[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 1999 Edition]
[From the U.S. Government Printing Office]
37
Patents, Trademarks, and Copyrights
[[Page i]]
Revised as of July 1, 1999
CONTAINING
A CODIFICATION OF DOCUMENTS
OF GENERAL APPLICABILITY
AND FUTURE EFFECT
AS OF JULY 1, 1999
With Ancillaries
Published by
the Office of the Federal Register
National Archives and Records
Administration
as a Special Edition of
the Federal Register
[[Page ii]]
U.S. GOVERNMENT PRINTING OFFICE
WASHINGTON : 1999
For sale by U.S. Government Printing Office
Superintendent of Documents, Mail Stop: SSOP, Washington, DC 20402-9328
[[Page iii]]
Table of Contents
Page
Explanation................................................. v
Title 37:
Chapter I--Patent and Trademark Office, Department
of Commerce 3
Chapter II--Copyright Office, Library of Congress 337
Chapter IV--Assistant Secretary for Technology
Policy, Department of Commerce 525
Chapter V--Under Secretary for Technology,
Department of Commerce 549
Finding Aids:
Material Approved for Incorporation by Reference.......... 557
Table of CFR Titles and Chapters.......................... 559
Alphabetical List of Agencies Appearing in the CFR........ 577
List of CFR Sections Affected............................. 587
[[Page iv]]
----------------------------
Cite this Code: CFR
To cite the regulations in
this volume use title,
part and section number.
Thus, 37 CFR 1.1 refers to
title 37, part 1, section
1.
----------------------------
[[Page v]]
EXPLANATION
The Code of Federal Regulations is a codification of the general and
permanent rules published in the Federal Register by the Executive
departments and agencies of the Federal Government. The Code is divided
into 50 titles which represent broad areas subject to Federal
regulation. Each title is divided into chapters which usually bear the
name of the issuing agency. Each chapter is further subdivided into
parts covering specific regulatory areas.
Each volume of the Code is revised at least once each calendar year
and issued on a quarterly basis approximately as follows:
Title 1 through Title 16.................................as of January 1
Title 17 through Title 27..................................as of April 1
Title 28 through Title 41...................................as of July 1
Title 42 through Title 50................................as of October 1
The appropriate revision date is printed on the cover of each
volume.
LEGAL STATUS
The contents of the Federal Register are required to be judicially
noticed (44 U.S.C. 1507). The Code of Federal Regulations is prima facie
evidence of the text of the original documents (44 U.S.C. 1510).
HOW TO USE THE CODE OF FEDERAL REGULATIONS
The Code of Federal Regulations is kept up to date by the individual
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To determine whether a Code volume has been amended since its
revision date (in this case, July 1, 1999), consult the ``List of CFR
Sections Affected (LSA),'' which is issued monthly, and the ``Cumulative
List of Parts Affected,'' which appears in the Reader Aids section of
the daily Federal Register. These two lists will identify the Federal
Register page number of the latest amendment of any given rule.
EFFECTIVE AND EXPIRATION DATES
Each volume of the Code contains amendments published in the Federal
Register since the last revision of that volume of the Code. Source
citations for the regulations are referred to by volume number and page
number of the Federal Register and date of publication. Publication
dates and effective dates are usually not the same and care must be
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inserted following the text.
OMB CONTROL NUMBERS
The Paperwork Reduction Act of 1980 (Pub. L. 96-511) requires
Federal agencies to display an OMB control number with their information
collection request.
[[Page vi]]
Many agencies have begun publishing numerous OMB control numbers as
amendments to existing regulations in the CFR. These OMB numbers are
placed as close as possible to the applicable recordkeeping or reporting
requirements.
OBSOLETE PROVISIONS
Provisions that become obsolete before the revision date stated on
the cover of each volume are not carried. Code users may find the text
of provisions in effect on a given date in the past by using the
appropriate numerical list of sections affected. For the period before
January 1, 1986, consult either the List of CFR Sections Affected, 1949-
1963, 1964-1972, or 1973-1985, published in seven separate volumes. For
the period beginning January 1, 1986, a ``List of CFR Sections
Affected'' is published at the end of each CFR volume.
INCORPORATION BY REFERENCE
What is incorporation by reference? Incorporation by reference was
established by statute and allows Federal agencies to meet the
requirement to publish regulations in the Federal Register by referring
to materials already published elsewhere. For an incorporation to be
valid, the Director of the Federal Register must approve it. The legal
effect of incorporation by reference is that the material is treated as
if it were published in full in the Federal Register (5 U.S.C. 552(a)).
This material, like any other properly issued regulation, has the force
of law.
What is a proper incorporation by reference? The Director of the
Federal Register will approve an incorporation by reference only when
the requirements of 1 CFR part 51 are met. Some of the elements on which
approval is based are:
(a) The incorporation will substantially reduce the volume of
material published in the Federal Register.
(b) The matter incorporated is in fact available to the extent
necessary to afford fairness and uniformity in the administrative
process.
(c) The incorporating document is drafted and submitted for
publication in accordance with 1 CFR part 51.
Properly approved incorporations by reference in this volume are
listed in the Finding Aids at the end of this volume.
What if the material incorporated by reference cannot be found? If
you have any problem locating or obtaining a copy of material listed in
the Finding Aids of this volume as an approved incorporation by
reference, please contact the agency that issued the regulation
containing that incorporation. If, after contacting the agency, you find
the material is not available, please notify the Director of the Federal
Register, National Archives and Records Administration, Washington DC
20408, or call (202) 523-4534.
CFR INDEXES AND TABULAR GUIDES
A subject index to the Code of Federal Regulations is contained in a
separate volume, revised annually as of January 1, entitled CFR Index
and Finding Aids. This volume contains the Parallel Table of Statutory
Authorities and Agency Rules (Table I). A list of CFR titles, chapters,
and parts and an alphabetical list of agencies publishing in the CFR are
also included in this volume.
An index to the text of ``Title 3--The President'' is carried within
that volume.
The Federal Register Index is issued monthly in cumulative form.
This index is based on a consolidation of the ``Contents'' entries in
the daily Federal Register.
A List of CFR Sections Affected (LSA) is published monthly, keyed to
the revision dates of the 50 CFR titles.
[[Page vii]]
REPUBLICATION OF MATERIAL
There are no restrictions on the republication of material appearing
in the Code of Federal Regulations.
INQUIRIES
For a legal interpretation or explanation of any regulation in this
volume, contact the issuing agency. The issuing agency's name appears at
the top of odd-numbered pages.
For inquiries concerning CFR reference assistance, call 202-523-5227
or write to the Director, Office of the Federal Register, National
Archives and Records Administration, Washington, DC 20408.
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The Office of the Federal Register also offers a free service on the
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site also contains links to GPO Access.
Raymond A. Mosley,
Director,
Office of the Federal Register.
July 1, 1999.
[[Page ix]]
THIS TITLE
Title 37--Patents, Trademarks and Copyrights is composed of one
volume. The contents of this volume represent all current regulations
codified under this title of the CFR as of July 1, 1999.
In this revision, the parts in chapter I, subchapter A are regrouped
according to subject matter. All parts pertaining to patents--parts 1
and 5--appear sequentially. All parts pertaining to trademarks--parts 2
and 6--follow, also in sequence. Part 3 which pertains to both patents
and trademarks follows part 1. Appropriate notes are inserted in the
text to guide the user.
For this volume, Cheryl E. Sirofchuck was Chief Editor. The Code of
Federal Regulations publication program is under the direction of
Frances D. McDonald, assisted by Alomha S. Morris.
[[Page x]]
[[Page 1]]
TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
--------------------------------------------------------------------
Part
chapter i--Patent and Trademark Office, Department of
Commerce.................................................. 1
chapter ii--Copyright Office, Library of Congress........... 201
chapter iv--Assistant Secretary for Technology Policy,
Department of Commerce.................................... 401
chapter v--Under Secretary for Technology, Department of
Commerce.................................................. 501
[[Page 3]]
CHAPTER I--PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE
--------------------------------------------------------------------
Editorial Note: Chapter I--Patent and Trademark Office, Department of
Commerce, Subchapter A--General, contains patent and trademark
regulations. Subchapter A has been restructured to allow parts
pertaining to patent regulations and trademark regulations to be grouped
separately.
SUBCHAPTER A--GENERAL
PATENTS
Part Page
1 Rules of practice in patent cases........... 5
3 Assignment, recording and rights of assignee 180
4 [Reserved]
5 Secrecy of certain inventions and licenses
to export and file applications in
foreign countries....................... 184
7 [Reserved]
Index I--Rules relating to patents.......... 193
TRADEMARKS
2 Rules of practice in trademark cases........ 217
4 [Reserved]
6 Classification of goods and services under
the Trademark Act....................... 273
Index II--Rules relating to trademarks...... 277
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
10 Representation of others before the Patent
and Trademark Office.................... 296
15-15a [Reserved]
Index III--Rules relating to practice before
the Patent and Trademark Office......... 327
SUBCHAPTER B--GOVERNMENT INVENTIONS JURISDICTION
100-102 [Reserved]
SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150 Requests for Presidential proclamations
pursuant to 17 U.S.C. 902(a)(2)......... 334
[[Page 5]]
SUBCHAPTER A--GENERAL
PATENTS
PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents
Subpart A--General Provisions
General Information and Correspondence
Sec.
1.1 Addresses for correspondence with the Patent and Trademark Office.
1.2 Business to be transacted in writing.
1.3 Business to be conducted with decorum and courtesy.
1.4 Nature of correspondence and signature requirements.
1.5 Identification of application, patent or registration.
1.6 Receipt of correspondence.
1.7 Times for taking action: Expiration on Saturday, Sunday or Federal
holiday.
1.8 Certificate of mailing or transmission.
1.9 Definitions.
1.10 Filing of correspondence by ``Express Mail.''
Records and Files of the Patent and Trademark Office
1.11 Files open to the public.
1.12 Assignment records open to public inspection.
1.13 Copies and certified copies.
1.14 Patent applications preserved in confidence.
1.15 Requests for identifiable records.
Fees and Payment of Money
1.16 National application filing fees.
1.17 Patent application processing fees.
1.18 Patent issue fees.
1.19 Document supply fees.
1.20 Post issuance fees.
1.21 Miscellaneous fees and charges.
1.22 Fees payable in advance.
1.23 Method of payment.
1.24 Coupons.
1.25 Deposit accounts.
1.26 Refunds.
1.27 Statement of status as small entity.
1.28 Effect on fees of failure to establish status, or change status,
as a small entity.
Subpart B--National Processing Provisions
Prosecution of Application and Appointment of Attorney or Agent
1.31 Applicants may be represented by a registered attorney or agent.
1.32 [Reserved]
1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
1.34 Recognition for representation.
1.36 Revocation of power of attorney or authorization; withdrawal of
attorney or agent.
Who May Apply for a Patent
1.41 Applicant for patent.
1.42 When the inventor is dead.
1.43 When the inventor is insane or legally incapacitated.
1.44 Proof of authority.
1.45 Joint inventors.
1.46 Assigned inventions and patents.
1.47 Filing when an inventor refuses to sign or cannot be reached.
1.48 Correction of inventorship in a patent application, other than a
reissue application.
The Application
1.51 General requisites of an application.
1.52 Language, paper, writing, margins.
1.53 Application number, filing date, and completion of application.
1.54 Parts of application to be filed together; filing receipt.
1.55 Claim for foreign priority.
1.56 Duty to disclose information material to patentability.
1.57 [Reserved]
1.58 Chemical and mathematical formulae and tables.
1.59 Expungement of information or copy of papers in application file.
1.60--162 [Reserved]
Oath or Declaration
1.63 Oath or declaration.
1.64 Person making oath or declaration.
1.66 Officers authorized to administer oaths.
1.67 Supplemental oath or declaration.
1.68 Declaration in lieu of oath.
1.69 Foreign language oaths and declarations.
1.70 [Reserved]
Specification
1.71 Detailed description and specification of the invention.
1.72 Title and abstract.
1.73 Summary of the invention.
1.74 Reference to drawings.
1.75 Claim(s).
1.77 Arrangement of application elements.
1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
1.79 Reservation clauses not permitted.
[[Page 6]]
The Drawings
1.81 Drawings required in patent application.
1.83 Content of drawing.
1.84 Standards for drawings.
1.85 Corrections to drawings.
1.88 [Reserved]
Models, Exhibits, Specimens
1.91 Models or exhibits not generally admitted as part of application
or patent.
1.92 [Reserved]
1.93 Specimens.
1.94 Return of models, exhibits or specimens.
1.95 Copies of exhibits.
1.96 Submission of computer program listings.
Information Disclosure Statement
1.97 Filing information disclosure statement.
1.98 Content of information disclosure statement.
1.99 [Reserved]
Examination of Applications
1.101 [Reserved]
1.102 Advancement of examination.
1.103 Suspension of action.
1.104 Nature of examination.
1.105--1.109 [Reserved]
1.110 Inventorship and date of invention of the subject matter of
individual claims.
Action by Applicant and Further Consideration
1.111 Reply by applicant or patent owner.
1.112 Reconsideration before final action.
1.113 Final rejection or action.
Amendments
1.115 [Reserved]
1.116 Amendments after final action or appeal.
1.117--1.119 [Reserved]
1.121 Manner of making amendments.
1.122--1.124 [Reserved]
1.125 Substitute specification.
1.126 Numbering of claims.
1.127 Petition from refusal to admit amendment.
Transitional Provisions
1.129 Transitional procedures for limited examination after final
rejection and restriction practice.
Affidavits Overcoming Rejections
1.130 Affidavit or declaration to disqualify commonly owned patent as
prior art.
1.131 Affidavit or declaration of prior invention to overcome cited
patent or publication.
1.132 Affidavits or declarations traversing grounds of rejection.
Interviews
1.133 Interviews.
Time for Reply by Applicant; Abandonment of Application
1.134 Time period for reply to an Office action.
1.135 Abandonment for failure to reply within time period.
1.136 Extensions of time.
1.137 Revival of abandoned application or lapsed patent.
1.138 Express abandonment.
1.139 [Reserved]
Joinder of Inventions in One Application; Restriction
1.141 Different inventions in one national application.
1.142 Requirement for restriction.
1.143 Reconsideration of requirement.
1.144 Petition from requirement for restriction.
1.145 Subsequent presentation of claims for different invention.
1.146 Election of species.
Design Patents
1.151 Rules applicable.
1.152 Design drawings.
1.153 Title, description and claim, oath or declaration.
1.154 Arrangement of application elements.
1.155 Issue of design patents.
Plant Patents
1.161 Rules applicable.
1.162 Applicant, oath or declaration.
1.163 Specification and arrangement of application elements.
1.164 Claim.
1.165 Plant drawings.
1.166 Specimens.
1.167 Examination.
Reissues
1.171 Application for reissue.
1.172 Applicants, assignees.
1.173 Specification.
1.174 Drawings.
1.175 Reissue oath or declaration.
1.176 Examination of reissue.
1.177 Reissue in divisions.
1.178 Original patent.
1.179 Notice of reissue application.
Petitions and Action by the Commissioner
1.181 Petition to the Commissioner.
1.182 Questions not specifically provided for.
1.183 Suspension of rules.
1.184 [Reserved]
[[Page 7]]
Appeal to the Board of Patent Appeals and Interferences
1.191 Appeal to Board of Patent Appeals and Interferences.
1.192 Appellant's brief.
1.193 Examiner's answer and reply brief.
1.194 Oral hearing.
1.195 Affidavits or declarations after appeal.
1.196 Decision by the Board of Patent Appeals and Interferences.
1.197 Action following decision.
1.198 Reopening after decision.
Miscellaneous Provisions
1.248 Service of papers; manner of service; proof of service in cases
other than interferences.
Protests and Public Use Proceedings
1.291 Protests by the public against pending applications.
1.292 Public use proceedings.
1.293 Statutory invention registration.
1.294 Examination of request for publication of a statutory invention
registration and patent application to which the request is
directed.
1.295 Review of decision finally refusing to publish a statutory
invention registration.
1.296 Withdrawal of request for publication of statutory invention
registration.
1.297 Publication of statutory invention registration.
Review of Patent and Trademark Office Decisions by Court
1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
1.302 Notice of appeal.
1.303 Civil action under 35 U.S.C. 145, 146, 306.
1.304 Time for appeal or civil action.
Allowance and Issue of Patent
1.311 Notice of allowance.
1.312 Amendments after allowance.
1.313 Withdrawal from issue.
1.314 Issuance of patent.
1.315 Delivery of patent.
1.316 Application abandoned for failure to pay issue fee.
1.317 Lapsed patents; delayed payment of balance of issue fee.
1.318 [Reserved]
Disclaimer
1.321 Statutory disclaimers, including terminal disclaimers.
Correction of Errors in Patent
1.322 Certificate of correction of Office mistake.
1.323 Certificate of correction of applicant's mistake.
1.324 Correction of inventorship in patent.
1.325 Other mistakes not corrected.
Arbitration Awards
1.331-1.334 [Reserved]
1.335 Filing of notice of arbitration awards.
Amendment of Rules
1.351 Amendments to rules will be published.
1.352 [Reserved]
Maintenance Fees
1.362 Time for payment of maintenance fees.
1.363 Fee address for maintenance fee purposes.
1.366 Submission of maintenance fees.
1.377 Review of decision refusing to accept and record payment of a
maintenence fee filed prior to expiration of patent.
1.378 Acceptance of delayed payment of maintenance fee in expired
patent to reinstate patent.
Subpart C--International Processing Provisions
General Information
1.401 Definitions of terms under the Patent Cooperation Treaty.
1.412 The United States Receiving Office.
1.413 The United States International Searching Authority.
1.414 The United States Patent and Trademark Ofice as a Designated
Office or Elected Office.
1.415 The International Bureau.
1.416 The United States International Preliminary Examining Authority.
1.419 Display of currently valid control number under the Paperwork
Reduction Act.
Who May File an International Application
1.421 Applicant for international application.
1.422 When the inventor is dead.
1.423 When the inventor is insane or legally incapacitated.
1.424 Joint inventors.
1.425 Filing by other than inventor.
The International Application
1.431 International application requirements.
1.432 Designation of States and payment of designation and confirmation
fees.
1.433 Physical requirements of international application.
1.434 The request.
1.435 The description.
1.436 The claims.
1.437 The drawings.
[[Page 8]]
1.438 The abstract.
Fees
1.445 International application filing, processing and search fees.
1.446 Refund of international application filing and processing fees.
Priority
1.451 The priority claim and priority document in an international
application.
Representation
1.455 Representation in international applications.
Transmittal of Record Copy
1.461 Procedures for transmittal of record copy to the International
Bureau.
Timing
1.465 Timing of application processing based on the priority date.
1.468 Delays in meeting time limits.
Amendments
1.471 Corrections and amendments during international processing.
1.472 Changes in person, name, or address of applicants and inventors.
Unity of Invention
1.475 Unity of invention before the International Searching Authority,
the International Preliminary Examining Authority and during
the national stage.
1.476 Determination of unity of invention before the International
Searching Authority.
1.477 Protest to lack of unity of invention before the International
Searching Authority.
International Preliminary Examination
1.480 Demand for international preliminary examination.
1.481 Payment of international preliminary examination fees.
1.482 International preliminary examination fees.
1.484 Conduct of international preliminary examination.
1.485 Amendments by applicant during international preliminary
examination.
1.488 Determination of unity of invention before the International
Preliminary Examining Authority.
1.489 Protest to lack of unity of invention before the International
Preliminary Examining Authority.
National Stage
1.491 Entry into the national stage.
1.492 National stage fees.
1.494 Entering the national stage in the United States of America as a
Designated Office.
1.495 Entering the national stage in the United States of America as an
Elected Office.
1.496 Examination of international applications in the national stage.
1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
1.499 Unity of invention during the national stage.
Subpart D--Reexamination of Patents
Citation of Prior Art
1.501 Citation of prior art in patent files.
Request for Reexamination
1.510 Request for reexamination.
1.515 Determination of the request for reexamination.
1.520 Reexamination at the initiative of the Commissioner.
Reexamination
1.525 Order to reexamine.
1.530 Statement; amendment by patent owner.
1.535 Reply by requester.
1.540 Consideration of responses.
1.550 Conduct of reexamination proceedings.
1.552 Scope of reexamination in reexamination proceedings.
1.555 Information material to patentability in reexamination
proceedings.
1.560 Interviews in reexamination proceedings.
1.565 Concurrent office proceedings.
Certificate
1.570 Issuance of reexamination certificate after reexamination
proceedings.
Subpart E--Interferences
1.601 Scope of rules, definitions.
1.602 Interest in applications and patents involved in an interference.
1.603 Interference between applications; subject matter of the
interference.
1.604 Request for interference between applications by an applicant.
1.605 Suggestion of claim to applicant by examiner.
1.606 Interference between an application and a patent; subject matter
of the interference.
1.607 Request by applicant for interference with patent.
1.608 Interference between an application and a patent; prima facie
showing by applicant.
1.609 Preparation of interference papers by examiner.
[[Page 9]]
1.610 Assignment of interference to administrative patent judge, time
period for completing interference.
1.611 Declaration of interference.
1.612 Access to applications.
1.613 Lead attorney, same attorney representing different parties in an
interference, withdrawal of attorney or agent.
1.614 Jurisdiction over interference.
1.615 Suspension of ex parte prosecution.
1.616 Sanctions for failure to comply with rules or order or for taking
and maintaining a frivolous position.
1.617 Summary judgment against applicant.
1.618 Return of unauthorized papers.
1.621 Preliminary statement, time for filing, notice of filing.
1.622 Preliminary statement, who made invention, where invention made.
1.623 Preliminary statement; invention made in United States, a NAFTA
country, or a WTO member country.
1.624 Preliminary statement; invention made in a place other than the
United States, a NAFTA country, or a WTO member country.
1.625 Preliminary statement; derivation by an opponent.
1.626 Preliminary statement; earlier application.
1.627 Preliminary statement; sealing before filing, opening of
statement.
1.628 Preliminary statement; correction of error.
1.629 Effect of preliminary statement.
1.630 Reliance on earlier application.
1.631 Access to preliminary statement, service of preliminary
statement.
1.632 Notice of intent to argue abandonment, suppression, or
concealment by opponent.
1.633 Preliminary motions.
1.634 Motion to correct inventorship.
1.635 Miscellaneous motions.
1.636 Motions, time for filing.
1.637 Content of motions.
1.638 Opposition and reply; time for filing opposition and reply.
1.639 Evidence in support of motion, opposition, or reply.
1.640 Motions, hearing and decision, redeclaration of interference,
order to show cause.
1.641 Unpatentability discovered by administrative patent judge.
1.642 Addition of application or patent to interference.
1.643 Prosecution of interference by assignee.
1.644 Petitions in interferences.
1.645 Extension of time, late papers, stay of proceedings.
1.646 Service of papers, proof of service.
1.647 Translation of document in foreign language.
1.651 Setting times for discovery and taking testimony, parties
entitled to take testimony.
1.652 Judgment for failure to take testimony or file record.
1.653 Record and exhibits.
1.654 Final hearing.
1.655 Matters considered in rendering a final decision.
1.656 Briefs for final hearing.
1.657 Burden of proof as to date of invention.
1.658 Final decision.
1.659 Recommendation.
1.660 Notice of reexamination, reissue, protest, or litigation.
1.661 Termination of interference after judgment.
1.662 Request for entry of adverse judgment; reissue filed by patentee.
1.663 Status of claim of defeated applicant after interference.
1.664 Action after interference.
1.665 Second interference.
1.666 Filing of interference settlement agreements.
1.671 Evidence must comply with rules.
1.672 Manner of taking testimony.
1.673 Notice of examination of witness.
1.674 Persons before whom depositions may be taken.
1.675 Examination of witness, reading and signing transcript of
deposition.
1.676 Certification and filing by officer, marking exhibits.
1.677 Form of an affidavit or a transcript of deposition.
1.678 Time for filing transcript of deposition.
1.679 Inspection of transcript.
1.682 Official records and printed publications.
1.683 Testimony in another interference, proceeding, or action.
1.684 [Reserved]
1.685 Errors and irregularities in depositions.
1.687 Additional discovery.
1.688 Use of discovery.
1.690 Arbitration of interferences.
Subpart F--Extension of Patent Term
1.701 Extension of patent term due to prosecution delay.
1.710 Patents subject to extension of the patent term.
1.720 Conditions for extension of patent term.
1.730 Applicant for extension of patent term.
1.740 Application for extension of patent term.
1.741 Filing date of application.
1.750 Determination of eligibility for extension of patent term.
[[Page 10]]
1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
1.765 Duty of disclosure in patent term extension proceedings.
1.770 Express withdrawal of application for extension of patent term.
1.775 Calculation of patent term extension for a human drug, antibiotic
drug or human biological product.
1.776 Calculation of patent term extension for a food additive or color
additive.
1.777 Calculation of patent term extension for a medical device.
1.778 Calculation of patent term extension for an animal drug product.
1.779 Calculation of patent term extension for a veterinary biological
product.
1.780 Certificate of extension of patent term.
1.785 Multiple applications for extension of term of the same patent or
of different patents for the same regulatory review period for
a product.
1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5).
1.791 Termination of interim extension granted prior to regulatory
approval of a product for commercial marketing or use.
Subpart G--Biotechnology Invention Disclosures
Deposit of Biological Material
1.801 Biological material.
1.802 Need or Opportunity to make a deposit.
1.803 Acceptable depository.
1.804 Time of making an original deposit.
1.805 Replacement or supplement of deposit.
1.806 Term of deposit.
1.807 Viability of deposit.
1.808 Furnishing of samples.
1.809 Examination procedures.
Application Disclosures Containing Nucleotide and/or Amino Acid
Sequences
1.821 Nucleotide and/or amino acid sequence disclosures in patent
applications.
1.822 Symbols and format to be used for nucleotide and/or amino acid
sequence data.
1.823 Requirements for nucleotide and/or amino acid sequences as part
of the application papers.
1.824 Form and format for nucleotide and/or amino acid sequence
submissions in computer readable form.
1.825 Amendments to or replacement of sequence listing and computer
readable copy thereof.
Appendix A to Subpart G to Part 1--Sample Sequence Listing
Authority: 35 U.S.C. 6 and 23, unless otherwise noted.
Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.
Editorial Note: In Patent and Trademark Office publications and
usage the part number is omitted from the numbers of Secs. 1.1 to 1.352
and the numbers to the right of the decimal point correspond with the
respective rule numbers.
Subpart A--General Provisions
General Information and Correspondence
Sec. 1.1 Addresses for correspondence with the Patent and Trademark Office.
(a) Except for Sec. 1.1(a)(3) (i) and (ii), all correspondence
intended for the Patent and Trademark Office must be addressed to either
``Commissioner of Patents and Trademarks, Washington, DC 20231'' or to
specific areas within the Office as set out in paragraphs (a) (1), (2)
and (3)(iii) of this section. When appropriate, correspondence should
also be marked for the attention of a particular office or individual.
(1) Patent correspondence. All correspondence concerning patent
matters processed by organizations reporting to the Assistant
Commissioner for Patents should be addressed to ``Assistant Commissioner
for Patents, Washington, DC 20231.''
(2) Trademark correspondence. All correspondence concerning
trademark matters, except for trademark-related documents sent to the
Assignment Division for recordation and requests for certified and
uncertified copies of trademark application and registration documents,
should be addressed to ``Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513.'' This includes
correspondence intended for the Trademark Trial and Appeal Board.
(3) Office of Solicitor correspondence. (i) Correspondence relating
to pending litigation required by court rule or order to be served on
the Solicitor shall be hand-delivered to the Office of the Solicitor or
shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington,
Virginia 22215; or such other address as may be designated in writing in
the litigation. See Secs. 1.302(c) and 2.145(b)(3) for filing a notice
of appeal
[[Page 11]]
to the U.S. Court of Appeals for the Federal Circuit.
(ii) Correspondence relating to disciplinary proceedings pending
before an Administrative Law Judge or the Commissioner shall be mailed
to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
(iii) All other correspondence to the Office of the Solicitor shall
be addressed to: Box 8, Commissioner of Patents and Trademarks,
Washington, DC 20231.
(iv) Correspondence improperly addressed to a Post Office Box
specified in paragraphs (a)(3) (i) and (ii) of this section will not be
filed elsewhere in the Patent and Trademark Office, and may be returned.
(b) Letters and other communications relating to international
applications during the international stage and prior to the assignment
of a national serial number should be additionally marked ``Box PCT.''
(c) Requests for reexamination should be additionally marked ``Box
Reexam.''
(d) Payments of maintenance fees in patents and other communications
relating thereto should be additionally marked ``Box M. Fee.''
(e) Communications relating to interferences and applications or
patents involved in an interference should be additionally marked ``BOX
INTERFERENCE.''
(f) All applications for extension of patent term and any
communications relating thereto intended for the Patent and Trademark
Office should be additionally marked ``Box Patent Ext.'' When
appropriate, the communication should also be marked to the attention of
a particular individual, as where a decision has been rendered.
(g) [Reserved]
(h) In applications under section 1(b) of the Trademark Act, 15
U.S.C. 1051(b), all statements of use filed under section 1(d) of the
Act, and requests for extensions of time therefor, should be
additionally marked ``Box ITU.''
(i) The filing of all provisional applications and any
communications relating thereto should be additionally marked ``Box
Provisional Patent Application.''
Note: Sections 1.1 to 1.26 are applicable to trademark cases as well
as to national and international patent cases except for provisions
specifically directed to patent cases. See Sec. 1.9 for definitions of
``national application'' and ``international application.''
(Pub. L. 94-131, 89 Stat. 685)
[46 FR 29181, May 29, 1981, as amended at 49 FR 34724, Aug. 31, 1984; 49
FR 48451, Dec. 12, 1984; 52 FR 9394, Mar. 24, 1987; 53 FR 16413, May 9,
1988; 54 FR 37588, Sept. 11, 1989; 60 FR 20220, Apr. 25, 1995; 61 FR
56446, Nov. 1, 1996]
Sec. 1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be
transacted in writing. The personal attendance of applicants or their
attorneys or agents at the Patent and Trademark Office is unnecessary.
The action of the Patent and Trademark Office will be based exclusively
on the written record in the Office. No attention will be paid to any
alleged oral promise, stipulation, or understanding in relation to which
there is disagreement or doubt.
Sec. 1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct
their business with the Patent and Trademark Office with decorum and
courtesy. Papers presented in violation of this requirement will be
submitted to the Commissioner and will be returned by the Commissioner's
direct order. Complaints against examiners and other employees must be
made in correspondence separate from other papers.
[61 FR 56446, Nov. 1, 1996]
Sec. 1.4 Nature of correspondence and signature requirements.
(a) Correspondence with the Patent and Trademark Office comprises:
(1) Correspondence relating to services and facilities of the
Office, such as general inquiries, requests for publications supplied by
the Office, orders for printed copies of patents or trademark
registrations, orders for copies of records, transmission of assignments
for recording, and the like, and
(2) Correspondence in and relating to a particular application or
other proceeding in the Office. See particularly
[[Page 12]]
the rules relating to the filing, processing, or other proceedings of
national applications in subpart B, Secs. 1.31 to 1.378; of
international applications in subpart C, Secs. 1.401 to 1.499; of
reexamination of patents in subpart D, Secs. 1.501 to 1.570; of
interferences in subpart E; Secs. 1.601 to 1.690; of extension of patent
term in subpart F, Secs. 1.710 to 1.785; and of trademark applications
Secs. 2.11 to 2.189.
(b) Since each application file should be complete in itself, a
separate copy of every paper to be filed in an application should be
furnished for each application to which the paper pertains, even though
the contents of the papers filed in two or more applications may be
identical.
(c) Since different matters may be considered by different branches
or sections of the Patent and Trademark Office, each distinct subject,
inquiry or order should be contained in a separate letter to avoid
confusion and delay in answering letters dealing with different
subjects.
(d)(1) Each piece of correspondence, except as provided in
paragraphs (e) and (f) of this section, filed in a patent or trademark
application, reexamination proceeding, patent or trademark interference
proceeding, patent file or trademark registration file, trademark
opposition proceeding, trademark cancellation proceeding, or trademark
concurrent use proceeding, which requires a person's signature, must
either:
(i) Be an original, that is, have an original signature personally
signed in permanent ink 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 Patent and
Trademark Office may require submission of the original.
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any paper by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Sec. 10.18(b) of this chapter. Violations of Sec. 10.18(b)(2) of this
chapter by a party, whether a practitioner or non-practitioner, may
result in the imposition of sanctions under Sec. 10.18(c) of this
chapter. Any practitioner violating Sec. 10.18(b) may also be subject to
disciplinary action. See Secs. 10.18(d) and 10.23(c)(15).
(e) Correspondence requiring a person's signature and relating to
registration to practice before the Patent and Trademark Office in
patent cases, enrollment and disciplinary investigations, or
disciplinary proceedings must be submitted with an original signature
personally signed in permanent ink by that person.
(f) When a document that is required by statute to be certified must
be filed, a copy, including a photocopy or facsimile transmission, of
the certification is not acceptable.
(g) An applicant who has not made of record a registered attorney or
agent may be required to state whether assistance was received in the
preparation or prosecution of the patent application, for which any
compensation or consideration was given or charged, and if so, to
disclose the name or names of the person or persons providing such
assistance. Assistance includes the preparation for the applicant of the
specification and amendments or other papers to be filed in the Patent
and Trademark Office, as well as other assistance in such matters, but
does not include merely making drawings by draftsmen or stenographic
services in typing papers.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2707, Jan. 20, 1982; 49
FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 1988; 58 FR 54501, Oct.
22, 1993; 62 FR 53180, Oct. 10, 1997]
Sec. 1.5 Identification of application, patent or registration.
(a) No correspondence relating to an application should be filed
prior to receipt of the application number from the Patent and Trademark
Office. When a letter directed to the Patent and Trademark Office
concerns a previously filed application for a patent, it must identify
on the top page in a conspicuous location, the application number
(consisting of the series code and the serial number; e.g., 07/123,456),
[[Page 13]]
or the serial number and filing date assigned to that application by the
Patent and Trademark Office, or the international application number of
the international application. Any correspondence not containing such
identification will be returned to the sender where a return address is
available. The returned correspondence will be accompanied by a cover
letter which will indicate to the sender that if the returned
correspondence is resubmitted to the Patent and Trademark Office within
two weeks of the mailing date on the cover letter, the original date of
receipt of the correspondence will be considered by the Patent and
Trademark Office as the date of receipt of the correspondence.
Applicants may use either the Certificate of Mailing or Transmission
procedure under Sec. 1.8 or the Express Mail procedure under Sec. 1.10
for resubmissions of returned correspondence if they desire to have the
benefit of the date of deposit with the United States Postal Service. If
the returned correspondence is not resubmitted within the two-week
period, the date of receipt of the resubmission will be considered to be
the date of receipt of the correspondence. The two-week period to
resubmit the returned correspondence will not be extended. In addition
to the application number, all letters directed to the Patent and
Trademark Office concerning applications for patents should also state
the name of the applicant, the title of the invention, the date of
filing the same, and, if known, the group art unit or other unit within
the Patent and Trademark Office responsible for considering the letter
and the name of the examiner or other person to which it has been
assigned.
(b) When the letter concerns a patent other than for purposes of
paying a maintenance fee, it should state the number and date of issue
of the patent, the name of the patentee, and the title of the invention.
For letters concerning payment of a maintenance fee in a patent, see the
provisions of Sec. 1.366(c).
(c) A letter relating to a trademark application should identify it
as such and by the name of the applicant and the serial number and
filing date of the application. A letter relating to a registered
trademark should identify it by the name of the registrant and by the
number and date of the certificate.
(d) A letter relating to a reexamination proceeding should identify
it as such by the number of the patent undergoing reexamination, the
reexamination request control number assigned to such proceeding and, if
known, the group art unit and name of the examiner to which it has been
assigned.
(e) When a paper concerns an interference, it should state the names
of the parties and the number of the interference. The name of the
examiner-in-chief assigned to the interference (Sec. 1.610) and the name
of the party filing the paper should appear conspicuously on the first
page of the paper.
(f) When a paper concerns a provisional application, it should
identify the application as such and include the application number.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49
FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28,
1988; 58 FR 54501, Oct. 22, 1993;61 FR 42802, Aug. 19, 1996; 61 FR
56446, Nov. 1, 1996]
Sec. 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit. Correspondence
received in the Patent and Trademark Office is stamped with the date of
receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile as provided for in paragraph (a)(3) of this section, no
correspondence is received in the Patent and Trademark Office on
Saturdays, Sundays or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with Sec. 1.10 will be
stamped with the date of deposit as ``Express Mail'' with the United
States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and
Trademark Office will be stamped with the date on
[[Page 14]]
which the complete transmission is received in the Patent and Trademark
Office unless that date is a Saturday, Sunday, or Federal holiday within
the District of Columbia, in which case the date stamped will be the
next succeeding day which is not a Saturday, Sunday, or Federal holiday
within the District of Columbia.
(b) Patent and Trademark Office Post Office pouch. Mail placed in
the Patent and Trademark Office pouch up to midnight on any day, except
Saturdays, Sundays and Federal holidays within the District of Columbia,
by the post office at Washington, DC, serving the Patent and Trademark
Office, is considered as having been received in the Patent and
Trademark Office on the day it was so placed in the pouch by the U.S.
Postal Service.
(c) Correspondence delivered by hand. In addition to being mailed,
correspondence may be delivered by hand during hours the Office is open
to receive correspondence.
(d) Facsimile transmission. Except in the cases enumerated below,
correspondence, including authorizations to charge a deposit account,
may be transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete transmission is
received in the Patent and Trademark Office, unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia.
See Sec. 1.6(a)(3). To facilitate proper processing, each transmission
session should be limited to correspondence to be filed in a single
application or other proceeding before the Patent and Trademark Office.
The application number of a patent or trademark application, the control
number of a reexamination proceeding, the interference number of an
interference proceeding, the patent number of a patent, or the
registration number of a trademark should be entered as a part of the
sender's identification on a facsimile cover sheet. Facsimile
transmissions are not permitted and if submitted, will not be accorded a
date of receipt, in the following situations:
(1) Correspondence as specified in Sec. 1.4(e), requiring an
original signature;
(2) Certified documents as specified in Sec. 1.4(f);
(3) Correspondence which cannot receive the benefit of the
certificate of mailing or transmission as specified in Sec. 1.8(a)(2)(i)
(A) through (D) and (F), Sec. 1.8(a)(2)(ii)(A), 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) Drawings submitted under Secs. 1.81, 1.83 through 1.85, 1.152,
1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
(5) A request for reexamination under Sec. 1.510;
(6) Correspondence to be filed in a patent application subject to a
secrecy order under Secs. 5.1 through 5.5 of this chapter and directly
related to the secrecy order content of the application;
(7) Requests for cancellation or amendment of a registration under
section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates
of registration surrendered for cancellation or amendment under section
7(e) of the Trademark Act, 15 U.S.C. 1057(e);
(8) Correspondence to be filed with the Trademark Trial and Appeal
Board, except the notice of ex parte appeal;
(9) Correspondence to be filed in an interference proceeding which
consists of a preliminary statement under Sec. 1.621; a transcript of a
deposition under Sec. 1.676 or of interrogatories, cross-
interrogatories, or recorded answers under Sec. 1.684(c); or an
evidentiary record and exhibits under Sec. 1.653.
(e) Interruptions in U.S. Postal Service. If interruptions or
emergencies in the United States Postal Service which have been so
designated by the Commissioner occur, the Patent and Trademark Office
will consider as filed on a particular date in the Office any
correspondence which is:
(1) Promptly filed after the ending of the designated interruption
or emergency; and
(2) Accompanied by a statement indicating that such correspondence
would have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal
Service.
(f) Facsimile transmission of a patent application under
Sec. 1.53(d). In the event that the Office has no evidence of receipt of
an application under Sec. 1.53(d) (a continued prosecution application)
transmitted to the Office by facsimile
[[Page 15]]
transmission, the party who transmitted the application under
Sec. 1.53(d) may petition the Commissioner to accord the application
under Sec. 1.53(d) a filing date as of the date the application under
Sec. 1.53(d) is shown to have been transmitted to and received in the
Office,
(1) Provided that the party who transmitted such application under
Sec. 1.53(d):
(i) Informs the Office of the previous transmission of the
application under Sec. 1.53(d) promptly after becoming aware that the
Office has no evidence of receipt of the application under Sec. 1.53(d);
(ii) Supplies an additional copy of the previously transmitted
application under Sec. 1.53(d); and
(iii) Includes a statement which attests on a personal knowledge
basis or to the satisfaction of the Commissioner to the previous
transmission of the application under Sec. 1.53(d) and is accompanied by
a copy of the sending unit's report confirming transmission of the
application under Sec. 1.53(d) or evidence that came into being after
the complete transmission and within one business day of the complete
transmission of the application under Sec. 1.53(d).
(2) The Office may require additional evidence to determine if the
application under Sec. 1.53(d) was transmitted to and received in the
Office on the date in question.
[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56447,
Nov. 1, 1996; 62 FR 53180, Oct. 10, 1997]
Sec. 1.7 Times for taking action: Expiration on Saturday, Sunday or Federal holiday.
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 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 day which is not a
Saturday, Sunday, or a Federal holiday. See Sec. 1.304 for time for
appeal or for commencing civil action.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2707, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983]
Sec. 1.8 Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of this
section, correspondence required to be filed in the Patent and Trademark
Office within a set period of time will be considered as being timely
filed if the procedure described in this section is followed. The actual
date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration
of the set period of time by being:
(A) Addressed as set out in Sec. 1.1(a) and deposited with the U.S.
Postal Service with sufficient postage as first class mail; or
(B) Transmitted by facsimile to the Patent and Trademark Office in
accordance with Sec. 1.6(d); and
(ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person
signing the certificate should have reasonable basis to expect that the
correspondence would be mailed or transmitted on or before the date
indicated.
(2) The procedure described in paragraph (a)(1) of this section does
not apply to, and no benefit will be given to a Certificate of Mailing
or Transmission on the following:
(i) Relative to Patents and Patent Applications--
(A) The filing of a national patent application specification and
drawing or other correspondence for the purpose of obtaining an
application filing date, including a request for a continued prosecution
application under Sec. 1.53(d);
(B) The filing of correspondence in an interference which an
examiner-in-chief orders to be filed by hand or ``Express Mail'';
(C) The filing of agreements between parties to an interference
under 35 U.S.C. 135(c);
[[Page 16]]
(D) The filing of an international application for patent;
(E) The filing of correspondence in an international application
before the U.S. Receiving Office, the U.S. International Searching
Authority, or the U.S. International Preliminary Examining Authority;
(F) The filing of a copy of the international application and the
basic national fee necessary to enter the national stage, as specified
in Sec. 1.494(b) or Sec. 1.495(b).
(ii) Relative to Trademark Registrations and Trademark
Applications--
(A) The filing of a trademark application.
(B)-(F) [Reserved]
(iii) Relative to Disciplinary Proceedings--
(A) Correspondence filed in connection with a disciplinary
proceeding under part 10 of this chapter.
(B) [Reserved]
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the Patent and Trademark Office, and the
application is held to be abandoned or the proceeding is dismissed,
terminated, or decided with prejudice, the correspondence will be
considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of
the correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or
transmitted correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge basis
or to the satisfaction of the Commissioner to the previous timely
mailing or transmission. If the correspondence was sent by facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.
(c) The Office may require additional evidence to determine if the
correspondence was timely filed.
[58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993, as amended at 61
FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997]
Sec. 1.9 Definitions.
(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).
(3) A nonprovisional application as used in this chapter means a
U.S. national application for patent which was either filed in the
Office under 35 U.S.C. 111(a), or which entered the national stage from
an international application after compliance with 35 U.S.C. 371.
(b) An international application as used in this chapter means an
international application for patent filed under the Patent Cooperation
Treaty prior to entering national processing at the Designated Office
stage.
(c) An independent inventor as used in this chapter means any
inventor who (1) has not assigned, granted, conveyed, or licensed, and
(2) is under no obligation under contract or law to assign, grant,
convey, or license, any rights in the invention to any person who could
not likewise be classified as an independent inventor if that person had
made the invention, or to any concern which would not qualify as a small
business concern or a nonprofit organization under this section.
(d) A small business concern as used in this chapter means any
business concern meeting the size standards set forth in 13 CFR Part 121
to be eligible for reduced patent fees. Questions related to size
standards for a small business concern may be directed to: Small
Business Administration, Size Standards Staff, 409 Third Street, SW,
Washington, DC 20416.
(e) A nonprofit organization as used in this chapter means (1) a
university or other institution of higher education located in any
country; (2) an organization of the type described in section 501(c)(3)
of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt
from taxation under section 501(a) of the Internal Revenue
[[Page 17]]
Code (26 U.S.C. 501(a)); (3) any nonprofit scientific or educational
organization qualified under a nonprofit organization statute of a state
of this country (35 U.S.C. 201(i)); or (4) any nonprofit organization
located in a foreign country which would qualify as a nonprofit
organization under paragraphs (e)(2) or (3) of this section if it were
located in this country.
(f) A small entity as used in this chapter means an independent
inventor, a small business concern, or a non-profit organization
eligible for reduced patent fees.
(g) For definitions in interferences see Sec. 1.601.
(h) A Federal holiday within the District of Columbia as used in
this chapter means any day, except Saturdays and Sundays, when the
Patent and Trademark Office is officially closed for business for the
entire day.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C.
1113, 1123)
[43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982;
47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220,
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997]
Sec. 1.10 Filing of correspondence by ``Express Mail.''
(a) Any correspondence received by the Patent and Trademark Office
(Office) that was delivered by the ``Express Mail Post Office to
Addressee'' service of the United States Postal Service (USPS) will be
considered filed in the Office on the date of deposit with the USPS. The
date of deposit with the USPS is shown by the ``date-in'' on the
``Express Mail'' mailing label or other official USPS notation. If the
USPS deposit date cannot be determined, the correspondence will be
accorded the Office receipt date as the filing date. See Sec. 1.6(a).
(b) Correspondence should be deposited directly with an employee of
the USPS to ensure that the person depositing the correspondence
receives a legible copy of the ``Express Mail'' mailing label with the
``date-in'' clearly marked. Persons dealing indirectly with the
employees of the USPS (such as by deposit in an ``Express Mail'' drop
box) do so at the risk of not receiving a copy of the ``Express Mail''
mailing label with the desired ``date-in'' clearly marked. The paper(s)
or fee(s) that constitute the correspondence should also include the
``Express Mail'' mailing label number thereon. See paragraphs (c), (d)
and (e) of this section.
(c) Any person filing correspondence under this section that was
received by the Office and delivered by the ``Express Mail Post Office
to Addressee'' service of the USPS, who can show that there is a
discrepancy between the filing date accorded by the Office to the
correspondence and the date of deposit as shown by the ``date-in'' on
the ``Express Mail'' mailing label or other official USPS notation, may
petition the Commissioner to accord the correspondence a filing date as
of the ``date-in'' on the ``Express Mail'' mailing label or other
official USPS notation, provided that:
(1) The petition is filed promptly after the person becomes aware
that the Office has accorded, or will accord, a filing date other than
the USPS deposit date;
(2) The number of the ``Express Mail'' mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by ``Express Mail;'' and
(3) The petition includes a true copy of the ``Express Mail''
mailing label showing the ``date-in,'' and of any other official
notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was
received by the Office and delivered by the ``Express Mail Post Office
to Addressee'' service of the USPS, who can show that the ``date-in'' on
the ``Express Mail'' mailing label or other official notation entered by
the USPS was incorrectly entered or omitted by the USPS, may petition
the Commissioner to accord the correspondence a filing date as of the
date the correspondence is shown to have been deposited with the USPS,
provided that:
(1) The petition is filed promptly after the person becomes aware
that the Office has accorded, or will accord, a filing date based upon
an incorrect entry by the USPS;
(2) The number of the ``Express Mail'' mailing label was placed on
the
[[Page 18]]
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by ``Express Mail''; and
(3) The petition includes a showing which establishes, to the
satisfaction of the Commissioner, that the requested filing date was the
date the correspondence was deposited in the ``Express Mail Post Office
to Addressee'' service prior to the last scheduled pickup for that day.
Any showing pursuant to this paragraph must be corroborated by evidence
from the USPS or that came into being after deposit and within one
business day of the deposit of the correspondence in the ``Express Mail
Post Office to Addressee'' service of the USPS.
(e) Any person mailing correspondence addressed as set out in
Sec. 1.1(a) to the Office with sufficient postage utilizing the
``Express Mail Post Office to Addressee'' service of the USPS but not
received by the Office, may petition the Commissioner to consider such
correspondence filed in the Office on the USPS deposit date, provided
that:
(1) The petition is filed promptly after the person becomes aware
that the Office has no evidence of receipt of the correspondence;
(2) The number of the ``Express Mail'' mailing label was placed on
the paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by ``Express Mail'';
(3) The petition includes a copy of the originally deposited
paper(s) or fee(s) that constitute the correspondence showing the number
of the ``Express Mail'' mailing label thereon, a copy of any returned
postcard receipt, a copy of the ``Express Mail'' mailing label showing
the ``date-in,'' a copy of any other official notation by the USPS
relied upon to show the date of deposit, and, if the requested filing
date is a date other than the ``date-in'' on the ``Express Mail''
mailing label or other official notation entered by the USPS, a showing
pursuant to paragraph (d)(3) of this section that the requested filing
date was the date the correspondence was deposited in the ``Express Mail
Post Office to Addressee'' service prior to the last scheduled pickup
for that day; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Commissioner, the original deposit of the
correspondence and that the copies of the correspondence, the copy of
the ``Express Mail'' mailing label, the copy of any returned postcard
receipt, and any official notation entered by the USPS are true copies
of the originally mailed correspondence, original ``Express Mail''
mailing label, returned postcard receipt, and official notation entered
by the USPS.
(f) The Office may require additional evidence to determine if the
correspondence was deposited as ``Express Mail'' with the USPS on the
date in question.
[61 FR 56447, Nov. 1, 1996 as amended at 62 FR 53181, Oct. 10, 1997]
Records and Files of the Patent and Trademark Office
Sec. 1.11 Files open to the public.
(a) After a patent has been issued or a statutory invention
registration has been published, the specification, drawings and all
papers relating to the case in the file of the patent or statutory
invention registration are open to inspection by the public, and copies
may be obtained upon paying the fee therefor. See Sec. 2.27 for
trademark files.
(b) All reissue applications, all applications in which the Office
has accepted a request to open the complete application to inspection by
the public, and related papers in the application file, are open to
inspection by the public, and copies may be furnished upon paying the
fee therefor. The filing of reissue applications, other than continued
prosecution applications under Sec. 1.53(d) of reissue applications,
will be announced in the Official Gazette. The announcement shall
include at least the filing date, reissue application and original
patent numbers, title, class and subclass, name of the inventor, name of
the owner of record, name of the attorney or agent of record, and
examining group to which the reissue application is assigned.
(c) All requests for reexamination for which the fee under
Sec. 1.20(c) has been paid, will be announced in the Official Gazette.
Any reexaminations at the initiative of the Commissioner pursuant to
Sec. 1.520 will also be announced in the Official Gazette. The
announcement
[[Page 19]]
shall include at least the date of the request, if any, the
reexamination request control number or the Commissioner initiated order
control number, patent number, title, class and subclass, name of the
inventor, name of the patent owner of record, and the examining group to
which the reexamination is assigned.
(d) All papers or copies thereof relating to a reexamination
proceeding which have been entered of record in the patent or
reexamination file are open to inspection by the general public, and
copies may be furnished upon paying the fee therefor.
(e) The file of any interference involving a patent, a statutory
invention registration, a reissue application, or an application on
which a patent has been issued or which has been published as a
statutory invention registration, is open to inspection by the public,
and copies may be obtained upon paying the fee therefor, if:
(1) The interference has terminated or
(2) An award of priority or judgment has been entered as to all
parties and all counts.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[46 FR 29181, May 29, 1981, as amended at 47 FR 41272, Sept. 17, 1982;
50 FR 9378, Mar. 7, 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, Oct.
10, 1997]
Sec. 1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the Patent and
Trademark Office for patents and trademarks. The assignment records,
relating to original or reissue patents, including digests and indexes,
for assignments recorded on or after May 1, 1957, and assignment records
relating to pending or abandoned trademark applications and to trademark
registrations, for assignments recorded on or after January 1, 1955, are
open to public inspection at the Patent and Trademark Office, and copies
of those assignment records may be obtained upon request and payment of
the fee set forth in Secs. 1.19 and 2.6 of this chapter.
(2) All records of assignments of patents recorded before May 1,
1957, and all records of trademark assignments recorded before January
1, 1955, are maintained by the National Archives and Records
Administration (NARA). The records are open to public inspection.
Certified and uncertified copies of those assignment records are
provided by NARA upon request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes, relating to any
pending or abandoned patent application are not available to the public.
Copies of any such assignment records and information with respect
thereto shall be obtainable only upon written authority of the applicant
or applicant's assignee or attorney or agent or upon a showing that the
person seeking such information is a bona fide prospective or actual
purchaser, mortgagee, or licensee of such application, unless it shall
be necessary to the proper conduct of business before the Office or as
provided by these rules.
(c) Any request by a member of the public seeking copies of any
assignment records of any pending or abandoned patent application
preserved in confidence under Sec. 1.14, or any information with respect
thereto, must:
(1) Be in the form of a petition accompanied by the petition fee set
forth in Sec. 1.17(i); or
(2) Include written authority granting access to the member of the
public to the particular assignment records from the applicant or
applicant's assignee or attorney or agent of record.
(d) An order for a copy of an assignment or other document should
identify the reel and frame number where the assignment or document is
recorded. If a document is identified without specifying its correct
reel and frame, an extra charge as set forth in Sec. 1.21(j) will be
made for the time consumed in making a search for such assignment.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989;
56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641,
July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996]
Sec. 1.13 Copies and certified copies.
(a) Non-certified copies of patents and trademark registrations and
of any
[[Page 20]]
records, books, papers, or drawings within the jurisdiction of the
Patent and Trademark Office and open to the public, will be furnished by
the Patent and Trademark Office to any person, and copies of other
records or papers will be furnished to persons entitled thereto, upon
payment of the fee therefor.
(b) Certified copies of the patents and trademark registrations and
of any records, books, papers, or drawings within the jurisdiction of
the Patent and Trademark Office and open to the public or persons
entitled thereto will be authenticated by the seal of the Patent and
Trademark Office and certified by the Commissioner, or in his name
attested by an officer of the Patent and Trademark Office authorized by
the Commissioner, upon payment of the fee for the certified copy.
[58 FR 54508, Oct. 22, 1993]
Sec. 1.14 Patent applications preserved in confidence.
(a) Patent applications are generally preserved in confidence
pursuant to 35 U.S.C. 122. No information will be given concerning the
filing, pendency, or subject matter of any application for patent, and
no access will be given to, or copies furnished of, any application or
papers relating thereto, except as set forth in this section.
(1) Status information includes information such as whether the
application is pending, abandoned, or patented, as well as the
application number and filing date (or international filing date or date
of entry into the national stage).
(i) Status information concerning an application may be supplied:
(A) When copies of, or access to, the application may be provided
pursuant to paragraph (a)(3) of this section;
(B) When the application is identified by application number or
serial number and filing date in a published patent document or in a
U.S. application open to public inspection; or
(C) When the application is the national stage of an international
application in which the United States of America has been indicated as
a Designated State.
(ii) Status information concerning an application may also be
supplied when the application claims the benefit of the filing date of
an application for which status information may be provided pursuant to
paragraph (a)(1)(i) of this section.
(2) Copies of an application-as-filed may be provided to any person,
upon written request accompanied by the fee set forth in
Sec. 1.19(b)(1), without notice to the applicant, if the application is
incorporated by reference in a U.S. patent.
(3) Copies of (upon payment of the fee set forth in
Sec. 1.19(b)(2)), and access to, an application file wrapper and
contents may be provided to any person, upon written request, without
notice to the applicant, when the application file is available and:
(i) It has been determined by the Commissioner to be necessary for
the proper conduct of business before the Office or warranted by other
special circumstances;
(ii) The application is open to the public as provided in
Sec. 1.11(b);
(iii) Written authority in that application from the applicant, the
assignee of the application, or the attorney or agent of record has been
granted; or
(iv) The application is abandoned, but not if the application is in
the file jacket of a pending application under Sec. 1.53(d), and is:
(A) Referred to in a U.S. patent;
(B) Referred to in a U.S. application open to public inspection;
(C) An application which claims the benefit of the filing date of a
U.S. application open to public inspection; or
(D) An application in which the applicant has filed an authorization
to lay open the complete application to the public.
(b) Complete applications (Sec. 1.51(a)) which are abandoned may be
destroyed and hence may not be available for access or copies as
permitted by paragraph (a)(3)(iv) of this section after 20 years from
their filing date, except those to which particular attention has been
called and which have been marked for preservation.
(c) Applications for patents which disclose, or which appear to
disclose, or which purport to disclose, inventions or discoveries
relating to atomic energy are reported to the Department of Energy,
which Department will be given access to such applications, but
[[Page 21]]
such reporting does not constitute a determination that the subject
matter of each application so reported is in fact useful or an invention
or discovery or that such application in fact discloses subject matter
in categories specified by sections 151(c) and 151(d) of the Atomic
Energy Act of 1954, 68 Stat. 919; 42 U.S.C. 2181 (c) and (d).
(d) Any decision of the Board of Patent Appeals and Interferences,
or any decision of the Commissioner on petition, not otherwise open to
public inspection shall be published or made available for public
inspection if:
(1) The Commissioner believes the decision involves an
interpretation of patent laws or regulations that would be of important
precedent value; and
(2) The applicant, or any party involved in the interference, does
not within one month after being notified of the intention to make the
decision public, object in writing on the ground that the decision
discloses a trade secret or other confidential information.
If a decision discloses such information, the applicant or party shall
identify the deletions in the text of the decision considered necessary
to protect the information. If it is considered the entire decision must
be withheld from the public to protect such information, the applicant
or party must explain why. Applicants or parties will be given time, not
less than twenty days, to request reconsideration and seek court review
before any portions of decisions are made public over their objection.
See Sec. 2.27 for trademark applications.
(e) Any request by a member of the public seeking access to, or
copies of, any pending or abandoned application preserved in confidence
pursuant to paragraph (a) of this section, or any papers relating
thereto, must:
(1) Be in the form of a petition and be accompanied by the petition
fee set forth in Sec. 1.17(i); or
(2) Include written authority granting access to the member of the
public in that particular application from the applicant or the
applicant's assignee or attorney or agent of record.
(f) Information as to the filing of an application will be published
in the Official Gazette in accordance with Sec. 1.47(a) and (b).
(g) Copies of an application file for which the United States acted
as the International Preliminary Examining Authority, or copies of a
document in such an application file, will be furnished in accordance
with Patent Cooperation Treaty (PCT) Rule 94.2 or 94.3, upon payment of
the appropriate fee (Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
Note: See Sec. 1.612(a) for access by an interference party to a
pending or abandoned application.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C.
1113, 1123)
[42 FR 5593, Jan. 28, 1977, as amended at 43 FR 20462, May 11, 1978; 49
FR 48451, Dec. 12, 1984; 50 FR 9378, Mar. 7, 1985; 54 FR 6900, Feb. 15,
1989; 56 FR 55461, Oct. 28, 1991; 58 FR 54509, Oct. 22, 1993; 60 FR
20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996; 62 FR 53182, Oct. 10,
1997; 63 FR 29617, June 1, 1998]
Sec. 1.15 Requests for identifiable records.
(a) Requests for records, not disclosed to the public as part of the
regular informational activity of the Patent and Trademark Office and
which are not otherwise dealt with in the rules in this part, shall be
made in writing, with the envelope and the letter clearly marked
``Freedom of Information Request.'' Each such request, so marked, should
be submitted by mail addressed to the ``Patent and Trademark Office,
Freedom of Information Request Control Desk, Box 8, Washington, DC
20231,'' or hand delivered to the Office of the Solicitor, Patent and
Trademark Office, Arlington, Virginia. The request will be processed in
accordance with the procedures set forth in part 4 of title 15, Code of
Federal Regulations.
(b) Any person whose request for records has been initially denied
in whole or in part, or has not been timely determined, may submit a
written appeal as provided in Sec. 4.8 of title 15, Code of Federal
Regulations.
(c) Procedures applicable in the event of service of process or in
connection with testimony of employees on official matters and
production of official documents of the Patent and Trademark Office in
civil legal proceedings not involving the United States shall
[[Page 22]]
be those established in parts 15 and 15a of title 15, Code of Federal
Regulations.
[53 FR 47686, Nov. 25, 1988]
Fees and Payment of Money
Sec. 1.16 National application filing fees.
(a) Basic fee for filing each application for an original patent,
except provisional, design or plant applications:
By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00
(b) In addition to the basic filing fee in an original application,
except provisional applications, for filing or later presentation of
each independent claim in excess of 3:
By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00
(c) In addition to the basic filing fee in an original application,
except provisional applications, for filing or later presentation of
each claim in excess of 20 (Note that Sec. 1.75(c) indicates how
multiple dependent claims are considered for fee purposes.):
By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00
(d) In addition to the basic filing fee in an original application,
except provisional applications, if the application contains, or is
amended to contain, a multiple dependent claim(s), per application:
By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00
(e) Surcharge for filing the basic filing fee or oath or declaration
on a date later than the filing date of the application, except
provisional applications:
By a small entity (Sec. 1.9(f))...................................$65.00
By other than a small entity.....................................$130.00
(f) Basic fee for filing each design application:
By a small entity (Sec. 1.9(f))--$155.00
By other than a small entity--$310.00
(g) Basic fee for filing each plant application, except provisional
applications:
By a small entity (Sec. 1.9(f))--$240.00
By other than a small entity--$480.00
(h) Basic fee for filing each reissue application:
By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00
(i) In addition to the basic filing fee in a reissue application,
for filing or later presentation of each independent claim which is in
excess of the number of independent claims in the original patent:
By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00
(j) In addition to the basic filing fee in a reissue application,
for filing or later presentation of each claim (whether independent or
dependent) in excess of 20 and also in excess of the number of claims in
the original patent (Note that Sec. 1.75(c) indicates how multiple
dependent claims are considered for fee purposes.):
By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00
(k) Basic fee for filing each provisional application:
By a small entity (Sec. 1.9(f))...................................$75.00
By other than a small entity.....................................$150.00
(l) Surcharge for filing the basic filing fee or cover sheet
(Sec. 1.51(c)(1)) on a date later than the filing date of the
provisional application:
By a small entity (Sec. 1.9(f))--$25.00
By other than a small entity--$50.00
(m) If the additional fees required by paragraphs (b), (c), (d), (i)
and (j) of this section are not paid on filing or on later presentation
of the claims for which the additional fees are due, they must be paid
or the claims must be canceled by amendment, prior to the expiration of
the time period set for reply by the Office in any notice of fee
deficiency.
Note: See Secs. 1.445, 1.482 and 1.492 for international application
filing and processing fees.
[56 FR 65151, Dec. 13, 1991, as amended at 57 FR 38194, Aug. 21, 1992;
60 FR 20221, Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39587,
July 30, 1996; 61 FR 43400, Aug. 22, 1996; 62 FR 40452, July 29, 1997;
62 FR 53182, Oct. 10, 1997; 63 FR 67579, Dec. 8, 1998]
Sec. 1.17 Patent application processing fees.
(a) Extension fees pursuant to Sec. 1.136(a):
(1) For reply within first month:
By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00
(2) For reply within second month:
By a small entity (Sec. 1.9(f))--$190.00
By other than a small entity--$380.00
(3) For reply within third month:
By a small entity (Sec. 1.9(f))--$435.00
By other than a small entity--$870.00
[[Page 23]]
(4) For reply within fourth month:
By a small entity (Sec. 1.9(f))--$680.00
By other than a small entity--$1,360.00
(5) For reply within fifth month:
By a small entity (Sec. 1.9(f))--$925.00
By other than a small entity--$1,850.00
(b) For filing a notice of appeal from the examiner to the Board of
Patent Appeals and Interferences:
By a small entity (Sec. 1.9(f))--$150.00
By other than a small entity--$300.00
(c) In addition to the fee for filing a notice of appeal, for filing
a brief in support of an appeal:
By a small entity (Sec. 1.9 (f))--$150.00
By other than a small entity--$300.00
(d) For filing a request for an oral hearing before the Board of
Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:
By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00
(e)-(g) [Reserved]
(h) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph--$130.00
Sec. 1.182--For decision on a question not specifically provided for.
Sec. 1.183--To suspend the rules.
Sec. 1.295--For review of refusal to publish a statutory invention
registration.
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. 1.378(e)--For reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(e)--For petition in an interference.
Sec. 1.644(f)--For request for reconsideration of a decision on petition
in an interference.
Sec. 1.666(c)--For late filing of interference settlement agreement.
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.
(i) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph--$130.00
Sec. 1.12--For access to an assignment record.
Sec. 1.14--For access to an application.
Sec. 1.41--To supply the name or names of the inventor or inventors
after the filing date without an oath or declaration as prescribed by
Sec. 1.63, except in provisional applications.
Sec. 1.47--For filing by other than all the inventors or a person not
the inventor.
Sec. 1.48--For correction of inventorship, except in provisional
applications.
Sec. 1.53--To accord a filing date, except in provisional applications.
Sec. 1.55--For entry of late priority papers.
Sec. 1.59--For expungement and return of information.
Sec. 1.84--For accepting color drawings or photographs.
Sec. 1.91--For entry of a model or exhibit.
Sec. 1.97(d)--To consider an information disclosure statement.
Sec. 1.102--To make an application special.
Sec. 1.103--To suspend action in application.
Sec. 1.177--For divisional reissues to issue separately.
Sec. 1.312--For amendment after payment of issue fee.
Sec. 1.313--To withdraw an application from issue.
Sec. 1.314--To defer issuance of a patent.
Sec. 1.666(b)--For access to an interference settlement agreement.
Sec. 3.81--For a patent to issue to assignee, assignment submitted after
payment of the issue fee.
(j) For filing a petition to institute a public use proceeding under
Sec. 1.292--$1,510.00
(k) For processing an application filed with a specification in a
non-English language (Sec. 1.52(d))--$130.00
(l) For filing a petition:
(1) For the revival of an unavoidably abandoned application under 35
U.S.C. 111, 133, 364, or 371, or
(2) For delayed payment of the issue fee under 35 U.S.C. 151
(Sec. 1.137(a)):
By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00
(m) For filing a petition:
(1) For revival of an unintentionally abandoned application, or
(2) For the unintentionally delayed payment of the fee for issuing a
patent (Sec. 1.137(b)):
By a small entity (Sec. 1.9(f))--$605.00
By other than a small entity--$1,210.00
(n) For requesting publication of a statutory invention registration
prior to the mailing of the first examiner's action pursuant to
Sec. 1.104--$920.00 reduced by the amount of the application basic
filing fee paid.
(o) For requesting publication of a statutory invention registration
after the mailing of the first examiner's action pursuant to
Sec. 1.104--$1,840.00 reduced by the amount of the application basic
filing fee paid.
(p) For submission of an information disclosure statement under
Sec. 1.97(c)--$240.00
[[Page 24]]
(q) For filing a petition to the Commissioner under a section listed
below which refers to this paragraph--$50.00.
Sec. 1.41--To supply the name or names of the inventor or inventors
after the filing date without a cover sheet as prescribed by
Sec. 1.51(c)(1) in a provisional application.
Sec. 1.48--For correction of inventorship in a provisional application.
Sec. 1.53--To accord a provisional application a filing date or to
convert a nonprovisional application filed under Sec. 1.53(b) to a
provisional application under Sec. 1.53(c).
(r) For entry of a submission after final rejection under
Sec. 1.129(a):
By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00
(s) For each additional invention requested to be examined under
Sec. 1.129(b):
By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00
[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 2033, Jan 17, 1992; 57
FR 32439, July 22, 1992; 58 FR 38723, July 20, 1993; 58 FR 45841, Aug.
31, 1993; 59 FR 43740, Aug. 25, 1994; 60 FR 20221, Apr. 25, 1995; 60 FR
41022, Aug. 11, 1995; 61 FR 39587, July 30, 1996; 62 FR 40452, July 29,
1997; 62 FR 53182, Oct. 10, 1997; 62 FR 61235, Nov. 17, 1997; 63 FR
67580, Dec. 8, 1998]
Sec. 1.18 Patent issue fees.
(a) Issue fee for issuing each original or reissue patent, except a
design or plant patent:
By a small entity (Sec. 1.9(f))--$605.00
By other than a small entity--$1,210.00
(b) Issue fee for issuing a design patent:
By a small entity (Sec. 1.9(f))--$215.00
By other than a small entity--$430.00
(c) Issue fee for issuing a plant patent:
By a small entity (Sec. 1.9(f))--$290.00
By other than a small entity--$580.00
[63 FR 67580, Dec. 8, 1998]
Sec. 1.19 Document supply fees.
The Patent and Trademark Office will supply copies of the following
documents upon payment of the fees indicated:
(a) Uncertified copies of patents:
(1) Printed copy of a patent, including a design patent, statutory
invention registration, or defensive publication document, except patent
or statutory invention registration containing color drawing:
(i) Regular service--$3.00
(ii) Overnight delivery to PTO Box or overnight fax--$6.00
(iii) Expedited service for copy ordered by expedited mail or fax
delivery service and delivered to the customer within two workdays--
$25.00
(2) Printed copy of a plant patent in color--$15.00
(3) Copy of a utility patent or statutory invention registration
containing color drawing (see Sec. 1.84(a)(2))--$25.00
(b) Certified and uncertified copies of Office documents:
(1) Certified or uncertified copy of patent application as filed
(i) Regular service--$15.00
(ii) Expedited regular service--$30.00
(2) Certified or uncertified copy of patent-related file wrapper and
contents--$150.00
(3) Certified or uncertified copies of Office records, per document
except as otherwise provided in this section--$25.00
(4) For assignment records, abstract of title and certification, per
patent--$25.00
(c) Library service (35 U.S.C. 13): For providing to libraries
copies of all patents issued annually, per annum--$50.00
(d) For list of all United States patents and statutory invention
registrations in a subclass--$3.00
(e) Uncertified statement as to status of the payment of maintenance
fees due on a patent or expiration of a patent--$10.00
(f) Uncertified copy of a non-United States patent document, per
document--$25.00
(g) To compare and certify copies made from Patent and Trademark
Office records, but not prepared by the Patent and Trademark Office, per
copy of document--$25.00
(h) Additional filing receipts; duplicate; or corrected due to
applicant error--$25.00
[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992;
58 FR 38723, July 20, 1993; 60 FR 41022, Aug. 11, 1995; 62 FR 40452,
July 29, 1997]
Sec. 1.20 Post issuance fees.
(a) For providing a certificate of correction for applicant's
mistake:
(Sec. 1.323)--$100.00
[[Page 25]]
(b) Petition for correction of inventorship in patent (Sec. 1.324)--
$130.00
(c) For filing a request for reexamination (Sec. 1.510(a))--
$2,520.00
(d) For filing each statutory disclaimer (Sec. 1.321):
By a small entity (Sec. 1.9(f))--$55.00
By other than a small entity--$110.00
(e) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond four years; the fee is due by three years and six
months after the original grant:
By a small entity (Sec. 1.9(f))--$470.00
By other than a small entity--$940.00
(f) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond eight years; the fee is due by seven years and six
months after the original grant:
By a small entity (Sec. 1.9(f))--$950.00
By other than a small entity--$1,900.00
(g) For maintaining an original or reissue patent, except a design
or plant patent, based on an application filed on or after December 12,
1980, in force beyond twelve years; the fee is due by eleven years and
six months after the original grant:
By a small entity (Sec. 1.9(f))--$1,455.00
By other than a small entity--$2,910.00
(h) Surcharge for paying a maintenance fee during the six-month
grace period following the expiration of three years and six months,
seven years and six months, and eleven years and six months after the
date of the original grant of a patent based on an application filed on
or after December 12, 1980:
By a small entity (Sec. 1.9(f))--$65.00
By other than a small entity--$130.00
(i) Surcharge for accepting a maintenance fee after expiration of a
patent for non-timely payment of a maintenance fee where the delay in
payment is shown to the satisfaction of the Commissioner to have been--
(1) Unavoidable--$700.00
(2) Unintentional--$1,640.00
(j) For filing an application for extension of the term of a patent
(Sec. 1.740)--$1,060.00
(1) Application for extension under Sec. 1.740--$1,120.00
(2) Initial application for interim extension under Sec. 1.790--
$420.00
(3) Subsequent application for interim extension under Sec. 1.790--
$220.00
[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992;
57 FR 56450, Nov. 30, 1992; 58 FR 44280, Aug. 20, 1993; 60 FR 41022,
Aug. 11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997;
63 FR 67580, Dec. 8, 1998]
Sec. 1.21 Miscellaneous fees and charges.
The Patent and Trademark Office has established the following fees
for the services indicated:
(a) Registration of attorneys and agents:
(1) For admission to examination for registration to practice:
(i) Application Fee (non-refundable)--$40.00
(ii) Registration examination fee--$310.00
(2) On registration to practice--$100.00
(3) For reinstatement to practice--$40.00
(4) For certificate of good standing as an attorney or agent--$10.00
Suitable for framing--$20.00
(5) For review of a decision of the Director of Enrollment and
Discipline under Sec. 10.2(c)--$130.00
(6) For requesting regrading of an examination under Sec. 10.7(c):
(i) Regrading of morning section (PTO Practice and Procedure)--
$230.00
(ii) Regrading of afternoon section (Claim Drafting)--$230.00
(b) Deposit accounts:
(1) For establishing a deposit account--$10.00
(2) Service charge for each month when the balance at the end of the
month is below $1,000--$25.00
(3) Service charge for each month when the balance at the end of the
month is below $300 for restricted subscription deposit accounts used
exclusively for subscription order of patent copies as issued--$25.00
(c) Disclosure document: For filing a disclosure document--$10.00
(d) Delivery box: Local delivery box rental, per annum--$50.00
(e) International type search reports: For preparing an
international type search report of an international type
[[Page 26]]
search made at the time of the first action on the merits in a national
patent application--$40.00
(f) [Reserved]
(g) Self-service copy charge, per page--$0.25
(h) For recording each assignment, agreement or other paper relating
to the property in a patent or application, per property--$40.00
(i) Publication in Official Gazette: For publication in the Official
Gazette of a notice of the availability of an application or a patent
for licensing or sale:
Each application or patent--$25.00
(j) Labor charges for services, per hour or fraction thereof--$40.00
(k) For items and services that the Commissioner finds may be
supplied, for which fees are not specified by statute or by this part,
such charges as may be determined by the Commissioner with respect to
each such item or service--Actual Cost
(l) For processing and retaining any application abandoned pursuant
to Sec. 1.53(f), unless the required basic filing fee (Sec. 1.16)has
been paid--$130.00
(m) For processing each check returned ``unpaid'' by a bank--$50.00
(n) For handling an application in which proceedings are terminated
pursuant to Sec. 1.53(e)--$130.00
(o) Marginal cost, paid in advance, for each hour of terminal
session time, including print time, using Automated Patent System full-
text search capabilities, prorated for the actual time used. The
Commissioner may waive the payment by an individual for access to the
Automated Patent System full-text search capability (APS-Text) upon a
showing of need or hardship, and if such waiver is in the public
interest--$40.00
[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992;
57 FR 40493, Sept. 3, 1992; 59 FR 43741, Aug. 25, 1994; 60 FR 20222,
Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39588, July 30, 1996;
61 FR 43400, Aug. 22, 1996; 62 FR 40453, July 29, 1997; 62 FR 53183,
Oct. 10, 1997; 63 FR 67580, Dec. 8, 1998]
Sec. 1.22 Fees payable in advance.
(a) Patent and trademark fees and charges payable to the Patent and
Trademark Office are required to be paid in advance, that is, at the
time of requesting any action by the Office for which a fee or charge is
payable with the exception that under Sec. 1.53 applications for patent
may be assigned a filing date without payment of the basic filing fee.
(b) All patent and trademark fees paid to the Patent and Trademark
Office should be itemized in each individual application, patent or
other proceeding in such a manner that it is clear for which purpose the
fees are paid.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2708, Jan. 20, 1983]
Sec. 1.23 Method of payment.
All payments of money required for Patent and Trademark Office fees,
including fees for the processing of international applications
(Sec. 1.445), should be made in U.S. specie, Treasury notes, national
bank notes, post office money orders, or by certified check. If sent in
any other form, the Office may delay or cancel the credit until
collection is made. Money orders and checks must be made payable to the
Commissioner of Patents and Trademarks. Remittances from foreign
countries must be payable and immediately negotiable in the United
States for the full amount of the fee required. Money sent by mail to
the Patent and Trademark Office will be at the risk of the sender;
letters containing money should be registered.
(Pub. L. 94-131, 89 Stat. 685)
[43 FR 20462, May 11, 1978]
Sec. 1.24 Coupons.
Coupons in denominations of three dollars, for the purchase of
patents, designs, defensive publications, statutory invention
registrations, and trademark registrations are sold by the Patent and
Trademark Office for the convenience of the general public; these
coupons may not be used for any other purpose. The three-dollar coupons
are sold individually and in books of 50 for $150.00. These coupons are
good until used; they may be transferred but cannot be redeemed.
[56 FR 65153, Dec. 13, 1991]
[[Page 27]]
Sec. 1.25 Deposit accounts.
(a) For the convenience of attorneys, and the general public in
paying any fees due, in ordering services offered by the Office, copies
of records, etc., deposit accounts may be established in the Patent and
Trademark Office upon payment of the fee for establishing a deposit
account (Sec. 1.21(b)(1)). A minimum deposit of $1,000 is required for
paying any fees due or in ordering any services offered by the Office.
However, a minimum deposit of $300 may be paid to establish a restricted
subscription deposit account used exclusively for subscription order of
patent copies as issued. At the end of each month, a deposit account
statement will be rendered. A remittance must be made promptly upon
receipt of the statement to cover the value of items or services charged
to the account and thus restore the account to its established normal
deposit. An amount sufficient to cover all fees, services, copies, etc.,
requested must always be on deposit. Charges to accounts with
insufficient funds will not be accepted. A service charge
(Sec. 1.21(b)(2)) will be assessed for each month that the balance at
the end of the month is below $1,000. For restricted subscription
deposit accounts, a service charge (Sec. 1.21(b)(3)) will be assessed
for each month that the balance at the end of the month is below $300.
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on deposit
to cover such fees. A general authorization to charge all fees, or only
certain fees, set forth in Secs. 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 respect to a
particular paper filed. An authorization to charge to a deposit account
the fee for a request for reexamination pursuant to Sec. 1.510 and any
other fees required in a reexamination proceeding in a patent may also
be filed with the request for reexamination. An authorization to charge
a fee to a deposit account will not be considered payment of the fee on
the date the authorization to charge the fee is effective as to the
particular fee to be charged unless sufficient funds are present in the
account to cover the fee.
(35 U.S.C. 6, Pub. L. 97-247)
[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985]
Sec. 1.26 Refunds.
(a) Any fee paid by actual mistake or in excess of that required
will be refunded, but a mere change of purpose after the payment of
money, as when a party desires to withdraw an application, an appeal, or
a request for oral hearing, will not entitle a party to demand such a
return. Amounts of twenty-five dollars or less will not be returned
unless specifically requested within a reasonable time, nor will the
payer be notified of such amounts; amounts over twenty-five dollars may
be returned by check or, if requested, by credit to a deposit account.
(b) [Reserved]
(c) If the Commissioner decides not to institute a reexamination
proceeding, a refund of $1,690 will be made to the requester of the
proceeding. Reexamination requesters should indicate whether any refund
should be made by check or by credit to a deposit account.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985;
54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug.
21, 1992; 62 FR 53183, Oct. 10, 1997]
Sec. 1.27 Statement of status as small entity.
(a) Any person seeking to establish status as a small entity
(Sec. 1.9(f) of this part) for purposes of paying fees in an application
or a patent must file a statement in the application or patent prior to
or with the first fee paid as a small entity. Such a statement need only
be filed once in an application or patent and remains in effect until
changed.
(b) When establishing status as a small entity pursuant to paragraph
(a) of this section, any statement filed on behalf of an independent
inventor must be signed by the independent inventor except as provided
in Sec. 1.42, Sec. 1.43, or Sec. 1.47 of this part and must state that
the inventor qualifies as an independent inventor in accordance with
[[Page 28]]
Sec. 1.9(c) of this part. Where there are joint inventors in an
application, each inventor must file a statement establishing status as
an independent inventor in order to qualify as a small entity. Where any
rights have been assigned, granted, conveyed, or licensed, or there is
an obligation to assign, grant, convey, or license, any rights to a
small business concern, a nonprofit organization, or any other
individual, a statement must be filed by the individual, the owner of
the small business concern, or an official of the small business concern
or nonprofit organization empowered to act on behalf of the small
business concern or nonprofit organization identifying their status. For
purposes of a statement under this paragraph, a license to a Federal
agency resulting from a funding agreement with that agency pursuant to
35 U.S.C. 202(c)(4) does not constitute a license as set forth in
Sec. 1.9 of this part.
(c)(1) Any statement filed pursuant to paragraph (a) of this section
on behalf of a small business concern must:
(i) Be signed by the owner or an official of the small business
concern empowered to act on behalf of the concern;
(ii) State that the concern qualifies as a small business concern as
defined in Sec. 1.9(d); and
(iii) State that the exclusive rights to the invention have been
conveyed to and remain with the small business concern or, if the rights
are not exclusive, that all other rights belong to small entities as
defined in Sec. 1.9.
(2) Where the rights of the small business concern as a small entity
are not exclusive, a statement must also be filed by the other small
entities having rights stating their status as such. For purposes of a
statement under this paragraph, a license to a Federal agency resulting
from a funding agreement with that agency pursuant to 35 U.S.C.
202(c)(4) does not constitute a license as set forth in Sec. 1.9 of this
part.
(d)(1) Any statement filed pursuant to paragraph (a) of this section
on behalf of a nonprofit organization must:
(i) Be signed by an official of the nonprofit organization empowered
to act on behalf of the organization;
(ii) State that the organization qualifies as a nonprofit
organization as defined in Sec. 1.9(e) of this part specifying under
which one of Sec. 1.9(e) (1), (2), (3), or (4) of this part the
organization qualifies; and
(iii) State that exclusive rights to the invention have been
conveyed to and remain with the organization or if the rights are not
exclusive that all other rights belong to small entities as defined in
Sec. 1.9 of this part.
(2) Where the rights of the nonprofit organization as a small entity
are not exclusive, a statement must also be filed by the other small
entities having rights stating their status as such. For purposes of a
statement under this paragraph, a license to a Federal agency pursuant
to 35 U.S.C. 202(c)(4) does not constitute a conveyance of rights as set
forth in this paragraph.
[62 FR 53183, Oct. 10, 1997]
Sec. 1.28 Effect on fees of failure to establish status, or change status, as a small entity.
(a)(1) The failure to establish status as a small entity
(Secs. 1.9(f) and 1.27 of this part) in any application or patent prior
to paying, or at the time of paying, any fee precludes payment of the
fee in the amount established for small entities. A refund pursuant to
Sec. 1.26 of this part, based on establishment of small entity status,
of a portion of fees timely paid in full prior to establishing status as
a small entity may only be obtained if a statement under Sec. 1.27 and a
request for a refund of the excess amount are filed within two months of
the date of the timely payment of the full fee. The two-month time
period is not extendable under Sec. 1.136. Status as a small entity is
waived for any fee by the failure to establish the status prior to
paying, at the time of paying, or within two months of the date of
payment of, the fee.
(2) Status as a small entity must be specifically established in
each application or patent in which the status is available and desired.
Status as a small entity in one application or patent does not affect
any other application or patent, including applications or patents which
are directly or indirectly dependent upon the application or patent in
which the status has been established. The refiling of an application
under Sec. 1.53 as a continuation, division,
[[Page 29]]
or continuation-in-part (including a continued prosecution application
under Sec. 1.53(d)), or the filing of a reissue application requires a
new determination as to continued entitlement to small entity status for
the continuing or reissue application. A nonprovisional application
claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application, or a reissue application may rely on a statement filed in
the prior application or in the patent if the nonprovisional application
or the reissue application includes a reference to the statement in the
prior application or in the patent or includes a copy of the statement
in the prior application or in the patent and status as a small entity
is still proper and desired. The payment of the small entity basic
statutory filing fee will be treated as such a reference for purposes of
this section.
(3) Once status as a small entity has been established in an
application or patent, the status remains in that application or patent
without the filing of a further statement pursuant to Sec. 1.27 of this
part unless the Office is notified of a change in status.
(b) Once status as a small entity has been established in an
application or patent, fees as a small entity may thereafter be paid in
that application or patent without regard to a change in status until
the issue fee is due or any maintenance fee is due. Notification of any
change in status resulting in loss of entitlement to small entity status
must be filed in the application or patent prior to paying, or at the
time of paying, the earliest of the issue fee or any maintenance fee due
after the date on which status as a small entity is no longer
appropriate pursuant to Sec. 1.9 of this part. The notification of
change in status may be signed by the applicant, any person authorized
to sign on behalf of the assignee, or an attorney or agent of record or
acting in a representative capacity pursuant to Sec. 1.34(a) of this
part.
(c) If status as a small entity is established in good faith, and
fees as a small entity are paid in good faith, in any application or
patent, and it is later discovered that such status as a small entity
was established in error or that through error the Office was not
notified of a change in status as required by paragraph (b) of this
section, the error will be excused upon payment of the deficiency
between the amount paid and the amount due. The deficiency is based on
the amount of the fee, for other than a small entity, in effect at the
time the deficiency is paid in full.
(d)(1) Any attempt to fraudulently (i) establish status as a small
entity or (ii) pay fees as a small entity shall be considered as a fraud
practiced or attempted on the Office.
(2) Improperly and with intent to deceive
(i) Establishing status as a small entity, or
(ii) Paying fees as a small entity shall be considered as a fraud
practiced or attempted on the Office.
(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)
[47 FR 40140, Sept. 10, 1982, as amended at 49 FR 553, Jan. 4, 1984; 57
FR 2033, Jan. 17, 1992; 58 FR 54509, Oct. 22, 1993; 60 FR 20222, Apr.
25, 1995; 62 FR 53183, Oct. 10, 1997]
Subpart B--National Processing Provisions
Prosecution of Application and Appointment of Attorney or Agent
Sec. 1.31 Applicants may be represented by a registered attorney or agent.
An applicant for patent may file and prosecute his or her own case,
or he or she may be represented by a registered attorney, registered
agent, or other individual authorized to practice before the Patent and
Trademark Office in patent cases. See Secs. 10.6 and 10.9 of this
subchapter. The Patent and Trademark Office cannot aid in the selection
of a registered attorney or agent.
[50 FR 5171, Feb. 6, 1985]
Sec. 1.32 [Reserved]
Sec. 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
(a) The applicant, the assignee(s) of the entire interest (see
Secs. 3.71 and 3.73) or an attorney or agent of record (see
Sec. 1.34(b)) may specify a correspondence address to which
communications
[[Page 30]]
about the application are to be directed. All notices, official letters,
and other communications in the application will be directed to the
correspondence address or, if no such correspondence address is
specified, to an attorney or agent of record (see Sec. 1.34(b)), or, if
no attorney or agent is of record, to the applicant, so long as a post
office address has been furnished in the application. Double
correspondence with an applicant and an attorney or agent, or with more
than one attorney or agent, will not be undertaken. If more than one
attorney or agent is made of record and a correspondence address has not
been specified, correspondence will be held with the one last made of
record.
(b) Amendments and other papers filed in the application must be
signed by:
(1) An attorney or agent of record appointed in compliance with
Sec. 1.34(b);
(2) A registered attorney or agent not of record who acts in a
representative capacity under the provisions of Sec. 1.34(a);
(3) The assignee of record of the entire interest, if there is an
assignee of record of the entire interest;
(4) An assignee of record of an undivided part interest, and any
assignee(s) of the remaining interest and any applicant retaining an
interest, if there is an assignee of record of an undivided part
interest; or
(5) All of the applicants (Secs. 1.42, 1.43 and 1.47) for patent,
unless there is an assignee of record of the entire interest and such
assignee has taken action in the application in accordance with
Secs. 3.71 and 3.73.
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed to
the attorney or agent of record (see Sec. 1.34(b)) in the patent file at
the address listed on the register of patent attorneys and agents
maintained pursuant to Secs. 10.5 and 10.11 or, if no attorney or agent
is of record, to the patent owner or owners at the address or addresses
of record. Amendments and other papers filed in a reexamination
proceeding on behalf of the patent owner must be signed by the patent
owner, or if there is more than one owner by all the owners, or by an
attorney or agent of record in the patent file, or by a registered
attorney or agent not of record who acts in a representative capacity
under the provisions of Sec. 1.34(a). 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. If more than
one attorney or agent is of record and a correspondence address has not
been specified, correspondence will be held with the last attorney or
agent made of record.
(d) A ``correspondence address'' or change thereto may be filed with
the Patent and Trademark Office during the enforceable life of the
patent. The ``correspondence address'' will be used in any
correspondence relating to maintenance fees unless a separate ``fee
address'' has been specified. See Sec. 1.363 for ``fee address'' used
solely for maintenance fee purposes.
[36 FR 12617, July 2, 1971, as amended at 46 FR 29181, May 29, 1981; 49
FR 34724, Aug. 31, 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10,
1997]
Sec. 1.34 Recognition for representation.
(a) When a registered attorney or agent acting in a representative
capacity appears in person or signs a paper in practice before the
Patent and Trademark Office in a patent case, his or her personal
appearance or signature shall constitute a representation to the Patent
and Trademark Office that under the provisions of this subchapter and
the law, he or she is authorized to represent the particular party in
whose behalf he or she acts. In filing such a paper, the registered
attorney or agent should specify his or her registration number with his
or her signature. Further proof of authority to act in a representative
capacity may be required.
(b) When an attorney or agent shall have filed his or her power of
attorney, or authorization, duly executed by the person or persons
entitled to prosecute an application or a patent involved in a
reexamination proceeding, he or she is a principal attorney of record in
the case. A principal attorney or agent, so appointed, may appoint an
associate
[[Page 31]]
attorney or agent who shall also then be of record.
[46 FR 29181, May 29, 1981, as amended at 50 FR 5171, Feb. 6, 1985]
Sec. 1.36 Revocation of power of attorney or authorization; withdrawal of attorney or agent.
A power of attorney or authorization of agent may be revoked at any
stage in the proceedings of a case, and an attorney or agent may
withdraw, upon application to and approval by the Commissioner. An
attorney or agent, except an associate attorney or agent whose address
is the same as that of the principal attorney or agent, will be notified
of the revocation of the power of attorney or authorization, and the
applicant or patent owner will be notified of the withdrawal of the
attorney or agent. An assignment will not of itself operate as a
revocation of a power or authorization previously given, but the
assignee of the entire interest may revoke previous powers and be
represented by an attorney or agent of the assignee's own selection. See
Sec. 1.613(d) for withdrawal of an attorney or agent of record in an
interference.
[49 FR 48452, Dec. 12, 1984]
Who May Apply for a Patent
Sec. 1.41 Applicant for patent.
(a) A patent is applied for in the name or names of the actual
inventor or inventors.
(1) The inventorship of a nonprovisional application is that
inventorship set forth in the oath or declaration as prescribed by
Sec. 1.63, except as provided for in Sec. 1.53(d)(4) and Sec. 1.63(d).
If an oath or declaration as prescribed by Sec. 1.63 is not filed during
the pendency of a nonprovisional application, the inventorship is that
inventorship set forth in the application papers filed pursuant to
Sec. 1.53(b), unless a petition under this paragraph accompanied by the
fee set forth in Sec. 1.17(i) is filed supplying or changing the name or
names of the inventor or inventors.
(2) The inventorship of a provisional application is that
inventorship set forth in the cover sheet as prescribed by
Sec. 1.51(c)(1). If a cover sheet as prescribed by Sec. 1.51(c)(1) is
not filed during the pendency of a provisional application, the
inventorship is that inventorship set forth in the application papers
filed pursuant to Sec. 1.53(c), unless a petition under this paragraph
accompanied by the fee set forth in Sec. 1.17(q) is filed supplying or
changing the name or names of the inventor or inventors.
(3) In a nonprovisional application filed without an oath or
declaration as prescribed by Sec. 1.63 or a provisional application
filed without a cover sheet as prescribed by Sec. 1.51(c)(1), the name
or names of person or persons believed to be the actual inventor or
inventors should be provided for identification purposes when the
application papers pursuant to Sec. 1.53(b) or (c) are filed. If no name
of a person believed to be an actual inventor is so provided, the
application should include an applicant identifier consisting of
alphanumeric characters.
(b) Unless the contrary is indicated the word ``applicant'' when
used in these sections refers to the inventor or joint inventors who are
applying for a patent, or to the person mentioned in Secs. 1.42, 1.43,
or 1.47 who is applying for a patent in place of the inventor.
(c) Any person authorized by the applicant may file an application
for patent on behalf of the inventor or inventors, but an oath or
declaration for the application (Sec. 1.63) can only be made in
accordance with Sec. 1.64.
(d) A showing may be required from the person filing the application
that the filing was authorized where such authorization comes into
question.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 62
FR 53184, Oct. 10, 1997]
Sec. 1.42 When the inventor is dead.
In case of the death of the inventor, the legal representative
(executor, administrator, etc.) of the deceased inventor may make the
necessary oath or declaration, and apply for and obtain the patent.
Where the inventor dies during the time intervening between the filing
of the application and the granting of a patent thereon, the letters
patent may be issued to the
[[Page 32]]
legal representative upon proper intervention.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2709, Jan. 20, 1983]
Sec. 1.43 When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally incapacitated,
the legal representative (guardian, conservator, etc.) of such inventor
may make the necessary oath or declaration, and apply for and obtain the
patent.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2709, Jan. 20, 1983]
Sec. 1.44 Proof of authority.
In the cases mentioned in Secs. 1.42 and 1.43, proof of the power or
authority of the legal representative must be recorded in the Patent and
Trademark Office or filed in the application before the grant of a
patent.
(35 U.S.C. 6, 111, 116, 117, 118)
Sec. 1.45 Joint inventors.
(a) Joint inventors must apply for a patent jointly and each must
make the required oath or declaration: neither of them alone, nor less
than the entire number, can apply for a patent for an invention invented
by them jointly, except as provided in Sec. 1.47.
(b) Inventors may apply for a patent jointly even though
(1) They did not physically work together or at the same time,
(2) Each inventor did not make the same type or amount of
contribution, or
(3) Each inventor did not make a contribution to the subject matter
of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application,
each named inventor must have made a contribution, individually or
jointly, to the subject matter of at least one claim of the application
and the application will be considered to be a joint application under
35 U.S.C. 116. If multiple inventors are named in a provisional
application, each named inventor must have made a contribution,
individually or jointly, to the subject matter disclosed in the
provisional application and the provisional application will be
considered to be a joint application under 35 U.S.C. 116.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2709, Jan. 20, 1983, as amended at 50 FR 9379, Mar. 7, 1985; 60
FR 20222, Apr. 25, 1995]
Sec. 1.46 Assigned inventions and patents.
In case the whole or a part interest in the invention or in the
patent to be issued is assigned, the application must still be made or
authorized to be made, and an oath or declaration signed, by the
inventor or one of the persons mentioned in Sec. 1.42, 1.43, or 1.47.
However, the patent may be issued to the assignee or jointly to the
inventor and the assignee as provided in Sec. 3.81.
(35 U.S.C. 6, Pub. L. 97-247)
[57 FR 29642, July 6, 1992]
Sec. 1.47 Filing when an inventor refuses to sign or cannot be reached.
(a) If a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, the application may
be made by the other inventor on behalf of himself or herself and the
nonsigning inventor. The oath or declaration in such an application must
be accompanied by a petition including proof of the pertinent facts, the
fee set forth in Sec. 1.17(i) and the last known address of the
nonsigning inventor. The Patent and Trademark Office shall, except in a
continued prosecution application under Sec. 1.53(d), forward notice of
the filing of the application to the nonsigning inventor at said address
and publish notice of the filing of the application in the Official
Gazette. The nonsigning inventor may subsequently join in the
application on filing an oath or declaration complying with Sec. 1.63.
(b) Whenever all of the inventors refuse to execute an application
for patent, or cannot be found or reached after diligent effort, a
person to whom an inventor has assigned or agreed in writing to assign
the invention or who otherwise shows sufficient proprietary interest in
the matter justifying such action may make application for patent on
behalf of and as agent for all the inventors. The oath or declaration in
such an application must be accompanied by a petition including proof of
[[Page 33]]
the pertinent facts, a showing that such action is necessary to preserve
the rights of the parties or to prevent irreparable damage, the fee set
forth in Sec. 1.17(i), and the last known address of all of the
inventors. The Office shall, except in a continued prosecution
application under Sec. 1.53(d), forward notice of the filing of the
application to all of the inventors at the addresses stated in the
application and publish notice of the filing of the application in the
Official Gazette. An inventor may subsequently join in the application
on filing an oath or declaration complying with Sec. 1.63.
[62 FR 53184, Oct. 10, 1997]
Sec. 1.48 Correction of inventorship in a patent application, other than a reissue application.
(a) If the inventive entity is set forth in error in an executed
Sec. 1.63 oath or declaration in an application, other than a reissue
application, and such error arose without any deceptive intention on the
part of the person named as an inventor in error or on the part of the
person who through error was not named as an inventor, the application
may be amended to name only the actual inventor or inventors. When the
application is involved in an interference, the amendment must comply
with the requirements of this section and must be accompanied by a
motion under Sec. 1.634. Such amendment must be accompanied by:
(1) A petition including a statement from each person being added as
an inventor and from each person being deleted as an inventor that the
error in inventorship occurred without deceptive intention on his or her
part;
(2) An oath or declaration by the actual inventor or inventors as
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
(3) The fee set forth in Sec. 1.17(i); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b)).
(b) If the correct inventors are named in a nonprovisional
application, other than a reissue application, and the prosecution of
the application results in the amendment or cancellation of claims so
that fewer than all of the currently named inventors are the actual
inventors of the invention being claimed in the application, an
amendment must be filed deleting the name or names of the person or
persons who are not inventors of the invention being claimed. When the
application is involved in an interference, the amendment must comply
with the requirements of this section and must be accompanied by a
motion under Sec. 1.634. Such amendment must be accompanied by:
(1) A petition including a statement identifying each named inventor
who is being deleted and acknowledging that the inventor's invention is
no longer being claimed in the application; and
(2) The fee set forth in Sec. 1.17(i).
(c) If a nonprovisional application, other than a reissue
application, discloses unclaimed subject matter by an inventor or
inventors not named in the application, the application may be amended
to add claims to the subject matter and name the correct inventors for
the application. When the application is involved in an interference,
the amendment must comply with the requirements of this section and must
be accompanied by a motion under Sec. 1.634. Such amendment must be
accompanied by:
(1) A petition including a statement from each person being added as
an inventor that the amendment is necessitated by amendment of the
claims and that the inventorship error occurred without deceptive
intention on his or her part;
(2) An oath or declaration by the actual inventor or inventors as
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or 1.47;
(3) The fee set forth in Sec. 1.17(i); and
(4) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b)).
(d) If the name or names of an inventor or inventors were omitted in
a provisional application through error without any deceptive intention
on the part of the omitted inventor or inventors, the provisional
application may be amended to add the name or names of the omitted
inventor or inventors. Such amendment must be accompanied by:
[[Page 34]]
(1) A petition including a statement that the inventorship error
occurred without deceptive intention on the part of the omitted inventor
or inventors; and
(2) The fee set forth in Sec. 1.17(q).
(e) If a person or persons were named as an inventor or inventors in
a provisional application through error without any deceptive intention
on the part of such person or persons, an amendment may be filed in the
provisional application deleting the name or names of the person or
persons who were erroneously named. Such amendment must be accompanied
by:
(1) A petition including a statement by the person or persons whose
name or names are being deleted that the inventorship error occurred
without deceptive intention on the part of such person or persons;
(2) The fee set forth in Sec. 1.17(q); and
(3) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b)).
(f)(1) If the correct inventor or inventors are not named on filing
a nonprovisional application under Sec. 1.53(b) without an executed oath
or declaration under Sec. 1.63, the later submission of an executed oath
or declaration under Sec. 1.63 during the pendency of the application
will act to correct the earlier identification of inventorship.
(2) If the correct inventor or inventors are not named on filing a
provisional application without a cover sheet under Sec. 1.51(c)(1), the
later submission of a cover sheet under Sec. 1.51(c)(1) during the
pendency of the application will act to correct the earlier
identification of inventorship.
(g) The Office may require such other information as may be deemed
appropriate under the particular circumstances surrounding the
correction of inventorship.
[62 FR 53185, Oct. 10, 1997]
The Application
Sec. 1.51 General requisites of an application.
(a) Applications for patents must be made to the Commissioner of
Patents and Trademarks.
(b) A complete application filed under Sec. 1.53(b) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a
claim or claims, see Secs. 1.71 to 1.77;
(2) An oath or declaration, see Sec. 1.63 and Sec. 1.68;
(3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
(4) The prescribed filing fee, see Sec. 1.16.
(c) A complete provisional application filed under Sec. 1.53(c)
comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see
Sec. 1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if
applicable),
(vi) The docket number used by the person filing the application to
identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government
contract number (if the invention was made by an agency of the U.S.
Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by the first paragraph of 35
U.S.C. 112, see Sec. 1.71;
(3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
(4) The prescribed filing fee, see Sec. 1.16.
(d) Applicants are encouraged to file an information disclosure
statement in nonprovisional applications. See Sec. 1.97 and Sec. 1.98.
No information disclosure statement may be filed in a provisional
application.
[62 FR 53185, Oct. 10, 1997]
Sec. 1.52 Language, paper, writing, margins.
(a) The application, any amendments or corrections thereto, and the
oath or declaration must be in the English language except as provided
for in Sec. 1.69 and paragraph (d) of this section, or be accompanied by
a translation of the application and a translation of any corrections or
amendments into the English language together with a
[[Page 35]]
statement that the translation is accurate. All papers which are to
become a part of the permanent records of the Patent and Trademark
Office must be legibly written either by a typewriter or mechanical
printer in permanent dark ink or its equivalent in portrait orientation
on flexible, strong, smooth, non-shiny, durable, and white paper. All of
the application papers must be 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 reproduction by use of digital imaging and optical
character recognition. If the papers are not of the required quality,
substitute typewritten or mechanically printed papers of suitable
quality will be required. See Sec. 1.125 for filing substitute
typewritten or mechanically printed papers constituting a substitute
specification when required by the Office.
(b) Except for drawings, the application papers (specification,
including claims, abstract, oath or declaration, and papers as provided
for in this part) and also papers subsequently filed, must have each
page plainly written on only one side of a sheet of paper, with the
claim or claims commencing on a separate sheet and the abstract
commencing on a separate sheet. See Secs. 1.72(b) and 1.75(h). The
sheets of paper must be the same size and 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). Each sheet
must include 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),
and no holes should be made in the sheets as submitted. The lines of the
specification, and any amendments to the specification, must be 1\1/2\
or double spaced. 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. See
Sec. 1.84 for drawings.
(c) Any interlineation, erasure, cancellation or other alteration of
the application papers filed should be made on or before the signing of
any accompanying oath or declaration pursuant to Sec. 1.63 referring to
those application papers and should be dated and initialed or signed by
the applicant on the same sheet of paper. Application papers containing
alterations made after the signing of an oath or declaration referring
to those application papers must be supported by a supplemental oath or
declaration under Sec. 1.67(c). After the signing of the oath or
declaration referring to the application papers, amendments may only be
made in the manner provided by Sec. 1.121.
(d) An application may be filed in a language other than English. An
English translation of the non-English-language application, a statement
that the translation is accurate, and the fee set forth in Sec. 1.17(k)
are required to be filed with the application or within such time as may
be set by the Office.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C.
1113, 1123)
[43 FR 20462, May. 11, 1978, as amended at 47 FR 41275, Sept. 17, 1982;
48 FR 2709, Jan. 20, 1983; 49 FR 554, Jan. 4, 1984; 57 FR 2033, Jan. 17,
1992; 61 FR 42803, Aug. 19, 1996; 62 FR 53186, Oct. 10, 1997]
Sec. 1.53 Application number, filing date, and completion of application.
(a) Application number. Any papers received in the Patent and
Trademark Office which purport to be an application for a patent will be
assigned an application number for identification purposes.
(b) Application filing requirements--Nonprovisional application. The
filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this section
or a continued prosecution application under paragraph (d) of this
section, is the date on which a specification as prescribed by 35 U.S.C.
112 containing a description pursuant to Sec. 1.71 and at least one
claim pursuant to Sec. 1.75, and any drawing required by Sec. 1.81(a)
are filed in the Patent and Trademark Office. No new matter may be
introduced into an application after
[[Page 36]]
its filing date. A continuing application, which may be a continuation,
divisional, or continuation-in-part application, may be filed under the
conditions specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a).
(1) A continuation or divisional application that names as inventors
the same or fewer than all of the inventors named in the prior
application may be filed under this paragraph or paragraph (d) of this
section.
(2) A continuation-in-part application (which may disclose and claim
subject matter not disclosed in the prior application) or a continuation
or divisional application naming an inventor not named in the prior
application must be filed under this paragraph.
(c) Application filing requirements--Provisional application. The
filing date of a provisional application is the date on which a
specification as prescribed by the first paragraph of 35 U.S.C. 112, and
any drawing required by Sec. 1.81(a) are filed in the Patent and
Trademark Office. No amendment, other than to make the provisional
application comply with the patent statute and all applicable
regulations, may be made to the provisional application after the filing
date of the provisional application.
(1) A provisional application must also include the cover sheet
required by Sec. 1.51(c)(1) 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,
(i) Provided that a petition requesting the conversion, with the fee
set forth in Sec. 1.17(q), is filed prior to the earliest of:
(A) Abandonment of the application filed under paragraph (b) of this
section;
(B) Payment of the issue fee on the application filed under
paragraph (b) of this section;
(C) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section; or
(D) The filing of a request for a statutory invention registration
under Sec. 1.293 in the application filed under paragraph (b) of this
section.
(ii) The grant of any such petition will not entitle applicant to a
refund of the fees which were properly paid in the application filed
under paragraph (b) of this section.
(3) 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
Sec. 1.78(a)(3) may be made in a design application based on a
provisional application. No request under Sec. 1.293 for a statutory
invention registration may be filed in a provisional application. The
requirements of Secs. 1.821 through 1.825 regarding application
disclosures containing nucleotide and/or amino acid sequences are not
mandatory for provisional applications.
(d) Application filing requirements--Continued prosecution
(nonprovisional) application. (1) A continuation or divisional
application (but not a continuation-in-part) of a prior nonprovisional
application may be filed as a continued prosecution application under
this paragraph, provided that:
(i) The prior nonprovisional application is either:
(A) Complete as defined by Sec. 1.51(b); or
(B) The national stage of an international application in compliance
with 35 U.S.C. 371; and
(ii) The application under this paragraph is filed before the
earliest of:
(A) Payment of the issue fee on the prior application, unless a
petition under Sec. 1.313(b)(5) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the
date on which a request on a separate paper for an application under
this paragraph is filed. An application filed under this paragraph:
[[Page 37]]
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior
application;
(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph,
will utilize the file jacket and contents of the prior application,
including the specification, drawings and oath or declaration from the
prior application, to constitute the new application, and will be
assigned the application number of the prior application for
identification purposes; and
(v) Is a request to expressly abandon the prior application as of
the filing date of the request for an application under this paragraph.
(3) The filing fee for a continued prosecution application filed
under this paragraph is:
(i) The basic filing fee as set forth in Sec. 1.16; and
(ii) Any additional Sec. 1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under Sec. 1.116 unentered in the prior application which
applicant has requested to be entered in the continued prosecution
application.
(4) An application filed under this paragraph may be filed by fewer
than all the inventors named in the prior application, provided that the
request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor in
an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under this
paragraph was filed, except by way of a petition under Sec. 1.48.
(5) Any new change must be made in the form of an amendment to the
prior application as it existed prior to the filing of an application
under this paragraph. No amendment in an application under this
paragraph (a continued prosecution application) may introduce new matter
or matter that would have been new matter in the prior application. Any
new specification filed with the request for an application under this
paragraph will not be considered part of the original application
papers, but will be treated as a substitute specification in accordance
with Sec. 1.125.
(6) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidentiality by
the applicant under 35 U.S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of Sec. 1.14 to access to,
copies of, or information concerning either the prior application or any
continuing application filed under the provisions of this paragraph, may
be given similar access to, copies of, or similar information concerning
the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the
specific reference required by 35 U.S.C. 120 to every application
assigned the application number identified in such request. No amendment
in an application under this paragraph may delete this specific
reference to any prior application.
(8) In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked ``Box CPA.'' Requests
for an application under this paragraph filed by facsimile transmission
should be clearly marked ``Box CPA.''
(e) Failure to meet filing date requirements. (1) If an application
deposited under paragraph (b), (c), or (d) of this section does not meet
the requirements of such paragraph to be entitled to a filing date,
applicant will be so notified, if a correspondence address has
[[Page 38]]
been provided, and given a time period within which to correct the
filing error.
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph. Any petition under this
paragraph must be accompanied by the fee set forth in Sec. 1.17(i) in an
application filed under paragraphs (b) or (d) of this section, and the
fee set forth in Sec. 1.17(q) in an application filed under paragraph
(c) of this section. In the absence of a timely (Sec. 1.181(f)) petition
pursuant to this paragraph, the filing date of an application in which
the applicant was notified of a filing error pursuant to paragraph
(e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to
paragraph (e)(1) of this section, but fails to correct the filing error
within the given time period or otherwise timely (Sec. 1.181(f)) take
action pursuant to this paragraph, proceedings in the application will
be considered terminated. Where proceedings in an application are
terminated pursuant to this paragraph, the application may be disposed
of, and any filing fees, less the handling fee set forth in
Sec. 1.21(n), will be refunded.
(f) Completion of application subsequent to filing--Nonprovisional
(including continued prosecution) application. If an application which
has been accorded a filing date pursuant to paragraph (b) of this
section, including a continuation, divisional, or continuation-in-part
application, does not include the appropriate filing fee or an oath or
declaration by the applicant pursuant to Sec. 1.63 or Sec. 1.175, or, if
an application which has been accorded a filing date pursuant to
paragraph (d) of this section does not include the appropriate filing
fee, applicant will be so notified, if a correspondence address has been
provided, and given a period of time within which to file the fee, oath
or declaration, and the surcharge as set forth in Sec. 1.16(e) in order
to prevent abandonment of the application. See Sec. 1.63(d) concerning
the submission of a copy of the oath or declaration from the prior
application for a continuation or divisional application. If the
required filing fee is not timely paid, or if the processing and
retention fee set forth in Sec. 1.21(l) is not paid within one year of
the date of mailing of the notification required by this paragraph, the
application may be disposed of. The notification pursuant to this
paragraph may be made simultaneously with any notification pursuant to
paragraph (e) of this section. If no correspondence address is included
in the application, applicant has two months from the filing date to
file the basic filing fee, the oath or declaration in an application
under paragraph (b) of this section, and the surcharge as set forth in
Sec. 1.16(e) in order to prevent abandonment of the application; or, if
no basic filing fee has been paid, one year from the filing date to pay
the processing and retention fee set forth in Sec. 1.21(l) to prevent
disposal of the application.
(g) Completion of application subsequent to filing--Provisional
application. If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the appropriate filing fee or the cover sheet required by
Sec. 1.51(c)(1), applicant will be so notified, if a correspondence
address has been provided, and given a period of time within which to
file the fee, cover sheet, and the surcharge as set forth in
Sec. 1.16(l) in order to prevent abandonment of the application. If the
required filing fee is not timely paid, the application may be disposed
of. The notification pursuant to this paragraph may be made
simultaneously with any notification pursuant to paragraph (e) of this
section. If no correspondence address is included in the application,
applicant has two months from the filing date to file the basic filing
fee, cover sheet, and the surcharge as set forth in Sec. 1.16(l) in
order to prevent abandonment of the application.
(h) Subsequent treatment of application--Nonprovisional (including
continued prosecution) application. An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying
[[Page 39]]
with the rules relating thereto, are received, except that certain minor
informalities may be waived subject to subsequent correction whenever
required.
(i) Subsequent treatment of application--Provisional application. A
provisional application for a patent filed under paragraph (c) of this
section will not be placed on the files for examination and will become
abandoned no later than twelve months after its filing date pursuant to
35 U.S.C. 111(b)(1).
(j) Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3), except as provided in 35 U.S.C. 102(e).
[62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998]
Sec. 1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be
deposited in the Office together; otherwise, a letter must accompany
each part, accurately and clearly connecting it with the other parts of
the application. See Sec. 1.53 (f) and (g) with regard to completion of
an application.
(b) Applicant will be informed of the application number and filing
date by a filing receipt, unless the application is an application filed
under Sec. 1.53(d).
[62 FR 53188, Oct. 10, 1997]
Sec. 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the
benefit of the filing date of one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119 (a) through (d) and 172.
The claim to priority need be in no special form and may be made by the
attorney or agent if the foreign application is referred to in the oath
or declaration as required by Sec. 1.63. The claim for priority and the
certified copy of the foreign application specified in 35 U.S.C. 119(b)
must be filed in the case of an interference (Sec. 1.630), when
necessary to overcome the date of a reference relied upon by the
examiner, when specifically required by the examiner, and in all other
situations, before the patent is granted. If the claim for priority or
the certified copy of the foreign application is filed after the date
the issue fee is paid, it must be accompanied by a petition requesting
entry and by the fee set forth in Sec. 1.17(i). If the certified copy is
not in the English language, a translation need not be filed except in
the case of interference; or when necessary to overcome the date of a
reference relied upon by the examiner; or when specifically required by
the examiner, in which event an English language translation must be
filed together with a statement that the translation of the certified
copy is accurate.
(b) An applicant in a nonprovisional application may under certain
circumstances claim priority on the basis of one or more applications
for an inventor's certificate in a country granting both inventor's
certificates and patents. To claim the right of priority on the basis of
an application for an inventor's certificate in such a country under 35
U.S.C. 119(d), the applicant when submitting a claim for such right as
specified in paragraph (a) of this section, shall include an affidavit
or declaration. The affidavit or declaration must include a specific
statement that, upon an investigation, he or she is satisfied that to
the best of his or her knowledge, the applicant, when filing the
application for the inventor's certificate, had the option to file an
application for either a patent or an inventor's certificate as to the
subject matter of the identified claim or claims forming the basis for
the claim of priority.
[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997]
Sec. 1.56 Duty to disclose information material to patentability.
(a) A patent by its very nature is affected with a public interest.
The public interest is best served, and the most effective patent
examination occurs when, at the time an application is being examined,
the Office is aware of and evaluates the teachings of all information
material to patentability. Each individual associated with the filing
and prosecution of a patent application has a duty of candor and good
faith in dealing with the Office, which includes a duty to disclose to
the Office
[[Page 40]]
all information known to that individual to be material to patentability
as defined in this section. The duty to disclose information exists with
respect to each pending claim until the claim is cancelled or withdrawn
from consideration, or the application becomes abandoned. Information
material to the patentability of a claim that is cancelled or withdrawn
from consideration need not be submitted if the information is not
material to the patentability of any claim remaining under consideration
in the application. There is no duty to submit information which is not
material to the patentability of any existing claim. The duty to
disclose all information known to be material to patentability is deemed
to be satisfied if all information known to be material to patentability
of any claim issued in a patent was cited by the Office or submitted to
the Office in the manner prescribed by Secs. 1.97(b)-(d) and 1.98.
However, no patent will be granted on an application in connection with
which fraud on the Office was practiced or attempted or the duty of
disclosure was violated through bad faith or intentional misconduct. The
Office encourages applicants to carefully examine:
(1) Prior art cited in search reports of a foreign patent office in
a counterpart application, and
(2) The closest information over which individuals associated with
the filing or prosecution of a patent application believe any pending
claim patentably defines, to make sure that any material information
contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability
when it is not cumulative to information already of record or being made
of record in the application, and
(1) It establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant
takes in:
(i) Opposing an argument of unpatentability relied on by the Office,
or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the
information compels a conclusion that a claim is unpatentable under the
preponderance of evidence, burden-of-proof standard, giving each term in
the claim its broadest reasonable construction consistent with the
specification, and before any consideration is given to evidence which
may be submitted in an attempt to establish a contrary conclusion of
patentability.
(c) Individuals associated with the filing or prosecution of a
patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the
application; and
(3) Every other person who is substantively involved in the
preparation or prosecution of the application and who is associated with
the inventor, with the assignee or with anyone to whom there is an
obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may
comply with this section by disclosing information to the attorney,
agent, or inventor.
[57 FR 2034, Jan. 17, 1992]
Sec. 1.57 [Reserved]
Sec. 1.58 Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical
and mathematical formulas, but shall not contain drawings or flow
diagrams. The description portion of the specification may contain
tables; claims may contain tables either if necessary to conform to 35
U.S.C. 112 or if otherwise found to be desirable.
(b) [Reserved]
(c) Chemical and mathematical formulae and tables must be presented
in compliance with Sec. 1.52 (a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape orientation
if they cannot be presented satisfactorily in a portrait orientation.
Typewritten characters used in such formulae and tables must be chosen
from a block (nonscript) type
[[Page 41]]
font or lettering style having capital letters which are at least 0.21
cm. (0.08 inch) high (e.g., elite type). A space at least 0.64 cm. (\1/
4\ inch) high should be provided between complex formulae and tables and
the text. Tables should have the lines and columns of data closely
spaced to conserve space, consistent with a high degree of legibility.
(Pub. L. 94-131, 89 Stat. 685)
[43 FR 20463, May 11, 1978, as amended at 61 FR 42803, Aug. 19, 1996]
Sec. 1.59 Expungement of information or copy of papers in application file.
(a)(1) Information in an application will not be expunged and
returned, except as provided in paragraph (b) of this section. See
Sec. 1.618 for return of unauthorized and improper papers in
interferences.
(2) Information forming part of the original disclosure (i.e.,
written specification including the claims, drawings, and any
preliminary amendment specifically incorporated into an executed oath or
declaration under Secs. 1.63 and 1.175) will not be expunged from the
application file.
(b) Information, other than what is excluded by paragraph (a)(2) of
this section, may be requested to be expunged and returned to applicant
upon petition under this paragraph and payment of the petition fee set
forth in Sec. 1.17(i). Any petition to expunge and return information
from an application must establish to the satisfaction of the
Commissioner that the return of the information is appropriate.
(c) Upon request by an applicant and payment of the fee specified in
Sec. 1.19(b), the Office will furnish copies of an application, unless
the application has been disposed of (see Sec. 1.53 (e), (f) and (g)).
The Office cannot provide or certify copies of an application that has
been disposed of.
[62 FR 53188, Oct. 10, 1997]
Secs. 1.60--1.62 [Reserved]
Oath or Declaration
Sec. 1.63 Oath or declaration.
(a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of
an application must:
(1) Be executed in accordance with either Sec. 1.66 or Sec. 1.68;
(2) Identify the specification to which it is directed;
(3) Identify each inventor by: full name, including the family name,
and at least one given name without abbreviation together with any other
given name or initial, and the residence, post office address and
country of citizenship of each inventor; and
(4) State whether the inventor is a sole or joint inventor of the
invention claimed.
(b) In addition to meeting the requirements of paragraph (a), the
oath or declaration must state that the person making the oath or
declaration:
(1) Has reviewed and understands the contents of the specification,
including the claims, as amended by any amendment specifically referred
to in the oath or declaration;
(2) Believes the named inventor or inventors to be the original and
first inventor or inventors of the subject matter which is claimed and
for which a patent is sought; and
(3) Acknowledges the duty to disclose to the Office all information
known to the person to be material to patentability as defined in
Sec. 1.56.
(c) In addition to meeting the requirements of paragraphs (a) and
(b) of this section, the oath or declaration in any application in which
a claim for foreign priority is made pursuant to Sec. 1.55 must identify
the foreign application for patent or inventor's certificate on which
priority is claimed, and any foreign application having a filing date
before that of the application on which priority is claimed, by
specifying the application number, country, day, month and year of its
filing.
(d)(1) A newly executed oath or declaration is not required under
Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional
application, provided that:
(i) The prior nonprovisional application contained an oath or
declaration as prescribed by paragraphs (a) through (c) of this section;
(ii) The continuation or divisional application was filed by all or
by fewer than all of the inventors named in the prior application;
[[Page 42]]
(iii) The specification and drawings filed in the continuation or
divisional application contain no matter that would have been new matter
in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior
application, showing the signature or an indication thereon that it was
signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under
this paragraph for a continuation or divisional application must be
accompanied by a statement requesting the deletion of the name or names
of the person or persons who are not inventors in the continuation or
divisional application.
(3) Where the executed oath or declaration of which a copy is
submitted for a continuation or divisional application was originally
filed in a prior application accorded status under Sec. 1.47, the copy
of the executed oath or declaration for such prior application must be
accompanied by:
(i) A copy of the decision granting a petition to accord Sec. 1.47
status to the prior application, unless all inventors or legal
representatives have filed an oath or declaration to join in an
application accorded status under Sec. 1.47 of which the continuation or
divisional application claims a benefit under 35 U.S.C. 120, 121, or
365(c); and
(ii) If one or more inventor(s) or legal representative(s) who
refused to join in the prior application or could not be found or
reached has subsequently joined in the prior application or another
application of which the continuation or divisional application claims a
benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently
executed oath(s) or declaration(s) filed by the inventor or legal
representative to join in the application.
(4) Where the power of attorney (or authorization of agent) or
correspondence address was changed during the prosecution of the prior
application, the change in power of attorney (or authorization of agent)
or correspondence address must be identified in the continuation or
divisional application. Otherwise, the Office may not recognize in the
continuation or divisional application the change of power of attorney
(or authorization of agent) or correspondence address during the
prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a
continuation or divisional application naming an inventor not named in
the prior application.
(e) A newly executed oath or declaration must be filed in any
continuation-in-part application, which application may name all, more,
or fewer than all of the inventors named in the prior application. The
oath or declaration in any continuation-in-part application must also
state that the person making the oath or declaration acknowledges the
duty to disclose to the Office all information known to the person to be
material to patentability as defined in Sec. 1.56 which became available
between the filing date of the prior application and the national or PCT
international filing date of the continuation-in-part application.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2711, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 57
FR 2034, Jan. 17, 1992; 60 FR 20225, Apr. 25, 1995; 62 FR 53188, Oct.
10, 1997]
Sec. 1.64 Person making oath or declaration.
(a) The oath or declaration must be made by all of the actual
inventors except as provided for in Sec. 1.42, 1.43, or 1.47.
(b) If the person making the oath or declaration is not the inventor
(Sec. 1.42, 1.43, or 1.47), the oath or declaration shall state the
relationship of the person to the inventor and, upon information and
belief, the facts which the inventor is required to state.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2711, Jan. 20, 1983]
Sec. 1.66 Officers authorized to administer oaths.
(a) The oath or affirmation may be made before any person within the
United States authorized by law to administer oaths. An oath made in a
foreign country may be made before any diplomatic or consular officer of
the United States authorized to administer oaths, or before any officer
having an
[[Page 43]]
official seal and authorized to administer oaths in the foreign country
in which the applicant may be, whose authority shall be proved by a
certificate of a diplomatic or consular officer of the United States, or
by an apostille of an official designated by a foreign country which, by
treaty or convention, accords like effect to apostilles of designated
officials in the United States. The oath shall be attested in all cases
in this and other countries, by the proper official seal of the officer
before whom the oath or affirmation is made. Such oath or affirmation
shall be valid as to execution if it complies with the laws of the State
or country where made. When the person before whom the oath or
affirmation is made in this country is not provided with a seal, his
official character shall be established by competent evidence, as by a
certificate from a clerk of a court of record or other proper officer
having a seal.
(b) When the oath is taken before an officer in a country foreign to
the United States, any accompanying application papers, except the
drawings, must be attached together with the oath and a ribbon passed
one or more times through all the sheets of the application, except the
drawings, and the ends of said ribbon brought together under the seal
before the latter is affixed and impressed, or each sheet must be
impressed with the official seal of the officer before whom the oath is
taken. If the papers as filed are not properly ribboned or each sheet
impressed with the seal, the case will be accepted for examination, but
before it is allowed, duplicate papers, prepared in compliance with the
foregoing sentence, must be filed.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41275, Sept. 17, 1982]
Sec. 1.67 Supplemental oath or declaration.
(a) A supplemental oath or declaration meeting the requirements of
Sec. 1.63 may be required to be filed to correct any deficiencies or
inaccuracies present in an earlier filed oath or declaration.
(b) A supplemental oath or declaration meeting the requirements of
Sec. 1.63 must be filed when a claim is presented for matter originally
shown or described but not substantially embraced in the statement of
invention or claims originally presented or when an oath or declaration
submitted in accordance with Sec. 1.53(f) after the filing of the
specification and any required drawings specifically and improperly
refers to an amendment which includes new matter. No new matter may be
introduced into a nonprovisional application after its filing date even
if a supplemental oath or declaration is filed. In proper situations,
the oath or declaration here required may be made on information and
belief by an applicant other than the inventor.
(c) A supplemental oath or declaration meeting the requirements of
Sec. 1.63 must also be filed if the application was altered after the
oath or declaration was signed or if the oath or declaration was signed:
(1) In blank;
(2) Without review thereof by the person making the oath or
declaration; or
(3) Without review of the specification, including the claims, as
required by Sec. 1.63(b)(1).
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2711, Jan. 20, 1983, as amended at 57 FR 2034, Jan. 17, 1992; 60
FR 20225, Apr. 25, 1995; 62 FR 53189, Oct. 10, 1997]
Sec. 1.68 Declaration in lieu of oath.
Any document to be filed in the Patent and Trademark Office and
which is required by any law, rule, or other regulation to be under oath
may be subscribed to by a written declaration. Such declaration may be
used in lieu of the oath otherwise required, if, and only if, the
declarant is on the same document, warned that willful false statements
and the like are punishable by fine or imprisonment, or both (18 U.S.C.
1001) and may jeopardize the validity of the application or any patent
issuing thereon. The declarant must set forth in the body of the
declaration that all statements made of the declarant's own knowledge
are true and that all statements made on information and belief are
believed to be true.
[49 FR 48452, Dec. 12, 1984]
[[Page 44]]
Sec. 1.69 Foreign language oaths and declarations.
(a) Whenever an individual making an oath or declaration cannot
understand English, the oath or declaration must be in a language that
such individual can understand and shall state that such individual
understands the content of any documents to which the oath or
declaration relates.
(b) Unless the text of any oath or declaration in a language other
than English is a form provided or approved by the Patent and Trademark
Office, it must be accompanied by an English translation together with a
statement that the translation is accurate, except that in the case of
an oath or declaration filed under Sec. 1.63, the translation may be
filed in the Office no later than two months from the date applicant is
notified to file the translation.
(35 U.S.C. 6, Pub. L. 97-247)
[42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62
FR 53189, Oct. 10, 1997]
Sec. 1.70 [Reserved]
Specification
Authority: Secs. 1.71 to 1.79 also issued under 35 U.S.C. 112.
Sec. 1.71 Detailed description and specification of the invention.
(a) The specification must include a written description of the
invention or discovery and of the manner and process of making and using
the same, and is required to be in such full, clear, concise, and exact
terms as to enable any person skilled in the art or science to which the
invention or discovery appertains, or with which it is most nearly
connected, to make and use the same.
(b) The specification must set forth the precise invention for which
a patent is solicited, in such manner as to distinguish it from other
inventions and from what is old. It must describe completely a specific
embodiment of the process, machine, manufacture, composition of matter
or improvement invented, and must explain the mode of operation or
principle whenever applicable. The best mode contemplated by the
inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must
particularly point out the part or parts of the process, machine,
manufacture, or composition of matter to which the improvement relates,
and the description should be confined to the specific improvement and
to such parts as necessarily cooperate with it or as may be necessary to
a complete understanding or description of it.
(d) A copyright or mask work notice may be placed in a design or
utility patent application adjacent to copyright and mask work material
contained therein. The notice may appear at any appropriate portion of
the patent application disclosure. For notices in drawings, see
Sec. 1.84(s). The content of the notice must be limited to only those
elements provided for by law. For example, ``1983
John Doe'' (17 U.S.C. 401) and `` *M* John Doe'' (17 U.S.C. 909) would
be properly limited and, under current statutes, legally sufficient
notices of copyright and mask work, respectively. Inclusion of a
copyright or mask work notice will be permitted only if the
authorization language set forth in paragraph (e) of this section is
included at the beginning (preferably as the first paragraph) of the
specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains
material which is subject to (copyright or mask work) protection. The
(copyright or mask work) owner has no objection to the facsimile
reproduction by anyone of the patent document or the patent disclosure,
as it appears in the Patent and Trademark Office patent file or records,
but otherwise reserves all (copyright or mask work) rights whatsoever.
[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988;
58 FR 38723, July 20, 1993]
Sec. 1.72 Title and abstract.
(a) The title of the invention, which should be as short and
specific as possible, should appear as a heading on the first page of
the specification, if it does not otherwise appear at the beginning of
the application.
(b) A brief abstract of the technical disclosure in the
specification must
[[Page 45]]
commence on a separate sheet, preferably following the claims, under the
heading ``Abstract of the Disclosure.'' The purpose of the abstract is
to enable the Patent and Trademark Office and the public generally to
determine quickly from a cursory inspection the nature and gist of the
technical disclosure. The abstract shall not be used for interpreting
the scope of the claims.
(Pub. L. 94-131, 89 Stat. 685)
[31 FR 12922, Oct. 4, 1966, as amended at 43 FR 20464, May 11, 1978; 61
FR 42803, Aug. 19, 1996]
Sec. 1.73 Summary of the invention.
A brief summary of the invention indicating its nature and
substance, which may include a statement of the object of the invention,
should precede the detailed description. Such summary should, when set
forth, be commensurate with the invention as claimed and any object
recited should be that of the invention as claimed.
Sec. 1.74 Reference to drawings.
When there are drawings, there shall be a brief description of the
several views of the drawings and the detailed description of the
invention shall refer to the different views by specifying the numbers
of the figures and to the different parts by use of reference letters or
numerals (preferably the latter).
Sec. 1.75 Claim(s).
(a) The specification must conclude with a claim particularly
pointing out and distinctly claiming the subject matter which the
applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ
substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring
back to and further limiting another claim or claims in the same
application. Any dependent claim which refers to more than one other
claim (``multiple dependent claim'') shall refer to such other claims in
the alternative only. A multiple dependent claim shall not serve as a
basis for any other multiple dependent claim. For fee calculation
purposes under Sec. 1.16, a multiple dependent claim will be considered
to be that number of claims to which direct reference is made therein.
For fee calculation purposes, also, any claim depending from a multiple
dependent claim will be considered to be that number of claims to which
direct reference is made in that multiple dependent claim. In addition
to the other filing fees, any original application which is filed with,
or is amended to include, multiple dependent claims must have paid
therein the fee set forth in Sec. 1.16(d). Claims in dependent form
shall be construed to include all the limitations of the claim
incorporated by reference into the dependent claim. A multiple dependent
claim shall be construed to incorporate by reference all the limitations
of each of the particular claims in relation to which it is being
considered.
(d)(1) The claim or claims must conform to the invention as set
forth in the remainder of the specification and the terms and phrases
used in the claims must find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may be
ascertainable by reference to the description. (See Sec. 1.58(a).)
(2) See Secs. 1.141 to 1.146 as to claiming different inventions in
one application.
(e) Where the nature of the case admits, as in the case of an
improvement, any independent claim should contain in the following
order:
(1) A preamble comprising a general description of all the elements
or steps of the claimed combination which are conventional or known,
(2) A phrase such as ``wherein the improvement comprises,'' and
(3) Those elements, steps and/or relationships which constitute that
portion of the claimed combination which the applicant considers as the
new or improved portion.
(f) If there are several claims, they shall be numbered
consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number
1, and all dependent claims should be grouped together with the claim or
claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate sheet.
[[Page 46]]
(i) Where a claim sets forth a plurality of elements or steps, each
element or step of the claim should be separated by a line indentation.
(35 U.S.C. 6; 15 U.S.C. 1113, 1126)
[31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37
FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept.
17, 1982; 61 FR 42803, Aug. 19, 1996]
Sec. 1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in
the following order:
(1) Utility Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Title of the invention; or an introductory portion stating the
name, citizenship, and residence of the applicant, and the title of the
invention.
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or development.
(6) Reference to a ``Microfiche appendix.'' (See Sec. 1.96 (c)). The
total number of microfiche and total number of frames should be
specified.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) Claim or claims.
(12) Abstract of the Disclosure.
(13) Drawings.
(14) Executed oath or declaration.
(15) Sequence Listing (See Secs. 1.821 through 1.825).
(b) The elements set forth in paragraphs (a)(3) through (a)(5),
(a)(7) through (a)(12) and (a)(15) of this section should appear in
upper case, without underlining or bold type, as section headings. If no
text follows the section heading, the phrase ``Not Applicable'' should
follow the section heading.
[61 FR 42803, Aug. 19, 1996]
Sec. 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a)(1) A nonprovisional application may claim an invention disclosed
in one or more prior filed copending nonprovisional applications or
copending international applications designating the United States of
America. In order for a nonprovisional application to claim the benefit
of a prior filed copending nonprovisional application or copending
international application designating the United States of America, each
prior application must name as an inventor at least one inventor named
in the later filed nonprovisional application and disclose the named
inventor's invention claimed in at least one claim of the later filed
nonprovisional application in the manner provided by the first paragraph
of 35 U.S.C. 112. In addition, each prior application must be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) Complete as set forth in Sec. 1.51(b); or
(iii) Entitled to a filing date as set forth in Sec. 1.53(b) or
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16; or
(iv) Entitled to a filing date as set forth in Sec. 1.53(b) and have
paid therein the processing and retention fee set forth in Sec. 1.21(l)
within the time period set forth in Sec. 1.53(f).
(2) Except for a continued prosecution application filed under
Sec. 1.53(d), any nonprovisional application claiming the benefit of one
or more prior filed copending nonprovisional applications or
international applications designating the United States of America must
contain or be amended to contain in the first sentence of the
specification following the title a reference to each such prior
application, identifying it by application number (consisting of the
series code and serial number) or international application number and
international filing date and indicating the relationship of the
applications. 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 application. The identification of an application by application
number under this section is the specific reference required by 35
U.S.C. 120 to every application assigned that application number. Cross-
references to other related applications may be made when appropriate
(see Sec. 1.14(a)).
[[Page 47]]
(3) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed copending
provisional applications. Since a provisional application can be pending
for no more than twelve months, the last day of pendency may occur on a
Saturday, Sunday, or Federal holiday within the District of Columbia
which for copendency would require the nonprovisional application to be
filed on or prior to the Saturday, Sunday, or Federal holiday. In order
for a nonprovisional application to claim the benefit of one or more
prior filed copending provisional applications, each prior provisional
application must name as an inventor at least one inventor named in the
later filed nonprovisional application and disclose the named inventor's
invention claimed in at least one claim of the later filed
nonprovisional application in the manner provided by the first paragraph
of 35 U.S.C. 112. In addition, each prior provisional application must
be:
(i) Complete as set forth in Sec. 1.51(c); or
(ii) Entitled to a filing date as set forth in Sec. 1.53(c) and
include the basic filing fee set forth in Sec. 1.16(k).
(4) Any nonprovisional application claiming the benefit of one or
more prior filed copending provisional applications must contain or be
amended to contain in the first sentence of the specification following
the title a reference to each such prior provisional application,
identifying it as a provisional application, and including the
provisional application number (consisting of series code and serial
number).
(b) Where two or more applications filed by the same applicant
contain conflicting claims, elimination of such claims from all but one
application may be required in the absence of good and sufficient reason
for their retention during pendency in more than one application.
(c) Where an application or a patent under reexamination and at
least one other application naming different inventors are owned by the
same party and contain conflicting claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the assignee may be called upon to state
whether the claimed inventions were commonly owned or subject to an
obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
[36 FR 7312, Apr. 17, 1971, as amended at 50 FR 9380, Mar. 7, 1985; 50
FR 11366, Mar. 21, 1985; 58 FR 54509, Oct. 22, 1993; 60 FR 20225, Apr.
25, 1995; 61 FR 42804, Aug. 19, 1996; 62 FR 53189, Oct. 10, 1997]
Sec. 1.79 Reservation clauses not permitted.
A reservation for a future application of subject matter disclosed
but not claimed in a pending application will not be permitted in the
pending application, but an application disclosing unclaimed subject
matter may contain a reference to a later filed application of the same
applicant or owned by a common assignee disclosing and claiming that
subject matter.
The Drawings
Authority: Secs. 1.81 to 1.88 also issued under 35 U.S.C. 113.
Sec. 1.81 Drawings required in patent application.
(a) The applicant for a patent is required to furnish a drawing of
his or her invention where necessary for the understanding of the
subject matter sought to be patented; this drawing, or a high quality
copy thereof, must be filed with the application. Since corrections are
the responsibility of the applicant, the original drawing(s) should be
retained by the applicant for any necessary future correction.
(b) Drawings may include illustrations which facilitate an
understanding of the invention (for example, flow sheets in cases of
processes, and diagrammatic views).
[[Page 48]]
(c) Whenever the nature of the subject matter sought to be patented
admits of illustration by a drawing without its being necessary for the
understanding of the subject matter and the applicant has not furnished
such a drawing, the examiner will require its submission within a time
period of not less than two months from the date of the sending of a
notice thereof.
(d) Drawings submitted after the filing date of the application may
not be used to overcome any insufficiency of the specification due to
lack of an enabling disclosure or otherwise inadequate disclosure
therein, or to supplement the original disclosure thereof for the
purpose of interpretation of the scope of any claim.
[43 FR 4015, Jan. 31, 1978, as amended at 53 FR 47808, Nov. 28, 1988]
Sec. 1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every
feature of the invention specified in the claims. However, conventional
features disclosed in the description and claims, where their detailed
illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g., a labeled
rectangular box).
(b) When the invention consists of an improvement on an old machine
the drawing must when possible exhibit, in one or more views, the
improved portion itself, disconnected from the old structure, and also
in another view, so much only of the old structure as will suffice to
show the connection of the invention therewith.
(c) Where the drawings in a nonprovisional application do not comply
with the requirements of paragraphs (a) and (b) of this section, the
examiner shall require such additional illustration within a time period
of not less than two months from the date of the sending of a notice
thereof. Such corrections are subject to the requirements of
Sec. 1.81(d).
[31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60
FR 20226, Apr. 25, 1995]
Sec. 1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting
drawings in utility patent applications:
(1) Black ink. Black and white drawings are normally required. India
ink, or its equivalent that secures solid black lines, must be used for
drawings, or
(2) Color. On rare occasions, color drawings may be necessary as the
only practical medium by which to disclose the subject matter sought to
be patented in a utility patent application or the subject matter of a
statutory invention registration. The Patent and Trademark Office will
accept color drawings in utility patent applications and statutory
invention registrations only after granting a petition filed under this
paragraph explaining why the color drawings are necessary. Any such
petition must include the following:
(i) The fee set forth in Sec. 1.17(i);
(ii) Three (3) sets of color drawings; and
(iii) The specification must contain the following language as the
first paragraph in that portion of the specification relating to the
brief description of the drawing:
The file of this patent contains at least one drawing executed in
color. Copies of this patent with color drawing(s) will be provided by
the Patent and Trademark Office upon request and payment of the
necessary fee.
If the language is not in the specification, a proposed amendment to
insert the language must accompany the petition.
(b) Photographs--(1) Black and white. Photographs are not ordinarily
permitted in utility patent applications. However, the Office will
accept photographs in utility patent applications only after the
granting of a petition filed under this paragraph which requests that
photographs be accepted. Any such petition must include the following:
(i) The fee set forth in Sec. 1.17(i); and
(ii) Three (3) sets of photographs. Photographs must either be
developed on double weight photographic paper or be permanently mounted
on bristol board. The photographs must be of sufficient quality so that
all details in the
[[Page 49]]
drawings are reproducible in the printed patent.
(2) Color. Color photographs will be accepted in utility patent
applications if the conditions for accepting color drawings have been
satisfied. See paragraph (a)(2) of this section.
(c) Identification of drawings. Identifying indicia, if provided,
should include the application number or the title of the invention,
inventor's name, docket number (if any), and the name and telephone
number of a person to call if the Office is unable to match the drawings
to the proper application. This information should be placed on the back
of each sheet of drawings a minimum distance of 1.5 cm. (\5/8\ inch)
down from the top of the page. In addition, a reference to the
application number, or, if an application number has not been assigned,
the inventor's name, may be included in the left-hand corner, provided
that the reference appears within 1.5 cm. (\5/8\ inch) from the top of
the sheet.
(d) Graphic forms in drawings. Chemical or mathematical formulae,
tables, and waveforms may be submitted as drawings, and are subject to
the same requirements as drawings. Each chemical or mathematical formula
must be labeled as a separate figure, using brackets when necessary, to
show that information is properly integrated. Each group of waveforms
must be presented as a single figure, using a common vertical axis with
time extending along the horizontal axis. Each individual waveform
discussed in the specification must be identified with a separate letter
designation adjacent to the vertical axis.
(e) Type of paper. Drawings submitted to the Office must be made on
paper which is flexible, strong, white, smooth, non-shiny, and durable.
All sheets must be free from cracks, creases, and folds. Only one side
of the sheet shall be used for the drawing. Each sheet must be
reasonably free from erasures and must be free from alterations,
overwritings, and interlineations. Photographs must either be developed
on double weight photographic paper or be permanently mounted on bristol
board. See paragraph (b) of this section for other requirements for
photographs.
(f) Size of paper. All drawing sheets in an application must be the
same size. One of the shorter sides of the sheet is regarded as its top.
The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).
(g) Margins. The sheets must not contain frames around the sight
(i.e., the usable surface), but should have scan target points (i.e.,
cross-hairs) printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (\5/
8\ inch), and a bottom margin of at least 1.0 cm. (\3/8\ inch), thereby
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm.
by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\
by 11 inch) drawing sheets.
(h) Views. The drawing must contain as many views as necessary to
show the invention. The views may be plan, elevation, section, or
perspective views. Detail views of portions of elements, on a larger
scale if necessary, may also be used. All views of the drawing must be
grouped together and arranged on the sheet(s) without wasting space,
preferably in an upright position, clearly separated from one another,
and must not be included in the sheets containing the specifications,
claims, or abstract. Views must not be connected by projection lines and
must not contain center lines. Waveforms of electrical signals may be
connected by dashed lines to show the relative timing of the waveforms.
(1) Exploded views. Exploded views, with the separated parts
embraced by a bracket, to show the relationship or order of assembly of
various parts are permissible. When an exploded view is shown in a
figure which is on the same sheet as another figure, the exploded view
should be placed in brackets.
(2) Partial views. When necessary, a view of a large machine or
device in its entirety may be broken into partial views on a single
sheet, or extended over several sheets if there is no loss in
[[Page 50]]
facility of understanding the view. Partial views drawn on separate
sheets must always be capable of being linked edge to edge so that no
partial view contains parts of another partial view. A smaller scale
view should be included showing the whole formed by the partial views
and indicating the positions of the parts shown. When a portion of a
view is enlarged for magnification purposes, the view and the enlarged
view must each be labeled as separate views.
(i) Where views on two or more sheets form, in effect, a single
complete view, the views on the several sheets must be so arranged that
the complete figure can be assembled without concealing any part of any
of the views appearing on the various sheets.
(ii) A very long view may be divided into several parts placed one
above the other on a single sheet. However, the relationship between the
different parts must be clear and unambiguous.
(3) Sectional views. The plane upon which a sectional view is taken
should be indicated on the view from which the section is cut by a
broken line. The ends of the broken line should be designated by Arabic
or Roman numerals corresponding to the view number of the sectional
view, and should have arrows to indicate the direction of sight.
Hatching must be used to indicate section portions of an object, and
must be made by regularly spaced oblique parallel lines spaced
sufficiently apart to enable the lines to be distinguished without
difficulty. Hatching should not impede the clear reading of the
reference characters and lead lines. If it is not possible to place
reference characters outside the hatched area, the hatching may be
broken off wherever reference characters are inserted. Hatching must be
at a substantial angle to the surrounding axes or principal lines,
preferably 45 deg.. A cross section must be set out and drawn to show
all of the materials as they are shown in the view from which the cross
section was taken. The parts in cross section must show proper
material(s) by hatching with regularly spaced parallel oblique strokes,
the space between strokes being chosen on the basis of the total area to
be hatched. The various parts of a cross section of the same item should
be hatched in the same manner and should accurately and graphically
indicate the nature of the material(s) that is illustrated in cross
section. The hatching of juxtaposed different elements must be angled in
a different way. In the case of large areas, hatching may be confined to
an edging drawn around the entire inside of the outline of the area to
be hatched. Different types of hatching should have different
conventional meanings as regards the nature of a material seen in cross
section.
(4) Alternate position. A moved position may be shown by a broken
line superimposed upon a suitable view if this can be done without
crowding; otherwise, a separate view must be used for this purpose.
(5) Modified forms. Modified forms of construction must be shown in
separate views.
(i) Arrangement of views. One view must not be placed upon another
or within the outline of another. All views on the same sheet should
stand in the same direction and, if possible, stand so that they can be
read with the sheet held in an upright position. If views wider than the
width of the sheet are necessary for the clearest illustration of the
invention, the sheet may be turned on its side so that the top of the
sheet, with the appropriate top margin to be used as the heading space,
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top
becomes the right side, except for graphs utilizing standard scientific
convention to denote the axis of abscissas (of X) and the axis of
ordinates (of Y).
(j) View for Official Gazette. One of the views should be suitable
for publication in the Official Gazette as the illustration of the
invention.
(k) Scale. (1) The scale to which a drawing is made must be large
enough to show the mechanism without crowding when the drawing is
reduced in size to two-thirds in reproduction. Views of portions of the
mechanism on a larger scale should be used when necessary to show
details clearly. Two or more sheets may be used if one does not give
sufficient room. The number of sheets should be kept to a minimum.
[[Page 51]]
(2) When approved by the examiner, the scale of the drawing may be
graphically represented. Indications such as ``actual size'' or ``scale
\1/2\'' on the drawings, are not permitted, since these lose their
meaning with reproduction in a different format.
(3) Elements of the same view must be in proportion to each other,
unless a difference in proportion is indispensable for the clarity of
the view. Instead of showing elements in different proportion, a
supplementary view may be added giving a larger-scale illustration of
the element of the initial view. The enlarged element shown in the
second view should be surrounded by a finely drawn or ``dot-dash''
circle in the first view indicating its location without obscuring the
view.
(l) Character of lines, numbers, and letters. All drawings must be
made by a process which will give them satisfactory reproduction
characteristics. Every line, number, and letter must be durable, clean,
black (except for color drawings), sufficiently dense and dark, and
uniformly thick and well-defined. The weight of all lines and letters
must be heavy enough to permit adequate reproduction. This requirement
applies to all lines however fine, to shading, and to lines representing
cut surfaces in sectional views. Lines and strokes of different
thicknesses may be used in the same drawing where different thicknesses
have a different meaning.
(m) Shading. The use of shading in views is encouraged if it aids in
understanding the invention and if it does not reduce legibility.
Shading is used to indicate the surface or shape of spherical,
cylindrical, and conical elements of an object. Flat parts may also be
lightly shaded. Such shading is preferred in the case of parts shown in
perspective, but not for cross sections. See paragraph (h)(3) of this
section. Spaced lines for shading are preferred. These lines must be
thin, as few in number as practicable, and they must contrast with the
rest of the drawings. As a substitute for shading, heavy lines on the
shade side of objects can be used except where they superimpose on each
other or obscure reference characters. Light should come from the upper
left corner at an angle of 45 deg.. Surface delineations should
preferably be shown by proper shading. Solid black shading areas are not
permitted, except when used to represent bar graphs or color.
(n) Symbols. Graphical drawing symbols may be used for conventional
elements when appropriate. The elements for which such symbols and
labeled representations are used must be adequately identified in the
specification. Known devices should be illustrated by symbols which have
a universally recognized conventional meaning and are generally accepted
in the art. Other symbols which are not universally recognized may be
used, subject to approval by the Office, if they are not likely to be
confused with existing conventional symbols, and if they are readily
identifiable.
(o) Legends. Suitable descriptive legends may be used, or may be
required by the Examiner, where necessary for understanding of the
drawing, subject to approval by the Office. They should contain as few
words as possible.
(p) Numbers, letters, and reference characters. (1) Reference
characters (numerals are preferred), sheet numbers, and view numbers
must be plain and legible, and must not be used in association with
brackets or inverted commas, or enclosed within outlines, e.g.,
encircled. They must be oriented in the same direction as the view so as
to avoid having to rotate the sheet. Reference characters should be
arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters, except where
another alphabet is customarily used, such as the Greek alphabet to
indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least
.32 cm. (\1/8\ inch) in height. They should not be placed in the drawing
so as to interfere with its comprehension. Therefore, they should not
cross or mingle with the lines. They should not be placed upon hatched
or shaded surfaces. When necessary, such as indicating a surface or
cross section, a reference character may be underlined and a blank space
may be left in the hatching or shading where the character occurs so
that it appears distinct.
[[Page 52]]
(4) The same part of an invention appearing in more than one view of
the drawing must always be designated by the same reference character,
and the same reference character must never be used to designate
different parts.
(5) Reference characters not mentioned in the description shall not
appear in the drawings. Reference characters mentioned in the
description must appear in the drawings.
(q) Lead lines. Lead lines are those lines between the reference
characters and the details referred to. Such lines may be straight or
curved and should be as short as possible. They must originate in the
immediate proximity of the reference character and extend to the feature
indicated. Lead lines must not cross each other. Lead lines are required
for each reference character except for those which indicate the surface
or cross section on which they are placed. Such a reference character
must be underlined to make it clear that a lead line has not been left
out by mistake. Lead lines must be executed in the same way as lines in
the drawing. See paragraph (l) of this section.
(r) Arrows. Arrows may be used at the ends of the lines, provided
that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire
section towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface
shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice. A copyright or mask work notice
may appear in the drawing, but must be placed within the sight of the
drawing immediately below the figure representing the copyright or mask
work material and be limited to letters having a print size of .32 cm.
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be
limited to only those elements provided for by law. For example,
``1983 John Doe'' (17 U.S.C. 401) and ``*M* John
Doe'' (17 U.S.C. 909) would be properly limited and, under current
statutes, legally sufficient notices of copyright and mask work,
respectively. Inclusion of a copyright or mask work notice will be
permitted only if the authorization language set forth in Sec. 1.71(e)
is included at the beginning (preferably as the first paragraph) of the
specification.
(t) Numbering of sheets of drawings. The sheets of drawings should
be numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number, and the
second being the total number of sheets of drawings, with no other
marking.
(u) Numbering of views. (1) The different views must be numbered in
consecutive Arabic numerals, starting with 1, independent of the
numbering of the sheets and, if possible, in the order in which they
appear on the drawing sheet(s). Partial views intended to form one
complete view, on one or several sheets, must be identified by the same
number followed by a capital letter. View numbers must be preceded by
the abbreviation ``FIG.'' Where only a single view is used in an
application to illustrate the claimed invention, it must not be numbered
and the abbreviation ``FIG.'' must not appear.
(2) Numbers and letters identifying the views must be simple and
clear and must not be used in association with brackets, circles, or
inverted commas. The view numbers must be larger than the numbers used
for reference characters.
(v) Security markings. Authorized security markings may be placed on
the drawings provided they are outside the sight, preferably centered in
the top margin.
(w) Corrections. Any corrections on drawings submitted to the Office
must be durable and permanent.
[[Page 53]]
(x) Holes. No holes should be made by applicant in the drawing
sheets. (See Sec. 1.152 for design drawings, Sec. 1.165 for plant
drawings, and Sec. 1.174 for reissue drawings.)
[58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as
amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997]
Sec. 1.85 Corrections to drawings.
(a) The requirements of Sec. 1.84 relating to drawings will be
strictly enforced. A drawing not executed in conformity thereto, if
suitable for reproduction, may be admitted for examination but in such
case a new drawing must be furnished.
(b) The Patent and Trademark Office will not release drawings in
applications having a filing date after January 1, 1989, or any drawings
from any applications after January 1, 1991, for purposes of correction.
If corrections are necessary, new corrected drawings must be submitted
within the time set by the Office.
(c) When corrected drawings are required to be submitted at the time
of allowance, the applicant is required to submit acceptable drawings
within three months from the mailing of the ``Notice of Allowability.''
Within that three-month period, two weeks should be allowed for review
of the drawings by the Drafting Branch. If the Office finds that
correction is necessary, the applicant must submit a new corrected
drawing to the Office within the original three-month period to avoid
the necessity of obtaining an extension of time and paying the extension
fee. Therefore, the applicant should file corrected drawings as soon as
possible following the receipt of the Notice of Allowability. The
provisions with respect to obtaining an extension of time relates only
to the late filing of corrected drawings. The time limit for payment of
the issue fee is a fixed three-month period which cannot be extended as
set forth in 35 U.S.C. 151.
[53 FR 47810, Nov. 28, 1988]
Sec. 1.88 [Reserved]
Models, Exhibits, Specimens
Authority: Secs. 1.91 to 1.95 also issued under 35 U.S.C. 114.
Sec. 1.91 Models or exhibits not generally admitted as part of application or patent.
(a) A model or exhibit will not be admitted as part of the record of
an application unless it:
(1) Substantially conforms to the requirements of Sec. 1.52 or
Sec. 1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The petition fee as set forth in Sec. 1.17(i); and
(ii) An explanation of why entry of the model or exhibit in the file
record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this section,
a model, working model, or other physical exhibit may be required by the
Office if deemed necessary for any purpose in examination of the
application.
[62 FR 53190, Oct. 10, 1997]
Sec. 1.92 [Reserved]
Sec. 1.93 Specimens.
When the invention relates to a composition of matter, the applicant
may be required to furnish specimens of the composition, or of its
ingredients or intermediates, for the purpose of inspection or
experiment.
Sec. 1.94 Return of models, exhibits or specimens.
Models, exhibits, or specimens in applications which have become
abandoned, and also in other applications on conclusion of the
prosecution, may be returned to the applicant upon demand and at his
expense, unless it be deemed necessary that they be preserved in the
Office. Such physical exhibits in contested cases may be returned to the
parties at their expense. If not claimed within a reasonable time, they
may be disposed of at the discretion of the Commissioner.
Sec. 1.95 Copies of exhibits.
Copies of models or other physical exhibits will not ordinarily be
furnished by the Office, and any model or exhibit in an application or
patent shall not be taken from the Office except in the custody of an
employee of
[[Page 54]]
the Office specially authorized by the Commissioner.
Sec. 1.96 Submission of computer program listings.
(a) General. Descriptions of the operation and general content of
computer program listings should appear in the description portion of
the specification. A computer program listing for the purpose of this
section is defined as a printout that lists in appropriate sequence the
instructions, routines, and other contents of a program for a computer.
The program listing may be either in machine or machine-independent
(object or source) language which will cause a computer to perform a
desired procedure or task such as solve a problem, regulate the flow of
work in a computer, or control or monitor events. Computer program
listings may be submitted in patent applications as set forth in
paragraphs (b) and (c) of this section.
(b) Material which will be printed in the patent. If the computer
program listing is contained on ten printout pages or less, it must be
submitted either as drawings or as part of the specification.
(1) Drawings. If the listing is submitted as drawings, it must be
submitted in the manner and complying with the requirements for drawings
as provided in Sec. 1.84. At least one figure numeral is required on
each sheet of drawing.
(2) Specification. (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the provisions of
Sec. 1.52, at the end of the description but before the claims.
(ii) Any listing submitted as part of the specification must be
direct printouts (i.e., not copies) from the computer's printer with
dark solid black letters not less than 0.21 cm. high, on white, unshaded
and unlined paper, and the sheets should be submitted in a protective
cover. Any amendments must be made by way of submission of substitute
sheets.
(c) As an appendix which will not be printed. If a computer program
listing printout is eleven or more pages long, applicants must submit
such listing in the form of microfiche, referred to in the specification
(see Sec. 1.77(a)(6)). Such microfiche filed with a patent application
is to be referred to as a ``microfiche appendix.'' The ``microfiche
appendix'' will not be part of the printed patent. Reference in the
application to the ``microfiche appendix'' must be made at the beginning
of the specification at the location indicated in Sec. 1.77(a)(6). Any
amendments thereto must be made by way of revised microfiche.
(1) Availability of appendix. Such computer program listings on
microfiche will be available to the public for inspection, and
microfiche copies thereof will be available for purchase with the file
wrapper and contents, after a patent based on such application is
granted or the application is otherwise made publicly available.
(2) Submission requirements. Except as modified or clarified in this
paragraph (c)(2), computer-generated information submitted as a
``microfiche appendix'' to an application shall be in accordance with
the standards set forth in 36 CFR part 1230 (Micrographics).
(i) Film submitted shall be a first generation (camera film)
negative appearing microfiche (with emulsion on the back side of the
film when viewed with the images right-reading).
(ii) Reduction ratio of microfiche submitted should be 24:1 or a
similar ratio where variation from said ratio is required in order to
fit the documents into the image area of the microfiche format used.
(iii) At least the left-most third (50 mm. x 12 mm.) of the header
or title area of each microfiche submitted shall be clear or positive
appearing so that the Patent and Trademark Office can apply an
application number and filing date thereto in an eye-readable form. The
middle portion of the header shall be used by applicant to apply an eye-
readable application identification such as the title and/or the first
inventor's name. The attorney's docket number may be included. The final
right-hand portion of the microfiche shall contain sequence information
for the microfiche, such as 1 of 4, 2 of 4, etc.
(iv) Additional requirements which apply specifically to microfiche
of filmed paper copy:
[[Page 55]]
(A) The first frame of each microfiche submitted shall contain a
test target.
(B) The second frame of each microfiche submitted must contain a
fully descriptive title and the inventor's name as filed.
(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.
(D) Pagination of the microfiche frames shall be from left to right
and from top to bottom.
(E) At a reduction of 24:1, resolution of the original microfilm
shall be at least 120 lines per mm. (5.0 target).
(F) An index, when included, should appear in the last frame (lower
right-hand corner when data is right-reading) of each microfiche.
(v) Microfiche generated by Computer Output Microfilm.
(A) The first frame of each microfiche submitted should contain a
resolution test frame.
(B) The second frame of each microfiche submitted must contain a
fully descriptive title and the inventor's name as filed.
(C) The pages or lines appearing on the microfiche frames should be
consecutively numbered.
(D) It is preferred that pagination of the microfiche frames be from
left to right and top to bottom but the alternative, i.e., from top to
bottom and from left to right, is also acceptable.
(E) An index, when included, should appear on the last frame (lower
right-hand corner when data is right-reading) of each microfiche.
[61 FR 42804, Aug. 19, 1996]
Information Disclosure Statement
Sec. 1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a
patent to have an information disclosure statement in compliance with
Sec. 1.98 considered by the Office during the pendency of the
application, it must satisfy paragraph (b), (c), or (d) of this section.
(b) An information disclosure statement shall be considered by the
Office if filed by the applicant:
(1) Within three months of the filing date of a national
application;
(2) Within three months of the date of entry of the national stage
as set forth in Sec. 1.491 in an international application; or
(3) Before the mailing date of a first Office action on the merits,
whichever event occurs last.
(c) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(b) of this section, provided that the information disclosure statement
is filed before the mailing date of either a final action under
Sec. 1.113, or a notice of allowance under Sec. 1.311, whichever occurs
first, and is accompanied by either:
(1) A statement as specified in paragraph (e) of this section; or
(2) The fee set forth in Sec. 1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(c) of this section, provided that the information disclosure statement
is filed on or before payment of the issue fee and is accompanied by:
(1) A statement as specified in paragraph (e) of this section;
(2) A petition requesting consideration of the information
disclosure statement; and
(3) The petition fee set forth in Sec. 1.17(i).
(e) A statement under this section must state either:
(1) That each item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application not more than three months
prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application, and, to the knowledge of
the person signing the statement after making reasonable inquiry, no
item of information contained in the information disclosure statement
was known to any individual designated in Sec. 1.56(c) more than three
months prior to the filing of the information disclosure statement.
[[Page 56]]
(f) No extensions of time for filing an information disclosure
statement are permitted under Sec. 1.136. If a bona fide attempt is made
to comply with Sec. 1.98, but part of the required content is
inadvertently omitted, additional time may be given to enable full
compliance.
(g) An information disclosure statement filed in accordance with
this section shall not be construed as a representation that a search
has been made.
(h) The filing of an information disclosure statement shall not be
construed to be an admission that the information cited in the statement
is, or is considered to be, material to patentability as defined in
Sec. 1.56(b).
(i) Information disclosure statements, filed before the grant of a
patent, which do not comply with this section and Sec. 1.98 will be
placed in the file, but will not be considered by the Office.
[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60
FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct.
10, 1997]
Sec. 1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under Sec. 1.97 shall
include:
(1) A list of all patents, publications, or other information
submitted for consideration by the Office;
(2) A legible copy of:
(i) Each U.S. and foreign patent;
(ii) Each publication or that portion which caused it to be listed;
and
(iii) All other information or that portion which caused it to be
listed, except that no copy of a U.S. patent application need be
included; and
(3) A concise explanation of the relevance, as it is presently
understood by the individual designated in Sec. 1.56(c) most
knowledgeable about the content of the information, of each patent,
publication, or other information listed that is not in the English
language. The concise explanation may be either separate from the
specification or incorporated therein.
(b) Each U.S. patent listed in an information disclosure statement
shall be identified by patentee, patent number and issue date. Each
foreign patent or published foreign patent application shall be
identified by the country or patent office which issued the patent or
published the application, an appropriate document number, and the
publication date indicated on the patent or published application. Each
publication shall be identified by author (if any), title, relevant
pages of the publication, date and place of publication.
(c) When the disclosures of two or more patents or publications
listed in an information disclosure statement are substantively
cumulative, a copy of one of the patents or publications may be
submitted without copies of the other patents or publications provided
that a statement is made that these other patents or publications are
cumulative. If a written English-language translation of a non-English
language document, or portion thereof, is within the possession, custody
or control of, or is readily available to any individual designated in
Sec. 1.56(c), a copy of the translation shall accompany the statement.
(d) A copy of any patent, publication or other information listed in
an information disclosure statement is not required to be provided if it
was previously cited by or submitted to the Office in a prior
application, provided that the prior application is properly identified
in the statement and relied upon for an earlier filing date under 35
U.S.C. 120.
[57 FR 2035, Jan. 17, 1992]
Sec. 1.99 [Reserved]
Examination of Applications
Authority: Secs. 1.101 to 1.108 also issued under 35 U.S.C. 131,
132.
Sec. 1.101 [Reserved]
Sec. 1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or
for further action except as provided by this part, or upon order of the
Commissioner to expedite the business of the Office, or upon filing of a
request under paragraph (b) of this section or upon filing a petition
under paragraphs (c) or (d) of this section with a showing
[[Page 57]]
which, in the opinion of the Commissioner, will justify so advancing it.
(b) Applications wherein the inventions are deemed of peculiar
importance to some branch of the public service and the head of some
department of the Government requests immediate action for that reason,
may be advanced for examination.
(c) A petition to make an application special may be filed without a
fee if the basis for the petition is the applicant's age or health or
that the invention will materially enhance the quality of the
environment or materially contribute to the development or conservation
of energy resources.
(d) A petition to make an application special on grounds other than
those referred to in paragraph (c) of this section must be accompanied
by the petition fee set forth in Sec. 1.17(i).
(36 U.S.C. 6; 15 U.S.C. 1113, 1123)
[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982;
54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct.
10, 1997]
Sec. 1.103 Suspension of action.
(a) Suspension of action by the Office will be granted for good and
sufficient cause and for a reasonable time specified upon petition by
the applicant and, if such cause is not the fault of the Office, the
payment of the fee set forth in Sec. 1.17(i). Action will not be
suspended when a reply by the applicant to an Office action is required.
(b) If action by the Office on an application is suspended when not
requested by the applicant, the applicant shall be notified of the
reasons therefor.
(c) Action by the examiner may be suspended by order of the
Commissioner in the case of applications owned by the United States
whenever publication of the invention by the granting of a patent
thereon might be detrimental to the public safety or defense, at the
request of the appropriate department or agency.
(d) Action on applications in which the Office has accepted a
request to publish a defensive publication will be suspended for the
entire pendency of these applications except for purposes relating to
patent interference proceedings under subpart E.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982;
50 FR 9381, Mar. 7, 1985; 54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr.
25, 1995; 62 FR 53191, Oct. 10, 1997]
Sec. 1.104 Nature of examination.
(a) Examiner's action. (1) On taking up an application for
examination or a patent in a reexamination proceeding, the examiner
shall make a thorough study thereof and shall make a thorough
investigation of the available prior art relating to the subject matter
of the claimed invention. The examination shall be complete with respect
both to compliance of the application or patent under reexamination with
the applicable statutes and rules and to the patentability of the
invention as claimed, as well as with respect to matters of form, unless
otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding,
both the patent owner and the requester, will be notified of the
examiner's action. The reasons for any adverse action or any objection
or requirement will be stated and such information or references will be
given as may be useful in aiding the applicant, or in the case of a
reexamination proceeding the patent owner, to judge the propriety of
continuing the prosecution.
(3) An international-type search will be made in all national
applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type
search report prepared thereon at the time of the national examination
on the merits, upon specific written request therefor and payment of the
international-type search report fee set forth in Sec. 1.21(e). The
Patent and Trademark Office does not require that a formal report of an
international-type search be prepared in order to obtain a search fee
refund in a later filed international application.
(5) Copending applications will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person
if:
(i) The application files refer to assignments recorded in the
Patent and
[[Page 58]]
Trademark Office in accordance with part 3 of this chapter which convey
the entire rights in the applications to the same person or
organization; or
(ii) Copies of unrecorded assignments which convey the entire rights
in the applications to the same person or organization are filed in each
of the applications; or
(iii) An affidavit or declaration by the common owner is filed which
states that there is common ownership and states facts which explain why
the affiant or declarant believes there is common ownership, which
affidavit or declaration may be signed by an official of the corporation
or organization empowered to act on behalf of the corporation or
organization when the common owner is a corporation or other
organization; or
(iv) Other evidence is submitted which establishes common ownership
of the applications.
(b) Completeness of examiner's action. The examiner's action will be
complete as to all matters, except that in appropriate circumstances,
such as misjoinder of invention, fundamental defects in the application,
and the like, the action of the examiner may be limited to such matters
before further action is made. However, matters of form need not be
raised by the examiner until a claim is found allowable.
(c) Rejection of claims. (1) If the invention is not considered
patentable, or not considered patentable as claimed, the claims, or
those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.
(3) In rejecting claims the examiner may rely upon admissions by the
applicant, or the patent owner in a reexamination proceeding, as to any
matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.
(4) Subject matter which is developed by another person which
qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as
prior art under 35 U.S.C. 103 against a claimed invention unless the
entire rights to the subject matter and the claimed invention were
commonly owned by the same person or organization or subject to an
obligation of assignment to the same person or organization at the time
the claimed invention was made.
(5) The claims in any original application naming an inventor will
be rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the same subject matter
is claimed in the application and the statutory invention registration.
The claims in any reissue application naming an inventor will be
rejected as being precluded by a waiver in a published statutory
invention registration naming that inventor if the reissue application
seeks to claim subject matter:
(i) Which was not covered by claims issued in the patent prior to
the date of publication of the statutory invention registration; and
(ii) Which was the same subject matter waived in the statutory
invention registration.
(d) Citation of references. (1) If domestic patents are cited by the
examiner, their numbers and dates, and the names of the patentees must
be stated. If foreign published applications or patents are cited, their
nationality or country, numbers and dates, and the names of the
patentees must be stated, and such other data must be furnished as may
be necessary to enable the applicant, or in the case of a reexamination
proceeding, the patent owner, to identify the published applications or
patents cited. In citing foreign published applications or patents, in
case only a part of the document is involved, the particular pages and
sheets containing the parts relied upon must be identified. If printed
publications are cited, the author (if any), title, date, pages or
plates, and place of publication, or place where a copy can be found,
shall be given.
[[Page 59]]
(2) When a rejection in an application is based on facts within the
personal knowledge of an employee of the Office, the data shall be as
specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explanation by the
affidavits of the applicant and other persons.
(e) Reasons for allowance. If the examiner believes that the record
of the prosecution as a whole does not make clear his or her reasons for
allowing a claim or claims, the examiner may set forth such reasoning.
The reasons shall be incorporated into an Office action rejecting other
claims of the application or patent under reexamination or be the
subject of a separate communication to the applicant or patent owner.
The applicant or patent owner may file a statement commenting on the
reasons for allowance within such time as may be specified by the
examiner. Failure to file such a statement does not give rise to any
implication that the applicant or patent owner agrees with or acquiesces
in the reasoning of the examiner.
[62 FR 53191, Oct. 10, 1997]
Secs. 1.105--1.109 [Reserved]
Sec. 1.110 Inventorship and date of invention of the subject matter of individual claims.
When more than one inventor is named in an application or patent,
the Patent and Trademark Office, when necessary for purposes of an
Office proceeding, may require an applicant, patentee, or owner to
identify the inventive entity of the subject matter of each claim in the
application or patent. Where appropriate, the invention dates of the
subject matter of each claim and the ownership of the subject matter on
the date of invention may be required of the applicant, patentee or
owner. See also Secs. 1.78(c) and 1.130.
[61 FR 42805, Aug. 19, 1996]
Action by Applicant and Further Consideration
Authority: Secs. 1.111 to 1.113 also issued under 35 U.S.C. 132.
Sec. 1.111 Reply by applicant or patent owner.
(a) After the Office action, if adverse in any respect, the
applicant or patent owner, if he or she persists in his or her
application for a patent or reexamination proceeding, must reply thereto
and may request reconsideration or further examination, with or without
amendment.
(b) In order to be entitled to reconsideration or further
examination, the applicant or patent owner must reply to the Office
action. The reply by the applicant or patent owner must be reduced to a
writing which distinctly and specifically points out the supposed errors
in the examiner's action and must reply to every ground of objection and
rejection in the prior Office action. The reply must present arguments
pointing out the specific distinctions believed to render the claims,
including any newly presented claims, patentable over any applied
references. If the reply is with respect to an application, a request
may be made that objections or requirements as to form not necessary to
further consideration of the claims be held in abeyance until allowable
subject matter is indicated. The applicant's or patent owner's reply
must appear throughout to be a bona fide attempt to advance the
application or the reexamination proceeding to final action. A general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims patentably
distinguishes them from the references does not comply with the
requirements of this section.
(c) In amending in response to a rejection of claims in an
application or patent undergoing reexamination, the applicant or patent
owner must clearly point out the patentable novelty which he or she
thinks the claims present in view of the state of the art disclosed by
the references cited or the objections made. He or she must also show
how the amendments avoid such references or objections. (See Secs. 1.135
and 1.136 for time for reply.)
[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997]
[[Page 60]]
Sec. 1.112 Reconsideration before final action.
After reply by applicant or patent owner (Sec. 1.111) to a non-final
action, the application or patent under reexamination will be
reconsidered and again examined. The applicant or patent owner will be
notified if claims are rejected, or objections or requirements made, in
the same manner as after the first examination. Applicant or patent
owner may reply to such Office action in the same manner provided in
Sec. 1.111, with or without amendment, unless such Office action
indicates that it is made final (Sec. 1.113).
[62 FR 53192, Oct. 10, 1997]
Sec. 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicant's or patent owner's reply is limited to appeal in the case of
rejection of any claim (Sec. 1.191), or to amendment as specified in
Sec. 1.116. Petition may be taken to the Commissioner in the case of
objections or requirements not involved in the rejection of any claim
(Sec. 1.181). Reply to a final rejection or action must include
cancellation of, or appeal from the rejection of, each rejected claim.
If any claim stands allowed, the reply to a final rejection or action
must comply with any requirements or objections as to form.
(b) In making such final rejection, the examiner shall repeat or
state all grounds of rejection then considered applicable to the claims
in the application, clearly stating the reasons in support thereof.
[62 FR 53192, Oct. 10, 1997]
Amendments
Authority: Secs. 1.115 to 1.127 also issued under 35 U.S.C. 132.
Sec. 1.115 [Reserved]
Sec. 1.116 Amendments after final action or appeal.
(a) After a final rejection or other final action (Sec. 1.113),
amendments may be made cancelling claims or complying with any
requirement of form expressly set forth in a previous Office action.
Amendments presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to admit, any
amendment after final rejection, and any related proceedings, will not
operate to relieve the application or patent under reexamination from
its condition as subject to appeal or to save the application from
abandonment under Sec. 1.135.
(b) If amendments touching the merits of the application or patent
under reexamination are presented after final rejection, or after appeal
has been taken, or when such amendment might not otherwise be proper,
they may be admitted upon a showing of good and sufficient reasons why
they are necessary and were not earlier presented.
(c) No amendment can be made as a matter of right in appealed cases.
After decision on appeal, amendments can only be made as provided in
Sec. 1.198, or to carry into effect a recommendation under Sec. 1.196.
[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29183, May 29, 1981; 62
FR 53192, Oct. 10, 1997]
Secs. 1.117--1.119 [Reserved]
Sec. 1.121 Manner of making amendments.
(a) Amendments in nonprovisional applications, other than reissue
applications: Amendments in nonprovisional applications, excluding
reissue applications, are made by filing a paper, in compliance with
Sec. 1.52, directing that specified amendments be made.
(1) Specification other than the claims. Except as provided in
Sec. 1.125, amendments to add matter to, or delete matter from, the
specification, other than to the claims, may only be made as follows:
(i) Instructions for insertions: The precise point in the
specification must be indicated where an insertion is to be made, and
the matter to be inserted must be set forth.
(ii) Instructions for deletions: The precise point in the
specification must be indicated where a deletion is to be made, and the
matter to be deleted must be set forth or otherwise indicated.
[[Page 61]]
(iii) Matter deleted by amendment can be reinstated only by a
subsequent amendment presenting the previously deleted matter as a new
insertion.
(2) Claims. Amendments to the claims may only be made as follows:
(i) Instructions for insertions and deletions: A claim may be
amended by specifying only the exact matter to be deleted or inserted by
an amendment and the precise point where the deletion or insertion is to
be made, where the changes are limited to:
(A) Deletions and/or
(B) The addition of no more than five (5) words in any one claim; or
(ii) Claim cancellation or rewriting: A claim may be amended by
directions to cancel the claim or by rewriting such claim with
underlining below the matter added and brackets around the matter
deleted. The rewriting of a claim in this form will be construed as
directing the deletion of the previous version of that claim. If a
previously rewritten claim is again rewritten, underlining and
bracketing will be applied relative to the previous version of the
claim, with the parenthetical expression ``twice amended,'' ``three
times amended,'' etc., following the original claim number. The original
claim number followed by that parenthetical expression must be used for
the rewritten claim. No interlineations or deletions of any prior
amendment may appear in the currently submitted version of the claim. A
claim canceled by amendment (not deleted and rewritten) can be
reinstated only by a subsequent amendment presenting the claim as a new
claim with a new claim number.
(3) Drawings. (i) Amendments to the original application drawings
are not permitted. Any change to the application drawings must be by way
of a substitute sheet of drawings for each sheet changed submitted in
compliance with Sec. 1.84.
(ii) Where a change to the drawings is desired, a sketch in
permanent ink showing proposed changes in red, to become part of the
record, must be filed for approval by the examiner and should be in a
separate paper.
(4) [Reserved]
(5) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(6) No amendment may introduce new matter into the disclosure of an
application.
(b) Amendments in reissue applications: Amendments in reissue
applications are made by filing a paper, in compliance with Sec. 1.52,
directing that specified amendments be made.
(1) Specification other than the claims. Amendments to the
specification, other than to the claims, may only be made as follows:
(i) Amendments must be made by submission of the entire text of a
newly added or rewritten paragraph(s) with markings pursuant to
paragraph (b)(1)(iii) of this section, except that an entire paragraph
may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where
the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (b)(6) of this section and must include the
entire text of each claim which is being amended by the current
amendment and of each claim being added by the current amendment with
markings pursuant to paragraph (b)(2)(i)(C) of this section, except that
a patent claim or added claim should be cancelled by a statement
cancelling the patent claim or added claim without presentation of the
text of the patent claim or added claim.
(B) Patent claims must not be renumbered and the numbering of any
claims added to the patent must follow the number of the highest
numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted
[[Page 62]]
from the patent are to be used to mark the amendments being made. If a
claim is amended pursuant to paragraph (b)(2)(i)(A) of this section, a
parenthetical expression ``amended,'' ``twice amended,'' etc., should
follow the original claim number.
(ii) Each amendment submission must set forth the status (i.e.,
pending or cancelled) as of the date of the amendment, of all patent
claims and of all added claims.
(iii) Each amendment when originally submitted must be accompanied
by an explanation of the support in the disclosure of the patent for the
amendment along with any additional comments on page(s) separate from
the page(s) containing the amendment.
(3) Drawings. (i) Amendments to the original patent drawings are not
permitted. Any change to the patent drawings must be by way of a new
sheet of drawings with the amended figures identified as ``amended'' and
with added figures identified as ``new'' for each sheet changed
submitted in compliance with Sec. 1.84.
(ii) Where a change to the drawings is desired, a sketch in
permanent ink showing proposed changes in red, to become part of the
record, must be filed for approval by the examiner and should be in a
separate paper.
(4) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition, and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(5) No reissue patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years from
the grant of the original patent, pursuant to 35 U.S.C. 251. No
amendment to the patent may introduce new matter or be made in an
expired patent.
(6) All amendments must be made relative to the patent
specification, including the claims, and drawings, which is in effect as
of the date of filing of the reissue application.
(c) Amendments in reexamination proceedings: Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings must be made in accordance with Sec. 1.530(d).
[62 FR 53192, Oct. 10, 1997; 62 FR 61235, Nov. 17, 1997]
Secs. 1.122--1.24 [Reserved]
Sec. 1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of
the application papers renders it difficult to consider the application,
or to arrange the papers for printing or copying, the Office may require
the entire specification, including the claims, or any part thereof, be
rewritten.
(b) A substitute specification, excluding the claims, may be filed
at any point up to payment of the issue fee if it is accompanied by:
(1) A statement that the substitute specification includes no new
matter; and
(2) A marked-up copy of the substitute specification showing the
matter being added to and the matter being deleted from the
specification of record.
(c) A substitute specification submitted under this section must be
submitted in clean form without markings as to amended material.
(d) A substitute specification under this section is not permitted
in a reissue application or in a reexamination proceeding.
[62 FR 53193, Oct. 10, 1997]
Sec. 1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout
the prosecution. When claims are canceled the remaining claims must not
be renumbered. When claims are added, they must be numbered by the
applicant consecutively beginning with the number next following the
highest numbered claim previously presented (whether entered or not).
When the application is ready for allowance, the examiner, if necessary,
will renumber the claims consecutively in the order in which they appear
or in such order as may have been requested by applicant.
[62 FR 53194, Oct. 10, 1997]
[[Page 63]]
Sec. 1.127 Petition from refusal to admit amendment.
From the refusal of the primary examiner to admit an amendment, in
whole or in part, a petition will lie to the Commissioner under
Sec. 1.181.
Transitional Provisions
Sec. 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue or a
design patent, that has been pending for at least two years as of June
8, 1995, taking into account any reference made in such application to
any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is
entitled to have a first submission entered and considered on the merits
after final rejection under the following circumstances: The Office will
consider such a submission, if the first submission and the fee set
forth in Sec. 1.17(r) are filed prior to the filing of an appeal brief
and prior to abandonment of the application. The finality of the final
rejection is automatically withdrawn upon the timely filing of the
submission and payment of the fee set forth in Sec. 1.17(r). If a
subsequent final rejection is made in the application, applicant is
entitled to have a second submission entered and considered on the
merits after the subsequent final rejection under the following
circumstances: The Office will consider such a submission, if the second
submission and a second fee set forth in Sec. 1.17(r) are filed prior to
the filing of an appeal brief and prior to abandonment of the
application. The finality of the subsequent final rejection is
automatically withdrawn upon the timely filing of the submission and
payment of the second fee set forth in Sec. 1.17(r). Any submission
filed after a final rejection made in an application subsequent to the
fee set forth in Sec. 1.17(r) having been twice paid will be treated as
set forth in Sec. 1.116. A submission as used in this paragraph
includes, but is not limited to, an information disclosure statement, an
amendment to the written description, claims or drawings and a new
substantive argument or new evidence in support of patentability.
(b)(1) In an application, other than for reissue or a design patent,
that has been pending for at least three years as of June 8, 1995;
taking into account any reference made in the application to any earlier
filed application under 35 U.S.C. 120, 121, and 365(c), no requirement
for restriction or for the filing of divisional applications shall be
made or maintained in the application after June 8, 1995, except where:
(i) The requirement was first made in the application or any earlier
filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8,
1995;
(ii) The examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to actions by
the applicant; or
(iii) The required fee for examination of each additional invention
was not paid.
(2) If the application contains more than one independent and
distinct invention and a requirement for restriction or for the filing
of divisional applications cannot be made or maintained pursuant to this
paragraph, applicant will be so notified and given a time period to:
(i) Elect the invention or inventions to be searched and examined,
if no election has been made prior to the notice, and pay the fee set
forth in Sec. 1.17(s) for each independent and distinct invention
claimed in the application in excess of one which applicant elects;
(ii) Confirm an election made prior to the notice and pay the fee
set forth in Sec. 1.17(s) for each independent and distinct invention
claimed in the application in addition to the one invention which
applicant previously elected; or
(iii) File a petition under this section traversing the requirement.
If the required petition is filed in a timely manner, the original time
period for electing and paying the fee set forth in Sec. 1.17(s) will be
deferred and any decision on the petition affirming or modifying the
requirement will set a new time period to elect the invention or
inventions to be searched and examined and to pay the fee set forth in
[[Page 64]]
Sec. 1.17(s) for each independent and distinct invention claimed in the
application in excess of one which applicant elects.
(3) The additional inventions for which the required fee has not
been paid will be withdrawn from consideration under Sec. 1.142(b). An
applicant who desires examination of an invention so withdrawn from
consideration can file a divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to any
application filed after June 8, 1995.
[60 FR 20226, Apr. 25, 1995]
Affidavits Overcoming Rejections
Sec. 1.130 Affidavit or declaration to disqualify commonly owned patent as prior art.
(a) When any claim of an application or a patent under reexamination
is rejected under 35 U.S.C. 103 in view of a U.S. patent which is not
prior art under 35 U.S.C. 102(b), and the inventions defined by the
claims in the application or patent under reexamination and by the
claims in the patent are not identical but are not patentably distinct,
and the inventions are owned by the same party, the applicant or owner
of the patent under reexamination may disqualify the patent as prior
art. The patent can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with Sec. 1.321(c), and
(2) An oath or declaration stating that the application or patent
under reexamination and the patent are currently owned by the same
party, and that the inventor named in the application or patent under
reexamination is the prior inventor under 35 U.S.C. 104.
(b) When an application or a patent under reexamination claims an
invention which is not patentably distinct from an invention claimed in
a commonly owned patent with the same or a different inventive entity, a
double patenting rejection will be made in the application or a patent
under reexamination. A judicially created double patenting rejection may
be obviated by filing a terminal disclaimer in accordance with
Sec. 1.321(c).
[61 FR 42805, Aug. 19, 1996]
Sec. 1.131 Affidavit or declaration of prior invention to overcome cited patent or publication.
(a) (1) When any claim of an application or a patent under
reexamination is rejected under 35 U.S.C. 102 (a) or (e), or 35 U.S.C.
103 based on a U.S. patent to another or others which is prior art under
35 U.S.C. 102 (a) or (e) and which substantially shows or describes but
does not claim the same patentable invention, as defined in
Sec. 1.601(n), or on reference to a foreign patent or to a printed
publication, the inventor of the subject matter of the rejected claim,
the owner of the patent under reexamination, or the party qualified
under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to overcome the patent or publication. The oath or
declaration must include facts showing a completion of the invention in
this country or in a NAFTA or WTO member country before the filing date
of the application on which the U.S. patent issued, or before the date
of the foreign patent, or before the date of the printed publication.
When an appropriate oath or declaration is made, the patent or
publication cited shall not bar the grant of a patent to the inventor or
the confirmation of the patentability of the claims of the patent,
unless the date of such patent or printed publication is more than one
year prior to the date on which the inventor's or patent owner's
application was filed in this country.
(2) A date of completion of the invention may not be established
under this section before December 8, 1993, in a NAFTA country, or
before January 1, 1996, in a WTO member country other than a NAFTA
country.
(b) The showing of facts shall be such, in character and weight, as
to establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or
[[Page 65]]
records, or photocopies thereof, must accompany and form part of the
affidavit or declaration of their absence satisfactorily explained.
[53 FR 23734, June 23, 1988, as amended at 60 FR 21044, May 1, 1995; 61
FR 42806, Aug. 19, 1996]
Sec. 1.132 Affidavits or declarations traversing grounds of rejection.
When any claim of an application or a patent under reexamination is
rejected on reference to a U.S. patent which substantially shows or
describes but does not claim the same patentable invention, as defined
in Sec. 1.601(n), on reference to a foreign patent, on reference to a
printed publication, or on reference to facts within the personal
knowledge of an employee of the Office, or when rejected upon a mode or
capability of operation attributed to a reference, or because the
alleged invention is held to be inoperative, lacking in utility,
frivolous, or injurious to public health or morals, affidavits or
declarations traversing these references or objections may be received.
[61 FR 42806, Aug. 19, 1996]
Interviews
Sec. 1.133 Interviews.
(a) Interviews with examiners concerning applications and other
matters pending before the Office must be had in the examiners' rooms at
such times, within office hours, as the respective examiners may
designate. Interviews will not be permitted at any other time or place
without the authority of the Commissioner. Interviews for the discussion
of the patentability of pending applications will not be had before the
first official action thereon. Interviews should be arranged for in
advance.
(b) In every instance where reconsideration is requested in view of
an interview with an examiner, a complete written statement of the
reasons presented at the interview as warranting favorable action must
be filed by the applicant. An interview does not remove the necessity
for reply to Office actions as specified in Secs. 1.111 and 1.135.
(35 U.S.C. 132)
[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53194, Oct. 10, 1997]
Time for Reply by Applicant; Abandonment of Application
Authority: Secs. 1.135 to 1.138 also issued under 35 U.S.C. 133.
Sec. 1.134 Time period for reply to an Office action.
An Office action will notify the applicant of any non-statutory or
shortened statutory time period set for reply to an Office action.
Unless the applicant is notified in writing that a reply is required in
less than six months, a maximum period of six months is allowed.
[62 FR 53194, Oct. 10, 1997]
Sec. 1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within
the time period provided under Sec. 1.134 and Sec. 1.136, the
application will become abandoned unless an Office action indicates
otherwise.
(b) Prosecution of an application to save it from abandonment
pursuant to paragraph (a) of this section must include such complete and
proper reply as the condition of the application may require. The
admission of, or refusal to admit, any amendment after final rejection
or any amendment not responsive to the last action, or any related
proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance
the application to final action, and is substantially a complete reply
to the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted,
applicant may be given a new time period for reply under Sec. 1.134 to
supply the omission.
[62 FR 53194, Oct. 10, 1997]
Sec. 1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory or
shortened statutory time period, applicant may extend the time period
for reply up to the earlier of the expiration of any maximum period set
by statute or five months after the time period set for reply, if a
petition for an extension
[[Page 66]]
of time and the fee set in Sec. 1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to Sec. 1.193(b);
(iii) The reply is a request for an oral hearing submitted pursuant
to Sec. 1.194(b);
(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Sec. 1.196, Sec. 1.197 or Sec. 1.304; or
(v) The application is involved in an interference declared pursuant
to Sec. 1.611.
(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 this paragraph are available. See Sec. 1.136(b) for
extensions of time relating to proceedings pursuant to Secs. 1.193(b),
1.194, 1.196 or 1.197; Sec. 1.304 for extension of time to appeal to the
U.S. Court of Appeals for the Federal Circuit or to commence a civil
action; Sec. 1.550(c) for extension of time in reexamination
proceedings; and Sec. 1.645 for extension of time in interference
proceedings.
(3) A written request may be submitted in an application that is an
authorization to treat any concurrent or future reply, requiring a
petition for an extension of time under this paragraph for its timely
submission, as incorporating a petition for extension of time for the
appropriate length of time. An authorization to charge all required
fees, fees under Sec. 1.17, or all required extension of time fees will
be treated as a constructive petition for an extension of time in any
concurrent or future reply requiring a petition for an extension of time
under this paragraph for its timely submission. Submission of the fee
set forth in Sec. 1.17(a) will also be treated as a constructive
petition for an extension of time in any concurrent reply requiring a
petition for an extension of time under this paragraph for its timely
submission.
(b) When a reply cannot be filed within the time period set for such
reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on which
such reply is due, but the mere filing of such a request will not 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. See Sec. 1.304 for extension of time to appeal to the U.S.
Court of Appeals for the Federal Circuit or to commence a civil action;
Sec. 1.645 for extension of time in interference proceedings; and
Sec. 1.550(c) for extension of time in reexamination proceedings.
[62 FR 53194, Oct. 10, 1997]
Sec. 1.137 Revival of abandoned application or lapsed patent.
(a) Unavoidable. Where the delay in reply was unavoidable, a
petition may be filed to revive an abandoned application or a lapsed
patent pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;
(2) The petition fee as set forth in Sec. 1.17(l);
(3) A showing to the satisfaction of the Commissioner that the
entire delay in filing the required reply from the due date for the
reply until the filing of a grantable petition pursuant to this
paragraph was unavoidable; and
(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to paragraph (c) of this section.
[[Page 67]]
(b) Unintentional. Where the delay in reply was unintentional, a
petition may be filed to revive an abandoned application or a lapsed
patent pursuant to this paragraph. A grantable petition pursuant to this
paragraph must be accompanied by:
(1) The required reply, unless previously filed. In a nonprovisional
application abandoned for failure to prosecute, the required reply may
be met by the filing of a continuing application. In an application or
patent, abandoned or lapsed for failure to pay the issue fee or any
portion thereof, the required reply must be the payment of the issue fee
or any outstanding balance thereof;
(2) The petition fee as set forth in Sec. 1.17(m);
(3) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
pursuant to this paragraph was unintentional. The Commissioner may
require additional information where there is a question whether the
delay was unintentional; and
(4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d))
required pursuant to paragraph (c) of this section.
(c) In a design application, a utility application filed before June
8, 1995, or a plant application filed before June 8, 1995, any petition
to revive pursuant to this section 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 terminal disclaimer
pursuant to this paragraph must also apply to any patent granted on any
continuing application that contains a specific reference under 35
U.S.C. 120, 121, or 365(c) to the application for which revival is
sought. The provisions of this paragraph do not apply to lapsed patents.
(d) Any request for reconsideration or review of a decision refusing
to revive an abandoned application or lapsed patent upon petition filed
pursuant to this section, to be considered timely, must be filed within
two months of the decision refusing to revive or within such time as set
in the decision. Unless a decision indicates otherwise, this time period
may be extended under the provisions of Sec. 1.136.
(e) A provisional application, abandoned for failure to timely
respond to an Office requirement, may be revived pursuant to this
section so as to be pending for a period of no longer than twelve months
from its filing date. Under no circumstances will a provisional
application be regarded as pending after twelve months from its filing
date.
[62 FR 53194, Oct. 10, 1997]
Sec. 1.138 Express abandonment.
An application may be expressly abandoned by filing in the Patent
and Trademark Office a written declaration of abandonment signed by the
applicant and the assignee of record, if any, and identifying the
application. An application may also be expressly abandoned by filing a
written declaration of abandonment signed by the attorney or agent of
record. A registered attorney or agent acting under the provision of
Sec. 1.34(a), or of record, may also expressly abandon a prior
application as of the filing date granted to a continuing application
when filing such a continuing application. Express abandonment of the
application may not be recognized by the Office unless it is actually
received by appropriate officials in time to act thereon before the date
of issue.
[49 FR 48452, Dec. 12, 1984]
Sec. 1.139 [Reserved]
Joinder of Inventions in One Application; Restriction
Authority: Secs. 1.141 to 1.147 also issued under 35 U.S.C. 121.
Sec. 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be
claimed in one national application, except that more than one species
of an invention, not to exceed a reasonable number, may be specifically
claimed in different claims in one national application, provided the
application also includes an allowable claim generic to all the claimed
species and all the claims to species in excess of one are written in
[[Page 68]]
dependent form (Sec. 1.75) or otherwise include all the limitations of
the generic claim.
(b) Where claims to all three categories, product, process of
making, and process of use, are included in a national application, a
three way requirement for restriction can only be made where the process
of making is distinct from the product. If the process of making and the
product are not distinct, the process of using may be joined with the
claims directed to the product and the process of making the product
even though a showing of distinctness between the product and process of
using the product can be made.
[52 FR 20046, May 28, 1987]
Sec. 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed
in a single application, the examiner in an Office action will require
the applicant in the reply to that action to elect an invention to which
the claims will be restricted, this official action being called a
requirement for restriction (also known as a requirement for division).
Such requirement will normally be made before any action on the merits;
however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not
canceled, are nevertheless withdrawn from further consideration by the
examiner by the election, subject however to reinstatement in the event
the requirement for restriction is withdrawn or overruled.
[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997]
Sec. 1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he
may request reconsideration and withdrawal or modification of the
requirement, giving the reasons therefor. (See Sec. 1.111.) In
requesting reconsideration the applicant must indicate a provisional
election of one invention for prosecution, which invention shall be the
one elected in the event the requirement becomes final The requirement
for restriction will be reconsidered on such a request. If the
requirement is repeated and made final the examiner will at the same
time act on the claims to the invention elected.
Sec. 1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in
addition to making any reply due on the remainder of the action, may
petition the Commissioner to review the requirement. Petition may be
deferred until after final action on or allowance of claims to the
invention elected, but must be filed not later than appeal. A petition
will not be considered if reconsideration of the requirement was not
requested (see Sec. 1.181).
[62 FR 53195, Oct. 10, 1997]
Sec. 1.145 Subsequent presentation of claims for different invention.
If, after an office action on an application, the applicant presents
claims directed to an invention distinct from and independent of the
invention previously claimed, the applicant will be required to restrict
the claims to the invention previously claimed if the amendment is
entered, subject to reconsideration and review as provided in
Secs. 1.143 and 1.144.
Sec. 1.146 Election of species.
In the first action on an application containing a generic claim to
a generic invention (genus) and claims to more than one patentably
distinct species embraced thereby, the examiner may require the
applicant in the reply to that action to elect a species of his or her
invention to which his or her claim will be restricted if no claim to
the genus is found to be allowable. However, if such application
contains claims directed to more than a reasonable number of species,
the examiner may require restriction of the claims to not more than a
reasonable number of species before taking further action in the
application.
[62 FR 53195, Oct. 10, 1997]
[[Page 69]]
Design Patents
Sec. 1.151 Rules applicable.
The rules relating to applications for patents for other inventions
or discoveries are also applicable to applications for patents for
designs except as otherwise provided.
(35 U.S.C. 171)
Sec. 1.152 Design drawings.
(a) The design must be represented by a drawing that complies with
the requirements of Sec. 1.84, and must contain a sufficient number of
views to constitute a complete disclosure of the appearance of the
design.
(1) Appropriate and adequate surface shading should be used to show
the character or contour of the surfaces represented. Solid black
surface shading is not permitted except when used to represent the color
black as well as color contrast. Broken lines may be used to show
visible environmental structure, but may not be used to show hidden
planes and surfaces which cannot be seen through opaque materials.
Alternate positions of a design component, illustrated by full and
broken lines in the same view are not permitted in a design drawing.
(2) Color photographs and color drawings are not permitted in design
applications in the absence of a grantable petition pursuant to
Sec. 1.84(a)(2). Photographs and ink drawings are not permitted to be
combined as formal drawings in one application. Photographs submitted in
lieu of ink drawings in design patent applications must comply with
Sec. 1.84(b) and must not disclose environmental structure but must be
limited to the design for the article claimed.
(b) Any detail shown in the ink or color drawings or photographs
(formal or informal) deposited with the original application papers
constitutes an integral part of the disclosed and claimed design, except
as otherwise provided in this paragraph. This detail may include, but is
not limited to, color or contrast, graphic or written indicia, including
identifying indicia of a proprietary nature, surface ornamentation on an
article, or any combination thereof.
(1) When any detail shown in informal drawings or photographs does
not constitute an integral part of the disclosed and claimed design, a
specific disclaimer must appear in the original application papers
either in the specification or directly on the drawings or photographs.
This specific disclaimer in the original application papers will provide
antecedent basis for the omission of the disclaimed detail(s) in later-
filed drawings or photographs.
(2) When informal color drawings or photographs are deposited with
the original application papers without a disclaimer pursuant to
paragraph (b)(1) of this section, formal color drawings or photographs,
or a black and white drawing lined to represent color, will be required.
[62 FR 53195, Oct. 10, 1997]
Sec. 1.153 Title, description and claim, oath or declaration.
(a) The title of the design must designate the particular article.
No description, other than a reference to the drawing, is ordinarily
required. The claim shall be in formal terms to the ornamental design
for the article (specifying name) as shown, or as shown and described.
More than one claim is neither required nor permitted.
(b) The oath or declaration required of the applicant must comply
with Sec. 1.63.
(35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964;
48 FR 2712, Jan. 20, 1983]
Sec. 1.154 Arrangement of application elements.
(a) The elements of the design application, if applicable, should
appear in the following order:
(1) Design Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Preamble, stating name of the applicant, title of the design,
and a brief description of the nature and intended use of the article in
which the design is embodied.
(4) Cross-reference to related applications.
[[Page 70]]
(5) Statement regarding federally sponsored research or development.
(6) Description of the figure or figures of the drawing.
(7) Feature Description.
(8) A single claim.
(9) Drawings or photographs.
(10) Executed oath or declaration (See Sec. 1.153(b)).
(b) [Reserved]
[61 FR 42806, Aug. 19, 1996, as amended at 62 FR 53196, Oct. 10, 1997]
Sec. 1.155 Issue of design patents.
If, on examination, it appears that the applicant is entitled to a
design patent under the law, a notice of allowance will be sent to the
applicant, or applicant's attorney or agent, calling for the payment of
the issue fee (Sec. 1.18(b)). If this issue fee is not paid within three
months of the date of the notice of allowance, the application shall be
regarded as abandoned.
[62 FR 53196, Oct. 10, 1997]
Plant Patents
Sec. 1.161 Rules applicable.
The rules relating to applications for patent for other inventions
or discoveries are also applicable to applications for patents for
plants except as otherwise provided.
Sec. 1.162 Applicant, oath or declaration.
The applicant for a plant patent must be the person who has invented
or discovered and asexually reproduced the new and distinct variety of
plant for which a patent is sought (or as provided in Secs. 1.42, 1.43,
and 1.47). The oath or declaration required of the applicant, in
addition to the averments required by Sec. 1.63, must state that he or
she has asexually reproduced the plant. Where the plant is a newly found
plant the oath or declaration must also state that it was found in a
cultivated area.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2713, Jan. 20, 1983]
Sec. 1.163 Specification and arrangement of application elements.
(a) The specification must contain as full and complete a disclosure
as possible of the plant and the characteristics thereof that
distinguish the same over related known varieties, and its antecedents,
and must particularly point out where and in what manner the variety of
plant has been asexually reproduced. In the case of a newly found plant,
the specification must particularly point out the location and character
of the area where the plant was discovered.
(b) Two copies of the specification (including the claim) must be
submitted, but only one signed oath or declaration is required.
(c) The elements of the plant application, if applicable, should
appear in the following order:
(1) Plant Application Transmittal Form.
(2) Fee Transmittal Form.
(3) Title of the invention.
(4) Cross-reference to related applications.
(5) Statement regarding federally sponsored research or development.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed Botanical Description.
(10) A single claim.
(11) Abstract of the Disclosure.
(12) Drawings (in duplicate).
(13) Executed oath or declaration.
(14) Plant color coding sheet.
(d) A plant color coding sheet as used in this section means a sheet
that specifies a color coding system as designated in a color
dictionary, and lists every plant structure to which color is a
distinguishing feature and the corresponding color code which best
represents that plant structure.
(35 U.S.C. 112, 162; 35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983; 61
FR 42806, Aug. 19, 1996; 62 FR 53196, Oct. 10, 1997]
Sec. 1.164 Claim.
The claim shall be in formal terms to the new and distinct variety
of the specified plant as described and illustrated, and may also recite
the principal distinguishing characteristics. More than one claim is not
permitted.
(35 U.S.C. 162)
[[Page 71]]
Sec. 1.165 Plant drawings.
(a) Plant patent drawings should be artistically and competently
executed and must comply with the requirements of Sec. 1.84. View
numbers and reference characters need not be employed unless required by
the examiner. The drawing must disclose all the distinctive
characteristics of the plant capable of visual representation.
(b) The drawing may be in color and when color is a distinguishing
characteristic of the new variety, the drawing must be in color. Two
copies of color drawings or color photographs must be submitted.
[58 FR 38726, July 20, 1993]
Sec. 1.166 Specimens.
The applicant may be required to furnish specimens of the plant, or
its flower or fruit, in a quantity and at a time in its stage of growth
as may be designated, for study and inspection. Such specimens, properly
packed, must be forwarded in conformity with instructions furnished to
the applicant. When it is not possible to forward such specimens, plants
must be made available for official inspection where grown.
(35 U.S.C. 114, 161)
Sec. 1.167 Examination.
Applications may be submitted by the Patent and Trademark Office to
the Department of Agriculture for study and report.
[62 FR 53196, Oct. 10, 1997]
Reissues
Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.
Sec. 1.171 Application for reissue.
An application for reissue must contain the same parts required for
an application for an original patent, complying with all the rules
relating thereto except as otherwise provided, and in addition, must
comply with the requirements of the rules relating to reissue
applications.
[62 FR 53196, Oct. 10, 1997]
Sec. 1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to or declaration made
by the inventor or inventors except as otherwise provided (see
Secs. 1.42, 1.43, 1.47), and must be accompanied by the written consent
of all assignees, if any, owning an undivided interest in the patent,
but a reissue oath may be made and sworn to or declaration made by the
assignee of the entire interest if the application does not seek to
enlarge the scope of the claims of the original patent. All assignees
consenting to the reissue must establish their ownership interest in the
patent by filing in the reissue application a submission in accordance
with the provisions of Sec. 3.73(b) of this chapter.
(b) A reissue will be granted to the original patentee, his legal
representatives or assigns as the interest may appear.
(35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983; 62
FR 53196, Oct. 10, 1997]
Sec. 1.173 Specification.
The specification of the reissue application must include the entire
specification and claims of the patent, with the matter to be omitted by
reissue enclosed in square brackets; and any additions made by the
reissue must be underlined, so that the old and the new specifications
and claims may be readily compared. Claims should not be renumbered and
the numbering of claims added by reissue should follow the number of the
highest numbered patent claim. No new matter shall be introduced into
the specification.
Sec. 1.174 Drawings.
(a) The drawings upon which the original patent was issued may be
used in reissue applications if no changes whatsoever are to be made in
the drawings. In such cases, when the reissue application is filed, the
applicant must submit a temporary drawing which may consist of a copy of
the printed drawings of the patent or a photoprint of the original
drawings of the size required for original drawing.
(b) Amendments which can be made in a reissue drawing, that is,
changes
[[Page 72]]
from the drawing of the patent, are restricted.
(36 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983]
Sec. 1.175 Reissue oath or declaration.
(a) The reissue oath or declaration in addition to complying with
the requirements of Sec. 1.63, must also state that:
(1) The applicant believes the original patent to be wholly or
partly inoperative or invalid by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than the
patentee had the right to claim in the patent, stating at least one
error being relied upon as the basis for reissue; and
(2) All errors being corrected in the reissue application up to the
time of filing of the oath or declaration under this paragraph arose
without any deceptive intention on the part of the applicant.
(b)(1) For any error corrected, which is not covered by the oath or
declaration submitted under paragraph (a) of this section, applicant
must submit a supplemental oath or declaration stating that every such
error arose without any deceptive intention on the part of the
applicant. Any supplemental oath or declaration required by this
paragraph must be submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by
the examiner where it is indicated that the submission of a supplemental
oath or declaration as required by this paragraph will overcome the
rejection.
(2) For any error sought to be corrected after allowance, a
supplemental oath or declaration must accompany the requested correction
stating that the error(s) to be corrected arose without any deceptive
intention on the part of the applicant.
(c) Having once stated an error upon which the reissue is based, as
set forth in paragraph (a)(1), unless all errors previously stated in
the oath or declaration are no longer being corrected, a subsequent oath
or declaration under paragraph (b) of this section need not specifically
identify any other error or errors being corrected.
(d) The oath or declaration required by paragraph (a) of this
section may be submitted under the provisions of Sec. 1.53(f).
[62 FR 53196, Oct. 10, 1997]
Sec. 1.176 Examination of reissue.
An original claim, if re-presented in the reissue application, is
subject to reexamination, and the entire application will be examined in
the same manner as original applications, subject to the rules relating
thereto, excepting that division will not be required. Applications for
reissue will be acted on by the examiner in advance of other
applications, but not sooner than two months after announcement of the
filing of the reissue application has appeared in the Official Gazette.
[42 FR 5595, Jan. 28, 1977]
Sec. 1.177 Reissue in divisions.
The Commissioner may, in his or her discretion, cause several
patents to be issued for distinct and separate parts of the thing
patented, upon demand of the applicant, and upon payment of the required
fee for each division. Each division of a reissue constitutes the
subject of a separate specification descriptive of the part or parts of
the invention claimed in such division; and the drawing may represent
only such part or parts, subject to the provisions of Secs. 1.83 and
1.84. On filing divisional reissue applications, they shall be referred
to the Commissioner. Unless otherwise ordered by the Commissioner upon
petition and payment of the fee set forth in Sec. 1.17(i), all the
divisions of a reissue will issue simultaneously; if there is any
controversy as to one division, the others will be withheld from issue
until the controversy is ended, unless the Commissioner orders
otherwise.
[60 FR 20227, Apr. 25, 1995]
Sec. 1.178 Original patent.
The application for a reissue must be accompanied by an offer to
surrender the original patent. The application should also be
accompanied by the original patent, or if the original is
[[Page 73]]
lost or inaccessible, by an affidavit or declaration to that effect. The
application may be accepted for examination in the absence of the
original patent or the affidavit or declaration, but one or the other
must be supplied before the case is allowed. If a reissue be refused,
the original patent will be returned to applicant upon his request.
[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969]
Sec. 1.179 Notice of reissue application.
When an application for a reissue is filed, there will be placed in
the file of the original patent a notice stating that an application for
reissue has been filed. When the reissue is granted or the reissue
application is otherwise terminated, the fact will be added to the
notice in the file of the original patent.
Petitions and Action by the Commissioner
Authority: 35 U.S.C. 6; 15 U.S.C. 1113, 1123.
Sec. 1.181 Petition to the Commissioner.
(a) Petition may be taken to the Commissioner:
(1) From any action or requirement of any examiner in the ex parte
prosecution of an application which is not subject to appeal to the
Board of Patent Appeals and Interferences or to the court;
(2) In cases in which a statute or the rules specify that the matter
is to be determined directly by or reviewed by the Commissioner; and
(3) To invoke the supervisory authority of the Commissioner in
appropriate circumstances. For petitions in interferences, see
Sec. 1.644.
(b) Any such petition must contain a statement of the facts involved
and the point or points to be reviewed and the action requested. Briefs
or memoranda, if any, in support thereof should accompany or be embodied
in the petition; and where facts are to be proven, the proof in the form
of affidavits or declarations (and exhibits, if any) must accompany the
petition.
(c) When a petition is taken from an action or requirement of an
examiner in the ex parte prosecution of an application, it may be
required that there have been a proper request for reconsideration
(Sec. 1.111) and a repeated action by the examiner. The examiner may be
directed by the Commissioner to furnish a written statement, within a
specified time, setting forth the reasons for his decision upon the
matters averred in the petition, supplying a copy thereof to the
petitioner.
(d) Where a fee is required for a petition to the Commissioner the
appropriate section of this part will so indicate. If any required fee
does not accompany the petition, the petition will be dismissed.
(e) Oral hearing will not be granted except when considered
necessary by the Commissioner.
(f) Except as otherwise provided in these rules, any such petition
not filed within 2 months from the action complained of, may be
dismissed as untimely. The mere filing of a petition will not stay the
period for reply to an Examiner's action which may be running against an
application, nor act as a stay of other proceedings.
(g) The Commissioner may delegate to appropriate Patent and
Trademark Office officials the determination of petitions.
[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969;
47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984]
Sec. 1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of
this part will be decided in accordance with the merits of each
situation by or under the authority of the Commissioner, subject to such
other requirements as may be imposed, and such decision will be
communicated to the interested parties in writing. Any petition seeking
a decision under this section must be accompanied by the petition fee
set forth in Sec. 1.17(h).
[62 FR 53196, Oct. 10, 1997]
Sec. 1.183 Suspension of rules.
In an extraordinary situation, when justice requires, any
requirement of the regulations in this part which is not a requirement
of the statutes may be suspended or waived by the Commissioner or the
Commissioner's designee,
[[Page 74]]
sua sponte, or on petition of the interested party, subject to such
other requirements as may be imposed. Any petition under this section
must be accompanied by the petition fee set forth in Sec. 1.17(h).
[47 FR 41278, Sept. 17, 1982]
Sec. 1.184 [Reserved]
Appeal to the Board of Patent Appeals and Interferences
Authority: Secs. 1.191 to 1.198 also issued under 35 U.S.C. 134.
Sec. 1.191 Appeal to Board of Patent Appeals and Interferences.
(a) Every applicant for a patent or for reissue of a patent, and
every owner of a patent under reexamination, any of whose claims has
been twice or finally (Sec. 1.113) rejected, may appeal from the
decision of the examiner to the Board of Patent Appeals and
Interferences by filing a notice of appeal and the fee set forth in
Sec. 1.17(b) within the time period provided under Secs. 1.134 and 1.136
for reply.
(b) The signature requirement of Sec. 1.33 does not apply to a
notice of appeal filed under this section.
(c) An appeal when taken must be taken from the rejection of all
claims under rejection which the applicant or patent owner proposes to
contest. Questions relating to matters not affecting the merits of the
invention may be required to be settled before an appeal can be
considered.
(d) The time periods set forth in Secs. 1.191 and 1.192 are subject
to the provisions of Sec. 1.136 for patent applications and
Sec. 1.550(c) for reexamination proceedings. The time periods set forth
in Secs. 1.193, 1.194, 1.196 and 1.197 are subject to the provisions of
Sec. 1.136(b) for patent applications or Sec. 1.550(c) for reexamination
proceedings. See Sec. 1.304(a) for extensions of time for filing a
notice of appeal to the U.S. Court of Appeals for the Federal Circuit or
for commencing a civil action.
(e) Jurisdiction over the application or patent under reexamination
passes to the Board of Patent Appeals and Interferences upon transmittal
of the file, including all briefs and examiner's answers, to the Board.
Prior to the entry of a decision on the appeal, the Commissioner may sua
sponte order the application remanded to the examiner.
(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)
[46 FR 29183, May 29, 1981, as amended at 49 FR 555, Jan. 4, 1984; 49 FR
48453, Dec. 12, 1984; 54 FR 29552, July 13, 1989; 58 FR 54510, Oct. 22,
1993; 62 FR 53196, Oct. 10, 1997]
Sec. 1.192 Appellant's brief.
(a) Appellant must, within two months from the date of the notice of
appeal under Sec. 1.191 or within the time allowed for reply to the
action from which the appeal was taken, if such time is later, file a
brief in triplicate. The brief must be accompanied by the fee set forth
in Sec. 1.17(c) and must set forth the authorities and arguments on
which appellant will rely to maintain the appeal. Any arguments or
authorities not included in the brief will be refused consideration by
the Board of Patent Appeals and Interferences, unless good cause is
shown.
(b) On failure to file the brief, accompanied by the requisite fee,
within the time allowed, the appeal shall stand dismissed.
(c) The brief shall contain the following items under appropriate
headings and in the order indicated below unless the brief is filed by
an applicant who is not represented by a registered practitioner:
(1) Real party in interest. A statement identifying the real party
in interest, if the party named in the caption of the brief is not the
real party in interest.
(2) Related appeals and interferences. A Statement identifying by
number and filing date all other appeals or interferences known to
appellant, the appellant's legal representative, or assignee which will
directly affect or be directly affected by or have a bearing on the
Board's decision in the pending appeal.
(3) Status of claims. A statement of the status of all the claims,
pending or cancelled, and identifying the claims appealed.
(4) Status of amendments. A statement of the status of any amendment
filed subsequent to final rejection.
(5) Summary of invention. A concise explanation of the invention
defined in the claims involved in the appeal,
[[Page 75]]
which shall refer to the specification by page and line number, and to
the drawing, if any, by reference characters.
(6) Issues. A concise statement of the issues presented for review.
(7) Grouping of claims. For each ground of rejection which appellant
contests and which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall decide the appeal
as to the ground of rejection on the basis of that claim alone unless a
statement is included that the claims of the group do not stand or fall
together and, in the argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are believed to be
separately patentable. Merely pointing out differences in what the
claims cover is not an argument as to why the claims are separately
patentable.
(8) Argument. The contentions of appellant with respect to each of
the issues presented for review in paragraph (c)(6) of this section, and
the basis therefor, with citations of the authorities, statutes, and
parts of the record relied on. Each issue should be treated under a
separate heading.
(i) For each rejection under 35 U.S.C. 112, first paragraph, the
argument shall specify the errors in the rejection and how the first
paragraph of 35 U.S.C. 112 is complied with, including, as appropriate,
how the specification and drawings, if any,
(A) Describe the subject matter defined by each of the rejected
claims,
(B) Enable any person skilled in the art to make and use the subject
matter defined by each of the rejected claims, and
(C) Set forth the best mode contemplated by the inventor of carrying
out his or her invention.
(ii) For each rejection under 35 U.S.C. 112, second paragraph, the
argument shall specify the errors in the rejection and how the claims
particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
(iii) For each rejection under 35 U.S.C. 102, the argument shall
specify the errors in the rejection and why the rejected claims are
patentable under 35 U.S.C. 102, including any specific limitations in
the rejected claims which are not described in the prior art relied upon
in the rejection.
(iv) For each rejection under 35 U.S.C. 103, the argument shall
specify the errors in the rejection and, if appropriate, the specific
limitations in the rejected claims which are not described in the prior
art relied on in the rejection, and shall explain how such limitations
render the claimed subject matter unobvious over the prior art. If the
rejection is based upon a combination of references, the argument shall
explain why the references, taken as a whole, do not suggest the claimed
subject matter, and shall include, as may be appropriate, an explanation
of why features disclosed in one reference may not properly be combined
with features disclosed in another reference. A general argument that
all the limitations are not described in a single reference does not
satisfy the requirements of this paragraph.
(v) For any rejection other than those referred to in paragraphs
(c)(8) (i) to (iv) of this section, the argument shall specify the
errors in the rejection and the specific limitations in the rejected
claims, if appropriate, or other reasons, which cause the rejection to
be in error.
(9) Appendix. An appendix containing a copy of the claims involved
in the appeal.
(d) If a brief is filed which does not comply with all the
requirements of paragraph (c) of this section, appellant will be
notified of the reasons for non-compliance and provided with a period of
one month within which to file an amended brief. If appellant does not
file an amended brief during the one-month period, or files an amended
brief which does not overcome all the reasons for non-compliance stated
in the notification, the appeal will stand dismissed.
(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)
[36 FR 5850, Mar. 30, 1971, as amended at 53 FR 23734, June 23, 1988; 58
FR 54510, Oct. 22, 1993; 60 FR 14518, Mar. 17, 1995; 62 FR 53196, Oct.
10, 1997]
[[Page 76]]
Sec. 1.193 Examiner's answer and reply brief.
(a)(1) The primary examiner may, within such time as may be directed
by the Commissioner, furnish a written statement in answer to
appellant's brief including such explanation of the invention claimed
and of the references and grounds of rejection as may be necessary,
supplying a copy to appellant. If the primary examiner finds that the
appeal is not regular in form or does not relate to an appealable
action, the primary examiner shall so state.
(2) An examiner's answer must not include a new ground of rejection,
but if an amendment under Sec. 1.116 proposes to add or amend one or
more claims and appellant was advised that the amendment under
Sec. 1.116 would be entered for purposes of appeal and which individual
rejection(s) set forth in the action from which the appeal was taken
would be used to reject the added or amended claim(s), then the appeal
brief must address the rejection(s) of the claim(s) added or amended by
the amendment under Sec. 1.116 as appellant was so advised and the
examiner's answer may include the rejection(s) of the claim(s) added or
amended by the amendment under Sec. 1.116 as appellant was so advised.
The filing of an amendment under Sec. 1.116 which is entered for
purposes of appeal represents appellant's consent that when so advised
any appeal proceed on those claim(s) added or amended by the amendment
under Sec. 1.116 subject to any rejection set forth in the action from
which the appeal was taken.
(b)(1) Appellant may file a reply brief to an examiner's answer
within two months from the date of such examiner's answer. See
Sec. 1.136(b) for extensions of time for filing a reply brief in a
patent application and Sec. 1.550(c) for extensions of time for filing a
reply brief in a reexamination proceeding. The primary examiner must
either acknowledge receipt and entry of the reply brief or withdraw the
final rejection and reopen prosecution to respond to the reply brief. A
supplemental examiner's answer is not permitted, unless the application
has been remanded by the Board of Patent Appeals and Interferences for
such purpose.
(2) Where prosecution is reopened by the primary examiner after an
appeal or reply brief has been filed, appellant must exercise one of the
following two options to avoid abandonment of the application:
(i) File a reply under Sec. 1.111, if the Office action is not
final, or a reply under Sec. 1.113, if the Office action is final; or
(ii) Request reinstatement of the appeal. If reinstatement of the
appeal is requested, such request must be accompanied by a supplemental
appeal brief, but no new amendments, affidavits (Secs. 1.130, 1.131 or
1.132) or other evidence are permitted.
[62 FR 53197, Oct. 10, 1997]
Sec. 1.194 Oral hearing.
(a) An oral hearing should be requested only in those circumstances
in which appellant considers such a hearing necessary or desirable for a
proper presentation of the appeal. An appeal decided without an oral
hearing will receive the same consideration by the Board of Patent
Appeals and Interferences as appeals decided after oral hearing.
(b) If appellant desires an oral hearing, appellant must file, in a
separate paper, a written request for such hearing accompanied by the
fee set forth in Sec. 1.17(d) within two months from the date of the
examiner's answer. If appellant requests an oral hearing and submits
therewith the fee set forth in Sec. 1.17(d), an oral argument may be
presented by, or on behalf of, the primary examiner if considered
desirable by either the primary examiner or the Board. See Sec. 1.136(b)
for extensions of time for requesting an oral hearing in a patent
application and Sec. 1.550(c) for extensions of time for requesting an
oral hearing in a reexamination proceeding.
(c) If no request and fee for oral hearing have been timely filed by
appellant, the appeal will be assigned for consideration and decision.
If appellant has requested an oral hearing and has submitted the fee set
forth in Sec. 1.17(d), a day of hearing will be set, and due notice
thereof given to appellant and to the primary examiner. A hearing will
be held as stated in the notice, and oral argument will be limited to
twenty minutes for appellant and fifteen
[[Page 77]]
minutes for the primary examiner unless otherwise ordered before the
hearing begins. If the Board decides that a hearing is not necessary,
the Board will so notify appellant.
[62 FR 53197, Oct. 10, 1997]
Sec. 1.195 Affidavits or declarations after appeal.
Affidavits, declarations, or exhibits submitted after the case has
been appealed will not be admitted without a showing of good and
sufficient reasons why they were not earlier presented.
[34 FR 18858, Nov. 26, 1969]
Sec. 1.196 Decision by the Board of Patent Appeals and Interferences.
(a) The Board of Patent Appeals and Interferences, in its decision,
may affirm or reverse the decision of the examiner in whole or in part
on the grounds and on the claims specified by the examiner or remand the
application to the examiner for further consideration. The affirmance of
the rejection of a claim on any of the grounds specified constitutes a
general affirmance of the decision of the examiner on that claim, except
as to any ground specifically reversed.
(b) Should the Board of Patent Appeals and Interferences have
knowledge of any grounds not involved in the appeal for rejecting any
pending claim, it may include in the decision a statement to that effect
with its reasons for so holding, which statement constitutes a new
ground of rejection of the claim. A new ground of rejection shall not be
considered final for purposes of judicial review. When the Board of
Patent Appeals and Interferences makes a new ground of rejection, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new ground
of rejection to avoid termination of proceedings (Sec. 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the application
will be remanded to the examiner. The new ground of rejection is binding
upon the examiner unless an amendment or showing of facts not previously
of record be made which, in the opinion of the examiner, overcomes the
new ground of rejection stated in the decision. Should the examiner
reject the claims, appellant may again appeal pursuant to Secs. 1.191
through 1.195 to the Board of Patent Appeals and Interferences.
(2) Request that the application be reheard under Sec. 1.197(b) by
the Board of Patent Appeals and Interferences upon the same record. The
request for rehearing must address the new ground of rejection and state
with particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds
upon which rehearing is sought. Where request for such rehearing is
made, the Board of Patent Appeals and Interferences shall rehear the new
ground of rejection and, if necessary, render a new decision which shall
include all grounds of rejection upon which a patent is refused. The
decision on rehearing is deemed to incorporate the earlier decision for
purposes of appeal, except for those portions specifically withdrawn on
rehearing, and is final for the purpose of judicial review, except when
noted otherwise in the decision.
(c) Should the decision of the Board of Patent Appeals and
Interferences include an explicit statement that a claim may be allowed
in amended form, appellant shall have the right to amend in conformity
with such statement which shall be binding on the examiner in the
absence of new references or grounds of rejection.
(d) The Board of Patent Appeals and Interferences may require
appellant to address any matter that is deemed appropriate for a
reasoned decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such a requirement.
(e) Whenever a decision of the Board of Patent Appeals and
Interferences includes or allows a remand, that decision shall not be
considered a final decision. When appropriate, upon conclusion of
proceedings on remand before
[[Page 78]]
the examiner, the Board of Patent Appeals and Interferences may enter an
order otherwise making its decision final.
(f) See Sec. 1.136(b) for extensions of time to take action under
this section in a patent application and Sec. 1.550(c) for extensions of
time in a reexamination proceeding.
[49 FR 48453, Dec. 12, 1984, as amended at 54 FR 29552, July 13, 1989;
58 FR 54510, Oct. 22, 1993; 62 FR 53197, Oct. 10, 1997]
Sec. 1.197 Action following decision.
(a) After decision by the Board of Patent Appeals and Interferences,
the application will be returned to the examiner, subject to appellant's
right of appeal or other review, for such further action by appellant or
by the examiner, as the condition of the application may require, to
carry into effect the decision.
(b) Appellant may file a single request for rehearing within two
months from the date of the original decision, unless the original
decision is so modified by the decision on rehearing as to become, in
effect, a new decision, and the Board of Patent Appeals and
Interferences so states. The request for rehearing must state with
particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds
upon which rehearing is sought. See Sec. 1.136(b) for extensions of time
for seeking rehearing in a patent application and Sec. 1.550(c) for
extensions of time for seeking rehearing in a reexamination proceeding.
(c) Termination of proceedings. Proceedings 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.
The date of termination of proceedings is the date on which the appeal
is dismissed or the date on which the time for appeal to the court or
review by civil action (Sec. 1.304) expires. If an appeal to the court
or a civil action has been filed, proceedings are considered terminated
when the appeal or civil action is terminated. An appeal to the U.S.
Court of Appeals for the Federal Circuit is terminated when the mandate
is received by the Office. A civil action is terminated when the time to
appeal the judgment expires.
(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)
[46 FR 29184, May 29, 1981, as amended at 49 FR 48453, Dec. 12, 1984; 54
FR 29552, July 13, 1989; 58 FR 54510, Oct. 22, 1993; 62 FR 53198, Oct.
10, 1997]
Sec. 1.198 Reopening after decision.
Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary
examiner except under the provisions of Sec. 1.196 without the written
authority of the Commissioner, and then only for the consideration of
matters not already adjudicated, sufficient cause being shown.
[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48453, Dec. 12, 1984]
Miscellaneous Provisions
Sec. 1.248 Service of papers; manner of service; proof of service in cases other than interferences.
(a) Service of papers must be on the attorney or agent of the party
if there be such or on the party if there is no attorney or agent, and
may be made in any of the following ways:
(1) By delivering a copy of the paper to the person served;
(2) By leaving a copy at the usual place of business of the person
served with someone in his employment;
(3) When the person served has no usual place of business, by
leaving a copy at the person's residence, with some person of suitable
age and discretion who resides there;
(4) Transmission by first class mail. When service is by mail the
date of mailing will be regarded as the date of service;
(5) Whenever it shall be satisfactorily shown to the Commissioner
that none of the above modes of obtaining or serving the paper is
practicable, service may be by notice published in the Official Gazette.
(b) Papers filed in the Patent and Trademark Office which are
required
[[Page 79]]
to be served shall contain proof of service. Proof of service may appear
on or be affixed to papers filed. Proof of service shall include the
date and manner of service. In the case of personal service, proof of
service shall also include the name of any person served, certified by
the person who made service. Proof of service may be made by:
(1) An acknowledgement of service by or on behalf of the person
served or
(2) A statement signed by the attorney or agent containing the
information required by this section.
(c) See Sec. 1.646 for service of papers in interferences.
[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984]
Protests and Public Use Proceedings
Sec. 1.291 Protests by the public against pending applications.
(a) Protests by a member of the public against pending applications
will be referred to the examiner having charge of the subject matter
involved. A protest specifically identifying the application to which
the protest is directed will be entered in the application file if:
(1) The protest is submitted prior to the mailing of a notice of
allowance under Sec. 1.311; and
(2) The protest is either served upon the applicant in accordance
with Sec. 1.248, or filed with the Office in duplicate in the event
service is not possible.
(b) Protests raising fraud or other inequitable conduct issues will
be entered in the application file, generally without comment on those
issues. Protests which do not adequately identify a pending patent
application will be returned to the protestor and will not be further
considered by the Office. A protest submitted in accordance with the
second sentence of paragraph (a) of this section will be considered by
the Office if the application is still pending when the protest and
application file are brought before the examiner and it includes:
(1) A listing of the patents, publications, or other information
relied upon;
(2) A concise explanation of the relevance of each listed item;
(3) A copy of each listed patent or publication or other item of
information in written form or at least the pertinent portions thereof;
and
(4) An English language translation of all the necessary and
pertinent parts of any non-English language patent, publication, or
other item of information in written form relied upon.
(c) A member of the public filing a protest in an application under
paragraph (a) of this section will not receive any communications from
the Office relating to the protest, other than the return of a self-
addressed postcard which the member of the public may include with the
protest in order to receive an acknowledgment by the Office that the
protest has been received. In the absence of a request by the Office, an
applicant has no duty to, and need not, reply to a protest. The limited
involvement of the member of the public filing a protest pursuant to
paragraph (a) of this section ends with the filing of the protest, and
no further submission on behalf of the protestor will be considered,
except for additional prior art, or unless such submission raises new
issues which could not have been earlier presented.
[47 FR 21752, May 19, 1982, as amended at 57 FR 2035, Jan. 17, 1992; 61
FR 42806, Aug. 19, 1996; 62 FR 53198, Oct. 10, 1997]
Sec. 1.292 Public use proceedings.
(a) When a petition for the institution of public use proceedings,
supported by affidavits or declarations is found, on reference to the
examiner, to make a prima facie showing that the invention claimed in an
application believed to be on file had been in public use or on sale
more than one year before the filing of the application, a hearing may
be had before the Commissioner to determine whether a public use
proceeding should be instituted. If instituted, the Commissioner may
designate an appropriate official to conduct the public use proceeding,
including the setting of times for taking testimony, which shall be
taken as provided by Secs. 1.671 through 1.685. The petitioner will be
heard in the proceedings but after decision therein will not be heard
further in the prosecution of the application for patent.
(b) The petition and accompanying papers, or a notice that such a
petition
[[Page 80]]
has been filed, shall be entered in the application file if:
(1) The petition is accompanied by the fee set forth in
Sec. 1.17(j);
(2) The petition is served on the applicant in accordance with
Sec. 1.248, or filed with the Office in duplicate in the event service
is not possible; and
(3) The petition is submitted prior to the mailing of a notice of
allowance under Sec. 1.311.
(c) A petition for institution of public use proceedings shall not
be filed by a party to an interference as to an application involved in
the interference. Public use and on sale issues in an interference shall
be raised by a preliminary motion under Sec. 1.633(a).
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[42 FR 5595, Jan. 28, 1977, as amended at 49 FR 48454, Dec. 12, 1984; 61
FR 42807, Aug. 19, 1996]
Sec. 1.293 Statutory invention registration.
(a) An applicant for an original patent may request, at any time
during the pendency of applicant's pending complete application, that
the specification and drawings be published as a statutory invention
registration. Any such request must be signed by (1) the applicant and
any assignee of record or (2) an attorney or agent of record in the
application.
(b) Any request for publication of a statutory invention
registration must include the following parts:
(1) A waiver of the applicant's right to receive a patent on the
invention claimed effective upon the date of publication of the
statutory invention registration;
(2) The required fee for filing a request for publication of a
statutory invention registration as provided for in Sec. 1.17 (n) or
(o);
(3) A statement that, in the opinion of the requester, the
application to which the request is directed meets the requirements of
35 U.S.C. 112; and
(4) A statement that, in the opinion of the requester, the
application to which the request is directed complies with the formal
requirements of this part for printing as a patent.
(c) A waiver filed with a request for a statutory invention
registration will be effective, upon publication of the statutory
invention registration, to waive the inventor's right to receive a
patent on the invention claimed in the statutory invention registration,
in any application for an original patent which is pending on, or filed
after, the date of publication of the statutory invention registration.
A waiver filed with a request for a statutory invention registration
will not affect the rights of any other inventor even if the subject
matter of the statutory invention registration and an application of
another inventor are commonly owned. A waiver filed with a request for a
statutory invention registration will not affect any rights in a patent
to the inventor which issued prior to the date of publication of the
statutory invention registration unless a reissue application is filed
seeking to enlarge the scope of the claims of the patent. See also
Sec. 1.104(c)(5).
(Approved by the Office of Management and Budget under control number
0651-0018)
[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]
Sec. 1.294 Examination of request for publication of a statutory invention registration and patent application to which the request is directed.
(a) Any request for a statutory invention registration will be
examined to determine if the requirements of Sec. 1.293 have been met.
The application to which the request is directed will be examined to
determine (1) if the subject matter of the application is appropriate
for publication, (2) if the requirements for publication are met, and
(3) if the requirements of 35 U.S.C. 112 and Sec. 1.293 of this part are
met.
(b) Applicant will be notified of the results of the examination set
forth in paragraph (a) of this section. If the requirements of
Sec. 1.293 and this section are not met by the request filed, the
notification to applicant will set a period of time within which to
comply with the requirements in order to avoid abandonment of the
application. If the application does not meet the requirements of 35
U.S.C. 112, the notification to applicant will include a rejection under
the appropriate provisions of 35
[[Page 81]]
U.S.C. 112. The periods for reply established pursuant to this section
are subject to the extension of time provisions of Sec. 1.136. After
reply by the applicant, the application will again be considered for
publication of a statutory invention registration. If the requirements
of Sec. 1.293 and this section are not timely met, the refusal to
publish will be made final. If the requirements of 35 U.S.C. 112 are not
met, the rejection pursuant to 35 U.S.C. 112 will be made final.
(c) If the examination pursuant to this section results in approval
of the request for a statutory invention registration the applicant will
be notified of the intent to publish a statutory invention registration.
[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]
Sec. 1.295 Review of decision finally refusing to publish a statutory invention registration.
(a) Any requester who is dissatisfied with the final refusal to
publish a statutory invention registration for reasons other than
compliance with 35 U.S.C. 112 may obtain review of the refusal to
publish the statutory invention registration by filing a petition to the
Commissioner accompanied by the fee set forth in Sec. 1.17(h) within one
month or such other time as is set in the decision refusing publication.
Any such petition should comply with the requirements of Sec. 1.181(b).
The petition may include a request that the petition fee be refunded if
the final refusal to publish a statutory invention registration for
reasons other than compliance with 35 U.S.C. 112 is determined to result
from an error by the Patent and Trademark Office.
(b) Any requester who is dissatisfied with a decision finally
rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the
decision by filing an appeal to the Board of Patent Appeals and
Interferences pursuant to Sec. 1.191. If the decision rejecting claims
pursuant to 35 U.S.C. 112 is reversed, the request for a statutory
invention registration will be approved and the registration published
if all of the other provisions of Sec. 1.293 and this section are met.
(Approved by the Office of Management and Budget under control number
0651-0018)
[50 FR 9382, Mar. 7, 1985]
Sec. 1.296 Withdrawal of request for publication of statutory invention registration.
A request for a statutory invention registration, which has been
filed, may be withdrawn prior to the date of the notice of the intent to
publish a statutory invention registration issued pursuant to
Sec. 1.294(c) by filing a request to withdraw the request for
publication of a statutory invention registration. The request to
withdraw may also include a request for a refund of any amount paid in
excess of the application filing fee and a handling fee of $130.00 which
will be retained. Any request to withdraw the request for publication of
a statutory invention registration filed on or after the date of the
notice of intent to publish issued pursuant to Sec. 1.294(c) must be in
the form of a petition pursuant to Sec. 1.183 accompanied by the fee set
forth in Sec. 1.17(h).
[56 FR 65153, Dec. 13, 1991]
Sec. 1.297 Publication of statutory invention registration.
(a) If the request for a statutory invention registration is
approved the statutory invention registration will be published. The
statutory invention registration will be mailed to the requester at the
correspondence address as provided for in Sec. 1.33(a). A notice of the
publication of each statutory invention registration will be published
in the Official Gazette.
(b) Each statutory invention registration published will include a
statement relating to the attributes of a statutory invention
registration. The statement will read as follows:
A statutory invention registration is not a patent. It has the
defensive attributes of a patent but does not have the enforceable
attributes of a patent. No article or advertisement or the like may use
the term patent, or any term suggestive of a patent, when referring to a
statutory invention registration. For more specific information on the
rights
[[Page 82]]
associated with a statutory invention registration see 35 U.S.C. 157.
[50 FR 9383, Mar. 7, 1985, as amended at 50 FR 31826, Aug. 6, 1985]
Review of Patent and Trademark Office Decisions by Court
Sec. 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
Any applicant or any owner of a patent involved in a reexamination
proceeding dissatisfied with the decision of the Board of Patent Appeals
and Interferences, and any party to an interference dissatisfied with
the decision of the Board of Patent Appeals and Interferences, may
appeal to the U.S. Court of Appeals for the Federal Circuit. The
appellant must take the following steps in such an appeal:
(a) In the Patent and Trademark Office file a written notice of
appeal directed to the Commissioner (see Secs. 1.302 and 1.304); and
(b) In the Court, file a copy of the notice of appeal and pay the
fee for appeal, as provided by the rules of the Court.
[54 FR 29552, July 13, 1989]
Sec. 1.302 Notice of appeal.
(a) When an appeal is taken to the U.S. Court of Appeals for the
Federal Circuit, the appellant shall give notice thereof to the
Commissioner within the time specified in Sec. 1.304.
(b) In interferences, the notice must be served as provided in
Sec. 1.646.
(c) A notice of appeal, if mailed to the Office, shall be addressed
as follows: Box 8, Commissioner of Patents and Trademarks, Washington,
DC 20231.
[50 FR 9383, Mar. 7, 1985, as amended at 53 FR 16414, May 9, 1988]
Sec. 1.303 Civil action under 35 U.S.C. 145, 146, 306.
(a) Any applicant or any owner of a patent involved in a
reexamination proceeding dissatisfied with the decision of the Board of
Patent Appeals and Interferences, and any party dissatisfied with the
decision of the Board of Patent Appeals and Interferences, may, instead
of appealing to the U.S. Court of Appeals for the Federal Circuit
(Sec. 1.301), have remedy by civil action under 35 U.S.C. 145 or 146, as
appropriate. Such civil action must be commenced within the time
specified in Sec. 1.304.
(b) If an applicant in an ex parte case or an owner of a patent
involved in a reeexamination proceeding has taken an appeal to the U.S.
Court of Appeals for the Federal Circuit, he or she thereby waives his
or her right to proceed under 35 U.S.C. 145.
(c) If any adverse party to an appeal taken to the U.S. Court of
Appeals for the Federal Circuit by a defeated party in an interference
proceeding files notice with the Commissioner within twenty days after
the filing of the defeated party's notice of appeal to the court
(Sec. 1.302), that he or she elects to have all further proceedings
conducted as provided in 35 U.S.C. 146, the notice of election must be
served as provided in Sec. 1.646.
(35 U.S.C. 6; 15 U.S.C. 1123)
[47 FR 47381, Oct. 26, 1982, as amended at 49 FR 48454, Dec. 12, 1984;
54 FR 29553, July 13, 1989]
Sec. 1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court of
Appeals for the Federal Circuit (Sec. 1.302) or for commencing a civil
action (Sec. 1.303) is two months from the date of the decision of the
Board of Patent Appeals and Interferences. If a request for rehearing or
reconsideration of the decision is filed within the time period provided
under Sec. 1.197(b) or Sec. 1.658(b), the time for filing an appeal or
commencing a civil action shall expire two months after action on the
request. In interferences, the time for filing a cross-appeal or cross-
action expires:
(i) 14 days after service of the notice of appeal or the summons and
complaint; or
(ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
(2) The time periods set forth in this section are not subject to
the provisions of Secs. 1.136, 1.550(c) or 1.645 (a) or (b).
(3) The Commissioner may extend the time for filing an appeal or
commencing a civil action:
(i) For good cause shown if requested in writing before the
expiration of the
[[Page 83]]
period for filing an appeal or commencing a civil action, or
(ii) Upon written request after the expiration of the period for
filing an appeal or commencing a civil action upon a showing that the
failure to act was the result of excusable neglect.
(b) The times specified in this section in days are calendar days.
The times specified herein in months are calendar months except that one
day shall be added to any two-month period which includes February 28.
If the last day of the time specified for appeal or commencing a civil
action falls on a Saturday, Sunday or Federal holiday in the District of
Columbia, the time is extended to the next day which is neither a
Saturday, Sunday nor a Federal holiday.
(c) If a defeated party to an interference has taken an appeal to
the U.S. Court of Appeals for the Federal Circuit and an adverse party
has filed notice under 35 U.S.C. 141 electing to have all further
proceedings conducted under 35 U.S.C. 146 (Sec. 1.303(c)), the time for
filing a civil action thereafter is specified in 35 U.S.C. 141. The time
for filing a cross-action expires 14 days after service of the summons
and complaint.
[54 FR 29553, July 13, 1989, as amended at 58 FR 54502, Oct. 22, 1993;
62 FR 53198, Oct. 10, 1997]
Allowance and Issue of Patent
Sec. 1.311 Notice of allowance.
(a) If, on examination, it shall appear that the applicant is
entitled to a patent under the law, a notice of allowance will be sent
to applicant at the correspondence address indicated in Sec. 1.33,
calling for the payment of a specified sum constituting the issue fee
(Sec. 1.18), which shall be paid within 3 months from the date of the
mailing of the notice of allowance.
(b) An authorization to charge the issue fee (Sec. 1.18) to a
deposit account may be filed in an individual application, either before
or after mailing of the notice of allowance. Where an authorization to
charge the issue fee to a deposit account has been filed before the
mailing of the notice of allowance, the issue fee will be automatically
charged to the deposit account at the time of mailing the notice of
allowance.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41279, Sept. 17, 1982]
Sec. 1.312 Amendments after allowance.
(a) No amendment may be made as a matter of right in an application
after the mailing of the notice of allowance. Any amendment pursuant to
this paragraph filed before the payment of the issue fee may be entered
on the recommendation of the primary examiner, approved by the
Commissioner, without withdrawing the case from issue.
(b) Any amendment pursuant to paragraph (a) of this section filed
after the date the issue fee is paid must be accompanied by a petition
including the fee set forth in Sec. 1.17(i) and a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented. For reissue applications, see Sec. 1.175(b), which requires a
supplemental oath or declaration to accompany the amendment.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41280, Sept. 17, 1982, as amended at 58 FR 54510, Oct. 22, 1993;
60 FR 20227, Apr. 25, 1995; 62 FR 53198, Oct. 10, 1997]
Sec. 1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at
the initiative of the Office or upon petition by the applicant. Any such
petition by the applicant must include a showing of good and sufficient
reasons why withdrawal of the application is necessary and, if the
reason for the withdrawal is not the fault of the Office, must be
accompanied by the fee set forth in Sec. 1.17(i). If the application is
withdrawn from issue, a new notice of allowance will be sent if the
application is again allowed. Any amendment accompanying a petition to
withdraw an application from issue must comply with the requirements of
Sec. 1.312.
(b) When the issue fee has been paid, the application will not be
withdrawn from issue for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of Sec. 1.56 or illegality in the application;
(3) Unpatentability of one or more claims;
[[Page 84]]
(4) For interference; or
(5) For abandonment to permit consideration of an information
disclosure statement under Sec. 1.97 in a continuing application.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41280, Sept. 17, 1982, as amended at 57 FR 2035, Jan. 17, 1992;
60 FR 20227, Apr. 25, 1995]
Sec. 1.314 Issuance of patent.
If payment of the issue fee is timely made, the patent will issue in
regular course unless the application is withdrawn from issue
(Sec. 1.313), or issuance of the patent is deferred. Any petition by the
applicant requesting a deferral of the issuance of a patent must be
accompanied by the fee set forth in Sec. 1.17(i) and must include a
showing of good and sufficient reasons why it is necessary to defer
issuance of the patent.
[60 FR 20227, Apr. 25, 1995]
Sec. 1.315 Delivery of patent.
The patent will be delivered or mailed upon issuance to the
correspondence address of record. See Sec. 1.33(a).
[61 FR 42807, Aug. 19, 1996]
Sec. 1.316 Application abandoned for failure to pay issue fee.
If the issue fee is not paid within three months from the date of
the notice of allowance, the application will be regarded as abandoned.
Such an abandoned application will not be considered as pending before
the Patent and Trademark Office.
[62 FR 53198, Oct. 10, 1997]
Sec. 1.317 Lapsed patents; delayed payment of balance of issue fee.
If the issue fee paid is the amount specified in the notice of
allowance, but a higher amount is required at the time the issue fee is
paid, any remaining balance of the issue fee is to be paid within three
months from the date of notice thereof and, if not paid, the patent will
lapse at the termination of the three-month period.
[62 FR 53198, Oct. 10, 1997]
Sec. 1.318 [Reserved]
Disclaimer
Sec. 1.321 Statutory disclaimers, including terminal disclaimers.
(a) A patentee owning the whole or any sectional interest in a
patent may disclaim any complete claim or claims in a patent. In like
manner any patentee may disclaim or dedicate to the public the entire
term, or any terminal part of the term, of the patent granted. Such
disclaimer is binding upon the grantee and its successors or assigns. A
notice of the disclaimer is published in the Official Gazette and
attached to the printed copies of the specification. The disclaimer, to
be recorded in the Patent and Trademark Office, must:
(1) Be signed by the patentee, or an attorney or agent of record;
(2) Identify the patent and complete claim or claims, or term being
disclaimed. A disclaimer which is not a disclaimer of a complete claim
or claims, or term will be refused recordation;
(3) State the present extent of patentee's ownership interest in the
patent; and
(4) Be accompanied by the fee set forth in Sec. 1.20(d).
(b) An applicant or assignee may disclaim or dedicate to the public
the entire term, or any terminal part of the term, of a patent to be
granted. Such terminal disclaimer is binding upon the grantee and its
successors or assigns. The terminal disclaimer, to be recorded in the
Patent and Trademark Office, must:
(1) Be signed:
(i) By the applicant, or
(ii) If there is an assignee of record of an undivided part
interest, by the applicant and such assignee, or
(iii) If there is an assignee of record of the entire interest, by
such assignee, or
(iv) By an attorney or agent of record;
(2) Specify the portion of the term of the patent being disclaimed;
(3) State the present extent of applicant's or assignee's ownership
interest in the patent to be granted; and
(4) Be accompanied by the fee set forth in Sec. 1.20(d).
[[Page 85]]
(c) A terminal disclaimer, when filed to obviate a judicially
created double patenting rejection in a patent application or in a
reexamination proceeding, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4)
of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if
filed in a patent application or in accordance with paragraph (a)(1) of
this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application
or any patent subject to the reexamination proceeding shall be
enforceable only for and during such period that said patent is commonly
owned with the application or patent which formed the basis for the
rejection.
[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996]
Correction of Errors in Patent
Sec. 1.322 Certificate of correction of Office mistake.
(a) A certificate of correction under 35 U.S.C. 254 may be issued at
the request of the patentee or the patentee's assignee. Such certificate
will not be issued at the request or suggestion of anyone not owning an
interest in the patent, nor on motion of the Office, without first
notifying the patentee (including any assignee of record) and affording
the patentee an opportunity to be heard. When the request relates to a
patent involved in an interference, the request shall comply with the
requirements of this section and shall be accompanied by a motion under
Sec. 1.635.
(b) If the nature of the mistake on the part of the Office is such
that a certificate of correction is deemed inappropriate in form, the
Commissioner may issue a corrected patent in lieu thereof as a more
appropriate form for certificate of correction, without expense to the
patentee.
(35 U.S.C. 254)
[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984]
Sec. 1.323 Certificate of correction of applicant's mistake.
Whenever a mistake of a clerical or typographical nature or of minor
character which was not the fault of the Office, appears in a patent and
a showing is made that such mistake occurred in good faith, the
Commissioner may, upon payment of the fee set forth in Sec. 1.20(a),
issue a certificate, if the correction does not involve such changes in
the patent as would constitute new matter or would require
reexamination. A request for a certificate of correction of a patent
involved in an interference shall comply with the requirements of this
section and shall be accompanied by a motion under Sec. 1.635.
[49 FR 48454, Dec. 12, 1984]
Sec. 1.324 Correction of inventorship in patent.
(a) Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued
patent and such error arose without any deceptive intention on his or
her part, the Commissioner may, on petition, or on order of a court
before which such matter is called in question, issue a certificate
naming only the actual inventor or inventors. A petition to correct
inventorship of a patent involved in an interference must comply with
the requirements of this section and must be accompanied by a motion
under Sec. 1.634.
(b) Any petition pursuant to paragraph (a) of this section must be
accompanied by:
(1) A statement from each person who is being added as an inventor
and from each person who is being deleted as an inventor that the
inventorship error occurred without any deceptive intention on his or
her part;
(2) A statement from the current named inventors who have not
submitted a statement under paragraph (b)(1) of this section either
agreeing to the change of inventorship or stating that they have no
disagreement in regard to the requested change;
(3) A statement from all assignees of the parties submitting a
statement under paragraphs (b)(1) and (b)(2) of this section agreeing to
the change of inventorship in the patent, which
[[Page 86]]
statement must comply with the requirements of Sec. 3.73(b) of this
chapter; and
(4) The fee set forth in Sec. 1.20(b).
[62 FR 53199, Oct. 10, 1997]
Sec. 1.325 Other mistakes not corrected.
Mistakes other than those provided for in Secs. 1.322, 1.323, 1.324,
and not affording legal grounds for reissue or for reexamination, will
not be corrected after the date of the patent.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2714, Jan. 20, 1983]
Arbitration Awards
Sec. 1.331-1.334 [Reserved]
Sec. 1.335 Filing of notice of arbitration awards.
(a) Written notice of any award by an arbitrator pursuant to 35
U.S.C. 294 must be filed in the Patent and Trademark Office by the
patentee, or the patentee's assignee or licensee. If the award involves
more than one patent a separate notice must be filed for placement in
the file of each patent. The notice must set forth the patent number,
the names of the inventor and patent owner, and the names and addresses
of the parties to the arbitration. The notice must also include a copy
of the award.
(b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is
modified by a court, the party requesting the modification must file in
the Patent and Trademark Office, a notice of the modification for
placement in the file of each patent to which the modification applies.
The notice must set forth the patent number, the names of the inventor
and patent owner, and the names and addresses of the parties to the
arbitration. The notice must also include a copy of the court's order
modifying the award.
(c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be
unenforceable until any notices required by paragraph (a) or (b) of this
section are filed in the Patent and Trademark Office. If any required
notice is not filed by the party designated in paragraph (a) or (b) of
this section, any party to the arbitration proceeding may file such a
notice.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2714, Jan. 20, 1983]
Amendment of Rules
Sec. 1.351 Amendments to rules will be published.
All amendments to the regulations in this part will be published in
the Official Gazette and in the Federal Register.
Sec. 1.352 [Reserved]
Maintenance Fees
Sec. 1.362 Time for payment of maintenance fees.
(a) Maintenance fees as set forth in Secs. 1.20 (e) through (g) are
required to be paid in all patents based on applications filed on or
after December 12, 1980, except as noted in paragraph (b) of this
section, to maintain a patent in force beyond 4, 8 and 12 years after
the date of grant.
(b) Maintenance fees are not required for any plant patents or for
any design patents. Maintenance fees are not required for a reissue
patent if the patent being reissued did not require maintenance fees.
(c) The application filing dates for purposes of payment of
maintenance fees are as follows:
(1) For an application not claiming benefit of an earlier
application, the actual United States filing date of the application.
(2) For an application claiming benefit of an earlier foreign
application under 35 U.S.C. 119, the United States filing date of the
application.
(3) For a continuing (continuation, division, continuation-in-part)
application claiming the benefit of a prior patent application under 35
U.S.C. 120, the actual United States filing date of the continuing
application.
(4) For a reissue application, including a continuing reissue
application claiming the benefit of a reissue application under 35
U.S.C. 120, United States filing date of the original non-reissue
application on which the patent reissued is based.
[[Page 87]]
(5) For an international application which has entered the United
States as a Designated Office under 35 U.S.C. 371, the international
filing date granted under Article 11(1) of the Patent Cooperation Treaty
which is considered to be the United States filing date under 35 U.S.C.
363.
(d) Maintenance fees may be paid in patents without surcharge during
the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for the first
maintenance fee,
(2) 7 years through 7 years and 6 months after grant for the second
maintenance fee, and
(3) 11 years through 11 years and 6 months after grant for the third
maintenance fee.
(e) Maintenance fees may be paid with the surcharge set forth in
Sec. 1.20(h) during the respective grace periods after:
(1) 3 years and 6 months and through the day of the 4th anniversary
of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th anniversary
of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the 12th
anniversary of the grant for the third maintenance fee.
(f) If the last day for paying a maintenance fee without surcharge
set forth in paragraph (d) of this section, or the last day for paying a
maintenance fee with surcharge set forth in paragraph (e) of this
section, falls on a Saturday, Sunday, or a federal holiday within the
District of Columbia, the maintenance fee and any necessary surcharge
may be paid under paragraph (d) or paragraph (e) respectively on the
next succeeding day which is not a Saturday, Sunday, or federal holiday.
(g) Unless the maintenance fee and any applicable surcharge is paid
within the time periods set forth in paragraphs (d), (e) or (f) of this
section, the patent will expire as of the end of the grace period set
forth in paragraph (e) of this section. A patent which expires for the
failure to pay the maintenance fee will expire at the end of the same
date (anniversary date) the patent was granted in the 4th, 8th, or 12th
year after grant.
(h) The periods specified in Secs. 1.362 (d) and (e) with respect to
a reissue application, including a continuing reissue application
thereof, are counted from the date of grant of the original non-reissue
application on which the reissued patent is based.
[49 FR 34724, Aug. 31, 1984, as amended at 56 FR 65154, Dec. 13, 1991;
58 FR 54511, Oct. 22, 1993]
Sec. 1.363 Fee address for maintenance fee purposes.
(a) All notices, receipts, refunds, and other communications
relating to payment or refund of maintenance fees will be directed to
the correspondence address used during prosecution of the application as
indicated in Sec. 1.33(a) unless:
(1) A fee address for purposes of payment of maintenance fees is set
forth when submitting the issue fee, or
(2) A change in the correspondence address for all purposes is filed
after payment of the issue fee, or
(3) A fee address or a change in the ``fee address'' is filed for
purposes of receiving notices, receipts and other correspondence
relating to the payment of maintenance fees after the payment of the
issue fee, in which instance, the latest such address will be used.
(b) An assignment of a patent application or patent does not result
in a change of the ``correspondence address'' or ``fee address'' for
maintenance fee purposes.
[49 FR 34725, Aug. 31, 1984]
Sec. 1.366 Submission of maintenance fees.
(a) The patentee may pay maintenance fees and any necessary
surcharges, or any person or organization may pay maintenance fees and
any necessary surcharges on behalf of a patentee. Authorization by the
patentee need not be filed in the Patent and Trademark Office to pay
maintenance fees and any necessary surcharges on behalf of the patentee.
(b) A maintenance fee and any necessary surcharge submitted for a
patent must be submitted in the amount due on the date the maintenance
fee and any necessary surcharge are paid. A maintenance fee or surcharge
may be paid in the manner set forth in Sec. 1.23 or
[[Page 88]]
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 Commissioner in an expired patent pursuant to a petition
filed under Sec. 1.378. Any authorization to charge a deposit account
must authorize the immediate charging of the maintenance fee and any
necessary surcharge to the deposit account. Payment of less than the
required amount, payment in a manner other than that set forth
Sec. 1.23, or in the filing of an authorization to charge a deposit
account having insufficient funds will not constitute payment of a
maintenance fee or surcharge on a patent. The procedures set forth in
Sec. 1.8 or Sec. 1.10 may be utilized in paying maintenance fees and any
necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
must include the following:
(1) The patent number; and
(2) The application number of the United States application for the
patent on which the maintenance fee is being paid.
(d) Payment of maintenance fees and any surcharges should identify
the fee being paid for each patent as to whether it is the 3\1/2\-, 7\1/
2\-, or 11\1/2\-year fee, whether small entity status is being changed
or claimed, the amount of the maintenance fee and any surcharge being
paid, and any assigned customer number. If the maintenance fee and any
necessary surcharge is being paid on a reissue patent, the payment must
identify the reissue patent by reissue patent number and reissue
application number as required by paragraph (c) of this section and
should also include the original patent number.
(e) Maintenance fee payments and surcharge payments relating thereto
must be submitted separate from any other payments for fees or charges,
whether submitted in the manner set forth in Sec. 1.23 or by an
authorization to charge a deposit account. If maintenance fee and
surcharge payments for more than one patent are submitted together, they
should be submitted on as few sheets as possible with the patent numbers
listed in increasing patent number order. If the payment submitted is
insufficient to cover the maintenance fees and surcharges for all the
listed patents, the payment will be applied in the order the patents are
listed, beginning at the top of the listing.
(f) Notification of any change in status resulting in loss of
entitlement to small entity status must be filed in a patent prior to
paying, or at the time of paying, the earliest maintenance fee due after
the date on which status as a small entity is no longer appropriate. See
Sec. 1.28(b).
(g) Maintenance fees and surcharges relating thereto will not be
refunded except in accordance with Secs. 1.26 and 1.28(a).
[49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993;
62 FR 53199, Oct. 10, 1997]
Sec. 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
(a) Any patentee who is dissatisfied with the refusal of the Patent
and Trademark Office to accept and record a maintenance fee which was
filed prior to the expiration of the patent may petition the
Commissioner to accept and record the maintenance fee.
(b) Any petition under this section must be filed within 2 months of
the action complained of, or within such other time as may be set in the
action complained of, and must be accompanied by the fee set forth in
Sec. 1.17(h). The petition may include a request that the petition fee
be refunded if the refusal to accept and record the maintenance fee is
determined to result from an error by the Patent and Trademark Office.
(c) Any petition filed under this section must comply with the
requirements of Sec. 1.181(b) and must be signed by an attorney or agent
registered to
[[Page 89]]
practice before the Patent and Trademark Office, or by the patentee, the
assignee, or other party in interest.
[49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997]
Sec. 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
(a) The Commissioner 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 Commissioner to have been unavoidable (paragraph (b) of this
section) or unintentional (paragraph (c) of this section) and if the
surcharge required by Sec. 1.20(i) is paid as a condition of accepting
payment of the maintenance fee. If the Commissioner accepts payment of
the maintenance fee upon petition, the patent shall be considered as not
having expired, but will be subject to the conditions set forth in 35
U.S.C. 41(c)(2).
(b) Any petition to accept an unavoidably delayed payment of a
maintenance fee filed under paragraph (a) of this section must include:
(1) The required maintenance fee set forth in Sec. 1.20 (e) through
(g);
(2) The surcharge set forth in Sec. 1.20(i)(1); and
(3) A showing that the delay was unavoidable since reasonable care
was taken to ensure that the maintenance fee would be paid timely and
that the petition was filed promptly after the patentee was notified of,
or otherwise became aware of, the expiration of the patent. The showing
must enumerate the steps taken to ensure timely payment of the
maintenance fee, the date and the manner in which patentee became aware
of the expiration of the patent, and the steps taken to file the
petition promptly.
(c) Any petition to accept an unintentionally delayed payment of a
maintenance fee filed under paragraph (a) of this section must be filed
within twenty-four months after the six-month grace period provided in
Sec. 1.362(e) and must include:
(1) The required maintenance fee set forth in Sec. 1.20 (e) through
(g);
(2) The surcharge set forth in Sec. 1.20(i)(2); and
(3) A statement that the delay in payment of the maintenance fee was
unintentional.
(d) Any petition under this section must be signed by an attorney or
agent registered to practice before the Patent and Trademark Office, or
by the patentee, the assignee, or other party in interest.
(e) Reconsideration of a decision refusing to accept a maintenance
fee upon petition filed pursuant to paragraph (a) of this section may be
obtained by filing a petition for reconsideration within two months of,
or such other time as set in, the decision refusing to accept the
delayed payment of the maintenance fee. Any such petition for
reconsideration must be accompanied by the petition fee set forth in
Sec. 1.17(h). After decision on the petition for reconsideration, no
further reconsideration or review of the matter will be undertaken by
the Commissioner. If the delayed payment of the maintenance fee is not
accepted, the maintenance fee and the surcharge set forth in
Sec. 1.20(i) will be refunded following the decision on the petition for
reconsideration, or after the expiration of the time for filing such a
petition for reconsideration, if none is filed. Any petition fee under
this section will not be refunded unless the refusal to accept and
record the maintenance fee is determined to result from an error by the
Patent and Trademark Office.
[49 FR 34726, Aug. 31, 1984, as amended at 50 FR 9383, Mar. 7, 1985; 58
FR 44282, Aug. 20, 1993; 62 FR 53199, Oct. 10, 1997]
Subpart C--International Processing Provisions
Authority: Pub. L. 94-131, 89 Stat. 685; Pub. L. 99-616, 35 U.S.C.
351 through 376.
Source: 43 FR 20466, May 11, 1978, unless otherwise noted.
General Information
Sec. 1.401 Definitions of terms under the Patent Cooperation Treaty.
(a) The abbreviation PCT and the term Treaty mean the Patent
Cooperation Treaty.
(b) International Bureau means the World Intellectual Property
Organization located in Geneva, Switzerland.
[[Page 90]]
(c) Administrative Instructions means that body of instructions for
operating under the Patent Cooperation Treaty referred to in PCT Rule
89.
(d) Request, when capitalized, means that element of the
international application described in PCT Rules 3 and 4.
(e) International application, as used in this subchapter is defined
in Sec. 1.9(b).
(f) Priority date for the purpose of computing time limits under the
Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also
Sec. 1.465.
(g) Demand, when capitalized, means that document filed with the
International Preliminary Examining Authority which requests an
international preliminary examination.
(h) Annexes means amendments made to the claims, description or the
drawings before the International Preliminary Examining Authority.
(i) Other terms and expressions in this subpart C not defined in
this section are to be taken in the sense indicated in PCT Art. 2 and 35
U.S.C. 351.
[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987]
Sec. 1.412 The United States Receiving Office.
(a) The United States Patent and Trademark Office is a Receiving
Office only for applicants who are residents or nationals of the United
States of America.
(b) The Patent and Trademark Office, when acting as a Receiving
Office, will be identified by the full title ``United States Receiving
Office'' or by the abbreviation ``RO/US.''
(c) The major functions of the Receiving Office include:
(1) According of international filing dates to international
applications meeting the requirements of PCT Art. 11(1), and PCT Rule
20;
(2) Assuring that international applications meet the standards for
format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91,
and portions of PCT Rules 3 through 11;
(3) Collecting and, when required, transmitting fees due for
processing international applications (PCT Rule 14, 15, 16);
(4) Transmitting the record and search copies to the International
Bureau and International Searching Authority, respectively (PCT Rules 22
and 23); and
(5) Determining compliance with applicable requirements of part 5 of
this chapter.
(6) Reviewing and, unless prescriptions concerning national security
prevent the application from being so transmitted (PCT Rule 19.4),
transmitting the international application to the International Bureau
for processing in its capacity as a Receiving Office:
(i) Where the United States Receiving Office is not the competent
Receiving Office under PCT Rule 19.1 or 19.2 and Sec. 1.421(a); or
(ii) Where the international application is not in English but is in
a language accepted under PCT Rule 12.1(a) by the International Bureau
as a Receiving Office; or
(iii) Where there is agreement and authorization in accordance with
PCT Rule 19.4(a)(iii).
[43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995; 63
FR 29617, June 1, 1998]
Sec. 1.413 The United States International Searching Authority.
(a) Pursuant to appointment by the Assembly, the United States
Patent and Trademark Office will act as an International Searching
Authority for international applications filed in the United States
Receiving Office and in other Receiving Offices as may be agreed upon by
the Commissioner, in accordance with agreement between the Patent and
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
(b) The Patent and Trademark Office, when acting as an International
Searching Authority, will be identified by the full title ``United
States International Searching Authority'' or by the abbreviation ``ISA/
US.''
(c) The major functions of the International Searching Authority
include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type searches and
preparing international and international-
[[Page 91]]
type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45
and 47); and
(4) Transmitting the international search report to the applicant
and the International Bureau.
Sec. 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office.
(a) The United States Patent and Trademark Office will act as a
Designated Office or Elected Office for international applications in
which the United States of America has been designated or elected as a
State in which patent protection is desired.
(b) The United States Patent and Trademark Office, when acting as a
Designated Office or Elected Office during international processing will
be identified by the full title ``United States Designated Office'' or
by the abbreviation ``DO/US'' or by the full title ``United States
Elected Office'' or by the abbreviation ``EO/US''.
(c) The major functions of the United States Designated Office or
Elected Office in respect to international applications in which the
United States of America has been designated or elected, include:
(1) Receiving various notifications throughout the international
stage and
(2) Accepting for national stage examination international
applications which satisfy the requirements of 35 U.S.C. 371.
[52 FR 20047, May 28, 1987]
Sec. 1.415 The International Bureau.
(a) The International Bureau is the World Intellectual Property
Organization located at Geneva, Switzerland. It is the international
intergovernmental organization which acts as the coordinating body under
the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)).
(b) The major functions of the International Bureau include:
(1) Publishing of international applications and the International
Gazette;
(2) Transmitting copies of international applications to Designated
Offices;
(3) Storing and maintaining record copies; and
(4) Transmitting information to authorities pertinent to the
processing of specific international applications.
Sec. 1.416 The United States International Preliminary Examining Authority.
(a) Pursuant to appointment by the Assembly, the United States
Patent and Trademark Office will act as an International Preliminary
Examining Authority for international applications filed in the United
States Receiving Office and in other Receiving Offices as may be agreed
upon by the Commissioner, in accordance with agreement between the
Patent and Trademark Office and the International Bureau.
(b) The United States Patent and Trademark Office, when acting as an
International Preliminary Examining Authority, will be identified by the
full title ``United States International Preliminary Examining
Authority'' or by the abbreviation ``IPEA/US.''
(c) The major functions of the International Preliminary Examining
Authority include:
(1) Receiving and checking for defects in the Demand;
(2) Forwarding Demands in accordance with PCT Rule 59.3;
(3) Collecting the handling fee for the International Bureau and the
preliminary examination fee for the United States International
Preliminary Examining Authority;
(4) Informing applicant of receipt of the Demand;
(5) Considering the matter of unity of invention;
(6) Providing an international preliminary examination report which
is a non-binding opinion on the questions of whether the claimed
invention appears: to be novel, to involve an inventive step (to be
nonobvious), and to be industrially applicable; and
(7) Transmitting the international preliminary examination report to
applicant and the International Bureau.
[52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998]
Sec. 1.419 Display of currently valid control number under the Paperwork Reduction Act.
(a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et
[[Page 92]]
seq.), the collection of information in this subpart has been reviewed
and approved by the Office of Management and Budget under control number
0651-0021.
(b) Notwithstanding any other provision of law, no person is
required to respond to nor shall a person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid Office of Management and Budget
control number. This section constitutes the display required by 44
U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of
information under Office of Management and Budget control number 0651-
0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).
[63 FR 29617, June 1, 1998]
Who May File an International Application
Sec. 1.421 Applicant for international application.
(a) Only residents or nationals of the United States of America may
file international applications in the United States Receiving Office.
If an international application does not include an applicant who is
indicated as being a resident or national of the United States of
America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting
State, or
(2) Has no residence or nationality indicated; applicant will be so
notified and, if the international application includes a fee amount
equivalent to that required by Sec. 1.445(a)(5), the international
application will be forwarded for processing to the International Bureau
acting as a Receiving Office. (See also Sec. 1.412(c)(6).)
(b) Although the United States Receiving Office will accept
international applications filed by any resident or national of the
United States of America for international processing, an international
application designating the United States of America will be accepted by
the Patent and Trademark Office for the national stage only if filed by
the inventor or as provided in Sec. 1.422, 1.423 or Sec. 1.425.
(c) International applications which do not designate the United
States of America may be filed by the assignee or owner.
(d) The attorney or agent of the applicant may sign the
international application Request and file the international application
for the applicant if the international application when filed is
accompanied by a separate power of attorney to that attorney or agent
from the applicant. The separate power of attorney from the applicant
may be submitted after filing if sufficient cause is shown for not
submitting it at the time of filing. Note that paragraph (b) of this
section requires that the applicant be the inventor if the United States
of America is designated.
(e) Any indication of different applicants for the purpose of
different Designated Offices must be shown on the Request portion of the
international application.
(f) Changes in the person, name, or address of the applicant of an
international application shall be made in accordance with PCT Rule
92bis.
(g) The wording of PCT Rule 92bis is as follows:
PCT Rule 92bis--Recording of Changes in Certain Indications in the
Request or the Demand
92bis Recording of Changes by the International Bureau
(a) The International Bureau shall, on the request of the applicant
or the receiving Office, record changes in the following indications
appearing in the request or demand:
(i) Person name, residence, nationality or address of the applicant,
(ii) Person, name or address of the agent, the common representative
or the inventor.
(b) The International Bureau shall not record the requested change
if the request for recording is received by it after the expiration:
(i) Of the time limit referred to in Article 22(1), where Article
39(1) is not applicable with respect to any Contracting State;
(ii) Of the time limit referred to in Article 39(1)(a), where
Article 39(1) is applicable with respect to at least one Contracting
State.
[43 FR 20466, May 11, 1978, as amended at 53 FR 47810, Nov. 28, 1988; 60
FR 21440, May 2, 1995]
[[Page 93]]
Sec. 1.422 When the inventor is dead.
In case of the death of the inventor, the legal representative
(executor, administrator, etc.) of the deceased inventor may file an
international application which designates the United States of America.
Sec. 1.423 When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally incapacitated,
the legal representative (guardian, conservator, etc.) of such inventor
may file an international application which designates the United States
of America.
Sec. 1.424 Joint inventors.
Joint inventors must jointly file an international application which
designates the United States of America; the signature of either of them
alone, or less than the entire number will be insufficient for an
invention invented by them jointly, except as provided in Sec. 1.425.
Sec. 1.425 Filing by other than inventor.
Where an international application which designates the United
States of America is filed and where one or more inventors refuse to
sign the Request for the international application or cannot be found or
reached after diligent effort, the Request need not be signed by such
inventor if it is signed by another applicant. Such international
application must be accompanied by a statement explaining to the
satisfaction of the Commissioner the lack of the signature concerned.
[62 FR 53199, Oct. 10, 1997]
The International Application
Sec. 1.431 International application requirements.
(a) An international application shall contain, as specified in the
Treaty and the Regulations, a Request, a description, one or more
claims, an abstract, and one or more drawings (where required). (PCT
Art. 3(2) and section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United
States Receiving Office, at the time to receipt of the international
application, provided that:
(1) At least one applicant (Sec. 1.421) is a United States resident
or national and the papers filed at the time of receipt of the
international application so indicate (35 U.S.C. 361(a), PCT Art.
11(1)(i)).
(2) The international application is in the English language (35
U.S.C. 361(c), PCT Art. 11(1)(ii)).
(3) The international application contains at least the following
elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international
application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the
International Patent Cooperation Union (Sec. 1.432);
(iii) The name of the applicant, as perscribed (note Secs. 1.421-
1.424);
(iv) A part which on the face of it appears to be a description; and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the basic portion of the international fee (PCT Rule
15.2) and the transmittal and search fees (Sec. 1.445) may be made in
full at the time the international application papers required by
paragraph (b) of this section are deposited or within one month
thereafter. The basic, transmittal, and search fee payable is the basic,
transmittal, and search fee in effect on the receipt date of the
international application.
(1) If the basic, transmittal and search fees are not paid within
one month from the date of receipt of the international application and
prior to the sending of a notice of deficiency, applicant will be
notified and given one month within which to pay the deficient fees plus
a late payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees up to a
maximum amount equal to the basic fee; or
(ii) An amount equal to the transmittal fee (PCT Rule 16bis).
(2) The one-month time limit set pursuant to this paragraph to pay
deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the basic
fee, the search fee, one designation fee and the
[[Page 94]]
late payment fee pursuant to paragraph (c) of this section is not timely
made in accordance with PCT Rule 16bis.1(e), the Receiving Office will
declare the international application withdrawn under PCT Article
14(3)(a).
[43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52
FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1,
1998]
Sec. 1.432 Designation of States and payment of designation and confirmation fees.
(a) The designation of States including an indication that applicant
wishes to obtain a regional patent, where applicable, shall appear in
the Request upon filing and must be indicated as set forth in PCT Rule
4.9 and section 115 of the Administrative Instructions. Applicant must
specify at least one national or regional designation on filing of the
international application for a filing date to be granted.
(b) If the fees necessary to cover all the national and regional
designations specified in the Request are not paid by the applicant
within one year from the priority date or within one month from the date
of receipt of the international application if that month expires after
the expiration of one year from the priority date, applicant will be
notified and given one month within which to pay the deficient
designation fees plus a late payment fee. The late payment fee shall be
equal to the greater of fifty percent of the amount of the deficient
fees up to a maximum amount equal to the basic fee, or an amount equal
to the transmittal fee (PCT Rule 16bis). The one-month time limit set in
the notification of deficient designation fees may not be extended.
Failure to timely pay at least one designation fee will result in the
withdrawal of the international application.
(1) The one designation fee must be paid:
(i) Within one year from the priority date;
(ii) Within one month from the date of receipt of the international
application if that month expires after the expiration of one year from
the priority date; or
(iii) With the late payment fee defined in this paragraph within the
time set in the notification of the deficient designation fees or in
accordance with PCT Rule 16bis.1(e).
(2) If after a notification of deficient designation fees the
applicant makes timely payment, but the amount paid is not sufficient to
cover the late payment fee and all designation fees, the Receiving
Office will, after allocating payment for the basic, search, transmittal
and late payment fees, allocate the amount paid in accordance with PCT
Rule 16bis.1(c) and withdraw the unpaid designations. The notification
of deficient designation fees pursuant to this paragraph may be made
simultaneously with any notification pursuant to Sec. 1.431(c).
(c) The amount payable for the designation fee set forth in
paragraph (b) is:
(1) The designation fee in effect on the filing date of the
international application, if such fee is paid in full within one month
from the date of receipt of the international application;
(2) The designation fee in effect on the date such fee is paid in
full, if such fee is paid in full later than one month from the date of
receipt of the international application but within one year from the
priority date;
(3) The designation fee in effect on the date one year from the
priority date, if the fee was due one year from the priority date, and
such fee is paid in full later than one month from the date of receipt
of the international application and later than one year from the
priority date; or
(4) The designation fee in effect on the international filing date,
if the fee was due one month from the international filing date and
after one year from the priority date, and such fee is paid in full
later than one month from the date of receipt of the international
application and later than one year from the priority date.
(d) On filing the international application, in addition to
specifying at least one national or regional designation under PCT Rule
4.9(a), applicant may also indicate under PCT Rule 4.9(b) that all other
designations permitted under the Treaty are made.
(1) Indication of other designations permitted by the Treaty under
PCT
[[Page 95]]
Rule 4.9(b) must be made in a statement on the Request that any
designation made under this paragraph is subject to confirmation (PCT
Rule 4.9(c)) not later than the expiration of 15 months from the
priority date by:
(i) Filing a written notice with the United States Receiving Office
specifying the national and/or regional designations being confirmed;
(ii) Paying the designation fee for each designation being
confirmed; and
(iii) Paying the confirmation fee specified in Sec. 1.445(a)(4).
(2) Unconfirmed designations will be considered withdrawn. If the
amount submitted is not sufficient to cover the designation fee and the
confirmation fee for each designation being confirmed, the Receiving
Office will allocate the amount paid in accordance with any priority of
designations specified by applicant. If applicant does not specify any
priority of designations, the allocation of the amount paid will be made
in accordance with PCT Rule 16bis.1(c).
[58 FR 4344, Jan. 14, 1993, as amended at 63 FR 29618, June 1, 1998]
Sec. 1.433 Physical requirements of international application.
(a) The international application and each of the documents that may
be referred to in the check list of the Request (PCT Rule 3.3(a)(ii))
shall be filed in one copy only.
(b) All sheets of the international application must be on A4 size
paper (21.0 x 29.7 cm.).
(c) Other physical requirements for international applications are
set forth in PCT Rule 11 and sections 201-207 of the Administrative
Instructions.
Sec. 1.434 The request.
(a) The request shall be made on a standardized form (PCT Rules 3
and 4). Copies of printed Request forms are available from the Patent
and Trademark Office. Letters requesting printed forms should be marked
``Box PCT.''
(b) The Check List portion of the Request form should indicate each
document accompanying the international application on filing.
(c) All information, for example, addresses, names of States and
dates, shall be indicated in the Request as required by PCT Rule 4 and
Administrative Instructions 110 and 201.
(d) International applications which designate the United States of
America shall include:
(1) The name, address and signature of the inventor, except as
provided by Secs. 1.421(d), 1.422, 1.423 and 1.425;
(2) A reference to any copending national application or
international application designating the United States of America, if
the benefit of the filing date for the prior copending application is to
be claimed.
[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993]
Sec. 1.435 The description.
(a) The application must meet the requirements as to the content and
form of the description set forth in PCT Rules 5, 9, 10, and 11 and
sections 204 and 208 of the Administrative Instructions.
(b) In international applications designating the United States the
description must contain upon filing an indication of the best mode
contemplated by the inventor for carrying out the claimed invention.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]
Sec. 1.436 The claims.
The requirements as to the content and format of claims are set
forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered
to. The number of the claims shall be reasonable, considering the nature
of the invention claimed.
Sec. 1.437 The drawings.
(a) Subject to paragraph (b) of this section, when drawings are
necessary for the understanding of the invention, or are mentioned in
the description, they must be part of an international application as
originally filed in the United States Receiving Office in order to
maintain the international filing date during the national stage (PCT
Art. 7).
(b) Drawings missing from the application upon filing will be
accepted if such drawings are received within 30 days of the date of
first receipt of the
[[Page 96]]
incomplete papers. If the missing drawings are received within the 30-
day period, the international filing date shall be the date on which
such drawings are received. If such drawings are not timely received,
all references to drawings in the international application shall be
considered non-existent (PCT Art. 14(2), Administrative Instruction
310).
(c) The physical requirements for drawings are set forth in PCT Rule
11 and shall be adhered to.
Sec. 1.438 The abstract.
(a) Requirements as to the content and form of the abstract are set
forth in PCT Rule 8, and shall be adhered to.
(b) Lack of an abstract upon filing of an international application
will not affect the granting of a filing date. However, failure to
furnish an abstract within one month from the date of the notification
by the Receiving Office will result in the international appplication
being declared withdrawn.
Fees
Sec. 1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications
are established by the Commissioner under the authority of 35 U.S.C.
376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)--
$240.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) Where a corresponding prior United States National application
filed under 35 U.S.C. 111(a) with the filing fee under Sec. 1.16(a) has
been filed-- 450.00
(ii) For all situations not provided for in paragraph (a)(2)(i) of
this section--700.00
(3) A supplemental search fee when required, per additional
invention--210.00
(4) A confirmation fee (PCT Rule 96) equal to fifty percent of the
sum of designation fees for the national and regional designations being
confirmed (Sec. 1.432(d)).
(5) A fee equivalent to the transmittal fee in paragraph (a)(1) of
this section for transmittal of an international application to the
International Bureau for processing in its capacity as a Receiving
Office (PCT Rule 19.4).
(b) The basic fee and designation fee portions of the international
fee shall be prescribed in PCT Rule 15.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987; 54
FR 9432, Mar. 7, 1989; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July 30,
1996; 63 FR 29619, June 1, 1998]
Sec. 1.446 Refund of international application filing and processing fees.
(a) Money paid for international application fees, where paid by
actual mistake or in excess, such as a payment not required by law or
Treaty and its Regulations, will be refunded.
(b) [Reserved]
(c) Refund of the supplemental search fees will be made if such
refund is determined to be warranted by the Commissioner or the
Commissioner's designee acting under PCT Rule 40.2(c).
(d) The international and search fees will be refunded if no
international filing date is accorded or if the application is withdrawn
before transmittal of the record copy to the International Bureau (PCT
Rules 15.6 and 16.2). The search fee will be refunded if the application
is withdrawn before transmittal of the search copy to the International
Searching Authority. The transmittal fee will not be refunded.
(e) The handling fee (Sec. 1.482(b)) will be refunded (PCT Rule
57.6) only if:
(1) The Demand is withdrawn before the Demand has been sent by the
International Preliminary Examining Authority to the International
Bureau, or
(2) The Demand is considered not to have been submitted (PCT Rule
54.4(a)).
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50
FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993]
Priority
Sec. 1.451 The priority claim and priority document in an international application.
(a) The claim for priority must, subject to paragraph (d) of this
section, be made on the Request (PCT Rule 4.10) in a manner complying
with sections 110 and 115 of the Administrative Instructions.
[[Page 97]]
(b) Whenever the priority of an earlier United States national
application is claimed in an international application, the applicant
may request in a letter of transmittal accompanying the international
application upon filing with the United States Receiving Office or in a
separate letter filed in the Receiving Office not later than 16 months
after the priority date, that the Patent and Trademark Office prepare a
certified copy of the national application for transmittal to the
International Bureau (PCT Article 8 and PCT Rule 17). The fee for
preparing a certified copy is stated in Sec. 1.19 (b)(1).
(c) If a certified copy of the priority document is not submitted
together with the international application on filing, or, if the
priority application was filed in the United States and a request and
appropriate payment for preparation of such a certified copy do not
accompany the international application on filing or are not filed
within 16 months of the priority date, the certified copy of the
priority document must be furnished by the applicant to the
International Bureau or to the United States Receiving Office within the
time limit specified in PCT Rule 17.1(a).
(d) The applicant may correct or add a priority claim in accordance
with PCT Rule 26bis.1.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50
FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14,
1993; 63 FR 29619, June 1, 1998]
Representation
Sec. 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by
attorneys or agents registered to practice before the Patent and
Trademark Office or by an applicant appointed as a common representative
(PCT Art. 49, Rules 4.8 and 90 and Sec. 10.10). If applicants have not
appointed an attorney or agent or one of the applicants to represent
them, and there is more than one applicant, the applicant first named in
the request and who is entitled to file in the U.S. Receiving Office
shall be considered to be the common representative of all the
applicants. An attorney or agent having the right to practice before a
national office with which an international application is filed and for
which the United States is an International Searching Authority or
International Preliminary Examining Authority may be appointed to
represent the applicants in the international application before that
authority. An attorney or agent may appoint an associate attorney or
agent who shall also then be of record (PCT Rule 90.1(d)). The
appointment of an attorney or agent, or of a common representative,
revokes any earlier appointment unless otherwise indicated (PCT Rule
90.6 (b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT
Rule 4.8) must be effected either in the Request form, signed by all
applicants, or in a separate power of attorney submitted either to the
United States Receiving Office or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted
to the United States Receiving Office until the issuance of the
international search report.
(d) The addressee for correspondence will be as indicated in section
108 of the Administrative Instructions.
[43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58
FR 4345, Jan. 14, 1993]
Transmittal of Record Copy
Sec. 1.461 Procedures for transmittal of record copy to the International Bureau.
(a) Transmittal of the record copy of the international application
to the International Bureau shall be made by the United States Receiving
Office or as provided by PCT Rule 19.4.
(b) [Reserved]
(c) No copy of an international application may be transmitted to
the International Bureau, a foreign Designated Office, or other foreign
authority by the United States Receiving Office or the applicant, unless
the applicable requirements of part 5 of this chapter have been
satisfied.
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63
FR 29619, June 1, 1998]
[[Page 98]]
Timing
Sec. 1.465 Timing of application processing based on the priority date.
(a) For the purpose of computing time limits under the Treaty, the
priority date shall be defined as in PCT Art. 2(xi).
(b) When a claimed priority date is corrected or added under PCT
Rule 26bis.1(a), or withdrawn under PCT Rule 90bis.3, or considered not
to have been made under PCT Rule 26bis.2, the priority date for the
purposes of computing any non-expired time limits will be the date of
the earliest valid remaining priority claim of the international
application, or if none, the international filing date.
(c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule
20.2(a) (i) or (iii) are timely submitted, and the date of receipt of
such corrections falls later than one year from the claimed priority
date or dates, the Receiving Office shall proceed under PCT Rule
26bis.2.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]
Sec. 1.468 Delays in meeting time limits.
Delays in meeting time limits during international processing of
international applications may only be excused as provided in PCT Rule
82. For delays in meeting time limits in a national application, see
Sec. 1.137.
Amendments
Sec. 1.471 Corrections and amendments during international processing.
(a) Except as otherwise provided in this paragraph, all corrections
submitted to the United States Receiving Office or United States
International Searching Authority must be in English, in the form of
replacement sheets in compliance with PCT Rules 10 and 11, and
accompanied by a letter that draws attention to the differences between
the replaced sheets and the replacement sheets. Replacement sheets are
not required for the deletion of lines of text, the correction of simple
typographical errors, and one addition or change of not more than five
words per sheet. These changes may be stated in a letter and, if
appropriate, the United States Receiving Office will make the deletion
or transfer the correction to the international application, provided
that such corrections do not adversely affect the clarity and direct
reproducibility of the application (PCT Rule 26.4). Amendments that do
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) Amendments of claims submitted to the International Bureau shall
be as prescribed by PCT Rule 46.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998]
Sec. 1.472 Changes in person, name, or address of applicants and inventors.
All requests for a change in person, name or address of applicants
and inventor be sent to the United States Receiving Office until the
time of issuance of the international search report. Thereafter requests
for such changes should be submitted to the International Bureau.
[43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]
Unity of Invention
Sec. 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
(a) An international and a national stage application shall relate
to one invention only or to a group of inventions so linked as to form a
single general inventive concept (``requirement of unity of
invention''). Where a group of inventions is claimed in an application,
the requirement of unity of invention shall be fulfilled only when there
is a technical relationship among those inventions involving one or more
of the same or corresponding special technical features. The expression
``special technical features'' shall mean those technical features that
define a contribution which each of the claimed inventions, considered
as a whole, makes over the prior art.
(b) An international or a national stage application containing
claims to different categories of invention will be considered to have
unity of invention if
[[Page 99]]
the claims are drawn only to one of the following combinations of
categories:
(1) A product and a process specially adapted for the manufacture of
said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of
the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for
carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of
the said product, and an apparatus or means specifically designed for
carrying out the said process.
(c) If an application contains claims to more or less than one of
the combinations of categories of invention set forth in paragraph (b)
of this section, unity of invention might not be present.
(d) If multiple products, processes of manufacture or uses are
claimed, the first invention of the category first mentioned in the
claims of the application and the first recited invention of each of the
other categories related thereto will be considered as the main
invention in the claims, see PCT Article 17(3)(a) and Sec. 1.476(c).
(e) The determination whether a group of inventions is so linked as
to form a single general inventive concept shall be made without regard
to whether the inventions are claimed in separate claims or as
alternatives within a single claim.
[58 FR 4345, Jan. 14, 1993]
Sec. 1.476 Determination of unity of invention before the International Searching Authority.
(a) Before establishing the international search report, the
International Searching Authority will determine whether the
international application complies with the requirement of unity of
invention as set forth in Sec. 1.475.
(b) If the International Searching Authority considers that the
international application does not comply with the requirement of unity
of invention, it shall inform the applicant accordingly and invite the
payment of additional fees (note Sec. 1.445 and PCT Art. 17(3)(a) and
PCT Rule 40). The applicant will be given a time period in accordance
with PCT Rule 40.3 to pay the additional fees due.
(c) In the case of non-compliance with unity of invention and where
no additional fees are paid, the international search will be performed
on the invention first mentioned (``main invention'') in the claims.
(d) Lack of unity of invention may be directly evident before
considering the claims in relation to any prior art, or after taking the
prior art into consideration, as where a document discovered during the
search shows the invention claimed in a generic or linking claim lacks
novelty or is clearly obvious, leaving two or more claims joined thereby
without a common inventive concept. In such a case the International
Searching Authority may raise the objection of lack of unity of
invention.
[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May
28, 1987; 58 FR 4346, Jan. 14, 1993]
Sec. 1.477 Protest to lack of unity of invention before the International Searching Authority.
(a) If the applicant disagrees with the holding of lack of unity of
invention by the International Searching Authority, additional fees may
be paid under protest, accompanied by a request for refund and a
statement setting forth reasons for disagreement or why the required
additional fees are considered excessive, or both (PCT Rule 40.2(c)).
(b) Protest under paragraph (a) of this section will be examined by
the Commissioner or the Commissioner's designee. In the event that the
applicant's protest is determined to be justified, the additional fees
or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the
decision thereon accompany the international search report when
forwarded to the Designated Offices, may notify the International
Searching Authority to that effect any time prior to the issuance of the
international search report. Thereafter, such notification
[[Page 100]]
should be directed to the International Bureau (PCT Rule 40.2(c)).
[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May
28, 1987]
International Preliminary Examination
Sec. 1.480 Demand for international preliminary examination.
(a) On the filing of a proper Demand in an application for which the
United States International Preliminary Examining Authority is competent
and for which the fees have been paid, the international application
shall be the subject of an international preliminary examination. The
preliminary examination fee (Sec. 1.482(a)(1)) and the handling fee
(Sec. 1.482(b)) shall be due at the time of filing the Demand.
(b) The Demand shall be made on a standardized form. Copies of
printed Demand forms are available from the Patent and Trademark Office.
Letters requesting printed Demand forms should be marked ``Box PCT''.
(c) If the Demand is made prior to the expiration of the 19th month
from the priority date and the United States of America is elected, the
provisions of Sec. 1.495 shall apply rather than Sec. 1.494.
(d) Withdrawal of a proper Demand prior to the start of the
international preliminary examination will entitle applicant to a refund
of the preliminary examination fee minus the amount of the transmittal
fee set forth in Sec. 1.445(a)(1).
[52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58
FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998]
Sec. 1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid
within the time period set in PCT Rule 57.3. The handling fee or
preliminary examination fee payable is the handling fee or preliminary
examination fee in effect on the date of receipt of the Demand except
under PCT Rule 59.3(a) where the fee payable is the fee in effect on the
date of arrival of the Demand at the United States International
Preliminary Examining Authority.
(1) If the handling and preliminary fees are not paid within the
time period set in PCT Rule 57.3, applicant will be notified and given
one month within which to pay the deficient fees plus a late payment fee
equal to the greater of:
(i) Fifty percent of the amount of the deficient fees, but not
exceeding an amount equal to double the handling fee; or
(ii) An amount equal to the handling fee (PCT Rule 58bis.2).
(2) The one-month time limit set in this paragraph to pay deficient
fees may not be extended.
(b) If the payment needed to cover the handling and preliminary
examination fees, pursuant to paragraph (a) of this section, is not
timely made in accordance with PCT Rule 58bis.1(d), the United States
International Preliminary Examination Authority will declare the Demand
to be considered as if it had not been submitted.
[63 FR 29619, June 1, 1998]
Sec. 1.482 International preliminary examination fees.
(a) The following fees and charges for international preliminary
examination are established by the Commissioner under the authority of
35 U.S.C. 376:
(1) A preliminary examination fee is due on filing the Demand:
(i) Where an international search fee as set forth in
Sec. 1.445(a)(2) has been paid on the international application to the
United States Patent and Trademark Office as an International Searching
Authority, a preliminary examination fee of--$490.00
(ii) Where the International Searching Authority for the
international application was an authority other than the United States
Patent and Trademark Office, a preliminary examination fee of--$750.00
(2) An additional preliminary examination fee when required, per
additional invention:
(i) Where the International Searching Authority for the
international application was the United States Patent and Trademark
Office--$140.00
(ii) Where the International Searching Authority for the
international application was an authority other than the United States
Patent and Trademark Office--$270.00
[[Page 101]]
(b) The handling fee is due on filing the Demand.
(35 U.S.C. 6, 376)
[52 FR 20048, May 28, 1987, as amended at 56 FR 65154, Dec. 13, 1991; 57
FR 38196, Aug. 21, 1992; 58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug.
11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997]
Sec. 1.484 Conduct of international preliminary examination.
(a) An international preliminary examination will be conducted to
formulate a non-binding opinion as to whether the claimed invention has
novelty, involves an inventive step (is non-obvious) and is industrially
applicable.
(b) International preliminary examination will begin promptly upon
receipt of a proper Demand in an application for which the United States
International Preliminary Examining Authority is competent, for which
the fees for international preliminary examination (Sec. 1.482) have
been paid, and which requests examination based on the application as
filed or as amended by an amendment which has been received by the
United States International Preliminary Examining Authority. Where a
Demand requests examination based on a PCT Article 19 amendment which
has not been received, examination may begin at 20 months without
receipt of the PCT Article 19 amendment. Where a Demand requests
examination based on a PCT Article 34 amendment which has not been
received, applicant will be notified and given a time period within
which to submit the amendment.
(1) Examination will begin after the earliest of:
(i) Receipt of the amendment;
(ii) Receipt of applicant's statement that no amendment will be
made; or
(iii) Expiration of the time period set in the notification.
(2) No international preliminary examination report will be
established prior to issuance of an international search report.
(c) No international preliminary examination will be conducted on
inventions not previously searched by an International Searching
Authority.
(d) The International Preliminary Examining Authority will establish
a written opinion if any defect exists or if the claimed invention lacks
novelty, inventive step or industrial applicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.
(e) If no written opinion under paragraph (d) of this section is
necessary, or after any written opinion and the reply thereto or the
expiration of the time limit for reply to such written opinion, an
international preliminary examination report will be established by the
International Preliminary Examining Authority. One copy will be
submitted to the International Bureau and one copy will be submitted to
the applicant.
(f) An applicant will be permitted a personal or telephone interview
with the examiner, which must be conducted during the non-extendable
time limit for reply by the applicant to a written opinion. Additional
interviews may be conducted where the examiner determines that such
additional interviews may be helpful to advancing the international
preliminary examination procedure. A summary of any such personal or
telephone interview must be filed by the applicant as a part of the
reply to the written opinion or, if applicant files no reply, be made of
record in the file by the examiner.
[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62
FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998]
Sec. 1.485 Amendments by applicant during international preliminary examination.
(a) The applicant may make amendments at the time of filing the
Demand. The applicant may also make amendments within the time limit set
by the International Preliminary Examining Authority for reply to any
notification under Sec. 1.484(b) or to any written opinion. Any such
amendments must:
(1) Be made by submitting a replacement sheet in compliance with PCT
Rules 10 and 11.1 to 11.13 for every sheet of the application which
differs from the sheet it replaces unless an entire sheet is cancelled;
and
(2) Include a description of how the replacement sheet differs from
the replaced sheet. Amendments that do not
[[Page 102]]
comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) If an amendment cancels an entire sheet of the international
application, that amendment shall be communicated in a letter.
[58 FR 4346, Jan. 14, 1993, as amended at 63 FR 29620, June 1, 1998]
Sec. 1.488 Determination of unity of invention before the International Preliminary Examining Authority.
(a) Before establishing any written opinion or the international
preliminary examination report, the International Preliminary Examining
Authority will determine whether the international application complies
with the requirement of unity of invention as set forth in Sec. 1.475.
(b) If the International Preliminary Examining Authority considers
that the international application does not comply with the requirement
of unity of invention, it may:
(1) Issue a written opinion and/or an international preliminary
examination report, in respect of the entire international application
and indicate that unity of invention is lacking and specify the reasons
therefor without extending an invitation to restrict or pay additional
fees. No international preliminary examination will be conducted on
inventions not previously searched by an International Searching
Authority.
(2) Invite the applicant to restrict the claims or pay additional
fees, pointing out the categories of invention found, within a set time
limit which will not be extended. No international preliminary
examination will be conducted on inventions not previously searched by
an International Searching Authority, or
(3) If applicant fails to restrict the claims or pay additional fees
within the time limit set for reply, the International Preliminary
Examining Authority will issue a written opinion and/or establish an
international preliminary examination report on the main invention and
shall indicate the relevant facts in the said report. In case of any
doubt as to which invention is the main invention, the invention first
mentioned in the claims and previously searched by an International
Searching Authority shall be considered the main invention.
(c) Lack of unity of invention may be directly evident before
considering the claims in relation to any prior art, or after taking the
prior art into consideration, as where a document discovered during the
search shows the invention claimed in a generic or linking claim lacks
novelty or is clearly obvious, leaving two or more claims joined thereby
without a common inventive concept. In such a case the International
Preliminary Examining Authority may raise the objection of lack of unity
of invention.
[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62
FR 53200, Oct. 10, 1997]
Sec. 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority.
(a) If the applicant disagrees with the holding of lack of unity of
invention by the International Preliminary Examining Authority,
additional fees may be paid under protest, accompanied by a request for
refund and a statement setting forth reasons for disagreement or why the
required additional fees are considered excessive, or both.
(b) Protest under paragraph (a) of this section will be examined by
the Commissioner or the Commissioner's designee. In the event that the
applicant's protest is determined to be justified, the additional fees
or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the
decision thereon accompany the international preliminary examination
report when forwarded to the Elected Offices, may notify the
International Preliminary Examining Authority to that effect any time
prior to the issuance of the international preliminary examination
report. Thereafter, such notification should be directed to the
International Bureau.
[52 FR 20050, May 28, 1987]
National Stage
Sec. 1.491 Entry into the national stage.
An international application enters the national stage when the
applicant
[[Page 103]]
has filed the documents and fees required by 35 U.S.C. 371(c) within the
periods set forth in Sec. 1.494 or Sec. 1.495.
[52 FR 20050, May 28, 1987]
Sec. 1.492 National stage fees.
The following fees and charges are established for international
applications entering the national stage under 35 U.S.C. 371:
(a) The basic national fee:
(1) Where an international preliminary examination fee as set forth
in Sec. 1.482 has been paid on the international application to the
United States Patent and Trademark Office:
By a small entity (Sec. 1.9(f))--$335.00
By other than a small entity--$670.00
(2) Where no international preliminary examination fee as set forth
in Sec. 1.482 has been paid to the United States Patent and Trademark
Office, but an international search fee as set forth in Sec. 1.445(a)(2)
has been paid on the international application to the United States
Patent and Trademark Office as an International Searching Authority:
By a small entity (Sec. 1.9(f))--$380.00
By other than a small entity--$760.00
(3) Where no international preliminary examination fee as set forth
in Sec. 1.482 has been paid and no international search fee as set forth
in Sec. 1.445(a)(2) has been paid on the international application to
the United States Patent and Trademark Office:
By a small entity (Sec. 1.9(f))--$485.00
By other than a small entity--$970.00
(4) Where an international preliminary examination fee as set forth
in Sec. 1.482 has been paid to the United States Patent and Trademark
Office and the international preliminary examination report states that
the criteria of novelty, inventive step (non-obviousness), and
industrial applicability, as defined in PCT Article 33 (1) to (4) have
been satisfied for all the claims presented in the application entering
the national stage (see Sec. 1.496(b)):
By a small entity (Sec. 1.9(f))--$48.00
By other than a small entity--$96.00
(5) Where a search report on the international application has been
prepared by the European Patent Office or the Japanese Patent Office:
By a small entity (Sec. 1.9(f))--$420.00
By other than a small entity--$840.00
(b) In addition to the basic national fee, for filing or later
presentation of each independent claim in excess of 3:
By a small entity (Sec. 1.9(f))--$39.00
By other than a small entity--$78.00
(c) In addition to the basic national fee, for filing or later
presentation of each claim (whether independent or dependent) in excess
of 20 (Note that Sec. 1.75(c) indicates how multiple dependent claims
are considered for fee calculation purposes.):
By a small entity (Sec. 1.9(f))--$9.00
By other than a small entity--$18.00
(d) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim(s), per
application:
By a small entity (Sec. 1.9(f))--$130.00
By other than a small entity--$260.00
(e) Surcharge for filing the oath or declaration later than 20
months from the priority date pursuant to Sec. 1.494(c) or later than 30
months from the priority date pursuant to Sec. 1.495(c):
By a small entity (Sec. 1.9(f))...................................$65.00
By other than a small entity.....................................$130.00
(f) For filing an English translation of an international
application later than 20 months after the priority date (Sec. 1.494(c))
or filing an English translation of the international application or of
any annexes to the international preliminary examination report later
than 30 months after the priority date
(Secs. 1.495 (c) and (e))........................................$130.00
(g) If the additional fees required by paragraphs (b), (c), and (d)
of this section are not paid on presentation of the claims for which the
additional fees are due, they must be paid or the claims cancelled by
amendment, prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency.
[56 FR 65154, Dec. 13, 1991, as amended at 57 FR 38196, Aug. 21, 1992;
58 FR 4346, Jan. 14, 1993; 60 FR 41023, Aug. 11, 1995; 61 FR 39588, July
30, 1996; 62 FR 40453, July 29, 1997; 62 FR 53200, Oct. 10, 1997; 63 FR
67580, Dec. 8, 1998]
[[Page 104]]
Sec. 1.494 Entering the national stage in the United States of America as a Designated Office.
(a) Where the United States of America has not been elected by the
expiration of 19 months from the priority date (see Sec. 1.495), the
applicant must fulfill the requirements of PCT Article 22 and 35 U.S.C.
371 within the time periods set forth in paragraphs (b) and (c) of this
section in order to prevent the abandonment of the international
application as to the United States of America. International
applications for which those requirements are timely fulfilled will
enter the national stage and obtain an examination as to the
patentability of the invention in the United States of America.
(b) To avoid abandonment of the application, the applicant shall
furnish to the United States Patent and Trademark Office not later than
the expiration of 20 months from the priority date:
(1) A copy of the international application, unless it has been
previously communicated by the International Bureau or unless it was
originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see Sec. 1.492(a)). The 20-month time
limit may not be extended.
(c) If applicant complies with paragraph (b) of this section before
expiration of 20 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4);
see Sec. 1.497), applicant will be so notified and given a period of
time within which to file the translation and/or oath or declaration in
order to prevent abandonment of the application. The payment of the
processing fee set forth in Sec. 1.492(f) is required for acceptance of
an English translation later than the expiration of 20 months after the
priority date. The payment of the surcharge set forth in Sec. 1.492(e)
is required for acceptance of the oath or declaration of the inventor
later than the expiration of 20 months after the priority date. A
``Sequence Listing'' need not be translated if the ``Sequence Listing''
complies with PCT Rule 12.1(d) and the description complies with PCT
Rule 5.2(b).
(d) A copy of any amendments to the claims made under PCT Article
19, and a translation of those amendments into English, if they were
made in another language, must be furnished not later than the
expiration of 20 months from the priority date. Amendments under PCT
Article 19 which are not received by the expiration of 20 months from
the priority date will be considered to be cancelled. The 20-month time
limit may not be extended.
(e) Verification of the translation of the international application
or any other document pertaining to an international application may be
required where it is considered necessary, if the international
application or other document was filed in a language other than
English.
(f) The documents and fees submitted under paragraphs (b) and (c) of
this section must be clearly identified as a submission to enter the
national stage under 35 U.S.C. 371, otherwise the submission will be
considered as being made under 35 U.S.C. 111.
(g) An international application becomes abandoned as to the United
States 20 months from the priority date if the requirements of paragraph
(b) of this section have not been complied with within 20 months from
the priority date where the United States has been designated but not
elected by the expiration of 19 months from the priority date. If the
requirements of paragraph (b) of this section are complied with within
20 months from the priority date but any required translation of the
international application as filed and/or the oath or declaration are
not timely filed, an international application will become abandoned as
to the United States upon expiration of the time period set pursuant to
paragraph (c) of this section.
[52 FR 20050, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 63
FR 29620, June 1, 1998]
[[Page 105]]
Sec. 1.495 Entering the national stage in the United States of America as an Elected Office.
(a) Where the United States of America has been elected by the
expiration of 19 months from the priority date, the applicant must
fulfill the requirements of 35 U.S.C. 371 within the time periods set
forth in paragraphs (b) and (c) of this section in order to prevent the
abandonment of the international application as to the United States of
America. International applications for which those requirements are
timely fulfilled will enter the national stage and obtain an examination
as to the patentability of the invention in the United States of
America.
(b) To avoid abandonment of the application the applicant shall
furnish to the United States Patent and Trademark Office not later than
the expiration of 30 months from the priority date:
(1) A copy of the international application, unless it has been
previously communicated by the International Bureau or unless it was
originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see Sec. 1.492(a)). The 30-month time
limit may not be extended.
(c) If applicant complies with paragraph (b) of this section before
expiration of 30 months from the priority date but omits:
(1) A translation of the international application, as filed, into
the English language, if it was originally filed in another language (35
U.S.C. 371(c)(2)) and/or
(2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4);
see Sec. 1.497), applicant will be so notified and given a period of
time within which to file the translation and/or oath or declaration in
order to prevent abandonment of the application. The payment of the
processing fee set forth in Sec. 1.492(f) is required for acceptance of
an English translation later than the expiration of 30 months after the
priority date. The payment of the surcharge set forth in Sec. 1.492(e)
is required for acceptance of the oath or declaration of the inventor
later than the expiration of 30 months after the priority date.
A ``Sequence Listing'' need not be translated if the ``Sequence
Listing'' complies with PCT Rule 12.1(d) and the description complies
with PCT Rule 5.2(b).
(d) A copy of any amendments to the claims made under PCT Article
19, and a translation of those amendments into English, if they were
made in another language, must be furnished not later than the
expiration of 30 months from the priority date. Amendments under PCT
Article 19 which are not received by the expiration of 30 months from
the priority date will be considered to be cancelled. The 30-month time
limit may not be extended.
(e) A translation into English of any annexes to the international
preliminary examination report, if the annexes were made in another
language, must be furnished not later than the expiration of 30 months
from the priority date. Translations of the annexes which are not
received by the expiration of 30 months from the priority date may be
submitted within any period set pursuant to paragraph (c) of this
section accompanied by the processing fee set forth in Sec. 1.492(f).
Annexes for which translations are not timely received will be
considered cancelled. The 30-month time limit may not be extended.
(f) Verification of the translation of the international application
or any other document pertaining to an international application may be
required where it is considered necessary, if the international
application or other document was filed in a language other than
English.
(g) The documents submitted under paragraphs (b) and (c) of this
section must be clearly identified as a submission to enter the national
stage under 35 U.S.C. 371, otherwise the submission will be considered
as being made under 35 U.S.C. 111.
(h) An international application becomes abandoned as to the United
States 30 months from the priority date if the requirements of paragraph
(b) of this section have not been complied with within 30 months from
the priority date and the United States has been elected by the
expiration of 19 months from the priority date. If the requirements of
paragraph (b) of this
[[Page 106]]
section are complied with within 30 months from the priority date but
any required translation of the international application as filed and/
or the oath or declaration are not timely filed, an international
application will become abandoned as to the United States upon
expiration of the time period set pursuant to paragraph (c) of this
section.
[52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63
FR 29620, June 1, 1998]
Sec. 1.496 Examination of international applications in the national stage.
(a) International applications which have complied with the
requirements of 35 U.S.C. 371(c) will be taken up for action based on
the date on which such requirements were met. However, unless an express
request for early processing has been filed under 35 U.S.C. 371(f), no
action may be taken prior to one month after entry into the national
stage.
(b) A national stage application filed under 35 U.S.C. 371 may have
paid therein the basic national fee as set forth in Sec. 1.492(a)(4) if
it contains, or is amended to contain, at the time of entry into the
national stage, only claims which have been indicated in an
international preliminary examination report prepared by the United
States Patent and Trademark Office as satisfying the criteria of PCT
Article 33(1)-(4) as to novelty, inventive step and industrial
applicability. Such national stage applications in which the basic
national fee as set forth in Sec. 1.492(a)(4) has been paid may be
amended subsequent to the date of entry into the national stage only to
the extent necessary to eliminate objections as to form or to cancel
rejected claims. Such national stage applications in which the basic
national fee as set forth in Sec. 1.492(a)(4) has been paid will be
taken up out of order.
[52 FR 20051, May 28, 1987]
Sec. 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires to
enter the national stage under 35 U.S.C. 371 pursuant to Secs. 1.494 or
1.495, he or she must file an oath or declaration that:
(1) Is executed in accordance with either Secs. 1.66 or 1.68;
(2) Identifies the specification to which it is directed;
(3) Identifies each inventor and the country of citizenship of each
inventor; and
(4) States that the person making the oath or declaration believes
the named inventor or inventors to be the original and first inventor or
inventors of the subject matter which is claimed and for which a patent
is sought.
(b)(1) The oath or declaration must be made by all of the actual
inventors except as provided for in Secs. 1.42, 1.43 or 1.47.
(2) If the person making the oath or declaration is not the
inventor, the oath or declaration shall state the relationship of the
person to the inventor, the facts required by Secs. 1.42, 1.43 or 1.47,
and, upon information and belief, the facts which the inventor would
have been required to state.
(c) If the oath or declaration meets the requirements of paragraphs
(a) and (b) of this section, the oath or declaration will be accepted as
complying with 35 U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c).
However, if the oath or declaration does not also meet the requirements
of Sec. 1.63, a supplemental oath or declaration in compliance with
Sec. 1.63 will be required in accordance with Sec. 1.67.
[61 FR 42807, Aug. 19, 1996]
Sec. 1.499 Unity of invention during the national stage.
If the examiner finds that a national stage application lacks unity
of invention under Sec. 1.475, the examiner may in an Office action
require the applicant in the response to that action to elect the
invention to which the claims shall be restricted. Such requirement may
be made before any action on the merits but may be made at any time
before the final action at the discretion of the examiner. Review of any
such requirement is provided under Secs. 1.143 and 1.144.
[58 FR 4347, Jan. 14, 1993]
[[Page 107]]
Subpart D--Reexamination of Patents
Source: 46 FR 29185, May 29, 1981, unless otherwise noted.
Citation of Prior Art
Sec. 1.501 Citation of prior art in patent files.
(a) At any time during the period of enforceability of a patent, any
person may cite to the Patent and Trademark Office in writing prior art
consisting of patents or printed publications which that person states
to be pertinent and applicable to the patent and believes to have a
bearing on the patentability of any claim of a particular patent. If the
citation is made by the patent owner, the explanation of pertinency and
applicability may include an explanation of how the claims differ from
the prior art. Citations by the patent owner under Sec. 1.555 and by a
reexamination requester under either Sec. 1.510 or Sec. 1.535 will be
entered in the patent file during a reexamination proceeding. The entry
in the patent file of citations submitted after the date of an order to
reexamine pursuant to Sec. 1.525 by persons other than the patent owner,
or a reexamination requester under either Sec. 1.510 or Sec. 1.535, will
be delayed until the reexamination proceedings have been terminated.
(b) If the person making the citation wishes his or her identity to
be excluded from the patent file and kept confidential, the citation
papers must be submitted without any identification of the person making
the submission.
(c) Citation of patents or printed publications by the public in
patent files should either:
(1) Reflect that a copy of the same has been mailed to the patent
owner at the address as provided for in Sec. 1.33(c); or in the event
service is not possible
(2) Be filed with the Office in duplicate.
Request for Reexamination
Sec. 1.510 Request for reexamination.
(a) Any person may, at any time during the period of enforceability
of a patent, file a request for reexamination by the Patent and
Trademark Office of any claim of the patent on the basis of prior art
patents or printed publications cited under Sec. 1.501. The request must
be accompanied by the fee for requesting reexamination set in
Sec. 1.20(c).
(b) Any request for reexamination must include the following parts:
(1) A statement pointing out each substantial new question of
patentability based on prior patents and printed publications.
(2) An identification of every claim for which reexamination is
requested, and a detailed explanation of the pertinency and manner of
applying the cited prior art to every claim for which reexamination is
requested. If appropriate the party requesting reexamination may also
point out how claims distinguish over cited prior art.
(3) A copy of every patent or printed publication relied upon or
referred to in paragraph (b) (1) and (2) of this section accompanied by
an English language translation of all the necessary and pertinent parts
of any non-English language patent or printed publication.
(4) The entire specification (including claims) and drawings of the
patent for which reexamination is requested must be furnished in the
form of cut-up copies of the original patent with only a single column
of the printed patent securely mounted or reproduced in permanent form
on one side of a separate paper. A copy of any disclaimer, certificate
of correction, or reexamination certificate issued in the patent must
also be included.
(5) A certification that a copy of the request filed by a person
other than the patent owner has been served in its entirety on the
patent owner at the address as provided for in Sec. 1.33(c). The name
and address of the party served must be indicated. If service was not
possible, a duplicate copy must be supplied to the Office.
(c) If the request does not include the fee for requesting
reexamination or all of the parts required by paragraph (b) of this
section, the person identified as requesting reexamination will be so
notified and given an opportunity to complete the request within a
specified time. If the fee for requesting reexamination has been paid
but the defect in the request is not corrected within the
[[Page 108]]
specified time, the determination whether or not to institute
reexamination will be made on the request as it then exists. If the fee
for requesting reexamination has not been paid, no determination will be
made and the request will be placed in the patent file as a citation if
it complies with the requirements of Sec. 1.501(a).
(d) The filing date of the request is:
(1) The date on which the request including the entire fee for
requesting reexamination is received in the Patent and Trademark Office;
or
(2) The date on which the last portion of the fee for requesting
reexamination is received.
(e) A request filed by the patent owner may include a proposed
amendment in accordance with Sec. 1.530(d).
(f) If a request is filed by an attorney or agent identifying
another party on whose behalf the request is being filed, the attorney
or agent must have a power of attorney from that party or be acting in a
representative capacity pursuant to Sec. 1.34(a).
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982;
62 FR 53200, Oct. 10, 1997]
Sec. 1.515 Determination of the request for reexamination.
(a) Within three months following the filing date of a request for
reexamination, an examiner will consider the request and determine
whether or not a substantial new question of patentability affecting any
claim of the patent is raised by the request and the prior art cited
therein, with or without consideration of other patents or printed
publications. The examiner's determination will be based on the claims
in effect at the time of the determination and will become a part of the
official file of the patent and will be given or mailed to the patent
owner at the address as provided for in Sec. 1.33(c) and to the person
requesting reexamination.
(b) Where no substantial new question of patentability has been
found, a refund of a portion of the fee for requesting reexamination
will be made to the requester in accordance with Sec. 1.26(c).
(c) The requester may seek review by a petition to the Commissioner
under Sec. 1.181 within one month of the mailing date of the examiner's
determination refusing reexamination. Any such petition must comply with
Sec. 1.181(b). If no petition is timely filed or if the decision on
petition affirms that no substantial new question of patentability has
been raised, the determination shall be final and nonappealable.
Sec. 1.520 Reexamination at the initiative of the Commissioner.
The Commissioner, at any time during the period of enforceability of
a patent, may determine whether or not a substantial new question of
patentability is raised by patents or printed publications which have
been discovered by the Commissioner or which have been brought to the
Commissioner's attention even though no request for reexamination has
been filed in accordance with Sec. 1.510. The Commissioner may initiate
reexamination without a request for reexamination pursuant to
Sec. 1.510. Normally requests from outside the Patent and Trademark
Office that the Commissioner undertake reexamination on his own
initiative will not be considered. Any determination to initiate
reexamination under this section will become a part of the official file
of the patent and will be given or mailed to the patent owner at the
address as provided for in Sec. 1.33(c).
Reexamination
Sec. 1.525 Order to reexamine.
(a) If a substantial new question of patentability is found pursuant
to Sec. 1.515 or Sec. 1.520, the determination will include an order for
reexamination of the patent for resolution of the question. If the order
for reexamination resulted from a petition pursuant to Sec. 1.515(c),
the reexamination will ordinarily be conducted by an examiner other than
the examiner responsible for the initial determination under
Sec. 1.515(a).
(b) If the order for reexamination of the patent mailed to the
patent owner at the address as provided for in
[[Page 109]]
Sec. 1.33(c) is returned to the Office undelivered, the notice published
in the Official Gazette under Sec. 1.11(c) will be considered to be
constructive notice and reexamination will proceed.
Sec. 1.530 Statement; amendment by patent owner.
(a) Except as provided in Sec. 1.510(e), no statement or other
response by the patent owner shall be filed prior to the determinations
made in accordance with Sec. 1.515 or 1.520. If a premature statement or
other response is filed by the patent owner it will not be acknowledged
or considered in making the determination.
(b) The order for reexamination will set a period of not less than
two months from the date of the order within which the patent owner may
file a statement on the new question of patentability including any
proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out
why the subject matter as claimed is not anticipated or rendered obvious
by the prior art patents or printed publications, either alone or in any
reasonable combinations. Any statement filed must be served upon the
reexamination requester in accordance with Sec. 1.248.
(d) Amendments in reexamination proceedings. Amendments in
reexamination proceedings are made by filing a paper, in compliance with
paragraph (d)(5) of this section, directing that specified amendments be
made.
(1) Specification other than the claims. Amendments to the
specification, other than to the claims, may only be made as follows:
(i) Amendments must be made by submission of the entire text of a
newly added or rewritten paragraph(s) with markings pursuant to
paragraph (d)(1)(iii) of this section, except that an entire paragraph
may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph.
(ii) The precise point in the specification must be indicated where
the paragraph to be amended is located.
(iii) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made.
(2) Claims. Amendments to the claims may only be made as follows:
(i)(A) The amendment must be made relative to the patent claims in
accordance with paragraph (d)(8) of this section and must include the
entire text of each claim which is being proposed to be amended by the
current amendment and each proposed new claim being added by the current
amendment with markings pursuant to paragraph (d)(2)(i)(C) of this
section, except that a patent claim or previously proposed new claim
should be cancelled by a statement cancelling the patent claim or
proposed new claim without presentation of the text of the patent claim
or proposed new claim.
(B) Patent claims must not be renumbered and the numbering of any
new claims proposed to be added to the patent must follow the number of
the highest numbered patent claim.
(C) Underlining below the subject matter added to the patent and
brackets around the subject matter deleted from the patent are to be
used to mark the amendments being made. If a claim is amended pursuant
to paragraph (d)(2)(i)(A) of this section, a parenthetical expression
``amended,'' ``twice amended,'' etc., should follow the original claim
number.
(ii) Each amendment submission must set forth the status (i.e.,
pending or cancelled) as of the date of the amendment, of all patent
claims and of all new claims currently or previously proposed.
(iii) Each amendment, when submitted for the first time, must be
accompanied by an explanation of the support in the disclosure of the
patent for the amendment along with any additional comments on page(s)
separate from the page(s) containing the amendment.
(3) No amendment may enlarge the scope of the claims of the patent
or introduce new matter. No amendment may be proposed for entry in an
expired patent. Moreover, no amendment will be incorporated into the
patent by certificate issued after the expiration of the patent.
(4) Although the Office actions will treat proposed amendments as
though
[[Page 110]]
they have been entered, the proposed amendments will not be effective
until the reexamination certificate is issued.
(5) The form of amendments other than to the patent drawings must be
in accordance with the following requirements. All amendments must be in
the English language and must be legibly written either by a typewriter
or mechanical printer in at least 11 point type in permanent dark ink or
its equivalent in portrait orientation on flexible, strong, smooth, non-
shiny, durable, white paper. All amendments must be 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 reproduction by use of digital
imaging or optical character recognition. If the amendments are not of
the required quality, substitute typewritten or mechanically printed
papers of suitable quality will be required. The papers, including the
drawings, must have each page plainly written on only one side of a
sheet of paper. The sheets of paper must be the same size and 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). Each sheet must include 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), and no holes should be made in the sheets as
submitted. The lines must be double spaced, or one and one-half spaced.
The pages must be numbered consecutively, starting with 1, the numbers
being centrally located, preferably below the text, or above the text.
(6) Drawings. (i) The original patent drawing sheets may not be
altered. Any proposed change to the patent drawings must be by way of a
new sheet of drawings with the amended figures identified as ``amended''
and with added figures identified as ``new'' for each sheet change
submitted in compliance with Sec. 1.84.
(ii) Where a change to the drawings is desired, a sketch in
permanent ink showing proposed changes in red, to become part of the
record, must be filed for approval by the examiner and should be in a
separate paper.
(7) The disclosure must be amended, when required by the Office, to
correct inaccuracies of description and definition and to secure
substantial correspondence between the claims, the remainder of the
specification, and the drawings.
(8) All amendments to the patent must be made relative to the patent
specification, including the claims, and drawings, which is in effect as
of the date of filing of the request for reexamination.
[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997]
Sec. 1.535 Reply by requester.
A reply to the patent owner's statement under Sec. 1.530 may be
filed by the reexamination requester within two months from the date of
service of the patent owner's statement. Any reply by the requester must
be served upon the patent owner in accordance with Sec. 1.248. If the
patent owner does not file a statement under Sec. 1.530, no reply or
other submission from the reexamination requester will be considered.
Sec. 1.540 Consideration of responses.
The failure to timely file or serve the documents set forth in
Sec. 1.530 or in Sec. 1.535 may result in their being refused
consideration. No submissions other than the statement pursuant to
Sec. 1.530 and the reply by the requester pursuant to Sec. 1.535 will be
considered prior to examination.
Sec. 1.550 Conduct of reexamination proceedings.
(a) All reexamination proceedings, including any appeals to the
Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office. After issuance of the reexamination
order and expiration of the time for submitting any responses thereto,
the examination will be conducted in accordance with Secs. 1.104, 1.110
through 1.113 and 1.116, and will result in the issuance of a
reexamination certificate under Sec. 1.570.
(b) The patent owner will be given at least thirty days to respond
to any Office action. Such response may include further statements in
response to any
[[Page 111]]
rejections or proposed amendments or new claims to place the patent in a
condition where all claims, if amended as proposed, would be patentable.
(c) The time for taking any action by a patent owner in a
reexamination proceeding will be extended only for sufficient cause, and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of the request effect any extension.
See Sec. 1.304(a) for extensions of time for filing a notice of appeal
to the U.S. Court of Appeals for the Federal Circuit or for commencing a
civil action.
(d) If the patent owner fails to file a timely and appropriate
response to any Office action, the reexamination proceeding will be
terminated and the Commissioner will proceed to issue a certificate
under Sec. 1.570 in accordance with the last action of the Office.
(e) The reexamination requester will be sent copies of Office
actions issued during the reexamination proceeding. After filing of a
request for reexamination by a third party requester, any document filed
by either the patent owner or the third party requester must be served
on the other party in the reexamination proceeding in the manner
provided by Sec. 1.248. The document must reflect service or the
document may be refused consideration by the Office.
(1) The active participation of the reexamination requester ends
with the reply pursuant to Sec. 1.535, and no further submissions on
behalf of the reexamination requester will be acknowledged or
considered. Further, no submissions on behalf of any third parties will
be acknowledged or considered unless such submissions are:
(i) In accordance with Sec. 1.510; or
(ii) Entered in the patent file prior to the date of the order to
reexamine pursuant to Sec. 1.525.
(2) Submissions by third parties, filed after the date of the order
to reexamine pursuant to Sec. 1.525, must meet the requirements of and
will be treated in accordance with Sec. 1.501(a).
(35 U.S.C. 6, Pub. L. 97-247)
[46 FR 29185, May 29, 1981, as amended at 49 FR 556, Jan. 4, 1984; 49 FR
48455, Dec. 12, 1984; 54 FR 29553, July 13, 1989; 62 FR 53201, Oct. 10,
1997]