 CFR 1.53(b)

[[Page 62374]]

as adopted in this final rule require that a design application contain 
a claim and any required drawings to be entitled to a filing date.
    The PLT itself will enter into force for the United States three 
months after the date on which the United States deposits its 
instrument of ratification with the Director General of WIPO or on a 
later date indicated in the U.S. instrument (but no later than six 
months after the date the instrument is deposited). See PLT Art. 
21(2)(ii) and Patent Law Treaty and Regulations under Patent Law 
Treaty, Executive Report 110-6 at 3. The Office plans to modify its 
procedures not covered by title II of the PLTIA for consistency with 
the PLT and PLT Regulations no later than December 18, 2013. However, 
the changes to Office practices do not affect the requirements for 
replies to Office notices and actions issued prior to December 18, 
2013. See PLT Art. 22(2) (a Contracting Party is not obliged to apply 
PLT provisions to procedures commenced before the date on which the PLT 
binds the Contracting Party under PLT Article 21).
    The Office revised the rules of practice to implement the 
supplemental examination provisions of the AIA in August of 2012. See 
Changes to Implement the Supplemental Examination Provisions of the 
Leahy-Smith America Invents Act and to Revise Reexamination Fees, 77 FR 
48828 (Aug. 14, 2012). This final rule also adds references to 
supplemental examination in the filing, correspondence, deposit 
account, and paper and compact disc quality and format provisions of 
the rules of practice. The Office is specifically revising these 
provisions to indicate that the provisions pertaining to ex parte 
reexamination proceedings are also applicable in supplemental 
examination proceedings. See Changes to Implement the Supplemental 
Examination Provisions of the Leahy-Smith America Invents Act and to 
Revise Reexamination Fees, 77 FR at 48830 (adopting ex parte 
reexamination content requirements for supplemental examination 
proceedings).

Discussion of Specific Rules

    The following is a discussion of amendments to Title 37 of the Code 
of Federal Regulations, Parts 1, 3, and 11.
    Section 1.1: Section 1.1(c) is amended to provide that: (1) 
Requests for supplemental examination (original and corrected request 
papers), and any other papers filed in a supplemental examination 
proceeding, should be additionally marked ``Mail Stop Supplemental 
Examination;'' (2) any papers filed in a reexamination proceeding 
ordered as a result of a supplemental reexamination proceeding, other 
than correspondence to the Office of the General Counsel pursuant to 
Sec.  1.1(a)(3) and Sec.  102.4, should be additionally marked ``Mail 
Stop Ex Parte Reexam.''
    Section 1.4: Section 1.4(a)(2) is amended to add a reference to 
supplemental examination proceedings in subpart E of 37 CFR part 1 
(Sec. Sec.  1.601 to 1.625).
    Section 1.4(c) is amended to provide that subjects provided for on 
a single Office or WIPO form may be contained in a single paper. This 
provision is to clarify that subjects that are provided for on a single 
Office or WIPO form are not considered separate subjects for purposes 
of Sec.  1.4(c) (which thus must be contained in separate papers).
    Section 1.4(d) is amended to implement the signature provisions of 
PLT Rule 9(4) concerning electronic communications. PLT Rule 9(4) 
provides that where an Office permits the filing of communications in 
electronic form or by electronic means of transmittal, it shall 
consider such a communication signed if a graphic representation of a 
signature accepted by that Office appears on that communication as 
received by the Office. Section 1.4(d) is specifically amended to 
provide that correspondence permitted via the Office electronic filing 
system may be signed by a graphic representation of a handwritten 
signature as provided for in Sec.  1.4(d)(1) or a graphic 
representation of an S-signature as provided for in Sec.  1.4(d)(2) 
when it is submitted via the Office electronic filing system. Section 
1.4(d) is also amended to provide for S-signatures in supplemental 
examination proceedings, simplify the organization of the provisions in 
Sec.  1.4(d)(4) pertaining to certifications, and locate the provisions 
pertaining to forms in Sec.  1.4(d)(5).
    Section 1.5: Section 1.5(d) is amended to provide for letters 
relating to supplemental examination proceedings.
    Section 1.6: Section 1.6(d) is amended to provide for 
correspondence in supplemental examination proceedings in a like manner 
to correspondence in ex parte reexamination proceedings. Section 1.6(d) 
is specifically amended to provide that a request for supplemental 
examination (as with a request for ex parte reexamination) may not be 
filed by facsimile, and that the control number of the proceeding 
should be entered on the cover sheet of any papers filed in a 
supplemental examination proceeding (as with papers filed in an ex 
parte reexamination proceeding).
    Section 1.7: Section 1.7(a) is amended to refer to Sec.  90.3 
rather than former Sec.  1.304 for time for appeal or for commencing 
civil action. The judicial review provisions of Sec. Sec.  1.302 
through 1.304 were replaced by 37 CFR part 90 in September of 2012. See 
Rules of Practice for Trials Before the Patent Trial and Appeal Board 
and Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR 
48612, 48625-26, 48677-78 (Aug. 14, 2012) (final rule).
    Section 1.16: Section 1.16(f) is amended to provide that it is also 
applicable to filing a nonprovisional application that does not contain 
at least one claim on the filing date of the application as well as to 
filing a nonprovisional application filed by reference to a previously 
filed application under Sec.  1.57(a). See discussion of Sec. Sec.  
1.53 and 1.57. Section 1.16(f) provides that the surcharge is 
applicable to filing the basic filing fee, search fee, examination fee, 
or inventor's oath or declaration on a date later than the filing date 
of the application, an application that does not contain at least one 
claim on the filing date of the application, or an application filed by 
reference to a previously filed application under Sec.  1.57(a), except 
provisional applications.
    Section 1.17: Sections 1.17(f) and (g) are amended for consistency 
with the changes to Sec.  1.57. See discussion of Sec.  1.57. Section 
1.17(f) is also amended to add the phrase ``in an application for 
patent'' in the references to Sec. Sec.  1.182 and 1.183 to clarify 
that the fee specified in Sec.  1.17(f) is not applicable in 
reexamination proceedings. The fee for filing a petition in a 
reexamination proceeding (except for those specifically enumerated in 
Sec. Sec.  1.550(i) and 1.937(d)) is set forth in Sec.  1.20(c)(6). See 
Changes to Implement the Supplemental Examination Provisions of the 
Leahy-Smith America Invents Act and to Revise Reexamination Fees, 77 FR 
at 48832 and 48851.
    Section 1.17(m) is amended to implement the change to 35 U.S.C. 
41(a)(7), 41(c)(1), 119, 120, and 365 in section 202(b) of the PLTIA. 
Section 202(b)(1)(A) of the PLTIA amends 35 U.S.C. 41(a)(7) to provide 
that the Office shall charge $1,700.00 ($850.00 small entity) on filing 
each petition for the revival of an abandoned application for a patent, 
for the delayed payment of the fee for issuing each patent, for the 
delayed response by the patent owner in any reexamination proceeding, 
for the delayed payment of the fee for maintaining a patent in force, 
for the delayed submission of a priority or

[[Page 62375]]

benefit claim, or for the extension of the twelve-month period for 
filing a subsequent application. Sections 202(b)(1)(B), 202(b)(2), and 
202(b)(3) of the PLTIA amend 35 U.S.C. 41(c)(1), 119, and 120 to 
replace ``payment of a surcharge'' with ``payment of the fee specified 
in section 41(a)(7).'' Section 1.17(m) as adopted in this final rule 
does not include a micro entity fee amount as this fee is set under 35 
U.S.C. 41(a)(7) as amended by 202(b)(1)(A) of the PLTIA and not section 
10(a) of the AIA. Section 10(b) of the AIA provides that the micro 
entity discount applies to fees set under section 10(a) of the AIA. See 
Public Law 112-29, 125 Stat. 284, 316-17 (2011). The fee specified in 
Sec.  1.17(m) will have a micro entity amount when patent fees are 
again set under section 10(a) of the AIA.
    Section 1.17(p) is amended, and Sec.  1.17(o) is added, to provide 
for information disclosure statements under Sec.  1.97(c) or (d) in 
Sec.  1.17(p) and for third-party submissions under Sec.  1.290 in 
Sec.  1.17(o). Section 1.17(p) formerly provided for both information 
disclosure statements under Sec.  1.97(c) or (d) and third-party 
submissions under Sec.  1.290, which could have caused confusion as a 
third party is not eligible for the micro entity discount. Thus, Sec.  
1.17(p) as adopted in this final rule provides for information 
disclosure statements under Sec.  1.97(c) or (d) and includes both a 
small entity and micro entity discount, and Sec.  1.17(o) as adopted in 
this final rule provides for third-party submissions under Sec.  1.290 
and includes only a small entity discount.
    Sections 1.17(l) and 1.17(t) are removed in view of the change to 
35 U.S.C. 41(a)(7), 119, and 120 in section 202(b) of the PLTIA.
    Section 1.20: Section 1.20(i) is removed in view of the change to 
35 U.S.C. 41(a)(7) and 41(c)(1) in section 202(b)(1) of the PLTIA.
    Section 1.23: Section 1.23(c) is added to provide that a fee 
transmittal letter may be signed by a juristic applicant or patent 
owner. PLT Article 7(2) provides that an assignee of an application, an 
applicant, owner, or other interested person may act pro se before the 
Office for the mere payment of a fee.
    Section 1.25: Section 1.25(b) is amended to provide for deposit 
account charge authorizations in supplemental examination proceedings 
in a like manner to deposit account charge authorizations in ex parte 
reexamination proceedings. Section 1.25(b) is specifically amended to 
provide that an authorization to charge a deposit account the fee for a 
request for supplemental examination pursuant to Sec.  1.610 and any 
other fees required in a supplemental examination proceeding in a 
patent may also be filed with the request for supplemental examination.
    Section 1.29: Section 1.29(e) is amended to provide that a micro 
entity certification in an international application filed in a 
Receiving Office other than the United States Receiving Office may be 
signed by a person authorized to represent the applicant under Sec.  
1.455.
    Section 1.29(k)(4) is amended to delete ``but payment of a 
deficiency based upon the difference between the current fee amount for 
a small entity and the amount of the previous erroneous micro entity 
fee payment will not be treated as an assertion of small entity status 
under Sec.  1.27(c)'' and ``[o]nce a deficiency payment is submitted 
under this paragraph, a written assertion of small entity status under 
Sec.  1.27(c)(1) is required to obtain small entity status.'' This 
change to Sec.  1.29(k)(4) is for consistency with the provision of 
Sec.  1.29(i) that a notification of loss of micro entity status is not 
automatically treated as a notification of loss of small entity status.
    Section 1.33: Section 1.33(c) is amended to provide for 
correspondence to and from the patent owner in supplemental examination 
proceedings in a like manner to correspondence to and from the patent 
owner in ex parte reexamination proceedings. Section 1.33(c) is 
specifically amended to provide that all notices, official letters, and 
other communications for the patent owner in a supplemental examination 
proceeding will be directed to the correspondence address in the patent 
file, and that papers filed in a supplemental examination 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.
    Section 1.51: Section 1.51(a) is amended to provide that an 
application transmittal letter limited to the transmittal of the 
documents and fees comprising a patent application under this section 
may be signed by a juristic applicant or patent owner. PLT Article 7(2) 
provides that an assignee of an application, an applicant, owner, or 
other interested person may act pro se before the Office for the filing 
of an application for the purposes of the filing date.
    Section 1.52: Section 1.52(a)(1), (b)(2), (b)(4), (b)(5), and 
(b)(6) are amended to provide for paper quality and format requirements 
in supplemental examination proceedings in a like manner to paper 
quality and format requirements in ex parte reexamination proceedings.
    Section 1.52(e) is amended to provide for compact disc quality and 
format requirements in supplemental examination proceedings in a like 
manner to compact disc quality and format requirements in ex parte 
reexamination proceedings.
    Section 1.53: Section 1.53 is amended to implement the changes to 
35 U.S.C. 111 in section 201 of the PLTIA and the change to 35 U.S.C. 
171 in section 202(a) of the PLTIA.
    Section 201(a) of the PLTIA amends 35 U.S.C. 111(a) to provide that 
the filing date of an application (other than for a design patent) is 
the date on which a specification, ``with or without claims,'' is 
received in the Office. Section 1.53(b) as adopted in this final rule 
thus provides that the filing date of an application for patent filed 
under Sec.  1.53, except for an application for a design patent or a 
provisional application under Sec.  1.53(c), is the date on which a 
specification, with or without claims, is received in the Office.
    Section 202(a) of the PLTIA amends 35 U.S.C. 171 to provide that 
the filing date of an application for design patent shall be the date 
on which the specification as prescribed by 35 U.S.C. 112 and any 
required drawings are filed. Therefore, a design application must 
contain a claim to be entitled to a filing date. Section 1.53(b) as 
adopted in this final rule thus provides that the filing date of an 
application for a design patent filed under this section, except for a 
continued prosecution application under Sec.  1.53(d), is the date on 
which the specification as prescribed by 35 U.S.C. 112, including at 
least one claim, and any required drawings are received in the Office.
    Section 201(a) of the PLTIA amends 35 U.S.C. 111(b) to more closely 
align the corresponding provisions for nonprovisional applications in 
35 U.S.C. 111(a) and provisional applications in 35 U.S.C. 111(b). 
Section 1.53(c) as adopted in this final rule thus provides that the 
filing date of a provisional application is the date on which a 
specification, with or without claims, is received in the Office.
    As discussed previously, PLT Article 5 and PLTIA 35 U.S.C. 111(a) 
provide minimal formal requirements necessary for an application to be 
entitled to a filing date to safeguard against the loss of a filing 
date due to a technicality. PLT Article 5 and PLTIA 35 U.S.C. 111 
should not be viewed as prescribing a best practice for the preparation 
and filing of a patent application. The

[[Page 62376]]

preparation of claims to any claimed invention for which patent 
protection is desired and inclusion of such claims with the application 
on filing will help ensure that the application satisfies the 
disclosure requirements of 35 U.S.C. 112(a) for any such claimed 
invention.
    Section 201(a) of the PLTIA amends 35 U.S.C. 111(a) to provide that 
the claim or claims may be submitted after the filing date of the 
application, within such period and under such conditions, including 
the payment of a surcharge, as may be prescribed by the Office, and 
that upon failure to submit one or more claims within the period 
prescribed by the Office, the application shall be regarded as 
abandoned. Section 1.53(f) as adopted in this final rule thus provides 
that an application filed without at least one claim would be treated 
in a manner analogous to how an application without the filing, search, 
or examination fee is treated under pre-existing Sec.  1.53. Section 
1.53(f) specifically provides that if an application which has been 
accorded a filing date pursuant to Sec.  1.53(b) does not include at 
least one claim: (1) The applicant will be notified and given a period 
of time within which to file a claim or claims and pay the surcharge if 
required by Sec.  1.16(f) to avoid abandonment if the applicant has 
provided a correspondence address; and (2) the applicant has three 
months from the filing date of the application within which to file a 
claim or claims and pay the surcharge required by Sec.  1.16(f) to 
avoid abandonment if the applicant has not provided a correspondence 
address.
    The changes to Sec.  1.53 to implement the changes to 35 U.S.C. 111 
in section 201 of the PLTIA and the change to 35 U.S.C. 171 in section 
202(a) of the PLTIA (just discussed previously) apply only to 
applications under 35 U.S.C. 111 filed on or after December 18, 2013.
    Section 1.53 is also amended to implement the change to 35 U.S.C. 
115 in section 1(f) of the Act to correct and improve certain 
provisions of the Leahy-Smith America Invents Act and title 35, United 
States Code (AIA Technical Corrections Act). Section 1(f) of the AIA 
Technical Corrections Act amends 35 U.S.C. 115(f) to read as follows: 
``[t]he applicant for patent shall provide each required oath or 
declaration under [35 U.S.C. 115](a), substitute statement under [35 
U.S.C. 115](d), or recorded assignment meeting the requirements of [35 
U.S.C. 115](e) no later than the date on which the issue fee for the 
patent is paid.'' See Public Law 112-274, section 1(f), 126 Stat. 2456-
57 (2013).
    In the rulemaking to implement the inventor's oath or declaration 
provisions of the AIA, the Office provided that applicants may postpone 
filing the inventor's oath or declaration until the application is 
otherwise in condition for allowance if the applicant provides an 
application data sheet before examination indicating the name, 
residence, and mailing address of each inventor. See Changes to 
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 2012) (final 
rule). AIA 35 U.S.C. 115(f) provided that a notice of allowance under 
35 U.S.C. 151 may be provided to an applicant only if the applicant has 
filed each required oath or declaration under 35 U.S.C. 115(a), 
substitute statement under 35 U.S.C. 115(d), or recorded assignment 
meeting the requirements of 35 U.S.C. 115(e). The Office thus provided 
that if an application is in condition for allowance but does not 
include an oath or declaration in compliance with Sec.  1.63, or a 
substitute statement in compliance with Sec.  1.64, executed by or with 
respect to each actual inventor, the Office will issue a ``Notice of 
Allowability'' (PTOL-37) (but not a ``Notice of Allowance and Fee(s) 
Due'' (PTOL-85)) giving the applicant three months to file an oath or 
declaration in compliance with Sec.  1.63, or substitute statement in 
compliance with Sec.  1.64, executed by or with respect to each actual 
inventor, to avoid abandonment. The Office also provided that the 
``Notice of Allowance and Fee(s) Due'' (PTOL-85)) will not be issued 
until the application includes an oath or declaration in compliance 
with Sec.  1.63, or substitute statement in compliance with Sec.  1.64, 
executed by or with respect to each actual inventor. See Changes to 
Implement the Inventor's Oath or Declaration Provisions of the Leahy-
Smith America Invents Act, 77 FR at 48787-88.
    The change to 35 U.S.C. 115(f) in section 1(f) of the AIA Technical 
Corrections Act permits the Office to issue a ``Notice of Allowance and 
Fee(s) Due'' (PTOL-85) before the application includes an oath or 
declaration in compliance with Sec.  1.63, or substitute statement in 
compliance with Sec.  1.64, executed by or with respect to each actual 
inventor. See Changes to Implement the Inventor's Oath or Declaration 
Provisions of the Leahy-Smith America Invents Act, 77 FR at 48802 
(noting that the only effect of AIA 35 U.S.C. 115(f) is to preclude the 
Office from issuing a notice of allowance until each required 
inventor's oath or declaration has been filed). The Office is thus 
revising the provisions pertaining to the filing of an application 
without the inventor's oath or declaration to provide that if an 
application is in condition for allowance but does not include an oath 
or declaration in compliance with Sec.  1.63, or a substitute statement 
in compliance with Sec.  1.64, executed by or with respect to each 
actual inventor, the Office will issue a ``Notice of Allowability'' 
(PTOL-37) requiring an oath or declaration in compliance with Sec.  
1.63, or substitute statement in compliance with Sec.  1.64, executed 
by or with respect to each actual inventor, together with the ``Notice 
of Allowance and Fee(s) Due'' (PTOL-85).
    35 U.S.C. 115(f) does not specifically provide for the consequence 
that results if an applicant fails to provide an oath or declaration in 
compliance with Sec.  1.63, or a substitute statement in compliance 
with Sec.  1.64, executed by or with respect to each actual inventor. 
PLTIA 35 U.S.C. 111(a)(3), however, provides that the ``fee, oath or 
declaration, and 1 or more claims may be submitted after the filing 
date of the application, within such period and under such conditions, 
including the payment of a surcharge, as may be prescribed by the 
Director,'' and that ``[u]pon failure to submit the fee, oath or 
declaration, and 1 or more claims within such prescribed period, the 
application shall be regarded as abandoned.'' Section 1.53(f)(3)(ii) as 
adopted in this final rule thus provides that if the applicant is 
notified in a notice of allowability that an oath or declaration in 
compliance with Sec.  1.63, or substitute statement in compliance with 
Sec.  1.64, executed by or with respect to each named inventor has not 
been filed, the applicant must file each required oath or declaration 
in compliance with Sec.  1.63, or substitute statement in compliance 
with Sec.  1.64, no later than the date on which the issue fee is paid 
to avoid abandonment (which time period is not extendable). Section 
1.53(f)(3)(ii) as adopted in this final rule also provides that: (1) 
The applicant must file each required oath or declaration in compliance 
with Sec.  1.63, or substitute statement in compliance with Sec.  1.64, 
no later than the date on which the issue fee for the patent is paid 
(as required by 35 U.S.C. 115(f)); and (2) that the Office may dispense 
with the notice provided for in Sec.  1.53(f)(1) if each required oath 
or declaration in compliance with Sec.  1.63, or substitute statement 
in compliance with Sec.  1.64, has been filed before the application is 
in condition for allowance.
    Section 1.54: Section 1.54(b) is amended to provide that a letter 
limited to a request for a filing receipt (which

[[Page 62377]]

includes a corrected filing receipt) may be signed by a juristic 
applicant or patent owner. PLT Article 7(2) provides that an assignee 
of an application, an applicant, owner, or other interested person may 
act pro se before the Office for the issue of a receipt or notification 
by the Office in respect of any procedure referred to in PLT Article 
7(2)(a)(i) through 7(2)(a)(iii).
    Section 1.55: Section 1.55 is amended to implement the provisions 
in section 201(c) of the PLTIA and PLT Article 13 for the restoration 
of the right of priority. Section 201(c) of the PLTIA amends 35 U.S.C. 
119(a) by adding that the Director may prescribe regulations, including 
the requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), 
pursuant to which the twelve-month period set forth 35 U.S.C. 119(a) 
may be extended by an additional two months if the delay in filing the 
application in the United States within the twelve-month period was 
unintentional.
    Section 1.55(b) is amended to provide that its time period 
requirement is subject to Sec.  1.55(c).
    Section 1.55(c) as adopted in this final rule contains the 
provisions relating to the restoration of the right of priority under 
35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b). Section 
1.55(c) as adopted in this final rule specifically provides that if the 
subsequent application has a filing date which is after the expiration 
of the twelve-month period (six-month period in the case of a design 
application) set forth in Sec.  1.55(b), but within two months from the 
expiration of the period set forth in Sec.  1.55(b), the right of 
priority in the subsequent application may be restored upon petition if 
the delay in filing the subsequent application within the period set 
forth in Sec.  1.55(b) was unintentional. When the last day for filing 
an application within the period set forth in Sec.  1.55(b) falls on 
Saturday, Sunday, or a Federal holiday within the District of Columbia, 
the additional two-month period specified in Sec.  1.55(c) is measured 
from the next succeeding secular or business day. See 35 U.S.C. 21(b). 
Section 1.55(c) as adopted in this final rule further provides that a 
petition to restore the right of priority under Sec.  1.55(b) filed in 
the subsequent application must include: (1) The priority claim under 
35 U.S.C. 119(a) through (d) or (f) or 365(a) or (b) in an application 
data sheet (Sec.  1.76(b)(6)), identifying the foreign application to 
which priority is claimed, by specifying the application number, 
country (or intellectual property authority), day, month, and year of 
its filing, unless previously submitted; (2) the petition fee as set 
forth in Sec.  1.17(m); and (3) a statement that the delay in filing 
the subsequent application within the twelve-month period (six-month 
period in the case of a design application) set forth in Sec.  1.55(b) 
was unintentional. Section 1.55(c) as adopted in this final rule 
further provides that the Director may require additional information 
where there is a question whether the delay was unintentional.
    Section 1.55(c) as adopted in this final rule also provides that 
the right of priority in the subsequent application may be restored 
under PCT Rule 26bis.3. A decision by a Receiving Office to restore a 
right of priority under PCT Rule 26bis.3 in an international 
application designating the United States is effective as to the United 
States in the national stage of such application in accordance with PCT 
Rule 49ter.1.
    The procedure set forth in Sec.  1.55(c) as adopted in this final 
rule is for applicants whose delay in filing the subsequent application 
within the twelve-month time period in 35 U.S.C. 119(a) was 
unintentional. The use of the additional two-month time period in 35 
U.S.C. 119(a) as an ``extension of time'' to file the subsequent 
application would be considered an abuse of the provisions. Cf. In re 
Application of S., 8 USPQ2d 1630, 1632 (Comm'r Pat. 1988) (use of the 
procedures for the revival of an unintentionally abandoned application 
as an ``extension of time'' is an abuse of the revival procedures).
    The provisions of former Sec.  1.55(c) pertaining to the time for 
filing a priority claim in an application entering the national stage 
under 35 U.S.C. 371 have been transferred to Sec.  1.55(d) and the 
provisions of former Sec.  1.55(c) pertaining to the time for filing a 
certified copy of the foreign application in an application entering 
the national stage under 35 U.S.C. 371 have been transferred to Sec.  
1.55(f). With the changes to Sec.  1.55(c), (d), and (f) in this final 
rule, Sec.  1.55 is organized as follows: (1) Sec.  1.55(a) provides 
generally that a nonprovisional application may claim priority to 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); (2) Sec.  
1.55(b) contains provisions relating to the time for filing a 
nonprovisional application claiming priority to a foreign application 
under 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b)); 
(3) Sec.  1.55(c) contains the provisions relating to the restoration 
of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 
172, and 365(a) and (b); (4) Sec.  1.55(d) contains the provisions 
relating to the time for filing a priority claim in any nonprovisional 
application (an application filed under 35 U.S.C. 111(a) or an 
application entering the national stage under 35 U.S.C. 371); (5) Sec.  
1.55(e) contains the provisions relating to delayed priority claims in 
an application filed under 35 U.S.C. 111(a) or in a national stage 
application under 35 U.S.C. 371; (6) Sec.  1.55(f) contains the 
provisions relating to the time for filing the certified copy of a 
foreign application in any nonprovisional application (an application 
filed under 35 U.S.C. 111(a) or an application entering the national 
stage under 35 U.S.C. 371); (7) Sec.  1.55(g) contains the provisions 
relating to the filing of a priority claim, certified copy of the 
foreign application, and translation of a non-English language foreign 
application in any application; (8) Sec.  1.55(h) contains the 
provisions relating to the priority document exchange agreement; (9) 
Sec.  1.55(i) contains the provisions relating to the filing of an 
interim copy of a foreign application; (10) Sec.  1.55(j) contains the 
provisions relating to requirements for certain applications filed on 
or after March 16, 2013; (11) Sec.  1.55(k) contains the provisions 
relating to inventor's certificates; and (12) Sec.  1.55(l) provides 
that the time periods set forth in Sec.  1.55 are not extendable.
    Section 1.55(d) is amended to specify the time for filing a 
priority claim in any nonprovisional application (applications under 35 
U.S.C. 111(a) and international application entering the national stage 
under 35 U.S.C. 371).
    Section 1.55(d)(1) pertains to applications under 35 U.S.C. 111(a). 
Section 1.55(d)(1) provides that the claim for priority must be filed 
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 in an original application filed under 35 U.S.C. 111(a), 
except as provided in Sec.  1.55(e). Section 1.55(d)(1) further 
provides that the claim for priority must be presented in an 
application data sheet (Sec.  1.76(b)(6)), and must identify the 
foreign application to which priority is claimed, by specifying the 
application number, country (or intellectual property authority), day, 
month, and year of its filing. Section 1.55(d)(1) finally provides that 
the time period in Sec.  1.55(d)(1) does not apply in a design 
application. The provisions of Sec.  1.55(d)(1) were included in former 
Sec.  1.55(d).
    Section 1.55(d)(2) pertains to international applications entering 
the national stage under 35 U.S.C. 371. Section 1.55(d)(2) provides 
that the claim for priority must be made within the time limit set 
forth in the PCT and

[[Page 62378]]

the Regulations under the PCT in an international application entering 
the national stage under 35 U.S.C. 371, except as provided in Sec.  
1.55(e). The provisions of Sec.  1.55(d)(2) were included in former 
Sec.  1.55(c).
    Section 1.55(e) is amended to also provide for delayed priority 
claims under 35 U.S.C. 365(b) in a national stage application under 35 
U.S.C. 371. Section 1.55(e) is further amended for consistency with the 
change to 35 U.S.C. 119(b) in section 202(b)(2) of the PLTIA (replaces 
``payment of a surcharge'' with ``payment of the fee specified in 
section 41(a)(7)''). See discussion of Sec.  1.17(m).
    Section 1.55(f) is amended to specify the time for filing a 
certified copy of the foreign application in any nonprovisional 
application (applications under 35 U.S.C. 111(a) and international 
applications entering the national stage under 35 U.S.C. 371).
    Section 1.55(f)(1) pertains to applications under 35 U.S.C. 111(a). 
Section 1.55(f)(1) provides that a certified copy of the foreign 
application must be filed 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 in an original application filed 
under 35 U.S.C. 111(a) (except as provided in Sec.  1.55(h) and (i)). 
Section 1.55(f)(1) also provides that the time period in Sec.  
1.55(f)(1) does not apply in a design application. The provisions of 
Sec.  1.55(f)(1) were included in former Sec.  1.55(f).
    Section 1.55(f)(2) pertains to international applications entering 
the national stage under 35 U.S.C. 371. Section 1.55(f)(2) provides 
that a certified copy of the foreign application must be filed within 
the time limit set forth in the PCT and the Regulations under the PCT 
in an international application entering the national stage under 35 
U.S.C. 371. This provision of Sec.  1.55(f)(2) was included in former 
Sec.  1.55(c). Section 1.55(f)(2) as adopted in this final rule also 
provides for the situation in which a certified copy of the foreign 
application is not filed during the international stage of an 
international application. Section 1.55(f)(2) provides that in such a 
situation a certified copy of the foreign application must be filed 
within four months from the date of entry into the national stage as 
set forth in Sec.  1.491 or sixteen months from the filing date of the 
prior-filed foreign application (except as provided in Sec.  1.55(h) 
and (i)).
    Section 1.55(f)(3) provides for the situation in which a certified 
copy of the foreign application is not filed within the period 
specified in 1.55(f)(1) in an application under 35 U.S.C. 111(a) or 
within the period specified in 1.55(f)(2) in an international 
application entering the national stage under 35 U.S.C. 371, and the 
exceptions in Sec.  1.55(h) and (i) are not applicable. Section 
1.55(f)(3) provides that in this situation the certified copy of the 
foreign application must be accompanied by a petition including a 
showing of good and sufficient cause for the delay and the petition fee 
set forth in Sec.  1.17(g).
    Section 1.55(h) is amended to delete the reference to Sec.  1.55(c) 
for consistency with the transfer of the provisions of former Sec.  
1.55(c) to Sec.  1.55(d) and (f).
    Section 1.57: Section 1.57 is amended to implement the reference 
filing provisions of section 201(a) of the PLTIA (new 35 U.S.C. 111(c)) 
and PLT Article 5(7). Section 1.57 was amended in 2004 to implement the 
provisions of PLT Article 5(6) pertaining to applications containing a 
missing part of the description or a missing drawing. See Changes to 
Support Implementation of the United States Patent and Trademark Office 
21st Century Strategic Plan, 69 FR 56482, 56499 (Sept. 21, 2004).
    35 U.S.C. 111(c) provides that a reference made upon the filing of 
an application to a previously filed application shall, as prescribed 
by the Office, constitute the specification and any drawings of the 
subsequent application for purposes of a filing date. 35 U.S.C. 111(c) 
specifically provides that the Director may prescribe the conditions, 
including the payment of a surcharge, under which a reference made upon 
the filing of an application under 35 U.S.C. 111(a) to a previously 
filed application, specifying the previously filed application by 
application number and the intellectual property authority or country 
in which the application was filed, shall constitute the specification 
and any drawings of the subsequent application for purposes of a filing 
date. PLT Rule 2(5) requires that this reference to the previously 
filed application indicate that, for the purposes of the filing date, 
the description and any drawings of the application are replaced by the 
reference to the previously filed application, and also provides that a 
Contracting Party may require that the reference indicate the filing 
date of the previously filed application. Section 1.57(a) as adopted in 
this final rule thus provides that, subject to the conditions and 
requirements of Sec.  1.57(a), a reference made in the English language 
in an application data sheet in accordance with Sec.  1.76 upon the 
filing of an application under 35 U.S.C. 111(a) to a previously filed 
application, indicating that the specification and any drawings of the 
application under 35 U.S.C. 111(a) are replaced by the reference to the 
previously filed application, and specifying the previously filed 
application by application number, filing date, and the intellectual 
property authority or country in which the previously filed application 
was filed, shall constitute the specification and any drawings of the 
application under 35 U.S.C. 111(a) for purposes of a filing date under 
Sec.  1.53(b). The requirement for a reference to the previously filed 
application in an application data sheet will be satisfied by the 
presentation of such reference to the previously filed application on 
the Patent Law Treaty Model International Request Form filed in the 
Office (see discussion of Sec.  1.76).
    For an application under 35 U.S.C. 111(a) filed by reference to a 
previously filed application under Sec.  1.57(a), the specification and 
any drawings of the previously filed application will constitute the 
specification and any drawings of the application under 35 U.S.C. 
111(a) filed by reference under Sec.  1.57(a). Thus, the specification 
and any drawings of the previously filed application will be considered 
in determining whether an application under 35 U.S.C. 111(a) filed by 
reference under Sec.  1.57(a) is entitled to a filing date under Sec.  
1.53(b).
    35 U.S.C. 111(c) further provides that a copy of the specification 
and any drawings of the previously filed application shall be submitted 
within such period and under such conditions as may be prescribed by 
the Director, and that a failure to submit the copy of the 
specification and any drawings of the previously filed application 
within the prescribed period shall result in the application being 
regarded as abandoned. Section 1.57(a) as adopted in this final rule 
thus provides that: (1) The applicant will be notified and given a 
period of time within which to file a copy of the specification and 
drawings from the previously filed application, an English language 
translation of the previously filed application, and the fee required 
by Sec.  1.17(i) if the previously filed application is in a language 
other than English, and pay the surcharge required by Sec.  1.16(f), to 
avoid abandonment if the applicant has provided a correspondence 
address (Sec.  1.57(a)(1)); and (2) the applicant has three months from 
the filing date of the application to file a copy of the specification 
and drawings from the previously filed application, an English language 
translation of the previously filed application, and the fee required

[[Page 62379]]

by Sec.  1.17(i) if the previously filed application is in a language 
other than English, and pay the surcharge required by Sec.  1.16(f), to 
avoid abandonment if the applicant has not provided a correspondence 
address (Sec.  1.57(a)(2)). Section 1.57(a) as adopted in this final 
rule also provides that such a notice may be combined with a notice 
under Sec.  1.53(f) (e.g., a notice requiring that the applicant 
provide at least one claim and pay the filing fees).
    Applicants filing by reference under 35 U.S.C. 111(c) and Sec.  
1.57 should take care to ensure that the application number, filing 
date, and intellectual property authority or country of the previously 
filed application are accurately specified on the application data 
sheet (or Patent Law Treaty Model International Request Form) as the 
specification and drawings of the application specified on the 
application data sheet are the specification and drawings of the 
application being filed by reference under 35 U.S.C. 111(c) and Sec.  
1.57. If an applicant specifies an application number, filing date, or 
intellectual property authority or country of an application other than 
the application number, filing date, or intellectual property authority 
or country of the intended previously filed application on the 
application data sheet (i.e., the applicant mistypes the application 
number, filing date, or intellectual property authority or country on 
the application data sheet), the applicant may file a petition under 
Sec.  1.53 to have the application accorded a filing date as of the 
date the specification and drawings of the intended previously filed 
application are filed in the Office using that specification and 
drawings (rather than the specification and drawings of the application 
specified on the application data sheet). Simply submitting the 
specification and drawings of the intended previously filed application 
without such a petition under Sec.  1.53 in reply to a notice under 
Sec.  1.57(a) requiring the specification and drawings of the 
application specified on the application data sheet will result in the 
submission being treated as an incomplete reply. In addition, if the 
previously filed application is also a foreign priority application 
under 35 U.S.C. 119(a) through (d) and (f) and Sec.  1.55, an applicant 
should consider filing a copy of the specification and drawings of the 
previously filed application in the Office no later than fourteen month 
from the filing date of the previously filed application (regardless of 
the time period provided in Sec.  1.57(a)) to avoid the loss of the 
right of priority under 35 U.S.C. 119(a) through (d) and (f) and Sec.  
1.55 in the event that any of the application number, filing date, or 
intellectual property authority or country of the application specified 
on the application data sheet is not the application number, filing 
date, or intellectual property authority or country of the intended 
previously filed application.
    35 U.S.C. 111(c) also provides that an application abandoned due to 
failure to submit a copy of the specification and any drawings of the 
previously filed application within the prescribed period shall be 
treated as having never been filed unless: (1) The application is 
revived under 35 U.S.C. 27; and (2) a copy of the specification and any 
drawings of the previously filed application are submitted to the 
Director. Section 1.57(a)(3) as adopted in this final rule thus 
provides that an application abandoned under Sec.  1.57(a)(1) or (a)(2) 
shall be treated as having never been filed, unless: (1) The 
application is revived under Sec.  1.137; and (2) a copy of the 
specification and any drawings of the previously filed application are 
filed in the Office.
    Section 1.57(a)(4) as adopted in this final rule provides that a 
certified copy of the previously filed application must be filed in the 
Office, unless the previously filed application is an application filed 
under 35 U.S.C. 111 or 363, or the previously filed application is a 
foreign priority application and the conditions set forth in Sec.  
1.55(h) are satisfied with respect to such foreign priority 
application. Section 1.57(a)(4) as adopted in this final rule also 
provides that the certified copy of the previously filed application 
(when required by Sec.  1.57(a)(4)) must be filed within the later of 
four months from the filing date of the application or sixteen months 
from the filing date of the previously filed application, or must be 
accompanied by a petition including a showing of good and sufficient 
cause for the delay and the petition fee set forth in Sec.  1.17(g).
    Section 1.57(b) as adopted in this final rule contains the 
provisions of former Sec.  1.57(a), except to provide that 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 Sec.  
1.53(e) (rather than a petition pursuant to Sec.  1.57). Thus, any 
filing date petition for an application under 35 U.S.C. 111(a) is a 
petition under Sec.  1.53(e), regardless of whether the application 
under 35 U.S.C. 111(a) relies upon the incorporation by reference 
provisions of Sec.  1.57(a), (b), or (c).
    Sections 1.57(c) through (h) as adopted in this final rule contain 
the provisions of former Sec.  1.57(b) through (g).
    Section 1.57(i) as adopted in this final rule provides that an 
application transmittal letter limited to the transmittal of a copy of 
the specification and drawings from a previously filed application 
submitted under Sec.  1.57(a) or (b) of this section may be signed by a 
juristic applicant or patent owner. PLT Article 7(2) and PLT Rule 7(1) 
provide that an assignee of an application, an applicant, owner, or 
other interested person may act pro se before the Office for the filing 
of a copy of a previously filed application for purposes of the 
reference filing provisions of PLT Article 5(7) and reliance upon a 
reference to a prior-filed application to provide the missing parts of 
the description or missing drawings under PLT Article 5(6).
    Section 1.58: Section 1.58(a) is amended to provide that the 
description portion of the specification may contain tables, but the 
same tables ``should'' (rather than ``must'') not be included in both 
the drawings and description portion of the specification.
    Section 1.72: Section 1.72(b) is amended to provide that the 
abstract must be as concise as the disclosure permits, preferably not 
exceeding 150 words in length. See PCT Rule 8.1(b) (``[t]he abstract 
shall be as concise as the disclosure permits (preferably 50 to 150 
words if it is in English or when translated into English)'').
    Section 1.76: Section 1.76(b)(3) is amended to include the 
sentence: ``[w]hen information concerning the previously filed 
application is required under Sec.  1.57(a), application information 
also includes the reference to the previously filed application, 
indicating that the specification and any drawings of the application 
are replaced by the reference to the previously filed application, and 
specifying the previously filed application by application number, 
filing date, and the intellectual property authority or country in 
which the previously filed application was filed.'' See discussion of 
Sec.  1.57(a).
    Section 1.76(d)(2) is amended to provide that the information in 
the application data sheet will govern when inconsistent with the 
information supplied at any time in a Patent Cooperation Treaty Request 
Form, Patent Law Treaty Model International Request Form, Patent Law 
Treaty Model International Request for Recordation of Change in Name or 
Address Form, or Patent Law Treaty Model International Request for 
Recordation of Change in

[[Page 62380]]

Applicant or Owner Form. Whenever information in a Patent Cooperation 
Treaty Request Form or Patent Law Treaty Model Form is inconsistent 
with the information in the application data sheet, the information in 
the application data sheet will govern regardless of whether the 
application data sheet was filed before or after the Patent Cooperation 
Treaty Request Form or Patent Law Treaty Model Form. Thus, incorrect 
information in an application data sheet must be corrected via a new 
application data sheet (Sec.  1.76(c)) rather than a Patent Cooperation 
Treaty Request Form or Patent Law Treaty Model Form as the previously 
filed application data sheet will govern over the Patent Cooperation 
Treaty Request Form or Patent Law Treaty Model Form.
    Section 1.76 is also amended to permit the use of Patent Law Treaty 
Model International Forms as appropriate or the Patent Cooperation 
Treaty Request Form in lieu of an application data sheet under Sec.  
1.76.
    Section 1.76(f) as adopted in this final rule provides that: (1) 
The requirement in Sec.  1.55 or 1.78 for the presentation of a 
priority or benefit claim under 35 U.S.C. 119, 120, 121, or 365 in an 
application data sheet will be satisfied by the presentation of such 
priority or benefit claim in the Patent Law Treaty Model International 
Request Form; (2) the requirement in Sec.  1.57(a) for a reference to 
the previously filed application in an application data sheet will be 
satisfied by the presentation of such reference to the previously filed 
application in the Patent Law Treaty Model International Request Form; 
and (3) the requirement in Sec.  1.46 for the presentation of the name 
of the applicant under 35 U.S.C. 118 in an application data sheet will 
be satisfied by the presentation of the name of the applicant in the 
Patent Law Treaty Model International Request Form, Patent Law Treaty 
Model International Request for Recordation of Change in Name or 
Address Form, or Patent Law Treaty Model International Request for 
Recordation of Change in Applicant or Owner Form, as applicable.
    Section 1.76(g) as adopted in this final rule provides that the 
requirement in Sec.  1.78 for the presentation of a benefit claim under 
35 U.S.C. 119, 120, 121, or 365 in an application data sheet will be 
satisfied in a national stage application under 35 U.S.C. 371 by the 
presentation of such benefit claim in the Patent Cooperation Treaty 
Request Form contained in the international application or the presence 
of such benefit claim on the front page of the publication of the 
international application under PCT Article 21(2). Section 1.76(g) 
states ``the Patent Cooperation Treaty Request Form contained in the 
international application'' to make clear that the provision does not 
allow for that addition or correction of benefit claim (or any other) 
information during the national stage via the submission of a new 
Patent Cooperation Treaty Request Form. Applicants may add or correct 
benefit claim (or any other) information during the national stage via 
the submission of an application data sheet under Sec.  1.76 (assuming 
that the conditions and requirements for such addition or correction 
are satisfied). Section 1.76(g) provides for presence of such benefit 
claim on the front page of the publication of the international 
application under PCT Article 21(2) to account for replacement sheets 
of the Patent Cooperation Treaty Request Form that may not be forwarded 
to each national office but that are reflected in the IB publication of 
the international application. Section 1.76(g) does not mention either 
the provisions in Sec.  1.55 for the presentation of a priority claim 
under 35 U.S.C. 119 or 365 in an application data sheet or the 
provisions in Sec.  1.46 for the presentation of the name of the 
applicant under 35 U.S.C. 118 in an application data sheet with respect 
to a national stage application under 35 U.S.C. 371 as this information 
is taken from the WIPO records of the international application in a 
national stage application under 35 U.S.C. 371.
    Section 1.76(g) also provides that the requirement in Sec.  1.55 or 
Sec.  1.78 for the presentation of a priority or benefit claim under 35 
U.S.C. 119, 120, 121, or 365 in an application data sheet and the 
requirement in Sec.  1.46 for the presentation of the name of the 
applicant under 35 U.S.C. 118 in an application data sheet will be 
satisfied in an application under 35 U.S.C. 111 by the presentation of 
such priority or benefit claim and presentation of the name of the 
applicant in a Patent Cooperation Treaty Request Form. Section 1.76(g) 
finally also provides that if a Patent Cooperation Treaty Request Form 
is submitted in an application under 35 U.S.C. 111, the Patent 
Cooperation Treaty Request Form must be accompanied by a clear 
indication that treatment of the application as an application under 35 
U.S.C. 111 is desired.
    Section 1.78: Section 1.78 is amended to implement the provisions 
in section 201(c) of the PLTIA and PLT Article 13 for the restoration 
of the right to the benefit of a provisional application. Section 
201(c) of the PLTIA specifically amends 35 U.S.C. 119(e)(1) by adding 
that the Director may prescribe regulations, including the requirement 
for payment of the fee specified in 35 U.S.C. 41(a)(7), pursuant to 
which the twelve-month period set forth in 35 U.S.C. 119(e) may be 
extended by an additional two months if the delay in filing the 
application under 35 U.S.C. 111(a) or 363 within the twelve-month 
period was unintentional.
    Section 1.78(a) as adopted in this final rule contains the 
provisions of former Sec.  1.78(a), Sec.  1.78(b) as adopted in this 
final rule contains the provisions pertaining to the restoration of the 
right to the benefit of a provisional application, and Sec.  1.78(c) 
through (h) contain the provisions of former Sec.  1.78(b) through (g), 
respectively. Therefore, Sec.  1.78 as adopted in this final rule is 
organized as follows: (1) Sec.  1.78(a) contains provisions relating to 
claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application; (2) Sec.  1.78(b) contains provisions relating 
to the restoration of the right to the benefit of a provisional 
application under 35 U.S.C. 119(e); (3) Sec.  1.78(c) contains 
provisions relating to delayed claims under 35 U.S.C. 119(e) for the 
benefit of a prior-filed provisional application; (4) Sec.  1.78(d) 
contains provisions relating to claims under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed nonprovisional or international 
application; (5) Sec.  1.78(e) contains provisions relating to delayed 
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed nonprovisional or international application; (6) Sec.  1.78(f) 
contains provisions relating to applications containing patentably 
indistinct claims; (7) Sec.  1.78(g) contains provisions relating to 
applications or patents under reexamination naming different inventors 
and containing patentably indistinct claims; and (8) Sec.  1.78(h) 
provides that the time periods set forth in Sec.  1.78 are not 
extendable.
    Section 1.78(a)(1) as adopted in this final rule also provides that 
the twelve-month period is subject to PCT Rule 80.5, as well as 35 
U.S.C. 21(b) (and Sec.  1.7(a)).
    Section 1.78(a)(4) as adopted in this final rule also provides that 
if the later-filed application is a national stage application under 35 
U.S.C. 371, this reference must be submitted within the latest of four 
months from the date on which the national stage commenced under 35 
U.S.C. 371(b) or (f), four months from the date of the initial 
submission under 35 U.S.C. 371 to enter the national stage, or sixteen 
months from the filing date of the prior-filed provisional application. 
This change may avoid the need for petitions under both Sec.  1.137 and 
Sec.  1.78(c) in the

[[Page 62381]]

situation in which the applicant does not make the initial submission 
under 35 U.S.C. 371 to enter the national stage within four months from 
the date on which the national stage commenced under 35 U.S.C. 371(b) 
or (f) in an international application.
    As discussed previously, Sec.  1.78(b) as adopted in this final 
rule contains the provisions pertaining to the restoration of the right 
to the benefit of a provisional application under 35 U.S.C. 119(e). 
Section 1.78(b) as adopted in this final rule also provides that if the 
nonprovisional application or international application designating the 
United States of America has a filing date which is after the 
expiration of the twelve-month period set forth in Sec.  1.78(a)(1) but 
within two months from the expiration of the period set forth in Sec.  
1.78(a)(1), the benefit of the provisional application may be restored 
upon petition if the delay in filing the nonprovisional application or 
international application designating the United States of America 
within the period set forth in Sec.  1.78(a)(1) was unintentional. When 
the last day for filing an application within the period set forth in 
Sec.  1.78(a)(1) falls on Saturday, Sunday, or a Federal holiday within 
the District of Columbia, the additional two-month period specified in 
Sec.  1.78(b) is measured from the next succeeding secular or business 
day. See 35 U.S.C. 21(b). Section 1.78(b) as adopted in this final rule 
further provides that a petition to restore the benefit of the 
provisional application under this paragraph filed in the 
nonprovisional application or international application designating the 
United States of America must include: (1) The reference required by 35 
U.S.C. 119(e) and Sec.  1.78(a)(3) to the prior-filed provisional 
application, unless previously submitted; (2) the petition fee as set 
forth in Sec.  1.17(m); and (3) a statement that the delay in filing 
the nonprovisional application or international application designating 
the United States of America within the twelve-month period set forth 
in Sec.  1.78(a)(1) was unintentional. Section 1.78(b) as adopted in 
this final rule further provides that the Director may require 
additional information where there is a question whether the delay was 
unintentional.
    Section 1.78(b) as adopted in this final rule further provides that 
the right of priority in the subsequent application may be restored 
under PCT Rule 26bis.3. A decision by a Receiving Office to restore a 
right of priority under PCT Rule 26bis.3 to a provisional application 
in an international application designating the United States is 
effective as to the United States in the national stage of such 
application in accordance with PCT Rule 49ter.1.
    Section 1.78(b) as adopted in this final rule finally provides that 
the restoration of the right of priority under PCT Rule 26bis.3 to a 
provisional application does not affect the requirement to include the 
reference required by Sec.  1.78(a)(3) to the provisional application 
in a national stage application under 35 U.S.C. 371 within the time 
period provided by Sec.  1.78(a)(4) to avoid waiver of the benefit 
claim.
    The procedure set forth in Sec.  1.78(b) as adopted in this final 
rule is for applicants whose delay in filing the subsequent application 
within the twelve-month time period in 35 U.S.C. 119(e)(1) was 
unintentional. The use of the additional two-month time period in 35 
U.S.C. 119(e)(1) as an ``extension of time'' to file the subsequent 
application would be considered an abuse of the provisions. Cf. 
Application of S., 8 USPQ2d at 1632 (use of the procedures for the 
revival of an unintentionally abandoned application as an ``extension 
of time'' is an abuse of the revival procedures).
    Section 1.78(c) as adopted in this final rule also implements the 
changes to 35 U.S.C. 119(e) in section 201(c)(1)(B)(i)(II) of the 
PLTIA. Section 201(c)(1)(B)(i)(II) of the PLTIA replaces ``payment of a 
surcharge'' with ``payment of the fee specified in section 41(a)(7)'' 
(see discussion of Sec.  1.17(m)) and deletes ``during the pendency of 
the application.'' Section 1.78(c) as adopted in this final rule thus 
also provides that if the reference required by 35 U.S.C. 119(e) and 
Sec.  1.78(a)(3) is presented in an application (either a 
nonprovisional application or an international application designating 
the United States) after the time period provided by Sec.  1.78(a)(4), 
the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application may be accepted if the reference identifying 
the prior-filed application by provisional application number was 
unintentionally delayed. Section 1.78(c) as adopted in this final rule 
further provides that 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 Sec.  1.78(a)(3) to the prior-filed 
provisional application, unless previously submitted; (2) the petition 
fee as set forth in Sec.  1.17(m); and (3) a statement that the entire 
delay between the date the benefit claim was due under Sec.  1.78(a)(4) 
and the date the benefit claim was filed was unintentional. Section 
1.78(c) as adopted in this final rule further provides that the 
Director may require additional information where there is a question 
as to whether the delay was unintentional.
    Section 1.78(d)(3) as adopted in this final rule also provides that 
if the later-filed application is a nonprovisional application entering 
the national stage from an international application under 35 U.S.C. 
371, this reference must be submitted within the latest 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, four months 
from the date of the initial submission under 35 U.S.C. 371 to enter 
the national stage, or sixteen months from the filing date of the 
prior-filed application. This change may avoid the need for petitions 
under both Sec.  1.137 and Sec.  1.78(e) in the situation in which the 
applicant does not make the initial submission under 35 U.S.C. 371 to 
enter the national stage within four months from the date on which the 
national stage commenced under 35 U.S.C. 371(b) or (f) in an 
international application.
    Section 1.78(e)(2) as adopted in this final rule is also amended 
for consistency with the change to 35 U.S.C. 120 in section 202(b)(3) 
of the PLTIA (replaces ``payment of a surcharge'' with ``payment of the 
fee specified in section 41(a)(7)''). See discussion of Sec.  1.17(m).
    Section 1.81: Section 1.81(a) is amended to delete the provision 
that a drawing (where necessary for the understanding of the subject 
matter sought to be patented), or a high quality copy thereof, must be 
filed with the application. As discussed previously, 35 U.S.C. 111 no 
longer requires that an application contain a drawing where necessary 
for the understanding of the subject matter sought to be patented to be 
entitled to a filing date. 35 U.S.C. 113 continues to provide, however, 
that ``[t]the applicant shall furnish a drawing where necessary for the 
understanding of the subject matter sought to be patented'' and that 
``[d]rawings submitted after the filing date of the application may not 
be used (i) to overcome any insufficiency of the specification due to 
lack of an enabling disclosure or otherwise inadequate disclosure 
therein, or (ii) to supplement the original disclosure thereof for the 
purpose of interpretation of the scope of any claim.'' See 35 U.S.C. 
113. Thus, the absence of any drawing on the filing of an application 
where a drawing is necessary for the understanding of the subject 
matter sought to be patented may result in an applicant not being

[[Page 62382]]

able to obtain a patent for any claimed invention presented in the 
application, but the absence of any drawing on the filing of an 
application no longer raises a question as to whether the application 
is entitled to a filing date.
    As discussed previously, PLT Article 5 and PLTIA 35 U.S.C. 111 
should not be viewed as prescribing a best practice for the preparation 
and filing of a patent application. The preparation of drawings for a 
provisional or nonprovisional application is prudent where a drawing is 
necessary for the understanding of the subject matter sought to be 
patented, and inclusion of such drawing(s) with the application on 
filing will help ensure that the requirements of 35 U.S.C. 113 are 
satisfied for any such claimed invention.
    Section 1.83: Section 1.83(a) is amended to provide that tables 
that are included in the specification and sequences that are included 
in sequence listings ``should'' (rather than ``must'') not be 
duplicated in the drawings.
    Section 1.85: Section 1.85(c) is amended to provide that 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 in a notice of allowability and set a three-month (non-
extendable) period of time from the mailing date of the notice of 
allowability within which the applicant must file a corrected drawing 
in compliance with Sec.  1.84 to avoid abandonment.
    Section 1.131: Section 1.131(a) is amended to change ``the inventor 
of the subject matter of the rejected claim, the owner of the patent 
under reexamination, or the party qualified under Sec.  1.42 or Sec.  
1.46,'' to ``the applicant or patent owner.'' The final rule to 
implement the inventor's oath or declaration provisions (section 4) of 
the AIA changed the phrase ``the inventor of the subject matter of the 
rejected claim, the owner of the patent under reexamination, or the 
party qualified under Sec.  1.42, 1.43, or 1.47'' to ``the applicant or 
patent owner.'' See Changes To Implement the Inventor's Oath or 
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR 
48776, 48793 and 48821 (Aug. 14, 2012). The final rule to implement the 
first inventor to file provisions (section 3) of the AIA changed ``the 
applicant or patent owner'' to ``the inventor of the subject matter of 
the rejected claim, the owner of the patent under reexamination, or the 
party qualified under Sec.  1.42 or Sec.  1.46.'' See Changes to 
Implement the First Inventor To File Provisions of the Leahy-Smith 
America Invents Act, 78 FR 11024, 11036 and 11058 (Feb. 14, 2013). This 
final rule revises Sec.  1.131(a) to restore the phrase ``the applicant 
or patent owner,'' and this phrase is applicable both to applications 
filed before September 12, 2012 (as the party qualified under former 
Sec.  1.42, 1.43, or 1.47 is the applicant in an application filed 
before September 16, 2012) and to applications filed on or after 
September 12, 2012 (as the party qualified under Sec.  1.42 or Sec.  
1.46 is the applicant in an application filed on or after September 16, 
2012).
    Section 1.136: Sections 1.136 is amended to locate the duplicative 
cross reference provisions of Sec.  1.136(a)(2) and (b) in new Sec.  
1.136(d). Section 1.136 is also amended to refer to Sec.  90.3 rather 
than former Sec.  1.304 for the time for appeal or for commencing a 
civil action. As discussed previously, the judicial review provisions 
of Sec. Sec.  1.302 through 1.304 were replaced by 37 CFR part 90 in 
September of 2012.
    Section 1.137: Section 1.137 is revised to implement the change in 
the PLTIA to eliminate revival of abandoned applications under the 
``unavoidable'' standard and to provide for the revival of abandoned 
applications (as well as the acceptance of delayed responses in 
reexamination by patent owners and delayed maintenance fee payments) on 
the basis of unintentional delay. As discussed previously, section 
201(b) of the PLTIA specifically adds new 35 U.S.C. 27, providing that 
the Director may establish procedures to revive an unintentionally 
abandoned application for patent, accept an unintentionally delayed 
payment of the fee for issuing a patent, or accept an unintentionally 
delayed response by the patent owner in a reexamination proceeding, 
upon petition by the applicant for patent or patent owner. The patent 
laws formerly provided for revival of an unintentionally abandoned 
application only in the patent fee provisions of 35 U.S.C. 41(a)(7). 
See Public Law 97-247, section 3(a), 96 Stat. 317-18 (1982). This 
raised questions concerning the Office's authority to revive an 
unintentionally abandoned application (without a showing of unavoidable 
delay) in certain situations. See e.g., Aristocrat Techs. Australia Pty 
Ltd. v. Int'l Game Tech., 543 F.3d 657 (Fed. Cir. 2008).
    Section 1.137(a) as adopted in this final rule eliminates the 
provisions pertaining to petitions on the basis of unavoidable delay. 
Section 1.137(a) as adopted in this final rule instead provides that if 
the delay in reply by applicant or patent owner was unintentional, a 
petition may be filed pursuant to Sec.  1.137 to revive an abandoned 
application or a reexamination prosecution terminated under Sec.  
1.550(d) or 1.957(b) or limited under Sec.  1.957(c).
    Section 1.137(b) as adopted in this final rule sets out the 
petition requirements. Section 1.137(b) as adopted in this final rule 
specifically provides that a grantable petition pursuant to Sec.  1.137 
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) any terminal disclaimer (and fee as 
set forth in Sec.  1.20(d)) required pursuant to Sec.  1.137(d); and 
(4) 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 section was unintentional. Section 1.137 as adopted in 
this final rule continues to provide that the Director may require 
additional information where there is a question whether the delay was 
unintentional.
    Sections 1.137(c), (d), and (e) as adopted in this final rule 
eliminate the language pertaining to ``lapsed'' patents. Section 
202(b)(6) of the PLTIA amends 35 U.S.C. 151 to delete the third and 
fourth paragraphs pertaining to the lapsed patent practice.
    Section 1.137(c) as adopted in this final rule also provides that 
in an application abandoned under Sec.  1.57(a), the reply must include 
a copy of the specification and any drawings of the previously filed 
application, and clarifies that an application must be abandoned after 
the close of prosecution as defined in Sec.  1.114(b) for the reply 
requirement to be met by the filing of a request for continued 
examination in compliance with Sec.  1.114.
    Section 1.137(f) as adopted in this final rule eliminates as 
unnecessary the language limiting petitions to the unintentional 
standard. The PLTIA eliminates revival of abandoned applications under 
the ``unavoidable'' standard.
    Section 1.137(g) as adopted in this final rule contains the 
provisions of former Sec.  1.137(g).
    Section 1.138: Section 1.138(b) is amended to change ``Sec.  
1.33(b)(1), (b)(3) or (b)(4)'' to ``Sec.  1.33(b)(1) or (b)(3)'' for 
consistency with the elimination of Sec.  1.33(b)(4) in the rulemaking 
to implement the inventor's oath or declaration provisions of the AIA. 
See Changes to Implement the Inventor's Oath or Declaration Provisions 
of the Leahy-Smith America Invents Act, 77 FR at 48783, 48814.
    Section 1.197: Section 1.197 is amended to refer to Sec.  90.3 
rather than former Sec.  1.304 for the time for appeal or for 
commencing a civil action. As discussed previously, the judicial

[[Page 62383]]

review provisions of Sec. Sec.  1.302 through 1.304 were replaced by 37 
CFR part 90 in September of 2012. Section 1.197 is also amended to 
locate the provisions of paragraphs (b)(1), (b)(1)(i), (b)(1)(ii), and 
(b)(2) in paragraphs (a), (a)(1), (a)(2), and (b), respectively, as 
Sec.  1.197(a) was formerly reserved.
    Section 1.290: Section 1.290(f) is amended to reference Sec.  
1.17(o), rather than Sec.  1.17(p), for consistency with the change to 
Sec.  1.17. See discussion of Sec.  1.17.
    Section 1.311: Section 1.311(a) is amended to better track the 
language of PLTIA 35 U.S.C. 151. Section 1.311 is specifically amended 
in this final rule to provide that the notice of allowance shall 
specify a sum constituting the issue fee and any required publication 
fee (Sec.  1.211(e)), which issue fee and any required publication fee 
must both be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. This 
change to Sec.  1.311 does not represent a change in Office practice as 
pre-existing Office practice is to include any required publication fee 
(along with the issue fee) in the sum specified in the notice of 
allowance.
    Section 1.317: Section 1.317 is removed and reserved. Section 
202(b)(6) of the PLTIA amends 35 U.S.C. 151 to delete the third and 
fourth paragraphs pertaining to the lapsed patent practice.
    Section 1.366: Section 1.366(a) is amended to provide that a 
maintenance fee transmittal letter may be signed by a juristic 
applicant or patent owner. PLT Article 7(2)(b) provides that a 
maintenance fee may be paid by any person.
    Section 1.366(b) is amended to correct a typographical error 
(``other than that set forth Sec.  1.23'' is correct to read ``other 
than that set forth in Sec.  1.23'').
    Section 1.378: Section 1.378 is amended to implement the changes to 
35 U.S.C. 41(c)(1) in section 202(b)(1)(B) of the PLTIA. Section 
202(b)(1)(B) of the PLTIA amends 35 U.S.C. 41(c)(1) to delete the 
twenty-four month time limit for unintentionally delayed maintenance 
fee payments and to delete the reference to an unavoidable standard. 
PLTIA 35 U.S.C. 41(c)(1) provides that: (1) The Director may accept the 
payment of any maintenance fee required by 35 U.S.C. 41(b) after the 
six-month grace period if the delay is shown to the satisfaction of the 
Director to have been unintentional; (2) the Director may require the 
payment of the fee specified in 35 U.S.C. 41(a)(7) as a condition of 
accepting payment of any maintenance fee after the six-month grace 
period; and (3) if the Director accepts payment of a maintenance fee 
after the six-month grace period, the patent shall be considered as not 
having expired at the end of the grace period.
    Section 1.378(a) is amended to eliminate the provisions pertaining 
to petitions on the basis of unavoidable delay.
    Section 1.378(b) is also amended to eliminate the provisions 
pertaining to petitions asserting unavoidable delay. Section 1.378(b) 
is amended to set out the requirements for petitions asserting 
unintentional delay (these requirements were formerly set out in Sec.  
1.378(c)). Section 1.378(b) is also amended to refer to the petition 
fee set forth in Sec.  1.17(m) rather than the surcharge set forth in 
Sec.  1.20(i) as PLTIA 35 U.S.C. 41(c)(1) refers to the fee specified 
in 35 U.S.C. 41(a)(7) rather than a surcharge.
    Section 1.378(c) is amended to provide that any petition under this 
section must be signed in compliance with Sec.  1.33(b) (Sec.  1.378(d) 
sets out the former signature requirement for a petition to accept a 
delayed maintenance fee payment).
    Section 1.378(d) as adopted in this final rule includes the 
provisions of former Sec.  1.378(e) pertaining to a request for 
reconsideration of a maintenance fee decision, except that Sec.  
1.378(d) as adopted in this final rule eliminates: (1) The requirement 
for the petition fee under Sec.  1.17(f) for a request for 
reconsideration of a maintenance fee decision; and (2) the provision 
that after the decision on the petition for reconsideration, no further 
reconsideration or review of the matter will be undertaken by the 
Director.
    Section 1.378(e) as adopted in this final rule includes the 
provisions of former Sec.  1.378(e) pertaining to the situation in 
which the maintenance fee will be refunded.
    As discussed previously, the PLTIA amends 35 U.S.C. 41(c)(1) to 
replace ``payment of a surcharge'' with ``payment of the fee specified 
in [35 U.S.C.] 41(a)(7).'' The PLTIA revises delayed maintenance fee 
payment practice to be more consistent with abandoned application 
revival practice, in that there is a petition fee for filing the 
petition to accept a delayed maintenance fee payment under the PLTIA, 
rather than a surcharge for accepting a delayed maintenance fee payment 
under former 35 U.S.C. 41(c). Section 1.378(e) thus does not provide 
for a refund of the petition fee set forth in Sec.  1.17(m) even if the 
delayed maintenance fee payment is not accepted. See MPEP 
711.03(c)(II)(B) (indicating that the petition fee under 35 U.S.C. 
41(a)(7) is required for the filing (and not merely the grant) of a 
petition and that this petition fee will not be refunded regardless of 
whether the petition is dismissed or denied). Section 1.378(d), 
however, does not require the petition fee under Sec.  1.17(f) for a 
request for reconsideration of a maintenance fee decision as Sec.  
1.137 does not require the petition fee under Sec.  1.17(f) for a 
request for reconsideration of a revival decision.
    Section 1.452: Section 201(c) of the PLTIA amends 35 U.S.C. 365(b) 
by adding that the Director may establish procedures, including the 
requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), to 
accept an unintentionally delayed claim for priority under the PCT and 
PCT Regulations, and to accept a priority claim that pertains to an 
application that was not filed within the priority period specified in 
the PCT and PCT Regulations, but was filed within the additional two-
month period specified under 35 U.S.C. 119(a) or the PCT or PCT 
Regulations. Section 1.452(b)(2) as adopted in this final rule thus 
refers to the petition fee as set forth in Sec.  1.17(m) for 
consistency with section 201(c) of the PLTIA.
    Former Sec.  1.452(d) contained a caveat that restoration of a 
right of priority to a prior application by the United States Receiving 
Office under Sec.  1.452, or by any other Receiving Office under the 
provisions of PCT Rule 26bis.3, would not entitle applicants to a 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. This 
final rule eliminates former Sec.  1.452(d) in view of PLTIA 35 U.S.C. 
119 and 365(b).
    Section 1.495: As discussed previously, the Office is revising the 
provisions pertaining to the filing of an application without the 
inventor's oath or declaration to provide that if an application is in 
condition for allowance but does not include an oath or declaration in 
compliance with Sec.  1.63, or a substitute statement in compliance 
with Sec.  1.64, executed by or with respect to each actual inventor, 
the Office will issue a ``Notice of Allowability'' (PTOL-37) requiring 
an oath or declaration in compliance with Sec.  1.63, or substitute 
statement in compliance with Sec.  1.64, executed by or with respect to 
each actual inventor, together with the ``Notice of Allowance and 
Fee(s) Due'' (PTOL-85), since the AIA Technical Corrections Act amends 
35 U.S.C. 115(f) to permit the Office to issue a ``Notice of Allowance 
and Fee(s) Due'' (PTOL-85) before the application includes an oath or 
declaration in

[[Page 62384]]

compliance with Sec.  1.63, or substitute statement in compliance with 
Sec.  1.64, executed by or with respect to each actual inventor. As 
also discussed previously, 35 U.S.C. 115(f) does not specifically 
provide for the consequence that results if an applicant fails to 
provide an oath or declaration in compliance with Sec.  1.63, or a 
substitute statement in compliance with Sec.  1.64, executed by or with 
respect to each actual inventor. PLTIA 35 U.S.C. 371(d), however, 
provides that ``[t]he requirement with respect to . . . the oath or 
declaration referred to in [35 U.S.C. 371(c)(4)] shall be complied with 
by the date of the commencement of the national stage or by such later 
time as may be fixed by the Director,'' and that the ``[f]ailure to 
comply with these requirements shall be regarded as abandonment of the 
application by the parties thereof.'' The Office is thus amending Sec.  
1.495(c)(3)(ii) to provide that if the applicant is notified in a 
notice of allowability that an oath or declaration in compliance with 
Sec.  1.63, or substitute statement in compliance with Sec.  1.64, 
executed by or with respect to each named inventor has not been filed, 
the applicant must file each required oath or declaration in compliance 
with Sec.  1.63, or substitute statement in compliance with Sec.  1.64, 
no later than the date on which the issue fee is paid to avoid 
abandonment (which time period is not extendable). The Office is also 
amending Sec.  1.495(c)(3)(ii) to provide that: (1) The applicant must 
file each required oath or declaration in compliance with Sec.  1.63, 
or substitute statement in compliance with Sec.  1.64, no later than 
the date on which the issue fee for the patent is paid (as required by 
35 U.S.C. 115(f)); and (2) that the Office may dispense with the notice 
provided for in Sec.  1.495(c)(1) if each required oath or declaration 
in compliance with Sec.  1.63, or substitute statement in compliance 
with Sec.  1.64, has been filed before the application is in condition 
for allowance.
    Section 1.550: Section 1.550(c) is amended to allow for no-cause 
extensions of time for actions by patent owners in patent owner 
requested or Director ordered ex parte reexamination proceedings for up 
to two months from the time period set for reply in the Office action. 
Section 1.550(c) provides that any request for such an extension must 
specify the requested period of extension and be accompanied by the 
petition fee set forth in Sec.  1.17(g).
    Section 1.550(c) continues to provide that: (1) Any request for an 
extension in a third party requested ex parte reexamination must be 
filed on or before the day on which action by the patent owner is due, 
and the mere filing of such a request for extension will not effect the 
extension; and (2) the time for taking any action by a patent owner 
will not be extended in a third party requested ex parte reexamination 
in the absence of sufficient cause or for more than a reasonable time. 
A third party requested ex parte reexamination is initiated by a party 
other than the patent owner or the Office and is thus an ``inter partes 
proceeding'' under PLT Rule 12(5)(a)(vi). Thus, this final rule does 
not change extension of time practice under Sec.  1.550(c) for patent 
owner replies in a third party requested ex parte reexamination.
    Section 1.550(c) provides that: (1) A request for an extension in a 
patent owner requested or Director ordered ex parte reexamination for 
more than two months from the time period set for reply in the Office 
action must be filed on or before the day on which action by the patent 
owner is due, and the mere filing of a request for an extension of more 
than two months from the time period set for reply in the Office action 
will not effect the extension; and (2) the time for taking any action 
by a patent owner will not be extended for more than two months from 
the time period set for reply in the Office action in a patent owner 
requested or Director ordered ex parte reexamination in the absence of 
sufficient cause or for more than a reasonable time.
    Section 1.550(e) is amended for consistency with the change to 
Sec.  1.137 in this final rule to eliminate the provisions pertaining 
to petitions on the basis of unavoidable delay. Section 1.550(e) is 
specifically amended to provide that if a response by the patent owner 
is not timely filed in the Office, a petition may be filed pursuant to 
Sec.  1.137 to revive a reexamination prosecution terminated under 
Sec.  1.550(d) if the delay in response was unintentional.
    Section 1.704: Section 1.704 is amended to provide for the 
situation in which an application is not in condition for examination 
within eight months from the date on which the application was filed 
under 35 U.S.C. 111(a) or the date of commencement of the national 
stage under 35 U.S.C. 371(b) or (f) in an international application. In 
implementing the patent term adjustment provisions of the American 
Inventors Protection Act of 1999 (Pub. L. 106-113, 113 Stat. 1501, 
1501A-557 through 1501A-560 (1999)), the Office proposed a reduction of 
any patent term adjustment if an application was not complete on 
filing. See Changes to Implement Patent Term Adjustment Under Twenty-
Year Patent Term, 65 FR 17215, 17219-20, 17228 (Mar. 31, 2000) 
(proposed rule). The Office received a number of comments in response 
to this proposal suggesting that an application being in condition for 
examination on filing is not necessary for the Office to meet the 
fourteen-month time frame in 35 U.S.C. 154(b)(1)(A)(i) and that an 
applicant should be permitted to complete the application and correct 
application informalities after the filing date of the application. See 
Changes to Implement Patent Term Adjustment Under Twenty-Year Patent 
Term, 65 FR 56366, 56381 (Sept. 18, 2000) (final rule). The Office did 
not adopt this proposed reduction in 2000 because an applicant could 
not delay placing an application in condition for examination to the 
point that it would contribute to the Office's missing the fourteen-
month time frame in 35 U.S.C. 154(b)(1)(A)(i) under the provisions for 
completing an application (Sec.  1.53(f)) in effect in 2000 without the 
applicant's incurring a reduction of patent term adjustment under 35 
U.S.C. 154(b)(2)(C)(ii). See id. Specifically, the fourteen-month time 
frame in 35 U.S.C. 154(b)(1)(A)(i) did not begin (under the patent laws 
in effect between 2000 and 2012) until the specification and drawings 
of an application were filed in the Office, which permitted the Office 
to conduct a formalities review and issue a notice (if necessary) 
requiring the applicant to complete the application and correct any 
application informalities no later than one to two months from the 
filing of an application. Thus, the Office could review the 
specification and drawings and issue a notice (if necessary) requiring 
the applicant to complete the application and correct the application 
papers no later than two months from the filing of an application. As 
such, applications would either be in condition for examination within 
five months from the filing of an application, or the applicant would 
incur a reduction of any patent term adjustment under 35 U.S.C. 
154(b)(2)(C)(ii) (providing a reduction of any patent term adjustment 
for the cumulative total of any periods of time in excess of three 
months that are taken to respond to a notice from the Office making any 
rejection, objection, argument, or other request, and measuring such 
three-month period from the date the notice was given or mailed to the 
applicant). The Office, however, also noted that it would revisit this 
decision if the provisions for completing an application and correcting 
application formalities contributed to the Office's missing the

[[Page 62385]]

fourteen-month time frame under 35 U.S.C. 154(b)(1)(A)(i). See id.
    The PLT and PLTIA 35 U.S.C. 111 provide applicants with additional 
opportunities to delay the examination process (e.g., the ability to 
file an application without any claims and to file an application 
merely by reference to a prior-filed application). Specifically, the 
fourteen-month time frame specified in 35 U.S.C. 154(b)(1)(A)(i) may 
now begin before the specification and drawings of an application are 
filed in the Office in an application filed under 35 U.S.C. 111(a), due 
to the change to 35 U.S.C. 111 in the PLTIA. In addition, the fourteen-
month time frame specified in 35 U.S.C. 154(b)(1)(A)(i) may now begin 
before the specification and drawings of an application are filed in 
the Office in an international application, due to the change to 35 
U.S.C. 154(b)(1)(A)(i)(II) in section 1(h)(1)(A) of the AIA Technical 
Corrections Act, Public Law 112-274, 126 Stat. 2456, 2457 (2013) 
(changing ``the date on which an international application fulfilled 
the requirements of section 371'' to ``the date of commencement of the 
national stage under section 371 in an international application'').
    Section 1.704 is amended to provide that the circumstances that 
constitute a failure of the applicant to engage in reasonable efforts 
to conclude processing or examination of an application also include 
the failure to provide an application in condition for examination 
within eight months from the date on which the application was filed 
under 35 U.S.C. 111(a) or the date of commencement of the national 
stage under 35 U.S.C. 371(b) or (f) in an international application. 
Section 1.704 as adopted in this final rule does not require that 
applications be in condition for examination on filing (or commencement 
of national stage in an international application) in order for an 
applicant to avoid a reduction of patent term adjustment. It is, 
however, reasonable to expect that an application should be placed in 
condition for examination within eight months of its filing date (or 
date of commencement of national stage in an international 
application).
    Section 1.704(c)(12) as adopted in this final rule provides that 
where there is a failure to provide an application in condition for 
examination within eight months from the date on which the application 
was filed under 35 U.S.C. 111(a) or the date of commencement of the 
national stage under 35 U.S.C. 371(b) or (f) in an international 
application, 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 eight months from the date on which the application was 
filed under 35 U.S.C. 111(a) or the date of commencement of the 
national stage under 35 U.S.C. 371(b) or (f) in an international 
application and ending on the date the application is in condition for 
examination. Section 1.704(c)(11) as adopted in this final rule 
contains the provisions of former Sec.  1.704(c)(11) without the 
``and'' at the end (as Sec.  1.704(c)(11) is no longer the penultimate 
paragraph of Sec.  1.704(c)), and Sec.  1.704(c)(13) as adopted in this 
final rule contains the provisions of former Sec.  1.704(c)(12).
    Section 1.704(f) is added to define when an application is ``in 
condition for examination'' for purposes of Sec.  1.704(c)(12). Section 
1.704(f) as adopted in this final rule provides that an application 
filed under 35 U.S.C. 111(a) is in condition for examination when the 
application includes a specification, including at least one claim and 
an abstract (Sec.  1.72(b)), and has papers in compliance with Sec.  
1.52, drawings in compliance with Sec.  1.84, any English translation 
required by Sec.  1.52(d) or Sec.  1.57(a), a sequence listing in 
compliance with Sec. Sec.  1.821 through 1.825 (if applicable), the 
inventor's oath or declaration or application data sheet containing the 
information specified in Sec.  1.63(b), the basic filing fee (Sec.  
1.16(a) or Sec.  1.16(c)), the search fee (Sec.  1.16(k) or Sec.  
1.16(m)), the examination fee (Sec.  1.16(o) or Sec.  1.16(q)), any 
certified copy of the previously filed application required by Sec.  
1.57(a), and any application size fee required by the Office under 
Sec.  1.16(s). Section 1.704(f) as adopted in this final rule provides 
that an international application is in condition for examination when 
the application has entered the national stage as defined in Sec.  
1.491(b), and includes a specification, including at least one claim 
and an abstract (Sec.  1.72(b)), and has papers in compliance with 
Sec.  1.52, drawings in compliance with Sec.  1.84, a sequence listing 
in compliance with Sec. Sec.  1.821 through 1.825 (if applicable), the 
inventor's oath or declaration or application data sheet containing the 
information specified in Sec.  1.63(b), the search fee (Sec.  
1.492(b)), the examination fee (Sec.  1.492(c)), and any application 
size fee required by the Office under Sec.  1.492(j). Section 1.704(f) 
as adopted in this final rule also provides that an application shall 
be considered as having papers in compliance with Sec.  1.52, drawings 
(if any) in compliance with Sec.  1.84, and a sequence listing in 
compliance with Sec.  1.821 through Sec.  1.825 (if applicable) for 
purposes of Sec.  1.704(f) on the filing date of the latest reply (if 
any) correcting the papers, drawings, or sequence listing that is prior 
to 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.
    Section 1.809: Section 1.809(c) is amended to provide that 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, the Office may notify the 
applicant in a notice of allowability and set a three-month (non-
extendable) period of time from the mailing date of the notice of 
allowability within which the deposit must be made in order to avoid 
abandonment.
    Section 1.958: Section 1.958 is amended for consistency with the 
change to Sec.  1.137 in this final rule to eliminate the provisions 
pertaining to petitions on the basis of unavoidable delay. Section 
1.958 is specifically amended to provide that if a response by the 
patent owner is not timely filed in the Office, a petition may be filed 
pursuant to Sec.  1.137 to revive a reexamination prosecution 
terminated under Sec.  1.957(b) or limited under Sec.  1.957(c) if the 
delay in response was unintentional.
    Section 3.11: Section 3.11(a) is amended to implement section 
201(d) of the PLTIA. Section 201(d) of the PLTIA amends 35 U.S.C. 261, 
first paragraph, by adding: ``[t]he Patent and Trademark Office shall 
maintain a register of interests in patents and applications for 
patents and shall record any document related thereto upon request, and 
may require a fee therefor.'' Section 3.11(a) is thus amended to 
provide that other documents relating to interests in patent 
applications and patents, accompanied by completed cover sheets as 
specified in Sec.  3.28 and Sec.  3.31, will be recorded in the Office.
    Section 3.31: Section 3.31(h) is amended to permit the use of PLT 
International Model forms as appropriate in lieu of an assignment cover 
sheet under Sec.  3.31. Section 3.31(h) specifically provides that the 
assignment cover sheet required by Sec.  3.28 for a patent application 
or patent will be satisfied by the Patent Law Treaty Model 
International Request for Recordation of Change in Applicant or Owner 
Form, Patent Law Treaty Model International Request for Recordation of 
a License/Cancellation of the Recordation of a License Form, Patent Law 
Treaty Model International Certificate of Transfer Form, or Patent Law 
Treaty Model International Request

[[Page 62386]]

for Recordation of a Security Interest/Cancellation of the Recordation 
of a Security Interest Form, as applicable, except where the assignment 
is also an oath or declaration under Sec.  1.63.
    Section 11.18: Section 11.18(a) is amended to simply refer to 
``Sec.  1.4(d)'' (rather than ``Sec.  1.4(d)(1)'' and ``Sec.  
1.4(d)(2)'' separately) for consistency with the change to Sec.  
1.4(d).
    Comments and Responses to Comments: The Office published a notice 
of proposed rulemaking on April 11, 2013, proposing to change the rules 
of practice to implement the changes in the PLT and title II of the 
PLTIA. See Changes to Implement the Patent Law Treaty, 78 FR 21788 
(Apr. 11, 2013) (PLT notice of proposed rulemaking). The Office 
received nine written submissions containing comments from intellectual 
property organizations, industry, law firms, individual patent 
practitioners, and the general public in response to this notice of 
proposed rulemaking. Comments that supported the proposed changes or 
pertained to editorial suggestions are not discussed. The remaining 
comments and the Office's responses to those comments follow:
    Comment 1: One comment suggested that Sec.  1.16(f) should be 
clarified to indicate that only a single surcharge is required for an 
application regardless of the number of deficiencies present in the 
application.
    Response: Section 1.16(f) as adopted in this final rule has been 
clarified, as suggested by the comment, to indicate that only a single 
surcharge is required for an application regardless of the number of 
deficiencies enumerated in Sec.  1.16(f) that are present in the 
application.
    Comment 2: One comment requested clarification on whether the basic 
filing fee is applicable to an application filed without any claims, 
and when the excess claims fee for presenting more than three 
independent claims or more than twenty total claims must be submitted.
    Response: The basic filing fee set forth in Sec.  1.16(a), (b), 
(c), or (d), the search fee set forth in Sec.  1.16(k), (l), (m), or 
(n), and the examination fee set forth in Sec.  1.16(o), (p), (q), or 
(r) are due for an application filed without any claims. If more than 
three independent claims, more than twenty total claims, or a multiple 
dependent claim are later presented in the application, the excess 
claims fee as set forth in Sec.  1.16(h), (i), and/or (j) is due when 
the excess claims are presented in the application. The provisions of 
Sec.  1.53(f)(4) are applicable if the excess claims fee as set forth 
in Sec.  1.16(h), (i), and/or (j) is not paid when the claims requiring 
an excess claims fee are presented in the application.
    Comment 3: One comment expressed concern that allowing the later 
filing of claims would enable an applicant to draft and file claims for 
an application in the United States after obtaining examination results 
in other countries, and would either delay publication of the 
application or result in publishing an application without claims. The 
comment suggested that the rules provide applicants with a not unduly 
long period of time for the filing of claims in such an application.
    Response: As discussed in the PLT notice of proposed rulemaking, an 
application filed without at least one claim would be treated in a 
manner analogous to the pre-existing practice under Sec.  1.53(f) for 
treating an application filed without the filing, search, or 
examination fee. See Changes to Implement the Patent Law Treaty, 78 FR 
at 21793. The pre-existing practice under Sec.  1.53(f) for treating an 
application filed without the filing, search, or examination fee 
involves issuing a notice that sets a two-month period (extendable 
under Sec.  1.136) within which the applicant must supply the missing 
fees in order to avoid abandonment. The Office will not publish an 
application until it includes at least one claim. The Office, however, 
also does not publish applications until the basic filing fee has been 
paid, and the pre-existing practice under Sec.  1.53(f) for treating an 
application filed without the filing fee does not delay publication in 
most applications. Thus, the Office does not expect the changes to 35 
U.S.C. 111(a) in the PLTIA and the changes to Sec.  1.53 is this final 
rule to delay eighteen-month publication.
    Comment 4: One comment suggested that the term ``replaced'' in 
Sec. Sec.  1.57(a) and 1.76(b)(3) is confusing as it suggests that some 
other specification and drawings are or need to be present to be 
replaced. The comment suggests using ``provided'' or ``constituted'' 
(to match 35 U.S.C. 111(c)).
    Response: The phrase ``are replaced'' is used in Sec. Sec.  1.57(a) 
and 1.76(b)(3) because that phrase is used in PLT Rule 2(5)(a) as well 
as in the pre-printed information in the section of the Patent Law 
Treaty Model Request Form that pertains to reference filing (Box IX).
    Comment 5: One comment requested clarification of the applicability 
of the ``reference filing'' provision of Sec.  1.57(a) to a 
continuation-in-part application. The comment suggested adding a 
provision to Sec.  1.57(a) pertaining to applications filed ``by 
reference'' to a previously filed application with new matter 
(additional description and/or drawings) included with the filing.
    Response: 35 U.S.C. 111(c) provides that the reference to the 
previously filed application ``shall constitute the specification and 
any drawings of the subsequent application.'' 35 U.S.C. 111(c) thus 
does not contemplate the filing by reference of a continuation-in-part 
of the previously filed application, as the specification and any 
drawings of the subsequent continuation-in-part application would need 
to extend beyond the specification and any drawings of the previously 
filed application. Therefore, there is no provision for the filing of a 
continuation-in-part of a previously filed application under 35 U.S.C. 
111(c) and Sec.  1.57(a). An applicant who desires to file a 
continuation-in-part of a previously filed application may effectively 
do so by filing the additional subject matter as the specification of 
an application under 35 U.S.C. 111(a) and Sec.  1.53(b) with an express 
incorporation by reference under Sec.  1.57(c) of the previously filed 
application. An applicant will be required to revise the application 
(e.g., submit a substitute specification under Sec.  1.125) if 
``essential material'' is being incorporated by reference and the 
previously filed application has not been issued as a U.S. patent or 
published as a U.S. patent application publication. See Sec.  1.57(d), 
(g), and (h) (as adopted in this final rule). Thus, applicants are 
encouraged to file a continuation-in-part application with a new 
specification and drawings that contains both the subject matter of the 
previously filed application and the additional subject matter, rather 
than with an incorporation by reference under Sec.  1.57(c) of the 
previously filed application.
    Comment 6: Several comments stated that the Office should not 
require a certified copy of a prior foreign filed application under 
Sec.  1.55 or Sec.  1.57 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, or provide for a reduction of 
patent term adjustment if a certified copy of a foreign previously 
filed application under Sec.  1.57 is not received within a set time 
period. The comments suggested that the Office revise Sec.  1.57(a)(4) 
to permit the filing of an interim copy of the foreign previously filed 
application and provide an exception for the situation in which the 
foreign previously filed application is filed in a foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (i.e., a

[[Page 62387]]

participating foreign intellectual property office).
    Response: The Office previously revised Sec.  1.55 in the final 
rule to implement the first inventor to file provisions of the AIA to 
require that a certified copy of any foreign priority application be 
filed in applications under 35 U.S.C. 111(a) 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 (with certain 
exceptions). See Changes to Implement the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 78 FR 11024, 11028-
29, 11053-55 (Feb. 14, 2013) (to be codified at Sec.  1.55(f)). The 
Office included this change to Sec.  1.55 in the final rule to 
implement the first inventor to file provisions of the AIA to ensure 
that it has a copy of any foreign priority application by the time of 
eighteen-month publication since U.S. patent application publications 
(as well as U.S. patents) will have a prior art effect as of the 
earliest priority date (for subject matter disclosed in the priority 
application) with respect to applications subject to AIA 35 U.S.C. 102. 
See id. at 11028.
    The changes in this final rule relating to the requirement for a 
certified copy of a foreign application pertain to: (1) International 
applications in which a certified copy of the foreign priority 
application was not filed during the international stage; and (2) 
applications filed via the reference filing provisions of 35 U.S.C. 
111(c) and Sec.  1.57(a) (where the specification and drawings of the 
application filed by reference are the specification and drawings of 
the foreign previously filed application).
    With respect to international applications in which a certified 
copy of the foreign priority application is not filed during the 
international stage, Sec.  1.55 formerly provided that a certified copy 
of the foreign priority application must be filed within the time limit 
set forth in the PCT and the Regulations under the PCT in an 
international application entering the national stage under 35 U.S.C. 
371. Section 1.55(f)(2) as adopted in this final rule simply provides 
that if a certified copy of the foreign priority application is not 
filed during the international stage of an international application, a 
certified copy of the foreign priority application must be filed within 
four months from the date of entry into the national stage as set forth 
in Sec.  1.491 or sixteen months from the filing date of the foreign 
priority application (with the exceptions applicable to applications 
filed under 35 U.S.C. 111(a)).
    With respect to applications filed via the reference filing 
provision of 35 U.S.C. 111(c) and Sec.  1.57(a), this final rule 
provides that a certified copy of a foreign previously filed 
application must be filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the foreign previously filed application, and provides for a 
reduction of patent term adjustment if a certified copy of a foreign 
previously filed application is not received within eight months from 
the date on which the application was filed by reference under 35 
U.S.C. 111(a).
    As discussed previously, PLT Article 5 and PLTIA 35 U.S.C. 111 
should not be viewed as prescribing a best practice for the preparation 
and filing of a patent application. The reference filing provisions of 
35 U.S.C. 111(c) and Sec.  1.57(a) should not be the routine filing 
practice for an application having a previously filed counterpart 
application, but rather should be viewed as a safeguard in the 
situation in which the due date for filing an application is 
approaching and a copy of the specification and any drawings of the 
previously filed counterpart application are not available. Thus, the 
use of the reference filing provisions of 35 U.S.C. 111(c) and Sec.  
1.57(a) should be relatively rare. If the specification and any 
drawings of the previously filed counterpart application are available, 
an applicant should simply file a copy of the specification and any 
drawings of the previously filed counterpart application as an 
application under 35 U.S.C. 111(a) and Sec.  1.53(b). This will avoid 
the concerns (the previously discussed consequences of mistyping the 
application number, filing date, or intellectual property authority or 
country on the application data sheet) inherent in the reference filing 
provisions of 35 U.S.C. 111(c) and Sec.  1.57(a), and also avoid the 
requirement in Sec.  1.57(a)(4) to file a certified copy of a foreign 
previously filed application within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the foreign previously filed application, as well as the 
reduction of patent term adjustment if a certified copy of a foreign 
previously filed application is not received within eight months from 
the date on which the application was filed by reference under 35 
U.S.C. 111(a).
    Section 1.57(a)(4) as adopted in this final rule (and as proposed 
in the PLT notice of proposed rulemaking) does not require a certified 
copy of the previously filed application if the previously filed 
application is an application filed under 35 U.S.C. 111 or 363. The 
Office has modified Sec.  1.57(a)(4) as adopted in this final rule to 
also provide that a certified copy of a foreign previously filed 
application is not required if it is a foreign priority application 
filed in a participating foreign intellectual property office, and the 
conditions set forth in Sec.  1.55(h) pertaining to applications 
claiming priority to a foreign application filed in a participating 
foreign intellectual property office are met.
    The Office is not making the interim copy provision of Sec.  
1.55(i) applicable to the requirement for a certified copy of a foreign 
previously filed application in an application filed by reference under 
35 U.S.C. 111(c) and Sec.  1.57(a). As discussed previously, the Office 
revised Sec.  1.55 in the final rule to implement the first inventor to 
file provisions of the AIA to require that a certified copy of the 
foreign application be filed 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 (with certain exceptions). The 
Office included this change to ensure that it has a copy of any foreign 
priority application by the time of eighteen-month publication since 
U.S. patent application publications (as well as U.S. patents) will 
have a prior art effect as of the earliest priority date (for subject 
matter disclosed in the priority application) with respect to 
applications subject to AIA 35 U.S.C. 102. See id. An interim copy 
under Sec.  1.55(i) is acceptable for meeting this time period 
requirement in Sec.  1.55(f) because the copy is being used in 
determining patentability in another application and not in determining 
the effective filing date of a claimed invention in the application 
claiming the right of foreign priority. Section 1.55 requires that a 
certified copy of the foreign priority application be provided when the 
applicant is relying upon the right of foreign priority in determining 
the effective filing date of a claimed invention in the application 
claiming the right of foreign priority. See id. at 11054 (to be 
codified at Sec.  1.55(g)(2)). The requirement for a copy of a foreign 
previously filed application under Sec.  1.57(a)(4) is to ensure that 
the copy of the specification and any drawings subsequently provided by 
the applicant correspond to the specification and any drawings of the 
foreign previously filed application, which relates to the effective 
filing date of the claimed invention in the application filed by 
reference under Sec.  1.57. Thus, the applicant's reliance upon the 
specification and any drawings of a

[[Page 62388]]

foreign previously filed application under Sec.  1.57(a)(4) is 
comparable to an applicant's reliance upon the specification and any 
drawings of the prior foreign application for the effective filing date 
of a claimed invention, which is a situation in which the Office would 
require a certified copy (and not merely an interim copy) of the 
priority application. Therefore, the Office is not making the interim 
copy provision of Sec.  1.55(i) also applicable to the requirement for 
a certified copy of the priority application under Sec.  1.57(a)(4).
    Section 1.57(a)(4) as adopted in this final rule also provides that 
the applicant may file a petition showing good and sufficient cause for 
the delay if a certified copy of a foreign previously filed application 
was not filed 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 (and the exception pertaining to applications 
claiming priority to a foreign priority application filed in a 
participating foreign intellectual property office is not applicable). 
This provision is designed to avoid a loss of rights for applicants who 
make a reasonable effort to timely file a certified copy of the foreign 
previously filed application.
    Comment 7: One comment noted the provision in 35 U.S.C. 111(c) (and 
Sec.  1.57(a)(3)) that if the copy of the specification and any 
drawings of the previously filed application are not submitted, the 
application shall be considered as abandoned, and treated as ``having 
never been filed'' unless revived and the appropriate copies of 
previously filed application is filed. The comment questioned the 
effect of the phrase ``treated as having never been filed'' on an 
application claiming priority to or the benefit of an application filed 
by reference under Sec.  1.57(a) and requested clarification that this 
is permitted.
    Response: 35 U.S.C. 111(c) provides that ``[a] failure to submit 
the copy of the specification and any drawings of the previously filed 
application within the prescribed period shall result in the 
application being regarded as abandoned'' and that ``[s]uch application 
shall be treated as having never been filed'' unless the application is 
revived and a copy of the specification and any drawings of the 
previously filed application are submitted. The phrase ``treated as 
having never been filed'' in 35 U.S.C. 111(c) precludes an applicant 
from claiming priority to or the benefit of such an application as an 
applicant may not claim priority to or the benefit of an application 
that had ``never been filed.'' Thus, an applicant may claim priority to 
or the benefit of an application abandoned under 35 U.S.C. 111(c) and 
Sec.  1.57(a)(1) or (a)(2) only if the application is revived under 
Sec.  1.137 and a copy of the specification and any drawings of the 
previously filed application are submitted to the Office. See Sec.  
1.137(c) (``[i]n an application abandoned under Sec.  1.57(a), the 
reply must include a copy of the specification and any drawings of the 
previously filed application'').
    Comment 8: One comment stated that the PLTIA eliminates the 
provisions for revival of an abandoned application on the basis of 
unavoidable delay, meaning that any petition for the revival of an 
abandoned application must be on the basis of unintentional delay, 
which requires a fee of $1700 ($850 for a small entity). The comment 
further stated that the PLT does not, however, require elimination of 
the ``unavoidable'' delay standard.
    Response: The PLT does not require elimination of the 
``unavoidable'' delay standard (which the Office considers to be a 
subset of ``unintentional'' delay), but also does not require a 
Contracting Party to have an ``unavoidable'' delay (or ``due care'') 
standard. The PLTIA amended 35 U.S.C. 41, 111, 133, 151, 364, and 371 
to eliminate the provisions pertaining to revival of an abandoned 
application or acceptance of a delayed maintenance fee payment on the 
basis of unavoidable delay, thus providing a single uniform standard 
for the revival of an abandoned application, acceptance of a delayed 
maintenance fee payment, acceptance of a delayed priority or benefit 
claims, and restoration of the right of priority to a foreign 
application or benefit of a provisional application. This final rule 
simply implements the changes to 35 U.S.C. 41, 111, 133, 151, 364, and 
371 provided for in the PLTIA.
    Comment 9: One comment noted that an applicant could pay the lower 
fee for revival on the basis of unavoidable delay under the former 
practice, but that an applicant must pay the higher fee for revival on 
the basis of unintentional delay and request a refund for ``exceptional 
circumstances'' under the PLTIA. Another comment suggested that the 
``exceptional circumstances'' provision of the PLTIA be employed to 
effectively retain the ``unavoidable'' delay standard (i.e., permitting 
an applicant to show ``unavoidable'' delay and request a refund for 
``exceptional circumstances''). Another comment expressed concern with 
the absence of an unavoidable delay standard for restoration of 
priority in international applications on the basis that many major 
patent offices require that there be a showing of a failure to timely 
file in spite of due care in order to obtain restoration of priority, 
and suggested that the Office provide applicants with the option of 
filing a petition on the basis of ``exceptional circumstances'' which 
the Office would interpret as meeting the PLT standard of ``failure to 
timely file in spite of due care.'' The comments also suggested that 
the rules provide for requests for refund due to the presence of 
``exceptional circumstances.''
    Response: The PLTIA adopts a single uniform standard 
(``unintentional'' delay) for the revival of an abandoned application, 
acceptance of a delayed response by the patent owner in a reexamination 
proceeding, acceptance of a delayed claim for priority or to the 
benefit of a prior-filed application, restoration of the right of 
priority to a foreign application or the benefit of a provisional 
application, and acceptance of a delayed maintenance fee payment. See 
35 U.S.C. 27 (``[t]he Director may establish procedures . . . to revive 
an unintentionally abandoned application for patent, accept an 
unintentionally delayed payment of the fee for issuing each patent, or 
accept an unintentionally delayed response by the patent owner in a 
reexamination proceeding''); 41(c)(1) (``[t]he Director may accept the 
payment of any maintenance fee . . . if the delay is shown to the 
satisfaction of the Director to have been unintentional''); 119(a) 
(``[t]he Director may prescribe regulations . . . pursuant to which the 
12-month period set forth in this subsection may be extended by an 
additional 2 months if the delay in filing the application in this 
country within the 12-month period was unintentional''); 119(b)(2) 
(``[t]he Director may establish procedures . . . to accept an 
unintentionally delayed claim under this section''); 119(e)(1) (``[t]he 
Director may prescribe regulations . . . pursuant to which the 12-month 
period set forth in this subsection may be extended by an additional 2 
months if the delay in filing the application under [35 U.S.C.] 111(a) 
or [35 U.S.C.] 363 within the 12-month period was unintentional''); and 
120 (``[t]he Director may establish procedures . . . to accept an 
unintentionally delayed submission of an amendment under this 
section'').
    As discussed previously, the ``exceptional circumstances'' 
provision of the PLTIA permits the Office to refund (or waive) the fee 
specified in 35 U.S.C. 41(a)(7) in situations in which the failure to 
take the required action or

[[Page 62389]]

pay the required fee was due to a widespread disaster. The 
``exceptional circumstances'' standard of the PLTIA is not the 
equivalent of or a substitute for either the former ``unavoidable'' 
delay standard or the PLT ``in spite of due care'' standard. Since the 
PLTIA eliminated the ``unavoidable'' delay standard and did not adopt 
the PLT ``in spite of due care'' standard, the Office does not consider 
it appropriate to employ the ``exceptional circumstances'' provision of 
the PLTIA as a backdoor retention of the ``unavoidable'' delay standard 
or as a mechanism for the Office to opine on whether an applicant has 
met a standard (the PLT ``in spite of due care'' standard) that is not 
part of the United States patent laws. Moreover, the Office's costs for 
treating a petition under the ``in spite of due care'' standard (like 
the Office's costs for treating a petition under the former 
``unavoidable'' delay standard) would far exceed the Office's costs for 
treating a petition under the ``unintentional'' delay standard provided 
for in the United States patent laws, and would thus warrant a higher 
petition fee rather than the reduced petition fee or no petition fee as 
suggested by the comments.
    The International Bureau of the World Intellectual Property 
Organization (International Bureau) processes requests for restoration 
of priority under both the ``unintentional'' delay standard and the 
``in spite of due care'' standard. Applicants who know at the time of 
filing of the international application that the priority period has 
expired and desire treatment under the ``in spite of due care'' 
standard have the option of filing the international application with 
the International Bureau as the Receiving Office. Applicants who 
discover that an international application was filed after the 
expiration of the priority period and desire treatment under the ``in 
spite of due care'' standard may request that the application be 
transferred to the International Bureau as Receiving Office under PCT 
Rule 19.4. See April 2007 Revision of Patent Cooperation Treaty 
Procedure, 72 FR 51559, 51562 (Sept. 10, 2007).
    As the ``exceptional circumstances'' provision of the PLTIA permits 
the Office to refund (or waive) the fee specified in 35 U.S.C. 41(a)(7) 
in situations in which the failure to take the required action or pay 
the required fee was due to a widespread disaster and not in response 
to petitions from applicants, the Office is not adopting provisions for 
applicants to request a refund on the basis of there being 
``exceptional circumstances.''
    Comment 10: Several comments noted that the fee for revival on the 
basis of unintentional delay was decreased to $1,700 ($850 for a small 
entity), but that this fee was also made applicable to delayed payments 
of maintenance fees and the failure to timely file a foreign priority 
or domestic benefit claim. One comment suggested that this fee change 
as it applies to the failure to timely file a foreign priority or 
domestic benefit claim was a considerable increase and should be 
reconsidered.
    Response: As discussed in the PLT notice of proposed rulemaking, 
the PLTIA amends 35 U.S.C. 41(a)(7), 119(b), 119(e), and 120 to provide 
that the Office shall charge $1,700.00 on filing each petition for the 
revival of an abandoned application for a patent, for the delayed 
payment of the fee for issuing each patent, for the delayed response by 
the patent owner in any reexamination proceeding, for the delayed 
payment of the fee for maintaining a patent in force, for the delayed 
submission of a priority or benefit claim, or for the extension of the 
twelve-month period for filing a subsequent application. See Changes to 
Implement the Patent Law Treaty, 78 FR at 21792-93. The changes to the 
fee for the revival of an abandoned application for a patent, for the 
delayed payment of the fee for maintaining a patent in force, and for 
the delayed submission of a priority or benefit claim in this final 
rule simply implement the changes in the PLTIA.
    Comment 11: One comment opposed the elimination of the 
``unavoidable'' delay standard on the basis that it would result in a 
significant fee increase to revive applications abandoned due to 
catastrophes such as earthquakes and tsunamis.
    Response: As discussed previously, the PLTIA contains a provision 
that permits the Office to refund (or waive) the fee specified in 35 
U.S.C. 41(a)(7) in situations in which the failure to take the required 
action or pay the required fee was due to a widespread disaster, such 
as an earthquake or tsunami.
    Comment 12: One comment stated that under the PLTIA the provisions 
for revival of an abandoned application on the basis of unintentional 
delay also applied to a failure to timely pay a maintenance fee or 
failure to timely file a foreign priority or domestic benefit claim.
    Response: The PLTIA adopts a single uniform standard 
(``unintentional'' delay) for the revival of an abandoned application, 
acceptance of a delayed maintenance fee payment, and acceptance of a 
delayed priority or benefit claim. The failure to timely file a foreign 
priority or domestic benefit claim does not result in abandonment of an 
application (and thus the need for revival) per se. The PLTIA, however, 
expressly provides that the standard for acceptance of a delayed 
priority or benefit claim (``unintentional'' delay) is the same as the 
standard for revival of an abandoned application.
    Comment 13: One comment expressed concern about the impact of the 
provision for the restoration of the right of priority on patent term. 
The comment suggested that this provision would effectively extend the 
patent term by up to two months for negligent applicants. The comment 
suggested that there be appropriate measures (e.g., requirement for a 
terminal disclaimer) to ensure that an applicant does not benefit by 
missing the date for filing the subsequent application.
    Response: The Office does not consider it necessary to create a 
complex restoration process to avoid abuse at this time. An applicant's 
failure to file the subsequent application within the twelve-month 
period in 35 U.S.C. 119(a) or (e) must have been unintentional. Thus, 
an applicant who intentionally delays filing the subsequent application 
will not be able to obtain priority to a prior foreign application 
under 35 U.S.C. 119(a) or benefit of a prior provisional application 
under 35 U.S.C. 119(e). In addition, the subsequent application must 
still be filed within two months of the expiration of the twelve-month 
period. The Office, however, may consider requirements if it appears 
that the procedures for restoration of the priority under 35 U.S.C. 
119(a) or benefit under 35 U.S.C. 119(e) are being used routinely or 
are being abused.
    Comment 14: One comment stated that the PLTIA uses the phrase 
``extending by an additional 2 months,'' rather than terminology more 
consistent with the PLT such as ``restoration'' or ``reinstatement'' of 
priority rights. The comment stated that during the PLT discussions at 
WIPO, there was great criticism of this provision as extending the 
Paris Convention period from twelve months to fourteen months. The 
comment further stated that the argument presented at WIPO to accept 
the provision was that it was not extending the twelve-month Paris 
Convention period, but rather was reinstating or restoring the right of 
priority.
    Response: The Office does not consider the change to 35 U.S.C. 
119(a) in the PLTIA to be an ``extension'' of the twelve-month Paris 
Convention period.

[[Page 62390]]

As discussed previously, the procedures set forth in Sec.  1.55(c) (and 
1.78(b)) as adopted in this final rule are for applicants whose delay 
in filing the subsequent application within the twelve-month time 
period in 35 U.S.C. 119(a) (or 119(e)(1)) was unintentional, and the 
use of the additional two-month time period in 35 U.S.C. 119(a) (or 
119(e)(1)) as an ``extension of time'' to file the subsequent 
application would be considered an abuse of the provisions.
    Comment 15: Several comments suggested that the Office provide for 
PCT applications filed in the United States Receiving Office in a 
language other than English in view of the change to 35 U.S.C. 361(c) 
to change ``International applications filed in the Patent and 
Trademark Office shall be in the English language'' to ``International 
applications filed in the Patent and Trademark Office shall be filed in 
the English language, or an English translation shall be filed within 
such later time as may be fixed by the Director.''
    Response: The PLTIA amends 35 U.S.C. 361(c) to authorize the Office 
to allow the filing of PCT applications in a language other than 
English if an English-language translation of the PCT application is 
filed within the period specified by the Office. In U.S. national 
practice for applications filed under 35 U.S.C. 111(a) in a language 
other than English, the Office requires an English-language translation 
of the non-English-language application and conducts all subsequent 
processing and examination of the application using the English-
language translation and not the initial non-English-language 
application. Unlike U.S. national practice for applications filed under 
35 U.S.C. 111(a), the PCT and PCT Regulations provide for a Receiving 
Office to review PCT applications (the PCT application as filed, and 
not any subsequent translation of the PCT application) for errors 
(e.g., review the description to determine whether it refers to 
drawings that are not present) (PCT Article 14 and PCT Rules 20 and 
25), and to process requests for incorporation by reference in PCT 
applications (PCT Rule 20.6), and other amendments and corrections to 
PCT applications (PCT Rule 26). There is no provision in the PCT that 
provides for the filing of an application in one language for the 
purpose of establishing a filing date, and the later filing of a 
translation of such application for the purpose of subsequent review 
and processing by the Receiving Office. The United States Receiving 
Office is simply not currently capable of conducting the review and 
processing required by the PCT for PCT applications filed in a language 
other than English. Creating a procedure under the PCT to provide for 
the initial filing of a non-English-language PCT application and later 
filing of an English-language translation for the purpose of subsequent 
review and processing would, under the provisions of the PCT and PCT 
Regulations, result in the resetting of the International Filing Date 
to the later date of submission of the English-language translation of 
the non-English-language PCT application. Therefore, to avoid the loss 
of a filing date for a PCT application in a language other than English 
deposited with the United States Receiving Office, the Office will 
continue to apply the current process under PCT Rule 19.4 of 
transmitting such a PCT application to the International Bureau for 
processing in its capacity as a Receiving Office, which will avoid the 
loss of a filing date as long as the PCT application is in a language 
accepted under PCT Rule 12.1(a) by the International Bureau as a 
Receiving Office. See MPEP 1805.
    Comment 16: One comment suggested that the word ``also'' in Sec.  
1.78(a)(4) and (c)(3) (two occurrences in each paragraph) (Sec.  
1.78(a)(4) and (d)(3) as adopted in this final rule) is confusing and 
redundant.
    Response: 35 U.S.C. 119(e) and 120 each require that the specific 
reference to the prior-filed application be submitted at such time 
during the pendency of the application as required by the Director. 
Sections 1.78(a)(4) and 1.78(d)(3), therefore, require that the 
specific reference to the prior-filed application be submitted during 
the pendency of the application as is expressly required by 35 U.S.C. 
119(e) and 120, and also require that the specific reference to the 
prior-filed application be submitted within the four-month or sixteen-
month time frame as is authorized by 35 U.S.C. 119(e) and 120.
    Comment 17: One comment suggested that the phrase ``for the 
patent'' should read ``for the application'' or be deleted in both 
occurrences in Sec. Sec.  1.53(f)(3)(ii) and 1.495(c)(3)(ii).
    Response: The phrase ``issue fee for the patent'' tracks the 
language of 35 U.S.C. 115(f) as amended by the AIA Technical 
Corrections Act.
    Comment 18: One comment suggested that the requirement that any 
petition for reconsideration of a decision refusing to accept a 
maintenance fee be accompanied by the petition fee set forth in Sec.  
1.17(f) should be deleted for consistency with the change to Sec.  
1.17(f).
    Response: Section 1.378(d) as adopted in this final rule does not 
include the requirement for the petition fee under Sec.  1.17(f) for a 
request for reconsideration of a maintenance fee decision.
    Comment 19: Several comments suggested that Sec.  1.704(f) be 
clarified to indicate that the phrase ``in compliance with'' in 
connection with the application papers, drawings, translations, and 
sequence listings applies to preexamination requirements and does not 
apply to corrections required by examiners.
    Response: Section 1.704(f) as adopted in this final rule provides 
that an application shall be considered as having papers in compliance 
with Sec.  1.52, drawings (if any) in compliance with Sec.  1.84, and a 
sequence listing in compliance with Sec.  1.821 through Sec.  1.825 (if 
applicable) for purposes of Sec.  1.704(f) on the filing date of the 
latest reply (if any) correcting the papers, drawings, or sequence 
listing that is prior to 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. Thus, the patent term adjustment reduction provision of 
Sec.  1.704(c)(12) would not apply to a correction of the application 
papers, drawings, or sequence listing that is required by an examiner 
(i.e., would not apply to corrections that take place after 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).
    Comment 20: One comment noted that the PLTIA amends 35 U.S.C. 261 
to provide for a ``register of interests in applications for patents 
and patents,'' but that the PLTIA does not specify the scope of an 
``interest.'' The comment requests guidance on the scope of these 
interests as well as what is necessary to have these interests 
recorded.
    Response: The Office currently records assignments, licenses, 
security agreements, and other interests in patents and patent 
applications, but the recording of such a document is not a 
determination of the effect the document has on the ownership of the 
patent or even the validity of the document. See MPEP 301. Pre-PLTIA 35 
U.S.C. 261 applied to ``applications for patent, patents, or any 
interest therein.'' The Office does not view the PLTIA as changing the 
meaning of the term ``interest'' as used in 35 U.S.C. 261.
    Comment 21: Several comments suggested that the Office should move 
from the ``independent and distinct'' restriction standard of 35 U.S.C. 
121 to the PCT ``unity of invention'' standard.
    Response: As discussed in the PLT notice of proposed rulemaking, 
the Office is in the process of studying the

[[Page 62391]]

changes to the patent statute, regulations, examination practices, and 
filing fees that would be necessary to move from the ``independent and 
distinct'' restriction standard of 35 U.S.C. 121 to the ``unity of 
invention'' standard of PCT Rule 13 in a practical manner.

Rulemaking Considerations

A. Administrative Procedure Act

    This rulemaking implements the PLT and title II of the PLTIA. The 
changes in this rulemaking (except for the change to the patent term 
adjustment provisions of 37 CFR 1.704) are to revise application filing 
and prosecution procedures to conform to the changes in title II of the 
PLTIA and section 1(f) of the AIA Technical Corrections Act, to 
eliminate procedural requirements to ensure that the rules of practice 
are consistent with the PLT, and to make minor changes pertaining to 
the supplemental examination, inventor's oath or declaration, and first 
inventor to file provisions of the AIA. Therefore, the changes in this 
rulemaking (except for the change to the patent term adjustment 
provisions of 37 CFR 1.704) involve rules of agency practice and 
procedure and/or interpretive rules. See Bachow Commc'ns Inc. v. 
F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an 
application process are procedural under the Administrative Procedure 
Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 
2001) (rules for handling appeals were procedural where they did not 
change the substantive standard for reviewing claims); Nat'l Org. of 
Veterans' Advocates, Inc. v. Sec'y of Veterans Affairs, 260 F.3d 1365, 
1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a statute 
is interpretive).
    Accordingly, prior notice and opportunity for public comment were 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law), 
except for the change to the patent term adjustment provisions of 37 
CFR 1.704. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. 
Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), 
does not require notice and comment rulemaking for ``interpretative 
rules, general statements of policy, or rules of agency organization, 
procedure, or practice'') (quoting 5 U.S.C. 553(b)(A)). The Office, 
however, published proposed changes for comment as it sought the 
benefit of the public's views on the Office's proposed implementation 
of the PLT and title II of the PLTIA and section 1(f) of the AIA 
Technical Corrections Act.

B. Regulatory Flexibility Act

    For the reasons set forth herein, the Deputy General Counsel for 
General Law of the United States Patent and Trademark Office has 
certified to the Chief Counsel for Advocacy of the Small Business 
Administration that the changes in this final rule will not have a 
significant economic impact on a substantial number of small entities. 
See 5 U.S.C. 605(b). The proposed rule described a similar 
certification at that time by the Deputy General Counsel for General 
Law, and no comments were received.
    As noted in the notice of proposed rulemaking, the primary changes 
in this rulemaking are to revise application filing and prosecution 
procedures to conform to the changes in title II of the PLTIA and 
eliminate procedural requirements to ensure that the rules of practice 
are consistent with the PLT.
    The notable changes in the PLT and title II of the PLTIA pertain 
to: (1) The filing date requirements for a patent application; (2) the 
restoration of patent rights via the revival of abandoned applications 
and acceptance of delayed maintenance fee payments; and (3) the 
restoration of the right of priority to a foreign application or the 
benefit of a provisional application in a subsequent application filed 
within two months of the expiration of the twelve-month period (six-
month period for design applications) for filing such a subsequent 
application.
    The requirements and fees for filing of an application without a 
claim track the existing provisions in 37 CFR 1.53(f) for an 
application that is missing application components not required for a 
filing date. The requirements and fees for filing of an application 
``by reference'' to a previously filed application in lieu of filing 
the specification and drawings (reference filing) are simpler than the 
existing requirements in 37 CFR 1.57(a) that apply when relying upon 
the specification and drawings of a prior-filed application as the 
specification and drawings of an application.
    The requirements for a petition to revive an abandoned application 
(37 CFR 1.137) or accept a delayed maintenance fee payment (37 CFR 
1.378) on the basis of ``unintentional'' delay are the pre-existing 
requirements for a petition to revive an abandoned application or 
accept a delayed maintenance fee payment. PLTIA 35 U.S.C. 41(a)(7) and 
(c)(1) set the petition fee amount for a petition to accept a delayed 
maintenance fee payment at an amount equal to the fee for a petition to 
revive an unintentionally abandoned application, which is comparable to 
the pre-existing surcharge for accepting an unintentionally delayed 
maintenance fee payment.
    The requirements and fees for a petition to restore the right of 
priority to a prior-filed foreign application or a petition to restore 
the right to benefit of a prior-filed provisional application 
correspond to the pre-existing requirements for petitions based upon 
unintentional delay (i.e., a petition to revive an abandoned 
application (37 CFR 1.137) or accept a delayed maintenance fee payment 
(37 CFR 1.378)). PLTIA 35 U.S.C. 41(a)(7) and 119 set the petition fee 
amount for a petition to restore the right of priority to a prior-filed 
foreign application or a petition to restore the right to benefit of a 
prior-filed provisional application at an amount equal to the fee for a 
petition to revive an unintentionally abandoned application. Prior to 
the PLTIA, 35 U.S.C. 119 did not permit an applicant who missed the 
filing period requirement in 35 U.S.C. 119(a) or (e) to restore the 
right of priority to the prior-filed foreign application or restore the 
right to benefit of the prior-filed provisional application.
    The changes to the patent term adjustment reduction provisions do 
not impose any additional burden on applicants. The change to 37 CFR 
1.704(c) simply specifies that the failure to place an application in 
condition for examination within eight months from the date on which 
the application was filed under 35 U.S.C. 111(a) or the date of 
commencement of the national stage under 35 U.S.C. 371(b) or (f) in an 
international application constitutes a failure of an applicant to 
engage in reasonable efforts to conclude processing or examination of 
an application. This change will not have a significant economic impact 
on a substantial number of small entities because: (1) Applicants 
already have to place an application in a condition for examination; 
(2) applicants are not entitled to patent term adjustment for 
examination delays that result from an applicant's delay in prosecuting 
the application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR 1.704(a)); and 
(3) applicants may avoid any consequences from this provision simply by 
placing the application in condition for examination within eight 
months from the date on which the application was filed under 35 U.S.C. 
111(a) or the date of commencement of the national stage under 35 
U.S.C. 371(b) or (f) in an international application.
    For the foregoing reasons, the changes in this final rule will not 
have a

[[Page 62392]]

significant economic impact on a substantial number of small entities.

C. Executive Order 12866 (Regulatory Planning and Review)

    This rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review)

    The Office has complied with Executive Order 13563. Specifically, 
the Office has, to the extent feasible and applicable: (1) Made a 
reasoned determination that the benefits justify the costs of the rule; 
(2) tailored the rule to impose the least burden on society consistent 
with obtaining the regulatory objectives; (3) selected a regulatory 
approach that maximizes net benefits; (4) specified performance 
objectives; (5) identified and assessed available alternatives; (6) 
involved the public in an open exchange of information and perspectives 
among experts in relevant disciplines, affected stakeholders in the 
private sector, and the public as a whole, and provided on-line access 
to the rulemaking docket; (7) attempted to promote coordination, 
simplification, and harmonization across government agencies and 
identified goals designed to promote innovation; (8) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (9) ensured the objectivity of scientific 
and technological information and processes.

E. Executive Order 13132 (Federalism)

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

F. Executive Order 13175 (Tribal Consultation)

    This rulemaking will not: (1) Have substantial direct effects on 
one or more Indian tribes; (2) impose substantial direct compliance 
costs on Indian tribal governments; or (3) preempt tribal law. 
Therefore, a tribal summary impact statement is not required under 
Executive Order 13175 (Nov. 6, 2000).

G. Executive Order 13211 (Energy Effects)

    This rulemaking is not a significant energy action under Executive 
Order 13211 because this rulemaking is not likely to have a significant 
adverse effect on the supply, distribution, or use of energy. 
Therefore, a Statement of Energy Effects is not required under 
Executive Order 13211 (May 18, 2001).

H. Executive Order 12988 (Civil Justice Reform)

    This rulemaking meets applicable standards to minimize litigation, 
eliminate ambiguity, and reduce burden as set forth in sections 3(a) 
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

I. Executive Order 13045 (Protection of Children)

    This rulemaking does not concern an environmental risk to health or 
safety that may disproportionately affect children under Executive 
Order 13045 (Apr. 21, 1997).

J. Executive Order 12630 (Taking of Private Property)

    This rulemaking will not affect a taking of private property or 
otherwise have taking implications under Executive Order 12630 (Mar. 
15, 1988).

K. Congressional Review Act

    Under the Congressional Review Act provisions of the Small Business 
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), 
prior to issuing any final rule, the United States Patent and Trademark 
Office will submit a report containing the final rule and other 
required information to the United States Senate, the United States 
House of Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this rule are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this rule is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).

L. Unfunded Mandates Reform Act of 1995

    The changes set forth in this rule do not involve a Federal 
intergovernmental mandate that will result in the expenditure by State, 
local, and tribal governments, in the aggregate, of 100 million dollars 
(as adjusted) or more in any one year, or a Federal private sector 
mandate that will result in the expenditure by the private sector of 
100 million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501 et seq.

M. National Environmental Policy Act

    This rulemaking will not have any effect on the quality of the 
environment and is thus categorically excluded from review under the 
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

N. National Technology Transfer and Advancement Act

    The requirements of section 12(d) of the National Technology 
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not 
applicable because this rulemaking does not contain provisions which 
involve the use of technical standards.

O. Paperwork Reduction Act

    The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) 
requires that the Office consider the impact of paperwork and other 
information collection burdens imposed on the public. This final rule 
involves information collection requirements which are subject to 
review by the Office of Management and Budget (OMB) under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501-3549).
    The notable changes in the PLT and title II of the PLTIA pertain 
to: (1) The filing date requirements for a patent application; (2) the 
restoration of patent rights via the revival of abandoned applications 
and acceptance of delayed maintenance fee payments; and (3) the 
restoration of the right of priority to a foreign application or the 
benefit of a provisional application in a subsequent application filed 
within two months of the expiration of the twelve-month period (six-
month period for design applications) for filing such a subsequent 
application.
    The information collection requirements pertaining to petitions to 
accept a delayed maintenance fee payment have been reviewed and 
approved by the OMB under OMB control number 0651-0016. The information 
collection requirements pertaining to patent term adjustment have been 
reviewed and approved by the OMB under OMB control number 0651-0020. 
The information collection requirements pertaining to recording 
assignments (and other interests) in patents and patent applications 
have been reviewed and approved by the OMB under OMB control number 
0651-0027. The information collection requirements pertaining to 
petitions to revive an abandoned application have been reviewed and 
approved by the OMB under OMB control number 0651-0031. The information 
collection requirements pertaining to the

[[Page 62393]]

specification (including claims) and drawings required for a patent 
application have been reviewed and approved by the OMB under OMB 
control number 0651-0032. The information collection requirements 
pertaining to representative and correspondence address have been 
reviewed and approved by the OMB under OMB control number 0651-0035. 
The changes in this final rule pertaining to petitions to accept a 
delayed maintenance fee payment, patent term adjustment, petitions to 
revive an abandoned application, the specification (including claims) 
and drawings required for a patent application, and representative and 
correspondence address, do not propose to add any additional 
requirements (including information collection requirements) or fees 
for patent applicants or patentees. Therefore, the Office did not 
resubmit information collection packages to OMB for its review and 
approval because the changes in this final rule do not affect the 
information collection requirements associated with the information 
collections approved under OMB control numbers 0651-0016, 0651-0020, 
0651-0027, 0651-0031, 0651-0032, and 0651-0035.
    This final rule also provides for the optional use by applicants of 
the following Patent Law Treaty Model International Forms: (1) Model 
International Request Form; (2) Model International Power of Attorney 
Form; (3) Model International Request for Recordation of Change in Name 
or Address Form; (4) Model International Request for Correction of 
Mistakes Form; (5) Model International Request for Recordation of 
Change in Applicant or Owner Form; (6) Model International Certificate 
of Transfer Form; (7) Model International Request for Recordation of a 
License/Cancellation of the Recordation of a License Form; and (8) 
Model International Request for Recordation of a Security Interest/
Cancellation of the Recordation of a Security Interest Form. This final 
rule also requires revisions to the pre-printed information on the 
forms for petitions to accept a delayed maintenance fee payment and 
petitions to revive an abandoned application (PTO/SB/64, PTO/SB/64a, 
PTO/SB/66) and elimination of the forms for petitions based upon 
unavoidable delay (PTO/SB/61 and PTO/SB/65) in the information 
collections approved under OMB control numbers 0651-0016 and 0651-0031. 
The Office is submitting a change worksheet to OMB to add these Patent 
Law Treaty Model International Forms and form revisions to the 
information collections approved under OMB control numbers 0651-0016, 
0651-0020, 0651-0027, 0651-0031, 0651-0032, and 0651-0035.
    This final rule adds petitions to restore the right of priority to 
a prior-filed foreign application or a petition to restore the right to 
benefit of a prior-filed provisional application. The Office submitted 
a proposed information collection to OMB for its review and approval 
when the notice of proposed rulemaking was published. The Office also 
published the title, description, and respondent description of the 
information collection, with an estimate of the annual reporting 
burdens, in the notice of proposed rulemaking. See Changes to Implement 
the Patent Law Treaty, 78 FR at 21802-03. The Office did not receive 
any comments on this proposed information collection, and the changes 
adopted in this final rule do not require any change to the proposed 
information collection. Accordingly, the Office has resubmitted the 
proposed revision to the information collection to OMB. The proposed 
information collection is available at OMB's Information Collection 
Review Web site: www.reginfo.gov/public/do/PRAMain.
    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 OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents, 
Trademarks.

37 CFR Part 11

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

    For the reasons set forth in the preamble, 37 CFR parts 1, 3, and 
11 are amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Section 1.1 is amended by revising paragraph (c) to read as follows:


Sec.  1.1  Addresses for non-trademark correspondence with the United 
States Patent and Trademark Office.

* * * * *
    (c) For reexamination or supplemental examination proceedings. (1) 
All correspondence concerning ex parte reexamination, other than 
correspondence to the Office of the General Counsel pursuant to Sec.  
1.1(a)(3) and Sec.  102.4 of this chapter, should be additionally 
marked ``Mail Stop Ex Parte Reexam.''
    (2) All correspondence concerning inter partes reexamination, other 
than correspondence to the Office of the General Counsel pursuant to 
Sec.  1.1(a)(3) and Sec.  102.4 of this chapter, should be additionally 
marked ``Mail Stop Inter Partes Reexam.''
    (3) Requests for supplemental examination (original and corrected 
request papers) and any other paper filed in a supplemental examination 
proceeding, should be additionally marked ``Mail Stop Supplemental 
Examination.''
    (4) All correspondence concerning a reexamination proceeding 
ordered as a result of a supplemental reexamination proceeding, other 
than correspondence to the Office of the General Counsel pursuant to 
Sec.  1.1(a)(3) and Sec.  102.4 of this chapter should be additionally 
marked ``Mail Stop Ex Parte Reexam.''
* * * * *

0
3. Section 1.4 is amended by revising paragraphs (a)(2), (c), and (d) 
to read as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

    (a) * * *
    (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, Sec. Sec.  1.501 to 1.570; of supplemental 
examination of patents in subpart E, Sec. Sec.  1.601 to 1.625; 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 Patent Trial and Appeal Board in parts 41 and 42 
of this chapter.
* * * * *
    (c) Since different matters may be considered by different branches 
or

[[Page 62394]]

sections of the 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. Subjects provided for 
on a single Office or World Intellectual Property Organization form may 
be contained in a single paper.
    (d)(1) Handwritten signature. Each piece of correspondence, except 
as provided in paragraphs (d)(2), (d)(3), (d)(4), (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 
paragraph (d)(1) of this section. An S-signature includes any signature 
made by electronic or mechanical means, and any other mode of making or 
applying a signature other than a handwritten signature as provided for 
in paragraph (d)(1) of this section. 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 or supplemental examination 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) Electronically submitted correspondence. Correspondence 
permitted via the Office electronic filing system may be signed by a 
graphic representation of a handwritten signature as provided for in 
paragraph (d)(1) of this section or a graphic representation of an S-
signature as provided for in paragraph (d)(2) of this section when it 
is submitted via the Office electronic filing system.
    (4) Certifications--(i) Certification as to the paper presented. 
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.  11.18(b) of 
this subchapter. Violations of Sec.  11.18(b)(2) of this subchapter by 
a party, whether a practitioner or non-practitioner, may result in the 
imposition of sanctions under Sec.  11.18(c) of this subchapter. Any 
practitioner violating Sec.  11.18(b) of this subchapter may also be 
subject to disciplinary action. See Sec.  11.18(d) of this subchapter.
    (ii) Certification as to the signature. The person inserting a 
signature under paragraph (d)(2) or (d)(3) 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. A person 
submitting a document signed by another under paragraph (d)(2) or 
(d)(3) 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. Violations of the certification as to 
the signature of another or a person's own signature as set forth in 
this paragraph may result in the imposition of sanctions under Sec.  
11.18(c) and (d) of this chapter.
    (5) Forms. The Office provides forms for 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 
forms) 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 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.  11.18(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.
* * * * *

0
4. Section 1.5 is amended by revising paragraph (d) to read as follows:


Sec.  1.5  Identification of patent, patent application, or patent-
related proceeding.

* * * * *
    (d) A letter relating to a reexamination or supplemental 
examination proceeding should identify it as such by the number of the 
patent undergoing reexamination or supplemental examination, the 
request control number assigned to such proceeding, and, if known, the 
group art unit and name of the examiner to which it been assigned.
* * * * *

0
5-6. Section 1.6 is amended by revising paragraph (d) to read as 
follows:


Sec.  1.6  Receipt of 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 paragraph (a)(3) of this section. 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 
or supplemental examination proceeding, the interference number of an 
interference proceeding, the trial number of a trial proceeding before 
the Board, or the

[[Page 62395]]

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), (F), and (I), 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, 
or a request for supplemental examination under Sec.  1.610;
    (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) In contested cases and trials before the Patent Trial and 
Appeal Board, except as the Board may expressly authorize.
* * * * *

0
7. Section 1.7 is amended by revising paragraph (a) to read as follows:


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.  
90.3 of this chapter for time for appeal or for commencing civil 
action.
* * * * *

0
8. Section 1.16 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.16  National application filing, search, and examination fees.

* * * * *
    (f) Surcharge for filing the basic filing fee, search fee, 
examination fee, or inventor's oath or declaration on a date later than 
the filing date of the application, an application that does not 
contain at least one claim on the filing date of the application, or an 
application filed by reference to a previously filed application under 
Sec.  1.57(a), except provisional applications:

By a micro entity (Sec.   1.29)............................       $35.00
By a small entity (Sec.   1.27(a)).........................        70.00
By other than a small or micro entity......................       140.00
 

* * * * *

0
9. Section 1.17 is amended by revising paragraphs (f), (g), (m), and 
(p), adding new paragraph (o), and removing and reserving paragraphs 
(l) and (t) to read as follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (f) For filing a petition under one of the following sections which 
refers to this paragraph:

By a micro entity (Sec.   1.29)............................      $100.00
By a small entity (Sec.   1.27(a)).........................       200.00
By other than a small or micro entity......................       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.  1.182--for decision on a question not specifically provided 
for in an application for patent.
    Sec.  1.183--to suspend the rules in an application for 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.  1.46--for filing an application on behalf of an inventor by a 
person who otherwise shows sufficient proprietary interest in the 
matter.
    Sec.  1.55(f)--for filing a belated certified copy of a foreign 
application.
    Sec.  1.57(a)--for filing a belated certified copy of a foreign 
application.
    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.  1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
    Sec.  1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
    Sec.  1.956--for patent owner requests for extension of time in 
inter partes reexamination proceedings.
    Sec.  5.12--for expedited handling of a foreign filing license.
    Sec.  5.15--for changing the scope of a license.
    Sec.  5.25--for retroactive license.
* * * * *
    (l) [Reserved]
    (m) For filing a petition for the revival of an abandoned 
application for a patent, for the delayed payment of the fee for 
issuing each patent, for the delayed response by the patent owner in 
any reexamination proceeding, for the delayed payment of the fee for 
maintaining a patent in force, for the delayed submission of a priority 
or benefit claim, or for the extension of the twelve-month (six-month 
for designs) period for filing a subsequent application (Sec. Sec.  
1.55(c), 1.55(e), 1.78(b), 1.78(c), 1.78(e), 1.137, 1.378, and 1.452):

By a small entity (Sec.   1.27(a)) or micro entity (Sec.         $850.00
 1.29).....................................................
By other than a small or micro entity......................     1,700.00
 

* * * * *
    (o) For every ten items or fraction thereof in a third-party 
submission under Sec.  1.290:

By a small entity (Sec.   1.27(a)) or micro entity (Sec.          $90.00
 1.29).....................................................
By other than a small entity...............................       180.00
 

    (p) For an information disclosure statement under Sec.  1.97(c) or 
(d):

By a micro entity (Sec.   1.29)............................       $45.00
By a small entity (Sec.   1.27(a)).........................        90.00
By other than a small or micro entity......................       180.00
 

* * * * *
    (t) [Reserved]

0
10. Section 1.20 is amended by removing and reserving paragraph (i).


Sec.  1.20  Post issuance fees.

* * * * *
    (i) [Reserved]
* * * * *

0
11. Section 1.23 is amended by adding a new paragraph (c) to read as 
follows:


Sec.  1.23  Methods of payment.

* * * * *
    (c) A fee transmittal letter may be signed by a juristic applicant 
or patent owner.

0
12. Section 1.25 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.25  Deposit accounts.

* * * * *
    (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,

[[Page 62396]]

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, and an authorization to charge to a 
deposit account the fee for a request for supplemental examination 
pursuant to Sec.  1.610 and any other fees required in a supplemental 
examination proceeding in a patent may also be filed with the request 
for supplemental examination. 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 unless sufficient 
funds are present in the account to cover the fee.
* * * * *

0
13. Section 1.29 is amended by revising paragraphs (e) and (k)(4) to 
read as follows:


Sec.  1.29  Micro entity status.

* * * * *
    (e) Micro entity status is established in an application by filing 
a micro entity certification in writing complying with the requirements 
of either paragraph (a) or paragraph (d) of this section and signed 
either in compliance with Sec.  1.33(b) or in an international 
application filed in a Receiving Office other than the United States 
Receiving Office by a person authorized to represent the applicant 
under Sec.  1.455. Status as a micro entity must be specifically 
established in each related, continuing and reissue application in 
which status is appropriate and desired. Status as a micro 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 certification of 
entitlement to micro entity status for the continuing or reissue 
application.
* * * * *
    (k) * * *
    (4) Any deficiency payment (based on a previous erroneous payment 
of a micro entity fee) submitted under this paragraph will be treated 
as a notification of a loss of entitlement to micro entity status under 
paragraph (i) of this section.

0
14. Section 1.33 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.33  Correspondence respecting patent applications, 
reexamination proceedings, and other proceedings.

* * * * *
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination or supplemental examination 
proceeding will be directed to the correspondence address in the patent 
file. Amendments filed in a reexamination proceeding, and other papers 
filed in a reexamination or supplemental examination 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.
* * * * *

0
15. Section 1.51 is amended by revising paragraph (a) to read as 
follows:


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. An application transmittal 
letter limited to the transmittal of the documents and fees comprising 
a patent application under this section may be signed by a juristic 
applicant or patent owner.
* * * * *

0
16. Section 1.52 is amended by revising paragraphs (a), (b), and (e) to 
read as follows:


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 or supplemental examination 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 or supplemental examination 
proceeding, must be on sheets of paper that are the same size, not 
permanently bound together, and:
    (i) Flexible, strong, smooth, non-shiny, durable, and white;
    (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm 
(8\1/2\ by 11 inches), with each sheet including a top margin of at 
least 2.0 cm (\3/4\ inch), a left side margin of at least 2.5 cm (1 
inch), a right side margin of at least 2.0 cm (\3/4\ inch), and a 
bottom margin of at least 2.0 cm (\3/4\ inch);
    (iii) Written on only one side in portrait orientation;
    (iv) Plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; and
    (v) Presented in a form having sufficient clarity and contrast 
between the paper and the writing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical character 
recognition.
    (2) All papers that are submitted on paper or by facsimile 
transmission and are to become a part of the permanent records of the 
United States Patent and Trademark Office should have no holes in the 
sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on paper forms 
provided by the Office, or to the copy of the patent submitted on 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 the inventor's oath or declaration) or reexamination or 
supplemental examination proceeding, any amendments to the application 
or reexamination proceeding, or any corrections to the application, or 
reexamination or supplemental examination proceeding. (1) The 
application or proceeding and any amendments or corrections to the 
application (including any translation

[[Page 62397]]

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 or supplemental examination 
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 or supplemental examination 
proceeding (Sec.  1.72(b)).
    (5) Other than in a reissue application or a reexamination or 
supplemental examination 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 or 
supplemental examination proceeding, the paragraphs of the 
specification, other than in the claims or abstract, may be numbered at 
the time the application is filed, and should be individually and 
consecutively numbered using Arabic numerals, so as to unambiguously 
identify each paragraph. The number should consist of at least four 
numerals enclosed in square brackets, including leading zeros (e.g., 
[0001]). The numbers and enclosing brackets should appear to the right 
of the left margin as the first item in each paragraph, before the 
first word of the paragraph, and should be highlighted in bold. A gap, 
equivalent to approximately four spaces, should follow the number. 
Nontext elements (e.g., tables, mathematical or chemical formulae, 
chemical structures, and sequence data) are considered part of the 
numbered paragraph around or above the elements, and should not be 
independently numbered. If a nontext element extends to the left 
margin, it should not be numbered as a separate and independent 
paragraph. A list is also treated as part of the paragraph around or 
above the list, and should not be independently numbered. Paragraph or 
section headers (titles), whether abutting the left margin or centered 
on the page, are not considered paragraphs and should not be numbered.
* * * * *
    (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 or supplemental examination 
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 
Organization for Standardization (ISO) 9660 standard, and the contents 
of each compact disc must be in compliance with the American Standard 
Code for Information Interchange (ASCII).
    (ii) Each compact disc must be enclosed in a hard compact disc case 
within an unsealed padded and protective mailing envelope and 
accompanied by a transmittal letter on paper in accordance with 
paragraph (a) of this section. The transmittal letter must list for 
each compact disc the machine format (e.g., IBM-PC, Macintosh), the 
operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, 
Unix), a list of files contained on the compact disc including their 
names, sizes in bytes, and dates of creation, plus any other special 
information that is necessary to identify, maintain, and interpret 
(e.g., tables in landscape orientation should be identified as 
landscape orientation or be identified when inquired about) the 
information on the compact disc. Compact discs submitted to the Office 
will not be returned to the applicant.
    (4) Any compact disc must be submitted in duplicate unless it 
contains only the ``Sequence Listing'' in computer readable form 
required by Sec.  1.821(e). The compact disc and duplicate copy must be 
labeled ``Copy 1'' and ``Copy 2,'' respectively. The transmittal letter 
which accompanies the compact disc must include a statement that the 
two compact discs are identical. In the event that the two compact 
discs are not identical, the Office will use the compact disc labeled 
``Copy 1'' for further processing. Any amendment to the information on 
a 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;
    (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''); and
    (vi) An indication that the disc is ``Copy 1'' or ``Copy 2'' of the

[[Page 62398]]

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.
* * * * *

0
17. Section 1.53 is amended by revising paragraphs (b), (c), and (f) to 
read as follows:


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

* * * * *
    (b) Application filing requirements--Nonprovisional application. 
The filing date of an application for patent filed under this section, 
other than an application for a design patent or a provisional 
application under paragraph (c) of this section, is the date on which a 
specification, with or without claims, is received in the Office. The 
filing date of an application for a design patent filed under this 
section, except for a continued prosecution application under paragraph 
(d) of this section, is the date on which the specification as 
prescribed by 35 U.S.C. 112, including at least one claim, and any 
required drawings are received in the Office. No new matter may be 
introduced into an application after its filing date. A continuing 
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35 
U.S.C. 120, 121, or 365(c) and Sec.  1.78(d) and (e).
    (1) A continuation or divisional application that names as 
inventors the same or fewer than all of the inventors named in the 
prior application may be filed under this paragraph or paragraph (d) of 
this section.
    (2) A continuation-in-part application (which may disclose and 
claim subject matter not disclosed in the prior application) or a 
continuation or divisional application naming an inventor not named in 
the prior application must be filed under this paragraph.
    (c) Application filing requirements--Provisional application. The 
filing date of a provisional application is the date on which a 
specification, with or without claims, is received in the 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; or
    (iii) Expiration of twelve months after the filing date of 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 35 U.S.C. 
112(b), unless the provisional application under paragraph (c) of this 
section otherwise contains at least one claim as prescribed by 35 
U.S.C. 112(b). 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, and the 
surcharge required by Sec.  1.16(f) if either the basic filing fee for 
a nonprovisional application or the inventor's oath or declaration was 
not present on the filing date accorded the resulting nonprovisional 
application (i.e., the filing date of the original provisional 
application). A request to convert a provisional application to a 
nonprovisional application must also be filed prior to the earliest of:
    (i) Abandonment of the provisional application filed under 
paragraph (c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under paragraph (c) of this section.
    (4) A provisional application is not entitled to the right of 
priority under 35 U.S.C. 119 or 365(a) or Sec.  1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121, or 365(c) or Sec.  
1.78 of any other application. No claim for priority under 35 U.S.C. 
119(e) or Sec.  1.78(a) may be made in a design application based on 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.
* * * * *
    (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, 
search fee, or examination fee, or if an application which has been 
accorded a filing date pursuant to paragraph (b) of this section does 
not include at least one claim or the inventor's oath or declaration 
(Sec. Sec.  1.63, 1.64, 1.162, or 1.175), and the applicant has 
provided a correspondence address (Sec.  1.33(a)), the applicant will 
be notified and given a period of time within which to file a claim or 
claims, pay the basic filing fee, search fee, and examination fee, 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, search fee, examination fee, at least one claim, or the 
inventor's oath or declaration, and the applicant has not provided a

[[Page 62399]]

correspondence address (Sec.  1.33(a)), the applicant has three months 
from the filing date of the application within which to file a claim or 
claims, pay the basic filing fee, search fee, and examination fee, and 
pay the surcharge required by Sec.  1.16(f), to avoid abandonment.
    (3) The inventor's oath or declaration in an application under 
Sec.  1.53(b) must also be filed within the period specified in 
paragraph (f)(1) or (f)(2) of this section, except that the filing of 
the inventor's oath or declaration may be postponed until the 
application is otherwise in condition for allowance under the 
conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this 
section.
    (i) The application must be an original (non-reissue) application 
that contains an application data sheet in accordance with Sec.  1.76 
identifying:
    (A) Each inventor by his or her legal name;
    (B) A mailing address where the inventor customarily receives mail, 
and residence, if an inventor lives at a location which is different 
from where the inventor customarily receives mail, for each inventor.
    (ii) The applicant must file each required oath or declaration in 
compliance with Sec.  1.63, or substitute statement in compliance with 
Sec.  1.64, no later than the date on which the issue fee for the 
patent is paid. If the applicant is notified in a notice of 
allowability that an oath or declaration in compliance with Sec.  1.63, 
or substitute statement in compliance with Sec.  1.64, executed by or 
with respect to each named inventor has not been filed, the applicant 
must file each required oath or declaration in compliance with Sec.  
1.63, or substitute statement in compliance with Sec.  1.64, no later 
than the date on which the issue fee is paid to avoid abandonment. This 
time period is not extendable under Sec.  1.136 (see Sec.  1.136(c)). 
The Office may dispense with the notice provided for in paragraph 
(f)(1) of this section if each required oath or declaration in 
compliance with Sec.  1.63, or substitute statement in compliance with 
Sec.  1.64, has been filed before the application is in condition for 
allowance.
    (4) If the excess claims fees required by 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.  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.
    (5) 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 inventor's 
oath or declaration from the prior application for a continuing 
application under paragraph (b) of this section.
    (6) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
* * * * *

0
18. Section 1.54 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.54  Parts of application to be filed together; filing receipt.

* * * * *
    (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). A letter limited to a request for a filing 
receipt may be signed by a juristic applicant or patent owner.

0
19. Section 1.55 is amended by revising paragraphs (b) through (f) and 
(h) to read as follows:


Sec.  1.55  Claim for foreign priority.

* * * * *
    (b) Time for filing subsequent application. The nonprovisional 
application must be filed not later than twelve months (six months in 
the case of a design application) after the date on which the foreign 
application was filed, or be entitled to claim the benefit under 35 
U.S.C. 120, 121, or 365(c) of an application that was filed not later 
than twelve months (six months in the case of a design application) 
after the date on which the foreign application was filed, except as 
provided in paragraph (c) of this section. The twelve-month period is 
subject to 35 U.S.C. 21(b) (and Sec.  1.7(a)) and PCT Rule 80.5, and 
the six-month period is subject to 35 U.S.C. 21(b) (and Sec.  1.7(a)).
    (c) Delayed filing of subsequent application. If the subsequent 
application has a filing date which is after the expiration of the 
period set forth in paragraph (b) of this section, but within two 
months from the expiration of the period set forth in paragraph (b) of 
this section, the right of priority in the subsequent application may 
be restored under PCT Rule 26bis.3 for an international application, or 
upon petition pursuant to this paragraph, if the delay in filing the 
subsequent application within the period set forth in paragraph (b) of 
this section was unintentional. A petition to restore the right of 
priority under this paragraph filed in the subsequent application must 
include:
    (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 
or 365(a) or (b) in an application data sheet (Sec.  1.76(b)(6)), 
identifying the foreign application to which priority is claimed, by 
specifying the application number, country (or intellectual property 
authority), day, month, and year of its filing, unless previously 
submitted;
    (2) The petition fee as set forth in Sec.  1.17(m); and
    (3) A statement that the delay in filing the subsequent application 
within the period set forth in paragraph (b) of this section was 
unintentional. The Director may require additional information where 
there is a question whether the delay was unintentional.
    (d) Time for filing priority claim--(1) Application under 35 U.S.C. 
111(a). The claim for priority must be filed 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 in an original 
application filed under 35 U.S.C. 111(a), except as provided in 
paragraph (e) of this section. The claim for priority must be presented 
in an application data sheet (Sec.  1.76(b)(6)), and must identify the 
foreign application to which priority is claimed, by specifying the 
application number, country (or intellectual property authority), day, 
month, and year of its filing. The time period in this paragraph does 
not apply in a design application.
    (2) Application under 35 U.S.C. 371. The claim for priority must be 
made within the time limit set forth in the PCT and the Regulations 
under the PCT in an international application entering the national 
stage under 35 U.S.C. 371, except as provided in paragraph (e) of this 
section.
    (e) Delayed priority claim. Unless such claim is accepted in 
accordance with the provisions of this paragraph, any claim for 
priority under 35 U.S.C. 119(a) through (d) or (f), or 365(a) or (b) 
not presented in the manner required by paragraph (d) of this section 
within the time period provided by paragraph (d) of this section is 
considered to have been waived. If a claim for priority is presented 
after the time period provided by paragraph (d) of this section, the

[[Page 62400]]

claim may be accepted if the priority claim was unintentionally 
delayed. A petition to accept a delayed claim for priority under 35 
U.S.C. 119(a) through (d) or (f), or 365(a) or (b) must be accompanied 
by:
    (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f), 
or 365(a) or (b) in an application data sheet (Sec.  1.76(b)(6)), 
identifying the foreign application to which priority is claimed, by 
specifying the application number, country (or intellectual property 
authority), day, month, and year of its filing, unless previously 
submitted;
    (2) A certified copy of the foreign application if required by 
paragraph (f) of this section, unless previously submitted;
    (3) The petition fee as set forth in Sec.  1.17(m); and
    (4) A statement that the entire delay between the date the priority 
claim was due under paragraph (d) of this section and the date the 
priority claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (f) Time for filing certified copy of foreign application--(1) 
Application under 35 U.S.C. 111(a). A certified copy of the foreign 
application must be filed 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 in an original application filed 
under 35 U.S.C. 111(a), except as provided in paragraphs (h) and (i) of 
this section. The time period in this paragraph does not apply in a 
design application.
    (2) Application under 35 U.S.C. 371. A certified copy of the 
foreign application must be filed within the time limit set forth in 
the PCT and the Regulations under the PCT in an international 
application entering the national stage under 35 U.S.C. 371. If a 
certified copy of the foreign application is not filed during the 
international stage, a certified copy of the foreign application must 
be filed within four months from the date of entry into the national 
stage as set forth in Sec.  1.491 or sixteen months from the filing 
date of the prior-filed foreign application, except as provided in 
paragraphs (h) and (i) of this section.
    (3) If a certified copy of the foreign application is not filed 
within the time period specified paragraph (f)(1) of this section in an 
application under 35 U.S.C. 111(a) or within the period specified in 
paragraph (f)(2) of this section in an international application 
entering the national stage under 35 U.S.C. 371, and the exceptions in 
paragraphs (h) and (i) of this section are not applicable, the 
certified copy of the foreign application must be accompanied by a 
petition including a showing of good and sufficient cause for the delay 
and the petition fee set forth in Sec.  1.17(g).
* * * * *
    (h) Foreign intellectual property office participating in a 
priority document exchange agreement. The requirement in paragraphs (f) 
and (g) of this section for a certified copy of the foreign application 
to be filed within the time limit set forth therein will be considered 
satisfied if:
    (1) The foreign application was filed in a foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating 
foreign intellectual property office), or a copy of the foreign 
application was filed in an application subsequently filed in a 
participating foreign intellectual property office that permits the 
Office to obtain such a copy;
    (2) The claim for priority is presented in an application data 
sheet (Sec.  1.76(b)(6)), identifying the foreign application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing, 
and the applicant provides the information necessary for the 
participating foreign intellectual property office to provide the 
Office with access to the foreign application;
    (3) The copy of the foreign application is received by the Office 
from the participating foreign intellectual property office, or a 
certified copy of the foreign application is filed, within the period 
specified in paragraph (g)(1) of this section; and
    (4) The applicant files a request in a separate document that the 
Office obtain a copy of the foreign application from a participating 
intellectual property office that permits the Office to obtain such a 
copy if the foreign application was not filed in a participating 
foreign intellectual property office but a copy of the foreign 
application was filed in an application subsequently filed in a 
participating foreign intellectual property office that permits the 
Office to obtain such a copy. The request must identify the 
participating intellectual property office and the subsequent 
application by the application number, day, month, and year of its 
filing in which a copy of the foreign application was filed. The 
request must be filed within the later of sixteen months from the 
filing date of the prior foreign application or four months from the 
actual filing date of an application under 35 U.S.C. 111(a), within 
four months from the later of the date of commencement (Sec.  1.491(a)) 
or the date of the initial submission under 35 U.S.C. 371 in an 
application entering the national stage under 35 U.S.C. 371, or with a 
petition under paragraph (e) of this section.
* * * * *
0
20. Section 1.57 is revised to read as follows:


Sec.  1.57  Incorporation by reference.

    (a) Subject to the conditions and requirements of this paragraph, a 
reference made in the English language in an application data sheet in 
accordance with Sec.  1.76 upon the filing of an application under 35 
U.S.C. 111(a) to a previously filed application, indicating that the 
specification and any drawings of the application under 35 U.S.C. 
111(a) are replaced by the reference to the previously filed 
application, and specifying the previously filed application by 
application number, filing date, and the intellectual property 
authority or country in which the previously filed application was 
filed, shall constitute the specification and any drawings of the 
application under 35 U.S.C. 111(a) for purposes of a filing date under 
Sec.  1.53(b).
    (1) If the applicant has provided a correspondence address (Sec.  
1.33(a)), the applicant will be notified and given a period of time 
within which to file a copy of the specification and drawings from the 
previously filed application, an English language translation of the 
previously filed application, and the fee required by Sec.  1.17(i) if 
it is in a language other than English, and pay the surcharge required 
by Sec.  1.16(f), to avoid abandonment. Such a notice may be combined 
with a notice under Sec.  1.53(f).
    (2) If the applicant has not provided a correspondence address 
(Sec.  1.33(a)), the applicant has three months from the filing date of 
the application to file a copy of the specification and drawings from 
the previously filed application, an English language translation of 
the previously filed application, and the fee required by Sec.  1.17(i) 
if it is in a language other than English, and pay the surcharge 
required by Sec.  1.16(f), to avoid abandonment.
    (3) An application abandoned under paragraph (a)(1) or (a)(2) of 
this section shall be treated as having never been filed, unless:
    (i) The application is revived under Sec.  1.137; and
    (ii) A copy of the specification and any drawings of the previously 
filed application are filed in the Office.

[[Page 62401]]

    (4) A certified copy of the previously filed application must be 
filed in the Office, unless the previously filed application is an 
application filed under 35 U.S.C. 111 or 363, or the previously filed 
application is a foreign priority application and the conditions set 
forth in Sec.  1.55(h) are satisfied with respect to such foreign 
priority application. The certified copy of the previously filed 
application, if required by this paragraph, must be filed within the 
later of four months from the filing date of the application or sixteen 
months from the filing date of the previously filed application, or be 
accompanied by a petition including a showing of good and sufficient 
cause for the delay and the petition fee set forth in Sec.  1.17(g).
    (b) 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 
paragraph (b)(1) of this section 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 Sec.  1.53(e) accompanied by the fee set forth in Sec.  
1.17(f).
    (c) Except as provided in paragraph (a) or (b) 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.
    (d) ``Essential material'' may be incorporated by reference, but 
only by way of an incorporation by reference to a U.S. patent or U.S. 
patent application publication, which patent or patent application 
publication does not itself incorporate such essential material by 
reference. ``Essential material'' is material that is necessary to:
    (1) Provide a written description of the claimed invention, and of 
the manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make 
and use the same, and set forth the best mode contemplated by the 
inventor of carrying out the invention as required by 35 U.S.C. 112(a);
    (2) Describe the claimed invention in terms that particularly point 
out and distinctly claim the invention as required by 35 U.S.C. 112(b); 
or
    (3) Describe the structure, material, or acts that correspond to a 
claimed means or step for performing a specified function as required 
by 35 U.S.C. 112(f).
    (e) 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.
    (f) 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.
    (g) 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.
    (h) An incorporation of material by reference that does not comply 
with paragraphs (c), (d), or (e) 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 (c)(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 (c)(2) of this section is 
only permitted for material that was sufficiently described to uniquely 
identify the document.
    (i) An application transmittal letter limited to the transmittal of 
a copy of the specification and drawings from a previously filed 
application submitted under paragraph (a) or (b) of this section may be 
signed by a juristic applicant or patent owner.

0
21. Section 1.58 is amended by revising paragraph (a) to read as 
follows:


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 should not be included in both the drawings 
and description portion of the specification. Claims may contain tables 
either if necessary to conform to 35

[[Page 62402]]

U.S.C. 112 or if otherwise found to be desirable.
* * * * *

0
22. Section 1.72 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.72  Title and abstract.

* * * * *
    (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 
must be as concise as the disclosure permits, preferably not exceeding 
150 words in length. The purpose of the abstract is to enable the 
Office and the public generally to determine quickly from a cursory 
inspection the nature and gist of the technical disclosure.

0
23. Section 1.76 is amended by revising paragraph (b)(3) and (d)(2) and 
adding new paragraphs (f) and (g) to read as follows:


Sec.  1.76  Application data sheet.

* * * * *
    (b) * * *
    (3) Application information. This information includes the title of 
the invention, the total number of drawing sheets, a suggested drawing 
figure for publication (in a nonprovisional application), any docket 
number assigned to the application, the type of application (e.g., 
utility, plant, design, reissue, provisional), whether the application 
discloses any significant part of the subject matter of an application 
under a secrecy order pursuant to Sec.  5.2 of this chapter (see Sec.  
5.2(c)), and, for plant applications, the Latin name of the genus and 
species of the plant claimed, as well as the variety denomination. When 
information concerning the previously filed application is required 
under Sec.  1.57(a), application information also includes the 
reference to the previously filed application, indicating that the 
specification and any drawings of the application are replaced by the 
reference to the previously filed application, and specifying the 
previously filed application by application number, filing date, and 
the intellectual property authority or country in which the previously 
filed application was filed.
* * * * *
    (d) * * *
    (2) The information in the application data sheet will govern when 
inconsistent with the information supplied at the same time by a 
designation of correspondence address or the inventor's oath or 
declaration. The information in the application data sheet will govern 
when inconsistent with the information supplied at any time in a Patent 
Cooperation Treaty Request Form, Patent Law Treaty Model International 
Request Form, Patent Law Treaty Model International Request for 
Recordation of Change in Name or Address Form, or Patent Law Treaty 
Model International Request for Recordation of Change in Applicant or 
Owner Form.
* * * * *
    (f) Patent Law Treaty Model International Forms. The requirement in 
Sec.  1.55 or Sec.  1.78 for the presentation of a priority or benefit 
claim under 35 U.S.C. 119, 120, 121, or 365 in an application data 
sheet will be satisfied by the presentation of such priority or benefit 
claim in the Patent Law Treaty Model International Request Form, and 
the requirement in Sec.  1.57(a) for a reference to the previously 
filed application in an application data sheet will be satisfied by the 
presentation of such reference to the previously filed application in 
the Patent Law Treaty Model International Request Form. The requirement 
in Sec.  1.46 for the presentation of the name of the applicant under 
35 U.S.C. 118 in an application data sheet will be satisfied by the 
presentation of the name of the applicant in the Patent Law Treaty 
Model International Request Form, Patent Law Treaty Model International 
Request for Recordation of Change in Name or Address Form, or Patent 
Law Treaty Model International Request for Recordation of Change in 
Applicant or Owner Form, as applicable.
    (g) Patent Cooperation Treaty Request Form. The requirement in 
Sec.  1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 
120, 121, or 365 in an application data sheet will be satisfied in a 
national stage application under 35 U.S.C. 371 by the presentation of 
such benefit claim in the Patent Cooperation Treaty Request Form 
contained in the international application or the presence of such 
benefit claim on the front page of the publication of the international 
application under PCT Article 21(2). The requirement in Sec.  1.55 or 
Sec.  1.78 for the presentation of a priority or benefit claim under 35 
U.S.C. 119, 120, 121, or 365 in an application data sheet and the 
requirement in Sec.  1.46 for the presentation of the name of the 
applicant under 35 U.S.C. 118 in an application data sheet will be 
satisfied in an application under 35 U.S.C. 111 by the presentation of 
such priority or benefit claim and presentation of the name of the 
applicant in a Patent Cooperation Treaty Request Form. If a Patent 
Cooperation Treaty Request Form is submitted in an application under 35 
U.S.C. 111, the Patent Cooperation Treaty Request Form must be 
accompanied by a clear indication that treatment of the application as 
an application under 35 U.S.C. 111 is desired.

0
24. Section 1.78 is revised to read as follows:


Sec.  1.78  Claiming benefit of earlier filing date and cross-
references to other applications.

    (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application. An applicant in 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 this section.
    (1) Except as provided in paragraph (b) of this section, 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, or be 
entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of an 
application that was 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)) and PCT Rule 
80.5.
    (2) Each prior-filed provisional application must name the inventor 
or a joint inventor named in the later-filed application as the 
inventor or a joint inventor. 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(b)(5)).

[[Page 62403]]

    (4) The reference required by paragraph (a)(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 national stage application under 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), four months from the date of the initial 
submission under 35 U.S.C. 371 to enter the national stage, 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.
    (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, the applicant will be notified and given a 
period of time within which to file, in the prior-filed provisional 
application, the translation and the statement. If the notice is mailed 
in a pending nonprovisional application, a timely reply to such a 
notice must include the filing in the nonprovisional application of 
either a confirmation that the translation and statement were filed in 
the provisional application, or an application data sheet eliminating 
the reference under paragraph (a)(3) of this section to the prior-filed 
provisional application, or the nonprovisional application will be 
abandoned. The translation and statement may be filed in the 
provisional application, even if the provisional application has become 
abandoned.
    (6) If a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a provisional 
application filed prior to March 16, 2013, and also contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect within the later of four months from 
the actual filing date of the nonprovisional application, four months 
from the date of entry into the national stage as set forth in Sec.  
1.491 in an international application, sixteen months from the filing 
date of the prior-filed provisional application, or the date that a 
first claim to a claimed invention that has an effective filing date on 
or after March 16, 2013, is presented in the nonprovisional 
application. An applicant is not required to provide such a statement 
if the applicant reasonably believes on the basis of information 
already known to the individuals designated in Sec.  1.56(c) that the 
nonprovisional application does not, and did not at any time, contain a 
claim to a claimed invention that has an effective filing date on or 
after March 16, 2013.
    (b) Delayed filing of the nonprovisional application or 
international application designating the United States of America. If 
the nonprovisional application or international application designating 
the United States of America has a filing date which is after the 
expiration of the twelve-month period set forth in paragraph (a)(1) of 
this section but within two months from the expiration of the period 
set forth in paragraph (a)(1) of this section, the benefit of the 
provisional application may be restored under PCT Rule 26bis.3 for an 
international application, or upon petition pursuant to this paragraph, 
if the delay in filing the nonprovisional application or international 
application designating the United States of America within the period 
set forth in paragraph (a)(1) of this section was unintentional.
    (1) A petition to restore the benefit of the provisional 
application under this paragraph filed in the nonprovisional 
application or international application designating the United States 
of America must include:
    (i) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (ii) The petition fee as set forth in Sec.  1.17(m); and
    (iii) A statement that the delay in filing the nonprovisional 
application or international application designating the United States 
of America within the twelve-month period set forth in paragraph (a)(1) 
of this section was unintentional. The Director may require additional 
information where there is a question whether the delay was 
unintentional.
    (2) The restoration of the right of priority under PCT Rule 26bis.3 
to a provisional application does not affect the requirement to include 
the reference required by paragraph (a)(3) of this section to the 
provisional application in a national stage application under 35 U.S.C. 
371 within the time period provided by paragraph (a)(4) of this section 
to avoid the benefit claim being considered waived.
    (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 (a)(3) of this section is presented in an 
application after the time period provided by paragraph (a)(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 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 (a)(3) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (2) The petition fee as set forth in Sec.  1.17(m); and
    (3) A statement that the entire delay between the date the benefit 
claim was due under paragraph (a)(4) of this section and the date the 
benefit 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. An applicant 
in a nonprovisional application (including an international application 
entering the national stage under 35 U.S.C. 371) or an international 
application designating the United States of America 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, 121, 
or 365(c) and this section.
    (1) Each prior-filed application must name the inventor or a joint 
inventor named in the later-filed application as the inventor or a 
joint inventor. 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.

[[Page 62404]]

    (2) 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. 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(b)(5)). The 
reference also must identify the relationship of the applications, 
namely, whether the later-filed application is a continuation, 
divisional, or continuation-in-part of the prior-filed nonprovisional 
application or international application.
    (3) The reference required by 35 U.S.C. 120 and paragraph (d)(2) 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 entering the national stage from an international 
application under 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, four months from the date of the initial 
submission under 35 U.S.C. 371 to enter the national stage, 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)(2) 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 in a design application.
    (4) 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.
    (5) Cross-references to other related applications may be made when 
appropriate (see Sec.  1.14), but cross-references to applications for 
which a benefit is not claimed under title 35, United States Code, must 
not be included in an application data sheet (Sec.  1.76(b)(5)).
    (6) If a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a nonprovisional 
application or an international application designating the United 
States of America filed prior to March 16, 2013, and also contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect within the later of four months from 
the actual filing date of the later-filed application, four months from 
the date of entry into the national stage as set forth in Sec.  1.491 
in an international application, sixteen months from the filing date of 
the prior-filed application, or the date that a first claim to a 
claimed invention that has an effective filing date on or after March 
16, 2013, is presented in the later-filed application. An applicant is 
not required to provide such a statement if either:
    (i) The application claims the benefit of a nonprovisional 
application in which a statement under Sec.  1.55(j), paragraph (a)(6) 
of this section, or this paragraph that the application contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013 has been filed; or
    (ii) The applicant reasonably believes on the basis of information 
already known to the individuals designated in Sec.  1.56(c) that the 
later filed application does not, and did not at any time, contain a 
claim to a claimed invention that has an effective filing date on or 
after March 16, 2013.
    (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)(2) of this section is presented after the time period provided by 
paragraph (d)(3) 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)(2) of 
this section to the prior-filed application, unless previously 
submitted;
    (2) The petition fee as set forth in Sec.  1.17(m); and
    (3) A statement that the entire delay between the date the benefit 
claim was due under paragraph (d)(3) of this section and the date the 
benefit claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (f) Applications containing patentably indistinct claims. Where two 
or more applications filed by the same applicant contain patentably 
indistinct claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient 
reason for their retention during pendency in more than one 
application.
    (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 person 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 on the 
effective filing date (as defined in Sec.  1.109), or on the date of 
the invention, as applicable, of the later claimed invention, the 
Office may require the applicant to state whether the claimed 
inventions were commonly owned or subject to an obligation of 
assignment to the same person on such date. Even if the claimed 
inventions were commonly owned, or subject to an obligation of 
assignment to the same person on the effective filing date (as defined 
in Sec.  1.109), or on the date of the invention, as applicable, of the 
later claimed invention, the patentably indistinct claims may be 
rejected under the doctrine of double patenting in view of such 
commonly owned or assigned applications or patents under reexamination.
    (h) Time periods not extendable. The time periods set forth in this 
section are not extendable.

0
25. Section 1.81 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.81  Drawings required in patent application.

    (a) The applicant for a patent is required to furnish a drawing of 
the

[[Page 62405]]

invention where necessary for the understanding of the subject matter 
sought to be patented. Since corrections are the responsibility of the 
applicant, the original drawing(s) should be retained by the applicant 
for any necessary future correction.
* * * * *

0
26. Section 1.83 is amended by revising paragraph (a) to read as 
follows:


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 that are included in the 
specification and sequences that are included in sequence listings 
should not be duplicated in the drawings.
* * * * *

0
27. Section 1.85 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.85  Corrections to drawings.

* * * * *
    (c) If a corrected drawing is required or if a drawing does not 
comply with Sec.  1.84 at or after the time an application is allowed, 
the Office may notify the applicant in a notice of allowability and set 
a three-month period of time from the mailing 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 (see Sec.  1.136(c)).

0
28. Section 1.131 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.131  Affidavit or declaration of prior invention or 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, the applicant or patent owner 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 the date that it is effective as a 
reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. 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 naming 
another inventor which claims interfering subject matter as defined in 
Sec.  41.203(a) of this chapter, in which case an applicant may suggest 
an interference pursuant to Sec.  41.202(a) of this chapter; or
    (2) The rejection is based upon a statutory bar.
* * * * *

0
29. Section 1.136 is amended by revising paragraphs (a)(1)(iv), (a)(2), 
and (b), and by adding paragraph (d), to read as follows:


Sec.  1.136  Extensions of time.

    (a)(1) * * *
    (iv) The reply is to a decision by the Patent Trial and Appeal 
Board pursuant to Sec.  41.50 or Sec.  41.52 of this chapter or to 
Sec.  90.3 of this chapter; or
* * * * *
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior 
to the expiration of the period of extension to avoid abandonment of 
the application (Sec.  1.135), but in no situation may an applicant 
reply later than the maximum time period set by statute, or be granted 
an extension of time under paragraph (b) of this section when the 
provisions of paragraph (a) of this section are available.
* * * * *
    (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 
effect 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. Any request under this paragraph must be 
accompanied by the petition fee set forth in Sec.  1.17(g).
* * * * *
    (d) See 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; Sec. Sec.  41.4(a) and 41.121(a)(3) 
of this chapter for extensions of time in contested cases before the 
Patent Trial and Appeal Board; Sec.  42.5(c) of this chapter for 
extensions of time in trials before the Patent Trial and Appeal Board; 
and Sec.  90.3 of this chapter for extensions of time to appeal to the 
U.S. Court of Appeals for the Federal Circuit or to commence a civil 
action.

0
30. Section 1.137 is revised to read as follows:


Sec.  1.137  Revival of abandoned application, or terminated or limited 
reexamination prosecution.

    (a) Revival on the basis of unintentional delay. If the delay in 
reply by applicant or patent owner was unintentional, a petition may be 
filed pursuant to this section to revive an abandoned application or a 
reexamination prosecution terminated under Sec.  1.550(d) or Sec.  
1.957(b) or limited under Sec.  1.957(c).
    (b) Petition requirements. A grantable petition pursuant to this 
section 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) Any terminal disclaimer (and fee as set forth in Sec.  1.20(d)) 
required pursuant to paragraph (d) of this section; and
    (4) 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 section was unintentional. The Director may 
require additional information where there is a question whether the 
delay was unintentional.
    (c) Reply. In an application abandoned under Sec.  1.57(a), the 
reply must include a copy of the specification and any drawings of the 
previously filed application. In an application or patent abandoned 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. In a 
nonprovisional application abandoned for failure to prosecute, the 
required reply may be

[[Page 62406]]

met by the filing of a continuing application. In a nonprovisional 
utility or plant application filed on or after June 8, 1995, abandoned 
after the close of prosecution as defined in Sec.  1.114(b), the 
required reply may also be met by the filing of a request for continued 
examination in compliance with Sec.  1.114.
    (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 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, or a 
terminated or limited reexamination prosecution, 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;
    (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 
of an application in a foreign country or under a multinational treaty 
that requires publication of applications eighteen months after filing, 
may be revived pursuant to 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.

0
31. Section 1.138 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.138  Express abandonment.

* * * * *
    (b) A written declaration of abandonment must be signed by a party 
authorized under Sec.  1.33(b)(1) or (b)(3) 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 when filing 
a continuing application, may expressly abandon the prior application 
as of the filing date granted to the continuing application.
* * * * *

0
32. Section 1.197 is revised to read as follows:


Sec.  1.197  Termination of proceedings.

    (a) 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:
    (1) Where claims stand allowed in an application; or
    (2) Where the nature of the decision requires further action by the 
examiner.
    (b) 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.  90.3 of this chapter) 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.

0
33. Section 1.290 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.290  Submissions by third parties in applications.

* * * * *
    (f) Any third-party submission under this section must be 
accompanied by the fee set forth in Sec.  1.17(o) for every ten items 
or fraction thereof identified in the document list.
* * * * *

0
34. Section 1.311 is amended by revising paragraph (a) to read as 
follows:


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 and 
any required publication fee (Sec.  1.211(e)), which issue fee and any 
required publication fee 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.
* * * * *


Sec.  1.317  [Removed and Reserved]

0
35. Section 1.317 is removed and reserved.

0
36. Section 1.366 is amended by revising paragraphs (a) and (b) to read 
as follows:


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. A maintenance fee

[[Page 62407]]

transmittal letter may be signed by a juristic applicant or patent 
owner. A patentee need not file authorization to enable any person or 
organization to pay maintenance fees and any necessary surcharges on 
behalf of the patentee.
    (b) A maintenance fee and any necessary surcharge submitted for a 
patent must be submitted in the amount due on the date the maintenance 
fee and any necessary surcharge are paid. A maintenance fee or 
surcharge may be paid in the manner set forth in Sec.  1.23 or 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 
in 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.
* * * * *
0
37. Section 1.378 is revised to read as follows:


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 unintentional. 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 unintentionally delayed payment of a 
maintenance fee must include:
    (1) The required maintenance fee set forth in Sec.  1.20(e) through 
(g);
    (2) The petition fee as set forth in Sec.  1.17(m); and
    (3) A statement that the delay in payment of the maintenance fee 
was unintentional. The Director may require additional information 
where there is a question whether the delay was unintentional.
    (c) Any petition under this section must be signed in compliance 
with Sec.  1.33(b).
    (d) Reconsideration of a decision refusing to accept a delayed 
maintenance fee may be obtained by filing a petition for 
reconsideration within two months of the decision, or such other time 
as set in the decision refusing to accept the delayed payment of the 
maintenance fee.
    (e) If the delayed payment of the maintenance fee is not accepted, 
the maintenance fee 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.

0
38. Section 1.452 is amended by removing paragraph (d) and revising 
paragraph (b)(2) to read as follows:


Sec.  1.452  Restoration of right of priority.

* * * * *
    (b) * * *
    (2) The petition fee as set forth in Sec.  1.17(m); and
* * * * *

0
39. Section 1.495 is amended by revising paragraph (c)(3)(ii) to read 
as follows:


Sec.  1.495  Entering the national stage in the United States of 
America.

* * * * *
    (c) * * *
    (3) * * *
    (ii) The applicant must file each required oath or declaration in 
compliance with Sec.  1.63, or substitute statement in compliance with 
Sec.  1.64, no later than the date on which the issue fee for the 
patent is paid. If the applicant is notified in a notice of 
allowability that an oath or declaration in compliance with Sec.  1.63, 
or substitute statement in compliance with Sec.  1.64, executed by or 
with respect to each named inventor has not been filed, the applicant 
must file each required oath or declaration in compliance with Sec.  
1.63, or substitute statement in compliance with Sec.  1.64, no later 
than the date on which the issue fee is paid to avoid abandonment. This 
time period is not extendable under Sec.  1.136 (see Sec.  1.136(c)). 
The Office may dispense with the notice provided for in paragraph 
(c)(1) of this section if each required oath or declaration in 
compliance with Sec.  1.63, or substitute statement in compliance with 
Sec.  1.64, has been filed before the application is in condition for 
allowance.
* * * * *

0
40. Section 1.550 is amended by revising paragraphs (c) and (e) to read 
as follows:


Sec.  1.550  Conduct of ex parte reexamination proceedings.

* * * * *
    (c) The time for taking any action by a patent owner in an ex parte 
reexamination proceeding may be extended as provided in this paragraph.
    (1) Any request for such an extension must specify the requested 
period of extension and be accompanied by the petition fee set forth in 
Sec.  1.17(g).
    (2) Any request for an extension in a third party requested ex 
parte reexamination must be filed on or before the day on which action 
by the patent owner is due, and the mere filing of such a request for 
extension will not effect the extension. A request for an extension in 
a third party requested ex parte reexamination will not be granted in 
the absence of sufficient cause or for more than a reasonable time.
    (3) Any request for an extension in a patent owner requested or 
Director ordered ex parte reexamination for up to two months from the 
time period set in the Office action must be filed no later than two 
months from the expiration of the time period set in the Office action. 
A request for an extension in a patent owner requested or Director 
ordered ex parte reexamination for more than two months from the time 
period set in the Office action must be filed on or before the day on 
which action by the patent owner is due, and the mere filing of a 
request for an extension for more than two months from the time period 
set in the Office action will not effect the extension. The time for 
taking action in a patent owner requested or Director ordered ex parte 
reexamination will not be extended for more than two months from the 
time period set in the Office action in the absence of sufficient cause 
or for more than a reasonable time.
    (4) The reply or other action must in any event be filed prior to 
the expiration of the period of extension, but in no situation may a 
reply or other action be filed later than the maximum time period set 
by statute.
    (5) See Sec.  90.3(c) of this title for extensions of time for 
filing a notice of appeal to the U.S. Court of Appeals for the Federal 
Circuit or for commencing a civil action.
* * * * *
    (e) If a response by the patent owner is not timely filed in the 
Office, a petition may be filed pursuant to Sec.  1.137

[[Page 62408]]

to revive a reexamination prosecution terminated under paragraph (d) of 
this section if the delay in response was unintentional.
* * * * *

0
41. Section 1.704 is amended by revising paragraphs (c)(11) and 
(c)(12), and adding new paragraphs (c)(13) and (f) to read as follows:


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

* * * * *
    (c) * * *
    (11) Failure to file an appeal brief in compliance with Sec.  41.37 
of this chapter within three months from the date on which a notice of 
appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 
134 and Sec.  41.31 of this chapter, 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 three months from the 
date on which a notice of appeal to the Patent Trial and Appeal Board 
was filed under 35 U.S.C. 134 and Sec.  41.31 of this chapter, and 
ending on the date an appeal brief in compliance with Sec.  41.37 of 
this chapter or a request for continued examination in compliance with 
Sec.  1.114 was filed;
    (12) Failure to provide an application in condition for examination 
as defined in paragraph (f) of this section within eight months from 
either the date on which the application was filed under 35 U.S.C. 
111(a) or the date of commencement of the national stage under 35 
U.S.C. 371(b) or (f) in an international application, 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 
eight months from either the date on which the application was filed 
under 35 U.S.C. 111(a) or the date of commencement of the national 
stage under 35 U.S.C. 371(b) or (f) in an international application and 
ending on the date the application is in condition for examination as 
defined in paragraph (f) of this section; and
    (13) 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.
* * * * *
    (f) An application filed under 35 U.S.C. 111(a) is in condition for 
examination when the application includes a specification, including at 
least one claim and an abstract (Sec.  1.72(b)), and has papers in 
compliance with Sec.  1.52, drawings (if any) in compliance with Sec.  
1.84, any English translation required by Sec.  1.52(d) or Sec.  
1.57(a), a sequence listing in compliance with Sec.  1.821 through 
Sec.  1.825 (if applicable), the inventor's oath or declaration or an 
application data sheet containing the information specified in Sec.  
1.63(b), the basic filing fee (Sec.  1.16(a) or Sec.  1.16(c)), the 
search fee (Sec.  1.16(k) or Sec.  1.16(m)), the examination fee (Sec.  
1.16(o) or Sec.  1.16(q)), any certified copy of the previously filed 
application required by Sec.  1.57(a), and any application size fee 
required by the Office under Sec.  1.16(s). An international 
application is in condition for examination when the application has 
entered the national stage as defined in Sec.  1.491(b), and includes a 
specification, including at least one claim and an abstract (Sec.  
1.72(b)), and has papers in compliance with Sec.  1.52, drawings (if 
any) in compliance with Sec.  1.84, a sequence listing in compliance 
with Sec.  1.821 through Sec.  1.825 (if applicable), the inventor's 
oath or declaration or an application data sheet containing the 
information specified in Sec.  1.63(b), the search fee (Sec.  
1.492(b)), the examination fee (Sec.  1.492(c)), and any application 
size fee required by the Office under Sec.  1.492(j). An application 
shall be considered as having papers in compliance with Sec.  1.52, 
drawings (if any) in compliance with Sec.  1.84, and a sequence listing 
in compliance with Sec.  1.821 through Sec.  1.825 (if applicable) for 
purposes of this paragraph on the filing date of the latest reply (if 
any) correcting the papers, drawings, or sequence listing that is prior 
to 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.

0
42. Section 1.809 is amended by revising paragraph (c) to read as 
follows:


Sec.  1.809  Examination procedures.

* * * * *
    (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, the Office 
may notify the applicant in a notice of allowability and set a three-
month period of time from the mailing date of the notice of 
allowability within which the deposit must be made in order to avoid 
abandonment. This time period is not extendable under Sec.  1.136 (see 
Sec.  1.136(c)).
* * * * *

0
43. Section 1.958 is revised to read as follows:


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

    If a response by the patent owner is not timely filed in the 
Office, a petition may be filed pursuant to Sec.  1.137 to revive a 
reexamination prosecution terminated under Sec.  1.957(b) or limited 
under Sec.  1.957(c) if the delay in response was unintentional.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

0
44. The authority citation for part 3 continues to read as follows:

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


0
45. Section 3.11 is amended by revising paragraph (a) to read as 
follows:


Sec.  3.11  Documents which will be recorded.

    (a) Assignments of applications, patents, and registrations, and 
other documents relating to interests in patent applications and 
patents, accompanied by completed cover sheets as specified in Sec.  
3.28 and Sec.  3.31, will be recorded in the Office. Other documents, 
accompanied by completed cover sheets as specified in Sec.  3.28 and 
Sec.  3.31, affecting title to applications, patents, or registrations, 
will be recorded as provided in this part or at the discretion of the 
Director.
* * * * *

0
46. Section 3.31 is amended by revising paragraph (h) to read as 
follows:


Sec.  3.31  Cover sheet content.

* * * * *
    (h) The assignment cover sheet required by Sec.  3.28 for a patent 
application or patent will be satisfied by the Patent Law Treaty Model 
International Request for Recordation of Change in Applicant or Owner 
Form, Patent Law Treaty Model International Request for Recordation of 
a License/Cancellation of the Recordation of a License Form, Patent Law 
Treaty Model Certificate of Transfer Form or Patent Law Treaty Model 
International Request for Recordation of a Security Interest/
Cancellation of the Recordation of a Security Interest Form, as 
applicable, except where the assignment is also an oath or declaration 
under Sec.  1.63 of this chapter. An assignment cover sheet required by 
Sec.  3.28 must contain a conspicuous indication of an intent to 
utilize the assignment as an oath or declaration under Sec.  1.63 of 
this chapter.

[[Page 62409]]

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
47. The authority citation for 37 CFR part 11 continues to read as 
follows:

    Authority:  5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 
41.


0
48. Section 11.18 is amended by revising paragraph (a) to read as 
follows:


Sec.  11.18  Signature and certificate for correspondence filed in the 
Office.

    (a) For all documents filed in the Office in patent, trademark, and 
other non-patent matters, and all documents filed with a hearing 
officer in a disciplinary proceeding, except for correspondence that is 
required to be signed by the applicant or party, each piece of 
correspondence filed by a practitioner in the Office must bear a 
signature, personally signed or inserted by such practitioner, in 
compliance with Sec.  1.4(d) or Sec.  2.193(a) of this chapter.
* * * * *

    Dated: October 7, 2013.
Teresa Stanek Rea,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-24471 Filed 10-18-13; 8:45 am]
BILLING CODE 3510-16-P