[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 2013 Edition]
[From the U.S. Government Printing Office]



[[Page i]]

          

          Title 37

Patents, Trademarks, and Copyrights

                         Revised as of July 1, 2013

          Containing a codification of documents of general 
          applicability and future effect

          As of July 1, 2013
                    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 OFFICIAL EDITION NOTICE

          Legal Status and Use of Seals and Logos
          
          
          The seal of the National Archives and Records Administration 
              (NARA) authenticates the Code of Federal Regulations (CFR) as 
              the official codification of Federal regulations established 
              under the Federal Register Act. Under the provisions of 44 
              U.S.C. 1507, the contents of the CFR, a special edition of the 
              Federal Register, shall be judicially noticed. The CFR is 
              prima facie evidence of the original documents published in 
              the Federal Register (44 U.S.C. 1510).

          It is prohibited to use NARA's official seal and the stylized Code 
              of Federal Regulations logo on any republication of this 
              material without the express, written permission of the 
              Archivist of the United States or the Archivist's designee. 
              Any person using NARA's official seals and logos in a manner 
              inconsistent with the provisions of 36 CFR part 1200 is 
              subject to the penalties specified in 18 U.S.C. 506, 701, and 
              1017.

          Use of ISBN Prefix

          This is the Official U.S. Government edition of this publication 
              and is herein identified to certify its authenticity. Use of 
              the 0-16 ISBN prefix is for U.S. Government Printing Office 
              Official Editions only. The Superintendent of Documents of the 
              U.S. Government Printing Office requests that any reprinted 
              edition clearly be labeled as a copy of the authentic work 
              with a new ISBN.

              
              
          U . S . G O V E R N M E N T P R I N T I N G O F F I C E

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

          U.S. Superintendent of Documents  Washington, DC 
              20402-0001

          http://bookstore.gpo.gov

          Phone: toll-free (866) 512-1800; DC area (202) 512-1800

[[Page iii]]




                            Table of Contents



                                                                    Page
  Explanation.................................................       v

  Title 37:
          Chapter I--United States Patent and Trademark 
          Office, Department of Commerce                             3
          Chapter II--Copyright Office, Library of Congress        521
          Chapter III--Copyright Royalty Board, Library of 
          Congress                                                 737
          Chapter IV--National Institute of Standards and 
          Technology, Department of Commerce                       835
          Chapter V [Reserved]
  Finding Aids:
      Table of CFR Titles and Chapters........................     865
      Alphabetical List of Agencies Appearing in the CFR......     885
      List of CFR Sections Affected...........................     895

[[Page iv]]





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

                     Cite this Code: CFR
                     To cite the regulations in 
                       this volume use title, 
                       part and section number. 
                       Thus, 37 CFR 1.1 refers to 
                       title 37, part 1, section 
                       1.

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

[[Page v]]



                               EXPLANATION

    The Code of Federal Regulations is a codification of the general and 
permanent rules published in the Federal Register by the Executive 
departments and agencies of the Federal Government. The Code is divided 
into 50 titles which represent broad areas subject to Federal 
regulation. Each title is divided into chapters which usually bear the 
name of the issuing agency. Each chapter is further subdivided into 
parts covering specific regulatory areas.
    Each volume of the Code is revised at least once each calendar year 
and issued on a quarterly basis approximately as follows:

Title 1 through Title 16.................................as of January 1
Title 17 through Title 27..................................as of April 1
Title 28 through Title 41...................................as of July 1
Title 42 through Title 50................................as of October 1

    The appropriate revision date is printed on the cover of each 
volume.

LEGAL STATUS

    The contents of the Federal Register are required to be judicially 
noticed (44 U.S.C. 1507). The Code of Federal Regulations is prima facie 
evidence of the text of the original documents (44 U.S.C. 1510).

HOW TO USE THE CODE OF FEDERAL REGULATIONS

    The Code of Federal Regulations is kept up to date by the individual 
issues of the Federal Register. These two publications must be used 
together to determine the latest version of any given rule.
    To determine whether a Code volume has been amended since its 
revision date (in this case, July 1, 2013), consult the ``List of CFR 
Sections Affected (LSA),'' which is issued monthly, and the ``Cumulative 
List of Parts Affected,'' which appears in the Reader Aids section of 
the daily Federal Register. These two lists will identify the Federal 
Register page number of the latest amendment of any given rule.

EFFECTIVE AND EXPIRATION DATES

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

OMB CONTROL NUMBERS

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

[[Page vi]]

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

PAST PROVISIONS OF THE CODE

    Provisions of the Code that are no longer in force and effect as of 
the revision date stated on the cover of each volume are not carried. 
Code users may find the text of provisions in effect on any given date 
in the past by using the appropriate List of CFR Sections Affected 
(LSA). For the convenience of the reader, a ``List of CFR Sections 
Affected'' is published at the end of each CFR volume. For changes to 
the Code prior to the LSA listings at the end of the volume, consult 
previous annual editions of the LSA. For changes to the Code prior to 
2001, consult the List of CFR Sections Affected compilations, published 
for 1949-1963, 1964-1972, 1973-1985, and 1986-2000.

``[RESERVED]'' TERMINOLOGY

    The term ``[Reserved]'' is used as a place holder within the Code of 
Federal Regulations. An agency may add regulatory information at a 
``[Reserved]'' location at any time. Occasionally ``[Reserved]'' is used 
editorially to indicate that a portion of the CFR was left vacant and 
not accidentally dropped due to a printing or computer error.

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.
    What if the material incorporated by reference cannot be found? If 
you have any problem locating or obtaining a copy of material listed 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, 8601 Adelphi Road, College Park, MD 20740-6001, 
or call 202-741-6010.

CFR INDEXES AND TABULAR GUIDES

    A subject index to the Code of Federal Regulations is contained in a 
separate volume, revised annually as of January 1, entitled CFR Index 
and Finding Aids. This volume contains the Parallel Table of Authorities 
and Rules. A list of CFR titles, chapters, subchapters, and parts and an 
alphabetical list of agencies publishing in the CFR are also included in 
this volume.

[[Page vii]]

    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.

REPUBLICATION OF MATERIAL

    There are no restrictions on the republication of material appearing 
in the Code of Federal Regulations.

INQUIRIES

    For a legal interpretation or explanation of any regulation in this 
volume, contact the issuing agency. The issuing agency's name appears at 
the top of odd-numbered pages.
    For inquiries concerning CFR reference assistance, call 202-741-6000 
or write to the Director, Office of the Federal Register, National 
Archives and Records Administration, 8601 Adelphi Road, College Park, MD 
20740-6001 or e-mail [email protected]

SALES

    The Government Printing Office (GPO) processes all sales and 
distribution of the CFR. For payment by credit card, call toll-free, 
866-512-1800, or DC area, 202-512-1800, M-F 8 a.m. to 4 p.m. e.s.t. or 
fax your order to 202-512-2104, 24 hours a day. For payment by check, 
write to: US Government Printing Office - New Orders, P.O. Box 979050, 
St. Louis, MO 63197-9000.

ELECTRONIC SERVICES

    The full text of the Code of Federal Regulations, the LSA (List of 
CFR Sections Affected), The United States Government Manual, the Federal 
Register, Public Laws, Public Papers of the Presidents of the United 
States, Compilation of Presidential Documents and the Privacy Act 
Compilation are available in electronic format via www.ofr.gov. For more 
information, contact the GPO Customer Contact Center, U.S. Government 
Printing Office. Phone 202-512-1800, or 866-512-1800 (toll-free). E-
mail, [email protected]
    The Office of the Federal Register also offers a free service on the 
National Archives and Records Administration's (NARA) World Wide Web 
site for public law numbers, Federal Register finding aids, and related 
information. Connect to NARA's web site at www.archives.gov/federal-
register.
    The e-CFR is a regularly updated, unofficial editorial compilation 
of CFR material and Federal Register amendments, produced by the Office 
of the Federal Register and the Government Printing Office. It is 
available at www.ecfr.gov.

    Charles A. Barth,
    Director,
    Office of the Federal Register.
    July 1, 2013.







[[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, 2013.

    The parts in chapter I, subchapter A, are regrouped according to 
subject matter. All parts pertaining to patents--parts 1, 3, 4, and 5--
appear sequentially. All parts pertaining to trademarks--parts 2, 6, and 
7--follow, also in sequence. Part 3, which pertains to both patents and 
trademarks, follows the first part.

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

    For this volume, Susannah C. Hurley was Chief Editor. The Code of 
Federal Regulations publication program is under the direction of 
Michael L. White, assisted by Ann Worley.

[[Page 1]]



              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS




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

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

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

chapter iii--Copyright Royalty Board, Library of Congress...         301

chapter iv--Assistant Secretary for Technology Policy, 
  Department of Commerce....................................         401

chapter v--Under Secretary for Technology, Department of 
  Commerce..................................................         501

[[Page 3]]



  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE




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


  Editorial Note: Chapter I--United States Patent and Trademark Office, 
Department of Commerce, Subchapter A--General, contains patent and 
trademark regulations. Subchapter A has been restructured to allow parts 
pertaining to patent regulations and trademark regulations to be grouped 
separately. For further explanation see This Title, page ix.

                          SUBCHAPTER A--GENERAL

                                 PATENTS

Part                                                                Page
1               Rules of practice in patent cases...........           5
3               Assignment, recording and rights of assignee         201
4               Complaints regarding invention promoters....         208
5               Secrecy of certain inventions and licenses 
                    to export and file applications in 
                    foreign countries.......................         210
                Index I--Rules relating to patents..........         219

                               TRADEMARKS

2               Rules of practice in trademark cases........         245
6               Classification of goods and services under 
                    the Trademark Act.......................         324
7               Rules of practice in filings pursuant to the 
                    protocol relating to the Madrid 
                    agreement concerning the international 
                    registration of marks...................         327
                Index II--Rules relating to trademarks......         339

             PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

10              [Reserved]

11              Representation of others before the United 
                    States Patent and Trademark Office......         361
15-15a          [Reserved]

41              Practice before the Patent Trial and Appeal 
                    Board...................................         422
42              Trial practice before the Patent Trial and 
                    Appeal Board............................         455
90              Judicial review of Patent Trial and Appeal 
                    Board decisions.........................         480

[[Page 4]]

                Index III--Rules relating to practice before 
                    the Patent and Trademark Office.........         483
                      SUBCHAPTER B--ADMINISTRATION
100-101         [Reserved]

102             Disclosure of government information........         489
104             Legal processes.............................         513
             SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150             Requests for Presidential proclamations 
                    pursuant to 17 U.S.C. 902(a)(2).........         518

[[Page 5]]



                          SUBCHAPTER A_GENERAL





PATENTS--Table of Contents





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



                      Subpart A_General Provisions

                 General Information and Correspondence

Sec.
1.1 Addresses for non-trademark correspondence with the United States 
          Patent and Trademark Office.
1.2 Business to be transacted in writing.
1.3 Business to be conducted with decorum and courtesy.
1.4 Nature of correspondence and signature requirements.
1.5 Identification of patent, patent application, or patent-related 
          proceeding.
1.6 Receipt of correspondence.
1.7 Times for taking action; Expiration on Saturday, Sunday or Federal 
          holiday.
1.8 Certificate of mailing or transmission.
1.9 Definitions.
1.10 Filing of correspondence by ``Express Mail.''

          Records and Files of the Patent and Trademark Office

1.11 Files open to the public.
1.12 Assignment records open to public inspection.
1.13 Copies and certified copies.
1.14 Patent applications preserved in confidence.
1.15 Requests for identifiable records.

                        Fees and Payment of Money

1.16 National application filing, search, and examination fees.
1.17 Patent application and reexamination processing fees.
1.18 Patent post allowance (including issue) fees.
1.19 Document supply fees.
1.20 Post issuance fees.
1.21 Miscellaneous fees and charges.
1.22 Fees payable in advance.
1.23 Methods of payment.
1.24 [Reserved]
1.25 Deposit accounts.
1.26 Refunds.
1.27 Definition of small entities and establishing status as a small 
          entity to permit payment of small entity fees; when a 
          determination of entitlement to small entity status and 
          notification of loss of entitlement to small entity status are 
          required; fraud on the Office.
1.28 Refunds when small entity status is later established; how errors 
          in small entity status are excused.
1.29 Micro entity status.

                Subpart B_National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent

1.31 Applicant may be represented by one or more patent practitioners or 
          joint inventors.
1.32 Power of attorney.
1.33 Correspondence respecting patent applications, reexamination 
          proceedings, and other proceedings.
1.34 Acting in a representative capacity.
1.36 Revocation of power of attorney; withdrawal of patent attorney or 
          agent.

                       Who May Apply for a Patent

1.41 Inventorship.
1.42 Applicant for patent.
1.43 Application for patent by a legal representative of a deceased or 
          legally incapacitated inventor.
1.44 [Reserved]
1.45 Application for patent by joint inventors.
1.46 Application for patent by an assignee, obligated assignee, or a 
          person who otherwise shows sufficient proprietary interest in 
          the matter.
1.47 [Reserved]
1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction 
          of the name or order of names in a patent application, other 
          than a reissue application.

                             The Application

1.51 General requisites of an application.
1.52 Language, paper, writing, margins, compact disc specifications.
1.53 Application number, filing date, and completion of application.
1.54 Parts of application to be filed together; filing receipt.
1.55 Claim for foreign priority.
1.56 Duty to disclose information material to patentability.
1.57 Incorporation by reference.
1.58 Chemical and mathematical formulae and tables.
1.59 Expungement of information or copy of papers in application file.
1.60-162 [Reserved]

                           Oath or Declaration

1.63 Inventor's oath or declaration.
1.64 Substitute statement in lieu of an oath or declaration.
1.66 Statements under oath.

[[Page 6]]

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).
1.76 Application data sheet.
1.77 Arrangement of application elements.
1.78 Claiming benefit of earlier filing date and cross-references to 
          other applications.
1.79 Reservation clauses not permitted.

                              The Drawings

1.81 Drawings required in patent application.
1.83 Content of drawing.
1.84 Standards for drawings.
1.85 Corrections to drawings.
1.88 [Reserved]

                       Models, Exhibits, Specimens

1.91 Models or exhibits not generally admitted as part of application or 
          patent.
1.92 [Reserved]
1.93 Specimens.
1.94 Return of models, exhibits or specimens.
1.95 Copies of exhibits.
1.96 Submission of computer program listings.

                    Information Disclosure Statement

1.97 Filing information disclosure statement.
1.98 Content of information disclosure statement.
1.99 [Reserved]

                       Examination of Applications

1.101 [Reserved]
1.102 Advancement of examination.
1.103 Suspension of action by the Office.
1.104 Nature of examination.
1.105 Requirements for information.
1.106-1.109 [Reserved]
1.109 Effective filing date of a claimed invention under the Leahy-Smith 
          America Invents Act.
1.110 Inventorship and ownership of the subject matter of individual 
          claims.

              Action by Applicant and Further Consideration

1.111 Reply by applicant or patent owner to a non-final Office action.
1.112 Reconsideration before final action.
1.113 Final rejection or action.
1.114 Request for continued examination.

                               Amendments

1.115 Preliminary amendments.
1.116 Amendments and affidavits or other evidence after final action and 
          prior to appeal.
1.117-1.119 [Reserved]
1.121 Manner of making amendments in applications.
1.122-1.124 [Reserved]
1.125 Substitute specification.
1.126 Numbering of claims.
1.127 Petition from refusal to admit amendment.

                         Transitional Provisions

1.129 Transitional procedures for limited examination after final 
          rejection and restriction practice.

                    Affidavits Overcoming Rejections

1.130 Affidavit or declaration of attribution or prior public disclosure 
          under the Leahy-Smith America Invents Act.
1.131 Affidavit or declaration of prior invention or to disqualify 
          commonly owned patent or published application as prior art.
1.132 Affidavits or declarations traversing rejections or objections.

                               Interviews

1.133 Interviews.

         Time for Reply by Applicant; Abandonment of Application

1.134 Time period for reply to an Office action.
1.135 Abandonment for failure to reply within time period.
1.136 Extensions of time.
1.137 Revival of abandoned application, terminated or limited 
          reexamination prosecution, or lapsed patent.
1.138 Express abandonment.
1.139 [Reserved]

          Joinder of Inventions in One Application; Restriction

1.141 Different inventions in one national application.
1.142 Requirement for restriction.
1.143 Reconsideration of requirement.
1.144 Petition from requirement for restriction.
1.145 Subsequent presentation of claims for different invention.
1.146 Election of species.

                             Design Patents

1.151 Rules applicable.
1.152 Design drawings.
1.153 Title, description and claim, oath or declaration.

[[Page 7]]

1.154 Arrangement of application elements in a design application.
1.155 Expedited examination of design applications.

                              Plant Patents

1.161 Rules applicable.
1.162 Applicant, oath or declaration.
1.163 Specification and arrangement of application elements in a plant 
          application.
1.164 Claim.
1.165 Plant drawings.
1.166 Specimens.
1.167 Examination.

                                Reissues

1.171 Application for reissue.
1.172 Reissue applicant.
1.173 Reissue specification, drawings, and amendments.
1.174 [Reserved]
1.175 Inventor's oath or declaration for a reissue application.
1.176 Examination of reissue.
1.177 Issuance of multiple reissue patents.
1.178 Original patent; continuing duty of applicant.
1.179 [Reserved]

                  Petitions and Action by the Director

1.181 Petition to the Director.
1.182 Questions not specifically provided for.
1.183 Suspension of rules.
1.184 [Reserved]

               Appeal to the Patent Trial and Appeal Board

1.191 Appeal to Patent Trial and Appeal Board.
1.192-1.196 [Reserved]
1.197 Termination of proceedings.
1.198 Reopening after a final decision of the Patent Trial and Appeal 
          Board.

                      Publication of Applications.

1.211 Publication of applications.
1.213 Nonpublication request.
1.215 Patent application publication.
1.217 Publication of a redacted copy of an application.
1.219 Early publication.
1.221 Voluntary publication or republication of patent application 
          publication.

                        Miscellaneous Provisions

1.248 Service of papers; manner of service; proof of service in cases 
          other than interferences and trials.
1.251 Unlocatable file.

          Preissuance Submissions and Protests by Third Parties

1.290 Submissions by third parties in applications.
1.291 Protests by the public against pending applications.
1.292 [Reserved]
1.293-1.297 [Reserved]

        Review of Patent and Trademark Office Decisions by Court

1.301-1.304 [Reserved]

                      Allowance and Issue of Patent

1.311 Notice of allowance.
1.312 Amendments after allowance.
1.313 Withdrawal from issue.
1.314 Issuance of patent.
1.315 Delivery of patent.
1.316 Application abandoned for failure to pay issue fee.
1.317 Lapsed patents; delayed payment of balance of issue fee.
1.318 [Reserved]

                               Disclaimer

1.321 Statutory disclaimers, including terminal disclaimers.

                     Correction of Errors in Patent

1.322 Certificate of correction of Office mistake.
1.323 Certificate of correction of applicant's mistake.
1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
1.325 Other mistakes not corrected.

                           Arbitration Awards

1.331-1.334 [Reserved]
1.335 Filing of notice of arbitration awards.

                           Amendment of Rules

1.351 Amendments to rules will be published.
1.352 [Reserved]

                            Maintenance Fees

1.362 Time for payment of maintenance fees.
1.363 Fee address for maintenance fee purposes.
1.366 Submission of maintenance fees.
1.377 Review of decision refusing to accept and record payment of a 
          maintenance 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.

[[Page 8]]

1.414 The United States Patent and Trademark Office as a Designated 
          Office or Elected Office.
1.415 The International Bureau.
1.416 The United States International Preliminary Examining Authority.
1.417 Submission of translation of international publication.
1.419 Display of currently valid control number under the Paperwork 
          Reduction Act.

                Who May File an International Application

1.421 Applicant for international application.
1.422 Legal representative as applicant in an international application.
1.423 [Reserved]
1.424 Assignee, obligated assignee, or person having sufficient 
          proprietary interest as applicant in an international 
          application.

                      The International Application

1.431 International application requirements.
1.432 Designation of States by filing an international application.
1.433 Physical requirements of international application.
1.434 The request.
1.435 The description.
1.436 The claims.
1.437 The drawings.
1.438 The abstract.

                                  Fees

1.445 International application filing, processing and search fees.
1.446 Refund of international application filing and processing fees.

                                Priority

1.451 The priority claim and priority document in an international 
          application.
1.452 Restoration of right of priority.

                             Representation

1.455 Representation in international applications.

                       Transmittal of Record Copy

1.461 Procedures for transmittal of record copy to the International 
          Bureau.

                                 Timing

1.465 Timing of application processing based on the priority date.
1.468 Delays in meeting time limits.

                               Amendments

1.471 Corrections and amendments during international processing.
1.472 Changes in person, name, or address of applicants and inventors.

                           Unity of Invention

1.475 Unity of invention before the International Searching Authority, 
          the International Preliminary Examining Authority and during 
          the national stage.
1.476 Determination of unity of invention before the International 
          Searching Authority.
1.477 Protest to lack of unity of invention before the International 
          Searching Authority.

                  International Preliminary Examination

1.480 Demand for international preliminary examination.
1.481 Payment of international preliminary examination fees.
1.482 International preliminary examination fees.
1.484 Conduct of international preliminary examination.
1.485 Amendments by applicant during international preliminary 
          examination.
1.488 Determination of unity of invention before the International 
          Preliminary Examining Authority.
1.489 Protest to lack of unity of invention before the International 
          Preliminary Examining Authority.

                             National Stage

1.491 National stage commencement, entry, and fulfillment.
1.492 National stage fees.
1.494 Entering the national stage in the United States of America as a 
          Designated Office.
1.495 Entering the national stage in the United States of America.
1.496 Examination of international applications in the national stage.
1.497 Inventor's oath or declaration under 35 U.S.C. 371(c)(4).
1.499 Unity of invention during the national stage.

               Subpart D_Ex Parte Reexamination of Patents

              Citation of Prior Art and Written Statements

1.501 Citation of prior art and written statements in patent files.
1.502 Processing of prior art citations during an ex parte reexamination 
          proceeding.

                   Request for Ex Parte Reexamination

1.510 Request for ex parte reexamination.
1.515 Determination of the request for ex parte
1.520 Ex parte reexamination at the initiative of the Director.

[[Page 9]]

                         Ex Parte Reexamination

1.525 Order for ex parte reexamination.
1.530 Statement by patent owner in ex parte reexamination; amendment by 
          patent owner in ex parte or inter partes reexamination; 
          inventorship change in ex parte or inter partes reexamination.
1.535 Reply by third party requester in ex parte reexamination.
1.540 Consideration of responses in ex parte reexamination.
1.550 Conduct of ex parte reexamination proceedings.
1.552 Scope of reexamination in ex parte reexamination proceedings.
1.555 Information material to patentability in ex parte reexamination 
          and inter partes reexamination proceedings.
1.560 Interviews in ex parte reexamination proceedings.
1.565 Concurrent office proceedings which include an ex parte 
          reexamination proceeding.

                   Ex Parte Reexamination Certificate

1.570 Issuance of ex parte reexamination certificate after ex parte 
          reexamination proceedings.

              Subpart E_Supplemental Examination of Patents

1.601 Filing of papers in supplemental examination.
1.605 Items of information.
1.610 Content of request for supplemental examination.
1.615 Format of papers filed in a supplemental examination proceeding.
1.620 Conduct of supplemental examination proceeding.
1.625 Conclusion of supplemental examination; publication of 
          supplemental examination certificate; procedure after 
          conclusion.

            Subpart F_Adjustment and Extension of Patent Term

           Adjustment of Patent Term Due to Examination Delay

1.701 Extension of patent term due to examination delay under the 
          Uruguay Round Agreements Act of 1999 (original applications, 
          other than designs, filed on or after June 8, 1995, and before 
          May 29, 2000).
1.702 Grounds for adjustment of patent term due to examination delay 
          under the Patent Term Guarantee Act of 1999 (original 
          applications, other than designs, filed on or after May 29, 
          2000).
1.703 Period of adjustment of patent term due to examination delay.
1.704 Reduction of period of adjustment of patent term.
1.705 Patent term adjustment determination.

            Extension of Patent Term Due to Regulatory Review

1.710 Patents subject to extension of the patent term.
1.720 Conditions for extension of patent term.
1.730 Applicant for extension of patent term; signature requirements.
1.740 Formal requirements for application for extension of patent term; 
          correction of informalities.
1.741 Complete application given a filing date; petition procedure.
1.750 Determination of eligibility for extension of patent term.
1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
1.765 Duty of disclosure in patent term extension proceedings.
1.770 Express withdrawal of application for extension of patent term.
1.775 Calculation of patent term extension for a human drug, antibiotic 
          drug or human biological product.
1.776 Calculation of patent term extension for a food additive or color 
          additive.
1.777 Calculation of patent term extension for a medical device.
1.778 Calculation of patent term extension for an animal drug product.
1.779 Calculation of patent term extension for a veterinary biological 
          product.
1.780 Certificate or order of extension of patent term.
1.785 Multiple applications for extension of term of the same patent or 
          of different patents for the same regulatory review period for 
          a product.
1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5).
1.791 Termination of interim extension granted prior to regulatory 
          approval of a product for commercial marketing or use.

              Subpart G_Biotechnology Invention Disclosures

                     Deposit of Biological Material

1.801 Biological material.
1.802 Need or Opportunity to make a deposit.
1.803 Acceptable depository.
1.804 Time of making an original deposit.
1.805 Replacement or supplement of deposit.
1.806 Term of deposit.
1.807 Viability of deposit.
1.808 Furnishing of samples.
1.809 Examination procedures.

[[Page 10]]

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

1.821 Nucleotide and/or amino acid sequence disclosures in patent 
          applications.
1.822 Symbols and format to be used for nucleotide and/or amino acid 
          sequence data.
1.823 Requirements for nucleotide and/or amino acid sequences as part of 
          the application.
1.824 Form and format for nucleotide and/or amino acid sequence 
          submissions in computer readable form.
1.825 Amendments to or replacement of sequence listing and computer 
          readable copy thereof.

Appendix A to Subpart G--Sample Sequence Listing

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

                           Prior Art Citations

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

         Requirements for Inter Partes Reexamination Proceedings

1.903 Service of papers on parties in inter partes reexamination.
1.904 Notice of inter partes reexamination in Official Gazette.
1.905 Submission of papers by the public in inter partes reexamination.
1.906 Scope of reexamination in inter partes reexamination proceeding.
1.907 Inter partes reexamination prohibited.
1.913 Persons eligible to file, and time for filing, a request for inter 
          partes reexamination.
1.915 Content of request for inter partes reexamination.
1.919 Filing date of request for inter partes reexamination.
1.923 Examiner's determination on the request for inter partes 
          reexamination.
1.925 Partial refund if request for inter partes reexamination is not 
          ordered.
1.927 Petition to review refusal to order inter partes reexamination.

                  Inter Partes Reexamination of Patents

1.931 Order for inter partes reexamination.

          Information Disclosure in Inter Partes Reexamination

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

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

1.935 Initial Office action usually accompanies order for inter partes 
          reexamination.
1.937 Conduct of inter partes reexamination.
1.939 Unauthorized papers in inter partes reexamination.
1.941 Amendments by patent owner in inter partes reexamination.
1.943 Requirements of responses, written comments, and briefs in inter 
          partes reexamination.
1.945 Response to Office action by patent owner in inter partes 
          reexamination.
1.947 Comments by third party requester to patent owner's response in 
          inter partes reexamination.
1.948 Limitations on submission of prior art by third party requester 
          following the order for inter partes reexamination.
1.949 Examiner's Office action closing prosecution in inter partes 
          reexamination.
1.951 Options after Office action closing prosecution in inter partes 
          reexamination.
1.953 Examiner's Right of Appeal Notice in inter partes reexamination.

           Interviews Prohibited in Inter Partes Reexamination

1.955 Interviews prohibited in inter partes reexamination proceedings.

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

1.956 Patent owner extensions of time in inter partes reexamination.
1.957 Failure to file a timely, appropriate or complete response or 
          comment in inter partes reexamination.
1.958 Petition to revive inter partes reexamination prosecution 
          terminated for lack of patent owner response.

      Appeal to the Patent Trial and Appeal Board in Inter Partes 
                              Reexamination

1.959 Appeal in inter partes reexamination.
1.961-1.977 [Reserved]
1.979 Return of Jurisdiction from the Patent Trial and Appeal Board; 
          termination of appeal proceedings.
1.981 Reopening after a final decision of the Patent Trial and Appeal 
          Board.

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

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

[[Page 11]]

      Concurrent Proceedings Involving Same Patent in Inter Partes 
                              Reexamination

1.985 Notification of prior or concurrent proceedings in inter partes 
          reexamination.
1.987 Suspension of inter partes reexamination proceeding due to 
          litigation.
1.989 Merger of concurrent reexamination proceedings.
1.991 Merger of concurrent reissue application and inter partes 
          reexamination proceeding.
1.993 Suspension of concurrent interference and inter partes 
          reexamination proceeding.
1.995 Third party requester's participation rights preserved in merged 
          proceeding.

         Reexamination Certificate in Inter Partes Reexamination

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

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

    Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.

    Editorial Notes: 1. In Patent and Trademark Office publications and 
usage the part number is omitted from the numbers of Sec.Sec. 1.1 to 
1.352 and the numbers to the right of the decimal point correspond with 
the respective rule numbers.

    2. For nomenclature changes to part 1, see 68 FR 14335, Mar. 25, 
2003.



                      Subpart A_General Provisions

                 General Information and Correspondence



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

    (a) In general. Except as provided in paragraphs (a)(3)(i), 
(a)(3)(ii), and (d)(1) of this section, all correspondence intended for 
the United States Patent and Trademark Office must be addressed to 
either ``Director of the United States Patent and Trademark Office, P.O. 
Box 1450, Alexandria, Virginia 22313-1450'' or to specific areas within 
the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this 
section. When appropriate, correspondence should also be marked for the 
attention of a particular office or individual.
    (1) Patent correspondence.--(i) In general. All correspondence 
concerning patent matters processed by organizations reporting to the 
Commissioner for Patents should be addressed to: Commissioner for 
Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
    (ii) Patent Trial and Appeal Board. SeeSec. 41.10 orSec. 42.6 of 
this title. Notices of appeal, appeal briefs, reply briefs, requests for 
oral hearing, as well as all other correspondence in an application or a 
patent involved in an appeal to the Board for which an address is not 
otherwise specified, should be addressed as set out in paragraph 
(a)(1)(i) of this section.
    (2) [Reserved]
    (3) Office of General Counsel correspondence--(i) Litigation and 
service. Correspondence relating to pending litigation or otherwise 
within the scope of part 104 of this title shall be addressed as 
provided inSec. 104.2.
    (ii) Disciplinary proceedings. Correspondence to counsel for the 
Director of the Office of Enrollment and Discipline relating to 
disciplinary proceedings pending before a Hearing Officer or the 
Director shall be mailed to: Mail Stop 8, Office of the Solicitor, 
United States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
Virginia 22313-1450.
    (iii) Solicitor, in general. Correspondence to the Office of the 
Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, 
Office of the Solicitor, United States Patent and Trademark Office, P.O. 
Box 1450, Alexandria, Virginia 22313-1450.
    (iv) General Counsel. Correspondence to the Office of the General 
Counsel not otherwise provided for, including correspondence to the 
General Counsel relating to disciplinary proceedings, shall be addressed 
to: General Counsel, United States Patent and Trademark Office, PO Box 
1450, Alexandria, Virginia 22313-1450.
    (v) Improper correspondence. Correspondence improperly addressed to 
a Post Office Box specified in paragraphs (a)(3)(i) and(a)(3)(ii) of 
this section will not be filed elsewhere in the United States Patent and 
Trademark Office, and may be returned.
    (4) Office of Public Records correspondence. (i) Assignments. All 
patent-related documents submitted by mail to

[[Page 12]]

be recorded by Assignment Services Division, except for documents filed 
together with a new application, should be addressed to: Mail Stop 
Assignment Recordation Services, Director of the United States Patent 
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. 
SeeSec. 3.27.
    (5) Office of Enrollment and Discipline correspondence. All 
correspondence directed to the Office of Enrollment and Discipline 
concerning enrollment, registration, and investigation matters should be 
addressed to Mail Stop OED, Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    (ii) Documents. All requests for certified or uncertified copies of 
patent documents should be addressed to: Mail Stop Document Services, 
Director of the United States Patent and Trademark Office, P.O. Box 
1450, Alexandria, Virginia 22313-1450.
    (b) Patent Cooperation Treaty. Letters and other communications 
relating to international applications during the international stage 
and prior to the assignment of a national serial number should be 
additionally marked ``Mail Stop PCT.''
    (c) For reexamination proceedings. (1) Requests for ex parte 
reexamination (original request papers) and all subsequent ex parte 
reexamination correspondence filed in the Office, other than 
correspondence to the Office of the General Counsel pursuant toSec. 
1.1(a)(3) andSec. 1.302(c), should be additionally marked ``Mail Stop 
Ex Parte Reexam.''
    (2) Requests for inter partes reexamination (original request 
papers) and all subsequent inter partes reexamination correspondence 
filed in the Office, other than correspondence to the Office of the 
General Counsel pursuant toSec. 1.1(a)(3) andSec. 1.302(c), should 
be additionally marked ``Mail Stop Inter partes Reexam.''
    (d) Payments of maintenance fees in patents not submitted 
electronically over the Internet, and correspondence related to 
maintenance fees may be addressed to: Director of the United States 
Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson 
Avenue, Suite 300, Alexandria, Virginia 22314.
    (e) Patent term extension. All applications for extension of patent 
term under 35 U.S.C. 156 and any communications relating thereto 
intended for the United States Patent and Trademark Office should be 
additionally marked ``Mail Stop Hatch-Waxman PTE.'' When appropriate, 
the communication should also be marked to the attention of a particular 
individual, as where a decision has been rendered.
    (f) [Reserved]

[68 FR 14335, Mar. 25, 2003; 68 FR 19371, Apr. 21, 2003, as amended at 
68 FR 48287, Aug. 13, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 29877, May 
26, 2004; 69 FR 35451, June 24, 2004; 69 FR 49997, Aug. 12, 2004; 72 FR 
18904, Apr. 16, 2007; 73 FR 47540, Aug. 14, 2008; 75 FR 36295, June 25, 
2010; 77 FR 46624, Aug. 6, 2012; 77 FR 48811, Aug. 14, 2012]



Sec.  1.2  Business to be transacted in writing.

    All business with the Patent and Trademark Office should be 
transacted in writing. The personal attendance of applicants or their 
attorneys or agents at the Patent and Trademark Office is unnecessary. 
The action of the Patent and Trademark Office will be based exclusively 
on the written record in the Office. No attention will be paid to any 
alleged oral promise, stipulation, or understanding in relation to which 
there is disagreement or doubt.



Sec.  1.3  Business to be conducted with decorum and courtesy.

    Applicants and their attorneys or agents are required to conduct 
their business with the United States Patent and Trademark Office with 
decorum and courtesy. Papers presented in violation of this requirement 
will be submitted to the Director and will not be entered. A notice of 
the non-entry of the paper will be provided. Complaints against 
examiners and other employees must be made in correspondence separate 
from other papers.

[68 FR 38624, June 30, 2003]



Sec.  1.4  Nature of correspondence and signature requirements.

    (a) Correspondence with the Patent and Trademark Office comprises:
    (1) Correspondence relating to services and facilities of the 
Office, such as

[[Page 13]]

general inquiries, requests for publications supplied by the Office, 
orders for printed copies of patents, orders for copies of records, 
transmission of assignments for recording, and the like, and
    (2) Correspondence in and relating to a particular application or 
other proceeding in the Office. See particularly the rules relating to 
the filing, processing, or other proceedings of national applications in 
subpart B, Sec.Sec. 1.31 to 1.378; of international applications in 
subpart C, Sec.Sec. 1.401 to 1.499; of ex parte reexaminations of 
patents in subpart D, Sec.Sec. 1.501 to 1.570; of extension of patent 
term in subpart F, Sec.Sec. 1.710 to 1.785; of inter partes 
reexaminations of patents in subpart H, Sec.Sec. 1.902 to 1.997; and 
of the Patent Trial and Appeal Board in parts 41 and 42 of this title.
    (b) Since each file must be complete in itself, a separate copy of 
every paper to be filed in a patent application, patent file, or other 
proceeding must be furnished for each file to which the paper pertains, 
even though the contents of the papers filed in two or more files may be 
identical. The filing of duplicate copies of correspondence in the file 
of an application, patent, or other proceeding should be avoided, except 
in situations in which the Office requires the filing of duplicate 
copies. The Office may dispose of duplicate copies of correspondence in 
the file of an application, patent, or other proceeding.
    (c) Since different matters may be considered by different branches 
or sections of the United States Patent and Trademark Office, each 
distinct subject, inquiry or order must be contained in a separate paper 
to avoid confusion and delay in answering papers dealing with different 
subjects.
    (d)(1) Handwritten signature. Each piece of correspondence, except 
as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section, 
filed in an application, patent file, or other proceeding in the Office 
which requires a person's signature, must:
    (i) Be an original, that is, have an original handwritten signature 
personally signed, in permanent dark ink or its equivalent, by that 
person; or
    (ii) Be a direct or indirect copy, such as a photocopy or facsimile 
transmission (Sec.  1.6(d)), of an original. In the event that a copy of 
the original is filed, the original should be retained as evidence of 
authenticity. If a question of authenticity arises, the Office may 
require submission of the original.
    (2) S-signature. An S-signature is a signature inserted between 
forward slash marks, but not a handwritten signature as defined bySec. 
1.4(d)(1). An S-signature includes any signature made by electronic or 
mechanical means, and any other mode of making or applying a signature 
not covered by a handwritten signature ofSec. 1.4(d)(1). 
Correspondence being filed in the Office in paper, by facsimile 
transmission as provided inSec. 1.6(d), or via the Office electronic 
filing system as an attachment as provided inSec. 1.6(a)(4), for a 
patent application, patent, or a reexamination proceeding may be S-
signature signed instead of being personally signed (i.e., with a 
handwritten signature) as provided for in paragraph (d)(1) of this 
section. The requirements for an S-signature under this paragraph (d)(2) 
of this section are as follows.
    (i) The S-signature must consist only of letters, or Arabic 
numerals, or both, with appropriate spaces and commas, periods, 
apostrophes, or hyphens for punctuation, and the person signing the 
correspondence must insert his or her own S-signature with a first 
single forward slash mark before, and a second single forward slash mark 
after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and
    (ii) A patent practitioner (Sec.  1.32(a)(1)), signing pursuant to 
Sec.Sec. 1.33(b)(1) or 1.33(b)(2), must supply his/her registration 
number either as part of the S-signature, or immediately below or 
adjacent to the S-signature. The number () character may be 
used only as part of the S-signature when appearing before a 
practitioner's registration number; otherwise the number character may 
not be used in an S-signature.
    (iii) The signer's name must be:
    (A) Presented in printed or typed form preferably immediately below 
or adjacent the S-signature, and
    (B) Reasonably specific enough so that the identity of the signer 
can be readily recognized.

[[Page 14]]

    (3) Forms. The Office provides forms to the public to use in certain 
situations to assist in the filing of correspondence for a certain 
purpose and to meet certain requirements for patent applications and 
proceedings. Use of the forms for purposes for which they were not 
designed is prohibited. No changes to certification statements on the 
Office forms (e.g., oath or declaration forms, terminal disclaimer 
forms, petition forms, and nonpublication request form) may be made. The 
existing text of a form, other than a certification statement, may be 
modified, deleted, or added to, if all text identifying the form as an 
Office form is removed. The presentation to the Office (whether by 
signing, filing, submitting, or later advocating) of any Office form 
with text identifying the form as an Office form by a party, whether a 
practitioner or non-practitioner, constitutes a certification under 
Sec.  11.18(b) of this chapter that the existing text and any 
certification statements on the form have not been altered other than 
permitted by EFS-Web customization.
    (4) Certifications--(i) Section 11.18 certifications. The 
presentation to the Office (whether by signing, filing, submitting, or 
later advocating) of any paper by a party, whether a practitioner or 
non-practitioner, constitutes a certification underSec. 11.18(b) of 
this subchapter. Violations ofSec. 11.18(b)(2) of this subchapter by a 
party, whether a practitioner or non-practitioner, may result in the 
imposition of sanctions underSec. 11.18(c) of this subchapter. Any 
practitioner violatingSec. 11.18(b) of this subchapter may also be 
subject to disciplinary action. SeeSec. 11.18(d) of this subchapter.
    (ii) Certifications as to the signature:--(A) Of another: A person 
submitting a document signed by another under paragraph (d)(2) of this 
section is obligated to have a reasonable basis to believe that the 
person whose signature is present on the document was actually inserted 
by that person, and should retain evidence of authenticity of the 
signature.
    (B) Self certification: The person inserting a signature under 
paragraph (d)(2) of this section in a document submitted to the Office 
certifies that the inserted signature appearing in the document is his 
or her own signature.
    (C) Sanctions: Violations of the certifications as to the signature 
of another or a person's own signature, set forth in paragraphs 
(d)(4)(ii)(A) and (B) of this section, may result in the imposition of 
sanctions underSec. 11.18(c) and (d) of this chapter.
    (e) The following correspondence must be submitted with an original 
handwritten signature personally signed in permanent dark ink or its 
equivalent:
    (1) 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; and
    (2) Payments by credit cards where the payment is not being made via 
the Office's electronic filing systems.
    (f) When a document that is required by statute to be certified must 
be filed, a copy, including a photocopy or facsimile transmission, of 
the certification is not acceptable.
    (g) An applicant who has not made of record a registered attorney or 
agent may be required to state whether assistance was received in the 
preparation or prosecution of the patent application, for which any 
compensation or consideration was given or charged, and if so, to 
disclose the name or names of the person or persons providing such 
assistance. Assistance includes the preparation for the applicant of the 
specification and amendments or other papers to be filed in the Patent 
and Trademark Office, as well as other assistance in such matters, but 
does not include merely making drawings by draftsmen or stenographic 
services in typing papers.
    (h) Ratification/confirmation/evidence of authenticity: The Office 
may require ratification, confirmation (which includes submission of a 
duplicate document but with a proper signature), or evidence of 
authenticity of a signature, such as when the Office has reasonable 
doubt as to the authenticity (veracity) of the signature, e.g., where 
there are variations of a signature, or where the signature and the 
typed or printed

[[Page 15]]

name, do not clearly identify the person signing.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

    Editorial Note: For Federal Register citations affectingSec. 1.4, 
see the List of CFR Sections Affected, which appears in the Finding Aids 
section of the printed volume and at www.fdsys.gov.



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

    (a) No correspondence relating to an application should be filed 
prior to receipt of the application number from the Patent and Trademark 
Office. When a letter directed to the Patent and Trademark Office 
concerns a previously filed application for a patent, it must identify 
on the top page in a conspicuous location, the application number 
(consisting of the series code and the serial number; e.g., 07/123,456), 
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 with 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 mail 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 underSec. 1.8 or the Express Mail procedure underSec. 1.10 
for resubmissions of returned correspondence if they desire to have the 
benefit of the date of deposit in 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 patent should also state 
the name of the first listed inventor, 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 ofSec. 1.366(c).
    (c) Correspondence relating to a trial proceeding before the Patent 
Trial and Appeal Board (part 42 of this title) are governed bySec. 
42.6 of this title.
    (d) A letter relating to a reexamination proceeding should identify 
it as such by the number of the patent undergoing reexamination, the 
reexamination request control number assigned to such proceeding and, if 
known, the group art unit and name of the examiner to which it has been 
assigned.
    (e) [Reserved]
    (f) When a paper concerns a provisional application, it should 
identify the application as such and include the application number.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49 
FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 
1988; 58 FR 54501, Oct. 22, 1993; 61 FR 42802, Aug. 19, 1996; 61 FR 
56446, Nov. 1, 1996; 64 FR 48917, Sept. 8, 1999; 68 FR 48288, Aug. 13, 
2003; 69 FR 49997, Aug. 12, 2004; 77 FR 46624, Aug. 6, 2012; 77 FR 
48812, Aug. 14, 2012]



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

[[Page 16]]

District of Columbia. Except for correspondence transmitted by facsimile 
under paragraph (a)(3) of this section, or filed electronically under 
paragraph (a)(4) of this section, no correspondence is received in the 
Office on Saturdays, Sundays, or Federal holidays within the District of 
Columbia.
    (2) Correspondence filed in accordance withSec. 1.10 will be 
stamped with the date of deposit as ``Express Mail'' with the United 
States Postal Service.
    (3) Correspondence transmitted by facsimile to the Patent and 
Trademark Office will be stamped with the date on which the complete 
transmission is received in the Patent and Trademark Office unless that 
date is a Saturday, Sunday, or Federal holiday within the District of 
Columbia, in which case the date stamped will be the next succeeding day 
which is not a Saturday, Sunday, or Federal holiday within the District 
of Columbia.
    (4) Correspondence may be submitted using the Office electronic 
filing system only in accordance with the Office electronic filing 
system requirements. Correspondence submitted to the Office by way of 
the Office electronic filing system will be accorded a receipt date, 
which is the date the correspondence is received at the correspondence 
address for the Office set forth inSec. 1.1 when it was officially 
submitted.
    (b) [Reserved]
    (c) Correspondence delivered by hand. In addition to being mailed, 
correspondence may be delivered by hand during hours the Office is open 
to receive correspondence.
    (d) Facsimile transmission. Except in the cases enumerated below, 
correspondence, including authorizations to charge a deposit account, 
may be transmitted by facsimile. The receipt date accorded to the 
correspondence will be the date on which the complete transmission is 
received in the United States Patent and Trademark Office, unless that 
date is a Saturday, Sunday, or Federal holiday within the District of 
Columbia. See paragraph (a)(3) of this section. To facilitate proper 
processing, each transmission session should be limited to 
correspondence to be filed in a single application or other proceeding 
before the United States Patent and Trademark Office. The application 
number of a patent application, the control number of a reexamination 
proceeding, the interference number of an interference proceeding, the 
trial number of a trial proceeding before the Board, or the patent 
number of a patent should be entered as a part of the sender's 
identification on a facsimile cover sheet. Facsimile transmissions are 
not permitted and, if submitted, will not be accorded a date of receipt 
in the following situations:
    (1) Correspondence as specified inSec. 1.4(e), requiring an 
original signature;
    (2) Certified documents as specified inSec. 1.4(f);
    (3) Correspondence which cannot receive the benefit of the 
certificate of mailing or transmission as specified inSec. 
1.8(a)(2)(i)(A) through (D), (F), and (I), andSec. 1.8(a)(2)(iii)(A), 
except that a continued prosecution application underSec. 1.53(d) may 
be transmitted to the Office by facsimile;
    (4) Color drawings submitted under Sec.Sec. 1.81, 1.83 through 
1.85, 1.152, 1.165, 1.173, or 1.437;
    (5) A request for reexamination underSec. 1.510 orSec. 1.913;
    (6) Correspondence to be filed in a patent application subject to a 
secrecy order under Sec.Sec. 5.1 through 5.5 of this chapter and 
directly related to the secrecy order content of the application;
    (7)-(8) [Reserved]
    (9) In contested cases and trials before the Patent Trial and Appeal 
Board, except as the Board may expressly authorize.
    (e) [Reserved]
    (f) Facsimile transmission of a patent application underSec. 
1.53(d). In the event that the Office has no evidence of receipt of an 
application underSec. 1.53(d) (a continued prosecution application) 
transmitted to the Office by facsimile transmission, the party who 
transmitted the application underSec. 1.53(d) may petition the 
Director to accord the application underSec. 1.53(d) a filing date as 
of the date the application underSec. 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

[[Page 17]]

Sec.  1.53(d) promptly after becoming aware that the Office has no 
evidence of receipt of the application underSec. 1.53(d);
    (ii) Supplies an additional copy of the previously transmitted 
application underSec. 1.53(d); and
    (iii) Includes a statement which attests on a personal knowledge 
basis or to the satisfaction of the Director to the previous 
transmission of the application underSec. 1.53(d) and is accompanied 
by a copy of the sending unit's report confirming transmission of the 
application underSec. 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 underSec. 1.53(d).
    (2) The Office may require additional evidence to determine if the 
application underSec. 1.53(d) was transmitted to and received in the 
Office on the date in question.
    (g) Submission of the national stage correspondence required by 
Sec.  1.495 via the Office electronic filing system. In the event that 
the Office has no evidence of receipt of the national stage 
correspondence required bySec. 1.495, which was submitted to the 
Office by the Office electronic filing system, the party who submitted 
the correspondence may petition the Director to accord the national 
stage correspondence a receipt date as of the date the correspondence is 
shown to have been officially submitted to the Office.
    (1) The petition of this paragraph (g) requires that the party who 
submitted such national stage correspondence:
    (i) Informs the Office of the previous submission of the 
correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence underSec. 1.495;
    (ii) Supplies an additional copy of the previously submitted 
correspondence;
    (iii) Includes a statement that attests on a personal knowledge 
basis, or to the satisfaction of the Director, that the correspondence 
was previously officially submitted; and
    (iv) Supplies a copy of an acknowledgment receipt generated by the 
Office electronic filing system, or equivalent evidence, confirming the 
submission to support the statement of paragraph (g)(1)(iii) of this 
section.
    (2) The Office may require additional evidence to determine if the 
national stage correspondence was submitted to the Office on the date in 
question.

[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56447, 
Nov. 1, 1996; 62 FR 53180, Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999; 65 
FR 54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000; 68 FR 14336, Mar. 
25, 2003; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 77 FR 42173, July 17, 
2012; 77 FR 46624, Aug. 6, 2012]



Sec.  1.7  Times for taking action; Expiration on Saturday, Sunday
or Federal holiday.

    (a) Whenever periods of time are specified in this part in days, 
calendar days are intended. When the day, or the last day fixed by 
statute or by or under this part for taking any action or paying any fee 
in the United States Patent and Trademark Office falls on Saturday, 
Sunday, or on a Federal holiday within the District of Columbia, the 
action may be taken, or the fee paid, on the next succeeding business 
day which is not a Saturday, Sunday, or a Federal holiday. SeeSec. 
1.304 for time for appeal or for commencing civil action.
    (b) If the day that is twelve months after the filing date of a 
provisional application under 35 U.S.C. 111(b) andSec. 1.53(c) falls 
on Saturday, Sunday, or on a Federal holiday within the District of 
Columbia, the period of pendency shall be extended to the next 
succeeding secular or business day which is not a Saturday, Sunday, or a 
Federal holiday.

[65 FR 14871, Mar. 20, 2000]



Sec.  1.8  Certificate of mailing or transmission.

    (a) Except in the situations enumerated in paragraph (a)(2) of this 
section or as otherwise expressly excluded in this chapter, 
correspondence required to be filed in the U.S. Patent and Trademark 
Office within a set period of time will be considered as being timely 
filed if the procedure described in this section is followed. The actual 
date of receipt will be used for all other purposes.
    (1) Correspondence will be considered as being timely filed if:

[[Page 18]]

    (i) The correspondence is mailed or transmitted prior to expiration 
of the set period of time by being:
    (A) Addressed as set out inSec. 1.1(a) and deposited with the U.S. 
Postal Service with sufficient postage as first class mail;
    (B) Transmitted by facsimile to the Patent and Trademark Office in 
accordance withSec. 1.6(d); or
    (C) Transmitted via the Office electronic filing system in 
accordance withSec. 1.6(a)(4); and
    (ii) The correspondence includes a certificate for each piece of 
correspondence stating the date of deposit or transmission. The person 
signing the certificate should have reasonable basis to expect that the 
correspondence would be mailed or transmitted on or before the date 
indicated.
    (2) The procedure described in paragraph (a)(1) of this section does 
not apply to, and no benefit will be given to a Certificate of Mailing 
or Transmission on the following:
    (i) Relative to Patents and Patent Applications--
    (A) The filing of a national patent application specification and 
drawing or other correspondence for the purpose of obtaining an 
application filing date, including a request for a continued prosecution 
application underSec. 1.53(d);
    (B) Papers filed in trials before the Patent Trial and Appeal Board, 
which are governed bySec. 42.6(b) of this title;
    (C) Papers filed in contested cases before the Patent Trial and 
Appeal Board, which are governed bySec. 41.106 (f) of this title;
    (D) The filing of an international application for patent;
    (E) The filing of correspondence in an international application 
before the U.S. Receiving Office, the U.S. International Searching 
Authority, or the U.S. International Preliminary Examining Authority;
    (F) The filing of a copy of the international application and the 
basic national fee necessary to enter the national stage, as specified 
inSec. 1.495(b).
    (G) The filing of a written declaration of abandonment underSec. 
1.138;
    (H) The filing of a submission underSec. 1.217 for publication of 
a redacted copy of an application;
    (I) The filing of a third-party submission underSec. 1.290; and
    (J) The calculation of any period of adjustment, as specified in 
Sec.  1.703(f).
    (ii) [Reserved]
    (iii) Relative to Disciplinary Proceedings--
    (A) Correspondence filed in connection with a disciplinary 
proceeding under part 11 of this chapter.
    (B) [Reserved]
    (b) In the event that correspondence is considered timely filed by 
being mailed or transmitted in accordance with paragraph (a) of this 
section, but not received in the U.S. Patent and Trademark Office after 
a reasonable amount of time has elapsed from the time of mailing or 
transmitting of the correspondence, or after the application is held to 
be abandoned, or after the proceeding is dismissed or decided with 
prejudice, or the prosecution of a reexamination proceeding is 
terminated pursuant toSec. 1.550(d) orSec. 1.957(b) or limited 
pursuant toSec. 1.957(c), or a requester paper is refused 
consideration pursuant toSec. 1.957(a), the correspondence will be 
considered timely if the party who forwarded such correspondence:
    (1) Informs the Office of the previous mailing or transmission of 
the correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence;
    (2) Supplies an additional copy of the previously mailed or 
transmitted correspondence and certificate; and
    (3) Includes a statement that attests on a personal knowledge basis 
or to the satisfaction of the Director to the previous timely mailing, 
transmission or submission. If the correspondence was sent by facsimile 
transmission, a copy of the sending unit's report confirming 
transmission may be used to support this statement. If the 
correspondence was transmitted via the Office electronic filing system, 
a copy of an acknowledgment receipt generated by the Office electronic 
filing system confirming submission may be used to support this 
statement.

[[Page 19]]

    (c) The Office may require additional evidence to determine if the 
correspondence was timely filed.

[58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993, as amended at 61 
FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 67 FR 523, Jan. 4, 
2002; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 72 FR 18904, Apr. 16, 
2007; 73 FR 47684, Aug. 14, 2008; 77 FR 42173, July 17, 2012]



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 an international application filed under the Patent 
Cooperation Treaty in which the basic national fee under 35 U.S.C. 
41(a)(1)(F) has been paid.
    (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 an international application filed 
under the Patent Cooperation Treaty in which the basic national fee 
under 35 U.S.C. 41(a)(1)(F) has been paid.
    (b) An international application as used in this chapter means an 
international application for patent filed under the Patent Cooperation 
Treaty prior to entering national processing at the Designated Office 
stage.
    (c) A published application as used in this chapter means an 
application for patent which has been published under 35 U.S.C. 122(b).
    (d)(1) The term inventor or inventorship as used in this chapter 
means the individual or, if a joint invention, the individuals 
collectively who invented or discovered the subject matter of the 
invention.
    (2) The term joint inventor or coinventor as used in this chapter 
means any one of the individuals who invented or discovered the subject 
matter of a joint invention.
    (e) The term joint research agreement as used in this chapter means 
a written contract, grant, or cooperative agreement entered into by two 
or more persons or entities for the performance of experimental, 
developmental, or research work in the field of the claimed invention.
    (f) The term claimed invention as used in this chapter means the 
subject matter defined by a claim in a patent or an application for a 
patent.
    (g) For definitions in Patent Trial and Appeal Board proceedings, 
see parts 41 and 42 of this title.
    (h) A Federal holiday within the District of Columbia as used in 
this chapter means any day, except Saturdays and Sundays, when the 
Patent and Trademark Office is officially closed for business for the 
entire day.
    (i) National security classified as used in this chapter means 
specifically authorized under criteria established by an Act of Congress 
or Executive Order to be kept secret in the interest of national defense 
or foreign policy and, in fact, properly classified pursuant to such Act 
of Congress or Executive Order.
    (j) Director as used in this chapter, except for part 11 of this 
chapter, means the Under Secretary of Commerce for Intellectual Property 
and Director of the United States Patent and Trademark Office.
    (k) Paper as used in this chapter means a document that may exist in 
electronic form, or in physical form, and therefore does not necessarily 
imply physical sheets of paper.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982; 
47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, 
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 14336, Mar. 
25, 2003; 68 FR 38624, June 30, 2003; 69 FR 49997, Aug. 12, 2004; 73 FR 
47685, Aug. 14, 2008; 77 FR 46624, Aug. 6, 2012; 77 FR 48812, Aug. 14, 
2012; 78 FR 11052, Feb. 14, 2013]



Sec.  1.10  Filing of correspondence by ``Express Mail.''

    (a)(1) Any correspondence received by the U.S. Patent and Trademark 
Office (USPTO) that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed with the USPTO on the date of deposit with the USPS.

[[Page 20]]

    (2) The date of deposit with USPS is shown by the ``date in'' on the 
``Express Mail'' label or other official USPS notation. If the USPS 
deposit date cannot be determined, the correspondence will be accorded 
the USPTO receipt date as the filing date. SeeSec. 1.6(a).
    (b) Correspondence should be deposited directly with an employee of 
the USPS to ensure that the person depositing the correspondence 
receives a legible copy of the ``Express Mail'' mailing label with the 
``date-in'' clearly marked. Persons dealing indirectly with the 
employees of the USPS (such as by deposit in an ``Express Mail'' drop 
box) do so at the risk of not receiving a copy of the ``Express Mail'' 
mailing label with the desired ``date-in'' clearly marked. The paper(s) 
or fee(s) that constitute the correspondence should also include the 
``Express Mail'' mailing label number thereon. See paragraphs (c), (d) 
and (e) of this section.
    (c) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that there is a 
discrepancy between the filing date accorded by the Office to the 
correspondence and the date of deposit as shown by the ``date-in'' on 
the ``Express Mail'' mailing label or other official USPS notation, may 
petition the Director to accord the correspondence a filing date as of 
the ``date-in'' on the ``Express Mail'' mailing label or other official 
USPS notation, provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date other than 
the USPS deposit date;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail;'' and
    (3) The petition includes a true copy of the ``Express Mail'' 
mailing label showing the ``date-in,'' and of any other official 
notation by the USPS relied upon to show the date of deposit.
    (d) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that the ``date-in'' on 
the ``Express Mail'' mailing label or other official notation entered by 
the USPS was incorrectly entered or omitted by the USPS, may petition 
the Director to accord the correspondence a filing date as of the date 
the correspondence is shown to have been deposited with the USPS, 
provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date based upon 
an incorrect entry by the USPS;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail''; and
    (3) The petition includes a showing which establishes, to the 
satisfaction of the Director, that the requested filing date was the 
date the correspondence was deposited in the ``Express Mail Post Office 
to Addressee'' service prior to the last scheduled pickup for that day. 
Any showing pursuant to this paragraph must be corroborated by evidence 
from the USPS or that came into being after deposit and within one 
business day of the deposit of the correspondence in the ``Express Mail 
Post Office to Addressee'' service of the USPS.
    (e) Any person mailing correspondence addressed as set out inSec. 
1.1(a) to the Office with sufficient postage utilizing the ``Express 
Mail Post Office to Addressee'' service of the USPS but not received by 
the Office, may petition the Director to consider such correspondence 
filed in the Office on the USPS deposit date, provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has no evidence of receipt of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail'';
    (3) The petition includes a copy of the originally deposited 
paper(s) or

[[Page 21]]

fee(s) that constitute the correspondence showing the number of the 
``Express Mail'' mailing label thereon, a copy of any returned postcard 
receipt, a copy of the ``Express Mail'' mailing label showing the 
``date-in,'' a copy of any other official notation by the USPS relied 
upon to show the date of deposit, and, if the requested filing date is a 
date other than the ``date-in'' on the ``Express Mail'' mailing label or 
other official notation entered by the USPS, a showing pursuant to 
paragraph (d)(3) of this section that the requested filing date was the 
date the correspondence was deposited in the ``Express Mail Post Office 
to Addressee'' service prior to the last scheduled pickup for that day; 
and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Director, the original deposit of the correspondence 
and that the copies of the correspondence, the copy of the ``Express 
Mail'' mailing label, the copy of any returned postcard receipt, and any 
official notation entered by the USPS are true copies of the originally 
mailed correspondence, original ``Express Mail'' mailing label, returned 
postcard receipt, and official notation entered by the USPS.
    (f) The Office may require additional evidence to determine if the 
correspondence was deposited as ``Express Mail'' with the USPS on the 
date in question.
    (g) Any person who mails correspondence addressed as set out in 
Sec.  1.1(a) to the Office with sufficient postage utilizing the 
``Express Mail Post Office to Addressee'' service of the USPS, but has 
the correspondence returned by the USPS due to an interruption or 
emergency in ``Express Mail'' service, may petition the Director to 
consider such correspondence as filed on a particular date in the 
Office, provided that:
    (1) The petition is filed promptly after the person becomes aware of 
the return of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail'';
    (3) The petition includes the original correspondence or a copy of 
the original correspondence showing the number of the ``Express Mail'' 
mailing label thereon and a copy of the ``Express Mail'' mailing label 
showing the ``date-in''; and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Director, the original deposit of the correspondence 
and that the correspondence or copy of the correspondence is the 
original correspondence or a true copy of the correspondence originally 
deposited with the USPS on the requested filing date. The Office may 
require additional evidence to determine if the correspondence was 
returned by the USPS due to an interruption or emergency in ``Express 
Mail'' service.
    (h) Any person who attempts to mail correspondence addressed as set 
out inSec. 1.1(a) to the Office with sufficient postage utilizing the 
``Express Mail Post Office to Addressee'' service of the USPS, but has 
the correspondence refused by an employee of the USPS due to an 
interruption or emergency in ``Express Mail'' service, may petition the 
Director to consider such correspondence as filed on a particular date 
in the Office, provided that:
    (1) The petition is filed promptly after the person becomes aware of 
the refusal of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
attempted mailing by ``Express Mail'';
    (3) The petition includes the original correspondence or a copy of 
the original correspondence showing the number of the ``Express Mail'' 
mailing label thereon; and
    (4) The petition includes a statement by the person who originally 
attempted to deposit the correspondence with the USPS which establishes, 
to the satisfaction of the Director, the original attempt to deposit the 
correspondence and that the correspondence or copy of the correspondence 
is the original correspondence or a true copy of the correspondence 
originally attempted to be deposited with the USPS on the requested 
filing date. The Office may require additional evidence to determine if 
the correspondence was refused by an

[[Page 22]]

employee of the USPS due to an interruption or emergency in ``Express 
Mail'' service.
    (i) Any person attempting to file correspondence under this section 
that was unable to be deposited with the USPS due to an interruption or 
emergency in ``Express Mail'' service which has been so designated by 
the Director, may petition the Director to consider such correspondence 
as filed on a particular date in the Office, provided that:
    (1) The petition is filed in a manner designated by the Director 
promptly after the person becomes aware of the designated interruption 
or emergency in ``Express Mail'' service;
    (2) The petition includes the original correspondence or a copy of 
the original correspondence; and
    (3) The petition includes a statement which establishes, to the 
satisfaction of the Director, that the correspondence would have been 
deposited with the USPS but for the designated interruption or emergency 
in ``Express Mail'' service, and that the correspondence or copy of the 
correspondence is the original correspondence or a true copy of the 
correspondence originally attempted to be deposited with the USPS on the 
requested filing date.

[61 FR 56447, Nov. 1, 1996 as amended at 62 FR 53181, Oct. 10, 1997; 67 
FR 36101, May 23, 2002; 68 FR 48288, Aug. 13, 2003; 69 FR 56536, Sept. 
21, 2004; 77 FR 46624, Aug. 6, 2012]

          Records and Files of the Patent and Trademark Office



Sec.  1.11  Files open to the public.

    (a) The specification, drawings, and all papers relating to the file 
of: A published application; a patent; or a statutory invention 
registration are open to inspection by the public, and copies may be 
obtained upon the payment of the fee set forth inSec. 1.19(b)(2). If 
an application was published in redacted form pursuant toSec. 1.217, 
the complete file wrapper and contents of the patent application will 
not be available if: The requirements of paragraphs (d)(1), (d)(2), and 
(d)(3) ofSec. 1.217 have been met in the application; and the 
application is still pending. SeeSec. 2.27 of this title for trademark 
files.
    (b) All reissue applications, all applications in which the Office 
has accepted a request to open the complete application to inspection by 
the public, and related papers in the application file, are open to 
inspection by the public, and copies may be furnished upon paying the 
fee therefor. The filing of reissue applications, other than continued 
prosecution applications underSec. 1.53(d) of reissue applications, 
will be announced in the Official Gazette. The announcement shall 
include at least the filing date, reissue application and original 
patent numbers, title, class and subclass, name of the inventor, name of 
the owner of record, name of the attorney or agent of record, and 
examining group to which the reissue application is assigned.
    (c) All requests for reexamination for which all the requirements of 
Sec.  1.510 orSec. 1.915 have been satisfied will be announced in the 
Official Gazette. Any reexaminations at the initiative of the Director 
pursuant toSec. 1.520 will also be announced in the Official Gazette. 
The announcement shall include at least the date of the request, if any, 
the reexamination request control number or the Director initiated order 
control number, patent number, title, class and subclass, name of the 
inventor, name of the patent owner of record, and the examining group to 
which the reexamination is assigned.
    (d) All papers or copies thereof relating to a reexamination 
proceeding which have been entered of record in the patent or 
reexamination file are open to inspection by the general public, and 
copies may be furnished upon paying the fee therefor.
    (e) Except as prohibited inSec. 41.6(b),Sec. 42.14 orSec. 
42.410(b), the file of any interference or trial before the Patent Trial 
and Appeal Board is open to public inspection and copies of the file may 
be obtained upon payment of the fee therefor.

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

[46 FR 29181, May 29, 1981, as amended at 47 FR 41272, Sept. 17, 1982; 
50 FR 9378, Mar. 7, 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, Oct. 
10, 1997; 65 FR 57051, Sept. 20, 2000; 69 FR 49997, Aug. 12, 2004; 70 FR 
56126, Sept. 26, 2005; 71 FR 44223, Aug. 4, 2006; 77 FR 46624, Aug. 6, 
2012]

[[Page 23]]



Sec.  1.12  Assignment records open to public inspection.

    (a)(1) Separate assignment records are maintained in the United 
States Patent and Trademark Office for patents and trademarks. The 
assignment records, relating to original or reissue patents, including 
digests and indexes (for assignments recorded on or after May 1, 1957), 
and published patent applications, are open to public inspection at the 
United States Patent and Trademark Office, and copies of patent 
assignment records may be obtained upon request and payment of the fee 
set forth inSec. 1.19 of this chapter. SeeSec. 2.200 of this chapter 
regarding trademark assignment records.
    (2) All records of assignments of patents recorded before May 1, 
1957, are maintained by the National Archives and Records Administration 
(NARA). The records are open to public inspection. Certified and 
uncertified copies of those assignment records are provided by NARA upon 
request and payment of the fees required by NARA.
    (b) Assignment records, digests, and indexes relating to any pending 
or abandoned patent application, which is open to the public pursuant to 
Sec.  1.11 or for which copies or access may be supplied pursuant to 
Sec.  1.14, are available to the public. Copies of any assignment 
records, digests, and indexes that are not available to the public shall 
be obtainable only upon written authority of an inventor, the applicant, 
the assignee or an assignee of an undivided part interest, or a patent 
practitioner of record, or upon a showing that the person seeking such 
information is a bona fide prospective or actual purchaser, mortgagee, 
or licensee of such application, unless it shall be necessary to the 
proper conduct of business before the Office or as provided in this 
part.
    (c) Any request by a member of the public seeking copies of any 
assignment records of any pending or abandoned patent application 
preserved in confidence underSec. 1.14, or any information with 
respect thereto, must:
    (1) Be in the form of a petition including the fee set forth in 
Sec.  1.17(g); or
    (2) Include written authority granting access to the member of the 
public to the particular assignment records from an inventor, the 
applicant, the assignee or an assignee of an undivided part interest, or 
a patent practitioner 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 inSec. 1.21(j) will be 
made for the time consumed in making a search for such assignment.

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

[47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989; 
56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641, 
July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 48288, Aug. 
13, 2003; 69 FR 29877, May 26, 2004; 69 FR 56536, Sept. 21, 2004; 77 FR 
48812, Aug. 14, 2012]



Sec.  1.13  Copies and certified copies.

    (a) Non-certified copies of patents, and patent application 
publications and of any records, books, papers, or drawings within the 
jurisdiction of the United States Patent and Trademark Office and open 
to the public, will be furnished by the United States Patent and 
Trademark Office to any person, and copies of other records or papers 
will be furnished to persons entitled thereto, upon payment of the 
appropriate fee. SeeSec. 2.201 of this chapter regarding copies of 
trademark records.
    (b) Certified copies of patents, patent application publications, 
and trademark registrations and of any records, books, papers, or 
drawings within the jurisdiction of the United States Patent and 
Trademark Office and open to the public or persons entitled thereto will 
be authenticated by the seal of the United States Patent and Trademark 
Office and certified by the Director, or in his or her name, upon 
payment of the fee for the certified copy.

[68 FR 48288, Aug. 13, 2003, as amended at 68 FR 71006, Dec. 22, 2003]



Sec.  1.14  Patent applications preserved in confidence.

    (a) Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C.

[[Page 24]]

122(b) are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject matter 
of an application for patent, including status information, and access 
to the application, will only be given to the public as set forth in 
Sec.  1.11 or in this section.
    (1) Records associated with patent applications (see paragraph (g) 
for international applications) may be available in the following 
situations:
    (i) Patented applications and statutory invention registrations. The 
file of an application that has issued as a patent or published as a 
statutory invention registration is available to the public as set forth 
inSec. 1.11(a). A copy of the patent application-as-filed, the file 
contents of the application, or a specific document in the file of such 
an application may be provided upon request and payment of the 
appropriate fee set forth inSec. 1.19(b).
    (ii) Published abandoned applications. The file of an abandoned 
application that has been published as a patent application publication 
is available to the public as set forth inSec. 1.11(a). A copy of the 
application-as-filed, the file contents of the published application, or 
a specific document in the file of the published application may be 
provided to any person upon request, and payment of the appropriate fee 
set forth inSec. 1.19(b).
    (iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in 
the file of a pending application that has been published as a patent 
application publication may be provided to any person upon request, and 
payment of the appropriate fee set forth inSec. 1.19(b). If a redacted 
copy of the application was used for the patent application publication, 
the copy of the specification, drawings, and papers may be limited to a 
redacted copy. The Office will not provide access to the paper file of a 
pending application that has been published, except as provided in 
paragraph (c) or (i) of this section.
    (iv) Unpublished abandoned applications (including provisional 
applications) that are identified or relied upon. The file contents of 
an unpublished, abandoned application may be made available to the 
public if the application is identified in a U.S. patent, a statutory 
invention registration, a U.S. patent application publication, or an 
international patent application publication of an international 
application that was published in accordance with PCT Article 21(2). An 
application is considered to have been identified in a document, such as 
a patent, when the application number or serial number and filing date, 
first named inventor, title and filing date or other application 
specific information are provided in the text of the patent, but not 
when the same identification is made in a paper in the file contents of 
the patent and is not included in the printed patent. Also, the file 
contents may be made available to the public, upon a written request, if 
benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 
120, 121, or 365 in an application that has issued as a U.S. patent, or 
has published as a statutory invention registration, a U.S. patent 
application publication, or an international patent application that was 
published in accordance with PCT Article 21(2). A copy of the 
application-as-filed, the file contents of the application, or a 
specific document in the file of the application may be provided to any 
person upon written request, and payment of the appropriate fee (Sec.  
1.19(b)).
    (v) Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file contents of 
an unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec.  1.19(b)), if 
the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, a 
U.S. patent application publication, or an international patent 
application publication that was published in accordance with PCT 
Article 21(2). A copy of the application-as-filed, or a specific 
document in the file of the pending application may also be provided to 
any person upon written request, and payment of the appropriate

[[Page 25]]

fee (Sec.  1.19(b)). The Office will not provide access to the paper 
file of a pending application, except as provided in paragraph (c) or 
(i) of this section.
    (vi) Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally filed of an 
unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec.  1.19(b)), if 
the application is incorporated by reference or otherwise identified in 
a U.S. patent, a statutory invention registration, a U.S. patent 
application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2). The 
Office will not provide access to the paper file of a pending 
application, except as provided in paragraph (c) or (i) of this section.
    (vii) When a petition for access or a power to inspect is required. 
Applications that were not published or patented, that are not the 
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in 
an application that has issued as a U.S. patent, an application that has 
published as a statutory invention registration, a U.S. patent 
application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2), or 
are not identified in a U.S. patent, a statutory invention registration, 
a U.S. patent application publication, or an international patent 
application that was published in accordance with PCT Article 21(2), are 
not available to the public. If an application is identified in the file 
contents of another application, but not the published patent 
application or patent itself, a granted petition for access (see 
paragraph (i)), or a power to inspect (see paragraph (c)) is necessary 
to obtain the application, or a copy of the application.
    (2) Information concerning a patent application may be communicated 
to the public if the patent application is identified in a published 
patent document or in an application as set forth in paragraphs 
(a)(1)(i) through (a)(1)(vi) of this section. The information that may 
be communicated to the public (i.e., status information) includes:
    (i) Whether the application is pending, abandoned, or patented;
    (ii) Whether the application has been published under 35 U.S.C. 
122(b);
    (iii) The application ``numerical identifier'' which may be:
    (A) The eight-digit application number (the two-digit series code 
plus the six-digit serial number); or
    (B) The six-digit serial number plus any one of the filing date of 
the national application, the international filing date, or date of 
entry into the national stage; and
    (iv) Whether another application claims the benefit of the 
application (i.e., whether there are any applications that claim the 
benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of 
the application), and if there are any such applications, the numerical 
identifier of the application, the specified relationship between the 
applications (e.g., continuation), whether the application is pending, 
abandoned or patented, and whether the application has been published 
under 35 U.S.C. 122(b).
    (b) Electronic access to an application. Where a copy of the 
application file or access to the application may be made available 
pursuant to this section, the Office may at its discretion provide 
access to only an electronic copy of the specification, drawings, and 
file contents of the application.
    (c) Power to inspect a pending or abandoned application. Access to 
an application may be provided to any person if the application file is 
available, and the application contains written authority (e.g., a power 
to inspect) granting access to such person. The written authority must 
be signed by:
    (1) The applicant;
    (2) A patent practitioner of record;
    (3) The assignee or an assignee of an undivided part interest;
    (4) The inventor or a joint inventor; or
    (5) A registered attorney or agent named in the papers accompanying 
the application papers filed underSec. 1.53 or the national stage 
documents filed underSec. 1.495, if a power of attorney has not been 
appointed underSec. 1.32.
    (d) Applications reported to Department of Energy. Applications for 
patents which appear to disclose, purport to

[[Page 26]]

disclose or do disclose inventions or discoveries relating to atomic 
energy are reported to the Department of Energy, which Department will 
be given access to the applications. Such reporting does not constitute 
a determination that the subject matter of each application so reported 
is in fact useful or is an invention or discovery, or that such 
application in fact discloses subject matter in categories specified by 
42 U.S.C. 2181(c) and (d).
    (e) Decisions by the Director. Any decision by the Director that 
would not otherwise be open to public inspection may be published or 
made available for public inspection if:
    (1) The Director believes the decision involves an interpretation of 
patent laws or regulations that would be of precedential value; and
    (2) The applicant is given notice and an opportunity to object in 
writing within two months on the ground that the decision discloses a 
trade secret or other confidential information. Any objection must 
identify the deletions in the text of the decision considered necessary 
to protect the information, or explain why the entire decision must be 
withheld from the public to protect such information. An applicant or 
party will be given time, not less than twenty days, to request 
reconsideration and seek court review before any portions of a decision 
are made public under this paragraph over his or her objection.
    (f) Notice to inventor of the filing of an application. The Office 
may publish notice in the Official Gazette as to the filing of an 
application on behalf of an inventor by a person who otherwise shows 
sufficient proprietary interest in the matter.
    (g) International applications. (1) Copies of international 
application files for international applications which designate the 
U.S. and which have been published in accordance with PCT Article 21(2), 
or copies of a document in such application files, will be furnished in 
accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon 
written request including a showing that the publication of the 
application has occurred and that the U.S. was designated, and upon 
payment of the appropriate fee (seeSec. 1.19(b)), if:
    (i) With respect to the Home Copy (the copy of the international 
application kept by the Office in its capacity as the Receiving Office, 
see PCT Article 12(1)), the international application was filed with the 
U.S. Receiving Office;
    (ii) With respect to the Search Copy (the copy of an international 
application kept by the Office in its capacity as the International 
Searching Authority, see PCT Article 12(1)), the U.S. acted as the 
International Searching Authority, except for the written opinion of the 
International Searching Authority which shall not be available until the 
expiration of thirty months from the priority date; or
    (iii) With respect to the Examination Copy (the copy of an 
international application kept by the Office in its capacity as the 
International Preliminary Examining Authority), the United States acted 
as the International Preliminary Examining Authority, an International 
Preliminary Examination Report has issued, and the United States was 
elected.
    (2) A copy of an English language translation of a publication of an 
international application which has been filed in the United States 
Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be 
furnished upon written request including a showing that the publication 
of the application in accordance with PCT Article 21(2) has occurred and 
that the U.S. was designated, and upon payment of the appropriate fee 
(Sec.  1.19(b)(4)).
    (3) Access to international application files for international 
applications which designate the U.S. and which have been published in 
accordance with PCT Article 21(2), or copies of a document in such 
application files, will be permitted in accordance with PCT Articles 30 
and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request 
including a showing that the publication of the application has occurred 
and that the U.S. was designated.
    (4) In accordance with PCT Article 30, copies of an international 
application-as-filed under paragraph (a) of this section will not be 
provided prior to the international publication of the application 
pursuant to PCT Article 21(2).

[[Page 27]]

    (5) Access to international application files under paragraphs 
(a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be 
permitted with respect to the Examination Copy in accordance with PCT 
Article 38.
    (h) Access by a Foreign Intellectual Property Office. (1) Access to 
the application-as-filed may be provided to any foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating foreign 
intellectual property office), if the application contains written 
authority granting such access. Written authority under this paragraph 
should be submitted prior to filing a subsequent foreign application 
with a participating intellectual property office in which priority is 
claimed to the patent application.
    (2) Written authority provided under paragraph (h)(1) of this 
section must include the title of the invention (Sec.  1.71(a)), comply 
with the requirements of paragraph (c) of this section, and be submitted 
on a separate document (Sec.  1.4(c)).
    (3) Written authority provided under paragraph (h)(1) of this 
section will be treated as authorizing the Office to provide to all 
participating foreign intellectual property offices indicated in the 
written authority in accordance with their respective agreements with 
the Office:
    (i) A copy of the application-as-filed; and
    (ii) A copy of the application-as-filed with respect to any 
application the filing date of which is claimed by the application in 
which written authority under paragraph (h)(1) of this section is filed.
    (i) Access or copies in other circumstances. The Office, either sua 
sponte or on petition, may also provide access or copies of all or part 
of an application if necessary to carry out an Act of Congress or if 
warranted by other special circumstances. Any petition by a member of 
the public seeking access to, or copies of, all or part of any pending 
or abandoned application preserved in confidence pursuant to paragraph 
(a) of this section, or any related papers, must include:
    (1) The fee set forth inSec. 1.17(g); and
    (2) A showing that access to the application is necessary to carry 
out an Act of Congress or that special circumstances exist which warrant 
petitioner being granted access to all or part of the application.

[68 FR 38624, June 30, 2003, as amended at 68 FR 59886, Oct. 20, 2003; 
68 FR 67805, Dec. 4, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 49997, Aug. 
12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR 1667, Jan. 16, 2007; 77 FR 
48812, Aug. 14, 2012; 78 FR 11052, Feb. 14, 2013]



Sec.  1.15  [Reserved]

                        Fees and Payment of Money

    Authority: Sections 1.16 through 1.22 also issued under 35 U.S.C. 
41, 111, 119, 120, 132(b), 156, 157, 255, 302, and 311, Public Laws 103-
465, 106-113, and 112-29.



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

    (a) Basic fee for filing each application under 35 U.S.C. 111 for an 
original patent, except design, plant, or provisional applications:

By a micro entity (Sec.   1.29)............................       $70.00
By a small entity (Sec.   1.27(a)).........................       140.00
By a small entity (Sec.   1.27(a)) if the application is           70.00
 submitted in compliance with the Office electronic filing
 system (Sec.   1.27(b)(2))................................
By other than a small or micro entity......................       280.00
 

    (b) Basic fee for filing each application for an original design 
patent:

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

    (c) Basic fee for filing each application for an original plant 
patent:

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

    (d) Basic fee for filing each provisional application:

By a micro entity (Sec.   1.29)............................       $65.00
By a small entity (Sec.   1.27(a)).........................       130.00
By other than a small or micro entity......................       260.00
 

    (e) Basic fee for filing each application for the reissue of a 
patent:

[[Page 28]]



By a micro entity (Sec.   1.29)............................       $70.00
By a small entity (Sec.   1.27(a)).........................       140.00
By other than a small or micro entity......................       280.00
 

    (f) Surcharge for filing any of the basic filing fee, the search 
fee, the examination fee, or the oath or declaration on a date later 
than the filing date of the application, except provisional 
applications:

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

    (g) Surcharge for filing the basic filing fee or cover sheet (Sec.  
1.51(c)(1)) on a date later than the filing date of the provisional 
application:

By a micro entity (Sec.   1.29)............................       $15.00
By a small entity (Sec.   1.27(a)).........................        30.00
By other than a small or micro entity......................        60.00
 

    (h) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim in independent form in excess of 3:

By a micro entity (Sec.   1.29)............................      $105.00
By a small entity (Sec.   1.27(a)).........................       210.00
By other than a small or micro entity......................       420.00
 

    (i) In addition to the basic filing fee in an application, other 
than a provisional application, for filing or later presentation at any 
other time of each claim (whether dependent or independent) in excess of 
20 (note thatSec. 1.75(c) indicates how multiple dependent claims are 
considered for fee calculation purposes):

By a micro entity (Sec.   1.29)............................       $20.00
By a small entity (Sec.   1.27(a)).........................        40.00
By other than a small or micro entity......................        80.00
 

    (j) In addition to the basic filing fee in an application, other 
than a provisional application, that contains, or is amended to contain, 
a multiple dependent claim, per application:

By a micro entity (Sec.   1.29)............................      $195.00
By a small entity (Sec.   1.27(a)).........................       390.00
By other than a small or micro entity......................       780.00
 

    (k) Search fee for each application filed under 35 U.S.C. 111 for an 
original patent, except design, plant, or provisional applications:

By a micro entity (Sec.   1.29)............................      $150.00
By a small entity (Sec.   1.27(a)).........................       300.00
By other than a small or micro entity......................       600.00
 

    (l) Search fee for each application for an original design patent:

By a micro entity (Sec.   1.29)............................       $30.00
By a small entity (Sec.   1.27(a)).........................        60.00
By other than a small or micro entity......................       120.00
 

    (m) Search fee for each application for an original plant patent:

By a micro entity (Sec.   1.29)............................       $95.00
By a small entity (Sec.   1.27(a)).........................       190.00
By other than a small or micro entity......................       380.00
 

    (n) Search fee for each application for the reissue of a patent:

By a micro entity (Sec.   1.29)............................      $150.00
By a small entity (Sec.   1.27(a)).........................       300.00
By other than a small or micro entity......................       600.00
 

    (o) Examination fee for each application filed under 35 U.S.C. 111 
for an original patent, except design, plant, or provisional 
applications:

By a micro entity (Sec.   1.29)............................      $180.00
By a small entity (Sec.   1.27(a)).........................       360.00
By other than a small or micro entity......................       720.00
 

    (p) Examination fee for each application for an original design 
patent:

By a micro entity (Sec.   1.29)............................      $115.00
By a small entity (Sec.   1.27(a)).........................       230.00
By other than a small or micro entity......................       460.00
 

    (q) Examination fee for each application for an original plant 
patent:

By a micro entity (Sec.   1.29)............................      $145.00
By a small entity (Sec.   1.27(a)).........................       290.00
By other than a small or micro entity......................       580.00
 

    (r) Examination fee for each application for the reissue of a 
patent:

By a micro entity (Sec.   1.29)............................      $540.00
By a small entity (Sec.   1.27(a)).........................     1,080.00
By other than a small or micro entity......................     2,160.00
 

    (s) Application size fee for any application filed under 35 U.S.C. 
111 for the

[[Page 29]]

specification and drawings which exceed 100 sheets of paper, for each 
additional 50 sheets or fraction thereof:

By a micro entity (Sec.   1.29)............................      $100.00
By a small entity (Sec.   1.27(a)).........................       200.00
By other than a small or micro entity......................       400.00
 

    (t) Non-electronic filing fee for any application under 35 U.S.C. 
111(a) that is filed on or after November 15, 2011, other than by the 
Office electronic filing system, except for a reissue, design, or plant 
application:

 
 
 
By a small entity (Sec.   1.27(a))...........................    $200.00
By other than a small entity.................................    $400.00
 

    Note toSec. 1.16: See Sec.Sec. 1.445, 1.482 and 1.492 for 
international application filing and processing fees.

[70 FR 3887, Jan. 27, 2005, as amended at 70 FR 30365, May 26, 2005; 72 
FR 46901, Aug. 22, 2007; 73 FR 47540, Aug. 14, 2008; 76 FR 70653, Nov. 
15, 2011; 77 FR 48812, Aug. 14, 2012; 77 FR 54365, Sept. 5, 2012; 78 FR 
4284, Jan. 18, 2013]



Sec.  1.17  Patent application and reexamination processing fees.

(a) Extension fees pursuant toSec.  1.136(a):
(1) For reply within first month:
  By a micro entity (Sec.   1.29)..........................       $50.00
  By a small entity (Sec.   1.27(a)).......................      $100.00
  By other than a small or micro entity....................      $200.00
(2) For reply within second month:
  By a micro entity (Sec.   1.29)..........................      $150.00
  By a small entity (Sec.   1.27(a)).......................      $300.00
  By other than a small or micro entity....................      $600.00
(3) For reply within third month:
  By a micro entity (Sec.   1.29)..........................      $350.00
  By a small entity (Sec.   1.27(a)).......................      $700.00
  By other than a small or micro entity....................    $1,400.00
  (4) For reply within fourth month:.......................
  By a micro entity (Sec.   1.29)..........................      $550.00
  By a small entity (Sec.   1.27(a)).......................    $1,100.00
  By other than a small or micro entity....................    $2,200.00
(5) For reply within fifth month:
  By a micro entity (Sec.   1.29)..........................      $750.00
  By a small entity (Sec.   1.27(a)).......................    $1,500.00
  By other than a small or micro entity....................    $3,000.00
(b) For fees in proceedings before the Patent Trial and
 Appeal Board, seeSec.  41.20 andSec.  42.15 of this
 title.
(c) For filing a request for prioritized examination under
Sec.  1.102(e):
  By a micro entity (Sec.   1.29)..........................    $1,000.00
  By a small entity (Sec.   1.27(a)).......................    $2,000.00
  By other than a small or micro entity....................    $4,000.00
(d) For correction of inventorship in an application after
 the first action on the merits:
  By a micro entity (Sec.   1.29)..........................      $150.00
  By a small entity (Sec.   1.27(a)).......................      $300.00
  By other than a small or micro entity....................      $600.00
(e) To request continued examination pursuant to Sec.
 1.114:
(1) For filing a first request for continued examination
 pursuant toSec.  1.114 in an application:
  By a micro entity (Sec.   1.29)..........................      $300.00
  By a small entity (Sec.   1.27(a)).......................      $600.00
  By other than a small or micro entity....................    $1,200.00
(2) For filing a second or subsequent request for continued
 examination pursuant toSec.  1.114 in an application:
  By a micro entity (Sec.   1.29)..........................      $425.00
  By a small entity (Sec.   1.27(a)).......................      $850.00

[[Page 30]]

 
  By other than a small or micro entity....................    $1,700.00
(f) For filing a petition under one of the following
 sections which refers to this paragraph:
  By a micro entity (Sec.   1.29)..........................      $100.00
  By a small entity (Sec.   1.27(a)).......................      $200.00
  By other than a small or micro entity....................      $400.00
 

   Sec. 1.36(a)--for revocation of a power of attorney by fewer than 
all of the applicants.
   Sec. 1.53(e)--to accord a filing date.
   Sec. 1.57(a)--to accord a filing date.
   Sec. 1.182--for decision on a question not specifically provided 
for.
   Sec. 1.183--to suspend the rules.
   Sec. 1.378(e)--for reconsideration of decision on petition refusing 
to accept delayed payment of maintenance fee in an expired patent.
   Sec. 1.741(b)--to accord a filing date to an application under 
Sec.  1.740 for extension of a patent term.

(g) For filing a petition under one of the following
 sections which refers to this paragraph:
  By a micro entity (Sec.   1.29)..........................       $50.00
  By a small entity (Sec.   1.27(a)).......................      $100.00
  By other than a small or micro entity....................      $200.00
 

   Sec. 1.12--for access to an assignment record.
   Sec. 1.14--for access to an application.
   Sec. 1.46--for filing an application on behalf of an inventor by a 
person who otherwise shows sufficient proprietary interest in the 
matter.
   Sec. 1.55(f)--for filing a belated certified copy of a foreign 
application.
   Sec. 1.59--for expungement of information.
   Sec. 1.103(a)--to suspend action in an application.
   Sec. 1.136(b)--for review of a request for extension of time when 
the provisions ofSec. 1.136(a) are not available.
   Sec. 1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
   Sec. 1.550(c)--for patent owner requests for extension of time in 
ex parte reexamination proceedings.
   Sec. 1.956--for patent owner requests for extension of time in 
inter partes reexamination proceedings.
   Sec. 5.12--for expedited handling of a foreign filing license.
   Sec. 5.15--for changing the scope of a license.
   Sec. 5.25--for retroactive license.

(h) For filing a petition under one of the following
 sections which refers to this paragraph:
  By a micro entity (Sec.   1.29)..........................       $35.00
  By a small entity (Sec.   1.27(a)).......................       $70.00
  By other than a small or micro entity....................      $140.00
 

   Sec. 1.19(g)--to request documents in a form other than provided in 
this part.
   Sec. 1.84--for accepting color drawings or photographs.
   Sec. 1.91--for entry of a model or exhibit.
   Sec. 1.102(d)--to make an application special.
   Sec. 1.138(c)--to expressly abandon an application to avoid 
publication.
   Sec. 1.313--to withdraw an application from issue.
   Sec. 1.314--to defer issuance of a patent.

(i) Processing fees:
(1) For taking action under one of the following sections
 which refers to this paragraph:
  By a micro entity (Sec.   1.29)..........................       $35.00
  By a small entity (Sec.   1.27(a)).......................       $70.00
  By other than a small or micro entity....................      $140.00
 

   Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency based 
on an error in small entity status.
   Sec. 1.29(k)(3)--for processing a non-itemized fee deficiency based 
on an error in micro entity status.
   Sec. 1.41(b)--for supplying the name or names of the inventor or 
joint inventors in an application without either an application data 
sheet or the inventor's oath or declaration, except in provisional 
applications.
   Sec. 1.48--for correcting inventorship, except in provisional 
applications.
   Sec. 1.52(d)--for processing a nonprovisional application filed 
with a specification in a language other than English.

[[Page 31]]

   Sec. 1.53(c)(3)--to convert a provisional application filed under 
Sec.  1.53(c) into a nonprovisional application underSec. 1.53(b).
   Sec. 1.55--for entry of a priority claim or certified copy of a 
foreign application after payment of the issue fee.
   Sec. 1.71(g)(2)--for processing a belated amendment underSec. 
1.71(g).
   Sec. 1.102(e)--for requesting prioritized examination of an 
application.
   Sec. 1.103(b)--for requesting limited suspension of action, 
continued prosecution application for a design patent (Sec.  1.53(d)).
   Sec. 1.103(c)--for requesting limited suspension of action, request 
for continued examination (Sec.  1.114).
   Sec. 1.103(d)--for requesting deferred examination of an 
application.
   Sec. 1.291(c)(5)--for processing a second or subsequent protest by 
the same real party in interest.
   Sec. 3.81--for a patent to issue to assignee, assignment submitted 
after payment of the issue fee.

  (2) For taking action under one of the following sections      $130.00
   which refers to this paragraph..........................
 

   Sec. 1.217--for processing a redacted copy of a paper submitted in 
the file of an application in which a redacted copy was submitted for 
the patent application publication.
   Sec. 1.221--for requesting voluntary publication or republication 
of an application.
    (j) [Reserved]

(k) For filing a request for expedited examination under
Sec.  1.155(a):
  By a micro entity (Sec.   1.29)..........................      $225.00
  By a small entity (Sec.   1.27(a)).......................      $450.00
  By other than a small or micro entity....................      $900.00
(l) For filing a petition for the revival of an unavoidably
 abandoned application under 35 U.S.C. 111, 133, 364, or
 371, for the unavoidably delayed payment of the issue fee
 under 35 U.S.C. 151, or for the revival of an unavoidably
 terminated reexamination proceeding under 35 U.S.C. 133
 (Sec.   1.137(a)):
  By a micro entity (Sec.   1.29)..........................      $160.00
  By a small entity (Sec.   1.27(a)).......................      $320.00
  By other than a small or micro entity....................      $640.00
(m) For filing a petition for the revival of an
 unintentionally abandoned application, for the
 unintentionally delayed payment of the fee for issuing a
 patent, or for the revival of an unintentionally
 terminated reexamination proceeding under 35 U.S.C.
 41(a)(7) (Sec.   1.137(b)):
  By a micro entity (Sec.   1.29)..........................      $475.00
  By a small entity (Sec.   1.27(a)).......................      $950.00
  By other than a small or micro entity....................    $1,900.00
(n) [Reserved]
(o) [Reserved]
(p) For an information disclosure statement under Sec.
 1.97(c) or (d) or for the document fee for a submission
 underSec.  1.290:
  By a micro entity (Sec.   1.29)..........................       $45.00
  By a small entity (Sec.   1.27(a)).......................       $90.00
  By other than a small or micro entity....................      $180.00
(q) Processing fee for taking action under one of the             $50.00
 following sections which refers to this paragraph.........
 

   Sec. 1.41--to supply the name or names of the inventor or inventors 
after the filing date without a cover sheet as prescribed bySec. 
1.51(c)(1) in a provisional application.

[[Page 32]]

   Sec. 1.48--for correction of inventorship in a provisional 
application.
   Sec. 1.53(c)(2)--to convert a nonprovisional application filed 
underSec. 1.53(b) to a provisional application underSec. 1.53(c).

(r) For entry of a submission after final rejection under
Sec.  1.129(a):
  By a micro entity (Sec.   1.29)..........................      $210.00
  By a small entity (Sec.   1.27(a)).......................      $420.00
  By other than a small or micro entity....................      $840.00
(s) For each additional invention requested to be examined
 underSec.  1.129(b):
  By a micro entity (Sec.   1.29)..........................      $210.00
  By a small entity (Sec.   1.27(a)).......................      $420.00
  By other than a small or micro entity....................      $840.00
(t) For the acceptance of an unintentionally delayed claim
 for priority under 35 U.S.C. 119, 120, 121, or 365(a) or
 (c) (Sec.Sec. 1.55 and 1.78) or for filing a request
 for the restoration of the right of priority under Sec.
 1.452:
  By a micro entity (Sec.   1.29)..........................      $355.00
  By a small entity (Sec.   1.27(a)).......................      $710.00
  By other than a small or micro entity....................    $1,420.00
 


[78 FR 17105, Mar. 20, 2013]



Sec.  1.18  Patent post allowance (including issue) fees.

    (a) Issue fee for issuing each original patent, except a design or 
plant patent, or for issuing each reissue patent:
    (1) For an issue fee paid on or after January 1, 2014:

By a micro entity (Sec.   1.29)............................      $240.00
By a small entity (Sec.   1.27(a)).........................       480.00
By other than a small or micro entity......................       960.00
 

    (2) For an issue fee paid before January 1, 2014:

By a micro entity (Sec.   1.29)............................      $445.00
By a small entity (Sec.   1.27(a)).........................       890.00
By other than a small or micro entity......................     1,780.00
 

    (b) Issue fee for issuing an original design patent:
    (1) For an issue fee paid on or after January 1, 2014:

By a micro entity (Sec.   1.29)............................      $140.00
By a small entity (Sec.   1.27(a)).........................       280.00
By other than a small or micro entity......................       560.00
 

    (2) For an issue fee paid before January 1, 2014:

By a micro entity (Sec.   1.29)............................      $255.00
By a small entity (Sec.   1.27(a)).........................       510.00
By other than a small or micro entity......................     1,020.00
 

    (c) Issue fee for issuing an original plant patent:
    (1) For an issue fee paid on or after January 1, 2014:

By a micro entity (Sec.   1.29)............................      $190.00
By a small entity (Sec.   1.27(a)).........................       380.00
By other than a small or micro entity......................       760.00
 

    (2) For an issue fee paid before January 1, 2014:

By a micro entity (Sec.   1.29)............................      $350.00
By a small entity (Sec.   1.27(a)).........................       700.00
By other than a small or micro entity......................     1,400.00
 

    (d)

(1) Publication fee on or after January 1, 2014............        $0.00
(2) Publication fee before January 1, 2014.................       300.00
(3) Republication fee (Sec.   1.221(a))....................       300.00
 

    (e) For filing an application for patent term adjustment underSec. 
1.705: $200.00.
    (f) For filing a request for reinstatement of all or part of the 
term reduced pursuant toSec. 1.704(b) in an application for patent 
term adjustment underSec.  1.705: $400.00.

[78 FR 4286, Jan. 18, 2013]



Sec.  1.19  Document supply fees.

    The United States Patent and Trademark Office will supply copies of 
the following patent-related documents upon payment of the fees 
indicated. Paper copies will be in black and white unless the original 
document is in

[[Page 33]]

color, a color copy is requested and the fee for a color copy is paid.
    (a) Uncertified copies of patent application publications and 
patents:
    (1) Printed copy of the paper portion of a patent application 
publication or patent including a design patent, statutory invention 
registration, or defensive publication document. Service includes 
preparation of copies by the Office within two to three business days 
and delivery by United States Postal Service; and preparation of copies 
by the Office within one business day of receipt and delivery to an 
Office Box or by electronic means (e.g., facsimile, electronic mail): 
$3.00.
    (2) Printed copy of a plant patent in color: $15.00.
    (3) Color copy of a patent (other than a plant patent) or statutory 
invention registration containing a color drawing: $25.00.
    (b) Copies of Office documents to be provided in paper, or in 
electronic form, as determined by the Director (for other patent-related 
materials seeSec. 1.21(k)):
    (1) Copy of a patent application as filed, or a patent-related file 
wrapper and contents, stored in paper in a paper file wrapper, in an 
image format in an image file wrapper, or if color documents, stored in 
paper in an Artifact Folder:
    (i) If provided on paper:
    (A) Application as filed: $20.00.
    (B) File wrapper and contents of 400 or fewer pages: $200.00.
    (C) Additional fee for each additional 100 pages or portion thereof 
of file wrapper and contents: $40.00.
    (D) Individual application documents, other than application as 
filed, per document: $25.00.
    (ii) If provided on compact disc or other physical electronic medium 
in single order:
    (A) Application as filed: $20.00.
    (B) File wrapper and contents, first physical electronic medium: 
$55.00.
    (C) Additional fee for each continuing physical electronic medium in 
the single order of paragraph (b)(1)(ii)(B) of this section: $15.00.
    (iii) If provided electronically (e.g., by electronic transmission) 
other than on a physical electronic medium as specified in paragraph 
(b)(1)(ii) of this section:
    (A) Application as filed: $20.00.
    (B) File wrapper and contents: $55.00.
    (iv) If provided to a foreign intellectual property office pursuant 
to a priority document exchange agreement (seeSec. 1.14 (h)(1)): 
$0.00.
    (2) Copy of patent-related file wrapper contents that were submitted 
and are stored on compact disc or other electronic form (e.g., compact 
discs stored in an Artifact Folder), other than as available in 
paragraph (b)(1) of this section:
    (i) If provided on compact disc or other physical electronic medium 
in a single order:
    (A) First physical electronic medium in a single order: $55.00.
    (B) Additional fee for each continuing physical electronic medium in 
the single order of this paragraph (b)(2)(i): $15.00.
    (ii) If provided electronically other than on a physical electronic 
medium per order: $55.00.
    (3) Copy of Office records, except copies available under paragraph 
(b)(1) or (2) of this section: $25.00.
    (4) For assignment records, abstract of title and certification, per 
patent: $25.00.
    (c) Library service (35 U.S.C. 13): For providing to libraries 
copies of all patents issued annually, per annum: $50.00.
    (d) For list of all United States patents and statutory invention 
registrations in a subclass: $3.00.
    (e) Uncertified statement as to status of the payment of maintenance 
fees due on a patent or expiration of a patent: $10.00.
    (f) Uncertified copy of a non-United States patent document, per 
document: $25.00.
    (g) Petitions for documents in a form other than that provided by 
this part, or in a form other than that generally provided by the 
Director, will be decided in accordance with the merits of each 
situation. Any petition seeking a decision under this section must be 
accompanied by the petition fee set forth inSec. 1.17(h) and, if the 
petition is granted, the documents will be provided at cost.

[78 FR 4287, Jan. 18, 2013]

[[Page 34]]



Sec.  1.20  Post issuance fees.

(a) For providing a certificate of correction for                $100.00
 applicant's mistake (Sec.   1.323)........................
(b) Processing fee for correcting inventorship in a patent       $130.00
 (Sec.   1.324)............................................
(c) In reexamination proceedings:
(1) For filing a request for ex parte reexamination (Sec.
 1.510(a)):
  By a micro entity (Sec.   1.29)..........................    $3,000.00
  By a small entity (Sec.   1.27(a)).......................    $6,000.00
  By other than a small or micro entity....................   $12,000.00
(2) [Reserved]
(3) For filing with a request for reexamination or later
 presentation at any other time of each claim in
 independent form in excess of 3 and also in excess of the
 number of claims in independent form in the patent under
 reexamination:
  By a micro entity (Sec.   1.29)..........................      $105.00
  By a small entity (Sec.   1.27(a)).......................      $210.00
  By other than a small or micro entity....................      $420.00
(4) For filing with a request for reexamination or later
 presentation at any other time of each claim (whether
 dependent or independent) in excess of 20 and also in
 excess of the number of claims in the patent under
 reexamination (note thatSec.  1.75(c) indicates how
 multiple dependent claims are considered for fee
 calculation purposes):
  By a micro entity (Sec.   1.29)..........................       $20.00
  By a small entity (Sec.   1.27(a)).......................       $40.00
  By other than a small or micro entity....................       $80.00
(5) If the excess claims fees required by paragraphs (c)(3)
 and (4) of this section are not paid with the request for
 reexamination or on later presentation of the claims for
 which the excess claims fees are due, the fees required by
 paragraphs (c)(3) and (4) must be paid or the claims
 canceled by amendment prior to the expiration of the time
 period set for reply by the Office in any notice of fee
 deficiency in order to avoid abandonment.
(6) For filing a petition in a reexamination proceeding,
 except for those specifically enumerated inSec. Sec.
 1.550(i) and 1.937(d):
  By a micro entity (Sec.   1.29)..........................      $485.00
  By a small entity (Sec.   1.27(a)).......................      $970.00
  By other than a small or micro entity....................    $1,940.00
(7) For a refused request for ex parte reexamination under
Sec.  1.510 (included in the request for ex parte
 reexamination fee atSec.  1.20(c)(1)):
  By a micro entity (Sec.   1.29)..........................      $900.00
  By a small entity (Sec.   1.27(a)).......................    $1,800.00
  By other than a small or micro entity....................    $3,600.00
(d) For filing each statutory disclaimer (Sec.   1.321)....      $160.00
(e) For maintaining an original or reissue patent, except a
 design or plant patent, based on an application filed on
 or after December 12, 1980, in force beyond four years,
 the fee being due by three years and six months after the
 original grant:
  By a micro entity (Sec.   1.29)..........................      $400.00
  By a small entity (Sec.   1.27(a)).......................      $800.00
  By other than a small or micro entity....................    $1,600.00

[[Page 35]]

 
(f) For maintaining an original or reissue patent, except a
 design or plant patent, based on an application filed on
 or after December 12, 1980, in force beyond eight years,
 the fee being due by seven years and six months after the
 original grant:
  By a micro entity (Sec.   1.29)..........................      $900.00
  By a small entity (Sec.   1.27(a)).......................    $1,800.00
  By other than a small or micro entity....................    $3,600.00
(g) For maintaining an original or reissue patent, except a
 design or plant patent, based on an application filed on
 or after December 12, 1980, in force beyond twelve years,
 the fee being due by eleven years and six months after the
 original grant:
  By a micro entity (Sec.   1.29)..........................    $1,850.00
  By a small entity (Sec.   1.27(a)).......................    $3,700.00
  By other than a small or micro entity....................    $7,400.00
(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 micro entity (Sec.   1.29)..........................       $40.00
  By a small entity (Sec.   1.27(a)).......................       $80.00
  By other than a small or micro entity....................      $160.00
(i) Surcharge for accepting a maintenance fee after
 expiration of a patent for non-timely payment of a
 maintenance fee where the delay in payment is shown to the
 satisfaction of the Director to have been--
(1) Unavoidable:
  By a micro entity (Sec.   1.29)..........................      $175.00
  By a small entity (Sec.   1.27(a)).......................      $350.00
  By other than a small or micro entity....................      $700.00
(2) Unintentional:
  By a micro entity (Sec.   1.29)..........................      $410.00
  By a small entity (Sec.   1.27(a)).......................      $820.00
  By other than a small or micro entity....................    $1,640.00
(j) For filing an application for extension of the term of
 a patent..................................................
Application for extension underSec.  1.740...............    $1,120.00
Initial application for interim extension underSec.            $420.00
 1.790.....................................................
Subsequent application for interim extension underSec.         $220.00
 1.790.....................................................
(k) In supplemental examination proceedings:
(1) For processing and treating a request for supplemental
 examination:
  By a micro entity (Sec.   1.29)..........................    $1,100.00
  By a small entity (Sec.   1.27(a)).......................    $2,200.00
  By other than a small or micro entity....................    $4,400.00
(2) For ex parte reexamination ordered as a result of a
 supplemental examination proceeding:
  By a micro entity (Sec.   1.29)..........................    $3,025.00
  By a small entity (Sec.   1.27(a)).......................    $6,050.00
  By other than a small or micro entity....................   $12,100.00

[[Page 36]]

 
(3) For processing and treating, in a supplemental
 examination proceeding, a non-patent document over 20
 sheets in length, per document:
(i) Between 21 and 50 sheets:
  By a micro entity (Sec.   1.29)..........................       $45.00
  By a small entity (Sec.   1.27(a)).......................       $90.00
  By other than a small or micro entity....................      $180.00
(ii) For each additional 50 sheets or a fraction thereof:
  By a micro entity (Sec.   1.29)..........................       $70.00
  By a small entity (Sec.   1.27(a)).......................      $140.00
  By other than a small or micro entity....................      $280.00
 


[78 FR 17106, Mar. 20, 2013]



Sec.  1.21  Miscellaneous fees and charges.

    The Patent and Trademark Office has established the following fees 
for the services indicated:
    (a) Registration of attorneys and agents:
    (1) For admission to examination for registration to practice:
    (i) Application Fee (non-refundable): $40.00.
    (ii) Registration examination fee.
    (A) For test administration by commercial entity: $200.00.
    (B) For test administration by the USPTO: $450.00.
    (2) On registration to practice or grant of limited recognition 
underSec. 11.9(b) or (c): $100.00.
    (3) [Reserved]
    (4) For certificate of good standing as an attorney or agent: 
$10.00.
    (i) Suitable for framing: $20.00.
    (ii) [Reserved]
    (5) For review of decision:
    (i) By the Director of Enrollment and Discipline underSec. 
11.2(c): $130.00.
    (ii) Of the Director of Enrollment and Discipline underSec. 
11.2(d): $130.00.
    (6)-(8) [Reserved]
    (9)(i) Delinquency fee: $50.00.
    (ii) Administrative reinstatement fee: $100.00.
    (10) On application by a person for recognition or registration 
after disbarment or suspension on ethical grounds, or resignation 
pending disciplinary proceedings in any other jurisdiction; on 
application by a person for recognition or registration who is asserting 
rehabilitation from prior conduct that resulted in an adverse decision 
in the Office regarding the person's moral character; and on application 
by a person for recognition or registration after being convicted of a 
felony or crime involving moral turpitude or breach of fiduciary duty; 
on petition for reinstatement by a person excluded or suspended on 
ethical grounds, or excluded on consent from practice before the Office: 
$1,600.00.
    (b) Deposit accounts:
    (1) For establishing a deposit account--$10.00
    (2) Service charge for each month when the balance at the end of the 
month is below $1,000--$25.00
    (3) Service charge for each month when the balance at the end of the 
month is below $300 for restricted subscription deposit accounts used 
exclusively for subscription order of patent copies as issued--$25.00
    (c) [Reserved]
    (d) [Reserved]
    (e) International type search reports: For preparing an 
international type search report of an international type search made at 
the time of the first action on the merits in a national patent 
application: $40.00.
    (f) [Reserved]
    (g) Self-service copy charge, per page: $0.25.
    (h) For recording each assignment, agreement, or other paper 
relating to the property in a patent or application, per property:
    (1) If submitted electronically, on or after January 1, 2014: $0.00.
    (2) If not submitted electronically: $40.00.
    (i) Publication in Official Gazette: For publication in the Official 
Gazette of a notice of the availability of an application or a patent 
for licensing or sale: Each application or patent: $25.00.
    (j) Labor charges for services, per hour or fraction thereof: 
$40.00.
    (k) For items and services that the Director finds may be supplied, 
for which fees are not specified by statute or by this part, such 
charges as may be

[[Page 37]]

determined by the Director with respect to each such item or service: 
Actual cost.
    (l) [Reserved]
    (m) For processing each payment refused (including a check returned 
``unpaid'') or charged back by a financial institution--$50.00.
    (n) For handling an application in which proceedings are terminated 
pursuant toSec. 1.53(e): $130.00.

    Editorial Note: For Federal Register citations affectingSec. 1.21, 
see the List of CFR Sections Affected, which appears in the Finding Aids 
section of the printed volume and at www.fdsys.gov.



Sec.  1.22  Fees payable in advance.

    (a) Patent fees and charges payable to the United States Patent and 
Trademark Office are required to be paid in advance; that is, at the 
time of requesting any action by the Office for which a fee or charge is 
payable, with the exception that underSec. 1.53 applications for 
patent may be assigned a filing date without payment of the basic filing 
fee.
    (b) All fees paid to the United States Patent and Trademark Office 
must be itemized in each individual application, patent, or other 
proceeding in such a manner that it is clear for which purpose the fees 
are paid. The Office may return fees that are not itemized as required 
by this paragraph. The provisions ofSec. 1.5(a) do not apply to the 
resubmission of fees returned pursuant to this paragraph.

[68 FR 48288, Aug. 13, 2003]



Sec.  1.23  Methods of payment.

    (a) All payments of money required for United States Patent and 
Trademark Office fees, including fees for the processing of 
international applications (Sec.  1.445), shall be made in U.S. dollars 
and in the form of a cashier's or certified check, Treasury note, 
national bank notes, or United States Postal Service money order. If 
sent in any other form, the Office may delay or cancel the credit until 
collection is made. Checks and money orders must be made payable to the 
Director of the United States Patent and Trademark Office. (Checks made 
payable to the Commissioner of Patents and Trademarks will continue to 
be accepted.) Payments from foreign countries must be payable and 
immediately negotiable in the United States for the full amount of the 
fee required. Money sent to the Office by mail will be at the risk of 
the sender, and letters containing money should be registered with the 
United States Postal Service.
    (b) Payments of money required for United States Patent and 
Trademark Office fees may also be made by credit card, except for 
replenishing a deposit account. Payment of a fee by credit card must 
specify the amount to be charged to the credit card and such other 
information as is necessary to process the charge, and is subject to 
collection of the fee. The Office will not accept a general 
authorization to charge fees to a credit card. If credit card 
information is provided on a form or document other than a form provided 
by the Office for the payment of fees by credit card, the Office will 
not be liable if the credit card number becomes public knowledge.

[65 FR 33455, May 24, 2000, as amended at 69 FR 43752, July 22, 2004]



Sec.  1.24  [Reserved]



Sec.  1.25  Deposit accounts.

    (a) For the convenience of attorneys, and the general public in 
paying any fees due, in ordering services offered by the Office, copies 
of records, etc., deposit accounts may be established in the Patent and 
Trademark Office upon payment of the fee for establishing a deposit 
account (Sec.  1.21(b)(1)). A minimum deposit of $1,000 is required for 
paying any fees due or in ordering any services offered by the Office. 
However, a minimum deposit of $300 may be paid to establish a restricted 
subscription deposit account used exclusively for subscription order of 
patent copies as issued. At the end of each month, a deposit account 
statement will be rendered. A remittance must be made promptly upon 
receipt of the statement to cover the value of items or services charged 
to the account and thus restore the account to its established normal 
deposit. An amount sufficient to cover all fees, services, copies, etc., 
requested must always be on deposit. Charges to accounts with 
insufficient funds will not be accepted. A service

[[Page 38]]

charge (Sec.  1.21(b)(2)) will be assessed for each month that the 
balance at the end of the month is below $1,000. For restricted 
subscription deposit accounts, a service charge (Sec.  1.21(b)(3)) will 
be assessed for each month that the balance at the end of the month is 
below $300.
    (b) Filing, issue, appeal, international-type search report, 
international application processing, petition, and post-issuance fees 
may be charged against these accounts if sufficient funds are on deposit 
to cover such fees. A general authorization to charge all fees, or only 
certain fees, set forth in Sec.Sec. 1.16 to 1.18 to a deposit account 
containing sufficient funds may be filed in an individual application, 
either for the entire pendency of the application or with a particular 
paper filed. An authorization to charge fees underSec. 1.16 in an 
international application entering the national stage under 35 U.S.C. 
371 will be treated as an authorization to charge fees underSec. 
1.492. An authorization to charge fees set forth inSec. 1.18 to a 
deposit account is subject to the provisions ofSec. 1.311(b). An 
authorization to charge to a deposit account the fee for a request for 
reexamination pursuant toSec. 1.510 orSec. 1.913 and any other fees 
required in a reexamination proceeding in a patent may also be filed 
with the request for reexamination. An authorization to charge a fee to 
a deposit account will not be considered payment of the fee on the date 
the authorization to charge the fee is effective as to the particular 
fee to be charged unless sufficient funds are present in the account to 
cover the fee.
    (c) A deposit account holder may replenish the deposit account by 
submitting a payment to the United States Patent and Trademark Office. A 
payment to replenish a deposit account must be submitted by one of the 
methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of 
this section.
    (1) A payment to replenish a deposit account may be submitted by 
electronic funds transfer through the Federal Reserve Fedwire System, 
which requires that the following information be provided to the deposit 
account holder's bank or financial institution:
    (i) Name of the Bank, which is Treas NYC (Treasury New York City);
    (ii) Bank Routing Code, which is 021030004;
    (iii) United States Patent and Trademark Office account number with 
the Department of the Treasury, which is 13100001; and
    (iv) The deposit account holder's company name and deposit account 
number.
    (2) A payment to replenish a deposit account may be submitted by 
electronic funds transfer over the Office's Internet Web site 
(www.uspto.gov).
    (3) A payment to replenish a deposit account may be addressed to: 
Director of the United States Patent and Trademark Office, Attn: Deposit 
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.

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

[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985; 65 FR 
76772, Dec. 7, 2000; 67 FR 523, Jan. 4, 2002; 68 FR 14336, Mar. 25, 
2003; 69 FR 43752, July 22, 2004; 70 FR 56127, Sept. 26, 2005; 73 FR 
47541, Aug. 14, 2008]



Sec.  1.26  Refunds.

    (a) The Director may refund any fee paid by mistake or in excess of 
that required. A change of purpose after the payment of a fee, such as 
when a party desires to withdraw a patent filing for which the fee was 
paid, including an application, an appeal, or a request for an oral 
hearing, will not entitle a party to a refund of such fee. The Office 
will not refund amounts of twenty-five dollars or less unless a refund 
is specifically requested, and will not notify the payor of such 
amounts. If a party paying a fee or requesting a refund does not provide 
the banking information necessary for making refunds by electronic funds 
transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office 
that refunds are to be credited to a deposit account, the Director may 
require such information, or use the banking information on the payment 
instrument to make a refund. Any refund of a fee paid by credit card 
will be by a credit to the credit card account to which the fee was 
charged.
    (b) Any request for refund must be filed within two years from the 
date the fee was paid, except as otherwise provided in this paragraph or 
inSec. 1.28(a). If the Office charges a deposit account by an amount 
other than an

[[Page 39]]

amount specifically indicated in an authorization (Sec.  1.25(b)), any 
request for refund based upon such charge must be filed within two years 
from the date of the deposit account statement indicating such charge, 
and include a copy of that deposit account statement. The time periods 
set forth in this paragraph are not extendable.
    (c) If the Director decides not to institute a reexamination 
proceeding in response to a request for reexamination or supplemental 
examination, fees paid with the request for reexamination or 
supplemental examination will be refunded or returned in accordance with 
paragraphs (c)(1) through (c)(3) of this section. The reexamination 
requester or the patent owner who requested a supplemental examination 
proceeding, as appropriate, should indicate the form in which any refund 
should be made (e.g., by check, electronic funds transfer, credit to a 
deposit account). Generally, refunds will be issued in the form that the 
original payment was provided.
    (1) For an ex parte reexamination request, the ex parte 
reexamination filing fee paid by the reexamination requester, less the 
fee set forth inSec. 1.20(c)(7), will be refunded to the requester if 
the Director decides not to institute an ex parte reexamination 
proceeding.
    (2) For an inter partes reexamination request, a refund of $7,970 
will be made to the reexamination requester if the Director decides not 
to institute an inter partes reexamination proceeding.
    (3) For a supplemental examination request, the fee for 
reexamination ordered as a result of supplemental examination, as set 
forth inSec. 1.20(k)(2), will be returned to the patent owner who 
requested the supplemental examination proceeding if the Director 
decides not to institute a reexamination proceeding.

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

[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985; 
54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 
21, 1992; 62 FR 53183, Oct. 10, 1997; 65 FR 54659, Sept. 8, 2000; 65 FR 
76773, Dec. 7, 2000; 68 FR 48289, Aug. 13, 2003; 72 FR 46836, Aug. 21, 
2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48851, Aug. 14, 2012]



Sec.  1.27  Definition of small entities and establishing status as a 
           small entity to permit payment of small entity fees; when a 
           determination of entitlement to small entity status and 
           notification of loss of entitlement to small entity status
           are required; fraud on the Office.

    (a) Definition of small entities. A small entity as used in this 
chapter means any party (person, small business concern, or nonprofit 
organization) under paragraphs (a)(1) through (a)(3) of this section.
    (1) Person. A person, as used in paragraph (c) of this section, 
means any inventor or other individual (e.g., an individual to whom an 
inventor has transferred some rights in the invention) who has not 
assigned, granted, conveyed, or licensed, and is under no obligation 
under contract or law to assign, grant, convey, or license, any rights 
in the invention. An inventor or other individual who has transferred 
some rights in the invention to one or more parties, or is under an 
obligation to transfer some rights in the invention to one or more 
parties, can also qualify for small entity status if all the parties who 
have had rights in the invention transferred to them also qualify for 
small entity status either as a person, small business concern, or 
nonprofit organization under this section.
    (2) Small business concern. A small business concern, as used in 
paragraph (c) of this section, means any business concern that:
    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify for small entity status as a 
person, small business concern, or nonprofit organization; and
    (ii) Meets the size standards set forth in 13 CFR 121.801 through 
121.805 to be eligible for reduced patent fees. Questions related to 
standards for a small business concern may be directed to: Small 
Business Administration, Size Standards Staff, 409 Third Street, SW., 
Washington, DC 20416.
    (3) Nonprofit Organization. A nonprofit organization, as used in 
paragraph (c) of this section, means any nonprofit organization that:

[[Page 40]]

    (i) Has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention to any person, concern, or 
organization which would not qualify as a person, small business 
concern, or a nonprofit organization; and
    (ii) Is either:
    (A) A university or other institution of higher education located in 
any country;
    (B) An organization of the type described in section 501(c)(3) of 
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from 
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 
501(a));
    (C) Any nonprofit scientific or educational organization qualified 
under a nonprofit organization statute of a state of this country (35 
U.S.C. 201(i)); or
    (D) Any nonprofit organization located in a foreign country which 
would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) 
of this section or (a)(3)(ii)(C) of this section if it were located in 
this country.
    (4) License to a Federal agency. (i) For persons under paragraph 
(a)(1) of this section, a license to the Government resulting from a 
rights determination under Executive Order 10096 does not constitute a 
license so as to prohibit claiming small entity status.
    (ii) For small business concerns and nonprofit organizations under 
paragraphs (a)(2) and (a)(3) of this section, a license to a Federal 
agency resulting from a funding agreement with that agency pursuant to 
35 U.S.C. 202(c)(4) does not constitute a license for the purposes of 
paragraphs (a)(2)(i) and (a)(3)(i) of this section.
    (5) Security Interest. A security interest does not involve an 
obligation to transfer rights in the invention for the purposes of 
paragraphs (a)(1) through (a)(3) of this section unless the security 
interest is defaulted upon.
    (b) Establishment of small entity status permits payment of reduced 
fees. (1) A small entity, as defined in paragraph (a) of this section, 
who has properly asserted entitlement to small entity status pursuant to 
paragraph (c) of this section will be accorded small entity status by 
the Office in the particular application or patent in which entitlement 
to small entity status was asserted. Establishment of small entity 
status allows the payment of certain reduced patent fees pursuant to 35 
U.S.C. 41(h)(1).
    (2) Submission of an original utility application in compliance with 
the Office electronic filing system by an applicant who has properly 
asserted entitlement to small entity status pursuant to paragraph (c) of 
this section in that application allows the payment of a reduced filing 
fee pursuant to 35 U.S.C. 41(h)(3).
    (c) Assertion of small entity status. Any party (person, small 
business concern or nonprofit organization) should make a determination, 
pursuant to paragraph (f) of this section, of entitlement to be accorded 
small entity status based on the definitions set forth in paragraph (a) 
of this section, and must, in order to establish small entity status for 
the purpose of paying small entity fees, actually make an assertion of 
entitlement to small entity status, in the manner set forth in 
paragraphs (c)(1) or (c)(3) of this section, in the application or 
patent in which such small entity fees are to be paid.
    (1) Assertion by writing. Small entity status may be established by 
a written assertion of entitlement to small entity status. A written 
assertion must:
    (i) Be clearly identifiable;
    (ii) Be signed (see paragraph (c)(2) of this section); and
    (iii) Convey the concept of entitlement to small entity status, such 
as by stating that applicant is a small entity, or that small entity 
status is entitled to be asserted for the application or patent. While 
no specific words or wording are required to assert small entity status, 
the intent to assert small entity status must be clearly indicated in 
order to comply with the assertion requirement.
    (2) Parties who can sign the written assertion. The written 
assertion can be signed by:
    (i) The applicant (Sec.  1.42 orSec. 1.421);
    (ii) A patent practitioner of record or a practitioner acting in a 
representative capacity underSec. 1.34;
    (iii) The inventor or a joint inventor, if the inventor is the 
applicant; or
    (iv) The assignee.

[[Page 41]]

    (3) Assertion by payment of the small entity basic filing, basic 
transmittal, basic national fee, or international search fee. The 
payment, by any party, of the exact amount of one of the small entity 
basic filing fees set forth in Sec.Sec. 1.16(a), 1.16(b), 1.16(c), 
1.16(d), 1.16(e), the small entity transmittal fee set forth inSec. 
1.445(a)(1), the small entity international search fee set forth in 
Sec.  1.445(a)(2) to a Receiving Office other than the United States 
Receiving Office in the exact amount established for that Receiving 
Office pursuant to PCT Rule 16, or the small entity basic national fee 
set forth inSec. 1.492(a), will be treated as a written assertion of 
entitlement to small entity status even if the type of basic filing, 
basic transmittal, or basic national fee is inadvertently selected in 
error.
    (i) If the Office accords small entity status based on payment of a 
small entity basic filing or basic national fee under paragraph (c)(3) 
of this section that is not applicable to that application, any balance 
of the small entity fee that is applicable to that application will be 
due along with the appropriate surcharge set forth inSec. 1.16(f), or 
Sec.  1.16(g).
    (ii) The payment of any small entity fee other than those set forth 
in paragraph (c)(3) of this section (whether in the exact fee amount or 
not) will not be treated as a written assertion of entitlement to small 
entity status and will not be sufficient to establish small entity 
status in an application or a patent.
    (4) Assertion required in related, continuing, and reissue 
applications. Status as a small entity must be specifically established 
by an assertion in each related, continuing and reissue application in 
which status is appropriate and desired. Status as a small entity in one 
application or patent does not affect the status of any other 
application or patent, regardless of the relationship of the 
applications or patents. The refiling of an application underSec. 1.53 
as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application underSec. 1.53(d)), or 
the filing of a reissue application, requires a new assertion as to 
continued entitlement to small entity status for the continuing or 
reissue application.
    (d) When small entity fees can be paid. Any fee, other than the 
small entity basic filing fees and the small entity national fees of 
paragraph (c)(3) of this section, can be paid in the small entity amount 
only if it is submitted with, or subsequent to, the submission of a 
written assertion of entitlement to small entity status, except when 
refunds are permitted bySec. 1.28(a).
    (e) Only one assertion required. (1) An assertion of small entity 
status need only be filed once in an application or patent. Small entity 
status, once established, remains in effect until changed pursuant to 
paragraph (g)(1) of this section. Where an assignment of rights or an 
obligation to assign rights to other parties who are small entities 
occurs subsequent to an assertion of small entity status, a second 
assertion is not required.
    (2) Once small entity status is withdrawn pursuant to paragraph 
(g)(2) of this section, a new written assertion is required to again 
obtain small entity status.
    (f) Assertion requires a determination of entitlement to pay small 
entity fees. Prior to submitting an assertion of entitlement to small 
entity status in an application, including a related, continuing, or 
reissue application, a determination of such entitlement should be made 
pursuant to the requirements of paragraph (a) of this section. It should 
be determined that all parties holding rights in the invention qualify 
for small entity status. The Office will generally not question any 
assertion of small entity status that is made in accordance with the 
requirements of this section, but note paragraph (h) of this section.
    (g)(1) New determination of entitlement to small entity status is 
needed when issue and maintenance fees are due. Once status as a small 
entity has been established in an application or patent, fees as a small 
entity may thereafter be paid in that application or patent without 
regard to a change in status until the issue fee is due or any 
maintenance fee is due.
    (2) Notification of loss of entitlement to small entity status is 
required when issue

[[Page 42]]

and maintenance fees are due. Notification of a loss of entitlement to 
small entity status must be filed in the application or patent prior to 
paying, or at the time of paying, the earliest of the issue fee or any 
maintenance fee due after the date on which status as a small entity as 
defined in paragraph (a) of this section is no longer appropriate. The 
notification that small entity status is no longer appropriate must be 
signed by a party identified inSec. 1.33(b). Payment of a fee in other 
than the small entity amount is not sufficient notification that small 
entity status is no longer appropriate.
    (h) Fraud attempted or practiced on the Office. (1) Any attempt to 
fraudulently establish status as a small entity, or pay fees as a small 
entity, shall be considered as a fraud practiced or attempted on the 
Office.
    (2) Improperly, and with intent to deceive, establishing status as a 
small entity, or paying fees as a small entity, shall be considered as a 
fraud practiced or attempted on the Office.

[65 FR 54659, Sept. 8, 2000, as amended at 69 FR 56538, Sept. 21, 2004; 
70 FR 3889, Jan. 27, 2005; 77 FR 48813, Aug. 14, 2012; 78 FR 4289, Jan. 
18, 2013]



Sec.  1.28  Refunds when small entity status is later established; 
how errors in small entity status are excused.

    (a) Refunds based on later establishment of small entity status. A 
refund pursuant toSec. 1.26, based on establishment of small entity 
status, of a portion of fees timely paid in full prior to establishing 
status as a small entity may only be obtained if an assertion under 
Sec.  1.27(c) and a request for a refund of the excess amount are filed 
within three months of the date of the timely payment of the full fee. 
The three-month time period is not extendable underSec. 1.136. Status 
as a small entity is waived for any fee by the failure to establish the 
status prior to paying, at the time of paying, or within three months of 
the date of payment of, the full fee.
    (b) Date of payment. (1) The three-month period for requesting a 
refund, pursuant to paragraph (a) of this section, starts on the date 
that a full fee has been paid;
    (2) The date when a deficiency payment is paid in full determines 
the amount of deficiency that is due, pursuant to paragraph (c) of this 
section.
    (c) How errors in small entity status are excused. If status as a 
small entity is established in good faith, and fees as a small entity 
are paid in good faith, in any application or patent, and it is later 
discovered that such status as a small entity was established in error, 
or that through error the Office was not notified of a loss of 
entitlement to small entity status as required bySec. 1.27(g)(2), the 
error will be excused upon: compliance with the separate submission and 
itemization requirements of paragraphs (c)(1) and (c)(2) of this 
section, and the deficiency payment requirement of paragraph (c)(2) of 
this section:
    (1) Separate submission required for each application or patent. Any 
paper submitted under this paragraph must be limited to the deficiency 
payment (all fees paid in error), required by paragraph (c)(2) of this 
section, for one application or one patent. Where more than one 
application or patent is involved, separate submissions of deficiency 
payments (e.g., checks) and itemizations are required for each 
application or patent. SeeSec. 1.4(b).
    (2) Payment of deficiency owed. The deficiency owed, resulting from 
the previous erroneous payment of small entity fees, must be paid.
    (i) Calculation of the deficiency owed. The deficiency owed for each 
previous fee erroneously paid as a small entity is the difference 
between the current fee amount (for other than a small entity) on the 
date the deficiency is paid in full and the amount of the previous 
erroneous (small entity) fee payment. The total deficiency payment owed 
is the sum of the individual deficiency owed amounts for each fee amount 
previously erroneously paid as a small entity. Where a fee paid in error 
as a small entity was subject to a fee decrease between the time the fee 
was paid in error and the time the deficiency is paid in full, the 
deficiency owed is equal to the amount (previously) paid in error;
    (ii) Itemization of the deficiency payment. An itemization of the 
total deficiency payment is required. The

[[Page 43]]

itemization must include the following information:
    (A) Each particular type of fee that was erroneously paid as a small 
entity, (e.g., basic statutory filing fee, two-month extension of time 
fee) along with the current fee amount for a non-small entity;
    (B) The small entity fee actually paid, and when. This will permit 
the Office to differentiate, for example, between two one-month 
extension of time fees erroneously paid as a small entity but on 
different dates;
    (C) The deficiency owed amount (for each fee erroneously paid); and
    (D) The total deficiency payment owed, which is the sum or total of 
the individual deficiency owed amounts set forth in paragraph 
(c)(2)(ii)(C) of this section.
    (3) Failure to comply with requirements. If the requirements of 
paragraphs (c)(1) and (c)(2) of this section are not complied with, such 
failure will either: be treated as an authorization for the Office to 
process the deficiency payment and charge the processing fee set forth 
inSec. 1.17(i), or result in a requirement for compliance within a 
one-month non-extendable time period underSec. 1.136(a) to avoid the 
return of the fee deficiency paper, at the option of the Office.
    (d) Payment of deficiency operates as notification of loss of 
status. Any deficiency payment (based on a previous erroneous payment of 
a small entity fee) submitted under paragraph (c) of this section will 
be treated underSec. 1.27(g)(2) as a notification of a loss of 
entitlement to small entity status.

[65 FR 54661, Sept. 8, 2000]



Sec.  1.29  Micro entity status.

    (a) To establish micro entity status under this paragraph, the 
applicant must certify that:
    (1) The applicant qualifies as a small entity as defined inSec. 
1.27;
    (2) Neither the applicant nor the inventor nor a joint inventor has 
been named as the inventor or a joint inventor on more than four 
previously filed patent applications, other than applications filed in 
another country, provisional applications under 35 U.S.C. 111(b), or 
international applications for which the basic national fee under 35 
U.S.C. 41(a) was not paid;
    (3) Neither the applicant nor the inventor nor a joint inventor, in 
the calendar year preceding the calendar year in which the applicable 
fee is being paid, had a gross income, as defined in section 61(a) of 
the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three 
times the median household income for that preceding calendar year, as 
most recently reported by the Bureau of the Census; and
    (4) Neither the applicant nor the inventor nor a joint inventor has 
assigned, granted, or conveyed, nor is under an obligation by contract 
or law to assign, grant, or convey, a license or other ownership 
interest in the application concerned to an entity that, in the calendar 
year preceding the calendar year in which the applicable fee is being 
paid, had a gross income, as defined in section 61(a) of the Internal 
Revenue Code of 1986, exceeding three times the median household income 
for that preceding calendar year, as most recently reported by the 
Bureau of the Census.
    (b) An applicant, inventor, or joint inventor is not considered to 
be named on a previously filed application for purposes of paragraph 
(a)(2) of this section if the applicant, inventor, or joint inventor has 
assigned, or is under an obligation by contract or law to assign, all 
ownership rights in the application as the result of the applicant's, 
inventor's, or joint inventor's previous employment.
    (c) If an applicant's, inventor's, joint inventor's, or entity's 
gross income in the preceding calendar year is not in United States 
dollars, the average currency exchange rate, as reported by the Internal 
Revenue Service, during that calendar year shall be used to determine 
whether the applicant's, inventor's, joint inventor's, or entity's gross 
income exceeds the threshold specified in paragraph (a)(3) or (4) of 
this section.
    (d) To establish micro entity status under this paragraph, the 
applicant must certify that:
    (1) The applicant qualifies as a small entity as defined inSec. 
1.27; and

[[Page 44]]

    (2)(i) The applicant's employer, from which the applicant obtains 
the majority of the applicant's income, is an institution of higher 
education as defined in section 101(a) of the Higher Education Act of 
1965 (20 U.S.C. 1001(a)); or
    (ii) The applicant has assigned, granted, conveyed, or is under an 
obligation by contract or law, to assign, grant, or convey, a license or 
other ownership interest in the particular application to such an 
institution of higher education.
    (e) Micro entity status is established in an application by filing a 
micro entity certification in writing complying with the requirements of 
either paragraph (a) or paragraph (d) of this section and signed in 
compliance withSec. 1.33(b). Status as a micro entity must be 
specifically established in each related, continuing and reissue 
application in which status is appropriate and desired. Status as a 
micro entity in one application or patent does not affect the status of 
any other application or patent, regardless of the relationship of the 
applications or patents. The refiling of an application underSec. 1.53 
as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application underSec. 1.53(d)), or 
the filing of a reissue application, requires a new certification of 
entitlement to micro entity status for the continuing or reissue 
application.
    (f) A fee may be paid in the micro entity amount only if it is 
submitted with, or subsequent to, the submission of a certification of 
entitlement to micro entity status.
    (g) A certification of entitlement to micro entity status need only 
be filed once in an application or patent. Micro entity status, once 
established, remains in effect until changed pursuant to paragraph (i) 
of this section. However, a fee may be paid in the micro entity amount 
only if status as a micro entity as defined in paragraph (a) or (d) of 
this section is appropriate on the date the fee is being paid. Where an 
assignment of rights or an obligation to assign rights to other parties 
who are micro entities occurs subsequent to the filing of a 
certification of entitlement to micro entity status, a second 
certification of entitlement to micro entity status is not required.
    (h) Prior to submitting a certification of entitlement to micro 
entity status in an application, including a related, continuing, or 
reissue application, a determination of such entitlement should be made 
pursuant to the requirements of this section. It should be determined 
that each applicant qualifies for micro entity status under paragraph 
(a) or (d) of this section, and that any other party holding rights in 
the invention qualifies for small entity status underSec. 1.27. The 
Office will generally not question certification of entitlement to micro 
entity status that is made in accordance with the requirements of this 
section.
    (i) Notification of a loss of entitlement to micro entity status 
must be filed in the application or patent prior to paying, or at the 
time of paying, any fee after the date on which status as a micro entity 
as defined in paragraph (a) or (d) of this section is no longer 
appropriate. The notification that micro entity status is no longer 
appropriate must be signed by a party identified inSec. 1.33(b). 
Payment of a fee in other than the micro entity amount is not sufficient 
notification that micro entity status is no longer appropriate. A 
notification that micro entity status is no longer appropriate will not 
be treated as a notification that small entity status is also no longer 
appropriate unless it also contains a notification of loss of 
entitlement to small entity status underSec. 1.27(f)(2). Once a 
notification of a loss of entitlement to micro entity status is filed in 
the application or patent, a new certification of entitlement to micro 
entity status is required to again obtain micro entity status.
    (j) Any attempt to fraudulently establish status as a micro entity, 
or pay fees as a micro entity, shall be considered as a fraud practiced 
or attempted on the Office. Improperly, and with intent to deceive, 
establishing status as a micro entity, or paying fees as a micro entity, 
shall be considered as a fraud practiced or attempted on the Office.

[[Page 45]]

    (k) If status as a micro entity is established in good faith in an 
application or patent, and fees as a micro entity are paid in good faith 
in the application or patent, and it is later discovered that such micro 
entity status either was established in error, or that the Office was 
not notified of a loss of entitlement to micro entity status as required 
by paragraph (i) of this section through error, the error will be 
excused upon compliance with the separate submission and itemization 
requirements of paragraph (k)(1) of this section and the deficiency 
payment requirement of paragraph (k)(2) of this section.
    (1) Any paper submitted under this paragraph must be limited to the 
deficiency payment (all fees paid in error) required for a single 
application or patent. Where more than one application or patent is 
involved, separate submissions of deficiency payments are required for 
each application or patent (seeSec. 1.4(b)). The paper must contain an 
itemization of the total deficiency payment for the single application 
or patent and include the following information:
    (i) Each particular type of fee that was erroneously paid as a micro 
entity, (e.g., basic statutory filing fee, two-month extension of time 
fee) along with the current fee amount for a small or non-small entity, 
as applicable;
    (ii) The micro entity fee actually paid, and the date on which it 
was paid;
    (iii) The deficiency owed amount (for each fee erroneously paid); 
and
    (iv) The total deficiency payment owed, which is the sum or total of 
the individual deficiency owed amounts as set forth in paragraph (k)(2) 
of this section.
    (2) The deficiency owed, resulting from the previous erroneous 
payment of micro entity fees, must be paid. The deficiency owed for each 
previous fee erroneously paid as a micro entity is the difference 
between the current fee amount for a small entity or non-small entity, 
as applicable, on the date the deficiency is paid in full and the amount 
of the previous erroneous micro entity fee payment. The total deficiency 
payment owed is the sum of the individual deficiency owed amounts for 
each fee amount previously and erroneously paid as a micro entity.
    (3) If the requirements of paragraphs (k)(1) and (2) of this section 
are not complied with, such failure will either be treated at the option 
of the Office as an authorization for the Office to process the 
deficiency payment and charge the processing fee set forth inSec. 
1.17(i), or result in a requirement for compliance within a one-month 
time period that is not extendable underSec. 1.136(a) to avoid the 
return of the fee deficiency payment.
    (4) Any deficiency payment (based on a previous erroneous payment of 
a micro entity fee) submitted under this paragraph will be treated as a 
notification of a loss of entitlement to micro entity status under 
paragraph (i) of this section, but payment of a deficiency based upon 
the difference between the current fee amount for a small entity and the 
amount of the previous erroneous micro entity fee payment will not be 
treated as an assertion of small entity status underSec. 1.27(c). Once 
a deficiency payment is submitted under this paragraph, a written 
assertion of small entity status underSec. 1.27(c)(1) is required to 
obtain small entity status.

[77 FR 75033, Dec. 19, 2012]



                Subpart B_National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent



Sec.  1.31  Applicant may be represented by one or more patent
practitioners or joint inventors.

    An applicant for patent may file and prosecute the applicant's own 
case, or the applicant may give power of attorney so as to be 
represented by one or more patent practitioners or joint inventors, 
except that a juristic entity (e.g., organizational assignee) must be 
represented by a patent practitioner even if the juristic entity is the 
applicant. The Office cannot aid in the selection of a patent 
practitioner.

[77 FR 48813, Aug. 14, 2012]

[[Page 46]]



Sec.  1.32  Power of attorney.

    (a) Definitions. (1) Patent practitioner means a registered patent 
attorney or registered patent agent underSec. 11.6.
    (2) Power of attorney means a written document by which a principal 
authorizes one or more patent practitioners or joint inventors to act on 
the principal's behalf.
    (3) Principal means the applicant (Sec.  1.42) for an application 
for patent and the patent owner for a patent, including a patent in a 
supplemental examination or reexamination proceeding. The principal 
executes a power of attorney designating one or more patent 
practitioners or joint inventors to act on the principal's behalf.
    (4) Revocation means the cancellation by the principal of the 
authority previously given to a patent practitioner or joint inventor to 
act on the principal's behalf.
    (5) Customer Number means a number that may be used to:
    (i) Designate the correspondence address of a patent application or 
patent such that the correspondence address for the patent application, 
patent or other patent proceeding would be the address associated with 
the Customer Number;
    (ii) Designate the fee address (Sec.  1.363) of a patent such that 
the fee address for the patent would be the address associated with the 
Customer Number; and
    (iii) Submit a list of patent practitioners such that those patent 
practitioners associated with the Customer Number would have power of 
attorney.
    (6) Patent practitioner of record means a patent practitioner who 
has been granted a power of attorney in an application, patent, or other 
proceeding in compliance with paragraph (b) of this section. The phrases 
practitioner of record and attorney or agent of record also mean a 
patent practitioner who has been granted a power of attorney in an 
application, patent, or other proceeding in compliance with paragraph 
(b) of this section.
    (b) A power of attorney must:
    (1) Be in writing;
    (2) Name one or more representatives in compliance with paragraph 
(c) of this section;
    (3) Give the representative power to act on behalf of the principal; 
and
    (4) Be signed by the applicant for patent (Sec.  1.42) or the patent 
owner. A patent owner who was not the applicant underSec. 1.46 must 
appoint any power of attorney in compliance with Sec.Sec. 3.71 and 
3.73 of this chapter.
    (c) A power of attorney may only name as representative:
    (1) One or more joint inventors (Sec.  1.45);
    (2) Those registered patent practitioners associated with a Customer 
Number;
    (3) Ten or fewer patent practitioners, stating the name and 
registration number of each patent practitioner. Except as provided in 
paragraph (c)(1) or (c)(2) of this section, the Office will not 
recognize more than ten patent practitioners as being of record in an 
application or patent. If a power of attorney names more than ten patent 
practitioners, such power of attorney must be accompanied by a separate 
paper indicating which ten patent practitioners named in the power of 
attorney are to be recognized by the Office as being of record in the 
application or patent to which the power of attorney is directed.
    (d) A power of attorney from a prior national application for which 
benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing 
application may have effect in the continuing application if a copy of 
the power of attorney from the prior application is filed in the 
continuing application unless:
    (1) The power of attorney was granted by the inventor; and
    (2) The continuing application names an inventor who was not named 
as an inventor in the prior application.
    (e) If the power of attorney was granted by the originally named 
inventive entity, and an added inventor pursuant toSec. 1.48 does not 
provide a power of attorney consistent with the power of attorney 
granted by the originally named inventive entity, the addition of the 
inventor results in the loss of that power of attorney upon grant of the 
Sec.  1.48 request. This provision does not

[[Page 47]]

preclude a practitioner from acting pursuant toSec. 1.34, if 
applicable.

[69 FR 29877, May 26, 2004, as amended at 70 FR 56127, Sept. 26, 2005; 
77 FR 48813, Aug. 14, 2012]



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

    (a) Correspondence address and daytime telephone number. When filing 
an application, a correspondence address must be set forth in either an 
application data sheet (Sec.  1.76), or elsewhere, in a clearly 
identifiable manner, in any paper submitted with an application filing. 
If no correspondence address is specified, the Office may treat the 
mailing address of the first named inventor (if provided, see Sec.Sec. 
1.76(b)(1) and 1.63(b)(2)) as the correspondence address. The Office 
will direct, or otherwise make available, all notices, official letters, 
and other communications relating to the application to the person 
associated with the correspondence address. For correspondence submitted 
via the Office's electronic filing system, however, an electronic 
acknowledgment receipt will be sent to the submitter. The Office will 
generally not engage in double correspondence with an applicant and a 
patent practitioner, or with more than one patent practitioner except as 
deemed necessary by the Director. If more than one correspondence 
address is specified, the Office will select one of the specified 
addresses for use as the correspondence address and, if given, may 
select the address associated with a Customer Number over a typed 
correspondence address. For the party to whom correspondence is to be 
addressed, a daytime telephone number should be supplied in a clearly 
identifiable manner and may be changed by any party who may change the 
correspondence address. The correspondence address may be changed by the 
parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior 
to the appointment of any power of attorney underSec. 1.32(b), the 
correspondence address may also be changed by any patent practitioner 
named in the application transmittal papers who acts in a representative 
capacity under the provisions ofSec. 1.34.
    (b) Amendments and other papers. Amendments and other papers, except 
for written assertions pursuant toSec. 1.27(c)(2)(iii) or (c)(2)(iv), 
filed in the application must be signed by:
    (1) A patent practitioner of record;
    (2) A patent practitioner not of record who acts in a representative 
capacity under the provisions ofSec. 1.34; or
    (3) The applicant (Sec.  1.42). Unless otherwise specified, all 
papers submitted on behalf of a juristic entity must be signed by a 
patent practitioner.
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed to 
the correspondence address. Amendments and other papers filed in a 
reexamination proceeding on behalf of the patent owner must be signed by 
the patent owner, or if there is more than one owner by all the owners, 
or by an attorney or agent of record in the patent file, or by a 
registered attorney or agent not of record who acts in a representative 
capacity under the provisions ofSec. 1.34. Double correspondence with 
the patent owner or owners and the patent owner's attorney or agent, or 
with more than one attorney or agent, will not be undertaken.
    (d) A ``correspondence address'' or change thereto may be filed with 
the Patent and Trademark Office during the enforceable life of the 
patent. The ``correspondence address'' will be used in any 
correspondence relating to maintenance fees unless a separate ``fee 
address'' has been specified. SeeSec. 1.363 for ``fee address'' used 
solely for maintenance fee purposes.
    (e) A change of address filed in a patent application or patent does 
not change the address for a patent practitioner in the roster of patent 
attorneys and agents. SeeSec. 11.11 of this title.
    (f) Where application papers from a prior application are used in a 
continuing application and the correspondence address was changed during 
the prosecution of the prior application, an application data sheet or 
separate paper identifying the correspondence address to be used for the 
continuing application must be submitted. Otherwise, the Office may not 
recognize the

[[Page 48]]

change of correspondence address effected during the prosecution of the 
prior application.
    (g) A patent practitioner acting in a representative capacity whose 
correspondence address is the correspondence address of record in an 
application may change the correspondence address after the patent has 
issued, provided that the change of correspondence address is 
accompanied by a statement that notice has been given to the patentee or 
owner.

[36 FR 12617, July 2, 1971, as amended at 46 FR 29181, May 29, 1981; 49 
FR 34724, Aug. 31, 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10, 
1997; 65 FR 54661, Sept. 8, 2000; 69 FR 29877, May 26, 2004; 69 FR 
35452, June 24, 2004; 70 FR 3889, Jan. 27, 2005; 70 FR 56127, Sept. 26, 
2005; 72 FR 2776, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007; 77 FR 
48814, Aug. 14, 2012]



Sec.  1.34  Acting in a representative capacity.

    When a patent practitioner acting in a representative capacity 
appears in person or signs a paper in practice before the United States 
Patent and Trademark Office in a patent case, his or her personal 
appearance or signature shall constitute a representation to the United 
States Patent and Trademark Office that under the provisions of this 
subchapter and the law, he or she is authorized to represent the 
particular party on whose behalf he or she acts. In filing such a paper, 
the patent practitioner must set forth his or her registration number, 
his or her name and signature. Further proof of authority to act in a 
representative capacity may be required.

[70 FR 56127, Sept. 26, 2005]



Sec.  1.36  Revocation of power of attorney; withdrawal of patent 
attorney or agent.

    (a) A power of attorney, pursuant toSec. 1.32(b), may be revoked 
at any stage in the proceedings of a case by the applicant or patent 
owner. A power of attorney to the patent practitioners associated with a 
Customer Number will be treated as a request to revoke any powers of 
attorney previously given. Fewer than all of the applicants (or fewer 
than all patent owners in a supplemental examination or reexamination 
proceeding) may revoke the power of attorney only upon a showing of 
sufficient cause, and payment of the petition fee set forth inSec. 
1.17(f). A patent practitioner will be notified of the revocation of the 
power of attorney. Where power of attorney is given to the patent 
practitioners associated with a Customer Number (Sec.  1.32(c)(2)), the 
practitioners so appointed will also be notified of the revocation of 
the power of attorney when the power of attorney to all of the 
practitioners associated with the Customer Number is revoked. The notice 
of revocation will be mailed to the correspondence address for the 
application (Sec.  1.33) in effect before the revocation. An assignment 
will not of itself operate as a revocation of a power previously given, 
but the assignee may become the applicant underSec. 1.46(c) and revoke 
any previous power of attorney and grant a power of attorney as provided 
inSec. 1.32(b).
    (b) A registered patent attorney or patent agent who has been given 
a power of attorney pursuant toSec. 1.32(b) may withdraw as attorney 
or agent of record upon application to and approval by the Director. The 
applicant or patent owner will be notified of the withdrawal of the 
registered patent attorney or patent agent. Where power of attorney is 
given to the patent practitioners associated with a Customer Number, a 
request to delete all of the patent practitioners associated with the 
Customer Number may not be granted if an applicant has given power of 
attorney to the patent practitioners associated with the Customer Number 
in an application that has an Office action to which a reply is due, but 
insufficient time remains for the applicant to file a reply. SeeSec. 
41.5 of this title for withdrawal during proceedings before the Patent 
Trial and Appeal Board.

[69 FR 49997, Aug. 12, 2004, as amended at 70 FR 56128, Sept. 26, 2005; 
77 FR 46624, Aug. 6, 2012; 77 FR 48814, Aug. 14, 2012]

                       Who May Apply for a Patent



Sec.  1.41  Inventorship.

    (a) An application must include, or be amended to include, the name 
of the inventor for any invention claimed in the application.
    (b) The inventorship of a nonprovisional application under 35 U.S.C.

[[Page 49]]

111(a) is the inventor or joint inventors set forth in the application 
data sheet in accordance withSec. 1.76 filed before or concurrently 
with the inventor's oath or declaration. If an application data sheet is 
not filed before or concurrently with the inventor's oath or 
declaration, the inventorship is the inventor or joint inventors set 
forth in the inventor's oath or declaration, except as provided for in 
Sec.Sec. 1.53(d)(4) and 1.63(d). Once an application data sheet or the 
inventor's oath or declaration is filed in a nonprovisional application, 
any correction of inventorship must be pursuant toSec. 1.48. If 
neither an application data sheet nor the inventor's oath or declaration 
is filed during the pendency of a nonprovisional application, the 
inventorship is the inventor or joint inventors set forth in the 
application papers filed pursuant toSec. 1.53(b), unless the applicant 
files a paper, including the processing fee set forth inSec. 1.17(i), 
supplying the name or names of the inventor or joint inventors.
    (c) The inventorship of a provisional application is the inventor or 
joint inventors set forth in the cover sheet as prescribed bySec. 
1.51(c)(1). Once a cover sheet as prescribed bySec. 1.51(c)(1) is 
filed in a provisional application, any correction of inventorship must 
be pursuant toSec. 1.48. If a cover sheet as prescribed bySec. 
1.51(c)(1) is not filed during the pendency of a provisional 
application, the inventorship is the inventor or joint inventors set 
forth in the application papers filed pursuant toSec. 1.53(c), unless 
applicant files a paper including the processing fee set forth inSec. 
1.17(q), supplying the name or names of the inventor or joint inventors.
    (d) In a nonprovisional application under 35 U.S.C. 111(a) filed 
without an application data sheet or the inventor's oath or declaration, 
or in a provisional application filed without a cover sheet as 
prescribed bySec. 1.51(c)(1), the name and residence of each person 
believed to be an actual inventor should be provided when the 
application papers pursuant toSec. 1.53(b) orSec. 1.53(c) are filed.
    (e) The inventorship of an international application entering the 
national stage under 35 U.S.C. 371 is the inventor or joint inventors 
set forth in the application data sheet in accordance withSec. 1.76 
filed with the initial submission under 35 U.S.C. 371. Unless the 
initial submission under 35 U.S.C. 371 is accompanied by an application 
data sheet in accordance withSec. 1.76 setting forth the inventor or 
joint inventors, the inventorship is the inventor or joint inventors set 
forth in the international application, which includes any change 
effected under PCT Rule 92 bis.

[77 FR 48814, Aug. 14, 2012]



Sec.  1.42  Applicant for patent.

    (a) The word ``applicant'' when used in this title refers to the 
inventor or all of the joint inventors, or to the person applying for a 
patent as provided in Sec.Sec. 1.43, 1.45, or 1.46.
    (b) If a person is applying for a patent as provided inSec. 1.46, 
the word ``applicant'' refers to the assignee, the person to whom the 
inventor is under an obligation to assign the invention, or the person 
who otherwise shows sufficient proprietary interest in the matter, who 
is applying for a patent underSec. 1.46 and not the inventor.
    (c) If fewer than all joint inventors are applying for a patent as 
provided inSec. 1.45, the phrase ``the applicant'' means the joint 
inventors who are applying for the patent without the omitted 
inventor(s).
    (d) Any person having authority may deliver an application and fees 
to the Office on behalf of the applicant. However, an oath or 
declaration, or substitute statement in lieu of an oath or declaration, 
may be executed only in accordance withSec. 1.63 or 1.64, a 
correspondence address may be provided only in accordance withSec. 
1.33(a), and amendments and other papers must be signed in accordance 
withSec. 1.33(b).
    (e) The Office may require additional information where there is a 
question concerning ownership or interest in an application, and a 
showing may be required from the person filing the application that the 
filing was authorized where such authorization comes into question.

[77 FR 48815, Aug. 14, 2012]

[[Page 50]]



Sec.  1.43  Application for patent by a legal representative of a 
deceased or legally incapacitated inventor.

    If an inventor is deceased or under legal incapacity, the legal 
representative of the inventor may make an application for patent on 
behalf of the inventor. If an inventor dies during the time intervening 
between the filing of the application and the granting of a patent 
thereon, the letters patent may be issued to the legal representative 
upon proper intervention. SeeSec. 1.64 concerning the execution of a 
substitute statement by a legal representative in lieu of an oath or 
declaration.

[77 FR 48815, Aug. 14, 2012]



Sec.  1.44  [Reserved]



Sec.  1.45  Application for patent by joint inventors.

    (a) Joint inventors must apply for a patent jointly, and each must 
make an inventor's oath or declaration as required bySec. 1.63, except 
as provided for inSec. 1.64. If a joint inventor refuses to join in an 
application for patent or cannot be found or reached after diligent 
effort, the other joint inventor or inventors may make the application 
for patent on behalf of themselves and the omitted inventor. SeeSec. 
1.64 concerning the execution of a substitute statement by the other 
joint inventor or inventors in lieu of an oath or declaration.
    (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.

[77 FR 48815, Aug. 14, 2012]



Sec.  1.46  Application for patent by an assignee, obligated assignee,
or a person who otherwise shows sufficient proprietary interest in 
the matter.

    (a) A person to whom the inventor has assigned or is under an 
obligation to assign the invention may make an application for patent. A 
person who otherwise shows sufficient proprietary interest in the matter 
may make an application for patent on behalf of and as agent for the 
inventor on proof of the pertinent facts and a showing that such action 
is appropriate to preserve the rights of the parties.
    (b) If an application under 35 U.S.C. 111 is made by a person other 
than the inventor under paragraph (a) of this section, the application 
must contain an application data sheet underSec. 1.76 specifying in 
the applicant information section (Sec.  1.76(b)(7)) the assignee, 
person to whom the inventor is under an obligation to assign the 
invention, or person who otherwise shows sufficient proprietary interest 
in the matter. If the application is the national stage of an 
international application, the person who is identified in the 
international stage as an applicant for the United States is the person 
specified as the original applicant for the national stage.
    (1) If the applicant is the assignee or a person to whom the 
inventor is under an obligation to assign the invention, documentary 
evidence of ownership (e.g., assignment for an assignee, employment 
agreement for a person to whom the inventor is under an obligation to 
assign the invention) should be recorded as provided for in part 3 of 
this chapter no later than the date the issue fee is paid in the 
application.
    (2) If the applicant is a person who otherwise shows sufficient 
proprietary interest in the matter, such applicant must submit a 
petition including:
    (i) The fee set forth inSec. 1.17(g);
    (ii) A showing that such person has sufficient proprietary interest 
in the matter; and

[[Page 51]]

    (iii) A statement that making the application for patent by a person 
who otherwise shows sufficient proprietary interest in the matter on 
behalf of and as agent for the inventor is appropriate to preserve the 
rights of the parties.
    (c) Any request to correct or update the name of the applicant after 
an applicant has been specified under paragraph (b) of this section must 
include an application data sheet underSec. 1.76 specifying the 
correct or updated name of the applicant in the applicant information 
section (Sec.  1.76(b)(7)). Any request to change the applicant after an 
original applicant has been specified under paragraph (b) of this 
section must include an application data sheet underSec. 1.76 
specifying the applicant in the applicant information section (Sec.  
1.76(b)(7)) and comply with Sec.Sec. 3.71 and 3.73 of this title.
    (d) Even if the whole or a part interest in the invention or in the 
patent to be issued is assigned or obligated to be assigned, an oath or 
declaration must be executed by the actual inventor or each actual joint 
inventor, except as provided for inSec. 1.64. SeeSec. 1.64 
concerning the execution of a substitute statement by an assignee, 
person to whom the inventor is under an obligation to assign the 
invention, or a person who otherwise shows sufficient proprietary 
interest in the matter.
    (e) If a patent is granted on an application filed under this 
section by a person other than the inventor, the patent shall be granted 
to the real party in interest. Otherwise, the patent may be issued to 
the assignee or jointly to the inventor and the assignee as provided in 
Sec.  3.81. Where a real party in interest has filed an application 
underSec. 1.46, the applicant shall notify the Office of any change in 
the real party in interest no later than payment of the issue fee. The 
Office will treat the absence of such a notice as an indication that 
there has been no change in the real party in interest.
    (f) The Office may publish notice of the filing of the application 
by a person who otherwise shows sufficient proprietary interest in the 
Official Gazette.

[77 FR 48815, Aug. 14, 2012]



Sec.  1.47  [Reserved]



Sec.  1.48  Correction of inventorship pursuant to 35 U.S.C. 116 or
correction of the name or order of names in a patent application, 
other than a reissue application.

    (a) Nonprovisional application: Any request to correct or change the 
inventorship once the inventorship has been established underSec. 1.41 
must include:
    (1) An application data sheet in accordance withSec. 1.76 that 
identifies each inventor by his or her legal name; and
    (2) The processing fee set forth inSec. 1.17(i).
    (b) Inventor's oath or declaration for added inventor: An oath or 
declaration as required bySec. 1.63, or a substitute statement in 
compliance withSec. 1.64, will be required for any actual inventor who 
has not yet executed such an oath or declaration.
    (c) Any request to correct or change the inventorship under 
paragraph (a) of this section filed after the Office action on the 
merits has been given or mailed in the application must also be 
accompanied by the fee set forth inSec. 1.17(d), unless the request is 
accompanied by a statement that the request to correct or change the 
inventorship is due solely to the cancelation of claims in the 
application.
    (d) Provisional application. Once a cover sheet as prescribed by 
Sec.  1.51(c)(1) is filed in a provisional application, any request to 
correct or change the inventorship must include:
    (1) A request, signed by a party set forth inSec. 1.33(b), to 
correct the inventorship that identifies each inventor by his or her 
legal name; and
    (2) The processing fee set forth inSec. 1.17(q).
    (e) Additional information may be required. The Office may require 
such other information as may be deemed appropriate under the particular 
circumstances surrounding the correction of inventorship.
    (f) Correcting or updating the name of an inventor: Any request to 
correct or update the name of the inventor or a joint inventor, or the 
order of the names of joint inventors, in a nonprovisional application 
must include:
    (1) An application data sheet in accordance withSec. 1.76 that 
identifies each

[[Page 52]]

inventor by his or her legal name in the desired order; and
    (2) The processing fee set forth inSec. 1.17(i).
    (g) Reissue applications not covered. The provisions of this section 
do not apply to reissue applications. See Sec.Sec. 1.171 and 1.175 for 
correction of inventorship in a patent via a reissue application.
    (h) Correction of inventorship in patent. SeeSec. 1.324 for 
correction of inventorship in a patent.
    (i) Correction of inventorship in an interference or contested case 
before the Patent Trial and Appeal Board. In an interference under part 
41, subpart D, of this title, a request for correction of inventorship 
in an application must be in the form of a motion underSec. 
41.121(a)(2) of this title. In a contested case under part 42, subpart 
D, of this title, a request for correction of inventorship in an 
application must be in the form of a motion underSec. 42.22 of this 
title. The motion underSec. 41.121(a)(2) or 42.22 of this title must 
comply with the requirements of paragraph (a) of this section.

[77 FR 48816, Aug. 14, 2012, as amended at 78 FR 4289, Jan. 18, 2013]

                             The Application



Sec.  1.51  General requisites of an application.

    (a) Applications for patents must be made to the Director of the 
United States Patent and Trademark Office.
    (b) A complete application filed underSec. 1.53(b) orSec. 
1.53(d) comprises:
    (1) A specification as prescribed by 35 U.S.C. 112, including a 
claim or claims, see Sec.Sec. 1.71 to 1.77;
    (2) The inventor's oath or declaration, see Sec.Sec. 1.63 and 
1.64;
    (3) Drawings, when necessary, see Sec.Sec. 1.81 to 1.85; and
    (4) The prescribed filing fee, search fee, examination fee, and 
application size fee, seeSec. 1.16.
    (c) A complete provisional application filed underSec. 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, (seeSec. 
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 35 U.S.C. 112(a), seeSec. 
1.71;
    (3) Drawings, when necessary, see Sec.Sec. 1.81 to 1.85; and
    (4) The prescribed filing fee and application size fee, seeSec. 
1.16.
    (d) Applicants are encouraged to file an information disclosure 
statement in nonprovisional applications. SeeSec. 1.97 andSec. 1.98. 
No information disclosure statement may be filed in a provisional 
application.

[62 FR 53185, Oct. 10, 1997, as amended at 65 FR 54664, Sept. 8, 2000; 
68 FR 14336, Mar. 25, 2003; 70 FR 3889, Jan. 27, 2005; 77 FR 46624, Aug. 
6, 2012; 77 FR 48816, Aug. 14, 2012]



Sec.  1.52  Language, paper, writing, margins, compact disc 
specifications.

    (a) Papers that are to become a part of the permanent United States 
Patent and Trademark Office records in the file of a patent application 
or a reexamination proceeding. (1) All papers, other than drawings, that 
are submitted on paper or by facsimile transmission, and are to become a 
part of the permanent United States Patent and Trademark Office records 
in the file of a patent application or reexamination proceeding, must be 
on sheets of paper that are the same size, not permanently bound 
together, and:
    (i) Flexible, strong, smooth, non-shiny, durable, and white;
    (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm 
(8\1/2\ by 11 inches), with each sheet including a top margin of at 
least 2.0 cm (\3/4\ inch), a left side margin of at least 2.5 cm (1 
inch), a right side margin of at least 2.0 cm (\3/4\ inch), and a bottom 
margin of at least 2.0 cm (\3/4\ inch);

[[Page 53]]

    (iii) Written on only one side in portrait orientation;
    (iv) Plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; and
    (v) Presented in a form having sufficient clarity and contrast 
between the paper and the writing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical character 
recognition.
    (2) All papers that are submitted on paper or by facsimile 
transmission and are to become a part of the permanent records of the 
United States Patent and Trademark Office should have no holes in the 
sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on paper forms 
provided by the Office, or to the copy of the patent submitted on paper 
in double column format as the specification in a reissue application or 
request for reexamination.
    (4) SeeSec. 1.58 for chemical and mathematical formulae and 
tables, andSec. 1.84 for drawings.
    (5) Papers that are submitted electronically to the Office must be 
formatted and transmitted in compliance with the Office's electronic 
filing system requirements.
    (b) The application (specification, including the claims, drawings, 
and the inventor's oath or declaration) or supplemental examination or 
reexamination proceeding and any amendments or corrections to the 
application or reexamination proceeding. (1) The application or 
proceeding and any amendments or corrections to the application 
(including any translation submitted pursuant to paragraph (d) of this 
section) or proceeding, except as provided for inSec. 1.69 and 
paragraph (d) of this section, must:
    (i) Comply with the requirements of paragraph (a) of this section; 
and
    (ii) Be in the English language or be accompanied by a translation 
of the application and a translation of any corrections or amendments 
into the English language together with a statement that the translation 
is accurate.
    (2) The specification (including the abstract and claims) for other 
than reissue applications and reexamination proceedings, and any 
amendments for applications (including reissue applications) and 
reexamination proceedings to the specification, except as provided for 
in Sec.Sec. 1.821 through 1.825, must have:
    (i) Lines that are 1\1/2\ or double spaced;
    (ii) Text written in a nonscript type font (e.g., Arial, Times 
Roman, or Courier, preferably a font size of 12) lettering style having 
capital letters which should be at least 0.3175 cm. (0.125 inch) high, 
but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size 
of 6); and
    (iii) Only a single column of text.
    (3) The claim or claims must commence on a separate physical sheet 
or electronic page (Sec.  1.75(h)).
    (4) The abstract must commence on a separate physical sheet or 
electronic page or be submitted as the first page of the patent in a 
reissue application or reexamination proceeding (Sec.  1.72(b)).
    (5) Other than in a reissue application or reexamination proceeding, 
the pages of the specification including claims and abstract must be 
numbered consecutively, starting with 1, the numbers being centrally 
located above or preferably, below, the text.
    (6) Other than in a reissue application or reexamination proceeding, 
the paragraphs of the specification, other than in the claims or 
abstract, may be numbered at the time the application is filed, and 
should be individually and consecutively numbered using Arabic numerals, 
so as to unambiguously identify each paragraph. The number should 
consist of at least four numerals enclosed in square brackets, including 
leading zeros (e.g., [0001]). The numbers and enclosing brackets should 
appear to the right of the left margin as the first item in each 
paragraph, before the first word of the paragraph, and should be 
highlighted in bold. A gap, equivalent to approximately four spaces, 
should follow the number. Nontext elements (e.g., tables, mathematical 
or chemical formulae, chemical structures, and sequence data) are 
considered part of the numbered paragraph

[[Page 54]]

around or above the elements, and should not be independently numbered. 
If a nontext element extends to the left margin, it should not be 
numbered as a separate and independent paragraph. A list is also treated 
as part of the paragraph around or above the list, and should not be 
independently numbered. Paragraph or section headers (titles), whether 
abutting the left margin or centered on the page, are not considered 
paragraphs and should not be numbered.
    (c) Interlineation, erasure, cancellation, or other alteration of 
the application papers may be made before or after the signing of the 
inventor's oath or declaration referring to those application papers, 
provided that the statements in the inventor's oath or declaration 
pursuant toSec. 1.63 remain applicable to those application papers. A 
substitute specification (Sec.  1.125) may be required if the 
application papers do not comply with paragraphs (a) and (b) of this 
section.
    (d) A nonprovisional or provisional application under 35 U.S.C. 111 
may be in a language other than English.
    (1) Nonprovisional application. If a nonprovisional application 
under 35 U.S.C. 111(a) is filed in a language other than English, an 
English language translation of the non-English language application, a 
statement that the translation is accurate, and the processing fee set 
forth inSec. 1.17(i) are required. If these items are not filed with 
the application, the applicant will be notified and given a period of 
time within which they must be filed in order to avoid abandonment.
    (2) Provisional application. If a provisional application under 35 
U.S.C. 111(b) is filed in a language other than English, an English 
language translation of the non-English language provisional application 
will not be required in the provisional application. SeeSec. 1.78(a) 
for the requirements for claiming the benefit of such provisional 
application in a nonprovisional application.
    (e) Electronic documents that are to become part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or reexamination proceeding. (1) The following 
documents may be submitted to the Office on a compact disc in compliance 
with this paragraph:
    (i) A computer program listing (seeSec. 1.96);
    (ii) A ``Sequence Listing'' (submitted underSec. 1.821(c)); or
    (iii) Any individual table (seeSec. 1.58) if the table is more 
than 50 pages in length, or if the total number of pages of all the 
tables in an application exceeds 100 pages in length, where a table page 
is a page printed on paper in conformance with paragraph (b) of this 
section andSec. 1.58(c).
    (2) A compact disc as used in this part means a Compact Disc-Read 
Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance 
with this paragraph. A CD-ROM is a ``read-only'' medium on which the 
data is pressed into the disc so that it cannot be changed or erased. A 
CD-R is a ``write once'' medium on which once the data is recorded, it 
is permanent and cannot be changed or erased.
    (3)(i) Each compact disc must conform to the International Standards 
Organization (ISO) 9660 standard, and the contents of each compact disc 
must be in compliance with the American Standard Code for Information 
Interchange (ASCII).
    (ii) Each compact disc must be enclosed in a hard compact disc case 
within an unsealed padded and protective mailing envelope and 
accompanied by a transmittal letter on paper in accordance with 
paragraph (a) of this section. The transmittal letter must list for each 
compact disc the machine format (e.g., IBM-PC, Macintosh), the operating 
system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list 
of files contained on the compact disc including their names, sizes in 
bytes, and dates of creation, plus any other special information that is 
necessary to identify, maintain, and interpret (e.g., tables in 
landscape orientation should be identified as landscape orientation or 
be identified when inquired about) the information on the compact disc. 
Compact discs submitted to the Office will not be returned to the 
applicant.
    (4) Any compact disc must be submitted in duplicate unless it 
contains only the ``Sequence Listing'' in computer readable form 
required by

[[Page 55]]

Sec.  1.821(e). The compact disc and duplicate copy must be labeled 
``Copy 1'' and ``Copy 2,'' respectively. The transmittal letter which 
accompanies the compact disc must include a statement that the two 
compact discs are identical. In the event that the two compact discs are 
not identical, the Office will use the compact disc labeled ``Copy 1'' 
for further processing. Any amendment to the information on a compact 
disc must be by way of a replacement compact disc in compliance with 
this paragraph containing the substitute information, and must be 
accompanied by a statement that the replacement compact disc contains no 
new matter. The compact disc and copy must be labeled ``COPY 1 
REPLACEMENT MM/DD/YYYY'' (with the month, day and year of creation 
indicated), and ``COPY 2 REPLACEMENT MM/DD/YYYY,'' respectively.
    (5) The specification must contain an incorporation-by-reference of 
the material on the compact disc in a separate paragraph (Sec.  
1.77(b)(5)), identifying each compact disc by the names of the files 
contained on each of the compact discs, their date of creation and their 
sizes in bytes. The Office may require applicant to amend the 
specification to include in the paper portion any part of the 
specification previously submitted on compact disc.
    (6) A compact disc must also be labeled with the following 
information:
    (i) The name of each inventor (if known);
    (ii) Title of the invention;
    (iii) The docket number, or application number if known, used by the 
person filing the application to identify the application; and
    (iv) A creation date of the compact disc.
    (v) If multiple compact discs are submitted, the label shall 
indicate their order (e.g., ``1 of X'').
    (vi) An indication that the disk is ``Copy 1'' or ``Copy 2'' of the 
submission. See paragraph (b)(4) of this section.
    (7) If a file is unreadable on both copies of the disc, the 
unreadable file will be treated as not having been submitted. A file is 
unreadable if, for example, it is of a format that does not comply with 
the requirements of paragraph (e)(3) of this section, it is corrupted by 
a computer virus, or it is written onto a defective compact disc.
    (f)(1) Any sequence listing in an electronic medium in compliance 
with Sec.Sec. 1.52(e) and 1.821(c) or (e), and any computer program 
listing filed in an electronic medium in compliance with Sec.Sec. 
1.52(e) and 1.96, will be excluded when determining the application size 
fee required bySec. 1.16(s) orSec. 1.492(j). For purposes of 
determining the application size fee required bySec. 1.16(s) orSec. 
1.492(j), for an application the specification and drawings of which, 
excluding any sequence listing in compliance withSec. 1.821(c) or (e), 
and any computer program listing filed in an electronic medium in 
compliance with Sec.Sec. 1.52(e) and 1.96, are submitted in whole or 
in part on an electronic medium other than the Office electronic filing 
system, each three kilobytes of content submitted on an electronic 
medium shall be counted as a sheet of paper.
    (2) Except as otherwise provided in this paragraph, the paper size 
equivalent of the specification and drawings of an application submitted 
via the Office electronic filing system will be considered to be 
seventy-five percent of the number of sheets of paper present in the 
specification and drawings of the application when entered into the 
Office file wrapper after being rendered by the Office electronic filing 
system for purposes of determining the application size fee required by 
Sec.  1.16(s). Any sequence listing in compliance withSec. 1.821(c) or 
(e), and any computer program listing in compliance withSec. 1.96, 
submitted via the Office electronic filing system will be excluded when 
determining the application size fee required bySec. 1.16(s) if the 
listing is submitted in ASCII text as part of an associated file.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

    Editorial Note: For Federal Register citations affectingSec. 1.52, 
see the List of CFR Sections Affected, which appears in the Finding Aids 
section of the printed volume and at www.fdsys.gov.



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

    (a) Application number. Any papers received in the Patent and 
Trademark

[[Page 56]]

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 toSec. 1.71 and at least one 
claim pursuant toSec. 1.75, and any drawing required bySec. 1.81(a) 
are filed in the Patent and Trademark Office. No new matter may be 
introduced into an application after its filing date. A continuing 
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35 
U.S.C. 120, 121, or 365(c) andSec. 1.78(c) and (d).
    (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 35 U.S.C. 112(a), and any drawing 
required bySec. 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 bySec. 1.51(c)(1), which may be an application data sheet 
(Sec.  1.76), or a cover letter identifying the application as a 
provisional application. Otherwise, the application will be treated as 
an application filed under paragraph (b) of this section.
    (2) An application for patent filed under paragraph (b) of this 
section may be converted to a provisional application and be accorded 
the original filing date of the application filed under paragraph (b) of 
this section. The grant of such a request for conversion will not 
entitle applicant to a refund of the fees that were properly paid in the 
application filed under paragraph (b) of this section. Such a request 
for conversion must be accompanied by the processing fee set forth in 
Sec.  1.17(q) and be filed prior to the earliest of:
    (i) Abandonment of the application filed under paragraph (b) of this 
section;
    (ii) Payment of the issue fee on the application filed under 
paragraph (b) of this section; or
    (iii) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) of this section.
    (3) A provisional application filed under paragraph (c) of this 
section may be converted to a nonprovisional application filed under 
paragraph (b) of this section and accorded the original filing date of 
the provisional application. The conversion of a provisional application 
to a nonprovisional application will not result in either the refund of 
any fee properly paid in the provisional application or the application 
of any such fee to the filing fee, or any other fee, for the 
nonprovisional application. Conversion of a provisional application to a 
nonprovisional application under this paragraph will result in the term 
of any patent to issue from the application being measured from at least 
the filing date of the provisional application for which conversion is 
requested. Thus, applicants should consider avoiding this adverse patent 
term impact by filing a nonprovisional application claiming the benefit 
of the provisional application under 35 U.S.C. 119(e) (rather than 
converting the provisional application into a nonprovisional application 
pursuant to this paragraph). A request to convert a provisional 
application to a nonprovisional application must be accompanied by the 
fee set forth inSec. 1.17(i) and an amendment including at least one 
claim as prescribed

[[Page 57]]

by 35 U.S.C. 112(b), unless the provisional application under paragraph 
(c) of this section otherwise contains at least one claim as prescribed 
by 35 U.S.C. 112(b). The nonprovisional application resulting from 
conversion of a provisional application must also include the filing 
fee, search fee, and examination fee for a nonprovisional application, 
the inventor's oath or declaration, and the surcharge required bySec. 
1.16(f) if either the basic filing fee for a nonprovisional application 
or the inventor's oath or declaration was not present on the filing date 
accorded the resulting nonprovisional application (i.e., the filing date 
of the original provisional application). A request to convert a 
provisional application to a nonprovisional application must also be 
filed prior to the earliest of:
    (i) Abandonment of the provisional application filed under paragraph 
(c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under paragraph (c) of this section.
    (4) A provisional application is not entitled to the right of 
priority under 35 U.S.C. 119 or 365(a) orSec. 1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121, or 365(c) orSec. 
1.78 of any other application. No claim for priority under 35 U.S.C. 
119(e) orSec. 1.78(a) may be made in a design application based on a 
provisional application. The requirements of Sec.Sec. 1.821 through 
1.825 regarding application disclosures containing nucleotide and/or 
amino acid sequences are not mandatory for provisional applications.
    (d) Application filing requirements--Continued prosecution 
(nonprovisional) application. (1) A continuation or divisional 
application (but not a continuation-in-part) of a prior nonprovisional 
application may be filed as a continued prosecution application under 
this paragraph, provided that:
    (i) The application is for a design patent;
    (ii) The prior nonprovisional application is a design application 
that is complete as defined bySec. 1.51(b); and
    (iii) The application under this paragraph is filed before the 
earliest of:
    (A) Payment of the issue fee on the prior application, unless a 
petition underSec. 1.313(c) is granted in the prior application;
    (B) Abandonment of the prior application; or
    (C) Termination of proceedings on the prior application.
    (2) The filing date of a continued prosecution application is the 
date on which a request on a separate paper for an application under 
this paragraph is filed. An application filed under this paragraph:
    (i) Must identify the prior application;
    (ii) Discloses and claims only subject matter disclosed in the prior 
application;
    (iii) Names as inventors the same inventors named in the prior 
application on the date the application under this paragraph was filed, 
except as provided in paragraph (d)(4) of this section;
    (iv) Includes the request for an application under this paragraph, 
will utilize the file jacket and contents of the prior application, 
including the specification, drawings and the inventor's oath or 
declaration from the prior application, to constitute the new 
application, and will be assigned the application number of the prior 
application for identification purposes; and
    (v) Is a request to expressly abandon the prior application as of 
the filing date of the request for an application under this paragraph.
    (3) The filing fee, search fee, and examination fee for a continued 
prosecution application filed under this paragraph are the basic filing 
fee as set forth inSec. 1.16(b), the search fee as set forth inSec. 
1.16(l), and the examination fee as set forth inSec. 1.16(p).
    (4) An application filed under this paragraph may be filed by fewer 
than all the inventors named in the prior application, provided that the 
request for an application under this paragraph when filed is 
accompanied by a statement requesting deletion of the name or names of 
the person or persons who are not inventors of the invention being 
claimed in the new application. No person may be named as an inventor in 
an application filed under this paragraph who was not named as an 
inventor in the prior application on the

[[Page 58]]

date the application under this paragraph was filed, except by way of 
correction of inventorship underSec. 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 
withSec. 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 ofSec. 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) SeeSec. 1.103(b) for requesting a limited suspension of action 
in an application filed under this paragraph.
    (e) Failure to meet filing date requirements. (1) If an application 
deposited under paragraph (b), (c), or (d) of this section does not meet 
the requirements of such paragraph to be entitled to a filing date, 
applicant will be so notified, if a correspondence address has been 
provided, and given a period of time within which to correct the filing 
error. If, however, a request for an application under paragraph (d) of 
this section does not meet the requirements of that paragraph because 
the application in which the request was filed is not a design 
application, and if the application in which the request was filed was 
itself filed on or after June 8, 1995, the request for an application 
under paragraph (d) of this section will be treated as a request for 
continued examination underSec. 1.114.
    (2) Any request for review of a notification pursuant to paragraph 
(e)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by way 
of a petition pursuant to this paragraph accompanied by the fee set 
forth inSec. 1.17(f). In the absence of a timely (Sec.  1.181(f)) 
petition pursuant to this paragraph, the filing date of an application 
in which the applicant was notified of a filing error pursuant to 
paragraph (e)(1) of this section will be the date the filing error is 
corrected.
    (3) If an applicant is notified of a filing error pursuant to 
paragraph (e)(1) of this section, but fails to correct the filing error 
within the given time period or otherwise timely (Sec.  1.181(f)) take 
action pursuant to this paragraph, proceedings in the application will 
be considered terminated. Where proceedings in an application are 
terminated pursuant to this paragraph, the application may be disposed 
of, and any filing fees, less the handling fee set forth inSec. 
1.21(n), will be refunded.
    (f) Completion of application subsequent to filing--Nonprovisional 
(including continued prosecution or reissue) application.
    (1) If an application which has been accorded a filing date pursuant 
to paragraph (b) or (d) of this section does not include the basic 
filing fee, the search fee, or the examination fee, or if an application 
which has been accorded a filing date pursuant to paragraph (b) of this 
section does not include the inventor's oath or declaration (Sec.  1.63, 
Sec.  1.64,Sec. 1.162 orSec. 1.175), and the applicant has provided 
a correspondence address (Sec.  1.33(a)), the applicant will be notified 
and given a period of time within

[[Page 59]]

which to pay the basic filing fee, search fee, and examination fee, and 
pay the surcharge if required bySec. 1.16(f) to avoid abandonment.
    (2) If an application which has been accorded a filing date pursuant 
to paragraph (b) of this section does not include the basic filing fee, 
the search fee, the examination fee, or the inventor's oath or 
declaration, and the applicant has not provided a correspondence address 
(Sec.  1.33(a)), the applicant has two months from the filing date of 
the application within which to pay the basic filing fee, search fee, 
and examination fee, and pay the surcharge required bySec. 1.16(f) to 
avoid abandonment.
    (3) The inventor's oath or declaration in an application underSec. 
1.53(b) must also be filed within the period specified in paragraph 
(f)(1) or (f)(2) of this section, except that the filing of the 
inventor's oath or declaration may be postponed until the application is 
otherwise in condition for allowance under the conditions specified in 
paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
    (i) The application must be an original (non-reissue) application 
that contains an application data sheet in accordance withSec. 1.76 
identifying:
    (A) Each inventor by his or her legal name;
    (B) A mailing address where the inventor customarily receives mail, 
and residence, if an inventor lives at a location which is different 
from where the inventor customarily receives mail, for each inventor.
    (ii) The applicant must file an oath or declaration in compliance 
withSec. 1.63, or a substitute statement in compliance withSec. 
1.64, executed by or with respect to each actual inventor no later than 
the expiration of the time period set in the ``Notice of Allowability'' 
to avoid abandonment, when the applicant is notified in a ``Notice of 
Allowability'' that an application is otherwise in condition for 
allowance. The time period set in a ``Notice of Allowability'' is not 
extendable. SeeSec. 1.136(c). The Office may dispense with the notice 
provided for in paragraph (f)(1) of this section if an oath or 
declaration underSec. 1.63, or a substitute statement underSec. 
1.64, executed by or with respect to each actual inventor has been filed 
before the application is in condition for allowance.
    (4) If the excess claims fees required bySec. 1.16(h) and (i) and 
multiple dependent claim fee required bySec. 1.16(j) are not paid on 
filing or on later presentation of the claims for which the excess 
claims or multiple dependent claim fees are due, the fees required by 
Sec.  1.16(h), (i) and (j) must be paid or the claims canceled by 
amendment prior to the expiration of the time period set for reply by 
the Office in any notice of fee deficiency. If the application size fee 
required bySec. 1.16(s) (if any) is not paid on filing or on later 
presentation of the amendment necessitating a fee or additional fee 
underSec. 1.16(s), the fee required bySec. 1.16(s) must be paid 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency in order to avoid abandonment.
    (5) This paragraph applies to continuation or divisional 
applications under paragraphs (b) or (d) of this section and to 
continuation-in-part applications under paragraph (b) of this section. 
SeeSec. 1.63(d) concerning the submission of a copy of the inventor's 
oath or declaration from the prior application for a continuing 
application under paragraph (b) of this section.
    (6) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
    (g) Completion of application subsequent to filing--Provisional 
application. (1) If a provisional application which has been accorded a 
filing date pursuant to paragraph (c) of this section does not include 
the cover sheet required bySec. 1.51(c)(1) or the basic filing fee 
(Sec.  1.16(d)), and applicant has provided a correspondence address 
(Sec.  1.33(a)), applicant will be notified and given a period of time 
within which to pay the basic filing fee, file a cover sheet (Sec.  
1.51(c)(1)), and pay the surcharge required bySec. 1.16(g) to avoid 
abandonment.
    (2) If a provisional application which has been accorded a filing 
date pursuant to paragraph (c) of this section does not include the 
cover sheet required bySec. 1.51(c)(1) or the basic filing fee (Sec.  
1.16(d)), and applicant has not provided a correspondence address

[[Page 60]]

(Sec.  1.33(a)), applicant has two months from the filing date of the 
application within which to pay the basic filing fee, file a cover sheet 
(Sec.  1.51(c)(1)), and pay the surcharge required bySec. 1.16(g) to 
avoid abandonment.
    (3) If the application size fee required bySec. 1.16(s) (if any) 
is not paid on filing, the fee required bySec. 1.16(s) must be paid 
prior to the expiration of the time period set for reply by the Office 
in any notice of fee deficiency in order to avoid abandonment.
    (4) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
    (h) Subsequent treatment of application--Nonprovisional (including 
continued prosecution) application. An application for a patent filed 
under paragraphs (b) or (d) of this section will not be placed on the 
files for examination until all its required parts, complying with the 
rules relating thereto, are received, except that the inventor's oath or 
declaration may be filed when the application is otherwise in condition 
for allowance pursuant to paragraph (f)(3) of this section and 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).

[62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998; 65 
FR 14871, Mar. 20, 2000; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, Sept. 
8, 2000; 65 FR 78960, Dec. 18, 2000; 68 FR 14336, Mar. 25, 2003; 68 FR 
32380, May 30, 2003; 69 FR 29878, May 26, 2004; 69 FR 56539, Sept. 21, 
2004; 70 FR 3890, Jan. 27, 2005; 70 FR 30365, May 26, 2005; 72 FR 46836, 
Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48817, Aug. 14, 2012; 
78 FR 11053, Feb. 14, 2013]



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. SeeSec. 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 
underSec. 1.53(d).

[62 FR 53188, Oct. 10, 1997]



Sec.  1.55  Claim for foreign priority.

    (a) In general. An applicant in a nonprovisional application may 
claim priority to one or more prior foreign applications under the 
conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 
365(a) and (b) and this section.
    (b) Time for filing subsequent application. The nonprovisional 
application must be filed not later than twelve months (six months in 
the case of a design application) after the date on which the foreign 
application was filed, or be entitled to claim the benefit under 35 
U.S.C. 120, 121, or 365(c) of an application that was filed not later 
than twelve months (six months in the case of a design application) 
after the date on which the foreign application was filed. The twelve-
month period is subject to 35 U.S.C. 21(b) (andSec. 1.7(a)) and PCT 
Rule 80.5, and the six-month period is subject to 35 U.S.C. 21(b) (and 
Sec.  1.7(a)).
    (c) Time for filing priority claim and certified copy of foreign 
application in an application entering the national stage under 35 
U.S.C. 371. In an international application entering the national stage 
under 35 U.S.C. 371, the claim for priority must be made and a certified 
copy of the foreign application must be filed within the time limit set 
forth in the PCT and the Regulations under the PCT.
    (d) Time for filing priority claim in an application filed under 35 
U.S.C. 111(a). In an original application filed under 35 U.S.C. 111(a), 
the claim for priority must be filed within the later of four months 
from the actual filing date of the application or sixteen months from 
the filing date of the prior foreign application. The claim for priority 
must be presented in an application data sheet (Sec.  1.76(b)(6)), and 
must identify the foreign application for which priority is claimed, by 
specifying the application number, country (or intellectual property 
authority), day, month,

[[Page 61]]

and year of its filing. The time period in this paragraph does not apply 
in a design application.
    (e) Delayed priority claim in an application filed under 35 U.S.C. 
111(a). Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a) through 
(d) or (f) or 365(a) in an original application filed under 35 U.S.C. 
111(a) not presented in an application data sheet (Sec.  1.76(b)(6)) 
within the time period provided by paragraph (d) of this section is 
considered to have been waived. If a claim for priority is presented 
after the time period provided by paragraph (d) of this section, the 
claim may be accepted if the priority claim was unintentionally delayed. 
A petition to accept a delayed claim for priority under 35 U.S.C. 119(a) 
through (d) or (f) or 365(a) must be accompanied by:
    (1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) or 
365(a) in an application data sheet (Sec.  1.76(b)(6)), identifying the 
foreign application for which priority is claimed, by specifying the 
application number, country (or intellectual property authority), day, 
month, and year of its filing, unless previously submitted;
    (2) A certified copy of the foreign application if required by 
paragraph (f) of this section, unless previously submitted;
    (3) The surcharge set forth inSec. 1.17(t); and
    (4) A statement that the entire delay between the date the priority 
claim was due under paragraph (d) of this section and the date the 
priority claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (f) Time for filing certified copy of foreign application in an 
application filed under 35 U.S.C. 111(a). In an original application 
filed under 35 U.S.C. 111(a), a certified copy of the foreign 
application must be filed within the later of four months from the 
actual filing date of the application or sixteen months from the filing 
date of the prior foreign application, except as provided in paragraphs 
(h) and (i) of this section. If a certified copy of the foreign 
application is not filed within the later of four months from the actual 
filing date of the application or sixteen months from the filing date of 
the prior foreign application, and the exceptions in paragraphs (h) and 
(i) of this section are not applicable, the certified copy of the 
foreign application must be accompanied by a petition including a 
showing of good and sufficient cause for the delay and the petition fee 
set forth inSec. 1.17(g). The time period in this paragraph does not 
apply in a design application.
    (g) Requirement for filing priority claim, certified copy of foreign 
application, and translation in any application. (1) The claim for 
priority and the certified copy of the foreign application specified in 
35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the 
pendency of the application and 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 also be accompanied 
by the processing fee set forth inSec. 1.17(i), but the patent will 
not include the priority claim unless corrected by a certificate of 
correction under 35 U.S.C. 255 andSec. 1.323.
    (2) The Office may require that the claim for priority and the 
certified copy of the foreign application be filed earlier than 
otherwise provided in this section:
    (i) When the application is involved in an interference (seeSec. 
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When deemed necessary by the examiner.
    (3) An English language translation of a non-English language 
foreign application is not required except:
    (i) When the application is involved in an interference (seeSec. 
41.202 of this title) or derivation (see part 42 of this title) 
proceeding;
    (ii) When necessary to overcome the date of a reference relied upon 
by the examiner; or
    (iii) When specifically required by the examiner.
    (4) If an English language translation of a non-English language 
foreign application is required, it must be filed

[[Page 62]]

together with a statement that the translation of the certified copy is 
accurate.
    (h) Foreign intellectual property office participating in a priority 
document exchange agreement. The requirement in paragraphs (c), (f), and 
(g) of this section for a certified copy of the foreign application to 
be filed within the time limit set forth therein will be considered 
satisfied if:
    (1) The foreign application was filed in a foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating foreign 
intellectual property office), or a copy of the foreign application was 
filed in an application subsequently filed in a participating foreign 
intellectual property office that permits the Office to obtain such a 
copy;
    (2) The claim for priority is presented in an application data sheet 
(Sec.  1.76(b)(6)), identifying the foreign application for which 
priority is claimed, by specifying the application number, country (or 
intellectual property authority), day, month, and year of its filing, 
and the applicant provides the information necessary for the 
participating foreign intellectual property office to provide the Office 
with access to the foreign application;
    (3) The copy of the foreign application is received by the Office 
from the participating foreign intellectual property office, or a 
certified copy of the foreign application is filed, within the period 
specified in paragraph (g)(1) of this section; and
    (4) The applicant files a request in a separate document that the 
Office obtain a copy of the foreign application from a participating 
intellectual property office that permits the Office to obtain such a 
copy if the foreign application was not filed in a participating foreign 
intellectual property office but a copy of the foreign application was 
filed in an application subsequently filed in a participating foreign 
intellectual property office that permits the Office to obtain such a 
copy. The request must identify the participating intellectual property 
office and the subsequent application by the application number, day, 
month, and year of its filing in which a copy of the foreign application 
was filed. The request must be filed within the later of sixteen months 
from the filing date of the prior foreign application or four months 
from the actual filing date of an application under 35 U.S.C. 111(a), 
within four months from the later of the date of commencement (Sec.  
1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in 
an application entering the national stage under 35 U.S.C. 371, or with 
a petition under paragraph (e) of this section.
    (i) Interim copy. The requirement in paragraph (f) of this section 
for a certified copy of the foreign application to be filed within the 
time limit set forth therein will be considered satisfied if:
    (1) A copy of the original foreign application clearly labeled as 
``Interim Copy,'' including the specification, and any drawings or 
claims upon which it is based, is filed in the Office together with a 
separate cover sheet identifying the foreign application by specifying 
the application number, country (or intellectual property authority), 
day, month, and year of its filing, and stating that the copy filed in 
the Office is a true copy of the original application as filed in the 
foreign country (or intellectual property authority);
    (2) The copy of the foreign application and separate cover sheet is 
filed within the later of sixteen months from the filing date of the 
prior foreign application or four months from the actual filing date of 
an application under 35 U.S.C. 111(a), or with a petition under 
paragraph (e) of this section; and
    (3) A certified copy of the foreign application is filed within the 
period specified in paragraph (g)(1) of this section.
    (j) Requirements for certain applications filed on or after March 
16, 2013. If a nonprovisional application filed on or after March 16, 
2013, claims priority to a foreign application filed prior to March 16, 
2013, and also contains, or contained at any time, a claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
the applicant must provide a statement to that effect within the later 
of four months from the actual filing date of the nonprovisional 
application, four months from the date of entry into the

[[Page 63]]

national stage as set forth inSec. 1.491 in an international 
application, sixteen months from the filing date of the prior-filed 
foreign application, or the date that a first claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
is presented in the nonprovisional application. An applicant is not 
required to provide such a statement if the applicant reasonably 
believes on the basis of information already known to the individuals 
designated inSec. 1.56(c) that the nonprovisional application does 
not, and did not at any time, contain a claim to a claimed invention 
that has an effective filing date on or after March 16, 2013.
    (k) Inventor's certificates. 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 this section, must 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.
    (l) Time periods not extendable. The time periods set forth in this 
section are not extendable.

[78 FR 16182, Mar. 14, 2013]



Sec.  1.56  Duty to disclose information material to patentability.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective patent 
examination occurs when, at the time an application is being examined, 
the Office is aware of and evaluates the teachings of all information 
material to patentability. Each individual associated with the filing 
and prosecution of a patent application has a duty of candor and good 
faith in dealing with the Office, which includes a duty to disclose to 
the Office all information known to that individual to be material to 
patentability as defined in this section. The duty to disclose 
information exists with respect to each pending claim until the claim is 
cancelled or withdrawn from consideration, or the application becomes 
abandoned. Information material to the patentability of a claim that is 
cancelled or withdrawn from consideration need not be submitted if the 
information is not material to the patentability of any claim remaining 
under consideration in the application. There is no duty to submit 
information which is not material to the patentability of any existing 
claim. The duty to disclose all information known to be material to 
patentability is deemed to be satisfied if all information known to be 
material to patentability of any claim issued in a patent was cited by 
the Office or submitted to the Office in the manner prescribed by 
Sec.Sec. 1.97(b)-(d) and 1.98. However, no patent will be granted on 
an application in connection with which fraud on the Office was 
practiced or attempted or the duty of disclosure was violated through 
bad faith or intentional misconduct. The Office encourages applicants to 
carefully examine:
    (1) Prior art cited in search reports of a foreign patent office in 
a counterpart application, and
    (2) The closest information over which individuals associated with 
the filing or prosecution of a patent application believe any pending 
claim patentably defines, to make sure that any material information 
contained therein is disclosed to the Office.
    (b) Under this section, information is material to patentability 
when it is not cumulative to information already of record or being made 
of record in the application, and
    (1) It establishes, by itself or in combination with other 
information, a prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the applicant 
takes in:

[[Page 64]]

    (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, the applicant, an assignee, or anyone to whom there is an 
obligation to assign the application.
    (d) Individuals other than the attorney, agent or inventor may 
comply with this section by disclosing information to the attorney, 
agent, or inventor.
    (e) In any continuation-in-part application, the duty under this 
section includes the duty to disclose to the Office all information 
known to the person to be material to patentability, as defined in 
paragraph (b) of this section, which became available between the filing 
date of the prior application and the national or PCT international 
filing date of the continuation-in-part application.

[57 FR 2034, Jan. 17, 1992, as amended at 65 FR 54666, Sept. 8, 2000; 77 
FR 48818, Aug. 14, 2012]



Sec.  1.57  Incorporation by reference.

    (a) Subject to the conditions and requirements of this paragraph, if 
all or a portion of the specification or drawing(s) is inadvertently 
omitted from an application, but the application contains a claim under 
Sec.  1.55 for priority of a prior-filed foreign application, or a claim 
underSec. 1.78 for the benefit of a prior-filed provisional, 
nonprovisional, or international application, that was present on the 
filing date of the application, and the inadvertently omitted portion of 
the specification or drawing(s) is completely contained in the prior-
filed application, the claim underSec. 1.55 orSec. 1.78 shall also 
be considered an incorporation by reference of the prior-filed 
application as to the inadvertently omitted portion of the specification 
or drawing(s).
    (1) The application must be amended to include the inadvertently 
omitted portion of the specification or drawing(s) within any time 
period set by the Office, but in no case later than the close of 
prosecution as defined bySec. 1.114(b), or abandonment of the 
application, whichever occurs earlier. The applicant is also required 
to:
    (i) Supply a copy of the prior-filed application, except where the 
prior-filed application is an application filed under 35 U.S.C. 111;
    (ii) Supply an English language translation of any prior-filed 
application that is in a language other than English; and
    (iii) Identify where the inadvertently omitted portion of the 
specification or drawings can be found in the prior-filed application.
    (2) Any amendment to an international application pursuant to this 
paragraph shall be effective only as to the United States, and shall 
have no effect on the international filing date of the application. In 
addition, no request under this section to add the inadvertently omitted 
portion of the specification or drawings in an international application 
designating the United States will be acted upon by the Office prior to 
the entry and commencement of the national stage (Sec.  1.491) or the 
filing of an application under 35 U.S.C. 111(a) which claims benefit of 
the international application. Any omitted portion of the international 
application which applicant desires to be effective as to all designated 
States, subject to PCT Rule 20.8(b), must be submitted in accordance 
with PCT Rule 20.
    (3) If an application is not otherwise entitled to a filing date 
underSec. 1.53(b),

[[Page 65]]

the amendment must be by way of a petition pursuant to this paragraph 
accompanied by the fee set forth inSec. 1.17(f).
    (b) Except as provided in paragraph (a) of this section, an 
incorporation by reference must be set forth in the specification and 
must:
    (1) Express a clear intent to incorporate by reference by using the 
root words ``incorporat(e)'' and ``reference'' (e.g., ``incorporate by 
reference''); and
    (2) Clearly identify the referenced patent, application, or 
publication.
    (c) ``Essential material'' may be incorporated by reference, but 
only by way of an incorporation by reference to a U.S. patent or U.S. 
patent application publication, which patent or patent application 
publication does not itself incorporate such essential material by 
reference. ``Essential material'' is material that is necessary to:
    (1) Provide a written description of the claimed invention, and of 
the manner and process of making and using it, in such full, clear, 
concise, and exact terms as to enable any person skilled in the art to 
which it pertains, or with which it is most nearly connected, to make 
and use the same, and set forth the best mode contemplated by the 
inventor of carrying out the invention as required by 35 U.S.C. 112(a);
    (2) Describe the claimed invention in terms that particularly point 
out and distinctly claim the invention as required by 35 U.S.C. 112(b); 
or
    (3) Describe the structure, material, or acts that correspond to a 
claimed means or step for performing a specified function as required by 
35 U.S.C. 112(f).
    (d) Other material (``Nonessential material'') may be incorporated 
by reference to U.S. patents, U.S. patent application publications, 
foreign patents, foreign published applications, prior and concurrently 
filed commonly owned U.S. applications, or non-patent publications. An 
incorporation by reference by hyperlink or other form of browser 
executable code is not permitted.
    (e) The examiner may require the applicant to supply a copy of the 
material incorporated by reference. If the Office requires the applicant 
to supply a copy of material incorporated by reference, the material 
must be accompanied by a statement that the copy supplied consists of 
the same material incorporated by reference in the referencing 
application.
    (f) Any insertion of material incorporated by reference into the 
specification or drawings of an application must be by way of an 
amendment to the specification or drawings. Such an amendment must be 
accompanied by a statement that the material being inserted is the 
material previously incorporated by reference and that the amendment 
contains no new matter.
    (g) An incorporation of material by reference that does not comply 
with paragraphs (b), (c), or (d) of this section is not effective to 
incorporate such material unless corrected within any time period set by 
the Office, but in no case later than the close of prosecution as 
defined bySec. 1.114(b), or abandonment of the application, whichever 
occurs earlier. In addition:
    (1) A correction to comply with paragraph (b)(1) of this section is 
permitted only if the application as filed clearly conveys an intent to 
incorporate the material by reference. A mere reference to material does 
not convey an intent to incorporate the material by reference.
    (2) A correction to comply with paragraph (b)(2) of this section is 
only permitted for material that was sufficiently described to uniquely 
identify the document.

[69 FR 56539, Sept. 21, 2004, as amended at 72 FR 51563, Sept. 10, 2007; 
77 FR 46624, Aug. 6, 2012]



Sec.  1.58  Chemical and mathematical formulae and tables.

    (a) The specification, including the claims, may contain chemical 
and mathematical formulae, but shall not contain drawings or flow 
diagrams. The description portion of the specification may contain 
tables, but the same tables may only be included in both the drawings 
and description portion of the specification if the application was 
filed under 35 U.S.C. 371. Claims may contain tables either if necessary 
to conform to 35 U.S.C. 112 or if otherwise found to be desirable.
    (b) Tables that are submitted in electronic form (Sec.Sec. 1.96(c) 
and 1.821(c)) must

[[Page 66]]

maintain the spatial relationships (e.g., alignment of columns and rows) 
of the table elements when displayed so as to visually preserve the 
relational information they convey. Chemical and mathematical formulae 
must be encoded to maintain the proper positioning of their characters 
when displayed in order to preserve their intended meaning.
    (c) Chemical and mathematical formulae and tables must be presented 
in compliance withSec. 1.52(a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape orientation 
if they cannot be presented satisfactorily in a portrait orientation. 
Typewritten characters used in such formulae and tables must be chosen 
from a block (nonscript) type font or lettering style having capital 
letters which should be at least 0.422 cm. (0.166 inch) high (e.g., 
preferably Arial, Times Roman, or Courier with a font size of 12), but 
may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 
6). A space at least 0.64 cm. (1/4 inch) high should be provided between 
complex formulae and tables and the text. Tables should have the lines 
and columns of data closely spaced to conserve space, consistent with a 
high degree of legibility.

[69 FR 56540, Sept. 21, 2004]



Sec.  1.59  Expungement of information or copy of papers in application
file.

    (a) (1) Information in an application will not be expunged, except 
as provided in paragraph (b) of this section orSec. 41.7(a) orSec. 
42.7(a) of this title.
    (2) Information forming part of the original disclosure (i.e., 
written specification including the claims, drawings, and any 
preliminary amendment present on the filing date of the application) 
will not be expunged from the application file.
    (b) An applicant may request that the Office expunge information, 
other than what is excluded by paragraph (a)(2) of this section, by 
filing a petition under this paragraph. Any petition to expunge 
information from an application must include the fee set forth inSec. 
1.17(g) and establish to the satisfaction of the Director that the 
expungement of the information is appropriate in which case a notice 
granting the petition for expungement will be provided.
    (c) Upon request by an applicant and payment of the fee specified in 
Sec.  1.19(b), the Office will furnish copies of an application, unless 
the application has been disposed of (see Sec.Sec. 1.53(e), (f) and 
(g)). The Office cannot provide or certify copies of an application that 
has been disposed of.

[68 FR 38628, June 30, 2003, as amended at 69 FR 49999, Aug. 12, 2004; 
69 FR 56540, Sept. 21, 2004; 77 FR 46624, Aug. 6, 2012; 77 FR 48818, 
Aug. 14, 2012]



Sec.Sec. 1.60-1.62  [Reserved]

                           Oath or Declaration



Sec.  1.63  Inventor's oath or declaration.

    (a) The inventor, or each individual who is a joint inventor of a 
claimed invention, in an application for patent must execute an oath or 
declaration directed to the application, except as provided for inSec. 
1.64. An oath or declaration under this section must:
    (1) Identify the inventor or joint inventor executing the oath or 
declaration by his or her legal name;
    (2) Identify the application to which it is directed;
    (3) Include a statement that the person executing the oath or 
declaration believes the named inventor or joint inventor to be the 
original inventor or an original joint inventor of a claimed invention 
in the application for which the oath or declaration is being submitted; 
and
    (4) State that the application was made or was authorized to be made 
by the person executing the oath or declaration.
    (b) Unless the following information is supplied in an application 
data sheet in accordance withSec. 1.76, the oath or declaration must 
also identify:
    (1) Each inventor by his or her legal name; and
    (2) A mailing address where the inventor customarily receives mail, 
and residence, if an inventor lives at a location which is different 
from where the inventor customarily receives mail, for each inventor.
    (c) A person may not execute an oath or declaration for an 
application unless that person has reviewed and understands the contents 
of the application,

[[Page 67]]

including the claims, and is aware of the duty to disclose to the Office 
all information known to the person to be material to patentability as 
defined inSec. 1.56. There is no minimum age for a person to be 
qualified to execute an oath or declaration, but the person must be 
competent to execute, i.e., understand, the document that the person is 
executing.
    (d)(1) A newly executed oath or declaration underSec. 1.63, or 
substitute statement underSec. 1.64, is not required underSec. 
1.51(b)(2) andSec. 1.53(f) orSec. 1.497 for an inventor in a 
continuing application that claims the benefit under 35 U.S.C. 120, 121, 
or 365(c) in compliance withSec. 1.78 of an earlier-filed application, 
provided that an oath or declaration in compliance with this section, or 
substitute statement underSec. 1.64, was executed by or with respect 
to such inventor and was filed in the earlier-filed application, and a 
copy of such oath, declaration, or substitute statement showing the 
signature or an indication thereon that it was executed, is submitted in 
the continuing application.
    (2) The inventorship of a continuing application filed under 35 
U.S.C. 111(a) is the inventor or joint inventors specified in the 
application data sheet filed before or concurrently with the copy of the 
inventor's oath or declaration from the earlier-filed application. If an 
application data sheet is not filed before or concurrently with the copy 
of the inventor's oath or declaration from the earlier-filed 
application, the inventorship is the inventorship set forth in the copy 
of the inventor's oath or declaration from the earlier-filed 
application, unless it is accompanied by a statement signed pursuant to 
Sec.  1.33(b) stating the name of each inventor in the continuing 
application.
    (3) Any new joint inventor named in the continuing application must 
provide an oath or declaration in compliance with this section, except 
as provided for inSec. 1.64.
    (e)(1) An assignment may also serve as an oath or declaration 
required by this section if the assignment as executed:
    (i) Includes the information and statements required under 
paragraphs (a) and (b) of this section; and
    (ii) A copy of the assignment is recorded as provided for in part 3 
of this chapter.
    (2) Any reference to an oath or declaration under this section 
includes an assignment as provided for in this paragraph.
    (f) With respect to an application naming only one inventor, any 
reference to the inventor's oath or declaration in this chapter includes 
a substitute statement executed underSec. 1.64. With respect to an 
application naming more than one inventor, any reference to the 
inventor's oath or declaration in this chapter means the oaths, 
declarations, or substitute statements that have been collectively 
executed by or with respect to all of the joint inventors, unless 
otherwise clear from the context.
    (g) An oath or declaration under this section, including the 
statement provided for in paragraph (e) of this section, must be 
executed (i.e., signed) in accordance either withSec. 1.66 or with an 
acknowledgment that any willful false statement made in such declaration 
or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment 
of not more than five (5) years, or both.
    (h) An oath or declaration filed at any time pursuant to 35 U.S.C. 
115(h)(1) will be placed in the file record of the application or 
patent, but may not necessarily be reviewed by the Office. Any request 
for correction of the named inventorship must comply withSec. 1.48 in 
an application andSec. 1.324 in a patent.

[77 FR 48818, Aug. 14, 2012]



Sec.  1.64  Substitute statement in lieu of an oath or declaration.

    (a) An applicant underSec. 1.43, 1.45 or 1.46 may execute a 
substitute statement in lieu of an oath or declaration underSec. 1.63 
if the inventor is deceased, is under a legal incapacity, has refused to 
execute the oath or declaration underSec. 1.63, or cannot be found or 
reached after diligent effort.
    (b) A substitute statement under this section must:
    (1) Comply with the requirements ofSec. 1.63(a), identifying the 
inventor or joint inventor with respect to whom a substitute statement 
in lieu of an oath or declaration is executed, and stating upon 
information and belief the facts

[[Page 68]]

which such inventor is required to state;
    (2) Identify the person executing the substitute statement and the 
relationship of such person to the inventor or joint inventor with 
respect to whom the substitute statement is executed, and unless such 
information is supplied in an application data sheet in accordance with 
Sec.  1.76, the residence and mailing address of the person signing the 
substitute statement;
    (3) Identify the circumstances permitting the person to execute the 
substitute statement in lieu of an oath or declaration underSec. 1.63, 
namely whether the inventor is deceased, is under a legal incapacity, 
cannot be found or reached after a diligent effort was made, or has 
refused to execute the oath or declaration underSec. 1.63; and
    (4) Unless the following information is supplied in an application 
data sheet in accordance withSec. 1.76, also identify:
    (i) Each inventor by his or her legal name; and
    (ii) The last known mailing address where the inventor customarily 
receives mail, and last known residence, if an inventor lives at a 
location which is different from where the inventor customarily receives 
mail, for each inventor who is not deceased or under a legal incapacity.
    (c) A person may not execute a substitute statement provided for in 
this section for an application unless that person has reviewed and 
understands the contents of the application, including the claims, and 
is aware of the duty to disclose to the Office all information known to 
the person to be material to patentability as defined inSec. 1.56.
    (d) Any reference to an inventor's oath or declaration includes a 
substitute statement provided for in this section.
    (e) A substitute statement under this section must contain an 
acknowledgment that any willful false statement made in such statement 
is punishable under section 1001 of title 18 by fine or imprisonment of 
not more than 5 years, or both.
    (f) A nonsigning inventor or legal representative may subsequently 
join in the application by submitting an oath or declaration underSec. 
1.63. The submission of an oath or declaration by a nonsigning inventor 
or legal representative in an application filed underSec. 1.43, 1.45 
or 1.46 will not permit the nonsigning inventor or legal representative 
to revoke or grant a power of attorney.

[77 FR 48819, Aug. 14, 2012]



Sec.  1.66  Statements under oath.

    An oath or affirmation may be made before any person within the 
United States authorized by law to administer oaths. An oath made in a 
foreign country may be made before any diplomatic or consular officer of 
the United States authorized to administer oaths, or before any officer 
having an official seal and authorized to administer oaths in the 
foreign country in which the applicant may be, whose authority shall be 
proved by a certificate of a diplomatic or consular officer of the 
United States, or by an apostille of an official designated by a foreign 
country which, by treaty or convention, accords like effect to 
apostilles of designated officials in the United States. The oath shall 
be attested in all cases in this and other countries, by the proper 
official seal of the officer before whom the oath or affirmation is 
made. Such oath or affirmation shall be valid as to execution if it 
complies with the laws of the State or country where made. When the 
person before whom the oath or affirmation is made in this country is 
not provided with a seal, his official character shall be established by 
competent evidence, as by a certificate from a clerk of a court of 
record or other proper officer having a seal.

[77 FR 48819, Aug. 14, 2012]



Sec.  1.67  Supplemental oath or declaration.

    (a) The applicant may submit an inventor's oath or declaration 
meeting the requirements ofSec. 1.63,Sec. 1.64, orSec. 1.162 to 
correct any deficiencies or inaccuracies present in an earlier-filed 
inventor's oath or declaration. Deficiencies or inaccuracies due to the 
failure to meet the requirements ofSec. 1.63(b) in an oath or 
declaration may be corrected with an application data sheet in 
accordance withSec. 1.76, except that any correction of inventorship 
must be pursuant toSec. 1.48.

[[Page 69]]

    (b) A supplemental inventor's oath or declaration under this section 
must be executed by the person whose inventor's oath or declaration is 
being withdrawn, replaced, or otherwise corrected.
    (c) The Office will not require a person who has executed an oath or 
declaration in compliance with 35 U.S.C. 115 andSec. 1.63 or 1.162 for 
an application to provide an additional inventor's oath or declaration 
for the application.
    (d) No new matter may be introduced into a nonprovisional 
application after its filing date even if an inventor's oath or 
declaration is filed to correct deficiencies or inaccuracies present in 
the earlier-filed inventor's oath or declaration.

[77 FR 48819, Aug. 14, 2012]



Sec.  1.68  Declaration in lieu of oath.

    Any document to be filed in the Patent and Trademark Office and 
which is required by any law, rule, or other regulation to be under oath 
may be subscribed to by a written declaration. Such declaration may be 
used in lieu of the oath otherwise required, if, and only if, the 
declarant is on the same document, warned that willful false statements 
and the like are punishable by fine or imprisonment, or both (18 U.S.C. 
1001) and may jeopardize the validity of the application or any patent 
issuing thereon. The declarant must set forth in the body of the 
declaration that all statements made of the declarant's own knowledge 
are true and that all statements made on information and belief are 
believed to be true.

[49 FR 48452, Dec. 12, 1984]



Sec.  1.69  Foreign language oaths and declarations.

    (a) Whenever an individual making an oath or declaration cannot 
understand English, the oath or declaration must be in a language that 
such individual can understand and shall state that such individual 
understands the content of any documents to which the oath or 
declaration relates.
    (b) Unless the text of any oath or declaration in a language other 
than English is in a form provided by the Patent and Trademark Office or 
in accordance with PCT Rule 4.17(iv), it must be accompanied by an 
English translation together with a statement that the translation is 
accurate, except that in the case of an oath or declaration filed under 
Sec.  1.63, the translation may be filed in the Office no later than two 
months from the date applicant is notified to file the translation.

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

[42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62 
FR 53189, Oct. 10, 1997; 69 FR 56540, Sept. 21, 2004; 70 FR 3890, Jan. 
27, 2005]



Sec.  1.70  [Reserved]

                              Specification

    Authority: Secs. 1.71 to 1.79 also issued under 35 U.S.C. 112.



Sec.  1.71  Detailed description and specification of the invention.

    (a) The specification must include a written description of the 
invention or discovery and of the manner and process of making and using 
the same, and is required to be in such full, clear, concise, and exact 
terms as to enable any person skilled in the art or science to which the 
invention or discovery appertains, or with which it is most nearly 
connected, to make and use the same.
    (b) The specification must set forth the precise invention for which 
a patent is solicited, in such manner as to distinguish it from other 
inventions and from what is old. It must describe completely a specific 
embodiment of the process, machine, manufacture, composition of matter 
or improvement invented, and must explain the mode of operation or 
principle whenever applicable. The best mode contemplated by the 
inventor of carrying out his invention must be set forth.
    (c) In the case of an improvement, the specification must 
particularly point out the part or parts of the process, machine, 
manufacture, or composition of matter to which the improvement relates, 
and the description should be confined to the specific improvement and 
to such parts as necessarily cooperate with it or as may be necessary to 
a complete understanding or description of it.

[[Page 70]]

    (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, seeSec. 
1.84(s). The content of the notice must be limited to only those 
elements provided for by law. For example, ``(copyright) 1983 
John Doe'' (17 U.S.C. 401) and `` *M* John Doe'' (17 U.S.C. 909) would 
be properly limited and, under current statutes, legally sufficient 
notices of copyright and mask work, respectively. Inclusion of a 
copyright or mask work notice will be permitted only if the 
authorization language set forth in paragraph (e) of this section is 
included at the beginning (preferably as the first paragraph) of the 
specification.
    (e) The authorization shall read as follows:

    A portion of the disclosure of this patent document contains 
material which is subject to (copyright or mask work) protection. The 
(copyright or mask work) owner has no objection to the facsimile 
reproduction by anyone of the patent document or the patent disclosure, 
as it appears in the Patent and Trademark Office patent file or records, 
but otherwise reserves all (copyright or mask work) rights whatsoever.

    (f) The specification must commence on a separate sheet. Each sheet 
including part of the specification may not include other parts of the 
application or other information. The claim(s), abstract and sequence 
listing (if any) should not be included on a sheet including any other 
part of the application.
    (g)(1) The specification may disclose or be amended to disclose the 
names of the parties to a joint research agreement as defined inSec. 
1.9(e).
    (2) An amendment under paragraph (g)(1) of this section must be 
accompanied by the processing fee set forth inSec. 1.17(i) if not 
filed within one of the following time periods:
    (i) Within three months of the filing date of a national 
application;
    (ii) Within three months of the date of entry of the national stage 
as set forth inSec. 1.491 in an international application;
    (iii) Before the mailing of a first Office action on the merits; or
    (iv) Before the mailing of a first Office action after the filing of 
a request for continued examination underSec. 1.114.
    (3) If an amendment under paragraph (g)(1) of this section is filed 
after the date the issue fee is paid, the patent as issued may not 
necessarily include the names of the parties to the joint research 
agreement. If the patent as issued does not include the names of the 
parties to the joint research agreement, the patent must be corrected to 
include the names of the parties to the joint research agreement by a 
certificate of correction under 35 U.S.C. 255 andSec. 1.323 for the 
amendment to be effective.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988; 
58 FR 38723, July 20, 1993; 68 FR 38628, June 30, 2003; 70 FR 1823, Jan. 
11, 2005; 70 FR 54266, Sept. 14, 2005; 78 FR 11055, Feb. 14, 2013]



Sec.  1.72  Title and abstract.

    (a) The title of the invention may not exceed 500 characters in 
length and must be as short and specific as possible. Characters that 
cannot be captured and recorded in the Office's automated information 
systems may not be reflected in the Office's records in such systems or 
in documents created by the Office. Unless the title is supplied in an 
application data sheet (Sec.  1.76), the title of the invention should 
appear as a heading on the first page of the specification.
    (b) A brief abstract of the technical disclosure in the 
specification must commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract'' or ``Abstract of the 
Disclosure.'' The sheet or sheets presenting the abstract may not 
include other parts of the application or other material. The abstract 
in an application filed under 35 U.S.C. 111 may not exceed 150 words in 
length. The purpose of the abstract is to enable the United States 
Patent and Trademark Office and the public generally to determine 
quickly from a cursory inspection the

[[Page 71]]

nature and gist of the technical disclosure.

[65 FR 54667, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000; 
68 FR 38628, June 30, 2003]



Sec.  1.73  Summary of the invention.

    A brief summary of the invention indicating its nature and 
substance, which may include a statement of the object of the invention, 
should precede the detailed description. Such summary should, when set 
forth, be commensurate with the invention as claimed and any object 
recited should be that of the invention as claimed.



Sec.  1.74  Reference to drawings.

    When there are drawings, there shall be a brief description of the 
several views of the drawings and the detailed description of the 
invention shall refer to the different views by specifying the numbers 
of the figures and to the different parts by use of reference letters or 
numerals (preferably the latter).



Sec.  1.75  Claim(s).

    (a) The specification must conclude with a claim particularly 
pointing out and distinctly claiming the subject matter which the 
applicant regards as his invention or discovery.
    (b) More than one claim may be presented provided they differ 
substantially from each other and are not unduly multiplied.
    (c) One or more claims may be presented in dependent form, referring 
back to and further limiting another claim or claims in the same 
application. Any dependent claim which refers to more than one other 
claim (``multiple dependent claim'') shall refer to such other claims in 
the alternative only. A multiple dependent claim shall not serve as a 
basis for any other multiple dependent claim. For fee calculation 
purposes underSec. 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 inSec. 1.16(j). Claims in dependent form 
shall be construed to include all the limitations of the claim 
incorporated by reference into the dependent claim. A multiple dependent 
claim shall be construed to incorporate by reference all the limitations 
of each of the particular claims in relation to which it is being 
considered.
    (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. (SeeSec. 1.58(a).)
    (2) See Sec.Sec. 1.141 to 1.146 as to claiming different 
inventions in one application.
    (e) Where the nature of the case admits, as in the case of an 
improvement, any independent claim should contain in the following 
order:
    (1) A preamble comprising a general description of all the elements 
or steps of the claimed combination which are conventional or known,
    (2) A phrase such as ``wherein the improvement comprises,'' and
    (3) Those elements, steps and/or relationships which constitute that 
portion of the claimed combination which the applicant considers as the 
new or improved portion.
    (f) If there are several claims, they shall be numbered 
consecutively in Arabic numerals.
    (g) The least restrictive claim should be presented as claim number 
1, and all dependent claims should be grouped together with the claim or 
claims to which they refer to the extent practicable.
    (h) The claim or claims must commence on a separate physical sheet 
or electronic page. Any sheet including a claim or portion of a claim 
may not contain any other parts of the application or other material.

[[Page 72]]

    (i) Where a claim sets forth a plurality of elements or steps, each 
element or step of the claim should be separated by a line indentation.

(35 U.S.C. 6; 15 U.S.C. 1113, 1126)

[31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37 
FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 
17, 1982; 61 FR 42803, Aug. 19, 1996; 68 FR 38628, June 30, 2003; 70 FR 
3891, Jan. 27, 2005; 72 FR 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 
2009]



Sec.  1.76  Application data sheet.

    (a) Application data sheet: An application data sheet is a sheet or 
sheets, that may be submitted in a provisional application under 35 
U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), or a 
national stage application under 35 U.S.C. 371, and must be submitted 
when required bySec. 1.55 or 1.78 to claim priority to or the benefit 
of a prior-filed application under 35 U.S.C. 119, 120, 121, or 365. An 
application data sheet must be titled ``Application Data Sheet.'' An 
application data sheet must contain all of the section headings listed 
in paragraph (b) of this section, except as provided in paragraph (c)(2) 
of this section, with any appropriate data for each section heading. If 
an application data sheet is provided, the application data sheet is 
part of the application for which it has been submitted.
    (b) Bibliographic data. Bibliographic data as used in paragraph (a) 
of this section includes:
    (1) Inventor information. This information includes the legal name, 
residence, and mailing address of the inventor or each joint inventor.
    (2) Correspondence information. This information includes the 
correspondence address, which may be indicated by reference to a 
customer number, to which correspondence is to be directed (seeSec. 
1.33(a)).
    (3) Application information. This information includes the title of 
the invention, the total number of drawing sheets, a suggested drawing 
figure for publication (in a nonprovisional application), any docket 
number assigned to the application, the type of application (e.g., 
utility, plant, design, reissue, provisional), whether the application 
discloses any significant part of the subject matter of an application 
under a secrecy order pursuant toSec. 5.2 of this chapter (seeSec. 
5.2(c)), and, for plant applications, the Latin name of the genus and 
species of the plant claimed, as well as the variety denomination.
    (4) Representative information. This information includes the 
registration number of each practitioner having a power of attorney in 
the application (preferably by reference to a customer number). 
Providing this information in the application data sheet does not 
constitute a power of attorney in the application (seeSec. 1.32).
    (5) Domestic benefit information. This information includes the 
application number, the filing date, the status (including patent number 
if available), and relationship of each application for which a benefit 
is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this 
information in the application data sheet constitutes the specific 
reference required by 35 U.S.C. 119(e) or 120, andSec. 1.78.
    (6) Foreign priority information. This information includes the 
application number, country, and filing date of each foreign application 
for which priority is claimed. Providing this information in the 
application data sheet constitutes the claim for priority as required by 
35 U.S.C. 119(b) andSec. 1.55.
    (7) Applicant information: This information includes the name 
(either natural person or juristic entity) and address of the legal 
representative, assignee, person to whom the inventor is under an 
obligation to assign the invention, or person who otherwise shows 
sufficient proprietary interest in the matter who is the applicant under 
Sec.  1.43 orSec. 1.46. Providing assignment information in the 
application data sheet does not substitute for compliance with any 
requirement of part 3 of this chapter to have an assignment recorded by 
the Office.
    (c) Correcting and updating an application data sheet. (1) 
Information in a previously submitted application data sheet, inventor's 
oath or declaration underSec. 1.63,Sec. 1.64 orSec. 1.67, or 
otherwise of record, may be corrected or updated until payment of the 
issue fee by a new application data sheet providing corrected or updated 
information, except

[[Page 73]]

that inventorship changes must comply with the requirements ofSec. 
1.48, foreign priority and domestic benefit information changes must 
comply with Sec.Sec. 1.55 and 1.78, and correspondence address changes 
are governed bySec. 1.33(a).
    (2) An application data sheet providing corrected or updated 
information may include all of the sections listed in paragraph (b) of 
this section or only those sections containing changed or updated 
information. The application data sheet must include the section 
headings listed in paragraph (b) of this section for each section 
included in the application data sheet, and must identify the 
information that is being changed, with underlining for insertions, and 
strike-through or brackets for text removed, except that identification 
of information being changed is not required for an application data 
sheet included with an initial submission under 35 U.S.C. 371.
    (d) Inconsistencies between application data sheet and other 
documents. For inconsistencies between information that is supplied by 
both an application data sheet under this section and other documents:
    (1) The most recent submission will govern with respect to 
inconsistencies as between the information provided in an application 
data sheet, a designation of a correspondence address, or by the 
inventor's oath or declaration, except that:
    (i) The most recent application data sheet will govern with respect 
to foreign priority (Sec.  1.55) or domestic benefit (Sec.  1.78) 
claims; and
    (ii) The naming of the inventorship is governed bySec. 1.41 and 
changes to inventorship or the names of the inventors is governed by 
Sec.  1.48.
    (2) The information in the application data sheet will govern when 
the inconsistent information is supplied at the same time by a 
designation of correspondence address or the inventor's oath or 
declaration.
    (3) The Office will capture bibliographic information from the 
application data sheet. The Office will generally not review the 
inventor's oath or declaration to determine if the bibliographic 
information contained therein is consistent with the bibliographic 
information provided in an application data sheet. Incorrect 
bibliographic information contained in an application data sheet may be 
corrected as provided in paragraph (c)(1) of this section.
    (e) Signature requirement. An application data sheet must be signed 
in compliance withSec. 1.33(b). An unsigned application data sheet 
will be treated only as a transmittal letter.

[65 FR 54668, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000; 
69 FR 56540, Sept. 21, 2004; 70 FR 54266, Sept. 14, 2005;; 72 FR 46837, 
Aug. 21, 2007; 74 FR 52689, Oct. 14, 2009; 77 FR 48820, Aug. 14, 2012; 
78 FR 11055, Feb. 14, 2013]



Sec.  1.77  Arrangement of application elements.

    (a) The elements of the application, if applicable, should appear in 
the following order:
    (1) Utility application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (seeSec. 1.76).
    (4) Specification.
    (5) Drawings.
    (6) The inventor's oath or declaration.
    (b) The specification should include the following sections in 
order:
    (1) Title of the invention, which may be accompanied by an 
introductory portion stating the name, citizenship, and residence of the 
applicant (unless included in the application data sheet).
    (2) Cross-reference to related applications.
    (3) Statement regarding federally sponsored research or development.
    (4) The names of the parties to a joint research agreement.
    (5) Reference to a ``Sequence Listing,'' a table, or a computer 
program listing appendix submitted on a compact disc and an 
incorporation-by-reference of the material on the compact disc (see 
Sec.  1.52(e)(5)). The total number of compact discs including 
duplicates and the files on each compact disc shall be specified.
    (6) Statement regarding prior disclosures by the inventor or a joint 
inventor.
    (7) Background of the invention.
    (8) Brief summary of the invention.
    (9) Brief description of the several views of the drawing.

[[Page 74]]

    (10) Detailed description of the invention.
    (11) A claim or claims.
    (12) Abstract of the disclosure.
    (13) ``Sequence Listing,'' if on paper (see Sec.Sec. 1.821 through 
1.825).
    (c) The text of the specification sections defined in paragraphs 
(b)(1) through (b)(12) of this section, if applicable, should be 
preceded by a section heading in uppercase and without underlining or 
bold type.

[65 FR 54668, Sept. 8, 2000, as amended at 70 FR 1823, Jan. 11, 2005; 77 
FR 48820, Aug. 14, 2012; 78 FR 11055, Feb. 14, 2013]



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

    (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application. An applicant in a nonprovisional application, 
other than for a design patent, or an international application 
designating the United States of America may claim the benefit of one or 
more prior-filed provisional applications under the conditions set forth 
in 35 U.S.C. 119(e) and this section.
    (1) The nonprovisional application or international application 
designating the United States of America must be filed not later than 
twelve months after the date on which the provisional application was 
filed, or be entitled to claim the benefit under 35 U.S.C. 120, 121, or 
365(c) of an application that was filed not later than twelve months 
after the date on which the provisional application was filed. This 
twelve-month period is subject to 35 U.S.C. 21(b) (andSec. 1.7(a)).
    (2) Each prior-filed provisional application must name the inventor 
or a joint inventor named in the later--filed application as the 
inventor or a joint inventor. In addition, each prior-filed provisional 
application must be entitled to a filing date as set forth inSec. 
1.53(c), and the basic filing fee set forth inSec. 1.16(d) must have 
been paid for such provisional application within the time period set 
forth inSec. 1.53(g).
    (3) Any nonprovisional application or international application 
designating the United States of America that claims the benefit of one 
or more prior-filed provisional applications must contain, or be amended 
to contain, a reference to each such prior-filed provisional 
application, identifying it by the provisional application number 
(consisting of series code and serial number). If the later-filed 
application is a nonprovisional application, the reference required by 
this paragraph must be included in an application data sheet (Sec.  
1.76(b)(5)).
    (4) The reference required by paragraph (a)(3) of this section must 
be submitted during the pendency of the later-filed application. If the 
later-filed application is an application filed under 35 U.S.C. 111(a), 
this reference must also be submitted within the later of four months 
from the actual filing date of the later-filed application or sixteen 
months from the filing date of the prior-filed provisional application. 
If the later-filed application is a nonprovisional application entering 
the national stage from an international application under 35 U.S.C. 
371, this reference must also be submitted within the later of four 
months from the date on which the national stage commenced under 35 
U.S.C. 371(b) or (f) in the later-filed international application or 
sixteen months from the filing date of the prior-filed provisional 
application. Except as provided in paragraph (b) of this section, 
failure to timely submit the reference is considered a waiver of any 
benefit under 35 U.S.C. 119(e) of the prior-filed provisional 
application.
    (5) If the prior-filed provisional application was filed in a 
language other than English and both an English-language translation of 
the prior-filed provisional application and a statement that the 
translation is accurate were not previously filed in the prior-filed 
provisional application, the applicant will be notified and given a 
period of time within which to file, in the prior-filed provisional 
application, the translation and the statement. If the notice is mailed 
in a pending nonprovisional application, a timely reply to such a notice 
must include the filing in the nonprovisional application of either a 
confirmation that the translation and statement were filed in the 
provisional application, or an application data sheet eliminating the 
reference under paragraph (a)(3) of this section to the prior-filed 
provisional application, or

[[Page 75]]

the nonprovisional application will be abandoned. The translation and 
statement may be filed in the provisional application, even if the 
provisional application has become abandoned.
    (6) If a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a provisional application 
filed prior to March 16, 2013, and also contains, or contained at any 
time, a claim to a claimed invention that has an effective filing date 
on or after March 16, 2013, the applicant must provide a statement to 
that effect within the later of four months from the actual filing date 
of the nonprovisional application, four months from the date of entry 
into the national stage as set forth inSec. 1.491 in an international 
application, sixteen months from the filing date of the prior-filed 
provisional application, or the date that a first claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
is presented in the nonprovisional application. An applicant is not 
required to provide such a statement if the applicant reasonably 
believes on the basis of information already known to the individuals 
designated inSec. 1.56(c) that the nonprovisional application does 
not, and did not at any time, contain a claim to a claimed invention 
that has an effective filing date on or after March 16, 2013.
    (b) Delayed claims under 35 U.S.C. 119(e) for the benefit of a 
prior-filed provisional application. If the reference required by 35 
U.S.C. 119(e) and paragraph (a)(3) of this section is presented in a 
nonprovisional application after the time period provided by paragraph 
(a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit 
of a prior-filed provisional application may be accepted if submitted 
during the pendency of the later-filed application and if the reference 
identifying the prior-filed application by provisional application 
number was unintentionally delayed. A petition to accept an 
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of 
a prior-filed provisional application must be accompanied by:
    (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) 
of this section to the prior-filed provisional application, unless 
previously submitted;
    (2) The surcharge set forth inSec. 1.17(t); and
    (3) A statement that the entire delay between the date the benefit 
claim was due under paragraph (a)(4) of this section and the date the 
benefit claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a 
prior-filed nonprovisional or international application. An applicant in 
a nonprovisional application (including an international application 
entering the national stage under 35 U.S.C. 371) or an international 
application designating the United States of America may claim the 
benefit of one or more prior-filed copending nonprovisional applications 
or international applications designating the United States of America 
under the conditions set forth in 35 U.S.C. 120, 121, or 365(c) and this 
section.
    (1) Each prior-filed application must name the inventor or a joint 
inventor named in the later-filed application as the inventor or a joint 
inventor. In addition, each prior-filed application must either be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) A nonprovisional application under 35 U.S.C. 111(a) that is 
entitled to a filing date as set forth inSec. 1.53(b) or (d) for which 
the basic filing fee set forth inSec. 1.16 has been paid within the 
pendency of the application.
    (2) Except for a continued prosecution application filed underSec. 
1.53(d), any nonprovisional application, or international application 
designating the United States of America, that claims the benefit of one 
or more prior-filed nonprovisional applications or international 
applications designating the United States of America must contain or be 
amended to contain a reference to each such prior-filed application, 
identifying it by application number (consisting of the series code and 
serial number) or international application number and international 
filing date. If the later-filed application is a

[[Page 76]]

nonprovisional application, the reference required by this paragraph 
must be included in an application data sheet (Sec.  1.76(b)(5)). The 
reference also must identify the relationship of the applications, 
namely, whether the later-filed application is a continuation, 
divisional, or continuation-in-part of the prior-filed nonprovisional 
application or international application.
    (3) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of 
this section must be submitted during the pendency of the later-filed 
application. If the later-filed application is an application filed 
under 35 U.S.C. 111(a), this reference must also be submitted within the 
later of four months from the actual filing date of the later-filed 
application or sixteen months from the filing date of the prior-filed 
application. If the later-filed application is a nonprovisional 
application entering the national stage from an international 
application under 35 U.S.C. 371, this reference must also be submitted 
within the later of four months from the date on which the national 
stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed 
international application or sixteen months from the filing date of the 
prior-filed application. Except as provided in paragraph (d) of this 
section, failure to timely submit the reference required by 35 U.S.C. 
120 and paragraph (c)(2) of this section is considered a waiver of any 
benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed 
application. The time periods in this paragraph do not apply in a design 
application.
    (4) The request for a continued prosecution application underSec. 
1.53(d) is the specific reference required by 35 U.S.C. 120 to the 
prior-filed application. The identification of an application by 
application number under this section is the identification of every 
application assigned that application number necessary for a specific 
reference required by 35 U.S.C. 120 to every such application assigned 
that application number.
    (5) Cross-references to other related applications may be made when 
appropriate (seeSec. 1.14), but cross-references to applications for 
which a benefit is not claimed under title 35, United States Code, must 
not be included in an application data sheet (Sec.  1.76(b)(5)).
    (6) If a nonprovisional application filed on or after March 16, 
2013, claims the benefit of the filing date of a nonprovisional 
application or an international application designating the United 
States of America filed prior to March 16, 2013, and also contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect within the later of four months from 
the actual filing date of the later-filed application, four months from 
the date of entry into the national stage as set forth inSec. 1.491 in 
an international application, sixteen months from the filing date of the 
prior-filed application, or the date that a first claim to a claimed 
invention that has an effective filing date on or after March 16, 2013, 
is presented in the later-filed application. An applicant is not 
required to provide such a statement if either:
    (i) The application claims the benefit of a nonprovisional 
application in which a statement underSec. 1.55(j), paragraph (a)(6) 
of this section, or this paragraph that the application contains, or 
contained at any time, a claim to a claimed invention that has an 
effective filing date on or after March 16, 2013 has been filed; or
    (ii) The applicant reasonably believes on the basis of information 
already known to the individuals designated inSec. 1.56(c) that the 
later filed application does not, and did not at any time, contain a 
claim to a claimed invention that has an effective filing date on or 
after March 16, 2013.
    (d) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the 
benefit of a prior-filed nonprovisional application or international 
application. If the reference required by 35 U.S.C. 120 and paragraph 
(c)(2) of this section is presented after the time period provided by 
paragraph (c)(3) of this section, the claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed copending nonprovisional 
application or international application designating the United States

[[Page 77]]

of America may be accepted if the reference identifying the prior-filed 
application by application number or international application number 
and international filing date was unintentionally delayed. A petition to 
accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed application must be accompanied 
by:
    (1) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of 
this section to the prior-filed application, unless previously 
submitted;
    (2) The surcharge set forth inSec. 1.17(t); and
    (3) A statement that the entire delay between the date the benefit 
claim was due under paragraph (c)(3) of this section and the date the 
benefit claim was filed was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional.
    (e) Applications containing patentably indistinct claims. Where two 
or more applications filed by the same applicant contain patentably 
indistinct claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient reason 
for their retention during pendency in more than one application.
    (f) Applications or patents under reexamination naming different 
inventors and containing patentably indistinct claims. If an application 
or a patent under reexamination and at least one other application 
naming different inventors are owned by the same person and contain 
patentably indistinct claims, and there is no statement of record 
indicating that the claimed inventions were commonly owned or subject to 
an obligation of assignment to the same person on the effective filing 
date (as defined inSec. 1.109), or on the date of the invention, as 
applicable, of the later claimed invention, the Office may require the 
applicant to state whether the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person on such date. 
Even if the claimed inventions were commonly owned, or subject to an 
obligation of assignment to the same person on the effective filing date 
(as defined inSec. 1.109), or on the date of the invention, as 
applicable, of the later claimed invention, the patentably indistinct 
claims may be rejected under the doctrine of double patenting in view of 
such commonly owned or assigned applications or patents under 
reexamination.
    (g) Time periods not extendable. The time periods set forth in this 
section are not extendable.

[78 FR 11055, Feb. 14, 2013]



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 
the invention where necessary for the understanding of the subject 
matter sought to be patented; this drawing, or a high quality copy 
thereof, must be filed with the application. Since corrections are the 
responsibility of the applicant, the original drawing(s) should be 
retained by the applicant for any necessary future correction.
    (b) Drawings may include illustrations which facilitate an 
understanding of the invention (for example, flow sheets in cases of 
processes, and diagrammatic views).
    (c) Whenever the nature of the subject matter sought to be patented 
admits of illustration by a drawing without its being necessary for the 
understanding of the subject matter and the applicant has not furnished 
such a drawing, the examiner will require its submission within a time 
period of not less than two months from the date of the sending of a 
notice thereof.
    (d) Drawings submitted after the filing date of the application may 
not be

[[Page 78]]

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; 77 
FR 48821, Aug. 14, 2012]



Sec.  1.83  Content of drawing.

    (a) The drawing in a nonprovisional application must show every 
feature of the invention specified in the claims. However, conventional 
features disclosed in the description and claims, where their detailed 
illustration is not essential for a proper understanding of the 
invention, should be illustrated in the drawing in the form of a 
graphical drawing symbol or a labeled representation (e.g., a labeled 
rectangular box). In addition, tables and sequence listings that are 
included in the specification are, except for applications filed under 
35 U.S.C. 371, not permitted to be included in the drawings.
    (b) When the invention consists of an improvement on an old machine 
the drawing must when possible exhibit, in one or more views, the 
improved portion itself, disconnected from the old structure, and also 
in another view, so much only of the old structure as will suffice to 
show the connection of the invention therewith.
    (c) Where the drawings in a nonprovisional application do not comply 
with the requirements of paragraphs (a) and (b) of this section, the 
examiner shall require such additional illustration within a time period 
of not less than two months from the date of the sending of a notice 
thereof. Such corrections are subject to the requirements ofSec. 
1.81(d).

[31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60 
FR 20226, Apr. 25, 1995; 69 FR 56541, Sept. 21, 2004]



Sec.  1.84  Standards for drawings.

    (a) Drawings. There are two acceptable categories for presenting 
drawings in utility and design patent applications.
    (1) Black ink. Black and white drawings are normally required. India 
ink, or its equivalent that secures solid black lines, must be used for 
drawings; or
    (2) Color. On rare occasions, color drawings may be necessary as the 
only practical medium by which to disclose the subject matter sought to 
be patented in a utility or design patent application. The color 
drawings must be of sufficient quality such that all details in the 
drawings are reproducible in black and white in the printed patent. 
Color drawings are not permitted in international applications (see PCT 
Rule 11.13), or in an application, or copy thereof, submitted under the 
Office electronic filing system. The Office will accept color drawings 
in utility or design patent applications 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 inSec. 1.17(h);
    (ii) Three (3) sets of color drawings; and
    (iii) An amendment to the specification to insert (unless the 
specification contains or has been previously amended to contain) the 
following language as the first paragraph of the brief description of 
the drawings:

The patent or application file contains at least one drawing executed in 
color. Copies of this patent or patent application publication with 
color drawing(s) will be provided by the Office upon request and payment 
of the necessary fee.

    (b) Photographs--(1) Black and white. Photographs, including 
photocopies of photographs, are not ordinarily permitted in utility and 
design patent applications. The Office will accept photographs in 
utility and design patent applications, however, if photographs are the 
only practicable medium for illustrating the claimed invention. For 
example, photographs or photomicrographs of: electrophoresis gels, blots 
(e.g., immunological, western, Southern, and northern), autoradiographs, 
cell cultures (stained and unstained), histological tissue cross 
sections (stained and unstained), animals, plants, in vivo imaging, thin 
layer chromatography plates, crystalline structures, and, in a design 
patent application, ornamental effects, are acceptable. If the subject 
matter of the application admits of illustration

[[Page 79]]

by a drawing, the examiner may require a drawing in place of the 
photograph. The photographs must be of sufficient quality so that all 
details in the photographs are reproducible in the printed patent.
    (2) Color photographs. Color photographs will be accepted in utility 
and design patent applications if the conditions for accepting color 
drawings and black and white photographs have been satisfied. See 
paragraphs (a)(2) and (b)(1) of this section.
    (c) Identification of drawings. Identifying indicia should be 
provided, and if provided, should include the title of the invention, 
inventor's name, and application number, or docket number (if any) if an 
application number has not been assigned to the application. If this 
information is provided, it must be placed on the front of each sheet 
within the top margin. Each drawing sheet submitted after the filing 
date of an application must be identified as either ``Replacement 
Sheet'' or ``New Sheet'' pursuant toSec. 1.121(d). If a marked-up copy 
of any amended drawing figure including annotations indicating the 
changes made is filed, such marked-up copy must be clearly labeled as 
``Annotated Sheet'' pursuant toSec. 1.121(d)(1).
    (d) Graphic forms in drawings. Chemical or mathematical formulae, 
tables, and waveforms may be submitted as drawings, and are subject to 
the same requirements as drawings. Each chemical or mathematical formula 
must be labeled as a separate figure, using brackets when necessary, to 
show that information is properly integrated. Each group of waveforms 
must be presented as a single figure, using a common vertical axis with 
time extending along the horizontal axis. Each individual waveform 
discussed in the specification must be identified with a separate letter 
designation adjacent to the vertical axis.
    (e) Type of paper. Drawings submitted to the Office must be made on 
paper which is flexible, strong, white, smooth, non-shiny, and durable. 
All sheets must be reasonably free from cracks, creases, and folds. Only 
one side of the sheet may be used for the drawing. Each sheet must be 
reasonably free from erasures and must be free from alterations, 
overwritings, and interlineations. Photographs must be developed on 
paper meeting the sheet-size requirements of paragraph (f) of this 
section and the margin requirements of paragraph (g) of this section. 
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

[[Page 80]]

sheet as another figure, the exploded view should be placed in brackets.
    (2) Partial views. When necessary, a view of a large machine or 
device in its entirety may be broken into partial views on a single 
sheet, or extended over several sheets if there is no loss in facility 
of understanding the view. Partial views drawn on separate sheets must 
always be capable of being linked edge to edge so that no partial view 
contains parts of another partial view. A smaller scale view should be 
included showing the whole formed by the partial views and indicating 
the positions of the parts shown. When a portion of a view is enlarged 
for magnification purposes, the view and the enlarged view must each be 
labeled as separate views.
    (i) Where views on two or more sheets form, in effect, a single 
complete view, the views on the several sheets must be so arranged that 
the complete figure can be assembled without concealing any part of any 
of the views appearing on the various sheets.
    (ii) A very long view may be divided into several parts placed one 
above the other on a single sheet. However, the relationship between the 
different parts must be clear and unambiguous.
    (3) Sectional views. The plane upon which a sectional view is taken 
should be indicated on the view from which the section is cut by a 
broken line. The ends of the broken line should be designated by Arabic 
or Roman numerals corresponding to the view number of the sectional 
view, and should have arrows to indicate the direction of sight. 
Hatching must be used to indicate section portions of an object, and 
must be made by regularly spaced oblique parallel lines spaced 
sufficiently apart to enable the lines to be distinguished without 
difficulty. Hatching should not impede the clear reading of the 
reference characters and lead lines. If it is not possible to place 
reference characters outside the hatched area, the hatching may be 
broken off wherever reference characters are inserted. Hatching must be 
at a substantial angle to the surrounding axes or principal lines, 
preferably 45[deg]. A cross section must be set out and drawn to show 
all of the materials as they are shown in the view from which the cross 
section was taken. The parts in cross section must show proper 
material(s) by hatching with regularly spaced parallel oblique strokes, 
the space between strokes being chosen on the basis of the total area to 
be hatched. The various parts of a cross section of the same item should 
be hatched in the same manner and should accurately and graphically 
indicate the nature of the material(s) that is illustrated in cross 
section. The hatching of juxtaposed different elements must be angled in 
a different way. In the case of large areas, hatching may be confined to 
an edging drawn around the entire inside of the outline of the area to 
be hatched. Different types of hatching should have different 
conventional meanings as regards the nature of a material seen in cross 
section.
    (4) Alternate position. A moved position may be shown by a broken 
line superimposed upon a suitable view if this can be done without 
crowding; otherwise, a separate view must be used for this purpose.
    (5) Modified forms. Modified forms of construction must be shown in 
separate views.
    (i) Arrangement of views. One view must not be placed upon another 
or within the outline of another. All views on the same sheet should 
stand in the same direction and, if possible, stand so that they can be 
read with the sheet held in an upright position. If views wider than the 
width of the sheet are necessary for the clearest illustration of the 
invention, the sheet may be turned on its side so that the top of the 
sheet, with the appropriate top margin to be used as the heading space, 
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top 
becomes the right side, except for graphs utilizing standard scientific 
convention to denote the axis of abscissas (of X) and the axis of 
ordinates (of Y).
    (j) Front page view. The drawing must contain as many views as 
necessary to show the invention. One of the views should be suitable for 
inclusion on the front page of the patent application publication and 
patent as the illustration of the invention. Views must not be connected 
by projection lines and

[[Page 81]]

must not contain center lines. Applicant may suggest a single view (by 
figure number) for inclusion on the front page of the patent application 
publication and patent.
    (k) Scale. The scale to which a drawing is made must be large enough 
to show the mechanism without crowding when the drawing is reduced in 
size to two-thirds in reproduction. Indications such as ``actual size'' 
or ``scale \1/2\'' on the drawings are not permitted since these lose 
their meaning with reproduction in a different format.
    (l) Character of lines, numbers, and letters. All drawings must be 
made by a process which will give them satisfactory reproduction 
characteristics. Every line, number, and letter must be durable, clean, 
black (except for color drawings), sufficiently dense and dark, and 
uniformly thick and well-defined. The weight of all lines and letters 
must be heavy enough to permit adequate reproduction. This requirement 
applies to all lines however fine, to shading, and to lines representing 
cut surfaces in sectional views. Lines and strokes of different 
thicknesses may be used in the same drawing where different thicknesses 
have a different meaning.
    (m) Shading. The use of shading in views is encouraged if it aids in 
understanding the invention and if it does not reduce legibility. 
Shading is used to indicate the surface or shape of spherical, 
cylindrical, and conical elements of an object. Flat parts may also be 
lightly shaded. Such shading is preferred in the case of parts shown in 
perspective, but not for cross sections. See paragraph (h)(3) of this 
section. Spaced lines for shading are preferred. These lines must be 
thin, as few in number as practicable, and they must contrast with the 
rest of the drawings. As a substitute for shading, heavy lines on the 
shade side of objects can be used except where they superimpose on each 
other or obscure reference characters. Light should come from the upper 
left corner at an angle of 45[deg]. Surface delineations should 
preferably be shown by proper shading. Solid black shading areas are not 
permitted, except when used to represent bar graphs or color.
    (n) Symbols. Graphical drawing symbols may be used for conventional 
elements when appropriate. The elements for which such symbols and 
labeled representations are used must be adequately identified in the 
specification. Known devices should be illustrated by symbols which have 
a universally recognized conventional meaning and are generally accepted 
in the art. Other symbols which are not universally recognized may be 
used, subject to approval by the Office, if they are not likely to be 
confused with existing conventional symbols, and if they are readily 
identifiable.
    (o) Legends. Suitable descriptive legends may be used subject to 
approval by the Office, or may be required by the examiner where 
necessary for understanding of the drawing. They should contain as few 
words as possible.
    (p) Numbers, letters, and reference characters. (1) Reference 
characters (numerals are preferred), sheet numbers, and view numbers 
must be plain and legible, and must not be used in association with 
brackets or inverted commas, or enclosed within outlines, e.g., 
encircled. They must be oriented in the same direction as the view so as 
to avoid having to rotate the sheet. Reference characters should be 
arranged to follow the profile of the object depicted.
    (2) The English alphabet must be used for letters, except where 
another alphabet is customarily used, such as the Greek alphabet to 
indicate angles, wavelengths, and mathematical formulas.
    (3) Numbers, letters, and reference characters must measure at least 
.32 cm. (\1/8\ inch) in height. They should not be placed in the drawing 
so as to interfere with its comprehension. Therefore, they should not 
cross or mingle with the lines. They should not be placed upon hatched 
or shaded surfaces. When necessary, such as indicating a surface or 
cross section, a reference character may be underlined and a blank space 
may be left in the hatching or shading where the character occurs so 
that it appears distinct.
    (4) The same part of an invention appearing in more than one view of 
the drawing must always be designated by the same reference character, 
and the same reference character must never be used to designate 
different parts.

[[Page 82]]

    (5) Reference characters not mentioned in the description shall not 
appear in the drawings. Reference characters mentioned in the 
description must appear in the drawings.
    (q) Lead lines. Lead lines are those lines between the reference 
characters and the details referred to. Such lines may be straight or 
curved and should be as short as possible. They must originate in the 
immediate proximity of the reference character and extend to the feature 
indicated. Lead lines must not cross each other. Lead lines are required 
for each reference character except for those which indicate the surface 
or cross section on which they are placed. Such a reference character 
must be underlined to make it clear that a lead line has not been left 
out by mistake. Lead lines must be executed in the same way as lines in 
the drawing. See paragraph (l) of this section.
    (r) Arrows. Arrows may be used at the ends of the lines, provided 
that their meaning is clear, as follows:
    (1) On a lead line, a freestanding arrow to indicate the entire 
section towards which it points;
    (2) On a lead line, an arrow touching a line to indicate the surface 
shown by the line looking along the direction of the arrow; or
    (3) To show the direction of movement.
    (s) Copyright or Mask Work Notice. A copyright or mask work notice 
may appear in the drawing, but must be placed within the sight of the 
drawing immediately below the figure representing the copyright or mask 
work material and be limited to letters having a print size of .32 cm. 
to .64 cm. (\1/8\ to \1/4\ inches) high. The content of the notice must 
be limited to only those elements provided for by law. For example, 
``(copyright) 1983 John Doe'' (17 U.S.C. 401) and ``*M* John 
Doe'' (17 U.S.C. 909) would be properly limited and, under current 
statutes, legally sufficient notices of copyright and mask work, 
respectively. Inclusion of a copyright or mask work notice will be 
permitted only if the authorization language set forth inSec. 1.71(e) 
is included at the beginning (preferably as the first paragraph) of the 
specification.
    (t) Numbering of sheets of drawings. The sheets of drawings should 
be numbered in consecutive Arabic numerals, starting with 1, within the 
sight as defined in paragraph (g) of this section. These numbers, if 
present, must be placed in the middle of the top of the sheet, but not 
in the margin. The numbers can be placed on the right-hand side if the 
drawing extends too close to the middle of the top edge of the usable 
surface. The drawing sheet numbering must be clear and larger than the 
numbers used as reference characters to avoid confusion. The number of 
each sheet should be shown by two Arabic numerals placed on either side 
of an oblique line, with the first being the sheet number, and the 
second being the total number of sheets of drawings, with no other 
marking.
    (u) Numbering of views. (1) The different views must be numbered in 
consecutive Arabic numerals, starting with 1, independent of the 
numbering of the sheets and, if possible, in the order in which they 
appear on the drawing sheet(s). Partial views intended to form one 
complete view, on one or several sheets, must be identified by the same 
number followed by a capital letter. View numbers must be preceded by 
the abbreviation ``FIG.'' Where only a single view is used in an 
application to illustrate the claimed invention, it must not be numbered 
and the abbreviation ``FIG.'' must not appear.
    (2) Numbers and letters identifying the views must be simple and 
clear and must not be used in association with brackets, circles, or 
inverted commas. The view numbers must be larger than the numbers used 
for reference characters.
    (v) Security markings. Authorized security markings may be placed on 
the drawings provided they are outside the sight, preferably centered in 
the top margin.
    (w) Corrections. Any corrections on drawings submitted to the Office 
must be durable and permanent.
    (x) Holes. No holes should be made by applicant in the drawing 
sheets.

[[Page 83]]

    (y) Types of drawings. SeeSec. 1.152 for design drawings,Sec. 
1.165 for plant drawings, andSec. 1.173(a)(2) for reissue drawings.

[58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as 
amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR 
54669, Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000; 69 FR 56541, Sept. 
21, 2004; 70 FR 3891, Jan. 27, 2005; 78 FR 11057, Feb. 14, 2013]



Sec.  1.85  Corrections to drawings.

    (a) A utility or plant application will not be placed on the files 
for examination until objections to the drawings have been corrected. 
Except as provided inSec. 1.215(c), any patent application publication 
will not include drawings filed after the application has been placed on 
the files for examination. Unless applicant is otherwise notified in an 
Office action, objections to the drawings in a utility or plant 
application will not be held in abeyance, and a request to hold 
objections to the drawings in abeyance will not be considered a bona 
fide attempt to advance the application to final action (Sec.  
1.135(c)). If a drawing in a design application meets the requirements 
ofSec. 1.84(e), (f), and (g) and is suitable for reproduction, but is 
not otherwise in compliance withSec. 1.84, the drawing may be admitted 
for examination.
    (b) The Office will not release drawings for purposes of correction. 
If corrections are necessary, new corrected drawings must be submitted 
within the time set by the Office.
    (c) If a corrected drawing is required or if a drawing does not 
comply withSec. 1.84 at the time an application is allowed, the Office 
may notify the applicant and set a three-month period of time from the 
mail date of the notice of allowability within which the applicant must 
file a corrected drawing in compliance withSec. 1.84 to avoid 
abandonment. This time period is not extendable underSec. 1.136(a) or 
Sec.  1.136(b).

[65 FR 54670, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 
69 FR 56541, Sept. 21, 2004]



Sec.  1.88  [Reserved]

                       Models, Exhibits, Specimens

    Authority: Secs. 1.91 to 1.95 also issued under 35 U.S.C. 114.



Sec.  1.91  Models or exhibits not generally admitted as part of 
application or patent.

    (a) A model or exhibit will not be admitted as part of the record of 
an application unless it:
    (1) Substantially conforms to the requirements ofSec. 1.52 or 
Sec.  1.84;
    (2) Is specifically required by the Office; or
    (3) Is filed with a petition under this section including:
    (i) The fee set forth inSec. 1.17(h); and
    (ii) An explanation of why entry of the model or exhibit in the file 
record is necessary to demonstrate patentability.
    (b) Notwithstanding the provisions of paragraph (a) of this section, 
a model, working model, or other physical exhibit may be required by the 
Office if deemed necessary for any purpose in examination of the 
application.
    (c) Unless the model or exhibit substantially conforms to the 
requirements ofSec. 1.52 orSec. 1.84 under paragraph (a)(1) of this 
section, it must be accompanied by photographs that show multiple views 
of the material features of the model or exhibit and that substantially 
conform to the requirements ofSec. 1.84.

[62 FR 53190, Oct. 10, 1997, as amended at 65 FR 54670, Sept. 8, 2000; 
69 FR 56541, Sept. 21, 2004]



Sec.  1.92  [Reserved]



Sec.  1.93  Specimens.

    When the invention relates to a composition of matter, the applicant 
may be required to furnish specimens of the composition, or of its 
ingredients or intermediates, for the purpose of inspection or 
experiment.



Sec.  1.94  Return of models, exhibits or specimens.

    (a) Models, exhibits, or specimens may be returned to the applicant 
if no longer necessary for the conduct of business before the Office. 
When applicant is notified that a model, exhibit, or specimen is no 
longer necessary for the conduct of business before the Office and will 
be returned, applicant must arrange for the return of the

[[Page 84]]

model, exhibit, or specimen at the applicant's expense. The Office will 
dispose of perishables without notice to applicant unless applicant 
notifies the Office upon submission of the model, exhibit or specimen 
that a return is desired and makes arrangements for its return promptly 
upon notification by the Office that the model, exhibit or specimen is 
no longer necessary for the conduct of business before the Office.
    (b) Applicant is responsible for retaining the actual model, 
exhibit, or specimen for the enforceable life of any patent resulting 
from the application. The provisions of this paragraph do not apply to a 
model or exhibit that substantially conforms to the requirements of 
Sec.  1.52 orSec. 1.84, where the model or exhibit has been described 
by photographs that substantially conform toSec. 1.84, or where the 
model, exhibit or specimen is perishable.
    (c) Where applicant is notified, pursuant to paragraph (a) of this 
section, of the need to arrange for return of a model, exhibit or 
specimen, applicant must arrange for the return within the period set in 
such notice, to avoid disposal of the model, exhibit or specimen by the 
Office. Extensions of time are available underSec. 1.136, except in 
the case of perishables. Failure to establish that the return of the 
item has been arranged for within the period set or failure to have the 
item removed from Office storage within a reasonable amount of time 
notwithstanding any arrangement for return, will permit the Office to 
dispose of the model, exhibit or specimen.

[69 FR 56542, Sept. 21, 2004]



Sec.  1.95  Copies of exhibits.

    Copies of models or other physical exhibits will not ordinarily be 
furnished by the Office, and any model or exhibit in an application or 
patent shall not be taken from the Office except in the custody of an 
employee of the Office specially authorized by the Director.



Sec.  1.96  Submission of computer program listings.

    (a) General. Descriptions of the operation and general content of 
computer program listings should appear in the description portion of 
the specification. A computer program listing for the purpose of this 
section is defined as a printout that lists in appropriate sequence the 
instructions, routines, and other contents of a program for a computer. 
The program listing may be either in machine or machine-independent 
(object or source) language which will cause a computer to perform a 
desired procedure or task such as solve a problem, regulate the flow of 
work in a computer, or control or monitor events. Computer program 
listings may be submitted in patent applications as set forth in 
paragraphs (b) and (c) of this section.
    (b) Material which will be printed in the patent: If the computer 
program listing is contained in 300 lines or fewer, with each line of 72 
characters or fewer, it may be submitted either as drawings or as part 
of the specification.
    (1) Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for drawings 
as provided inSec. 1.84. At least one figure numeral is required on 
each sheet of drawing.
    (2) Specification. (i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with the provisions of 
Sec.  1.52.
    (ii) Any listing having more than 60 lines of code that is submitted 
as part of the specification must be positioned at the end of the 
description but before the claims. Any amendment must be made by way of 
submission of a substitute sheet.
    (c) As an appendix which will not be printed: Any computer program 
listing may, and any computer program listing having over 300 lines (up 
to 72 characters per line) must, be submitted on a compact disc in 
compliance withSec. 1.52(e). A compact disc containing such a computer 
program listing is to be referred to as a ``computer program listing 
appendix.'' The ``computer program listing appendix'' will not be part 
of the printed patent. The specification must include a reference to the 
``computer program listing appendix'' at the location indicated inSec. 
1.77(b)(5).
    (1) Multiple computer program listings for a single application may 
be placed on a single compact disc. Multiple compact discs may be 
submitted

[[Page 85]]

for a single application if necessary. A separate compact disc is 
required for each application containing a computer program listing that 
must be submitted on a ``computer program listing appendix.''
    (2) The ``computer program listing appendix'' must be submitted on a 
compact disc that complies withSec. 1.52(e) and the following 
specifications (no other format shall be allowed):
    (i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple 
Macintosh;
    (ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or 
Macintosh;
    (iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
    (iv) Control Codes: the data must not be dependent on control 
characters or codes which are not defined in the ASCII character set; 
and
    (v) Compression: uncompressed data.

[61 FR 42804, Aug. 19, 1996, as amended at 65 FR 54670, Sept. 8, 2000; 
70 FR 54266, Sept. 14, 2005]

                    Information Disclosure Statement



Sec.  1.97  Filing of information disclosure statement.

    (a) In order for an applicant for a patent or for a reissue of a 
patent to have an information disclosure statement in compliance with 
Sec.  1.98 considered by the Office during the pendency of the 
application, the information disclosure statement must satisfy one of 
paragraphs (b), (c), or (d) of this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant within any one of the following time 
periods:
    (1) Within three months of the filing date of a national application 
other than a continued prosecution application underSec. 1.53(d);
    (2) Within three months of the date of entry of the national stage 
as set forth inSec. 1.491 in an international application;
    (3) Before the mailing of a first Office action on the merits; or
    (4) Before the mailing of a first Office action after the filing of 
a request for continued examination underSec. 1.114.
    (c) An information disclosure statement shall be considered by the 
Office if filed after the period specified in paragraph (b) of this 
section, provided that the information disclosure statement is filed 
before the mailing date of any of a final action underSec. 1.113, a 
notice of allowance underSec. 1.311, or an action that otherwise 
closes prosecution in the application, and it is accompanied by one of:
    (1) The statement specified in paragraph (e) of this section; or
    (2) The fee set forth inSec. 1.17(p).
    (d) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph 
(c) of this section, provided that the information disclosure statement 
is filed on or before payment of the issue fee and is accompanied by:
    (1) The statement specified in paragraph (e) of this section; and
    (2) The fee set forth inSec. 1.17(p).
    (e) A statement under this section must state either:
    (1) That each item of information contained in the information 
disclosure statement was first cited in any communication from a foreign 
patent office in a counterpart foreign application not more than three 
months prior to the filing of the information disclosure statement; or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of 
the person signing the certification after making reasonable inquiry, no 
item of information contained in the information disclosure statement 
was known to any individual designated inSec. 1.56(c) more than three 
months prior to the filing of the information disclosure statement.
    (f) No extensions of time for filing an information disclosure 
statement are permitted underSec. 1.136. If a bona fide attempt is 
made to comply withSec. 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.

[[Page 86]]

    (h) The filing of an information disclosure statement shall not be 
construed to be an admission that the information cited in the statement 
is, or is considered to be, material to patentability as defined in 
Sec.  1.56(b).
    (i) If an information disclosure statement does not comply with 
either this section orSec. 1.98, it will be placed in the file but 
will not be considered by the Office.

[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 
FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct. 
10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR 54670, Sept. 8, 2000]



Sec.  1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed underSec. 1.97 
shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) 
of this section.
    (1) A list of all patents, publications, applications, or other 
information submitted for consideration by the Office. U.S. patents and 
U.S. patent application publications must be listed in a section 
separately from citations of other documents. Each page of the list must 
include:
    (i) The application number of the application in which the 
information disclosure statement is being submitted;
    (ii) A column that provides a space, next to each document to be 
considered, for the examiner's initials; and
    (iii) A heading that clearly indicates that the list is an 
information disclosure statement.
    (2) A legible copy of:
    (i) Each foreign patent;
    (ii) Each publication or that portion which caused it to be listed, 
other than U.S. patents and U.S. patent application publications unless 
required by the Office;
    (iii) For each cited pending unpublished U.S. application, the 
application specification including the claims, and any drawing of the 
application, or that portion of the application which caused it to be 
listed including any claims directed to that portion; and
    (iv) All other information or that portion which caused it to be 
listed.
    (3)(i) A concise explanation of the relevance, as it is presently 
understood by the individual designated inSec. 1.56(c) most 
knowledgeable about the content of the information, of each patent, 
publication, or other information listed that is not in the English 
language. The concise explanation may be either separate from 
applicant's specification or incorporated therein.
    (ii) A copy of the translation if a written English-language 
translation of a non-English-language document, or portion thereof, is 
within the possession, custody, or control of, or is readily available 
to any individual designated inSec. 1.56(c).
    (b)(1) Each U.S. patent listed in an information disclosure 
statement must be identified by inventor, patent number, and issue date.
    (2) Each U.S. patent application publication listed in an 
information disclosure statement shall be identified by applicant, 
patent application publication number, and publication date.
    (3) Each U.S. application listed in an information disclosure 
statement must be identified by the inventor, application number, and 
filing date.
    (4) Each foreign patent or published foreign patent application 
listed in an information disclosure statement must be identified by the 
country or patent office which issued the patent or published the 
application, an appropriate document number, and the publication date 
indicated on the patent or published application.
    (5) Each publication listed in an information disclosure statement 
must be identified by publisher, author (if any), title, relevant pages 
of the publication, date, and place of publication.
    (c) When the disclosures of two or more patents or publications 
listed in an information disclosure statement are substantively 
cumulative, a copy of one of the patents or publications as specified in 
paragraph (a) of this section may be submitted without copies of the 
other patents or publications, provided that it is stated that these 
other patents or publications are cumulative.
    (d) A copy of any patent, publication, pending U.S. application or 
other information, as specified in paragraph (a) of this section, listed 
in an information disclosure statement is required to be provided, even 
if the patent, publication, pending U.S. application or other

[[Page 87]]

information was previously submitted to, or cited by, the Office in an 
earlier application, unless:
    (1) The earlier application is properly identified in the 
information disclosure statement and is relied on for an earlier 
effective filing date under 35 U.S.C. 120; and
    (2) The information disclosure statement submitted in the earlier 
application complies with paragraphs (a) through (c) of this section.

[65 FR 54671, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000; 
68 FR 38628, June 30, 2003; 69 FR 56542, Sept. 21, 2004]



Sec.  1.99  [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 
Director to expedite the business of the Office, or upon filing of a 
request under paragraph (b) or (e) of this section or upon filing a 
petition or request under paragraph (c) or (d) of this section with a 
showing which, in the opinion of the Director, will justify so advancing 
it.
    (b) Applications wherein the inventions are deemed of peculiar 
importance to some branch of the public service and the head of some 
department of the Government requests immediate action for that reason, 
may be advanced for examination.
    (c) A petition to make an application special may be filed without a 
fee if the basis for the petition is:
    (1) The applicant's age or health; or
    (2) That the invention will materially:
    (i) Enhance the quality of the environment;
    (ii) Contribute to the development or conservation of energy 
resources; or
    (iii) Contribute to countering terrorism.
    (d) A petition to make an application special on grounds other than 
those referred to in paragraph (c) of this section must be accompanied 
by the fee set forth inSec. 1.17(h).
    (e) A request for prioritized examination under this paragraph must 
comply with the requirements of this paragraph and be accompanied by the 
prioritized examination fee set forth inSec. 1.17(c), the processing 
fee set forth inSec. 1.17(i), and if not already paid, the publication 
fee set forth inSec. 1.18(d). An application for which prioritized 
examination has been requested may not contain or be amended to contain 
more than four independent claims, more than thirty total claims, or any 
multiple dependent claim. Prioritized examination under this paragraph 
will not be accorded to international applications that have not entered 
the national stage under 35 U.S.C. 371, design applications, reissue 
applications, provisional applications, or reexamination proceedings. A 
request for prioritized examination must also comply with the 
requirements of paragraph (e)(1) or paragraph (e)(2) of this section.
    (1) A request for prioritized examination may be filed with an 
original utility or plant nonprovisional application under 35 U.S.C. 
111(a) that is complete as defined bySec. 1.51(b), with any fees due 
underSec. 1.16 paid on filing. If the application is a utility 
application, it must be filed via the Office's electronic filing system. 
The request for prioritized examination in compliance with this 
paragraph must be present upon filing of the application.
    (2) A request for prioritized examination may be filed with or after 
a request for continued examination in compliance withSec. 1.114. If 
the application is a utility application, the request must be filed via 
the Office's electronic filing system. The request must be filed before 
the mailing of the first Office action after the filing of the request 
for continued examination underSec. 1.114. Only a single such request 
for prioritized examination under this paragraph may be granted in an 
application.

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

[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 
54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct. 
10, 1997; 65 FR 54671, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 76 FR 
59054, Sept. 23, 2011; 76 FR 78569, Dec. 19, 2011]

[[Page 88]]



Sec.  1.103  Suspension of action by the Office.

    (a) Suspension for cause. On request of the applicant, the Office 
may grant a suspension of action by the Office under this paragraph for 
good and sufficient cause. The Office will not suspend action if a reply 
by applicant to an Office action is outstanding. Any petition for 
suspension of action under this paragraph must specify a period of 
suspension not exceeding six months. Any petition for suspension of 
action under this paragraph must also include:
    (1) A showing of good and sufficient cause for suspension of action; 
and
    (2) The fee set forth inSec. 1.17(g), unless such cause is the 
fault of the Office.
    (b) Limited suspension of action in a continued prosecution 
application (CPA) filed underSec. 1.53(d). On request of the 
applicant, the Office may grant a suspension of action by the Office 
under this paragraph in a continued prosecution application filed under 
Sec.  1.53(d) for a period not exceeding three months. Any request for 
suspension of action under this paragraph must be filed with the request 
for an application filed underSec. 1.53(d), specify the period of 
suspension, and include the processing fee set forth inSec. 1.17(i).
    (c) Limited suspension of action after a request for continued 
examination (RCE) underSec. 1.114. On request of the applicant, the 
Office may grant a suspension of action by the Office under this 
paragraph after the filing of a request for continued examination in 
compliance withSec. 1.114 for a period not exceeding three months. Any 
request for suspension of action under this paragraph must be filed with 
the request for continued examination underSec. 1.114, specify the 
period of suspension, and include the processing fee set forth inSec. 
1.17(i).
    (d) Deferral of examination. On request of the applicant, the Office 
may grant a deferral of examination under the conditions specified in 
this paragraph for a period not extending beyond three years from the 
earliest filing date for which a benefit is claimed under title 35, 
United States Code. A request for deferral of examination under this 
paragraph must include the publication fee set forth inSec. 1.18(d) 
and the processing fee set forth inSec. 1.17(i). A request for 
deferral of examination under this paragraph will not be granted unless:
    (1) The application is an original utility or plant application 
filed underSec. 1.53(b) or resulting from entry of an international 
application into the national stage after compliance withSec. 1.495;
    (2) The applicant has not filed a nonpublication request underSec. 
1.213(a), or has filed a request underSec. 1.213(b) to rescind a 
previously filed nonpublication request;
    (3) The application is in condition for publication as provided in 
Sec.  1.211(c); and
    (4) The Office has not issued either an Office action under 35 
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
    (e) Notice of suspension on initiative of the Office. The Office 
will notify applicant if the Office suspends action by the Office on an 
application on its own initiative.
    (f) Suspension of action for public safety or defense. The Office 
may suspend action by the Office by order of the Director if the 
following conditions are met:
    (1) The application is owned by the United States;
    (2) Publication of the invention may be detrimental to the public 
safety or defense; and
    (3) The appropriate department or agency requests such suspension.

[65 FR 50104, Aug. 16, 2000, as amended at 65 FR 57056, Sept. 20, 2000; 
67 FR 523, Jan. 4, 2002; 69 FR 49999, Aug. 12, 2004; 69 FR 56542, Sept. 
21, 2004; 78 FR 11057, Feb. 14, 2013]



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.

[[Page 89]]

    (2) The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified of the 
examiner's action. The reasons for any adverse action or any objection 
or requirement will be stated in an Office action and such information 
or references will be given as may be useful in aiding the applicant, or 
in the case of a reexamination proceeding the patent owner, to judge the 
propriety of continuing the prosecution.
    (3) An international-type search will be made in all national 
applications filed on and after June 1, 1978.
    (4) Any national application may also have an international-type 
search report prepared thereon at the time of the national examination 
on the merits, upon specific written request therefor and payment of the 
international-type search report fee set forth inSec. 1.21(e). The 
Patent and Trademark Office does not require that a formal report of an 
international-type search be prepared in order to obtain a search fee 
refund in a later filed international application.
    (b) Completeness of examiner's action. The examiner's action will be 
complete as to all matters, except that in appropriate circumstances, 
such as misjoinder of invention, fundamental defects in the application, 
and the like, the action of the examiner may be limited to such matters 
before further action is made. However, matters of form need not be 
raised by the examiner until a claim is found allowable.
    (c) Rejection of claims. (1) If the invention is not considered 
patentable, or not considered patentable as claimed, the claims, or 
those considered unpatentable will be rejected.
    (2) In rejecting claims for want of novelty or for obviousness, the 
examiner must cite the best references at his or her command. When a 
reference is complex or shows or describes inventions other than that 
claimed by the applicant, the particular part relied on must be 
designated as nearly as practicable. The pertinence of each reference, 
if not apparent, must be clearly explained and each rejected claim 
specified.
    (3) In rejecting claims the examiner may rely upon admissions by the 
applicant, or the patent owner in a reexamination proceeding, as to any 
matter affecting patentability and, insofar as rejections in 
applications are concerned, may also rely upon facts within his or her 
knowledge pursuant to paragraph (d)(2) of this section.
    (4)(i) Subject matter which would otherwise qualify as prior art 
under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as 
commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant 
or patent owner provides a statement to the effect that the subject 
matter and the claimed invention, not later than the effective filing 
date of the claimed invention, were owned by the same person or subject 
to an obligation of assignment to the same person.
    (ii) Subject matter which would otherwise qualify as prior art under 
35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly 
owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint 
research agreement under 35 U.S.C. 102(c) if:
    (A) The applicant or patent owner provides a statement to the effect 
that the subject matter was developed and the claimed invention was made 
by or on behalf of one or more parties to a joint research agreement, 
within the meaning of 35 U.S.C. 100(h) andSec. 1.9(e), that was in 
effect on or before the effective filing date of the claimed invention, 
and the claimed invention was made as a result of activities undertaken 
within the scope of the joint research agreement; and
    (B) The application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint research 
agreement.
    (5)(i) Subject matter which qualifies as prior art under 35 U.S.C. 
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed 
invention in an application filed on or after November 29, 1999, or any 
patent issuing thereon, in an application filed before November 29, 
1999, but pending on December 10, 2004, or any patent issuing thereon, 
or in any patent granted on or after December 10, 2004, will be treated 
as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to 
March 16, 2013, if the applicant or patent owner provides a statement to 
the effect that the

[[Page 90]]

subject matter and the claimed invention, at the time the claimed 
invention was made, were owned by the same person or subject to an 
obligation of assignment to the same person.
    (ii) Subject matter which qualifies as prior art under 35 U.S.C. 
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed 
invention in an application pending on or after December 10, 2004, or in 
any patent granted on or after December 10, 2004, will be treated as 
commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March 
16, 2013, on the basis of a joint research agreement under 35 U.S.C. 
103(c)(2) in effect prior to March 16, 2013, if:
    (A) The applicant or patent owner provides a statement to the effect 
that the subject matter and the claimed invention were made by or on 
behalf of the parties to a joint research agreement, within the meaning 
of 35 U.S.C. 100(h) andSec. 1.9(e), which was in effect on or before 
the date the claimed invention was made, and that the claimed invention 
was made as a result of activities undertaken within the scope of the 
joint research agreement; and
    (B) The application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint research 
agreement.
    (6) Patents issued prior to December 10, 2004, from applications 
filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in 
effect on November 28, 1999.
    (d) Citation of references. (1) If domestic patents are cited by the 
examiner, their numbers and dates, and the names of the patentees will 
be stated. If domestic patent application publications are cited by the 
examiner, their publication number, publication date, and the names of 
the applicants will be stated. If foreign published applications or 
patents are cited, their nationality or country, numbers and dates, and 
the names of the patentees will be stated, and such other data will be 
furnished as may be necessary to enable the applicant, or in the case of 
a reexamination proceeding, the patent owner, to identify the published 
applications or patents cited. In citing foreign published applications 
or patents, in case only a part of the document is involved, the 
particular pages and sheets containing the parts relied upon will be 
identified. If printed publications are cited, the author (if any), 
title, date, pages or plates, and place of publication, or place where a 
copy can be found, will be given.
    (2) When a rejection in an application is based on facts within the 
personal knowledge of an employee of the Office, the data shall be as 
specific as possible, and the reference must be supported, when called 
for by the applicant, by the affidavit of such employee, and such 
affidavit shall be subject to contradiction or explanation by the 
affidavits of the applicant and other persons.
    (e) Reasons for allowance. If the examiner believes that the record 
of the prosecution as a whole does not make clear his or her reasons for 
allowing a claim or claims, the examiner may set forth such reasoning. 
The reasons shall be incorporated into an Office action rejecting other 
claims of the application or patent under reexamination or be the 
subject of a separate communication to the applicant or patent owner. 
The applicant or patent owner may file a statement commenting on the 
reasons for allowance within such time as may be specified by the 
examiner. Failure by the examiner to respond to any statement commenting 
on reasons for allowance does not give rise to any implication.

[62 FR 53191, Oct. 10, 1997, as amended at 65 FR 14872, Mar. 20, 2000; 
65 FR 54671, Sept. 8, 2000; 65 FR 57056, Sept. 20, 2000; 70 FR 1823, 
Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 72 FR 46841, Aug. 21, 2007; 
74 FR 52690, Oct. 14, 2009; 78 FR 11057, Feb. 14, 2013]



Sec.  1.105  Requirements for information.

    (a)(1) In the course of examining or treating a matter in a pending 
or abandoned application filed under 35 U.S.C. 111 or 371 (including a 
reissue application), in a patent, or in a reexamination proceeding, the 
examiner or other Office employee may require the submission, from 
individuals identified underSec. 1.56(c), or any assignee, of such 
information as may be reasonably necessary to properly examine or treat 
the matter, for example:

[[Page 91]]

    (i) Commercial databases: The existence of any particularly relevant 
commercial database known to any of the inventors that could be searched 
for a particular aspect of the invention.
    (ii) Search: Whether a search of the prior art was made, and if so, 
what was searched.
    (iii) Related information: A copy of any non-patent literature, 
published application, or patent (U.S. or foreign), by any of the 
inventors, that relates to the claimed invention.
    (iv) Information used to draft application: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used to draft the application.
    (v) Information used in invention process: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used in the invention process, such as by designing around or providing 
a solution to accomplish an invention result.
    (vi) Improvements: Where the claimed invention is an improvement, 
identification of what is being improved.
    (vii) In use: Identification of any use of the claimed invention 
known to any of the inventors at the time the application was filed 
notwithstanding the date of the use.
    (viii) Technical information known to applicant. Technical 
information known to applicant concerning the related art, the 
disclosure, the claimed subject matter, other factual information 
pertinent to patentability, or concerning the accuracy of the examiner's 
stated interpretation of such items.
    (2) Requirements for factual information known to applicant may be 
presented in any appropriate manner, for example:
    (i) A requirement for factual information;
    (ii) Interrogatories in the form of specific questions seeking 
applicant's factual knowledge; or
    (iii) Stipulations as to facts with which the applicant may agree or 
disagree.
    (3) Any reply to a requirement for information pursuant to this 
section that states either that the information required to be submitted 
is unknown to or is not readily available to the party or parties from 
which it was requested may be accepted as a complete reply.
    (b) The requirement for information of paragraph (a)(1) of this 
section may be included in an Office action, or sent separately.
    (c) A reply, or a failure to reply, to a requirement for information 
under this section will be governed by Sec.Sec. 1.135 and 1.136.

[65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004; 
72 FR 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009; 77 FR 48821, 
Aug. 14, 2012]



Sec.Sec. 1.106-1.108  [Reserved]



Sec.  1.109  Effective filing date of a claimed invention under the 
Leahy-Smith America Invents Act.

    (a) The effective filing date for a claimed invention in a patent or 
application for patent, other than in a reissue application or reissued 
patent, is the earliest of:
    (1) The actual filing date of the patent or the application for the 
patent containing a claim to the invention; or
    (2) The filing date of the earliest application for which the patent 
or application is entitled, as to such invention, to a right of priority 
or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 
or 365.
    (b) The effective filing date for a claimed invention in a reissue 
application or a reissued patent is determined by deeming the claim to 
the invention to have been contained in the patent for which reissue was 
sought.

[78 FR 11057, Feb. 14, 2013]



Sec.  1.110  Inventorship and ownership of the subject matter of 
individual claims.

    When one or more joint inventors are named in an application or 
patent, the Office may require an applicant or patentee to identify the 
inventorship and ownership or obligation to assign ownership, of each 
claimed invention on its effective filing date (as defined inSec. 
1.109) or on its date of invention, as applicable, when necessary for 
purposes of an Office proceeding. The Office may also require an 
applicant or patentee to

[[Page 92]]

identify the invention dates of the subject matter of each claim when 
necessary for purposes of an Office proceeding.

[78 FR 11058, Feb. 14, 2013]

              Action by Applicant and Further Consideration

    Authority: Secs. 1.111 to 1.113 also issued under 35 U.S.C. 132.



Sec.  1.111  Reply by applicant or patent owner to a non-final Office
action.

    (a)(1) If the Office action after the first examination (Sec.  
1.104) is adverse in any respect, the applicant or patent owner, if he 
or she persists in his or her application for a patent or reexamination 
proceeding, must reply and request reconsideration or further 
examination, with or without amendment. See Sec.Sec. 1.135 and 1.136 
for time for reply to avoid abandonment.
    (2) Supplemental replies. (i) A reply that is supplemental to a 
reply that is in compliance withSec. 1.111(b) will not be entered as a 
matter of right except as provided in paragraph (a)(2)(ii) of this 
section. The Office may enter a supplemental reply if the supplemental 
reply is clearly limited to:
    (A) Cancellation of a claim(s);
    (B) Adoption of the examiner suggestion(s);
    (C) Placement of the application in condition for allowance;
    (D) Reply to an Office requirement made after the first reply was 
filed;
    (E) Correction of informalities (e.g., typographical errors); or
    (F) Simplification of issues for appeal.
    (ii) A supplemental reply will be entered if the supplemental reply 
is filed within the period during which action by the Office is 
suspended underSec. 1.103(a) or (c).
    (b) In order to be entitled to reconsideration or further 
examination, the applicant or patent owner must reply to the Office 
action. The reply by the applicant or patent owner must be reduced to a 
writing which distinctly and specifically points out the supposed errors 
in the examiner's action and must reply to every ground of objection and 
rejection in the prior Office action. The reply must present arguments 
pointing out the specific distinctions believed to render the claims, 
including any newly presented claims, patentable over any applied 
references. If the reply is with respect to an application, a request 
may be made that objections or requirements as to form not necessary to 
further consideration of the claims be held in abeyance until allowable 
subject matter is indicated. The applicant's or patent owner's reply 
must appear throughout to be a bona fide attempt to advance the 
application or the reexamination proceeding to final action. A general 
allegation that the claims define a patentable invention without 
specifically pointing out how the language of the claims patentably 
distinguishes them from the references does not comply with the 
requirements of this section.
    (c) In amending in reply to a rejection of claims in an application 
or patent under reexamination, the applicant or patent owner must 
clearly point out the patentable novelty which he or she thinks the 
claims present in view of the state of the art disclosed by the 
references cited or the objections made. The applicant or patent owner 
must also show how the amendments avoid such references or objections.

[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997; 65 
FR 54672, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, Jan. 
27, 2005]



Sec.  1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec.  1.111 orSec. 
1.945) to a non-final action and any comments by an inter partes 
reexamination requester (Sec.  1.947), the application or the patent 
under reexamination will be reconsidered and again examined. The 
applicant, or in the case of a reexamination proceeding the patent owner 
and any third party requester, will be notified if claims are rejected, 
objections or requirements made, or decisions favorable to patentability 
are made, in the same manner as after the first examination (Sec.  
1.104). Applicant or patent owner may reply to such Office action in the 
same manner provided inSec. 1.111 orSec. 1.945, with or without 
amendment, unless such Office action indicates that it is made final 
(Sec.  1.113) or an appeal (Sec.  41.31 of this

[[Page 93]]

title) has been taken (Sec.  1.116), or in an inter partes 
reexamination, that it is an action closing prosecution (Sec.  1.949) or 
a right of appeal notice (Sec.  1.953).

[69 FR 49999, Aug. 12, 2004]



Sec.  1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration by 
the examiner the rejection or other action may be made final, whereupon 
applicant's, or for ex parte reexaminations filed underSec. 1.510, 
patent owner's reply is limited to appeal in the case of rejection of 
any claim (Sec.  41.31 of this title), or to amendment as specified in 
Sec.  1.114 orSec. 1.116. Petition may be taken to the Director in the 
case of objections or requirements not involved in the rejection of any 
claim (Sec.  1.181). Reply to a final rejection or action must comply 
withSec. 1.114 or paragraph (c) of this section. For final actions in 
an inter partes reexamination filed underSec. 1.913, seeSec. 1.953.
    (b) In making such final rejection, the examiner shall repeat or 
state all grounds of rejection then considered applicable to the claims 
in the application, clearly stating the reasons in support thereof.
    (c) Reply to a final rejection or action must include cancellation 
of, or appeal from the rejection of, each rejected claim. If any claim 
stands allowed, the reply to a final rejection or action must comply 
with any requirements or objections as to form.

[65 FR 14872, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000; 69 
FR 49999, Aug. 12, 2004]



Sec.  1.114  Request for continued examination.

    (a) If prosecution in an application is closed, an applicant may 
request continued examination of the application by filing a submission 
and the fee set forth inSec. 1.17(e) prior to the earliest of:
    (1) Payment of the issue fee, unless a petition underSec. 1.313 is 
granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals 
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a 
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated.
    (b) Prosecution in an application is closed as used in this section 
means that the application is under appeal, or that the last Office 
action is a final action (Sec.  1.113), a notice of allowance (Sec.  
1.311), or an action that otherwise closes prosecution in the 
application.
    (c) A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new evidence 
in support of patentability. If reply to an Office action under 35 
U.S.C. 132 is outstanding, the submission must meet the reply 
requirements ofSec. 1.111.
    (d) If an applicant timely files a submission and fee set forth in 
Sec.  1.17(e), the Office will withdraw the finality of any Office 
action and the submission will be entered and considered. If an 
applicant files a request for continued examination under this section 
after appeal, but prior to a decision on the appeal, it will be treated 
as a request to withdraw the appeal and to reopen prosecution of the 
application before the examiner. An appeal brief (Sec.  41.37 of this 
title) or a reply brief (Sec.  41.41 of this title), or related papers, 
will not be considered a submission under this section.
    (e) The provisions of this section do not apply to:
    (1) A provisional application;
    (2) An application for a utility or plant patent filed under 35 
U.S.C. 111(a) before June 8, 1995;
    (3) An international application filed under 35 U.S.C. 363 before 
June 8, 1995;
    (4) An application for a design patent; or
    (5) A patent under reexamination.

[65 FR 50104, Aug. 16, 2000, as amended at 69 FR 49999, Aug. 12, 2004; 
72 FR 46841, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009]

                               Amendments

    Authority: Secs. 1.115 to 1.127 also issued under 35 U.S.C. 132.



Sec.  1.115  Preliminary amendments.

    (a) A preliminary amendment is an amendment that is received in the 
Office (Sec.  1.6) on or before the mail date of

[[Page 94]]

the first Office action underSec. 1.104. The patent application 
publication may include preliminary amendments (Sec.  1.215(a)).
    (1) A preliminary amendment that is present on the filing date of an 
application is part of the original disclosure of the application.
    (2) A preliminary amendment filed after the filing date of the 
application is not part of the original disclosure of the application.
    (b) A preliminary amendment in compliance withSec. 1.121 will be 
entered unless disapproved by the Director.
    (1) A preliminary amendment seeking cancellation of all the claims 
without presenting any new or substitute claims will be disapproved.
    (2) A preliminary amendment may be disapproved if the preliminary 
amendment unduly interferes with the preparation of a first Office 
action in an application. Factors that will be considered in 
disapproving a preliminary amendment include:
    (i) The state of preparation of a first Office action as of the date 
of receipt (Sec.  1.6) of the preliminary amendment by the Office; and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the preliminary amendment.
    (3) A preliminary amendment will not be disapproved under (b)(2) of 
this section if it is filed no later than:
    (i) Three months from the filing date of an application underSec. 
1.53(b);
    (ii) The filing date of a continued prosecution application under 
Sec.  1.53(d); or
    (iii) Three months from the date the national stage is entered as 
set forth inSec. 1.491 in an international application.
    (4) The time periods specified in paragraph (b)(3) of this section 
are not extendable.

[69 FR 56543, Sept. 21, 2004]



Sec.  1.116  Amendments and affidavits or other evidence after final
action and prior to appeal.

    (a) An amendment after final action must comply withSec. 1.114 or 
this section.
    (b) After a final rejection or other final action (Sec.  1.113) in 
an application or in an ex parte reexamination filed underSec. 1.510, 
or an action closing prosecution (Sec.  1.949) in an inter partes 
reexamination filed underSec. 1.913, but before or on the same date of 
filing an appeal (Sec.  41.31 orSec. 41.61 of this title):
    (1) An amendment may be made canceling claims or complying with any 
requirement of form expressly set forth in a previous Office action;
    (2) An amendment presenting rejected claims in better form for 
consideration on appeal may be admitted; or
    (3) An amendment touching the merits of the application or patent 
under reexamination may be admitted upon a showing of good and 
sufficient reasons why the amendment is necessary and was not earlier 
presented.
    (c) The admission of, or refusal to admit, any amendment after a 
final rejection, a final action, an action closing prosecution, or any 
related proceedings will not operate to relieve the application or 
reexamination proceeding from its condition as subject to appeal or to 
save the application from abandonment underSec. 1.135, or the 
reexamination prosecution from termination underSec. 1.550(d) orSec. 
1.957(b) or limitation of further prosecution underSec. 1.957(c).
    (d)(1) Notwithstanding the provisions of paragraph (b) of this 
section, no amendment other than canceling claims, where such 
cancellation does not affect the scope of any other pending claim in the 
proceeding, can be made in an inter partes reexamination proceeding 
after the right of appeal notice underSec. 1.953 except as provided in 
Sec.  1.981 or as permitted bySec. 41.77(b)(1) of this title.
    (2) Notwithstanding the provisions of paragraph (b) of this section, 
an amendment made after a final rejection or other final action (Sec.  
1.113) in an ex parte reexamination filed underSec. 1.510, or an 
action closing prosecution (Sec.  1.949) in an inter partes 
reexamination filed underSec. 1.913 may not cancel claims where such 
cancellation affects the scope of any other pending claim in the 
reexamination proceeding except as provided inSec. 1.981 or as 
permitted bySec. 41.77(b)(1) of this title.
    (e) An affidavit or other evidence submitted after a final rejection 
or other final action (Sec.  1.113) in an application or in an ex parte 
reexamination

[[Page 95]]

filed underSec. 1.510, or an action closing prosecution (Sec.  1.949) 
in an inter partes reexamination filed underSec. 1.913 but before or 
on the same date of filing an appeal (Sec.  41.31 orSec. 41.61 of this 
title), may be admitted upon a showing of good and sufficient reasons 
why the affidavit or other evidence is necessary and was not earlier 
presented.
    (f) Notwithstanding the provisions of paragraph (e) of this section, 
no affidavit or other evidence can be made in an inter partes 
reexamination proceeding after the right of appeal notice underSec. 
1.953 except as provided inSec. 1.981 or as permitted bySec. 
41.77(b)(1) of this title.
    (g) After decision on appeal, amendments, affidavits and other 
evidence can only be made as provided in Sec.Sec. 1.198 and 1.981, or 
to carry into effect a recommendation underSec. 41.50(c) of this 
title.

[69 FR 49999, Aug. 12, 2004]



Sec.Sec. 1.117-1.119  [Reserved]



Sec.  1.121  Manner of making amendments in applications.

    (a) Amendments in applications, other than reissue applications. 
Amendments in applications, other than reissue applications, are made by 
filing a paper, in compliance withSec. 1.52, directing that specified 
amendments be made.
    (b) Specification. Amendments to the specification, other than the 
claims, computer listings (Sec.  1.96) and sequence listings (Sec.  
1.825), must be made by adding, deleting or replacing a paragraph, by 
replacing a section, or by a substitute specification, in the manner 
specified in this section.
    (1) Amendment to delete, replace, or add a paragraph. Amendments to 
the specification, including amendment to a section heading or the title 
of the invention which are considered for amendment purposes to be an 
amendment of a paragraph, must be made by submitting:
    (i) An instruction, which unambiguously identifies the location, to 
delete one or more paragraphs of the specification, replace a paragraph 
with one or more replacement paragraphs, or add one or more paragraphs;
    (ii) The full text of any replacement paragraph with markings to 
show all the changes relative to the previous version of the paragraph. 
The text of any added subject matter must be shown by underlining the 
added text. The text of any deleted matter must be shown by strike-
through except that double brackets placed before and after the deleted 
characters may be used to show deletion of five or fewer consecutive 
characters. The text of any deleted subject matter must be shown by 
being placed within double brackets if strike-through cannot be easily 
perceived;
    (iii) The full text of any added paragraphs without any underlining; 
and
    (iv) The text of a paragraph to be deleted must not be presented 
with strike-through or placed within double brackets. The instruction to 
delete may identify a paragraph by its paragraph number or include a few 
words from the beginning, and end, of the paragraph, if needed for 
paragraph identification purposes.
    (2) Amendment by replacement section. If the sections of the 
specification contain section headings as provided inSec. 1.77(b), 
Sec.  1.154(b), orSec. 1.163(c), amendments to the specification, 
other than the claims, may be made by submitting:
    (i) A reference to the section heading along with an instruction, 
which unambiguously identifies the location, to delete that section of 
the specification and to replace such deleted section with a replacement 
section; and
    (ii) A replacement section with markings to show all changes 
relative to the previous version of the section. The text of any added 
subject matter must be shown by underlining the added text. The text of 
any deleted matter must be shown by strike-through except that double 
brackets placed before and after the deleted characters may be used to 
show deletion of five or fewer consecutive characters. The text of any 
deleted subject matter must be shown by being placed within double 
brackets if strike-through cannot be easily perceived.
    (3) Amendment by substitute specification. The specification, other 
than the claims, may also be amended by submitting:
    (i) An instruction to replace the specification; and

[[Page 96]]

    (ii) A substitute specification in compliance with Sec.Sec. 
1.125(b) and (c).
    (4) Reinstatement of previously deleted paragraph or section. A 
previously deleted paragraph or section may be reinstated only by a 
subsequent amendment adding the previously deleted paragraph or section.
    (5) Presentation in subsequent amendment document. Once a paragraph 
or section is amended in a first amendment document, the paragraph or 
section shall not be re-presented in a subsequent amendment document 
unless it is amended again or a substitute specification is provided.
    (c) Claims. Amendments to a claim must be made by rewriting the 
entire claim with all changes (e.g., additions and deletions) as 
indicated in this subsection, except when the claim is being canceled. 
Each amendment document that includes a change to an existing claim, 
cancellation of an existing claim or addition of a new claim, must 
include a complete listing of all claims ever presented, including the 
text of all pending and withdrawn claims, in the application. The claim 
listing, including the text of the claims, in the amendment document 
will serve to replace all prior versions of the claims, in the 
application. In the claim listing, the status of every claim must be 
indicated after its claim number by using one of the following 
identifiers in a parenthetical expression: (Original), (Currently 
amended), (Canceled), (Withdrawn), (Previously presented), (New), and 
(Not entered).
    (1) Claim listing. All of the claims presented in a claim listing 
shall be presented in ascending numerical order. Consecutive claims 
having the same status of ``canceled'' or ``not entered'' may be 
aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim 
listing shall commence on a separate sheet of the amendment document and 
the sheet(s) that contain the text of any part of the claims shall not 
contain any other part of the amendment.
    (2) When claim text with markings is required. All claims being 
currently amended in an amendment paper shall be presented in the claim 
listing, indicate a status of ``currently amended,'' and be submitted 
with markings to indicate the changes that have been made relative to 
the immediate prior version of the claims. The text of any added subject 
matter must be shown by underlining the added text. The text of any 
deleted matter must be shown by strike-through except that double 
brackets placed before and after the deleted characters may be used to 
show deletion of five or fewer consecutive characters. The text of any 
deleted subject matter must be shown by being placed within double 
brackets if strike-through cannot be easily perceived. Only claims 
having the status of ``currently amended,'' or ``withdrawn'' if also 
being amended, shall include markings. If a withdrawn claim is currently 
amended, its status in the claim listing may be identified as 
``withdrawn--currently amended.''
    (3) When claim text in clean version is required. The text of all 
pending claims not being currently amended shall be presented in the 
claim listing in clean version, i.e., without any markings in the 
presentation of text. The presentation of a clean version of any claim 
having the status of ``original,'' ``withdrawn'' or ``previously 
presented'' will constitute an assertion that it has not been changed 
relative to the immediate prior version, except to omit markings that 
may have been present in the immediate prior version of the claims of 
the status of ``withdrawn'' or ``previously presented.'' Any claim added 
by amendment must be indicated with the status of ``new'' and presented 
in clean version, i.e., without any underlining.
    (4) When claim text shall not be presented; canceling a claim. (i) 
No claim text shall be presented for any claim in the claim listing with 
the status of ``canceled'' or ``not entered.''
    (ii) Cancellation of a claim shall be effected by an instruction to 
cancel a particular claim number. Identifying the status of a claim in 
the claim listing as ``canceled'' will constitute an instruction to 
cancel the claim.
    (5) Reinstatement of previously canceled claim. A claim which was 
previously canceled may be reinstated only by adding the claim as a 
``new'' claim with a new claim number.

[[Page 97]]

    (d) Drawings: One or more application drawings shall be amended in 
the following manner: Any changes to an application drawing must be in 
compliance withSec. 1.84 and must be submitted on a replacement sheet 
of drawings which shall be an attachment to the amendment document and, 
in the top margin, labeled ``Replacement Sheet.'' Any replacement sheet 
of drawings shall include all of the figures appearing on the immediate 
prior version of the sheet, even if only one figure is amended. Any new 
sheet of drawings containing an additional figure must be labeled in the 
top margin as ``New Sheet.'' All changes to the drawings shall be 
explained, in detail, in either the drawing amendment or remarks section 
of the amendment paper.
    (1) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, may be included. The marked-up 
copy must be clearly labeled as ``Annotated Sheet'' and must be 
presented in the amendment or remarks section that explains the change 
to the drawings.
    (2) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, must be provided when required 
by the examiner.
    (e) Disclosure consistency. The disclosure must be amended, when 
required by the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence between the claims, 
the remainder of the specification, and the drawings.
    (f) No new matter. No amendment may introduce new matter into the 
disclosure of an application.
    (g) Exception for examiner's amendments. Changes to the 
specification, including the claims, of an application made by the 
Office in an examiner's amendment may be made by specific instructions 
to insert or delete subject matter set forth in the examiner's amendment 
by identifying the precise point in the specification or the claim(s) 
where the insertion or deletion is to be made. Compliance with 
paragraphs (b)(1), (b)(2), or (c) of this section is not required.
    (h) Amendment sections. Each section of an amendment document (e.g., 
amendment to the claims, amendment to the specification, replacement 
drawings, and remarks) must begin on a separate sheet.
    (i) Amendments in reissue applications. Any amendment to the 
description and claims in reissue applications must be made in 
accordance withSec. 1.173.
    (j) Amendments in reexamination proceedings. Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings must be made in accordance withSec. 1.530.
    (k) Amendments in provisional applications. Amendments in 
provisional applications are not usually made. If an amendment is made 
to a provisional application, however, it must comply with the 
provisions of this section. Any amendments to a provisional application 
shall be placed in the provisional application file but may not be 
entered.

[68 FR 38628, June 30, 2003, as amended at 69 FR 56543, Sept. 21, 2004]



Sec.Sec. 1.122-1.224  [Reserved]



Sec.  1.125  Substitute specification.

    (a) If the number or nature of the amendments or the legibility of 
the application papers renders it difficult to consider the application, 
or to arrange the papers for printing or copying, the Office may require 
the entire specification, including the claims, or any part thereof, be 
rewritten.
    (b) Subject toSec. 1.312, a substitute specification, excluding 
the claims, may be filed at any point up to payment of the issue fee if 
it is accompanied by a statement that the substitute specification 
includes no new matter.
    (c) A substitute specification submitted under this section must be 
submitted with markings showing all the changes relative to the 
immediate prior version of the specification of record. The text of any 
added subject matter must be shown by underlining the added text. The 
text of any deleted matter must be shown by strike-through except that 
double brackets placed before and after the deleted characters may be 
used to show deletion of five or fewer consecutive characters. The text 
of any deleted subject matter must be shown by being placed

[[Page 98]]

within double brackets if strike-through cannot be easily perceived. An 
accompanying clean version (without markings) must also be supplied. 
Numbering the paragraphs of the specification of record is not 
considered a change that must be shown pursuant to this paragraph.
    (d) A substitute specification under this section is not permitted 
in a reissue application or in a reexamination proceeding.

[62 FR 53193, Oct. 10, 1997, as amended at 65 FR 54673, Sept. 8, 2000; 
68 FR 38630, June 30, 2003]



Sec.  1.126  Numbering of claims.

    The original numbering of the claims must be preserved throughout 
the prosecution. When claims are canceled the remaining claims must not 
be renumbered. When claims are added, they must be numbered by the 
applicant consecutively beginning with the number next following the 
highest numbered claim previously presented (whether entered or not). 
When the application is ready for allowance, the examiner, if necessary, 
will renumber the claims consecutively in the order in which they appear 
or in such order as may have been requested by applicant.

[62 FR 53194, Oct. 10, 1997]



Sec.  1.127  Petition from refusal to admit amendment.

    From the refusal of the primary examiner to admit an amendment, in 
whole or in part, a petition will lie to the Director underSec. 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 inSec. 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 inSec. 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 inSec. 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 inSec. 1.17(r). Any submission 
filed after a final rejection made in an application subsequent to the 
fee set forth inSec. 1.17(r) having been twice paid will be treated as 
set forth inSec. 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.

[[Page 99]]

    (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 inSec. 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 inSec. 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 inSec. 1.17(s) will 
be deferred and any decision on the petition affirming or modifying the 
requirement will set a new time period to elect the invention or 
inventions to be searched and examined and to pay the fee set forth in 
Sec.  1.17(s) for each independent and distinct invention claimed in the 
application in excess of one which applicant elects.
    (3) The additional inventions for which the required fee has not 
been paid will be withdrawn from consideration underSec. 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 of attribution or prior public 
disclosure under the Leahy-Smith America Invents Act.

    (a) Affidavit or declaration of attribution. When any claim of an 
application or a patent under reexamination is rejected, the applicant 
or patent owner may submit an appropriate affidavit or declaration to 
disqualify a disclosure as prior art by establishing that the disclosure 
was made by the inventor or a joint inventor, or the subject matter 
disclosed was obtained directly or indirectly from the inventor or a 
joint inventor.
    (b) Affidavit or declaration of prior public disclosure. When any 
claim of an application or a patent under reexamination is rejected, the 
applicant or patent owner may submit an appropriate affidavit or 
declaration to disqualify a disclosure as prior art by establishing that 
the subject matter disclosed had, before such disclosure was made or 
before such subject matter was effectively filed, been publicly 
disclosed by the inventor or a joint inventor or another who obtained 
the subject matter disclosed directly or indirectly from the inventor or 
a joint inventor. An affidavit or declaration under this paragraph must 
identify the subject matter publicly disclosed and provide the date such 
subject matter was publicly disclosed by the inventor or a joint 
inventor or another who obtained the subject matter disclosed directly 
or indirectly from the inventor or a joint inventor.
    (1) If the subject matter publicly disclosed on that date was in a 
printed publication, the affidavit or declaration must be accompanied by 
a copy of the printed publication.
    (2) If the subject matter publicly disclosed on that date was not in 
a printed publication, the affidavit or declaration must describe the 
subject matter with sufficient detail and particularity to determine 
what subject matter had been publicly disclosed on that date by the 
inventor or a joint inventor or another who obtained the subject matter 
disclosed directly or indirectly from the inventor or a joint inventor.
    (c) When this section is not available. The provisions of this 
section are not available if the rejection is based upon a disclosure 
made more than one year before the effective filing date of the claimed 
invention. The provisions of this section may not be available if the 
rejection is based upon a U.S. patent or U.S. patent application 
publication of a

[[Page 100]]

patented or pending application naming another inventor, the patent or 
pending application claims an invention that is the same or 
substantially the same as the applicant's or patent owner's claimed 
invention, and the affidavit or declaration contends that an inventor 
named in the U.S. patent or U.S. patent application publication derived 
the claimed invention from the inventor or a joint inventor named in the 
application or patent, in which case an applicant or a patent owner may 
file a petition for a derivation proceeding pursuant toSec. 42.401 et 
seq. of this title.
    (d) Applications and patents to which this section is applicable. 
The provisions of this section apply to any application for patent, and 
to any patent issuing thereon, that contains, or contained at any time:
    (1) A claim to a claimed invention that has an effective filing date 
as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; or
    (2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any 
patent or application that contains, or contained at any time, a claim 
to a claimed invention that has an effective filing date as defined in 
35 U.S.C. 100(i) that is on or after March 16, 2013.

[78 FR 11058, Feb. 14, 2013]



Sec.  1.131  Affidavit or declaration of prior invention or to 
disqualify commonly owned patent or published application as prior art.

    (a) When any claim of an application or a patent under reexamination 
is rejected, the inventor of the subject matter of the rejected claim, 
the owner of the patent under reexamination, or the party qualified 
underSec. 1.42 orSec. 1.46, may submit an appropriate oath or 
declaration to establish invention of the subject matter of the rejected 
claim prior to the effective date of the reference or activity on which 
the rejection is based. The effective date of a U.S. patent, U.S. patent 
application publication, or international application publication under 
PCT Article 21(2) is the earlier of its publication date or the date 
that it is effective as a reference under 35 U.S.C. 102(e) as in effect 
on March 15, 2013. Prior invention may not be established under this 
section in any country other than the United States, a NAFTA country, or 
a WTO member country. Prior invention may not be established under this 
section before December 8, 1993, in a NAFTA country other than the 
United States, or before January 1, 1996, in a WTO member country other 
than a NAFTA country. Prior invention may not be established under this 
section if either:
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application naming 
another inventor which claims interfering subject matter as defined in 
Sec.  41.203(a) of this title, in which case an applicant may suggest an 
interference pursuant toSec. 41.202(a) of this title; or
    (2) The rejection is based upon a statutory bar.
    (b) The showing of facts for an oath or declaration under paragraph 
(a) of this section shall be such, in character and weight, as to 
establish reduction to practice prior to the effective date of the 
reference, or conception of the invention prior to the effective date of 
the reference coupled with due diligence from prior to said date to a 
subsequent reduction to practice or to the filing of the application. 
Original exhibits of drawings or records, or photocopies thereof, must 
accompany and form part of the affidavit or declaration or their absence 
must be satisfactorily explained.
    (c) When any claim of an application or a patent under reexamination 
is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a 
U.S. patent or U.S. patent application publication which is not prior 
art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the 
inventions defined by the claims in the application or patent under 
reexamination and by the claims in the patent or published application 
are not identical but are not patentably distinct, and the inventions 
are owned by the same party, the applicant or owner of the patent under 
reexamination may disqualify the patent or patent application 
publication as prior art. The patent or patent application publication 
can be disqualified as prior art by submission of:

[[Page 101]]

    (1) A terminal disclaimer in accordance withSec. 1.321(c); and
    (2) An oath or declaration stating that the application or patent 
under reexamination and patent or published application are currently 
owned by the same party, and that the inventor named in the application 
or patent under reexamination is the prior inventor under 35 U.S.C. 104 
as in effect on March 15, 2013.
    (d) The provisions of this section apply to any application for 
patent, and to any patent issuing thereon, that contains, or contained 
at any time:
    (1) A claim to an invention that has an effective filing date as 
defined in 35 U.S.C. 100(i) that is before March 16, 2013; or
    (2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any 
patent or application that contains, or contained at any time, a claim 
to an invention that has an effective filing date as defined in 35 
U.S.C. 100(i) that is before March 16, 2013.
    (e) In an application for patent to which the provisions ofSec. 
1.130 apply, and to any patent issuing thereon, the provisions of this 
section are applicable only with respect to a rejection under 35 U.S.C. 
102(g) as in effect on March 15, 2013.

[78 FR 11058, Feb. 14, 2013]



Sec.  1.132  Affidavits or declarations traversing rejections or
objections.

    When any claim of an application or a patent under reexamination is 
rejected or objected to, any evidence submitted to traverse the 
rejection or objection on a basis not otherwise provided for must be by 
way of an oath or declaration under this section.

[65 FR 57057, Sept. 20, 2000]

                               Interviews



Sec.  1.133  Interviews.

    (a)(1) Interviews with examiners concerning applications and other 
matters pending before the Office must be conducted on Office premises 
and within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Director.
    (2) An interview for the discussion of the patentability of a 
pending application will not occur before the first Office action, 
unless the application is a continuing or substitute application or the 
examiner determines that such an interview would advance prosecution of 
the application.
    (3) The examiner may require that an interview be scheduled in 
advance.
    (b) In every instance where reconsideration is requested in view of 
an interview with an examiner, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the applicant. An interview does not remove the necessity 
for reply to Office actions as specified in Sec.Sec. 1.111 and 1.135.

(35 U.S.C. 132)

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53194, Oct. 10, 1997; 
65 FR 54674, Sept. 8, 2000; 70 FR 56128, Sept. 26, 2005]

         Time for Reply by Applicant; Abandonment of Application

    Authority: Secs. 1.135 to 1.138 also issued under 35 U.S.C. 133.



Sec.  1.134  Time period for reply to an Office action.

    An Office action will notify the applicant of any non-statutory or 
shortened statutory time period set for reply to an Office action. 
Unless the applicant is notified in writing that a reply is required in 
less than six months, a maximum period of six months is allowed.

[62 FR 53194, Oct. 10, 1997]



Sec.  1.135  Abandonment for failure to reply within time period.

    (a) If an applicant of a patent application fails to reply within 
the time period provided underSec. 1.134 andSec. 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

[[Page 102]]

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 underSec. 1.134 to 
supply the omission.

[62 FR 53194, Oct. 10, 1997]



Sec.  1.136  Extensions of time.

    (a)(1) If an applicant is required to reply within a nonstatutory or 
shortened statutory time period, applicant may extend the time period 
for reply up to the earlier of the expiration of any maximum period set 
by statute or five months after the time period set for reply, if a 
petition for an extension of time and the fee set inSec. 1.17(a) are 
filed, unless:
    (i) Applicant is notified otherwise in an Office action;
    (ii) The reply is a reply brief submitted pursuant toSec. 41.41 of 
this title;
    (iii) The reply is a request for an oral hearing submitted pursuant 
toSec. 41.47(a) of this title;
    (iv) The reply is to a decision by the Patent Trial and Appeal Board 
pursuant toSec. 1.304 or toSec. 41.50 orSec. 41.52 of this title; 
or
    (v) The application is involved in a contested case (Sec.  41.101(a) 
of this title) or a derivation proceeding (Sec.  42.4(b) of this title).
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior to 
the expiration of the period of extension to avoid abandonment of the 
application (Sec.  1.135), but in no situation may an applicant reply 
later than the maximum time period set by statute, or be granted an 
extension of time under paragraph (b) of this section when the 
provisions of this paragraph are available. SeeSec. 1.304 for 
extensions of time to appeal to the U.S. Court of Appeals for the 
Federal Circuit or to commence a civil action;Sec. 1.550(c) for 
extensions of time in ex parte reexamination proceedings,Sec. 1.956 
for extensions of time in inter partes reexamination proceedings; 
Sec.Sec. 41.4(a) and 41.121(a)(3) of this title for extensions of time 
in contested cases before the Patent Trial and Appeal Board; andSec. 
42.5(c) of this title for extensions of time in trials before the Patent 
Trial and Appeal Board.
    (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 underSec. 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 inSec. 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. SeeSec. 1.304 for extensions of time to appeal to the U.S. 
Court of Appeals for the Federal Circuit or to commence a civil action; 
Sec.  1.550(c) for extensions of time in ex parte reexamination 
proceedings;Sec. 1.956 for extensions of time in inter partes 
reexamination proceedings; Sec.Sec. 41.4(a) and 41.121(a)(3) of this 
title for extensions of time in contested cases before the Patent Trial 
and Appeal Board; andSec. 42.5(c) of this

[[Page 103]]

title for extensions of time in trials before the Patent Trial and 
Appeal Board. Any request under this section must be accompanied by the 
petition fee set forth inSec. 1.17(g).
    (c) If an applicant is notified in a ``Notice of Allowability'' that 
an application is otherwise in condition for allowance, the following 
time periods are not extendable if set in the ``Notice of Allowability'' 
or in an Office action having a mail date on or after the mail date of 
the ``Notice of Allowability'':
    (1) The period for submitting the inventor's oath or declaration;
    (2) The period for submitting formal drawings set underSec. 
1.85(c); and
    (3) The period for making a deposit set underSec. 1.809(c).

[62 FR 53194, Oct. 10, 1997, as amended at 65 FR 54674, Sept. 8, 2000; 
65 FR 76773, Dec. 7, 2000; 66 FR 21092, Apr. 27, 2001; 69 FR 50000, Aug. 
12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 72 FR 
46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 77 FR 46625, Aug. 6, 
2012; 77 FR 48821, Aug. 14, 2012]



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

    (a) Unavoidable. If the delay in reply by applicant or patent owner 
was unavoidable, a petition may be filed pursuant to this paragraph to 
revive an abandoned application, a reexamination prosecution terminated 
underSec. 1.550(d) orSec. 1.957(b) or limited underSec. 1.957(c), 
or a lapsed patent. A grantable petition pursuant to this paragraph must 
be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth inSec. 1.17(l);
    (3) A showing to the satisfaction of the Director that the entire 
delay in filing the required reply from the due date for the reply until 
the filing of a grantable petition pursuant to this paragraph was 
unavoidable; and
    (4) Any terminal disclaimer (and fee as set forth inSec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (b) Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination 
prosecution terminated underSec. 1.550(d) orSec. 1.957(b) or limited 
underSec. 1.957(c), or a lapsed patent. A grantable petition pursuant 
to this paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth inSec. 1.17(m);
    (3) A statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable petition 
pursuant to this paragraph was unintentional. The Director may require 
additional information where there is a question whether the delay was 
unintentional; and
    (4) Any terminal disclaimer (and fee as set forth inSec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (c) Reply. In a nonprovisional application abandoned for failure to 
prosecute, the required reply may be met by the filing of a continuing 
application. In a nonprovisional utility or plant application filed on 
or after June 8, 1995, and abandoned for failure to prosecute, the 
required reply may also be met by the filing of a request for continued 
examination in compliance withSec. 1.114. In an application or patent, 
abandoned or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of the issue fee or any 
outstanding balance. In an application, abandoned for failure to pay the 
publication fee, the required reply must include payment of the 
publication fee.
    (d) Terminal disclaimer. (1) Any petition to revive pursuant to this 
section in a design application must be accompanied by a terminal 
disclaimer and fee as set forth inSec. 1.321 dedicating to the public 
a terminal part of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. Any petition to revive 
pursuant to this section in either a utility or plant application filed 
before June 8, 1995, must be accompanied by a terminal disclaimer and 
fee as set forth inSec. 1.321 dedicating to the public a terminal part 
of the term of any patent granted thereon equivalent to the lesser of:
    (i) The period of abandonment of the application; or

[[Page 104]]

    (ii) The period extending beyond twenty years from the date on which 
the application for the patent was filed in the United States or, if the 
application contains a specific reference to an earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on 
which the earliest such application was filed.
    (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this 
section must also apply to any patent granted on a continuing utility or 
plant application filed before June 8, 1995, or a continuing design 
application, that contains a specific reference under 35 U.S.C. 120, 
121, or 365(c) to the application for which revival is sought.
    (3) The provisions of paragraph (d)(1) of this section do not apply 
to applications for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on or after June 8, 
1995, to lapsed patents, to reissue applications, or to reexamination 
proceedings.
    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application, a 
terminated or limited reexamination prosecution, or lapsed patent upon 
petition filed pursuant to this section, to be considered timely, must 
be filed within two months of the decision refusing to revive or within 
such time as set in the decision. Unless a decision indicates otherwise, 
this time period may be extended under:
    (1) The provisions ofSec. 1.136 for an abandoned application or 
lapsed patent;
    (2) The provisions ofSec. 1.550(c) for a terminated ex parte 
reexamination prosecution, where the ex parte reexamination was filed 
underSec. 1.510; or
    (3) The provisions ofSec. 1.956 for a terminated inter partes 
reexamination prosecution or an inter partes reexamination limited as to 
further prosecution, where the inter partes reexamination was filed 
underSec. 1.913.
    (f) Abandonment for failure to notify the Office of a foreign 
filing: A nonprovisional application abandoned pursuant to 35 U.S.C. 
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing 
of an application in a foreign country or under a multinational treaty 
that requires publication of applications eighteen months after filing, 
may be revived only pursuant to paragraph (b) of this section. The reply 
requirement of paragraph (c) of this section is met by the notification 
of such filing in a foreign country or under a multinational treaty, but 
the filing of a petition under this section will not operate to stay any 
period for reply that may be running against the application.
    (g) Provisional applications. A provisional application, abandoned 
for failure to timely respond to an Office requirement, may be revived 
pursuant to this section. Subject to the provisions of 35 U.S.C. 
119(e)(3) andSec. 1.7(b), a provisional application will not be 
regarded as pending after twelve months from its filing date under any 
circumstances.

[65 FR 57057, Sept. 20, 2000, as amended at 69 FR 56543, Sept. 21, 2004; 
72 FR 18904, Apr. 16, 2007]



Sec.  1.138  Express abandonment.

    (a) An application may be expressly abandoned by filing a written 
declaration of abandonment identifying the application in the United 
States Patent and Trademark Office. Express abandonment of the 
application may not be recognized by the Office before the date of issue 
or publication unless it is actually received by appropriate officials 
in time to act.
    (b) A written declaration of abandonment must be signed by a party 
authorized underSec. 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in 
the application, except as otherwise provided in this paragraph. A 
registered attorney or agent, not of record, who acts in a 
representative capacity under the provisions ofSec. 1.34(a) when 
filing a continuing application, may expressly abandon the prior 
application as of the filing date granted to the continuing application.
    (c) An applicant seeking to abandon an application to avoid 
publication of the application (seeSec. 1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under this 
paragraph including the fee set forth inSec. 1.17(h) in sufficient 
time to permit the appropriate officials to recognize the abandonment 
and remove the application from the publication

[[Page 105]]

process. Applicants should expect that the petition will not be granted 
and the application will be published in regular course unless such 
declaration of express abandonment and petition are received by the 
appropriate officials more than four weeks prior to the projected date 
of publication.
    (d) An applicant seeking to abandon an application filed under 35 
U.S.C. 111(a) andSec. 1.53(b) on or after December 8, 2004, to obtain 
a refund of the search fee and excess claims fee paid in the 
application, must submit a declaration of express abandonment by way of 
a petition under this paragraph before an examination has been made of 
the application. The date indicated on any certificate of mailing or 
transmission underSec. 1.8 will not be taken into account in 
determining whether a petition underSec. 1.138(d) was filed before an 
examination has been made of the application. If a request for refund of 
the search fee and excess claims fee paid in the application is not 
filed with the declaration of express abandonment under this paragraph 
or within two months from the date on which the declaration of express 
abandonment under this paragraph was filed, the Office may retain the 
entire search fee and excess claims fee paid in the application. This 
two-month period is not extendable. If a petition and declaration of 
express abandonment under this paragraph are not filed before an 
examination has been made of the application, the Office will not refund 
any part of the search fee and excess claims fee paid in the application 
except as provided inSec. 1.26.

[65 FR 54674, Sept. 8, 2000, as amended at 65 FR 57058, Sept. 20, 2000; 
71 FR 12284, Mar. 10, 2006]



Sec.  1.139  [Reserved]

          Joinder of Inventions in One Application; Restriction

    Authority: Secs. 1.141 to 1.147 also issued under 35 U.S.C. 121.



Sec.  1.141  Different inventions in one national application.

    (a) Two or more independent and distinct inventions may not be 
claimed in one national application, except that more than one species 
of an invention, not to exceed a reasonable number, may be specifically 
claimed in different claims in one national application, provided the 
application also includes an allowable claim generic to all the claimed 
species and all the claims to species in excess of one are written in 
dependent form (Sec.  1.75) or otherwise include all the limitations of 
the generic claim.
    (b) Where claims to all three categories, product, process of 
making, and process of use, are included in a national application, a 
three way requirement for restriction can only be made where the process 
of making is distinct from the product. If the process of making and the 
product are not distinct, the process of using may be joined with the 
claims directed to the product and the process of making the product 
even though a showing of distinctness between the product and process of 
using the product can be made.

[52 FR 20046, May 28, 1987]



Sec.  1.142  Requirement for restriction.

    (a) If two or more independent and distinct inventions are claimed 
in a single application, the examiner in an Office action will require 
the applicant in the reply to that action to elect an invention to which 
the claims will be restricted, this official action being called a 
requirement for restriction (also known as a requirement for division). 
Such requirement will normally be made before any action on the merits; 
however, it may be made at any time before final action.
    (b) Claims to the invention or inventions not elected, if not 
canceled, are nevertheless withdrawn from further consideration by the 
examiner by the election, subject however to reinstatement in the event 
the requirement for restriction is withdrawn or overruled.

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997; 
72 FR 46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009]



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,

[[Page 106]]

giving the reasons therefor. (SeeSec. 1.111.) In requesting 
reconsideration the applicant must indicate a provisional election of 
one invention for prosecution, which invention shall be the one elected 
in the event the requirement becomes final The requirement for 
restriction will be reconsidered on such a request. If the requirement 
is repeated and made final the examiner will at the same time act on the 
claims to the invention elected.



Sec.  1.144  Petition from requirement for restriction.

    After a final requirement for restriction, the applicant, in 
addition to making any reply due on the remainder of the action, may 
petition the Director to review the requirement. Petition may be 
deferred until after final action on or allowance of claims to the 
invention elected, but must be filed not later than appeal. A petition 
will not be considered if reconsideration of the requirement was not 
requested (seeSec. 1.181).

[62 FR 53195, Oct. 10, 1997]



Sec.  1.145  Subsequent presentation of claims for different invention.

    If, after an Office action on an application, the applicant presents 
claims directed to an invention distinct from and independent of the 
invention previously claimed, the applicant will be required to restrict 
the claims to the invention previously claimed if the amendment is 
entered, subject to reconsideration and review as provided in Sec.Sec. 
1.143 and 1.144.

[74 FR 52691, Oct. 14, 2009]



Sec.  1.146  Election of species.

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

[62 FR 53195, Oct. 10, 1997]

                             Design Patents



Sec.  1.151  Rules applicable.

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

(35 U.S.C. 171)



Sec.  1.152  Design drawings.

    The design must be represented by a drawing that complies with the 
requirements ofSec. 1.84 and must contain a sufficient number of views 
to constitute a complete disclosure of the appearance of the design. 
Appropriate and adequate surface shading should be used to show the 
character or contour of the surfaces represented. Solid black surface 
shading is not permitted except when used to represent the color black 
as well as color contrast. Broken lines may be used to show visible 
environmental structure, but may not be used to show hidden planes and 
surfaces that cannot be seen through opaque materials. Alternate 
positions of a design component, illustrated by full and broken lines in 
the same view are not permitted in a design drawing. Photographs and ink 
drawings are not permitted to be combined as formal drawings in one 
application. Photographs submitted in lieu of ink drawings in design 
patent applications must not disclose environmental structure but must 
be limited to the design claimed for the article.

[65 FR 54674, Sept. 8, 2000]



Sec.  1.153  Title, description and claim, oath or declaration.

    (a) The title of the design must designate the particular article. 
No description, other than a reference to the drawing, is ordinarily 
required. The claim shall be in formal terms to the ornamental design 
for the article (specifying name) as shown, or as shown and described. 
More than one claim is neither required nor permitted.

[[Page 107]]

    (b) The inventor's oath or declaration must comply with the 
requirements ofSec. 1.63, or comply with the requirements ofSec. 
1.64 for a substitute statement.

(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; 77 FR 48821, Aug. 14, 2012]



Sec.  1.154  Arrangement of application elements in a design application.

    (a) The elements of the design application, if applicable, should 
appear in the following order:
    (1) Design application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (seeSec. 1.76).
    (4) Specification.
    (5) Drawings or photographs.
    (6) The inventor's oath or declaration (seeSec. 1.153(b)).
    (b) The specification should include the following sections in 
order:
    (1) Preamble, stating the name of the applicant, title of the 
design, and a brief description of the nature and intended use of the 
article in which the design is embodied.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Description of the figure or figures of the drawing.
    (5) Feature description.
    (6) A single claim.
    (c) The text of the specification sections defined in paragraph (b) 
of this section, if applicable, should be preceded by a section heading 
in uppercase letters without underlining or bold type.

[65 FR 54674, Sept. 8, 2000, as amended at 77 FR 48821, Aug. 14, 2012]



Sec.  1.155  Expedited examination of design applications.

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

[65 FR 54674, Sept. 8, 2000]

                              Plant Patents



Sec.  1.161  Rules applicable.

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



Sec.  1.162  Applicant, oath or declaration.

    The inventor named for a plant patent application 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. The inventor's 
oath or declaration, in addition to the averments required bySec. 1.63 
orSec. 1.64, must state that the inventor has asexually reproduced the 
plant. Where the plant is a newly found plant, the inventor's oath or 
declaration must also state that it was found in a cultivated area.

[77 FR 48821, Aug. 14, 2012]



Sec.  1.163  Specification and arrangement of application elements in a
plant application.

    (a) The specification must contain as full and complete a disclosure 
as possible of the plant and the characteristics thereof that 
distinguish the same over related known varieties, and its antecedents, 
and must particularly point out where and in what manner the variety of 
plant has been asexually reproduced. For a newly found plant, the 
specification must particularly point out the location and character of 
the area where the plant was discovered.

[[Page 108]]

    (b) The elements of the plant application, if applicable, should 
appear in the following order:
    (1) Plant application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (seeSec. 1.76).
    (4) Specification.
    (5) Drawings (in duplicate).
    (6) The inventor's oath or declaration (Sec.  1.162).
    (c) The specification should include the following sections in 
order:
    (1) Title of the invention, which may include an introductory 
portion stating the name, citizenship, and residence of the applicant.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Latin name of the genus and species of the plant claimed.
    (5) Variety denomination.
    (6) Background of the invention.
    (7) Brief summary of the invention.
    (8) Brief description of the drawing.
    (9) Detailed botanical description.
    (10) A single claim.
    (11) Abstract of the disclosure.
    (d) The text of the specification or sections defined in paragraph 
(c) of this section, if applicable, should be preceded by a section 
heading in upper case, without underlining or bold type.

[65 FR 54675, Sept. 8, 2000, as amended at 77 FR 48821, Aug. 14, 2012]



Sec.  1.164  Claim.

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

(35 U.S.C. 162)



Sec.  1.165  Plant drawings.

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

[58 FR 38726, July 20, 1993, as amended at 65 FR 57058, Sept. 20, 2000; 
69 FR 56543, Sept. 21, 2004]



Sec.  1.166  Specimens.

    The applicant may be required to furnish specimens of the plant, or 
its flower or fruit, in a quantity and at a time in its stage of growth 
as may be designated, for study and inspection. Such specimens, properly 
packed, must be forwarded in conformity with instructions furnished to 
the applicant. When it is not possible to forward such specimens, plants 
must be made available for official inspection where grown.

(35 U.S.C. 114, 161)



Sec.  1.167  Examination.

    Applications may be submitted by the Patent and Trademark Office to 
the Department of Agriculture for study and report.

[62 FR 53196, Oct. 10, 1997]

                                Reissues

    Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.



Sec.  1.171  Application for reissue.

    An application for reissue must contain the same parts required for 
an application for an original patent, complying with all the rules 
relating thereto except as otherwise provided, and in addition, must 
comply with the requirements of the rules relating to reissue 
applications.

[62 FR 53196, Oct. 10, 1997]



Sec.  1.172  Reissue applicant.

    (a) The reissue applicant is the original patentee, or the current 
patent owner if there has been an assignment. A reissue application must 
be accompanied by the written consent of all assignees, if any, 
currently owning an undivided interest in the patent. All assignees 
consenting to the reissue must establish their ownership in the

[[Page 109]]

patent by filing in the reissue application a submission in accordance 
with the provisions ofSec. 3.73(c) of this chapter.
    (b) A reissue will be granted to the original patentee, his legal 
representatives or assigns as the interest may appear.

[77 FR 48821, Aug. 14, 2012]



Sec.  1.173  Reissue specification, drawings, and amendments.

    (a) Contents of a reissue application. An application for reissue 
must contain the entire specification, including the claims, and the 
drawings of the patent. No new matter shall be introduced into the 
application. No reissue patent shall be granted enlarging the scope of 
the claims of the original patent unless applied for within two years 
from the grant of the original patent, pursuant to 35 U.S.C. 251.
    (1) Specification, including claims. The entire specification, 
including the claims, of the patent for which reissue is requested must 
be furnished in the form of a copy of the printed patent, in double 
column format, each page on only one side of a single sheet of paper. If 
an amendment of the reissue application is to be included, it must be 
made pursuant to paragraph (b) of this section. The formal requirements 
for papers making up the reissue application other than those set forth 
in this section are set out inSec. 1.52. Additionally, a copy of any 
disclaimer (Sec.  1.321), certificate of correction (Sec.Sec. 1.322 
through 1.324), or reexamination certificate (Sec.  1.570) issued in the 
patent must be included. (See alsoSec. 1.178).
    (2) Drawings. Applicant must submit a clean copy of each drawing 
sheet of the printed patent at the time the reissue application is 
filed. If such copy complies withSec. 1.84, no further drawings will 
be required. Where a drawing of the reissue application is to include 
any changes relative to the patent being reissued, the changes to the 
drawing must be made in accordance with paragraph (b)(3) of this 
section. The Office will not transfer the drawings from the patent file 
to the reissue application.
    (b) Making amendments in a reissue application. An amendment in a 
reissue application is made either by physically incorporating the 
changes into the specification when the application is filed, or by a 
separate amendment paper. If amendment is made by incorporation, 
markings pursuant to paragraph (d) of this section must be used. If 
amendment is made by an amendment paper, the paper must direct that 
specified changes be made, as follows:
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph, including markings 
pursuant to paragraph (d) of this section, except that an entire 
paragraph may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted on 
paper or compact disc (see Sec.Sec. 1.52(e)(1) and 1.821(c), but not 
for discs submitted underSec. 1.821(e)).
    (2) Claims. An amendment paper must include the entire text of each 
claim being changed by such amendment paper and of each claim being 
added by such amendment paper. For any claim changed by the amendment 
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc., 
should follow the claim number. Each changed patent claim and each added 
claim must include markings pursuant to paragraph (d) of this section, 
except that a patent claim or added claim should be canceled by a 
statement canceling the claim without presentation of the text of the 
claim.
    (3) Drawings. One or more patent drawings shall be amended in the 
following manner: Any changes to a patent drawing must be submitted as a 
replacement sheet of drawings which shall be an attachment to the 
amendment document. Any replacement sheet of drawings must be in 
compliance withSec. 1.84 and shall include all of the figures 
appearing on the original version of the sheet, even if only one figure 
is amended. Amended figures must be identified as ``Amended,'' and any 
added figure must be identified as ``New.'' In the event that a figure 
is

[[Page 110]]

canceled, the figure must be surrounded by brackets and identified as 
``Canceled.'' All changes to the drawing(s) shall be explained, in 
detail, beginning on a separate sheet accompanying the papers including 
the amendment to the drawings.
    (i) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, may be included. The marked-up 
copy must be clearly labeled as ``Annotated Marked-up Drawings'' and 
must be presented in the amendment or remarks section that explains the 
change to the drawings.
    (ii) A marked-up copy of any amended drawing figure, including 
annotations indicating the changes made, must be provided when required 
by the examiner.
    (c) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (b) of this section, 
there must also be supplied, on pages separate from the pages containing 
the changes, the status (i.e., pending or canceled), as of the date of 
the amendment, of all patent claims and of all added claims, and an 
explanation of the support in the disclosure of the patent for the 
changes made to the claims.
    (d) Changes shown by markings. Any changes relative to the patent 
being reissued which are made to the specification, including the 
claims, upon filing, or by an amendment paper in the reissue 
application, must include the following markings:
    (1) The matter to be omitted by reissue must be enclosed in 
brackets; and
    (2) The matter to be added by reissue must be underlined, except for 
amendments submitted on compact discs (Sec.Sec. 1.96 and 1.821(c)). 
Matter added by reissue on compact discs must be preceded with 
``'' and end with ``'' to properly identify 
the material being added.
    (e) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claim added in the reissue application 
must follow the number of the highest numbered patent claim.
    (f) Amendment of disclosure may be required. The disclosure must be 
amended, when required by the Office, to correct inaccuracies of 
description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, and the 
drawings.
    (g) Amendments made relative to the patent. All amendments must be 
made relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing of the reissue 
application.

[65 FR 54675, Sept. 8, 2000, as amended at 68 FR 38630, June 30, 2003; 
69 FR 56543, Sept. 21, 2004]



Sec.  1.174  [Reserved]



Sec.  1.175  Inventor's oath or declaration for a reissue application.

    (a) The inventor's oath or declaration for a reissue application, in 
addition to complying with the requirements ofSec. 1.63,Sec. 1.64, 
orSec. 1.67, must also specifically identify at least one error 
pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and 
state that 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.
    (b) If the reissue application seeks to enlarge the scope of the 
claims of the patent (a basis for the reissue is the patentee claiming 
less than the patentee had the right to claim in the patent), the 
inventor's oath or declaration for a reissue application must identify a 
claim that the application seeks to broaden. A claim is a broadened 
claim if the claim is broadened in any respect.
    (c) The inventor, or each individual who is a joint inventor of a 
claimed invention, in a reissue application must execute an oath or 
declaration for the reissue application, except as provided for inSec. 
1.64, and except that the inventor's oath or declaration for a reissue 
application may be signed by the assignee of the entire interest if:
    (1) The application does not seek to enlarge the scope of the claims 
of the original patent; or
    (2) The application for the original patent was filed underSec. 
1.46 by the assignee of the entire interest.

[[Page 111]]

    (d) If errors previously identified in the inventor's oath or 
declaration for a reissue application pursuant to paragraph (a) of this 
section are no longer being relied upon as the basis for reissue, the 
applicant must identify an error being relied upon as the basis for 
reissue.
    (e) The inventor's oath or declaration for a reissue application 
required by paragraph (a) of this section may be submitted under the 
provisions ofSec. 1.53(f), except that the provisions ofSec. 
1.53(f)(3) do not apply to a reissue application.
    (f)(1) The requirement for the inventor's oath or declaration for a 
continuing reissue application that claims the benefit under 35 U.S.C. 
120, 121, or 365(c) in compliance withSec. 1.78 of an earlier-filed 
reissue application may be satisfied by a copy of the inventor's oath or 
declaration from the earlier-filed reissue application, provided that:
    (i) The inventor, or each individual who is a joint inventor of a 
claimed invention, in the reissue application executed an inventor's 
oath or declaration for the earlier-filed reissue application, except as 
provided for inSec. 1.64;
    (ii) The continuing reissue application does not seek to enlarge the 
scope of the claims of the original patent; or
    (iii) The application for the original patent was filed underSec. 
1.46 by the assignee of the entire interest.
    (2) If all errors identified in the inventor's oath or declaration 
from the earlier-filed reissue application are no longer being relied 
upon as the basis for reissue, the applicant must identify an error 
being relied upon as the basis for reissue.
    (g) An oath or declaration filed at any time pursuant to 35 U.S.C. 
115(h)(1), will be placed in the file record of the reissue application, 
but may not necessarily be reviewed by the Office.

[77 FR 48821, Aug. 14, 2012]



Sec.  1.176  Examination of reissue.

    (a) A reissue application will be examined in the same manner as a 
non-reissue, non-provisional application, and will be subject to all the 
requirements of the rules related to non-reissue applications. 
Applications for reissue will be acted on by the examiner in advance of 
other applications.
    (b) Restriction between subject matter of the original patent claims 
and previously unclaimed subject matter may be required (restriction 
involving only subject matter of the original patent claims will not be 
required). If restriction is required, the subject matter of the 
original patent claims will be held to be constructively elected unless 
a disclaimer of all the patent claims is filed in the reissue 
application, which disclaimer cannot be withdrawn by applicant.

[65 FR 54676, Sept. 8, 2000]



Sec.  1.177  Issuance of multiple reissue patents.

    (a) The Office may reissue a patent as multiple reissue patents. If 
applicant files more than one application for the reissue of a single 
patent, each such application must contain or be amended to contain in 
the first sentence of the specification a notice stating that more than 
one reissue application has been filed and identifying each of the 
reissue applications by relationship, application number and filing 
date. The Office may correct by certificate of correction underSec. 
1.322 any reissue patent resulting from an application to which this 
paragraph applies that does not contain the required notice.
    (b) If applicant files more than one application for the reissue of 
a single patent, each claim of the patent being reissued must be 
presented in each of the reissue applications as an amended, unamended, 
or canceled (shown in brackets) claim, with each such claim bearing the 
same number as in the patent being reissued. The same claim of the 
patent being reissued may not be presented in its original unamended 
form for examination in more than one of such multiple reissue 
applications. The numbering of any added claims in any of the multiple 
reissue applications must follow the number of the highest numbered 
original patent claim.
    (c) If any one of the several reissue applications by itself fails 
to correct an error in the original patent as required by 35 U.S.C. 251 
but is otherwise in condition for allowance, the Office may suspend 
action in the allowable

[[Page 112]]

application until all issues are resolved as to at least one of the 
remaining reissue applications. The Office may also merge two or more of 
the multiple reissue applications into a single reissue application. No 
reissue application containing only unamended patent claims and not 
correcting an error in the original patent will be passed to issue by 
itself.

[65 FR 54676, Sept. 8, 2000]



Sec.  1.178  Original patent; continuing duty of applicant.

    (a) The application for reissue of a patent shall constitute an 
offer to surrender that patent, and the surrender shall take effect upon 
reissue of the patent. Until a reissue application is granted, the 
original patent shall remain in effect.
    (b) In any reissue application before the Office, the applicant must 
call to the attention of the Office any prior or concurrent proceedings 
in which the patent (for which reissue is requested) is or was involved, 
such as interferences or trials before the Patent Trial and Appeal 
Board, reissues, reexaminations, or litigations and the results of such 
proceedings (see alsoSec. 1.173(a)(1)).

[65 FR 54676, Sept. 8, 2000, as amended at 69 FR 56544, Sept. 21, 2004; 
77 FR 46625, Aug. 6, 2012]



Sec.  1.179  [Reserved]

                  Petitions and Action by the Director

    Authority: 35 U.S.C. 6; 15 U.S.C. 1113, 1123.



Sec.  1.181  Petition to the Director.

    (a) Petition may be taken to the Director:
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application, or in ex parte or inter partes 
prosecution of a reexamination proceeding which is not subject to appeal 
to the Patent Trial and Appeal Board or to the court;
    (2) In cases in which a statute or the rules specify that the matter 
is to be determined directly by or reviewed by the Director; and
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances. For petitions involving action of the Patent 
Trial and Appeal Board, seeSec. 41.3 of this title.
    (b) Any such petition must contain a statement of the facts involved 
and the point or points to be reviewed and the action requested. Briefs 
or memoranda, if any, in support thereof should accompany or be embodied 
in the petition; and where facts are to be proven, the proof in the form 
of affidavits or declarations (and exhibits, if any) must accompany the 
petition.
    (c) When a petition is taken from an action or requirement of an 
examiner in the ex parte prosecution of an application, or in the ex 
parte or inter partes prosecution of a reexamination proceeding, it may 
be required that there have been a proper request for reconsideration 
(Sec.  1.111) and a repeated action by the examiner. The examiner may be 
directed by the Director to furnish a written statement, within a 
specified time, setting forth the reasons for his or her decision upon 
the matters averred in the petition, supplying a copy to the petitioner.
    (d) Where a fee is required for a petition to the Director the 
appropriate section of this part will so indicate. If any required fee 
does not accompany the petition, the petition will be dismissed.
    (e) Oral hearing will not be granted except when considered 
necessary by the Director.
    (f) The mere filing of a petition will not stay any period for reply 
that may be running against the application, nor act as a stay of other 
proceedings. Any petition under this part not filed within two months of 
the mailing date of the action or notice from which relief is requested 
may be dismissed as untimely, except as otherwise provided. This two-
month period is not extendable.
    (g) The Director may delegate to appropriate Patent and Trademark 
Office officials the determination of petitions.

[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969; 
47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984; 65 FR 54676, 
Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000; 69 FR 50000, Aug. 12, 2004; 77 
FR 46625, Aug. 6, 2012]

[[Page 113]]



Sec.  1.182  Questions not specifically provided for.

    All situations not specifically provided for in the regulations of 
this part will be decided in accordance with the merits of each 
situation by or under the authority of the Director, subject to such 
other requirements as may be imposed, and such decision will be 
communicated to the interested parties in writing. Any petition seeking 
a decision under this section must be accompanied by the petition fee 
set forth inSec. 1.17(f).

[69 FR 56544, Sept. 21, 2004]



Sec.  1.183  Suspension of rules.

    In an extraordinary situation, when justice requires, any 
requirement of the regulations in this part which is not a requirement 
of the statutes may be suspended or waived by the Director or the 
Director's designee, sua sponte, or on petition of the interested party, 
subject to such other requirements as may be imposed. Any petition under 
this section must be accompanied by the petition fee set forth inSec. 
1.17(f).

[69 FR 56544, Sept. 21, 2004]



Sec.  1.184  [Reserved]

               Appeal to the Patent Trial and Appeal Board

    Authority: Secs. 1.191 to 1.198 also issued under 35 U.S.C. 134.



Sec.  1.191  Appeal to Patent Trial and Appeal Board.

    Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(a) 
and (b) are conducted according to part 41 of this title.

[77 FR 46625, Aug. 6, 2012]



Sec.Sec. 1.192-1.196  [Reserved]



Sec.  1.197  Termination of proceedings.

    (a) [Reserved]
    (b) Termination of proceedings. (1) Proceedings on an application 
are considered terminated by the dismissal of an appeal or the failure 
to timely file an appeal to the court or a civil action (Sec.  1.304) 
except:
    (i) Where claims stand allowed in an application; or
    (ii) Where the nature of the decision requires further action by the 
examiner.
    (2) The date of termination of proceedings on an application is the 
date on which the appeal is dismissed or the date on which the time for 
appeal to the U.S. Court of Appeals for the Federal Circuit or review by 
civil action (Sec.  1.304) expires in the absence of further appeal or 
review. If an appeal to the U.S. Court of Appeals for the Federal 
Circuit or a civil action has been filed, proceedings on an application 
are considered terminated when the appeal or civil action is terminated. 
A civil action is terminated when the time to appeal the judgment 
expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, 
whether from a decision of the Board or a judgment in a civil action, is 
terminated when the mandate is issued by the Court.

[69 FR 50000, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011]



Sec.  1.198  Reopening after a final decision of the Patent Trial and
Appeal Board.

    When a decision by the Patent Trial and Appeal Board on appeal has 
become final for judicial review, prosecution of the proceeding before 
the primary examiner will not be reopened or reconsidered by the primary 
examiner except under the provisions ofSec. 1.114 orSec. 41.50 of 
this title without the written authority of the Director, and then only 
for the consideration of matters not already adjudicated, sufficient 
cause being shown.

[77 FR 46625, Aug. 6, 2012]

                       Publication of Applications

    Source: 65 FR 57058, Sept. 20, 2000, unless otherwise noted.



Sec.  1.211  Publication of applications.

    (a) Each U.S. national application for patent filed in the Office 
under 35 U.S.C. 111(a) and each international application in compliance 
with 35 U.S.C. 371 will be published promptly after the expiration of a 
period of eighteen months from the earliest filing date for which a 
benefit is sought under title 35, United States Code, unless:

[[Page 114]]

    (1) The application is recognized by the Office as no longer 
pending;
    (2) The application is national security classified (seeSec. 
5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under 
national security review;
    (3) The application has issued as a patent in sufficient time to be 
removed from the publication process; or
    (4) The application was filed with a nonpublication request in 
compliance withSec. 1.213(a).
    (b) Provisional applications under 35 U.S.C. 111(b) shall not be 
published, and design applications under 35 U.S.C. chapter 16 and 
reissue applications under 35 U.S.C. chapter 25 shall not be published 
under this section.
    (c) An application filed under 35 U.S.C. 111(a) will not be 
published until it includes the basic filing fee (Sec.  1.16(a) orSec. 
1.16(c)) and any English translation required bySec. 1.52(d). The 
Office may delay publishing any application until it includes any 
application size fee required by the Office underSec. 1.16(s) orSec. 
1.492(j), a specification having papers in compliance withSec. 1.52 
and an abstract (Sec.  1.72(b)), drawings in compliance withSec. 1.84, 
a sequence listing in compliance with Sec.Sec. 1.821 through 1.825 (if 
applicable), and the inventor's oath or declaration or application data 
sheet containing the information specified inSec. 1.63(b).
    (d) The Office may refuse to publish an application, or to include a 
portion of an application in the patent application publication (Sec.  
1.215), if publication of the application or portion thereof would 
violate Federal or state law, or if the application or portion thereof 
contains offensive or disparaging material.
    (e) The publication fee set forth inSec. 1.18(d) must be paid in 
each application published under this section before the patent will be 
granted. If an application is subject to publication under this section, 
the sum specified in the notice of allowance underSec. 1.311 will also 
include the publication fee which must be paid within three months from 
the date of mailing of the notice of allowance to avoid abandonment of 
the application. This three-month period is not extendable. If the 
application is not published under this section, the publication fee (if 
paid) will be refunded.

[65 FR 57058, Sept. 20, 2000, as amended at 70 FR 3891, Jan. 27, 2005; 
77 FR 48822, Aug. 14, 2012]



Sec.  1.213  Nonpublication request.

    (a) If the invention disclosed in an application has not been and 
will not be the subject of an application filed in another country, or 
under a multilateral international agreement, that requires publication 
of applications eighteen months after filing, the application will not 
be published under 35 U.S.C. 122(b) andSec. 1.211 provided:
    (1) A request (nonpublication request) is submitted with the 
application upon filing;
    (2) The request states in a conspicuous manner that the application 
is not to be published under 35 U.S.C. 122(b);
    (3) The request contains a certification that the invention 
disclosed in the application has not been and will not be the subject of 
an application filed in another country, or under a multilateral 
international agreement, that requires publication at eighteen months 
after filing; and
    (4) The request is signed in compliance withSec. 1.33(b).
    (b) The applicant may rescind a nonpublication request at any time. 
A request to rescind a nonpublication request under paragraph (a) of 
this section must:
    (1) Identify the application to which it is directed;
    (2) State in a conspicuous manner that the request that the 
application is not to be published under 35 U.S.C. 122(b) is rescinded; 
and
    (3) Be signed in compliance withSec. 1.33(b).
    (c) If an applicant who has submitted a nonpublication request under 
paragraph (a) of this section subsequently files an application directed 
to the invention disclosed in the application in which the 
nonpublication request was submitted in another country, or under a 
multilateral international agreement, that requires publication of 
applications eighteen months after filing, the applicant must notify the 
Office of such filing within forty-five days after the date of the 
filing of such foreign or

[[Page 115]]

international application. The failure to timely notify the Office of 
the filing of such foreign or international application shall result in 
abandonment of the application in which the nonpublication request was 
submitted (35 U.S.C. 122(b)(2)(B)(iii)).



Sec.  1.215  Patent application publication.

    (a) The publication of an application under 35 U.S.C. 122(b) shall 
include a patent application publication. The date of publication shall 
be indicated on the patent application publication. The patent 
application publication will be based upon the specification and 
drawings deposited on the filing date of the application, as well as the 
application data sheet and/or the inventor's oath or declaration. The 
patent application publication may also be based upon amendments to the 
specification (other than the abstract or the claims) that are reflected 
in a substitute specification underSec. 1.125(b), amendments to the 
abstract underSec. 1.121(b), amendments to the claims that are 
reflected in a complete claim listing underSec. 1.121(c), and 
amendments to the drawings underSec. 1.121(d), provided that such 
substitute specification or amendment is submitted in sufficient time to 
be entered into the Office file wrapper of the application before 
technical preparations for publication of the application have begun. 
Technical preparations for publication of an application generally begin 
four months prior to the projected date of publication. The patent 
application publication of an application that has entered the national 
stage under 35 U.S.C. 371 may also include amendments made during the 
international stage. See paragraph (c) of this section for publication 
of an application based upon a copy of the application submitted via the 
Office electronic filing system.
    (b) The patent application publication will include the name of the 
assignee, person to whom the inventor is under an obligation to assign 
the invention, or person who otherwise shows sufficient proprietary 
interest in the matter if that information is provided in the 
application data sheet in an application filed underSec. 1.46. 
Assignee information may be included on the patent application 
publication in other applications if the assignee information is 
provided in an application data sheet submitted in sufficient time to be 
entered into the Office file wrapper of the application before technical 
preparations for publication of the application have begun. Providing 
assignee information in the application data sheet does not substitute 
for compliance with any requirement of part 3 of this chapter to have an 
assignment recorded by the Office.
    (c) At applicant's option, the patent application publication will 
be based upon the copy of the application (specification, drawings, and 
the application data sheet and/or the inventor's oath or declaration) as 
amended, provided that applicant supplies such a copy in compliance with 
the Office electronic filing system requirements within one month of the 
mailing date of the first Office communication that includes a 
confirmation number for the application, or fourteen months of the 
earliest filing date for which a benefit is sought under title 35, 
United States Code, whichever is later.
    (d) If the copy of the application submitted pursuant to paragraph 
(c) of this section does not comply with the Office electronic filing 
system requirements, the Office will publish the application as provided 
in paragraph (a) of this section. If, however, the Office has not 
started the publication process, the Office may use an untimely filed 
copy of the application supplied by the applicant under paragraph (c) of 
this section in creating the patent application publication.

[65 FR 57058, Sept. 20, 2000, as amended at 69 FR 56544, Sept. 21, 2004; 
77 FR 48822, Aug. 14, 2012]



Sec.  1.217  Publication of a redacted copy of an application.

    (a) If an applicant has filed applications in one or more foreign 
countries, directly or through a multilateral international agreement, 
and such foreign-filed applications or the description of the invention 
in such foreign-filed applications is less extensive than the 
application or description of the invention in the application filed in 
the Office, the applicant may submit a redacted copy of the application 
filed in the Office for publication, eliminating

[[Page 116]]

any part or description of the invention that is not also contained in 
any of the corresponding applications filed in a foreign country. The 
Office will publish the application as provided inSec. 1.215(a) unless 
the applicant files a redacted copy of the application in compliance 
with this section within sixteen months after the earliest filing date 
for which a benefit is sought under title 35, United States Code.
    (b) The redacted copy of the application must be submitted in 
compliance with the Office electronic filing system requirements. The 
title of the invention in the redacted copy of the application must 
correspond to the title of the application at the time the redacted copy 
of the application is submitted to the Office. If the redacted copy of 
the application does not comply with the Office electronic filing system 
requirements, the Office will publish the application as provided in 
Sec.  1.215(a).
    (c) The applicant must also concurrently submit in paper (Sec.  
1.52(a)) to be filed in the application:
    (1) A certified copy of each foreign-filed application that 
corresponds to the application for which a redacted copy is submitted;
    (2) A translation of each such foreign-filed application that is in 
a language other than English, and a statement that the translation is 
accurate;
    (3) A marked-up copy of the application showing the redactions in 
brackets; and
    (4) A certification that the redacted copy of the application 
eliminates only the part or description of the invention that is not 
contained in any application filed in a foreign country, directly or 
through a multilateral international agreement, that corresponds to the 
application filed in the Office.
    (d) The Office will provide a copy of the complete file wrapper and 
contents of an application for which a redacted copy was submitted under 
this section to any person upon written request pursuant toSec. 
1.14(c)(2), unless applicant complies with the requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
    (1) Applicant must accompany the submission required by paragraph 
(c) of this section with the following:
    (i) A copy of any Office correspondence previously received by 
applicant including any desired redactions, and a second copy of all 
Office correspondence previously received by applicant showing the 
redacted material in brackets; and
    (ii) A copy of each submission previously filed by the applicant 
including any desired redactions, and a second copy of each submission 
previously filed by the applicant showing the redacted material in 
brackets.
    (2) In addition to providing the submission required by paragraphs 
(c) and (d)(1) of this section, applicant must:
    (i) Within one month of the date of mailing of any correspondence 
from the Office, file a copy of such Office correspondence including any 
desired redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; and
    (ii) With each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets.
    (3) Each submission under paragraph (d)(1) or (d)(2) of this 
paragraph must also be accompanied by the processing fee set forth in 
Sec.  1.17(i) and a certification that the redactions are limited to the 
elimination of material that is relevant only to the part or description 
of the invention that was not contained in the redacted copy of the 
application submitted for publication.
    (e) The provisions ofSec. 1.8 do not apply to the time periods set 
forth in this section.



Sec.  1.219  Early publication.

    Applications that will be published underSec. 1.211 may be 
published earlier than as set forth inSec. 1.211(a) at the request of 
the applicant. Any request for early publication must be accompanied by 
the publication fee set forth inSec. 1.18(d). If the applicant does 
not submit a copy of the application in compliance with the Office 
electronic filing system requirements pursuant toSec. 1.215(c), the 
Office will publish the application as provided inSec. 1.215(a). No 
consideration will be given to requests for publication on a certain 
date, and

[[Page 117]]

such requests will be treated as a request for publication as soon as 
possible.



Sec.  1.221  Voluntary publication or republication of patent 
application publication.

    (a) Any request for publication of an application filed before, but 
pending on, November 29, 2000, and any request for republication of an 
application previously published underSec. 1.211, must include a copy 
of the application in compliance with the Office electronic filing 
system requirements and be accompanied by the publication fee set forth 
inSec. 1.18(d) and the processing fee set forth inSec. 1.17(i). If 
the request does not comply with the requirements of this paragraph or 
the copy of the application does not comply with the Office electronic 
filing system requirements, the Office will not publish the application 
and will refund the publication fee.
    (b) The Office will grant a request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section only when the Office makes a material mistake which is 
apparent from Office records. Any request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section must be filed within two months from the date of the 
patent application publication. This period is not extendable.

                        Miscellaneous Provisions



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

    (a) Service of papers must be on the attorney or agent of the party 
if there be such or on the party if there is no attorney or agent, and 
may be made in any of the following ways:
    (1) By delivering a copy of the paper to the person served;
    (2) By leaving a copy at the usual place of business of the person 
served with someone in his employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with some person of suitable 
age and discretion who resides there;
    (4) Transmission by first class mail. When service is by mail the 
date of mailing will be regarded as the date of service;
    (5) Whenever it shall be satisfactorily shown to the Director that 
none of the above modes of obtaining or serving the paper is 
practicable, service may be by notice published in the Official Gazette.
    (b) Papers filed in the Patent and Trademark Office which are 
required to be served shall contain proof of service. Proof of service 
may appear on or be affixed to papers filed. Proof of service shall 
include the date and manner of service. In the case of personal service, 
proof of service shall also include the name of any person served, 
certified by the person who made service. Proof of service may be made 
by:
    (1) An acknowledgement of service by or on behalf of the person 
served or
    (2) A statement signed by the attorney or agent containing the 
information required by this section.
    (c) SeeSec. 41.106(e) orSec. 42.6(e) of this title for service 
of papers in contested cases or trials before the Patent Trial and 
Appeal Board.

[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984; 69 
FR 50000, Aug. 12, 2004; 69 FR 58260, Sept. 30, 2004; 77 FR 46626, Aug. 
6, 2012]



Sec.  1.251  Unlocatable file.

    (a) In the event that the Office cannot locate the file of an 
application, patent, or other patent-related proceeding after a 
reasonable search, the Office will notify the applicant or patentee and 
set a time period within which the applicant or patentee must comply 
with the notice in accordance with one of paragraphs (a)(1), (a)(2), or 
(a)(3) of this section.
    (1) Applicant or patentee may comply with a notice under this 
section by providing:
    (i) A copy of the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding (except for U.S. 
patent documents);
    (ii) A list of such correspondence; and
    (iii) A statement that the copy is a complete and accurate copy of 
the applicant's or patentee's record of all of

[[Page 118]]

the correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding (except for U.S. patent 
documents), and whether applicant or patentee is aware of any 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding that is not among applicant's 
or patentee's records.
    (2) Applicant or patentee may comply with a notice under this 
section by:
    (i) Producing the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding for the Office to copy 
(except for U.S. patent documents); and
    (ii) Providing a statement that the papers produced by applicant or 
patentee are applicant's or patentee's complete record of all of the 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding (except for U.S. patent 
documents), and whether applicant or patentee is aware of any 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding that is not among applicant's 
or patentee's records.
    (3) If applicant or patentee does not possess any record of the 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding, applicant or patentee must 
comply with a notice under this section by providing a statement that 
applicant or patentee does not possess any record of the correspondence 
between the Office and the applicant or patentee for such application, 
patent, or other proceeding.
    (b) With regard to a pending application, failure to comply with one 
of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time 
period set in the notice will result in abandonment of the application.

[65 FR 69451, Nov. 17, 2000]

          Preissuance Submissions and Protests by Third Parties



Sec.  1.290  Submissions by third parties in applications.

    (a) A third party may submit, for consideration and entry in the 
record of a patent application, any patents, published patent 
applications, or other printed publications of potential relevance to 
the examination of the application if the submission is made in 
accordance with 35 U.S.C. 122(e) and this section. A third-party 
submission may not be entered or considered by the Office if any part of 
the submission is not in compliance with 35 U.S.C. 122(e) and this 
section.
    (b) Any third-party submission under this section must be filed 
prior to the earlier of:
    (1) The date a notice of allowance underSec. 1.311 is given or 
mailed in the application; or
    (2) The later of:
    (i) Six months after the date on which the application is first 
published by the Office under 35 U.S.C. 122(b) andSec. 1.211, or
    (ii) The date the first rejection underSec. 1.104 of any claim by 
the examiner is given or mailed during the examination of the 
application.
    (c) Any third-party submission under this section must be made in 
writing.
    (d) Any third-party submission under this section must include:
    (1) A document list identifying the documents, or portions of 
documents, being submitted in accordance with paragraph (e) of this 
section;
    (2) A concise description of the asserted relevance of each item 
identified in the document list;
    (3) A legible copy of each item identified in the document list, 
other than U.S. patents and U.S. patent application publications;
    (4) An English language translation of any non-English language item 
identified in the document list; and
    (5) A statement by the party making the submission that:
    (i) The party is not an individual who has a duty to disclose 
information with respect to the application underSec. 1.56; and

[[Page 119]]

    (ii) The submission complies with the requirements of 35 U.S.C. 
122(e) and this section.
    (e) The document list required by paragraph (d)(1) of this section 
must include a heading that identifies the list as a third-party 
submission underSec. 1.290, identify on each page of the list the 
application number of the application in which the submission is being 
filed, list U.S. patents and U.S. patent application publications in a 
separate section from other items, and identify each:
    (1) U.S. patent by patent number, first named inventor, and issue 
date;
    (2) U.S. patent application publication by patent application 
publication number, first named inventor, and publication date;
    (3) Foreign patent or published foreign patent application by the 
country or patent office that issued the patent or published the 
application; the applicant, patentee, or first named inventor; an 
appropriate document number; and the publication date indicated on the 
patent or published application; and
    (4) Non-patent publication by author (if any), title, pages being 
submitted, publication date, and, where available, publisher and place 
of publication. If no publication date is known, the third party must 
provide evidence of publication.
    (f) Any third-party submission under this section must be 
accompanied by the fee set forth inSec. 1.17(p) for every ten items or 
fraction thereof identified in the document list.
    (g) The fee otherwise required by paragraph (f) of this section is 
not required for a submission listing three or fewer total items that is 
accompanied by a statement by the party making the submission that, to 
the knowledge of the person signing the statement after making 
reasonable inquiry, the submission is the first and only submission 
under 35 U.S.C. 122(e) filed in the application by the party or a party 
in privity with the party.
    (h) In the absence of a request by the Office, an applicant need not 
reply to a submission under this section.
    (i) The provisions ofSec. 1.8 do not apply to the time periods set 
forth in this section.

[77 FR 42173, July 17, 2012]



Sec.  1.291  Protests by the public against pending applications.

    (a) A protest may be filed by a member of the public against a 
pending application, and it will be matched with the application file if 
it adequately identifies the patent application. A protest submitted 
within the time frame of paragraph (b) of this section, which is not 
matched, or not matched in a timely manner to permit review by the 
examiner during prosecution, due to inadequate identification, may not 
be entered and may be returned to the protestor where practical, or, if 
return is not practical, discarded.
    (b) The protest will be entered into the record of the application 
if, in addition to complying with paragraph (c) of this section, the 
protest has been served upon the applicant in accordance withSec. 
1.248, or filed with the Office in duplicate in the event service is not 
possible; and, except for paragraph (b)(1) of this section, the protest 
was filed prior to the date the application was published underSec. 
1.211, or the date a notice of allowance underSec. 1.311 was given or 
mailed, whichever occurs first:
    (1) If a protest is accompanied by the written consent of the 
applicant, the protest will be considered if the protest is filed prior 
to the date a notice of allowance underSec. 1.311 is given or mailed 
in the application.
    (2) A statement must accompany a protest that it is the first 
protest submitted in the application by the real party in interest who 
is submitting the protest; or the protest must comply with paragraph 
(c)(5) of this section. This section does not apply to the first protest 
filed in an application.
    (c) In addition to compliance with paragraphs (a) and (b) of this 
section, a protest must include:
    (1) An information list of the documents, portions of documents, or 
other information being submitted, where each:
    (i) U.S. patent is identified by patent number, first named 
inventor, and issue date;
    (ii) U.S. patent application publication is identified by patent 
application publication number, first named inventor, and publication 
date;
    (iii) Foreign patent or published foreign patent application is 
identified by

[[Page 120]]

the country or patent office that issued the patent or published the 
application; an appropriate document number; the applicant, patentee, or 
first named inventor; and the publication date indicated on the patent 
or published application;
    (iv) Non-patent publication is identified by author (if any), title, 
pages being submitted, publication date, and, where available, publisher 
and place of publication; and
    (v) Item of other information is identified by date, if known.
    (2) A concise explanation of the relevance of each item identified 
in the information list pursuant to paragraph (c)(1) of this section;
    (3) A legible copy of each item identified in the information list, 
other than U.S. patents and U.S. patent application publications;
    (4) An English language translation of any non-English language item 
identified in the information list; and
    (5) If it is a second or subsequent protest by the same real party 
in interest, an explanation as to why the issue(s) raised in the second 
or subsequent protest are significantly different than those raised 
earlier and why the significantly different issue(s) were not presented 
earlier, and a processing fee underSec. 1.17(i) must be submitted.
    (d) A member of the public filing a protest in an application under 
this section will not receive any communication from the Office relating 
to the protest, other than the return of a self-addressed postcard which 
the member of the public may include with the protest in order to 
receive an acknowledgment by the Office that the protest has been 
received. The limited involvement of the member of the public filing a 
protest pursuant to this section ends with the filing of the protest, 
and no further submission on behalf of the protestor will be considered, 
unless the submission is made pursuant to paragraph (c)(5) of this 
section.
    (e) Where a protest raising inequitable conduct issues satisfies the 
provisions of this section for entry, it will be entered into the 
application file, generally without comment on the inequitable conduct 
issues raised in it.
    (f) In the absence of a request by the Office, an applicant need not 
reply to a protest.
    (g) Protests that fail to comply with paragraphs (b) or (c) of this 
section may not be entered, and if not entered, will be returned to the 
protestor, or discarded, at the option of the Office.

[69 FR 56544, Sept. 21, 2004, as amended at 77 FR 42173, July 17, 2012]



Sec.Sec. 1.292-1.297  [Reserved]

        Review of Patent and Trademark Office Decisions by Court



Sec.Sec. 1.301-1.304  [Reserved]

                      Allowance and Issue of Patent



Sec.  1.311  Notice of allowance.

    (a) If, on examination, it appears that the applicant is entitled to 
a patent under the law, a notice of allowance will be sent to the 
applicant at the correspondence address indicated inSec. 1.33. The 
notice of allowance shall specify a sum constituting the issue fee which 
must be paid within three months from the date of mailing of the notice 
of allowance to avoid abandonment of the application. The sum specified 
in the notice of allowance may also include the publication fee, in 
which case the issue fee and publication fee (Sec.  1.211(e)) must both 
be paid within three months from the date of mailing of the notice of 
allowance to avoid abandonment of the application. This three-month 
period is not extendable.
    (b) An authorization to charge the issue fee or other post-allowance 
fees set forth inSec. 1.18 to a deposit account may be filed in an 
individual application only after mailing of the notice of allowance. 
The submission of either of the following after the mailing of a notice 
of allowance will operate as a request to charge the correct issue fee 
or any publication fee due to any deposit account identified in a 
previously filed authorization to charge such fees:
    (1) An incorrect issue fee or publication fee; or

[[Page 121]]

    (2) A fee transmittal form (or letter) for payment of issue fee or 
publication fee.

[65 FR 57060, Sept. 20, 2000, as amended at 66 FR 67096, Dec. 28, 2001; 
69 FR 56545, Sept. 21, 2004]



Sec.  1.312  Amendments after allowance.

    No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance. Any amendment filed 
pursuant to this section must be filed before or with the payment of the 
issue fee, and may be entered on the recommendation of the primary 
examiner, approved by the Director, without withdrawing the application 
from issue.

[65 FR 14873, Mar. 20, 2000]



Sec.  1.313  Withdrawal from issue.

    (a) Applications may be withdrawn from issue for further action at 
the initiative of the Office or upon petition by the applicant. To 
request that the Office withdraw an application from issue, applicant 
must file a petition under this section including the fee set forth in 
Sec.  1.17(h) and a showing of good and sufficient reasons why 
withdrawal of the application from issue is necessary. A petition under 
this section is not required if a request for continued examination 
underSec. 1.114 is filed prior to payment of the issue fee. If the 
Office withdraws the application from issue, the Office will issue a new 
notice of allowance if the Office again allows the application.
    (b) Once the issue fee has been paid, the Office will not withdraw 
the application from issue at its own initiative for any reason except:
    (1) A mistake on the part of the Office;
    (2) A violation ofSec. 1.56 or illegality in the application;
    (3) Unpatentability of one or more claims; or
    (4) For an interference or derivation proceeding.
    (c) Once the issue fee has been paid, the application will not be 
withdrawn from issue upon petition by the applicant for any reason 
except:
    (1) Unpatentability of one of more claims, which petition must be 
accompanied by an unequivocal statement that one or more claims are 
unpatentable, an amendment to such claim or claims, and an explanation 
as to how the amendment causes such claim or claims to be patentable;
    (2) Consideration of a request for continued examination in 
compliance withSec. 1.114; or
    (3) Express abandonment of the application. Such express abandonment 
may be in favor of a continuing application.
    (d) A petition under this section will not be effective to withdraw 
the application from issue unless it is actually received and granted by 
the appropriate officials before the date of issue. Withdrawal of an 
application from issue after payment of the issue fee may not be 
effective to avoid publication of application information.

[65 FR 14873, Mar. 20, 2000, as amended at 65 FR 50105, Aug. 16, 2000; 
77 FR 46626, Aug. 6, 2012]



Sec.  1.314  Issuance of patent.

    If applicant timely pays the issue fee, the Office will issue the 
patent in regular course unless the application is withdrawn from issue 
(Sec.  1.313) or the Office defers issuance of the patent. To request 
that the Office defer issuance of a patent, applicant must file a 
petition under this section including the fee set forth inSec. 1.17(h) 
and a showing of good and sufficient reasons why it is necessary to 
defer issuance of the patent.

[65 FR 54677, Sept. 8, 2000]



Sec.  1.315  Delivery of patent.

    The patent will be delivered or mailed upon issuance to the 
correspondence address of record. SeeSec. 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]

[[Page 122]]



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 inSec. 1.20(d).
    (b) An applicant 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 by the applicant or 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 ownership interest in 
the patent to be granted; and
    (4) Be accompanied by the fee set forth inSec. 1.20(d).
    (c) A terminal disclaimer, when filed to obviate judicially created 
double patenting in a patent application or in a reexamination 
proceeding except as provided for in paragraph (d) of this section, 
must:
    (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) 
of this section;
    (2) Be signed in accordance with paragraph (b)(1) of this section if 
filed in a patent application or in accordance with paragraph (a)(1) of 
this section if filed in a reexamination proceeding; and
    (3) Include a provision that any patent granted on that application 
or any patent subject to the reexamination proceeding shall be 
enforceable only for and during such period that said patent is commonly 
owned with the application or patent which formed the basis for the 
judicially created double patenting.
    (d) A terminal disclaimer, when filed in a patent application or in 
a reexamination proceeding to obviate double patenting based upon a 
patent or application that is not commonly owned but was disqualified as 
prior art as set forth in eitherSec. 1.104(c)(4)(ii) or (c)(5)(ii) as 
the result of activities undertaken within the scope of a joint research 
agreement, must:
    (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) 
of this section;
    (2) Be signed in accordance with paragraph (b)(1) of this section if 
filed in a patent application or be signed in accordance with paragraph 
(a)(1) of this section if filed in a reexamination proceeding; and
    (3) Include a provision waiving the right to separately enforce any 
patent granted on that application or any patent subject to the 
reexamination proceeding and the patent or any patent granted on the 
application which formed the basis for the double patenting, and that 
any patent granted on that application or any patent subject to the 
reexamination proceeding shall be enforceable only for and during such

[[Page 123]]

period that said patent and the patent, or any patent granted on the 
application, which formed the basis for the double patenting are not 
separately enforced.

[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996; 
70 FR 1824, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 77 FR 48822, 
Aug. 14, 2012; 78 FR 11059, Feb. 14, 2013]

                     Correction of Errors in Patent



Sec.  1.322  Certificate of correction of Office mistake.

    (a)(1) The Director may issue a certificate of correction pursuant 
to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the 
fault of the Office, which mistake is clearly disclosed in the records 
of the Office:
    (i) At the request of the patentee or the patentee's assignee;
    (ii) Acting sua sponte for mistakes that the Office discovers; or
    (iii) Acting on information about a mistake supplied by a third 
party.
    (2)(i) There is no obligation on the Office to act on or respond to 
a submission of information or request to issue a certificate of 
correction by a third party under paragraph (a)(1)(iii) of this section.
    (ii) Papers submitted by a third party under this section will not 
be made of record in the file that they relate to nor be retained by the 
Office.
    (3) If the request relates to a patent involved in an interference 
or trial before the Patent Trial and Appeal Board, the request must 
comply with the requirements of this section and be accompanied by a 
motion underSec. 41.121(a)(2),Sec. 41.121(a)(3), orSec. 42.20 of 
this title.
    (4) The Office will not issue a certificate of correction under this 
section without first notifying the patentee (including any assignee of 
record) at the correspondence address of record as specified inSec. 
1.33(a) and affording the patentee or an assignee an opportunity to be 
heard.
    (b) If the nature of the mistake on the part of the Office is such 
that a certificate of correction is deemed inappropriate in form, the 
Director may issue a corrected patent in lieu thereof as a more 
appropriate form for certificate of correction, without expense to the 
patentee.

(35 U.S.C. 254)

[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984; 
65 FR 54677, Sept. 8, 2000; 69 FR 50001, Aug. 12, 2004; 77 FR 46626, 
Aug. 6, 2012]



Sec.  1.323  Certificate of correction of applicant's mistake.

    The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee or 
the patentee's assignee, upon payment of the fee set forth inSec. 
1.20(a). If the request relates to a patent involved in an interference 
or trial before the Patent Trial and Appeal Board, the request must 
comply with the requirements of this section and be accompanied by a 
motion underSec. 41.121(a)(2),Sec. 41.121(a)(3) orSec. 42.20 of 
this title.

[77 FR 46626, Aug. 6, 2012]



Sec.  1.324  Correction of inventorship in patent, pursuant to 
35 U.S.C. 256.

    (a) Whenever through error a person is named in an issued patent as 
the inventor, or an inventor is not named in an issued patent, the 
Director, pursuant to 35 U.S.C. 256, may, on application of all the 
parties and assignees, or on order of a court before which such matter 
is called in question, issue a certificate naming only the actual 
inventor or inventors.
    (b) Any request to correct inventorship of a patent 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 each person who is currently named as an inventor either agreeing to 
the change of inventorship or stating that he or she has no disagreement 
in regard to the requested change;
    (2) A statement from all assignees of the parties submitting a 
statement under paragraph (b)(1) of this section agreeing to the change 
of inventorship in the patent, which statement must comply with the 
requirements ofSec. 3.73(c) of this chapter; and
    (3) The fee set forth inSec. 1.20(b).
    (c) For correction of inventorship in an application, seeSec. 
1.48.

[[Page 124]]

    (d) In an interference under part 41, subpart D, of this title, a 
request for correction of inventorship in a patent must be in the form 
of a motion underSec. 41.121(a)(2) of this title. In a contested case 
under part 42, subpart D, of this title, a request for correction of 
inventorship in a patent must be in the form of a motion underSec. 
42.22 of this title. The motion underSec. 41.121(a)(2) orSec. 42.22 
of this title must comply with the requirements of this section.

[77 FR 48822, Aug. 14, 2012]



Sec.  1.325  Other mistakes not corrected.

    Mistakes other than those provided for in Sec.Sec. 1.322, 1.323, 
1.324, and not affording legal grounds for reissue or for reexamination, 
will not be corrected after the date of the patent.

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

[48 FR 2714, Jan. 20, 1983]

                           Arbitration Awards



Sec.Sec. 1.331-1.334  [Reserved]



Sec.  1.335  Filing of notice of arbitration awards.

    (a) Written notice of any award by an arbitrator pursuant to 35 
U.S.C. 294 must be filed in the Patent and Trademark Office by the 
patentee, or the patentee's assignee or licensee. If the award involves 
more than one patent a separate notice must be filed for placement in 
the file of each patent. The notice must set forth the patent number, 
the names of the inventor and patent owner, and the names and addresses 
of the parties to the arbitration. The notice must also include a copy 
of the award.
    (b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is 
modified by a court, the party requesting the modification must file in 
the Patent and Trademark Office, a notice of the modification for 
placement in the file of each patent to which the modification applies. 
The notice must set forth the patent number, the names of the inventor 
and patent owner, and the names and addresses of the parties to the 
arbitration. The notice must also include a copy of the court's order 
modifying the award.
    (c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be 
unenforceable until any notices required by paragraph (a) or (b) of this 
section are filed in the Patent and Trademark Office. If any required 
notice is not filed by the party designated in paragraph (a) or (b) of 
this section, any party to the arbitration proceeding may file such a 
notice.

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

[48 FR 2714, Jan. 20, 1983]

                           Amendment of Rules



Sec.  1.351  Amendments to rules will be published.

    All amendments to the regulations in this part will be published in 
the Official Gazette and in the Federal Register.



Sec.  1.352  [Reserved]

                            Maintenance Fees



Sec.  1.362  Time for payment of maintenance fees.

    (a) Maintenance fees as set forth in Sec.Sec. 1.20 (e) through (g) 
are required to be paid in all patents based on applications filed on or 
after December 12, 1980, except as noted in paragraph (b) of this 
section, to maintain a patent in force beyond 4, 8 and 12 years after 
the date of grant.
    (b) Maintenance fees are not required for any plant patents or for 
any design patents. Maintenance fees are not required for a reissue 
patent if the patent being reissued did not require maintenance fees.
    (c) The application filing dates for purposes of payment of 
maintenance fees are as follows:
    (1) For an application not claiming benefit of an earlier 
application, the actual United States filing date of the application.
    (2) For an application claiming benefit of an earlier foreign 
application under 35 U.S.C. 119, the United States filing date of the 
application.
    (3) For a continuing (continuation, division, continuation-in-part) 
application claiming the benefit of a prior patent application under 35 
U.S.C. 120, the actual United States filing date of the continuing 
application.

[[Page 125]]

    (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.
    (5) For an international application which has entered the United 
States as a Designated Office under 35 U.S.C. 371, the international 
filing date granted under Article 11(1) of the Patent Cooperation Treaty 
which is considered to be the United States filing date under 35 U.S.C. 
363.
    (d) Maintenance fees may be paid in patents without surcharge during 
the periods extending respectively from:
    (1) 3 years through 3 years and 6 months after grant for the first 
maintenance fee,
    (2) 7 years through 7 years and 6 months after grant for the second 
maintenance fee, and
    (3) 11 years through 11 years and 6 months after grant for the third 
maintenance fee.
    (e) Maintenance fees may be paid with the surcharge set forth in 
Sec.  1.20(h) during the respective grace periods after:
    (1) 3 years and 6 months and through the day of the 4th anniversary 
of the grant for the first maintenance fee.
    (2) 7 years and 6 months and through the day of the 8th anniversary 
of the grant for the second maintenance fee, and
    (3) 11 years and 6 months and through the day of the 12th 
anniversary of the grant for the third maintenance fee.
    (f) If the last day for paying a maintenance fee without surcharge 
set forth in paragraph (d) of this section, or the last day for paying a 
maintenance fee with surcharge set forth in paragraph (e) of this 
section, falls on a Saturday, Sunday, or a federal holiday within the 
District of Columbia, the maintenance fee and any necessary surcharge 
may be paid under paragraph (d) or paragraph (e) respectively on the 
next succeeding day which is not a Saturday, Sunday, or federal holiday.
    (g) Unless the maintenance fee and any applicable surcharge is paid 
within the time periods set forth in paragraphs (d), (e) or (f) of this 
section, the patent will expire as of the end of the grace period set 
forth in paragraph (e) of this section. A patent which expires for the 
failure to pay the maintenance fee will expire at the end of the same 
date (anniversary date) the patent was granted in the 4th, 8th, or 12th 
year after grant.
    (h) The periods specified in Sec.Sec. 1.362 (d) and (e) with 
respect to a reissue application, including a continuing reissue 
application thereof, are counted from the date of grant of the original 
non-reissue application on which the reissued patent is based.

[49 FR 34724, Aug. 31, 1984, as amended at 56 FR 65154, Dec. 13, 1991; 
58 FR 54511, Oct. 22, 1993]



Sec.  1.363  Fee address for maintenance fee purposes.

    (a) All notices, receipts, refunds, and other communications 
relating to payment or refund of maintenance fees will be directed to 
the correspondence address used during prosecution of the application as 
indicated inSec. 1.33(a) unless:
    (1) A fee address for purposes of payment of maintenance fees is set 
forth when submitting the issue fee, or
    (2) A change in the correspondence address for all purposes is filed 
after payment of the issue fee, or
    (3) A fee address or a change in the ``fee address'' is filed for 
purposes of receiving notices, receipts and other correspondence 
relating to the payment of maintenance fees after the payment of the 
issue fee, in which instance, the latest such address will be used.
    (b) An assignment of a patent application or patent does not result 
in a change of the ``correspondence address'' or ``fee address'' for 
maintenance fee purposes.
    (c) A fee address must be an address associated with a Customer 
Number.

[49 FR 34725, Aug. 31, 1984, as amended at 69 FR 29878, May 26, 2004]



Sec.  1.366  Submission of maintenance fees.

    (a) The patentee may pay maintenance fees and any necessary 
surcharges, or any person or organization may pay maintenance fees and 
any necessary surcharges on behalf of a patentee. Authorization by the 
patentee need not be filed in the Patent

[[Page 126]]

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 inSec. 1.23 or by an authorization 
to charge a deposit account established pursuant toSec. 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 
inSec. 1.362 (d), (e), or (f). Any payment or authorization of 
maintenance fees and surcharges filed at any other time will not be 
accepted and will not serve as a payment of the maintenance fee except 
insofar as a delayed payment of the maintenance fee is accepted by the 
Director in an expired patent pursuant to a petition filed underSec. 
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 forthSec. 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 inSec. 1.8 orSec. 1.10 may be utilized in 
paying maintenance fees and any necessary surcharges.
    (c) In submitting maintenance fees and any necessary surcharges, 
identification of the patents for which maintenance fees are being paid 
must include the patent number, and the application number of the United 
States application for the patent on which the maintenance fee is being 
paid. If the payment includes identification of only the patent number 
(i.e., does not identify the application number of the United States 
application for the patent on which the maintenance fee is being paid), 
the Office may apply the payment to the patent identified by patent 
number in the payment or may return the payment.
    (d) Payment of maintenance fees and any surcharges should identify 
the fee being paid for each patent as to whether it is the 3\1/2\-, 7\1/
2\-, or 11\1/2\-year fee, whether small entity status is being changed 
or claimed, the amount of the maintenance fee and any surcharge being 
paid, and any assigned customer number. If the maintenance fee and any 
necessary surcharge is being paid on a reissue patent, the payment must 
identify the reissue patent by reissue patent number and reissue 
application number as required by paragraph (c) of this section and 
should also include the original patent number.
    (e) Maintenance fee payments and surcharge payments relating thereto 
must be submitted separate from any other payments for fees or charges, 
whether submitted in the manner set forth inSec. 1.23 or by an 
authorization to charge a deposit account. If maintenance fee and 
surcharge payments for more than one patent are submitted together, they 
should be submitted on as few sheets as possible with the patent numbers 
listed in increasing patent number order. If the payment submitted is 
insufficient to cover the maintenance fees and surcharges for all the 
listed patents, the payment will be applied in the order the patents are 
listed, beginning at the top of the listing.
    (f) Notification of any change in status resulting in loss of 
entitlement to small entity status must be filed in a patent prior to 
paying, or at the time of paying, the earliest maintenance fee due after 
the date on which status as a small entity is no longer appropriate. See 
Sec.  1.27(g).
    (g) Maintenance fees and surcharges relating thereto will not be 
refunded except in accordance with Sec.Sec. 1.26 and 1.28(a).

[49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993; 
62 FR 53199, Oct. 10, 1997; 65 FR 54677, Sept. 8, 2000; 65 FR 78960, 
Dec. 18, 2000]



Sec.  1.377  Review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of patent.

    (a) Any patentee who is dissatisfied with the refusal of the Patent 
and Trademark Office to accept and record a maintenance fee which was 
filed prior to the expiration of the patent

[[Page 127]]

may petition the Director to accept and record the maintenance fee.
    (b) Any petition under this section must be filed within two months 
of the action complained of, or within such other time as may be set in 
the action complained of, and must be accompanied by the fee set forth 
inSec. 1.17(g). The petition may include a request that the petition 
fee be refunded if the refusal to accept and record the maintenance fee 
is determined to result from an error by the Patent and Trademark 
Office.
    (c) Any petition filed under this section must comply with the 
requirements ofSec. 1.181(b) and must be signed by an attorney or 
agent registered to practice before the Patent and Trademark Office, or 
by the patentee, the assignee, or other party in interest.

[49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997; 
69 FR 56545, Sept. 21, 2004]



Sec.  1.378  Acceptance of delayed payment of maintenance fee in 
expired patent to reinstate patent.

    (a) The Director may accept the payment of any maintenance fee due 
on a patent after expiration of the patent if, upon petition, the delay 
in payment of the maintenance fee is shown to the satisfaction of the 
Director to have been unavoidable (paragraph (b) of this section) or 
unintentional (paragraph (c) of this section) and if the surcharge 
required bySec. 1.20(i) is paid as a condition of accepting payment of 
the maintenance fee. If the Director accepts payment of the maintenance 
fee upon petition, the patent shall be considered as not having expired, 
but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
    (b) Any petition to accept an unavoidably delayed payment of a 
maintenance fee filed under paragraph (a) of this section must include:
    (1) The required maintenance fee set forth inSec. 1.20 (e) through 
(g);
    (2) The surcharge set forth inSec. 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 inSec. 1.20 (e) through 
(g);
    (2) The surcharge set forth inSec. 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 inSec. 1.17(f). 
After the decision on the petition for reconsideration, no further 
reconsideration or review of the matter will be undertaken by the 
Director. If the delayed payment of the maintenance fee is not accepted, 
the maintenance fee and the surcharge set forth inSec. 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

[[Page 128]]

and record the maintenance fee is determined to result from an error by 
the Patent and Trademark Office.

[49 FR 34726, Aug. 31, 1984, as amended at 50 FR 9383, Mar. 7, 1985; 58 
FR 44282, Aug. 20, 1993; 62 FR 53199, Oct. 10, 1997; 69 FR 56545, Sept. 
21, 2004]



              Subpart C_International Processing Provisions

    Authority: Secs. 1.401 to 1.499 also issued under 35 U.S.C. 41 and 
351 through 376.

    Source: 43 FR 20466, May 11, 1978, unless otherwise noted.

                           General Information



Sec.  1.401  Definitions of terms under the Patent Cooperation Treaty.

    (a) The abbreviation PCT and the term Treaty mean the Patent 
Cooperation Treaty.
    (b) International Bureau means the World Intellectual Property 
Organization located in Geneva, Switzerland.
    (c) Administrative Instructions means that body of instructions for 
operating under the Patent Cooperation Treaty referred to in PCT Rule 
89.
    (d) Request, when capitalized, means that element of the 
international application described in PCT Rules 3 and 4.
    (e) International application, as used in this subchapter is defined 
inSec. 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 alsoSec. 
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 andSec. 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]

[[Page 129]]



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 Director, in accordance with the agreement between the Patent and 
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
    (b) The Patent and Trademark Office, when acting as an International 
Searching Authority, will be identified by the full title ``United 
States International Searching Authority'' or by the abbreviation ``ISA/
US.''
    (c) The major functions of the International Searching Authority 
include:
    (1) Approving or establishing the title and abstract;
    (2) Considering the matter of unity of invention;
    (3) Conducting international and international-type searches and 
preparing international and international-type search reports (PCT Art. 
15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing 
declarations that no international search report will be established 
(PCT Article 17(2)(a));
    (4) Preparing written opinions of the International Searching 
Authority in accordance with PCT Rule 43bis (when necessary); and
    (5) Transmitting the international search report and the written 
opinion of the International Searching Authority to the applicant and 
the International Bureau.

[43 FR 20466, May 11, 1978, as amended at 68 FR 59886, Oct. 20, 2003]



Sec.  1.414  The United States Patent and Trademark Office as a 
Designated Office or Elected Office.

    (a) The United States Patent and Trademark Office will act as a 
Designated Office or Elected Office for international applications in 
which the United States of America has been designated or elected as a 
State in which patent protection is desired.
    (b) The United States Patent and Trademark Office, when acting as a 
Designated Office or Elected Office during international processing will 
be identified by the full title ``United States Designated Office'' or 
by the abbreviation ``DO/US'' or by the full title ``United States 
Elected Office'' or by the abbreviation ``EO/US''.
    (c) The major functions of the United States Designated Office or 
Elected Office in respect to international applications in which the 
United States of America has been designated or elected, include:
    (1) Receiving various notifications throughout the international 
stage and
    (2) National stage processing for international applications 
entering the national stage under 35 U.S.C. 371.

[52 FR 20047, May 28, 1987, as amended at 77 FR 48823, Aug. 14, 2012]



Sec.  1.415  The International Bureau.

    (a) The International Bureau is the World Intellectual Property 
Organization located at Geneva, Switzerland. It is the international 
intergovernmental organization which acts as the coordinating body under 
the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)).
    (b) The major functions of the International Bureau include:
    (1) Publishing of international applications and the International 
Gazette;
    (2) Transmitting copies of international applications to Designated 
Offices;
    (3) Storing and maintaining record copies; and
    (4) Transmitting information to authorities pertinent to the 
processing of specific international applications.



Sec.  1.416  The United States International Preliminary Examining
Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Preliminary 
Examining Authority for international applications filed in the United 
States Receiving Office and in other Receiving Offices as may be agreed 
upon by the Director, in accordance with agreement between the Patent 
and Trademark Office and the International Bureau.
    (b) The United States Patent and Trademark Office, when acting as an 
International Preliminary Examining Authority, will be identified by the 
full

[[Page 130]]

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.  1.417  Submission of translation of international publication.

    The submission of an English language translation of the publication 
of an international application pursuant to 35 U.S.C. 154(d)(4) must 
clearly identify the international application to which it pertains 
(Sec.  1.5(a)) and be clearly identified as a submission pursuant to 35 
U.S.C. 154(d)(4). Otherwise, the submission will be treated as a filing 
under 35 U.S.C. 111(a). Such submissions should be marked ``Mail Stop 
PCT.''

[68 FR 71007, Dec. 22, 2003]



Sec.  1.419  Display of currently valid control number under the 
Paperwork Reduction Act.

    (a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 
et seq.), the collection of information in this subpart has been 
reviewed and approved by the Office of Management and Budget under 
control number 0651-0021.
    (b) Notwithstanding any other provision of law, no person is 
required to respond to nor shall a person be subject to a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid Office of Management and Budget 
control number. This section constitutes the display required by 44 
U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of 
information under Office of Management and Budget control number 0651-
0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).

[63 FR 29617, June 1, 1998]

                Who May File an International Application



Sec.  1.421  Applicant for international application.

    (a) Only residents or nationals of the United States of America may 
file international applications in the United States Receiving Office. 
If an international application does not include an applicant who is 
indicated as being a resident or national of the United States of 
America, and at least one applicant:
    (1) Has indicated a residence or nationality in a PCT Contracting 
State, or
    (2) Has no residence or nationality indicated, applicant will be so 
notified and, if the international application includes a fee amount 
equivalent to that required bySec. 1.445(a)(4), the international 
application will be forwarded for processing to the International Bureau 
acting as a Receiving Office (see alsoSec. 1.412(c)(6)).
    (b) Although the United States Receiving Office will accept 
international applications filed by any applicant who is a resident or 
national of the United States of America for international processing, 
for the purposes of the designation of the United States, an 
international application will be accepted by the Patent and Trademark 
Office for the national stage only if the applicant is the inventor or 
other person as provided inSec. 1.422 orSec. 1.424. Joint inventors 
must jointly apply for an international application.

[[Page 131]]

    (c) A registered attorney or agent of the applicant may sign the 
international application Request and file the international application 
for the applicant. A separate power of attorney from each applicant may 
be required.
    (d) Any indication of different applicants for the purpose of 
different Designated Offices must be shown on the Request portion of the 
international application.
    (e) Requests for changes in the indications concerning the 
applicant, agent, or common representative of an international 
application shall be made in accordance with PCT Rule 92bis and may be 
required to be signed by all applicants.
    (f) Requests for withdrawals of the international application, 
designations, priority claims, the Demand, or elections shall be made in 
accordance with PCT Rule 90bis and must be signed by all applicants. A 
separate power of attorney from the applicants will be required for the 
purposes of any request for a withdrawal in accordance with PCT Rule 
90bis which is not signed by all applicants.

[77 FR 48823, Aug. 14, 2012]



Sec.  1.422  Legal representative as applicant in an international
application.

    If an inventor is deceased or under legal incapacity, the legal 
representative of the inventor may be an applicant in an international 
application which designates the United States of America.

[77 FR 48823, Aug. 14, 2012]



Sec.  1.423  [Reserved]



Sec.  1.424  Assignee, obligated assignee, or person having sufficient
proprietary interest as applicant in an international application.

    (a) A person to whom the inventor has assigned or is under an 
obligation to assign the invention may be an applicant in an 
international application which designates the United States of America. 
A person who otherwise shows sufficient proprietary interest in the 
matter may be an applicant in an international application which 
designates the United States of America on proof of the pertinent facts 
and a showing that such action is appropriate to preserve the rights of 
the parties.
    (b) Neither any showing required under paragraph (a) of this section 
nor documentary evidence of ownership or proprietary interest will be 
required or considered by the Office in the international stage, but 
will be required in the national stage in accordance with the conditions 
and requirements ofSec. 1.46.

[77 FR 48823, Aug. 14, 2012]

                      The International Application



Sec.  1.431  International application requirements.

    (a) An international application shall contain, as specified in the 
Treaty and the Regulations, a Request, a description, one or more 
claims, an abstract, and one or more drawings (where required). (PCT 
Art. 3(2) and section 207 of the Administrative Instructions.)
    (b) An international filing date will be accorded by the United 
States Receiving Office, at the time to receipt of the international 
application, provided that:
    (1) At least one applicant (Sec.  1.421) is a United States resident 
or national and the papers filed at the time of receipt of the 
international application so indicate (35 U.S.C. 361(a), PCT Art. 
11(1)(i)).
    (2) The international application is in the English language (35 
U.S.C. 361(c), PCT Art. 11(1)(ii)).
    (3) The international application contains at least the following 
elements (PCT Art. 11(1)(iii)):
    (i) An indication that it is intended as an international 
application (PCT Rule 4.2);
    (ii) The designation of at least one Contracting State of the 
International Patent Cooperation Union (Sec.  1.432);
    (iii) The name of the applicant, as prescribed (note Sec.Sec. 
1.421, 1.422, and 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 international filing fee (PCT Rule 15.2) and the 
transmittal and search fees (Sec.  1.445) may be

[[Page 132]]

made in full at the time the international application papers required 
by paragraph (b) of this section are deposited or within one month 
thereafter. The international filing, transmittal, and search fee 
payable is the international filing, transmittal, and search fee in 
effect on the receipt date of the international application.
    (1) If the international filing, transmittal and search fees are not 
paid within one month from the date of receipt of the international 
application and prior to the sending of a notice of deficiency which 
imposes a late payment fee, applicant will be notified and given one 
month within which to pay the deficient fees plus the late payment fee. 
Subject to paragraph (c)(2) of this section, the late payment fee will 
be equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees; or
    (ii) An amount equal to the transmittal fee;
    (2) The late payment fee shall not exceed an amount equal to fifty 
percent of the international filing fee not taking into account any fee 
for each sheet of the international application in excess of thirty 
sheets (PCT Rule 16bis).
    (3) The one-month time limit set pursuant to paragraph (c) of this 
section to pay deficient fees may not be extended.
    (d) If the payment needed to cover the transmittal fee, the 
international filing fee, the search fee, and the late payment fee 
pursuant to paragraph (c) of this section is not timely made in 
accordance with PCT Rule 16bis.1(e), the Receiving Office will declare 
the international application withdrawn under PCT Article 14(3)(a).

[43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52 
FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1, 
1998; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003; 77 FR 
48823, Aug. 14, 2012]



Sec.  1.432  Designation of States by filing an international 
application.

    The filing of an international application request shall constitute:
    (a) The designation of all Contracting States that are bound by the 
Treaty on the international filing date;
    (b) An indication that the international application is, in respect 
of each designated State to which PCT Article 43 or 44 applies, for the 
grant of every kind of protection which is available by way of the 
designation of that State; and
    (c) An indication that the international application is, in respect 
of each designated State to which PCT Article 45(1) applies, for the 
grant of a regional patent and also, unless PCT Article 45(2) applies, a 
national patent.

[68 FR 59887, Oct. 20, 2003]



Sec.  1.433  Physical requirements of international application.

    (a) The international application and each of the documents that may 
be referred to in the check list of the Request (PCT Rule 3.3(a)(ii)) 
shall be filed in one copy only.
    (b) All sheets of the international application must be on A4 size 
paper (21.0 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 United 
States Patent and Trademark Office. Letters requesting printed forms 
should be marked ``Mail Stop PCT.''
    (b) The Check List portion of the Request form should indicate each 
document accompanying the international application on filing.
    (c) All information, for example, addresses, names of States and 
dates, shall be indicated in the Request as required by PCT Rule 4 and 
Administrative Instructions 110 and 201.
    (d) For the purposes of the designation of the United States of 
America, an international application shall include:
    (1) The name of the inventor; and
    (2) A reference to any prior-filed national application or 
international application designating the United States of America, if 
the benefit of the filing date for the prior-filed application is to be 
claimed.

[[Page 133]]

    (e) An international application may also include in the Request a 
declaration of the inventors as provided for in PCT Rule 4.17(iv).

[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66 
FR 16006, Mar. 22, 2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, Mar. 
25, 2003; 68 FR 59887, Oct. 20, 2003]



Sec.  1.435  The description.

    (a) The application must meet the requirements as to the content and 
form of the description set forth in PCT Rules 5, 9, 10, and 11 and 
sections 204 and 208 of the Administrative Instructions.
    (b) In international applications designating the United States the 
description must contain upon filing an indication of the best mode 
contemplated by the inventor for carrying out the claimed invention.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]



Sec.  1.436  The claims.

    The requirements as to the content and format of claims are set 
forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered 
to. The number of the claims shall be reasonable, considering the nature 
of the invention claimed.



Sec.  1.437  The drawings.

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

[72 FR 51563, Sept. 10, 2007]



Sec.  1.438  The abstract.

    (a) Requirements as to the content and form of the abstract are set 
forth in PCT Rule 8, and shall be adhered to.
    (b) Lack of an abstract upon filing of an international application 
will not affect the granting of a filing date. However, failure to 
furnish an abstract within one month from the date of the notification 
by the Receiving Office will result in the international appplication 
being declared withdrawn.

                                  Fees



Sec.  1.445  International application filing, processing and search
fees.

    (a) The following fees and charges for international applications 
are established by law or by the Director under the authority of 35 
U.S.C. 376:
    (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) 
consisting of:
    (i) A basic portion:

(A) For an international application having a receipt date
 that is on or after January 1, 2014:
  By a micro entity (Sec.   1.29)..........................       $60.00
  By a small entity (Sec.   1.27(a)).......................      $120.00
  By other than a small or micro entity....................      $240.00
(B) For an international application having a receipt date       $240.00
 that is before January 1, 2014............................
(ii) A non-electronic filing fee portion for any
 international application designating the United States of
 America that is filed on or after November 15, 2011, other
 than by the Office electronic filing system, except for a
 plant application:
  By a small entity (Sec.   1.27(a)).......................      $200.00
  By other than a small entity.............................      $400.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) For an international application having a receipt date
 that is on or after January 1, 2014:
  By a micro entity (Sec.   1.29)..........................      $520.00
  By a small entity (Sec.   1.27(a)).......................    $1,040.00
  By other than a small or micro entity....................    $2,080.00
(ii) For an international application having a receipt date    $2,080.00
 that is before January 1, 2014............................
(3) A supplemental search fee when required, per additional
 invention:

[[Page 134]]

 
(i) For an international application having a receipt date
 that is on or after January 1, 2014:
  By a micro entity (Sec.   1.29)..........................      $520.00
  By a small entity (Sec.   1.27(a)).......................    $1,040.00
  By other than a small or micro entity....................    $2,080.00
(ii) For an international application having a receipt date    $2,080.00
 that is before January 1, 2014............................
 

    (4) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
this section that would apply if the USPTO was the Receiving Office for 
transmittal of an international application to the International Bureau 
for processing in its capacity as a Receiving Office (PCT Rule 19.4).
    (b) The international filing fee shall be as prescribed in PCT Rule 
15.

[78 FR 17107, Mar. 20, 2013]



Sec.  1.446  Refund of international application filing and processing
fees.

    (a) Money paid for international application fees, where paid by 
actual mistake or in excess, such as a payment not required by law or 
treaty and its regulations, may be refunded. A mere change of purpose 
after the payment of a fee will not entitle a party to a refund of such 
fee. The Office will not refund amounts of twenty-five dollars or less 
unless a refund is specifically requested and will not notify the payor 
of such amounts. If the payor or party requesting a refund does not 
provide the banking information necessary for making refunds by 
electronic funds transfer, the Office may use the banking information 
provided on the payment instrument to make any refund by electronic 
funds transfer.
    (b) Any request for refund under paragraph (a) of this section must 
be filed within two years from the date the fee was paid. If the Office 
charges a deposit account by an amount other than an amount specifically 
indicated in an authorization underSec. 1.25(b), any request for 
refund based upon such charge must be filed within two years from the 
date of the deposit account statement indicating such charge and include 
a copy of that deposit account statement. The time periods set forth in 
this paragraph are not extendable.
    (c) Refund of the supplemental search fees will be made if such 
refund is determined to be warranted by the Director or the Director's 
designee acting under PCT Rule 40.2(c).
    (d) The international and search fees will be refunded if no 
international filing date is accorded or if the application is withdrawn 
before transmittal of the record copy to the International Bureau (PCT 
Rules 15.6 and 16.2). The search fee will be refunded if the application 
is withdrawn before transmittal of the search copy to the International 
Searching Authority. The transmittal fee will not be refunded.
    (e) The handling fee (Sec.  1.482(b)) will be refunded (PCT Rule 
57.6) only if:
    (1) The Demand is withdrawn before the Demand has been sent by the 
International Preliminary Examining Authority to the International 
Bureau, or
    (2) The Demand is considered not to have been submitted (PCT Rule 
54.4(a)).

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

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

                                Priority



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

    (a) The claim for priority must, subject to paragraph (d) of this 
section, be made on the Request (PCT Rule 4.10) in a manner complying 
with sections 110 and 115 of the Administrative Instructions.
    (b) Whenever the priority of an earlier United States national 
application or international application filed with the United States 
Receiving Office is claimed in an international application, the 
applicant may request in the Request or in a letter of transmittal 
accompanying the international application upon filing with the United 
States Receiving Office or in a separate letter filed in the United 
States Receiving Office not later than 16 months after the priority 
date, that the United States Patent and Trademark Office

[[Page 135]]

prepare a certified copy of the prior application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is set forth inSec. 1.19(b)(1).
    (c) If a certified copy of the priority document is not submitted 
together with the international application on filing, or, if the 
priority application was filed in the United States and a request and 
appropriate payment for preparation of such a certified copy do not 
accompany the international application on filing or are not filed 
within 16 months of the priority date, the certified copy of the 
priority document must be furnished by the applicant to the 
International Bureau or to the United States Receiving Office within the 
time limit specified in PCT Rule 17.1(a).
    (d) The applicant may correct or add a priority claim in accordance 
with PCT Rule 26bis.1.

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

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



Sec.  1.452  Restoration of right of priority.

    (a) If the international application has an international filing 
date which is later than the expiration of the priority period as 
defined by PCT Rule 2.4 but within two months from the expiration of the 
priority period, the right of priority in the international application 
may be restored upon request if the delay in filing the international 
application within the priority period was unintentional.
    (b) A request to restore the right of priority in an international 
application under paragraph (a) of this section must be filed not later 
than two months from the expiration of the priority period and must 
include:
    (1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if 
the priority claim in respect of the earlier application is not 
contained in the international application;
    (2) The fee set forth inSec. 1.17(t); and
    (3) A statement that the delay in filing the international 
application within the priority period was unintentional. The Director 
may require additional information where there is a question whether the 
delay was unintentional.
    (c) If the applicant makes a request for early publication under PCT 
Article 21(2)(b), any requirement under paragraph (b) of this section 
filed after the technical preparations for international publication 
have been completed by the International Bureau shall be considered as 
not having been submitted in time.
    (d) Restoration of a right of priority to a prior application by the 
United States Receiving Office under this section, or by any other 
Receiving Office under the provisions of PCT Rule 26bis.3, will not 
entitle applicants to a right of priority in any application which has 
entered the national stage under 35 U.S.C. 371, or in any application 
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 
and 365(c) to an international application in which the right to 
priority has been restored.

[72 FR 51563, Sept. 10, 2007]

                             Representation



Sec.  1.455  Representation in international applications.

    (a) Applicants of international applications may be represented by 
attorneys or agents registered to practice before the United States 
Patent and Trademark Office or by an applicant appointed as a common 
representative (PCT Art. 49, Rules 4.8 and 90 andSec. 11.9). If 
applicants have not appointed an attorney or agent or one of the 
applicants to represent them, and there is more than one applicant, the 
applicant first named in the request and who is entitled to file in the 
U.S. Receiving Office shall be considered to be the common 
representative of all the applicants. An attorney or agent having the 
right to practice before a national office with which an international 
application is filed and for which the United States is an International 
Searching Authority or International Preliminary Examining Authority may 
be appointed to represent the applicants in the international 
application before that authority. An attorney or agent may appoint an 
associate attorney or agent who shall also then be of record

[[Page 136]]

(PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a 
common representative, revokes any earlier appointment unless otherwise 
indicated (PCT Rule 90.6 (b) and (c)).
    (b) Appointment of an agent, attorney or common representative (PCT 
Rule 4.8) must be effected either in the Request form, signed by 
applicant, in the Demand form, signed by applicant, or in a separate 
power of attorney submitted either to the United States Receiving Office 
or to the International Bureau.
    (c) Powers of attorney and revocations thereof should be submitted 
to the United States Receiving Office until the issuance of the 
international search report.
    (d) The addressee for correspondence will be as indicated in section 
108 of the Administrative Instructions.

[43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58 
FR 4345, Jan. 14, 1993; 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June 
24, 2004]

                       Transmittal of Record Copy



Sec.  1.461  Procedures for transmittal of record copy to the 
International Bureau.

    (a) Transmittal of the record copy of the international application 
to the International Bureau shall be made by the United States Receiving 
Office or as provided by PCT Rule 19.4.
    (b) [Reserved]
    (c) No copy of an international application may be transmitted to 
the International Bureau, a foreign Designated Office, or other foreign 
authority by the United States Receiving Office or the applicant, unless 
the applicable requirements of part 5 of this chapter have been 
satisfied.

[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63 
FR 29619, June 1, 1998]

                                 Timing



Sec.  1.465  Timing of application processing based on the priority date.

    (a) For the purpose of computing time limits under the Treaty, the 
priority date shall be defined as in PCT Art. 2(xi).
    (b) When a claimed priority date is corrected under PCT Rule 
26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a), 
withdrawn under PCT Rule 90bis.3, or considered not to have been made 
under PCT Rule 26bis.2, the priority date for the purposes of computing 
any non-expired time limits will be the filing date of the earliest 
remaining priority claim under PCT Article 8 of the international 
application, or if none, the international filing date.
    (c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 
20.2(a) (i) or (iii) are timely submitted, and the date of receipt of 
such corrections falls later than one year from the claimed priority 
date or dates, the Receiving Office shall proceed under PCT Rule 
26bis.2.

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



Sec.  1.468  Delays in meeting time limits.

    Delays in meeting time limits during international processing of 
international applications may only be excused as provided in PCT Rule 
82. For delays in meeting time limits in a national application, see 
Sec.  1.137.

                               Amendments



Sec.  1.471  Corrections and amendments during international processing.

    (a) Except as otherwise provided in this paragraph, all corrections 
submitted to the United States Receiving Office or United States 
International Searching Authority must be in English, in the form of 
replacement sheets in compliance with PCT Rules 10 and 11, and 
accompanied by a letter that draws attention to the differences between 
the replaced sheets and the replacement sheets. Replacement sheets are 
not required for the deletion of lines of text, the correction of simple 
typographical errors, and one addition or change of not more than five 
words per sheet. These changes may be stated in a letter and, if 
appropriate, the United States Receiving Office will make the deletion 
or transfer the correction to the international application, provided 
that such corrections do

[[Page 137]]

not adversely affect the clarity and direct reproducibility of the 
application (PCT Rule 26.4). Amendments that do not comply with PCT 
Rules 10 and 11.1 to 11.13 may not be entered.
    (b) Amendments of claims submitted to the International Bureau shall 
be as prescribed by PCT Rule 46.
    (c) Corrections or additions to the Request of any declarations 
under PCT Rule 4.17 should be submitted to the International Bureau as 
prescribed by PCT Rule 26ter.

[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 66 
FR 16006, Mar. 22, 2001]



Sec.  1.472  Changes in person, name, or address of applicants and 
inventors.

    All requests for a change in person, name or address of applicants 
and inventor be sent to the United States Receiving Office until the 
time of issuance of the international search report. Thereafter requests 
for such changes should be submitted to the International Bureau.

[43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]

                           Unity of Invention



Sec.  1.475  Unity of invention before the International Searching
Authority, the International Preliminary Examining Authority and during
the national stage.

    (a) An international and a national stage application shall relate 
to one invention only or to a group of inventions so linked as to form a 
single general inventive concept (``requirement of unity of 
invention''). Where a group of inventions is claimed in an application, 
the requirement of unity of invention shall be fulfilled only when there 
is a technical relationship among those inventions involving one or more 
of the same or corresponding special technical features. The expression 
``special technical features'' shall mean those technical features that 
define a contribution which each of the claimed inventions, considered 
as a whole, makes over the prior art.
    (b) An international or a national stage application containing 
claims to different categories of invention will be considered to have 
unity of invention if the claims are drawn only to one of the following 
combinations of categories:
    (1) A product and a process specially adapted for the manufacture of 
said product; or
    (2) A product and a process of use of said product; or
    (3) A product, a process specially adapted for the manufacture of 
the said product, and a use of the said product; or
    (4) A process and an apparatus or means specifically designed for 
carrying out the said process; or
    (5) A product, a process specially adapted for the manufacture of 
the said 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) andSec. 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 inSec. 1.475.
    (b) If the International Searching Authority considers that the 
international application does not comply

[[Page 138]]

with the requirement of unity of invention, it shall inform the 
applicant accordingly and invite the payment of additional fees (note 
Sec.  1.445 and PCT Art. 17(3)(a) and PCT Rule 40). The applicant will 
be given a time period in accordance with PCT Rule 40.3 to pay the 
additional fees due.
    (c) In the case of non-compliance with unity of invention and where 
no additional fees are paid, the international search will be performed 
on the invention first mentioned (``main invention'') in the claims.
    (d) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Searching Authority may raise the objection of lack of unity of 
invention.

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987; 58 FR 4346, Jan. 14, 1993]



Sec.  1.477  Protest to lack of unity of invention before the
International Searching Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Searching Authority, additional fees may 
be paid under protest, accompanied by a request for refund and a 
statement setting forth reasons for disagreement or why the required 
additional fees are considered excessive, or both (PCT Rule 40.2(c)).
    (b) Protest under paragraph (a) of this section will be examined by 
the Director or the Director's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international search report when 
forwarded to the Designated Offices, may notify the International 
Searching Authority to that effect any time prior to the issuance of the 
international search report. Thereafter, such notification should be 
directed to the International Bureau (PCT Rule 40.2(c)).

[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May 
28, 1987]

                  International Preliminary Examination



Sec.  1.480  Demand for international preliminary examination.

    (a) On the filing of a proper Demand in an application for which the 
United States International Preliminary Examining Authority is competent 
and for which the fees have been paid, the international application 
shall be the subject of an international preliminary examination. The 
preliminary examination fee (Sec.  1.482(a)(1)) and the handling fee 
(Sec.  1.482(b)) shall be due within the applicable time limit set forth 
in PCT Rule 57.3.
    (b) The Demand shall be made on a standardized form (PCT Rule 53). 
Copies of the printed Demand forms are available from the United States 
Patent and Trademark Office. Letters requesting printed Demand forms 
should be marked ``Mail Stop PCT.''
    (c) Withdrawal of a proper Demand prior to the start of the 
international preliminary examination will entitle applicant to a refund 
of the preliminary examination fee minus the amount of the transmittal 
fee set forth inSec. 1.445(a)(1).
    (d) The filing of a Demand shall constitute the election of all 
Contracting States which are designated and are bound by Chapter II of 
the Treaty on the international filing date (PCT Rule 53.7).
    (e) Any Demand filed after the expiration of the applicable time 
limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had 
not been submitted (PCT Rule 54bis.1(b)).

[52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58 
FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 67 FR 523, Jan. 4, 
2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888, Oct. 20, 2003]



Sec.  1.481  Payment of international preliminary examination fees.

    (a) The handling and preliminary examination fees shall be paid 
within the time period set in PCT Rule 57.3. The

[[Page 139]]

handling fee or preliminary examination fee payable is the handling fee 
or preliminary examination fee in effect on the date of payment.
    (1) If the handling and preliminary examination fees are not paid 
within the time period set in PCT Rule 57.3, applicant will be notified 
and given one month within which to pay the deficient fees plus a late 
payment fee equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees, but not 
exceeding an amount equal to double the handling fee; or
    (ii) An amount equal to the handling fee (PCT Rule 58bis.2).
    (2) The one-month time limit set in this paragraph to pay deficient 
fees may not be extended.
    (b) If the payment needed to cover the handling and preliminary 
examination fees, pursuant to paragraph (a) of this section, is not 
timely made in accordance with PCT Rule 58bis.1(d), the United States 
International Preliminary Examination Authority will declare the Demand 
to be considered as if it had not been submitted.

[63 FR 29619, June 1, 1998, as amended at 68 FR 59888, Oct. 20, 2003]



Sec.  1.482  International preliminary examination fees.

    (a) The following fees and charges for international preliminary 
examination are established by the Director under the authority of 35 
U.S.C. 376:
    (1) The following preliminary examination fee is due on filing the 
Demand:
    (i) If an international search fee as set forth inSec. 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) For an international preliminary examination fee paid
 on or after January 1, 2014:
  By a micro entity (Sec.   1.29)..........................      $150.00
  By a small entity (Sec.   1.27(a)).......................      $300.00
  By other than a small or micro entity....................      $600.00
(B) For an international preliminary examination fee paid        $600.00
 before January 1, 2014....................................
(ii) If the International Searching Authority for the
 international application was an authority other than the
 United States Patent and Trademark Office:
(A) For an international preliminary examination fee paid
 on or after January 1, 2014:
  By a micro entity (Sec.   1.29)..........................      $190.00
  By a small entity (Sec.   1.27(a)).......................      $380.00
  By other than a small or micro entity....................      $760.00
(B) For an international preliminary examination fee paid
 before January 1, 2014 $750.00............................
(2) An additional preliminary examination fee when
 required, per additional invention:
(i) If the international preliminary examination fee set
 forth in paragraph (a)(1) of this section was paid on or
 after January 1, 2014:
  By a micro entity (Sec.   1.29)..........................      $150.00
  By a small entity (Sec.   1.27(a)).......................      $300.00
  By other than a small or micro entity....................      $600.00
(ii) If the international preliminary examination fee set        $600.00
 forth in paragraph (a)(1) of this section was paid before
 January 1, 2014...........................................
 

    (b) The handling fee is due on filing the Demand and shall be 
prescribed in PCT Rule 57.

[78 FR 17107, Mar. 20, 2013]



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,

[[Page 140]]

involves an inventive step (is non-obvious) and is industrially 
applicable.
    (b) International preliminary examination will begin in accordance 
with PCT Rule 69.1.
    (c) No international preliminary examination will be conducted on 
inventions not previously searched by an International Searching 
Authority.
    (d) The International Preliminary Examining Authority will establish 
a written opinion if any defect exists or if the claimed invention lacks 
novelty, inventive step or industrial applicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.
    (e) The written opinion established by the International Searching 
Authority under PCT Rule 43bis.1 shall be considered to be a written 
opinion of the United States International Preliminary Examining 
Authority for the purposes of paragraph (d) of this section.
    (f) The International Preliminary Examining Authority may establish 
further written opinions under paragraph (d) of this section.
    (g) If no written opinion under paragraph (d) of this section is 
necessary, or if no further written opinion under paragraph (f) of this 
section is to be established, or after any written opinion and the reply 
thereto or the expiration of the time limit for reply to such written 
opinion, an international preliminary examination report will be 
established by the International Preliminary Examining Authority. One 
copy will be submitted to the International Bureau and one copy will be 
submitted to the applicant.
    (h) An applicant will be permitted a personal or telephone interview 
with the examiner, which may be requested after the filing of a Demand, 
and must be conducted during the period between the establishment of the 
written opinion and the establishment of the international preliminary 
examination report. Additional interviews may be conducted where the 
examiner determines that such additional interviews may be helpful to 
advancing the international preliminary examination procedure. A summary 
of any such personal or telephone interview must be filed by the 
applicant or, if not filed by applicant be made of record in the file by 
the examiner.
    (i) If the application whose priority is claimed in the 
international application is in a language other than English, the 
United States International Preliminary Examining Authority may, where 
the validity of the priority claim is relevant for the formulation of 
the opinion referred to in Article 33(1), invite the applicant to 
furnish an English translation of the priority document within two 
months from the date of the invitation. If the translation is not 
furnished within that time limit, the international preliminary report 
may be established as if the priority had not been claimed.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 
22, 2001; 68 FR 59888, Oct. 20, 2003]



Sec.  1.485  Amendments by applicant during international preliminary
examination.

    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 underSec. 1.484(b) or to any written opinion. Any such 
amendments must be made in accordance with PCT Rule 66.8.

[74 FR 31373, July 1, 2009]



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 inSec. 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

[[Page 141]]

unity of invention is lacking and specify the reasons therefor without 
extending an invitation to restrict or pay additional fees. No 
international preliminary examination will be conducted on inventions 
not previously searched by an International Searching Authority.
    (2) Invite the applicant to restrict the claims or pay additional 
fees, pointing out the categories of invention found, within a set time 
limit which will not be extended. No international preliminary 
examination will be conducted on inventions not previously searched by 
an International Searching Authority, or
    (3) If applicant fails to restrict the claims or pay additional fees 
within the time limit set for reply, the International Preliminary 
Examining Authority will issue a written opinion and/or establish an 
international preliminary examination report on the main invention and 
shall indicate the relevant facts in the said report. In case of any 
doubt as to which invention is the main invention, the invention first 
mentioned in the claims and previously searched by an International 
Searching Authority shall be considered the main invention.
    (c) Lack of unity of invention may be directly evident before 
considering the claims in relation to any prior art, or after taking the 
prior art into consideration, as where a document discovered during the 
search shows the invention claimed in a generic or linking claim lacks 
novelty or is clearly obvious, leaving two or more claims joined thereby 
without a common inventive concept. In such a case the International 
Preliminary Examining Authority may raise the objection of lack of unity 
of invention.

[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62 
FR 53200, Oct. 10, 1997]



Sec.  1.489  Protest to lack of unity of invention before the 
International Preliminary Examining Authority.

    (a) If the applicant disagrees with the holding of lack of unity of 
invention by the International Preliminary Examining Authority, 
additional fees may be paid under protest, accompanied by a request for 
refund and a statement setting forth reasons for disagreement or why the 
required additional fees are considered excessive, or both.
    (b) Protest under paragraph (a) of this section will be examined by 
the Director or the Director's designee. In the event that the 
applicant's protest is determined to be justified, the additional fees 
or a portion thereof will be refunded.
    (c) An applicant who desires that a copy of the protest and the 
decision thereon accompany the international preliminary examination 
report when forwarded to the Elected Offices, may notify the 
International Preliminary Examining Authority to that effect any time 
prior to the issuance of the international preliminary examination 
report. Thereafter, such notification should be directed to the 
International Bureau.

[52 FR 20050, May 28, 1987]

                             National Stage



Sec.  1.491  National stage commencement, entry, and fulfillment.

    (a) Subject to 35 U.S.C. 371(f), the national stage shall commence 
with the expiration of the applicable time limit under PCT Article 22 
(1) or (2), or under PCT Article 39(1)(a).
    (b) An international application enters the national stage when the 
applicant has filed the documents and fees required by 35 U.S.C. 
371(c)(1) and (c)(2) within the period set inSec. 1.495.
    (c) An international application fulfills the requirements of 35 
U.S.C. 371 when the national stage has commenced under 35 U.S.C. 371(b) 
or (f) and all applicable requirements of 35 U.S.C. 371 have been 
satisfied.

[67 FR 523, Jan. 4, 2002, as amended at 77 FR 48823, Aug. 14, 2012]



Sec.  1.492  National stage fees.

    The following fees and charges are established for international 
applications entering the national stage under 35 U.S.C. 371:
    (a) The basic national fee for an international application entering 
the national stage under 35 U.S.C. 371:

By a micro entity (Sec.   1.29)............................       $70.00
By a small entity (Sec.   1.27(a)).........................       140.00
By other than a small or micro entity......................       280.00
 


[[Page 142]]

    (b) Search fee for an international application entering the 
national stage under 35 U.S.C. 371:
    (1) If an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority or a written opinion on the 
international application prepared by the United States International 
Searching Authority states that the criteria of novelty, inventive step 
(non-obviousness), and industrial applicability, as defined in PCT 
Article 33(1) to (4) have been satisfied for all of the claims presented 
in the application entering the national stage:

By a micro entity (Sec.   1.29)............................        $0.00
By a small entity (Sec.   1.27(a)).........................         0.00
By other than a small or micro entity......................         0.00
 

    (2) If the search fee as set forth inSec. 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 micro entity (Sec.   1.29)............................       $30.00
By a small entity (Sec.   1.27(a)).........................        60.00
By other than a small or micro entity......................       120.00
 

    (3) If an international search report on the international 
application has been prepared by an International Searching Authority 
other than the United States International Searching Authority and is 
provided, or has been previously communicated by the International 
Bureau, to the Office:

By a micro entity (Sec.   1.29)............................      $120.00
By a small entity (Sec.   1.27(a)).........................       240.00
By other than a small or micro entity......................       480.00
 

    (4) In all situations not provided for in paragraphs (b)(1), (2), or 
(3) of this section:

By a micro entity (Sec.   1.29)............................      $150.00
By a small entity (Sec.   1.27(a)).........................       300.00
By other than a small or micro entity......................       600.00
 

    (c) The examination fee for an international application entering 
the national stage under 35 U.S.C. 371:
    (1) If an international preliminary examination report on the 
international application prepared by the United States International 
Preliminary Examining Authority or a written opinion on the 
international application prepared by the United States International 
Searching Authority states that the criteria of novelty, inventive step 
(non-obviousness), and industrial applicability, as defined in PCT 
Article 33 (1) to (4) have been satisfied for all of the claims 
presented in the application entering the national stage:

By a micro entity (Sec.   1.29)............................        $0.00
By a small entity (Sec.   1.27(a)).........................         0.00
By other than a small or micro entity......................         0.00
 

    (2) In all situations not provided for in paragraph (c)(1) of this 
section:
    By a micro entity (Sec.  1.29) $180.00.

By a small entity (Sec.   1.27(a)).........................      $360.00
By other than a small or micro entity......................       720.00
 

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

By a micro entity (Sec.   1.29)............................      $105.00
By a small entity (Sec.   1.27(a)).........................       210.00
By other than a small or micro entity......................       420.00
 

    (e) In addition to the basic national fee, for filing or on later 
presentation at any other time of each claim (whether dependent or 
independent) in excess of 20 (note thatSec. 1.75(c) indicates how 
multiple dependent claims are considered for fee calculation purposes):

By a micro entity (Sec.   1.29)............................       $20.00
By a small entity (Sec.   1.27(a)).........................        40.00
By other than a small or micro entity......................        80.00
 

    (f) In addition to the basic national fee, if the application 
contains, or is amended to contain, a multiple dependent claim, per 
application:

By a micro entity (Sec.   1.29)............................      $195.00
By a small entity (Sec.   1.27(a)).........................       390.00
By other than a small or micro entity......................       780.00
 

    (g) If the excess claims fees required by paragraphs (d) and (e) of 
this section and multiple dependent claim fee required by paragraph (f) 
of this section are not paid with the basic national fee or on later 
presentation of the claims

[[Page 143]]

for which excess claims or multiple dependent claim fees are due, the 
fees required by paragraphs (d), (e), and (f) of this section must be 
paid or the claims canceled by amendment prior to the expiration of the 
time period set for reply by the Office in any notice of fee deficiency 
in order to avoid abandonment.
    (h) Surcharge for filing any of the search fee, the examination fee, 
or the oath or declaration after the date of the commencement of the 
national stage (Sec.  1.491(a)) pursuant toSec. 1.495(c):

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

    (i) For filing an English translation of an international 
application or any annexes to an international preliminary examination 
report later than thirty months after the priority date (Sec.  1.495(c) 
and (e)):

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

    (j) Application size fee for any international application, the 
specification and drawings of which exceed 100 sheets of paper, for each 
additional 50 sheets or fraction thereof:

By a micro entity (Sec.   1.29)............................      $100.00
By a small entity (Sec.   1.27(a)).........................       200.00
By other than a small or micro entity......................       400.00
 


[78 FR 4290, Jan. 18, 2013]



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

    (a) The applicant in an international application must fulfill the 
requirements of 35 U.S.C. 371 within the time periods set forth in 
paragraphs (b) and (c) of this section in order to prevent the 
abandonment of the international application as to the United States of 
America. The thirty-month time period set forth in paragraphs (b), (c), 
(d), (e) and (h) of this section may not be extended.
    (b) To avoid abandonment of the application, the applicant shall 
furnish to the United States Patent and Trademark Office not later than 
the expiration of thirty months from the priority date:
    (1) A copy of the international application, unless it has been 
previously communicated by the International Bureau or unless it was 
originally filed in the United States Patent and Trademark Office; and
    (2) The basic national fee (seeSec. 1.492(a)).
    (c)(1) If applicant complies with paragraph (b) of this section 
before expiration of thirty months from the priority date, the Office 
will notify the applicant if he or she has omitted any of:
    (i) A translation of the international application, as filed, into 
the English language, if it was originally filed in another language and 
if any English language translation of the publication of the 
international application previously submitted under 35 U.S.C. 154(d) 
(Sec.  1.417) is not also a translation of the international application 
as filed (35 U.S.C. 371(c)(2));
    (ii) The inventor's oath or declaration (35 U.S.C. 371(c)(4) and 
Sec.  1.497), if a declaration of inventorship in compliance withSec. 
1.63 has not been previously submitted in the international application 
under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule 
26ter.1;
    (iii) The search fee set forth inSec. 1.492(b);
    (iv) The examination fee set forth inSec. 1.492(c); and
    (v) Any application size fee required bySec. 1.492(j).
    (2) A notice under paragraph (c)(1) of this section will set a time 
period within which applicant must provide any omitted translation, 
search fee set forth inSec. 1.492(b), examination fee set forth in 
Sec.  1.492(c), and any application size fee required bySec. 1.492(j) 
in order to avoid abandonment of the application.
    (3) The inventor's oath or declaration must also be filed within the 
period specified in paragraph (c)(2) of this section, except that the 
filing of the inventor's oath or declaration may be postponed until the 
application is otherwise in condition for allowance under the conditions 
specified in paragraphs (c)(3)(i) through (c)(3)(iii) of this section.
    (i) The application contains an application data sheet in accordance 
with

[[Page 144]]

Sec.  1.76 filed prior to the expiration of the time period set in any 
notice under paragraph (c)(1) identifying:
    (A) Each inventor by his or her legal name;
    (B) A mailing address where the inventor customarily receives mail, 
and residence, if an inventor lives at a location which is different 
from where the inventor customarily receives mail, for each inventor.
    (ii) The applicant must file an oath or declaration in compliance 
withSec. 1.63, or substitute statement in compliance withSec. 1.64, 
executed by or with respect to each actual inventor no later than the 
expiration of the time period set in the ``Notice of Allowability'' to 
avoid abandonment, when the applicant is notified in a ``Notice of 
Allowability'' that an application is otherwise in condition for 
allowance. The time period set in a ``Notice of Allowability'' is not 
extendable. SeeSec. 1.136(c). The Office may dispense with the notice 
provided for in paragraph (c)(1) of this section if an oath or 
declaration underSec. 1.63, or substitute statement underSec. 1.64, 
executed by or with respect to each actual inventor has been filed 
before the application is in condition for allowance.
    (iii) An international application in which the basic national fee 
under 35 U.S.C. 41(a)(1)(F) has been paid and for which an application 
data sheet in accordance withSec. 1.76 has been filed may be treated 
as complying with 35 U.S.C. 371 for purposes of eighteen-month 
publication under 35 U.S.C. 122(b) andSec. 1.211 et seq.
    (4) The payment of the processing fee set forth inSec. 1.492(i) is 
required for acceptance of an English translation later than the 
expiration of thirty months after the priority date. The payment of the 
surcharge set forth inSec. 1.492(h) is required for acceptance of any 
of the search fee, the examination fee, or the inventor's oath or 
declaration after the date of the commencement of the national stage 
(Sec.  1.491(a)).
    (5) A ``Sequence Listing'' need not be translated if the ``Sequence 
Listing'' complies with PCT Rule 12.1(d) and the description complies 
with PCT Rule 5.2(b).
    (d) A copy of any amendments to the claims made under PCT Article 
19, and a translation of those amendments into English, if they were 
made in another language, must be furnished not later than the 
expiration of thirty months from the priority date. Amendments under PCT 
Article 19 which are not received by the expiration of thirty months 
from the priority date will be considered to be canceled.
    (e) A translation into English of any annexes to an international 
preliminary examination report (if applicable), if the annexes were made 
in another language, must be furnished not later than the expiration of 
thirty months from the priority date. Translations of the annexes which 
are not received by the expiration of thirty months from the priority 
date may be submitted within any period set pursuant to paragraph (c) of 
this section accompanied by the processing fee set forth inSec. 
1.492(f). Annexes for which translations are not timely received will be 
considered canceled.
    (f) Verification of the translation of the international application 
or any other document pertaining to an international application may be 
required where it is considered necessary, if the international 
application or other document was filed in a language other than 
English.
    (g) The documents and fees submitted under paragraphs (b) and (c) of 
this section must be identified as a submission to enter the national 
stage under 35 U.S.C. 371. If the documents and fees contain conflicting 
indications as between an application under 35 U.S.C. 111 and a 
submission to enter the national stage under 35 U.S.C. 371, the 
documents and fees will be treated as a submission to enter the national 
stage under 35 U.S.C. 371.
    (h) An international application becomes abandoned as to the United 
States thirty months from the priority date if the requirements of 
paragraph (b) of this section have not been complied with within thirty 
months from the priority date.

[52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63 
FR 29620, June 1, 1998; 65 FR 57060, Sept. 20, 2000; 67 FR 523, Jan. 4, 
2002; 68 FR 71007, Dec. 22, 2003; 70 FR 3892, Jan. 27, 2005; 70 FR 
30365, May 26, 2005; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14, 
2009; 77 FR 48824, Aug. 14, 2012]

[[Page 145]]



Sec.  1.496  Examination of international applications in the national
stage.

    National stage applications having paid therein the search fee as 
set forth inSec. 1.492(b)(1) and examination fee as set forth inSec. 
1.492(c)(1) may be amended subsequent to the date of commencement of 
national stage processing only to the extent necessary to eliminate 
objections as to form or to cancel rejected claims. Such national stage 
applications will be advanced out of turn for examination.

[77 FR 48824, Aug. 14, 2012]



Sec.  1.497  Inventor's 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 toSec. 1.495, 
and a declaration in compliance withSec. 1.63 has not been previously 
submitted in the international application under PCT Rule 4.17(iv) 
within the time limits provided for in PCT Rule 26ter.1, the applicant 
must file the inventor's oath or declaration. The inventor, or each 
individual who is a joint inventor of a claimed invention, in an 
application for patent must execute an oath or declaration in accordance 
with the conditions and requirements ofSec. 1.63, except as provided 
for inSec. 1.64.
    (b) An oath or declaration underSec. 1.63 will be accepted as 
complying with 35 U.S.C. 371(c)(4) if it complies with the requirements 
of Sec.Sec. 1.63(a), (c) and (g). A substitute statement underSec. 
1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it 
complies with the requirements of Sec.Sec. 1.64(b)(1), (c) and (e) and 
identifies the person executing the substitute statement. If a newly 
executed inventor's oath or declaration underSec. 1.63 or substitute 
statement underSec. 1.64 is not required pursuant toSec. 1.63(d), 
submission of the copy of the previously executed oath, declaration, or 
substitute statement underSec. 1.63(d)(1) is required to comply with 
35 U.S.C. 371(c)(4).
    (c) If an oath or declaration underSec. 1.63, or substitute 
statement underSec. 1.64, meeting the requirements ofSec. 1.497(b) 
does not also meet the requirements ofSec. 1.63 orSec. 1.64, an 
oath, declaration, substitute statement, or application data sheet in 
accordance withSec. 1.76 to comply withSec. 1.63 orSec. 1.64 will 
be required.

[77 FR 48824, Aug. 14, 2012]



Sec.  1.499  Unity of invention during the national stage.

    If the examiner finds that a national stage application lacks unity 
of invention underSec. 1.475, the examiner may in an Office action 
require the applicant in the response to that action to elect the 
invention to which the claims shall be restricted. Such requirement may 
be made before any action on the merits but may be made at any time 
before the final action at the discretion of the examiner. Review of any 
such requirement is provided under Sec.Sec. 1.143 and 1.144.

[58 FR 4347, Jan. 14, 1993]



               Subpart D_Ex Parte Reexamination of Patents

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

              Citation of Prior Art and Written Statements



Sec.  1.501  Citation of prior art and written statements in patent files.

    (a) Information content of submission: At any time during the period 
of enforceability of a patent, any person may file a written submission 
with the Office under this section, which is directed to the following 
information:
    (1) Prior art consisting of patents or printed publications which 
the person making the submission believes to have a bearing on the 
patentability of any claim of the patent; or
    (2) Statements of the patent owner filed by the patent owner in a 
proceeding before a Federal court or the Office in which the patent 
owner took a position on the scope of any claim of the patent. Any 
statement submitted under this paragraph must be accompanied by any 
other documents, pleadings, or evidence from the proceeding in which the 
statement was filed that address the written statement, and such 
statement and accompanying information under this paragraph must

[[Page 146]]

be submitted in redacted form to exclude information subject to an 
applicable protective order.
    (3) Submissions under paragraph (a)(2) of this section must 
identify:
    (i) The forum and proceeding in which patent owner filed each 
statement;
    (ii) The specific papers and portions of the papers submitted that 
contain the statements; and
    (iii) How each statement submitted is a statement in which patent 
owner took a position on the scope of any claim in the patent.
    (b) Explanation: A submission pursuant to paragraph (a) of this 
section:
    (1) Must include an explanation in writing of the pertinence and 
manner of applying any prior art submitted under paragraph (a)(1) of 
this section and any written statement and accompanying information 
submitted under paragraph (a)(2) of this section to at least one claim 
of the patent, in order for the submission to become a part of the 
official file of the patent; and
    (2) May, if the submission is made by the patent owner, include an 
explanation of how the claims differ from any prior art submitted under 
paragraph (a)(1) of this section or any written statements and 
accompanying information submitted under paragraph (a)(2) of this 
section.
    (c) Reexamination pending: If a reexamination proceeding has been 
requested and is pending for the patent in which the submission is 
filed, entry of the submission into the official file of the patent is 
subject to the provisions of Sec.Sec. 1.502 and 1.902.
    (d) Identity: If the person making the submission wishes his or her 
identity to be excluded from the patent file and kept confidential, the 
submission papers must be submitted anonymously without any 
identification of the person making the submission.
    (e) Certificate of Service: A submission under this section by a 
person other than the patent owner must include a certification that a 
copy of the submission was served in its entirety upon patent owner at 
the address as provided for inSec. 1.33 (c). A submission by a person 
other than the patent owner that fails to include proper proof of 
service as required bySec. 1.248(b) will not be entered into the 
patent file.

[77 FR 46626, Aug. 6, 2012]



Sec.  1.502  Processing of prior art citations during an ex parte
reexamination proceeding.

    Citations by the patent owner underSec. 1.555 and by an ex parte 
reexamination requester under eitherSec. 1.510 orSec. 1.535 will be 
entered in the reexamination file during a reexamination proceeding. The 
entry in the patent file of citations submitted after the date of an 
order to reexamine pursuant toSec. 1.525 by persons other than the 
patent owner, or an ex parte reexamination requester under eitherSec. 
1.510 orSec. 1.535, will be delayed until the reexamination proceeding 
has been concluded by the issuance and publication of a reexamination 
certificate. SeeSec. 1.902 for processing of prior art citations in 
patent and reexamination files during an inter partes reexamination 
proceeding filed underSec. 1.913.

[72 FR 18905, Apr. 16, 2007]

                   Request for Ex Parte Reexamination



Sec.  1.510  Request for ex parte reexamination.

    (a) Any person may, at any time during the period of enforceability 
of a patent, file a request for an ex parte reexamination by the Office 
of any claim of the patent on the basis of prior art patents or printed 
publications cited underSec. 1.501, unless prohibited by 35 U.S.C. 
315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the 
fee for requesting reexamination set inSec. 1.20(c)(1).
    (b) Any request for reexamination must include the following parts:
    (1) A statement pointing out each substantial new question of 
patentability based on prior patents and printed publications.
    (2) An identification of every claim for which reexamination is 
requested, and a detailed explanation of the pertinency and manner of 
applying the cited prior art to every claim for which reexamination is 
requested. For each statement of the patent owner and accompanying 
information submitted pursuant toSec. 1.501(a)(2) which is relied upon 
in the detailed explanation, the

[[Page 147]]

request must explain how that statement is being used to determine the 
proper meaning of a patent claim in connection with the prior art 
applied to that claim and how each relevant claim is being interpreted. 
If appropriate, the party requesting reexamination may also point out 
how claims distinguish over cited prior art.
    (3) A copy of every patent or printed publication relied upon or 
referred to in paragraph (b) (1) and (2) of this section accompanied by 
an English language translation of all the necessary and pertinent parts 
of any non-English language patent or printed publication.
    (4) A copy of the entire patent including the front face, drawings, 
and specification/claims (in double column format) for which 
reexamination is requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certificate issued in the patent. All 
copies must have each page plainly written on only one side of a sheet 
of paper.
    (5) A certification that a copy of the request filed by a person 
other than the patent owner has been served in its entirety on the 
patent owner at the address as provided for inSec. 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.
    (6) A certification by the third party requester that the statutory 
estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not 
prohibit the requester from filing the ex parte reexamination request.
    (c) If the request does not include the fee for requesting ex parte 
reexamination required by paragraph (a) of this section and meet all the 
requirements by paragraph (b) of this section, then the person 
identified as requesting reexamination will be so notified and will 
generally be given an opportunity to complete the request within a 
specified time. Failure to comply with the notice will result in the ex 
parte reexamination request not being granted a filing date, and will 
result in placement of the request in the patent file as a citation if 
it complies with the requirements ofSec. 1.501.
    (d) The filing date of the request for ex parte reexamination is the 
date on which the request satisfies all the requirements of this 
section.
    (e) A request filed by the patent owner may include a proposed 
amendment in accordance withSec. 1.530.
    (f) If a request is filed by an attorney or agent identifying 
another party on whose behalf the request is being filed, the attorney 
or agent must have a power of attorney from that party or be acting in a 
representative capacity pursuant toSec. 1.34.

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

[46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982; 
62 FR 53200, Oct. 10, 1997; 65 FR 54678, Sept. 8, 2000; 65 FR 76775, Dec 
7, 2000; 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006; 72 FR 
18905, Apr. 16, 2007; 77 FR 46626, Aug. 6, 2012]



Sec.  1.515  Determination of the request for ex parte reexamination.

    (a) Within three months following the filing date of a request for 
an ex parte reexamination, an examiner will consider the request and 
determine whether or not a substantial new question of patentability 
affecting any claim of the patent is raised by the request and the prior 
art cited therein, with or without consideration of other patents or 
printed publications. A statement and any accompanying information 
submitted pursuant toSec. 1.501(a)(2) will not be considered by the 
examiner when making a determination on the request. The examiner's 
determination will be based on the claims in effect at the time of the 
determination, will become a part of the official file of the patent, 
and will be given or mailed to the patent owner at the address provided 
for inSec. 1.33(c) and to the person requesting reexamination.
    (b) Where no substantial new question of patentability has been 
found, a refund of a portion of the fee for requesting ex parte 
reexamination will be made to the requester in accordance withSec. 
1.26(c).
    (c) The requester may seek review by a petition to the Director 
underSec. 1.181 within one month of the mailing date of the examiner's 
determination refusing ex parte reexamination. Any such petition must 
comply withSec. 1.181(b). If

[[Page 148]]

no petition is timely filed or if the decision on petition affirms that 
no substantial new question of patentability has been raised, the 
determination shall be final and nonappealable.

[65 FR 76775, Dec. 7, 2000, as amended at 77 FR 46626, Aug. 6, 2012]



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

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

[65 FR 76775, Dec. 7, 2000]

                         Ex Parte Reexamination



Sec.  1.525  Order for ex parte reexamination.

    (a) If a substantial new question of patentability is found pursuant 
toSec. 1.515 orSec. 1.520, the determination will include an order 
for ex parte reexamination of the patent for resolution of the question. 
If the order for ex parte reexamination resulted from a petition 
pursuant toSec. 1.515(c), the ex parte reexamination will ordinarily 
be conducted by an examiner other than the examiner responsible for the 
initial determination underSec. 1.515(a).
    (b) The notice published in the Official Gazette underSec. 1.11(c) 
will be considered to be constructive notice and ex parte reexamination 
will proceed.

[65 FR 76775, Dec. 7, 2000]



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

    (a) Except as provided inSec. 1.510(e), no statement or other 
response by the patent owner in an ex parte reexamination proceeding 
shall be filed prior to the determinations made in accordance withSec. 
1.515 orSec. 1.520. If a premature statement or other response is 
filed by the patent owner, it will not be acknowledged or considered in 
making the determination, and it will be returned or discarded (at the 
Office's option).
    (b) The order for ex parte reexamination will set a period of not 
less than two months from the date of the order within which the patent 
owner may file a statement on the new question of patentability, 
including any proposed amendments the patent owner wishes to make.
    (c) Any statement filed by the patent owner shall clearly point out 
why the subject matter as claimed is not anticipated or rendered obvious 
by the prior art patents or printed publications, either alone or in any 
reasonable combinations. Where the reexamination request was filed by a 
third party requester, any statement filed by the patent owner must be 
served upon the ex parte reexamination requester in accordance with 
Sec.  1.248.
    (d) Making amendments in a reexamination proceeding. A proposed 
amendment in an ex parte or an inter partes reexamination proceeding is 
made by filing a paper directing that proposed specified changes be made 
to the patent specification, including the claims, or to the drawings. 
An amendment paper directing that proposed specified changes be made in 
a reexamination proceeding may be submitted as an accompaniment to a 
request filed by the patent owner in accordance withSec. 1.510(e), as 
part of a patent owner statement in accordance with paragraph (b) of 
this section, or, where permitted, during the prosecution of the 
reexamination proceeding pursuant toSec. 1.550(a) orSec. 1.937.
    (1) Specification other than the claims. Changes to the 
specification, other

[[Page 149]]

than to the claims, must be made by submission of the entire text of an 
added or rewritten paragraph including markings pursuant to paragraph 
(f) of this section, except that an entire paragraph may be deleted by a 
statement deleting the paragraph, without presentation of the text of 
the paragraph. The precise point in the specification must be identified 
where any added or rewritten paragraph is located. This paragraph 
applies whether the amendment is submitted on paper or compact disc (see 
Sec.Sec. 1.96 and 1.825).
    (2) Claims. An amendment paper must include the entire text of each 
patent claim which is being proposed to be changed by such amendment 
paper and of each new claim being proposed to be added by such amendment 
paper. For any claim changed by the amendment paper, a parenthetical 
expression ``amended,'' ``twice amended,'' etc., should follow the claim 
number. Each patent claim proposed to be changed and each proposed added 
claim must include markings pursuant to paragraph (f) of this section, 
except that a patent claim or proposed added claim should be canceled by 
a statement canceling the claim, without presentation of the text of the 
claim.
    (3) Drawings. Any change to the patent drawings must be submitted as 
a sketch on a separate paper showing the proposed changes in red for 
approval by the examiner. Upon approval of the changes by the examiner, 
only new sheets of drawings including the changes and in compliance with 
Sec.  1.84 must be filed. Amended figures must be identified as 
``Amended,'' and any added figure must be identified as ``New.'' In the 
event a figure is canceled, the figure must be surrounded by brackets 
and identified as ``Canceled.''
    (4) The formal requirements for papers making up the reexamination 
proceeding other than those set forth in this section are set out in 
Sec.  1.52.
    (e) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (d) of this section, 
there must also be supplied, on pages separate from the pages containing 
the changes, the status (i.e., pending or canceled), as of the date of 
the amendment, of all patent claims and of all added claims, and an 
explanation of the support in the disclosure of the patent for the 
changes to the claims made by the amendment paper.
    (f) Changes shown by markings. Any changes relative to the patent 
being reexamined which are made to the specification, including the 
claims, must include the following markings:
    (1) The matter to be omitted by the reexamination proceeding must be 
enclosed in brackets; and
    (2) The matter to be added by the reexamination proceeding must be 
underlined.
    (g) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claims added in the reexamination 
proceeding must follow the number of the highest numbered patent claim.
    (h) Amendment of disclosure may be required. The disclosure must be 
amended, when required by the Office, to correct inaccuracies of 
description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, and the 
drawings.
    (i) Amendments made relative to patent. All amendments must be made 
relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing the request for 
reexamination.
    (j) No enlargement of claim scope. No amendment may enlarge the 
scope of the claims of the patent or introduce new matter. No amendment 
may be proposed for entry in an expired patent. Moreover, no amendment, 
other than the cancellation of claims, will be incorporated into the 
patent by a certificate issued after the expiration of the patent.
    (k) Amendments not effective until certificate. Although the Office 
actions will treat proposed amendments as though they have been entered, 
the proposed amendments will not be effective until the reexamination 
certificate is issued and published.
    (l) Correction of inventorship in an ex parte or inter partes 
reexamination proceeding.  (1) When it appears in a patent being 
reexamined that the correct inventor or inventors were not named, the 
Director may, on petition of all the parties set forth inSec. 
1.324(b)(1) and

[[Page 150]]

(b)(2), including the assignees, and satisfactory proof of the facts and 
payment of the fee set forth inSec. 1.20(b), or on order of a court 
before which such matter is called in question, include in the 
reexamination certificate to be issued underSec. 1.570 orSec. 1.997 
an amendment naming only the actual inventor or inventors. The petition 
must be submitted as part of the reexamination proceeding and must 
satisfy the requirements ofSec. 1.324.
    (2) Notwithstanding paragraph (l)(1) of this section, if a petition 
to correct inventorship satisfying the requirements ofSec. 1.324 is 
filed in a reexamination proceeding, and the reexamination proceeding is 
concluded other than by a reexamination certificate underSec. 1.570 or 
Sec.  1.997, a certificate of correction indicating the change of 
inventorship stated in the petition will be issued upon request by the 
patentee.

[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997; 65 
FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000; 72 FR 18905, Apr. 
16, 2007; 77 FR 48825, Aug. 14, 2012]



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

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

[65 FR 76776, Dec. 7, 2000]



Sec.  1.540  Consideration of responses in ex parte reexamination.

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

[65 FR 76776, Dec. 7, 2000]



Sec.  1.550  Conduct of ex parte reexamination proceedings.

    (a) All ex parte reexamination proceedings, including any appeals to 
the Board of Patent Appeals and Interferences, will be conducted with 
special dispatch within the Office. After issuance of the ex parte 
reexamination order and expiration of the time for submitting any 
responses, the examination will be conducted in accordance with 
Sec.Sec. 1.104 through 1.116 and will result in the issuance of an ex 
parte reexamination certificate underSec. 1.570.
    (b) The patent owner in an ex parte reexamination proceeding will be 
given at least thirty days to respond to any Office action. In response 
to any rejection, such response may include further statements and/or 
proposed amendments or new claims to place the patent in a condition 
where all claims, if amended as proposed, would be patentable.
    (c) The time for taking any action by a patent owner in an ex parte 
reexamination proceeding will be extended only for sufficient cause and 
for a reasonable time specified. Any request for such extension must be 
filed on or before the day on which action by the patent owner is due, 
but in no case will the mere filing of a request effect any extension. 
Any request for such extension must be accompanied by the petition fee 
set forth inSec. 1.17(g). SeeSec. 1.304(a) for extensions of time 
for filing a notice of appeal to the U.S. Court of Appeals for the 
Federal Circuit or for commencing a civil action.
    (d) If the patent owner fails to file a timely and appropriate 
response to any Office action or any written statement of an interview 
required underSec. 1.560(b), the prosecution in the ex parte 
reexamination proceeding will be a terminated prosecution, and the 
Director will proceed to issue and publish a certificate concluding the 
reexamination proceeding underSec. 1.570 in accordance with the last 
action of the Office.
    (e) If a response by the patent owner is not timely filed in the 
Office,
    (1) The delay in filing such response may be excused if it is shown 
to the satisfaction of the Director that the delay was unavoidable; a 
petition to

[[Page 151]]

accept an unavoidably delayed response must be filed in compliance with 
Sec.  1.137(a); or
    (2) The response may nevertheless be accepted if the delay was 
unintentional; a petition to accept an unintentionally delayed response 
must be filed in compliance withSec. 1.137(b).
    (f) The reexamination requester will be sent copies of Office 
actions issued during the ex parte reexamination proceeding. After 
filing of a request for ex parte reexamination by a third party 
requester, any document filed by either the patent owner or the third 
party requester must be served on the other party in the reexamination 
proceeding in the manner provided bySec. 1.248. The document must 
reflect service or the document may be refused consideration by the 
Office.
    (g) The active participation of the ex parte reexamination requester 
ends with the reply pursuant toSec. 1.535, and no further submissions 
on behalf of the reexamination requester will be acknowledged or 
considered. Further, no submissions on behalf of any third parties will 
be acknowledged or considered unless such submissions are:
    (1) in accordance withSec. 1.510 orSec. 1.535; or
    (2) entered in the patent file prior to the date of the order for ex 
parte reexamination pursuant toSec. 1.525.
    (h) Submissions by third parties, filed after the date of the order 
for ex parte reexamination pursuant toSec. 1.525, must meet the 
requirements of and will be treated in accordance withSec. 1.501(a).
    (i) A petition in an ex parte reexamination proceeding must be 
accompanied by the fee set forth inSec. 1.20(c)(6), except for 
petitions under paragraph (c) of this section to extend the period for 
response by a patent owner, petitions under paragraph (e) of this 
section to accept a delayed response by a patent owner, petitions under 
Sec.  1.78 to accept an unintentionally delayed benefit claim, and 
petitions underSec. 1.530(l) for correction of inventorship in a 
reexamination proceeding.

[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 56545, Sept. 21, 2004; 
72 FR 18905, Apr. 16, 2007; 77 FR 48851, Aug. 14, 2012]



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

    (a) Claims in an ex parte reexamination proceeding will be examined 
on the basis of patents or printed publications and, with respect to 
subject matter added or deleted in the reexamination proceeding, on the 
basis of the requirements of 35 U.S.C. 112.
    (b) Claims in an ex parte reexamination proceeding will not be 
permitted to enlarge the scope of the claims of the patent.
    (c) Issues other than those indicated in paragraphs (a) and (b) of 
this section will not be resolved in a reexamination proceeding. If such 
issues are raised by the patent owner or third party requester during a 
reexamination proceeding, the existence of such issues will be noted by 
the examiner in the next Office action, in which case the patent owner 
may consider the advisability of filing a reissue application to have 
such issues considered and resolved.
    (d) Any statement of the patent owner and any accompanying 
information submitted pursuant toSec. 1.501(a)(2) which is of record 
in the patent being reexamined (which includes any reexamination files 
for the patent) may be used after a reexamination proceeding has been 
ordered to determine the proper meaning of a patent claim when applying 
patents or printed publications.

[65 FR 76776, Dec. 7, 2000, as amended at 77 FR 46627, Aug. 6, 2012]



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

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective reexamination 
occurs when, at the time a reexamination proceeding is being conducted, 
the Office is aware of and evaluates the teachings of all information 
material to patentability in a reexamination proceeding. Each individual 
associated with the patent owner in a reexamination proceeding has a 
duty of candor and good faith in dealing with the Office, which includes 
a duty to disclose to the Office

[[Page 152]]

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

A prima facie case of unpatentability of a claim pending in a 
reexamination proceeding is established when the information compels a 
conclusion that a claim is unpatentable under the preponderance of 
evidence, burden-of-proof standard, giving each term in the claim its 
broadest reasonable construction consistent with the specification, and 
before any consideration is given to evidence which may be submitted in 
an attempt to establish a contrary conclusion of patentability.
    (c) The responsibility for compliance with this section rests upon 
the individuals designated in paragraph (a) of this section and no 
evaluation will be made by the Office in the reexamination proceeding as 
to compliance with this section. If questions of compliance with this 
section are raised by the patent owner or the third party requester 
during a reexamination proceeding, they will be noted as unresolved 
questions in accordance withSec. 1.552(c).

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



Sec.  1.560  Interviews in ex parte reexamination proceedings.

    (a) Interviews in ex parte reexamination proceedings pending before 
the Office between examiners and the owners of such patents or their 
attorneys or agents of record must be conducted in the Office at such 
times, within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Director. Interviews for the discussion of the 
patentability of claims in patents involved in ex parte reexamination 
proceedings will not be conducted prior to the first official action. 
Interviews should be arranged in advance. Requests that reexamination 
requesters participate in interviews with examiners will not be granted.

[[Page 153]]

    (b) In every instance of an interview with an examiner in an ex 
parte reexamination proceeding, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the patent owner. An interview does not remove the necessity 
for response to Office actions as specified inSec. 1.111. Patent 
owner's response to an outstanding Office action after the interview 
does not remove the necessity for filing the written statement. The 
written statement must be filed as a separate part of a response to an 
Office action outstanding at the time of the interview, or as a separate 
paper within one month from the date of the interview, whichever is 
later.

[65 FR 76777, Dec. 7, 2000]



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

    (a) In an ex parte reexamination proceeding before the Office, the 
patent owner must inform the Office of any prior or concurrent 
proceedings in which the patent is or was involved such as 
interferences, reissues, ex parte reexaminations, inter partes 
reexaminations, or litigation and the results of such proceedings. See 
Sec.  1.985 for notification of prior or concurrent proceedings in an 
inter partes reexamination proceeding.
    (b) If a patent in the process of ex parte reexamination is or 
becomes involved in litigation, the Director shall determine whether or 
not to suspend the reexamination. SeeSec. 1.987 for inter partes 
reexamination proceedings.
    (c) If ex parte reexamination is ordered while a prior ex parte 
reexamination proceeding is pending and prosecution in the prior ex 
parte reexamination proceeding has not been terminated, the ex parte 
reexamination proceedings will usually be merged and result in the 
issuance and publication of a single certificate underSec. 1.570. For 
merger of inter partes reexamination proceedings, seeSec. 1.989(a). 
For merger of ex parte reexamination and inter partes reexamination 
proceedings, seeSec. 1.989(b).
    (d) If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant toSec. 1.525 has been mailed are 
pending concurrently on a patent, a decision will usually be made to 
merge the two proceedings or to suspend one of the two proceedings. 
Where merger of a reissue application and an ex parte reexamination 
proceeding is ordered, the merged examination will be conducted in 
accordance with Sec.Sec. 1.171 through 1.179, and the patent owner 
will be required to place and maintain the same claims in the reissue 
application and the ex parte reexamination proceeding during the 
pendency of the merged proceeding. The examiner's actions and responses 
by the patent owner in a merged proceeding will apply to both the 
reissue application and the ex parte reexamination proceeding and will 
be physically entered into both files. Any ex parte reexamination 
proceeding merged with a reissue application shall be concluded by the 
grant of the reissued patent. For merger of a reissue application and an 
inter partes reexamination, seeSec. 1.991.
    (e) If a patent in the process of ex parte reexamination is or 
becomes involved in an interference, the Director may suspend the 
reexamination or the interference. The Director will not consider a 
request to suspend an interference unless a motion (Sec.  41.121(a)(3) 
of this title) to suspend the interference has been presented to, and 
denied by, an administrative patent judge, and the request is filed 
within ten (10) days of a decision by an administrative patent judge 
denying the motion for suspension or such other time as the 
administrative patent judge may set. For concurrent inter partes 
reexamination and interference of a patent, seeSec. 1.993.

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

                   Ex Parte Reexamination Certificate



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

    (a) To conclude an ex parte reexamination proceeding, the Director 
will issue and publish an ex parte reexamination certificate in 
accordance with 35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the patent following the ex 
parte reexamination proceeding.

[[Page 154]]

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

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



              Subpart E_Supplemental Examination of Patents

    Source: 77 FR 48851, Aug. 14, 2012, unless otherwise noted.



Sec.  1.601  Filing of papers in supplemental examination.

    (a) A request for supplemental examination of a patent must be filed 
by the owner(s) of the entire right, title, and interest in the patent.
    (b) Any party other than the patent owner (i.e., any third party) is 
prohibited from filing papers or otherwise participating in any manner 
in a supplemental examination proceeding.
    (c) A request for supplemental examination of a patent may be filed 
at any time during the period of enforceability of the patent.



Sec.  1.605  Items of information.

    (a) Each request for supplemental examination may include no more 
than twelve items of information believed to be relevant to the patent. 
More than one request for supplemental examination of the same patent 
may be filed at any time during the period of enforceability of the 
patent.
    (b) An item of information includes a document submitted as part of 
the request that contains information, believed to be relevant to the 
patent, that the patent owner requests the Office to consider, 
reconsider, or correct. If the information to be considered, 
reconsidered, or corrected is not, at least in part, contained within or 
based on any document submitted as part of the request, the discussion 
within the body of the request relative to the information will be 
considered as an item of information.
    (c) An item of information must be in writing in accordance with 
Sec.  1.2. To be considered, any audio or video recording must be 
submitted in the form of a written transcript.
    (d) If one item of information is combined in the request with one 
or more additional items of information, each item of information of the 
combination may be separately counted. Exceptions include the 
combination of a non-English language document and its translation, and 
the combination of a document that is over 50 pages in length and its 
summary pursuant toSec. 1.610(b)(8).



Sec.  1.610  Content of request for supplemental examination.

    (a) A request for supplemental examination must be accompanied by 
the fee for filing a request for supplemental examination as set forth 
inSec. 1.20(k)(1), the fee for reexamination ordered as a result of a 
supplemental examination proceeding as set forth inSec. 1.20(k)(2), 
and any applicable document size fees as set forth inSec. 1.20(k)(3).
    (b) A request for supplemental examination must include:
    (1) An identification of the number of the patent for which 
supplemental examination is requested.

[[Page 155]]

    (2) A list of the items of information that are requested to be 
considered, reconsidered, or corrected. Where appropriate, the list must 
meet the requirements ofSec. 1.98(b).
    (3) A list identifying any other prior or concurrent post-patent 
Office proceedings involving the patent for which supplemental 
examination is being requested, including an identification of the type 
of proceeding, the identifying number of any such proceeding (e.g., a 
control number or reissue application number), and the filing date of 
any such proceeding.
    (4) An identification of each claim of the patent for which 
supplemental examination is requested.
    (5) A separate, detailed explanation of the relevance and manner of 
applying each item of information to each claim of the patent for which 
supplemental examination is requested.
    (6) A copy of the patent for which supplemental examination is 
requested and a copy of any disclaimer or certificate issued for the 
patent.
    (7) A copy of each item of information listed in paragraph (b)(2) of 
this section, accompanied by a written English translation of all of the 
necessary and pertinent parts of any non-English language item of 
information. The patent owner is not required to submit copies of items 
of information that form part of the discussion within the body of the 
request as specified inSec. 1.605(b), or copies of U.S. patents and 
U.S. patent application publications.
    (8) A summary of the relevant portions of any submitted document, 
other than the request, that is over 50 pages in length. The summary 
must include citations to the particular pages containing the relevant 
portions.
    (9) An identification of the owner(s) of the entire right, title, 
and interest in the patent requested to be examined, and a submission by 
the patent owner in compliance withSec. 3.73(c) of this chapter 
establishing the entirety of the ownership in the patent requested to be 
examined.
    (c) The request may also include:
    (1) A cover sheet itemizing each component submitted as part of the 
request;
    (2) A table of contents for the request;
    (3) An explanation of how the claims patentably distinguish over the 
items of information; and
    (4) An explanation of why each item of information submitted with 
the request does or does not raise a substantial new question of 
patentability.
    (d) The filing date of a request for supplemental examination will 
not be granted if the request is not in compliance with Sec.Sec. 
1.605, 1.615, and this section, subject to the discretion of the Office. 
If the Office determines that the request, as originally submitted, is 
not entitled to a filing date, the patent owner will be so notified and 
will be given an opportunity to complete the request within a specified 
time. If the patent owner does not timely comply with the notice, the 
request for supplemental examination will not be granted a filing date 
and the fee for reexamination as set forth inSec. 1.20(k)(2) will be 
refunded. If the patent owner timely files a corrected request in 
response to the notice that properly addresses all of the defects set 
forth in the notice and that otherwise complies with all of the 
requirements of Sec.Sec. 1.605, 1.615, and this section, the filing 
date of the supplemental examination request will be the receipt date of 
the corrected request.



Sec.  1.615  Format of papers filed in a supplemental examination
proceeding.

    (a) All papers submitted in a supplemental examination proceeding 
must be formatted in accordance withSec. 1.52.
    (b) Court documents and non-patent literature may be redacted, but 
must otherwise be identical both in content and in format to the 
original documents, and, if a court document, to the document submitted 
in court, and must not otherwise be reduced in size or modified, 
particularly in terms of font type, font size, line spacing, and 
margins. Patents, patent application publications, and third-party-
generated affidavits or declarations must not be reduced in size or 
otherwise modified in the manner described in this paragraph.



Sec.  1.620  Conduct of supplemental examination proceeding.

    (a) Within three months after the filing date of a request for 
supplemental

[[Page 156]]

examination, the Office will determine whether a substantial new 
question of patentability affecting any claim of the patent is raised by 
any of the items of information presented in the request. The 
determination will generally be limited to a review of the item(s) of 
information identified in the request as applied to the identified 
claim(s) of the patent. The determination will be based on the claims in 
effect at the time of the determination and will become a part of the 
official record of the patent.
    (b) The Office may hold in abeyance action on any petition or other 
paper filed in a supplemental examination proceeding until after the 
proceeding is concluded by the electronic issuance of the supplemental 
examination certificate as set forth inSec. 1.625.
    (c) If an unauthorized or otherwise improper paper is filed in a 
supplemental examination proceeding, it will not be entered into the 
official file or considered, or if inadvertently entered, it will be 
expunged.
    (d) The patent owner must, as soon as possible upon the discovery of 
any other prior or concurrent post-patent Office proceeding involving 
the patent for which the current supplemental examination is requested, 
file a paper limited to notifying the Office of the post- patent Office 
proceeding, if such notice has not been previously provided with the 
request. The notice shall be limited to an identification of the post-
patent Office proceeding, including the type of proceeding, the 
identifying number of any such proceeding (e.g., a control number or 
reissue application number), and the filing date of any such proceeding, 
without any discussion of the issues of the current supplemental 
examination proceeding or of the identified post-patent Office 
proceeding(s).
    (e) Interviews are prohibited in a supplemental examination 
proceeding.
    (f) No amendment may be filed in a supplemental examination 
proceeding.
    (g) If the Office becomes aware, during the course of supplemental 
examination or of any reexamination ordered under 35 U.S.C. 257 as a 
result of the supplemental examination proceeding, that a material fraud 
on the Office may have been committed in connection with the patent 
requested to be examined, the supplemental examination proceeding or any 
reexamination proceeding ordered under 35 U.S.C. 257 will continue, and 
the matter will be referred to the U.S. Attorney General in accordance 
with 35 U.S.C. 257(e).



Sec.  1.625  Conclusion of supplemental examination; publication of 
supplemental examination certificate; procedure after conclusion.

    (a) A supplemental examination proceeding will conclude with the 
electronic issuance of a supplemental examination certificate. The 
supplemental examination certificate will indicate the result of the 
determination whether any of the items of information presented in the 
request raised a substantial new question of patentability.
    (b) If the supplemental examination certificate states that a 
substantial new question of patentability is raised by one or more items 
of information in the request, ex parte reexamination of the patent will 
be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte 
reexamination proceeding, an ex parte reexamination certificate, which 
will include a statement specifying that ex parte reexamination was 
ordered under 35 U.S.C. 257, will be published. The electronically 
issued supplemental examination certificate will remain as part of the 
public record of the patent.
    (c) If the supplemental examination certificate indicates that no 
substantial new question of patentability is raised by any of the items 
of information in the request, and ex parte reexamination is not ordered 
under 35 U.S.C. 257, the electronically issued supplemental examination 
certificate will be published in due course. The fee for reexamination 
ordered as a result of supplemental examination, as set forth inSec. 
1.20(k)(2), will be refunded in accordance withSec. 1.26(c).
    (d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be 
conducted in accordance with Sec.Sec. 1.530 through 1.570, which 
govern ex parte reexamination, except that:
    (1) The patent owner will not have the right to file a statement 
pursuant

[[Page 157]]

toSec. 1.530, and the order will not set a time period within which to 
file such a statement;
    (2) Reexamination of any claim of the patent may be conducted on the 
basis of any item of information as set forth inSec. 1.605, and is not 
limited to patents and printed publications or to subject matter that 
has been added or deleted during the reexamination proceeding, 
notwithstandingSec. 1.552(a);
    (3) Issues in addition to those raised by patents and printed 
publications, and by subject matter added or deleted during a 
reexamination proceeding, may be considered and resolved, 
notwithstandingSec. 1.552(c); and
    (4) Information material to patentability will be defined bySec. 
1.56(b), notwithstandingSec. 1.555(b).



  



            Subpart F_Adjustment and Extension of Patent Term

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

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

           Adjustment of Patent Term Due to Examination Delay



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

    (a) A patent, other than for designs, issued on an application filed 
on or after June 8, 1995, is entitled to extension of the patent term if 
the issuance of the patent was delayed due to:
    (1) Interference or derivation proceedings under 35 U.S.C. 135(a); 
and/or
    (2) The application being placed under a secrecy order under 35 
U.S.C. 181; and/or
    (3) Appellate review by the Patent Trial and Appeal Board or by a 
Federal court under 35 U.S.C. 141 or 145, if the patent was issued 
pursuant to a decision in the review reversing an adverse determination 
of patentability and if the patent is not subject to a terminal 
disclaimer due to the issuance of another patent claiming subject matter 
that is not patentably distinct from that under appellate review. If an 
application is remanded by a panel of the Patent Trial and Appeal Board 
and the remand is the last action by a panel of the Patent Trial and 
Appeal Board prior to the mailing of a notice of allowance under 35 
U.S.C. 151 in the application, the remand shall be considered a decision 
in the review reversing an adverse determination of patentability as 
that phrase is used in 35 U.S.C. 154(b)(2) as amended by section 532(a) 
of the Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809, 
4983-85 (1994), and a final decision in favor of the applicant under 
paragraph (c)(3) of this section. A remand by a panel of the Patent 
Trial and Appeal Board shall not be considered a decision in the review 
reversing an adverse determination of patentability as provided in this 
paragraph if there is filed a request for continued examination under 35 
U.S.C. 132(b) that was not first preceded by the mailing, after such 
remand, of at least one of an action under 35 U.S.C. 132 or a notice of 
allowance under 35 U.S.C. 151.
    (b) The term of a patent entitled to extension under paragraph (a) 
of this section shall be extended for the sum of the periods of delay 
calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this 
section, to the extent that these periods are not overlapping, up to a 
maximum of five years. The extension will run from the expiration date 
of the patent.
    (c)(1) The period of delay under paragraph (a)(1) of this section 
for an application is the sum of the following periods, to the extent 
that the periods are not overlapping:
    (i) With respect to each interference or derivation proceeding in 
which the application was involved, the number of days, if any, in the 
period beginning on the date the interference or derivation proceeding 
was instituted to involve the application in the interference or 
derivation proceeding and ending on the date that the interference or 
derivation proceeding was terminated with respect to the application; 
and
    (ii) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Patent and Trademark 
Office

[[Page 158]]

due to interference or derivation proceedings under 35 U.S.C. 135(a) not 
involving the application and ending on the date of the termination of 
the suspension.
    (2) The period of delay under paragraph (a)(2) of this section for 
an application is the sum of the following periods, to the extent that 
the periods are not overlapping:
    (i) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer underSec. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order and any renewal thereof was removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference or derivation 
proceeding would be instituted but for the secrecy order and ending on 
the date the secrecy order and any renewal thereof was removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification underSec. 5.3(c) and ending on the date of mailing of 
the notice of allowance underSec. 1.311.
    (3) The period of delay under paragraph (a)(3) of this section is 
the sum of the number of days, if any, in the period beginning on the 
date on which an appeal to the Patent Trial and Appeal Board was filed 
under 35 U.S.C. 134 and ending on the date of a final decision in favor 
of the applicant by the Patent Trial and Appeal Board or by a Federal 
court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 
145.
    (d) The period of delay set forth in paragraph (c)(3) shall be 
reduced by:
    (1) Any time during the period of appellate review that occurred 
before three years from the filing date of the first national 
application for patent presented for examination; and
    (2) Any time during the period of appellate review, as determined by 
the Director, during which the applicant for patent did not act with due 
diligence. In determining the due diligence of an applicant, the 
Director may examine the facts and circumstances of the applicant's 
actions during the period of appellate review to determine whether the 
applicant exhibited that degree of timeliness as may reasonably be 
expected from, and which is ordinarily exercised by, a person during a 
period of appellate review.
    (e) The provisions of this section apply only to original patents, 
except for design patents, issued on applications filed on or after June 
8, 1995, and before May 29, 2000.

[60 FR 20228, Apr. 25, 1995, as amended at 65 FR 56391, Sept. 18, 2000; 
69 FR 21710, Apr. 22, 2004; 69 FR 50001, Aug. 12, 2004; 77 FR 46627, 
Aug. 6, 2012]



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

    (a) Failure to take certain actions within specified time frames. 
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term 
of an original patent shall be adjusted if the issuance of the patent 
was delayed due to the failure of the Office to:
    (1) Mail at least one of a notification under 35 U.S.C. 132 or a 
notice of allowance under 35 U.S.C. 151 not later than fourteen months 
after the date on which the application was filed under 35 U.S.C. 111(a) 
or the date the national stage commenced under 35 U.S.C. 371(b) or (f) 
in an international application;
    (2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken 
under 35 U.S.C. 134 not later than four months after the date on which 
the reply was filed or the appeal was taken;
    (3) Act on an application not later than four months after the date 
of a decision by the Patent Trial and Appeal Board under 35 U.S.C. 134 
or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146 
where at least one allowable claim remains in the application; or
    (4) Issue a patent not later than four months after the date on 
which the issue fee was paid under 35 U.S.C. 151 and all outstanding 
requirements were satisfied.
    (b) Three-year pendency. Subject to the provisions of 35 U.S.C. 
154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the

[[Page 159]]

failure of the Office to issue a patent within three years after the 
date on which the application was filed under 35 U.S.C. 111(a) or the 
national stage commenced under 35 U.S.C. 371(b) or (f) in an 
international application, but not including:
    (1) Any time consumed by continued examination of the application 
under 35 U.S.C. 132(b);
    (2) Any time consumed by an interference or derivation proceeding 
under 35 U.S.C. 135(a);
    (3) Any time consumed by the imposition of a secrecy order under 35 
U.S.C. 181;
    (4) Any time consumed by review by the Patent Trial and Appeal Board 
or a Federal court; or
    (5) Any delay in the processing of the application by the Office 
that was requested by the applicant.
    (c) Delays caused by interference and derivation proceedings. 
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term 
of an original patent shall be adjusted if the issuance of the patent 
was delayed due to interference or derivation proceedings under 35 
U.S.C. 135(a).
    (d) Delays caused by secrecy order. Subject to the provisions of 35 
U.S.C. 154(b) and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due to the 
application being placed under a secrecy order under 35 U.S.C. 181.
    (e) Delays caused by successful appellate review. Subject to the 
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the patent was delayed due 
to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by 
a Federal court under 35 U.S.C. 141 or 145, if the patent was issued 
under a decision in the review reversing an adverse determination of 
patentability. If an application is remanded by a panel of the Patent 
Trial and Appeal Board and the remand is the last action by a panel of 
the Patent Trial and Appeal Board prior to the mailing of a notice of 
allowance under 35 U.S.C. 151 in the application, the remand shall be 
considered a decision by the Patent Trial and Appeal Board as that 
phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review 
reversing an adverse determination of patentability as that phrase is 
used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of 
the applicant underSec. 1.703(e). A remand by a panel of the Patent 
Trial and Appeal Board shall not be considered a decision in the review 
reversing an adverse determination of patentability as provided in this 
paragraph if there is filed a request for continued examination under 35 
U.S.C. 132(b) that was not first preceded by the mailing, after such 
remand, of at least one of an action under 35 U.S.C. 132 or a notice of 
allowance under 35 U.S.C. 151.
    (f) The provisions of this section and Sec.Sec. 1.703 through 
1.705 apply only to original applications, except applications for a 
design patent, filed on or after May 29, 2000, and patents issued on 
such applications.

[65 FR 56391, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
77 FR 46627, Aug. 6, 2012; 78 FR 19420, Apr. 1, 2013]



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

    (a) The period of adjustment underSec. 1.702(a) is the sum of the 
following periods:
    (1) The number of days, if any, in the period beginning on the day 
after the date that is fourteen months after the date on which the 
application was filed under 35 U.S.C. 111(a) or the date the national 
stage commenced under 35 U.S.C. 371(b) or (f) in an international 
application and ending on the date of mailing of either an action under 
35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever 
occurs first;
    (2) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply underSec. 
1.111 was filed and ending on the date of mailing of either an action 
under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, 
whichever occurs first;
    (3) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date a reply in compliance 
withSec. 1.113(c) was filed and ending on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of allowance

[[Page 160]]

under 35 U.S.C. 151, whichever occurs first;
    (4) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date an appeal brief in 
compliance withSec. 41.37 of this title was filed and ending on the 
date of mailing of any of an examiner's answer underSec. 41.39 of this 
title, an action under 35 U.S.C. 132, or a notice of allowance under 35 
U.S.C. 151, whichever occurs first;
    (5) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date of a final decision by 
the Patent Trial and Appeal Board or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where 
at least one allowable claim remains in the application and ending on 
the date of mailing of either an action under 35 U.S.C. 132 or a notice 
of allowance under 35 U.S.C. 151, whichever occurs first; and
    (6) The number of days, if any, in the period beginning on the day 
after the date that is four months after the date the issue fee was paid 
and all outstanding requirements were satisfied and ending on the date a 
patent was issued.
    (b) The period of adjustment underSec. 1.702(b) is the number of 
days, if any, in the period beginning on the day after the date that is 
three years after the date on which the application was filed under 35 
U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or 
(f) in an international application and ending on the date a patent was 
issued, but not including the sum of the following periods:
    (1) The number of days, if any, in the period beginning on the date 
on which a request for continued examination of the application under 35 
U.S.C. 132(b) was filed and ending on the date the patent was issued;
    (2)(i) The number of days, if any, in the period beginning on the 
date an interference or derivation proceeding was instituted to involve 
the application in the interference or derivation proceeding under 35 
U.S.C. 135(a) and ending on the date that the interference or derivation 
proceeding was terminated with respect to the application; and
    (ii) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended by the Office due to 
interference or derivation proceedings under 35 U.S.C. 135(a) not 
involving the application and ending on the date of the termination of 
the suspension;
    (3)(i) The number of days, if any, the application was maintained in 
a sealed condition under 35 U.S.C. 181;
    (ii) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer underSec. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order was removed;
    (iii) The number of days, if any, in the period beginning on the 
date applicant was notified that an interference or derivation 
proceeding under 35 U.S.C. 135(a) would be instituted but for the 
secrecy order and ending on the date the secrecy order was removed; and
    (iv) The number of days, if any, in the period beginning on the date 
of notification underSec. 5.3(c) of this chapter and ending on the 
date of mailing of the notice of allowance under 35 U.S.C. 151; and,
    (4) The number of days, if any, in the period beginning on the date 
on which jurisdiction over the application passes to the Patent Trial 
and Appeal Board underSec. 41.35(a) of this chapter and ending on the 
date that jurisdiction by the Patent Trial and Appeal Board ends under 
Sec.  41.35(b) of this chapter or the date of the last decision by a 
Federal court in an appeal under 35 U.S.C. 141 or a civil action under 
35 U.S.C. 145, whichever is later.
    (c) The period of adjustment underSec. 1.702(c) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, in the period beginning on the date 
an interference or derivation proceeding was instituted to involve the 
application in the interference or derivation proceeding under 35 U.S.C. 
135(a) and ending on the date that the interference or derivation 
proceeding was terminated with respect to the application; and
    (2) The number of days, if any, in the period beginning on the date 
prosecution in the application was suspended

[[Page 161]]

by the Office due to interference or derivation proceedings under 35 
U.S.C. 135(a) not involving the application and ending on the date of 
the termination of the suspension.
    (d) The period of adjustment underSec. 1.702(d) is the sum of the 
following periods, to the extent that the periods are not overlapping:
    (1) The number of days, if any, the application was maintained in a 
sealed condition under 35 U.S.C. 181;
    (2) The number of days, if any, in the period beginning on the date 
of mailing of an examiner's answer underSec. 41.39 of this title in 
the application under secrecy order and ending on the date the secrecy 
order was removed;
    (3) The number of days, if any, in the period beginning on the date 
applicant was notified that an interference or derivation proceeding 
under 35 U.S.C. 135(a) would be instituted but for the secrecy order and 
ending on the date the secrecy order was removed; and
    (4) The number of days, if any, in the period beginning on the date 
of notification underSec. 5.3(c) of this chapter and ending on the 
date of mailing of the notice of allowance under 35 U.S.C. 151.
    (e) The period of adjustment underSec. 1.702(e) is the sum of the 
number of days, if any, in the period beginning on the date on which 
jurisdiction over the application passes to the Patent Trial and Appeal 
Board underSec. 41.35(a) of this chapter and ending on the date of a 
final decision in favor of the applicant by the Patent Trial and Appeal 
Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil 
action under 35 U.S.C. 145.
    (f) The adjustment will run from the expiration date of the patent 
as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay 
attributable to the grounds specified inSec. 1.702 overlap, the period 
of adjustment granted under this section shall not exceed the actual 
number of days the issuance of the patent was delayed. The term of a 
patent entitled to adjustment underSec. 1.702 and this section shall 
be adjusted for the sum of the periods calculated under paragraphs (a) 
through (e) of this section, to the extent that such periods are not 
overlapping, less the sum of the periods calculated underSec. 1.704. 
The date indicated on any certificate of mailing or transmission under 
Sec.  1.8 shall not be taken into account in this calculation.
    (g) No patent, the term of which has been disclaimed beyond a 
specified date, shall be adjusted underSec. 1.702 and this section 
beyond the expiration date specified in the disclaimer.

[65 FR 56392, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
69 FR 50001, Aug. 12, 2004; 77 FR 46628, Aug. 6, 2012; 77 FR 49360, Aug. 
16, 2012; 78 FR 19420, Apr. 1, 2013]



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

    (a) The period of adjustment of the term of a patent under 
Sec.Sec. 1.703(a) through (e) shall be reduced by a period equal to 
the period of time during which the applicant failed to engage in 
reasonable efforts to conclude prosecution (processing or examination) 
of the application.
    (b) With respect to the grounds for adjustment set forth in 
Sec.Sec. 1.702(a) through (e), and in particular the ground of 
adjustment set forth inSec. 1.702(b), an applicant shall be deemed to 
have failed to engage in reasonable efforts to conclude processing or 
examination of an application for the cumulative total of any periods of 
time in excess of three months that are taken to reply to any notice or 
action by the Office making any rejection, objection, argument, or other 
request, measuring such three-month period from the date the notice or 
action was mailed or given to the applicant, in which case the period of 
adjustment set forth inSec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date that is three months 
after the date of mailing or transmission of the Office communication 
notifying the applicant of the rejection, objection, argument, or other 
request and ending on the date the reply was filed. The period, or 
shortened statutory period, for reply that is set in the Office action 
or notice has no effect on the three-month period set forth in this 
paragraph.
    (c) Circumstances that constitute a failure of the applicant to 
engage in reasonable efforts to conclude processing or examination of an 
application also include the following circumstances, which will result 
in the

[[Page 162]]

following reduction of the period of adjustment set forth inSec. 1.703 
to the extent that the periods are not overlapping:
    (1) Suspension of action underSec. 1.103 at the applicant's 
request, in which case the period of adjustment set forth inSec. 1.703 
shall be reduced by the number of days, if any, beginning on the date a 
request for suspension of action underSec. 1.103 was filed and ending 
on the date of the termination of the suspension;
    (2) Deferral of issuance of a patent underSec. 1.314, in which 
case the period of adjustment set forth inSec. 1.703 shall be reduced 
by the number of days, if any, beginning on the date a request for 
deferral of issuance of a patent underSec. 1.314 was filed and ending 
on the date the patent was issued;
    (3) Abandonment of the application or late payment of the issue fee, 
in which case the period of adjustment set forth inSec. 1.703 shall be 
reduced by the number of days, if any, beginning on the date of 
abandonment or the date after the date the issue fee was due and ending 
on the earlier of:
    (i) The date of mailing of the decision reviving the application or 
accepting late payment of the issue fee; or
    (ii) The date that is four months after the date the grantable 
petition to revive the application or accept late payment of the issue 
fee was filed;
    (4) Failure to file a petition to withdraw the holding of 
abandonment or to revive an application within two months from the 
mailing date of a notice of abandonment, in which case the period of 
adjustment set forth inSec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date two months from the 
mailing date of a notice of abandonment and ending on the date a 
petition to withdraw the holding of abandonment or to revive the 
application was filed;
    (5) Conversion of a provisional application under 35 U.S.C. 111(b) 
to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35 
U.S.C. 111(b)(5), in which case the period of adjustment set forth in 
Sec.  1.703 shall be reduced by the number of days, if any, beginning on 
the date the application was filed under 35 U.S.C. 111(b) and ending on 
the date a request in compliance withSec. 1.53(c)(3) to convert the 
provisional application into a nonprovisional application was filed;
    (6) Submission of a preliminary amendment or other preliminary paper 
less than one month before the mailing of an Office action under 35 
U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the 
mailing of a supplemental Office action or notice of allowance, in which 
case the period of adjustment set forth inSec. 1.703 shall be reduced 
by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date of the original Office action or notice of allowance and 
ending on the date of mailing of the supplemental Office action or 
notice of allowance; or
    (ii) Four months;
    (7) Submission of a reply having an omission (Sec.  1.135(c)), in 
which case the period of adjustment set forth inSec. 1.703 shall be 
reduced by the number of days, if any, beginning on the day after the 
date the reply having an omission was filed and ending on the date that 
the reply or other paper correcting the omission was filed;
    (8) Submission of a supplemental reply or other paper, other than a 
supplemental reply or other paper expressly requested by the examiner, 
after a reply has been filed, in which case the period of adjustment set 
forth inSec. 1.703 shall be reduced by the number of days, if any, 
beginning on the day after the date the initial reply was filed and 
ending on the date that the supplemental reply or other such paper was 
filed;
    (9) Submission of an amendment or other paper after a decision by 
the Patent Trial and Appeal Board, other than a decision designated as 
containing a new ground of rejection underSec. 41.50 (b) of this title 
or statement underSec. 41.50(c) of this title, or a decision by a 
Federal court, less than one month before the mailing of an Office 
action under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 
that requires the mailing of a supplemental Office action or 
supplemental notice of allowance, in which case the period of adjustment 
set forth inSec. 1.703 shall be reduced by the lesser of:
    (i) The number of days, if any, beginning on the day after the 
mailing date

[[Page 163]]

of the original Office action or notice of allowance and ending on the 
mailing date of the supplemental Office action or notice of allowance; 
or
    (ii) Four months;
    (10) Submission of an amendment underSec. 1.312 or other paper 
after a notice of allowance has been given or mailed, in which case the 
period of adjustment set forth inSec. 1.703 shall be reduced by the 
lesser of:
    (i) The number of days, if any, beginning on the date the amendment 
underSec. 1.312 or other paper was filed and ending on the mailing 
date of the Office action or notice in response to the amendment under 
Sec.  1.312 or such other paper; or
    (ii) Four months;
    (11) Failure to file an appeal brief in compliance withSec. 41.37 
of this chapter within three months from the date on which a notice of 
appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C. 
134 andSec. 41.31 of this chapter, in which case the period of 
adjustment set forth inSec. 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date three months from the 
date on which a notice of appeal to the Patent Trial and Appeal Board 
was filed under 35 U.S.C. 134 andSec. 41.31 of this chapter, and 
ending on the date an appeal brief in compliance withSec. 41.37 of 
this chapter or a request for continued examination in compliance with 
Sec.  1.114 was filed; and
    (12) Further prosecution via a continuing application, in which case 
the period of adjustment set forth inSec. 1.703 shall not include any 
period that is prior to the actual filing date of the application that 
resulted in the patent.
    (d)(1) A paper containing only an information disclosure statement 
in compliance with Sec.Sec. 1.97 and 1.98 will not be considered a 
failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraphs (c)(6), 
(c)(8), (c)(9), or (c)(10) of this section if it is accompanied by a 
statement that each item of information contained in the information 
disclosure statement:
    (i) Was first cited in any communication from a patent office in a 
counterpart foreign or international application or from the Office, and 
this communication was not received by any individual designated in 
Sec.  1.56(c) more than thirty days prior to the filing of the 
information disclosure statement; or
    (ii) Is a communication that was issued by a patent office in a 
counterpart foreign or international application or by the Office, and 
this communication was not received by any individual designated in 
Sec.  1.56(c) more than thirty days prior to the filing of the 
information disclosure statement.
    (2) The thirty-day period set forth in paragraph (d)(1) of this 
section is not extendable.
    (e) The submission of a request underSec. 1.705(c) for 
reinstatement of reduced patent term adjustment will not be considered a 
failure to engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under paragraph (c)(10) 
of this section.

[65 FR 56393, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
69 FR 50002, Aug. 12, 2004; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, 
Oct. 14, 2009; 76 FR 74702, Dec. 1, 2011; 77 FR 46628, Aug. 6, 2012; 77 
FR 49360, Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013]



Sec.  1.705  Patent term adjustment determination.

    (a) The patent will include notification of any patent term 
adjustment under 35 U.S.C. 154(b).
    (b) Any request for reconsideration of the patent term adjustment 
indicated on the patent must be by way of an application for patent term 
adjustment filed no later than two months from the date the patent was 
granted. This two-month time period may be extended under the provisions 
ofSec. 1.136(a). An application for patent term adjustment under this 
section must be accompanied by:
    (1) The fee set forth inSec. 1.18(e); and
    (2) A statement of the facts involved, specifying:
    (i) The correct patent term adjustment and the basis or bases under 
Sec.  1.702 for the adjustment;
    (ii) The relevant dates as specified in Sec.Sec. 1.703(a) through 
(e) for which an adjustment is sought and the adjustment as specified in 
Sec.  1.703(f) to which the patent is entitled;

[[Page 164]]

    (iii) Whether the patent is subject to a terminal disclaimer and any 
expiration date specified in the terminal disclaimer; and
    (iv)(A) Any circumstances during the prosecution of the application 
resulting in the patent that constitute a failure to engage in 
reasonable efforts to conclude processing or examination of such 
application as set forth inSec. 1.704; or
    (B) That there were no circumstances constituting a failure to 
engage in reasonable efforts to conclude processing or examination of 
such application as set forth inSec. 1.704.
    (c) Any request for reinstatement of all or part of the period of 
adjustment reduced pursuant toSec. 1.704(b) for failing to reply to a 
rejection, objection, argument, or other request within three months of 
the date of mailing of the Office communication notifying the applicant 
of the rejection, objection, argument, or other request must be filed 
prior to the issuance of the patent. This time period is not extendable. 
Any request for reinstatement of all or part of the period of adjustment 
reduced pursuant toSec. 1.704(b) under this paragraph must also be 
accompanied by:
    (1) The fee set forth inSec. 1.18(f); and
    (2) A showing to the satisfaction of the Director that, in spite of 
all due care, the applicant was unable to reply to the rejection, 
objection, argument, or other request within three months of the date of 
mailing of the Office communication notifying the applicant of the 
rejection, objection, argument, or other request. The Office shall not 
grant any request for reinstatement for more than three additional 
months for each reply beyond three months from the date of mailing of 
the Office communication notifying the applicant of the rejection, 
objection, argument, or other request.
    (d) No submission or petition on behalf of a third party concerning 
patent term adjustment under 35 U.S.C. 154(b) will be considered by the 
Office. Any such submission or petition will be returned to the third 
party, or otherwise disposed of, at the convenience of the Office.

[65 FR 56394, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 
78 FR 19420, Apr. 1, 2013]

            Extension of Patent Term Due to Regulatory Review



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

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

[54 FR 30379, July 20, 1989]



Sec.  1.720  Conditions for extension of patent term.

    The term of a patent may be extended if:
    (a) The patent claims a product or a method of using or 
manufacturing a product as defined inSec. 1.710;
    (b) The term of the patent has never been previously extended, 
except for extensions issued pursuant to Sec.Sec. 1.701, 1.760, or 
Sec.  1.790;

[[Page 165]]

    (c) An application for extension is submitted in compliance with 
Sec.  1.740;
    (d) The product has been subject to a regulatory review period as 
defined in 35 U.S.C. 156(g) before its commercial marketing or use;
    (e) The product has received permission for commercial marketing or 
use and--
    (1) The permission for the commercial marketing or use of the 
product is the first received permission for commercial marketing or use 
under the provision of law under which the applicable regulatory review 
occurred, or
    (2) In the case of a patent other than one directed to subject 
matter withinSec. 1.710(b)(2) claiming a method of manufacturing the 
product that primarily uses recombinant DNA technology in the 
manufacture of the product, the permission for the commercial marketing 
or use is the first received permission for the commercial marketing or 
use of a product manufactured under the process claimed in the patent, 
or
    (3) In the case of a patent claiming a new animal drug or a 
veterinary biological product that is not covered by the claims in any 
other patent that has been extended, and has received permission for the 
commercial marketing or use in non-food-producing animals and in food-
producing animals, and was not extended on the basis of the regulatory 
review period for use in non-food-producing animals, the permission for 
the commercial marketing or use of the drug or product after the 
regulatory review period for use in food-producing animals is the first 
permitted commercial marketing or use of the drug or product for 
administration to a food-producing animal.
    (f) The application is submitted within the sixty-day period 
beginning on the date the product first received permission for 
commercial marketing or use under the provisions of law under which the 
applicable regulatory review period occurred; or in the case of a patent 
claiming a method of manufacturing the product which primarily uses 
recombinant DNA technology in the manufacture of the product, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of a product manufactured under the process claimed in the patent; or in 
the case of a patent that claims a new animal drug or a veterinary 
biological product that is not covered by the claims in any other patent 
that has been extended, and said drug or product has received permission 
for the commercial marketing or use in non-food-producing animals, the 
application for extension is submitted within the sixty-day period 
beginning on the date of the first permitted commercial marketing or use 
of the drug or product for administration to a food-producing animal;
    (g) The term of the patent, including any interim extension issued 
pursuant toSec. 1.790, has not expired before the submission of an 
application in compliance withSec. 1.741; and
    (h) No other patent term has been extended for the same regulatory 
review period for the product.

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



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

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

[65 FR 54679, Sept. 8, 2000, as amended at 77 FR 48825, Aug. 14, 2012]

[[Page 166]]



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

    (a) An application for extension of patent term must be made in 
writing to the Director. A formal application for the extension of 
patent term must include:
    (1) A complete identification of the approved product as by 
appropriate chemical and generic name, physical structure or 
characteristics;
    (2) A complete identification of the Federal statute including the 
applicable provision of law under which the regulatory review occurred;
    (3) An identification of the date on which the product received 
permission for commercial marketing or use under the provision of law 
under which the applicable regulatory review period occurred;
    (4) In the case of a drug product, an identification of each active 
ingredient in the product and as to each active ingredient, a statement 
that it has not been previously approved for commercial marketing or use 
under the Federal Food, Drug, and Cosmetic Act, the Public Health 
Service Act, or the Virus-Serum-Toxin Act, or a statement of when the 
active ingredient was approved for commercial marketing or use (either 
alone or in combination with other active ingredients), the use for 
which it was approved, and the provision of law under which it was 
approved.
    (5) A statement that the application is being submitted within the 
sixty day period permitted for submission pursuant toSec. 1.720(f) and 
an identification of the date of the last day on which the application 
could be submitted;
    (6) A complete identification of the patent for which an extension 
is being sought by the name of the inventor, the patent number, the date 
of issue, and the date of expiration;
    (7) A copy of the patent for which an extension is being sought, 
including the entire specification (including claims) and drawings;
    (8) A copy of any disclaimer, certificate of correction, receipt of 
maintenance fee payment, or reexamination certificate issued in the 
patent;
    (9) A statement that the patent claims the approved product, or a 
method of using or manufacturing the approved product, and a showing 
which lists each applicable patent claim and demonstrates the manner in 
which at least one such patent claim reads on:
    (i) The approved product, if the listed claims include any claim to 
the approved product;
    (ii) The method of using the approved product, if the listed claims 
include any claim to the method of using the approved product; and
    (iii) The method of manufacturing the approved product, if the 
listed claims include any claim to the method of manufacturing the 
approved product;
    (10) A statement beginning on a new page of the relevant dates and 
information pursuant to 35 U.S.C. 156(g) in order to enable the 
Secretary of Health and Human Services or the Secretary of Agriculture, 
as appropriate, to determine the applicable regulatory review period as 
follows:
    (i) For a patent claiming a human drug, antibiotic, or human 
biological product:
    (A) The effective date of the investigational new drug (IND) 
application and the IND number;
    (B) The date on which a new drug application (NDA) or a Product 
License Application (PLA) was initially submitted and the NDA or PLA 
number; and
    (C) The date on which the NDA was approved or the Product License 
issued;
    (ii) For a patent claiming a new animal drug:
    (A) The date a major health or environmental effects test on the 
drug was initiated, and any available substantiation of that date, or 
the date of an exemption under subsection (j) of Section 512 of the 
Federal Food, Drug, and Cosmetic Act became effective for such animal 
drug;
    (B) The date on which a new animal drug application (NADA) was 
initially submitted and the NADA number; and
    (C) The date on which the NADA was approved;
    (iii) For a patent claiming a veterinary biological product:
    (A) The date the authority to prepare an experimental biological 
product

[[Page 167]]

under the Virus-Serum-Toxin Act became effective;
    (B) The date an application for a license was submitted under the 
Virus-Serum-Toxin Act; and
    (C) The date the license issued;
    (iv) For a patent claiming a food or color additive:
    (A) The date a major health or environmental effects test on the 
additive was initiated and any available substantiation of that date;
    (B) The date on which a petition for product approval under the 
Federal Food, Drug and Cosmetic Act was initially submitted and the 
petition number; and
    (C) The date on which the FDA published a Federal Register notice 
listing the additive for use;
    (v) For a patent claiming a medical device:
    (A) The effective date of the investigational device exemption (IDE) 
and the IDE number, if applicable, or the date on which the applicant 
began the first clinical investigation involving the device, if no IDE 
was submitted, and any available substantiation of that date;
    (B) The date on which the application for product approval or notice 
of completion of a product development protocol under Section 515 of the 
Federal Food, Drug and Cosmetic Act was initially submitted and the 
number of the application; and
    (C) The date on which the application was approved or the protocol 
declared to be completed;
    (11) A brief description beginning on a new page of the significant 
activities undertaken by the marketing applicant during the applicable 
regulatory review period with respect to the approved product and the 
significant dates applicable to such activities;
    (12) A statement beginning on a new page that in the opinion of the 
applicant the patent is eligible for the extension and a statement as to 
the length of extension claimed, including how the length of extension 
was determined;
    (13) A statement that applicant acknowledges a duty to disclose to 
the Director of the United States Patent and Trademark Office and the 
Secretary of Health and Human Services or the Secretary of Agriculture 
any information which is material to the determination of entitlement to 
the extension sought (seeSec. 1.765);
    (14) The prescribed fee for receiving and acting upon the 
application for extension (seeSec. 1.20(j)); and
    (15) The name, address, and telephone number of the person to whom 
inquiries and correspondence relating to the application for patent term 
extension are to be directed.
    (b) The application under this section must be accompanied by two 
additional copies of such application (for a total of three copies).
    (c) If an application for extension of patent term is informal under 
this section, the Office will so notify the applicant. The applicant has 
two months from the mail date of the notice, or such time as is set in 
the notice, within which to correct the informality. Unless the notice 
indicates otherwise, this time period may be extended under the 
provisions ofSec. 1.136.

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



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

    (a) The filing date of an application for extension of a patent term 
is the date on which a complete application is received in the Office or 
filed pursuant to the procedures set forth inSec. 1.8 orSec. 1.10. A 
complete application must include:
    (1) An identification of the approved product;
    (2) An identification of each Federal statute under which regulatory 
review occurred;
    (3) An identification of the patent for which an extension is being 
sought;
    (4) An identification of each claim of the patent which claims the 
approved product or a method of using or manufacturing the approved 
product;
    (5) Sufficient information to enable the Director to determine under 
subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a patent for 
extension, and the rights that will be derived from the extension, and 
information to enable the Director and the Secretary of

[[Page 168]]

Health and Human Services or the Secretary of Agriculture to determine 
the length of the regulatory review period; and
    (6) A brief description of the activities undertaken by the 
marketing applicant during the applicable regulatory review period with 
respect to the approved product and the significant dates applicable to 
such activities.
    (b) If an application for extension of patent term is incomplete 
under this section, the Office will so notify the applicant. If 
applicant requests review of a notice that an application is incomplete, 
or review of the filing date accorded an application under this section, 
applicant must file a petition pursuant to this paragraph accompanied by 
the fee set forth inSec. 1.17(f) within two months of the mail date of 
the notice that the application is incomplete, or the notice according 
the filing date complained of. Unless the notice indicates otherwise, 
this time period may be extended under the provisions ofSec. 1.136.

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



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

    A determination as to whether a patent is eligible for extension may 
be made by the Director solely on the basis of the representations 
contained in the application for extension filed in compliance with 
Sec.  1.740 orSec. 1.790. This determination may be delegated to 
appropriate Patent and Trademark Office officials and may be made at any 
time before the certificate of extension is issued. The Director or 
other appropriate officials may require from applicant further 
information or make such independent inquiries as desired before a final 
determination is made on whether a patent is eligible for extension. In 
an application for extension filed in compliance withSec. 1.740, a 
notice will be mailed to applicant containing the determination as to 
the eligibility of the patent for extension and the period of time of 
the extension, if any. This notice shall constitute the final 
determination as to the eligibility and any period of extension of the 
patent. A single request for reconsideration of a final determination 
may be made if filed by the applicant within such time as may be set in 
the notice of final determination or, if no time is set, within one 
month from the date of the final determination. The time periods set 
forth herein are subject to the provisions ofSec. 1.136.

[60 FR 25618, May 12, 1995]



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

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

[65 FR 54680, Sept. 8, 2000]



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

    (a) A duty of candor and good faith toward the Patent and Trademark 
Office and the Secretary of Health and Human Services or the Secretary 
of Agriculture rests on the patent owner or its agent, on each attorney 
or agent who represents the patent owner and on every other individual 
who is substantively involved on behalf of the patent owner in a patent 
term extension proceeding. All such individuals who are aware, or become 
aware, of

[[Page 169]]

material information adverse to a determination of entitlement to the 
extension sought, which has not been previously made of record in the 
patent term extension proceeding must bring such information to the 
attention of the Office or the Secretary, as appropriate, in accordance 
with paragraph (b) of this section, as soon as it is practical to do so 
after the individual becomes aware of the information. Information is 
material where there is a substantial likelihood that the Office or the 
Secretary would consider it important in determinations to be made in 
the patent term extension proceeding.
    (b) Disclosures pursuant to this section must be accompanied by a 
copy of each written document which is being disclosed. The disclosure 
must be made to the Office or the Secretary, as appropriate, unless the 
disclosure is material to determinations to be made by both the Office 
and the Secretary, in which case duplicate copies, certified as such, 
must be filed in the Office and with the Secretary. Disclosures pursuant 
to this section may be made to the Office or the Secretary, as 
appropriate, through an attorney or agent having responsibility on 
behalf of the patent owner or its agent for the patent term extension 
proceeding or through a patent owner acting on his or her own behalf. 
Disclosure to such an attorney, agent or patent owner shall satisfy the 
duty of any other individual. Such an attorney, agent or patent owner 
has no duty to transmit information which is not material to the 
determination of entitlement to the extension sought.
    (c) No patent will be determined eligible for extension and no 
extension will be issued if it is determined that fraud on the Office or 
the Secretary was practiced or attempted or the duty of disclosure was 
violated through bad faith or gross negligence in connection with the 
patent term extension proceeding. If it is established by clear and 
convincing evidence that any fraud was practiced or attempted on the 
Office or the Secretary in connection with the patent term extension 
proceeding or that there was any violation of the duty of disclosure 
through bad faith or gross negligence in connection with the patent term 
extension proceeding, a final determination will be made pursuant to 
Sec.  1.750 that the patent is not eligible for extension.
    (d) The duty of disclosure pursuant to this section rests on the 
individuals identified in paragraph (a) of this section and no 
submission on behalf of third parties, in the form of protests or 
otherwise, will be considered by the Office. Any such submissions by 
third parties to the Office will be returned to the party making the 
submission, or otherwise disposed of, without consideration by the 
Office.

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



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

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

[62 FR 53201, Oct. 10, 1997]



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

    (a) If a determination is made pursuant toSec. 1.750 that a patent 
for a human drug, antibiotic drug or human biological product is 
eligible for extension, the term shall be extended by the time as 
calculated in days in the manner indicated by this section. The patent 
term extension will run from the original expiration date of the patent 
or any earlier date set by terminal disclaimer (Sec.  1.321).
    (b) The term of the patent for a human drug, antibiotic drug or 
human biological product will be extended by

[[Page 170]]

the length of the regulatory review period for the product as determined 
by the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a human drug, 
antibiotic drug or human biological product will be determined by the 
Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it 
is the sum of--
    (1) The number of days in the period beginning on the date an 
exemption under subsection (i) of section 505 or subsection (d) of 
section 507 of the Federal Food, Drug, and Cosmetic Act became effective 
for the approved product and ending on the date the application was 
initially submitted for such product under those sections or under 
section 351 of the Public Health Service Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved product under 
section 351 of the Public Health Service Act, subsection (b) of section 
505 or section 507 of the Federal Food, Drug, and Cosmetic Act and 
ending on the date such application was approved under such section.
    (d) The term of the patent as extended for a human drug, antibiotic 
drug or human biological product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 351 of the Public Health Service Act, or subsection (b) of 
section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or any earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no request was submitted for an exemption under subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug, and Cosmetic Act before September 24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a request was submitted for an exemption under subsection 
(i) of section 505 or subsection (d) of section 507 of the Federal Food, 
Drug, or Cosmetic Act before September 24, 1984 and the commercial 
marketing or use of the product was not approved before September 24, 
1984, by--
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.

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

[[Page 171]]



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

    (a) If a determination is made pursuant toSec. 1.750 that a patent 
for a food additive or color additive is eligible for extension, the 
term shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or earlier date set by terminal 
disclaimer (Sec.  1.321).
    (b) The term of the patent for a food additive or color additive 
will be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Health and Human Services, 
reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of 
this section.
    (c) The length of the regulatory review period for a food additive 
or color additive will be determined by the Secretary of Health and 
Human Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of--
    (1) The number of days in the period beginning on the date a major 
health or environmental effects test on the additive was initiated and 
ending on the date a petition was initially submitted with respect to 
the approved product under the Federal Food, Drug, and Cosmetic Act 
requesting the issuance of a regulation for use of the product; and
    (2) The number of days in the period beginning on the date a 
petition was initially submitted with respect to the approved product 
under the Federal Food, Drug, and Cosmetic Act requesting the issuance 
of a regulation for use of the product, and ending on the date such 
regulation became effective or, if objections were filed to such 
regulation, ending on the date such objections were resolved and 
commercial marketing was permitted or, if commercial marketing was 
permitted and later revoked pending further proceedings as a result of 
such objections, ending on the date such proceedings were finally 
resolved and commercial marketing was permitted.
    (d) The term of the patent as extended for a food additive or color 
additive will be determined by
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) The number of days equal to one-half the number of days 
remaining in the period defined by paragraph (c)(1) of this section 
after that period is reduced in accordance with paragraphs (d)(1) (i) 
and (ii) of this section; half days will be ignored for purposes of 
subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date a regulation for use of the 
product became effective or, if objections were filed to such 
regulation, to the date such objections were resolved and commercial 
marketing was permitted or, if commercial marketing was permitted and 
later revoked pending further proceedings as a result of such 
objections, to the date such proceedings were finally resolved and 
commercial marketing was permitted;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,
    (i) By adding 5 years to the original expiration date of the patent 
or earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no major health or environmental effects test was initiated 
and

[[Page 172]]

no petition for a regulation or application for registration was 
submitted before September 24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a major health or environmental effects test was initiated 
or a petition for a regulation or application for registration was 
submitted by September 24, 1984, and the commercial marketing or use of 
the product was not approved before September 24, 1984, by--
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.



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

    (a) If a determination is made pursuant toSec. 1.750 that a patent 
for a medical device is eligible for extension, the term shall be 
extended by the time as calculated in days in the manner indicated by 
this section. The patent term extension will run from the original 
expiration date of the patent or earlier date as set by terminal 
disclaimer (Sec.  1.321).
    (b) The term of the patent for a medical device will be extended by 
the length of the regulatory review period for the product as determined 
by the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for a medical device 
will be determined by the Secretary of Health and Human Services. Under 
35 U.S.C. 156(g)(3)(B), it is the sum of
    (1) The number of days in the period beginning on the date a 
clinical investigation on humans involving the device was begun and 
ending on the date an application was initially submitted with respect 
to the device under section 515 of the Federal Food, Drug, and Cosmetic 
Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted with respect to the device under 
section 515 of the Federal Food, Drug, and Cosmetic Act, and ending on 
the date such application was approved under such Act or the period 
beginning on the date a notice of completion of a product development 
protocol was initially submitted under section 515(f)(5) of the Act and 
ending on the date the protocol was declared completed under section 
515(f)(6) of the Act.
    (d) The term of the patent as extended for a medical device will be 
determined by--
    (1) Substracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period 
pursuant to paragraph (c) of this section:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section which were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 515 of the Federal Food, Drug, and Cosmetic Act or the 
date a product development protocol was declared completed under section 
515(f)(6) of the Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after September 24, 1984,

[[Page 173]]

    (i) By adding 5 years to the original expiration date of the patent 
or earlier date set by terminal disclaimer; and
    (ii) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before September 24, 1984, and
    (i) If no clinical investigation on humans involving the device was 
begun or no product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(i)(A) of this section with each other and selecting the 
earlier date; or
    (ii) If a clinical investigation on humans involving the device was 
begun or a product development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 
24, 1984 and the commercial marketing or use of the product was not 
approved before September 24, 1984, by
    (A) Adding 2 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) By comparing the dates obtained pursuant to paragraphs (d)(4) 
and (d)(6)(ii)(A) of this section with each other and selecting the 
earlier date.



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

    (a) If a determination is made pursuant toSec. 1.750 that a patent 
for an animal drug is eligible for extension, the term shall be extended 
by the time as calculated in days in the manner indicated by this 
section. The patent term extension will run from the original expiration 
date of the patent or any earlier date set by terminal disclaimer (Sec.  
1.321).
    (b) The term of the patent for an animal drug will be extended by 
the length of the regulatory review period for the drug as determined by 
the Secretary of Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this section.
    (c) The length of the regulatory review period for an animal drug 
will be determined by the Secretary of Health and Human Services. Under 
35 U.S.C. 156(g)(4)(B), it is the sum of--
    (1) The number of days in the period beginning on the earlier of the 
date a major health or environmental effects test on the drug was 
initiated or the date an exemption under subsection (j) of section 512 
of the Federal Food, Drug, and Cosmetic Act became effective for the 
approved animal drug and ending on the date an application was initially 
submitted for such animal drug under section 512 of the Federal Food, 
Drug, and Cosmetic Act; and
    (2) The number of days in the period beginning on the date the 
application was initially submitted for the approved animal drug under 
subsection (b) of section 512 of the Federal Food, Drug, and Cosmetic 
Act and ending on the date such application was approved under such 
section.
    (d) The term of the patent as extended for an animal drug will be 
determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Health and Human Services to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section that were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Health and Human Services that 
applicant did not act with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent as shortened by any 
terminal disclaimer;
    (3) By adding 14 years to the date of approval of the application 
under section 512 of the Federal Food, Drug, and Cosmetic Act;

[[Page 174]]

    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no major health or environmental effects test on the drug was 
initiated and no request was submitted for an exemption under subsection 
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a major health or environmental effects test was initiated 
or a request for an exemption under subsection (j) of section 512 of the 
Federal Food, Drug, and Cosmetic Act was submitted before November 16, 
1988, and the application for commercial marketing or use of the animal 
drug was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer, and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

[54 FR 30381, July 20, 1989]



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

    (a) If a determination is made pursuant toSec. 1.750 that a patent 
for a veterinary biological product is eligible for extension, the term 
shall be extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension will run from the 
original expiration date of the patent or any earlier date set by 
terminal disclaimer (Sec.  1.321).
    (b) The term of the patent for a veterinary biological product will 
be extended by the length of the regulatory review period for the 
product as determined by the Secretary of Agriculture, reduced as 
appropriate pursuant to paragraphs (d)(1) through (d)(6) of this 
section.
    (c) The length of the regulatory review period for a veterinary 
biological product will be determined by the Secretary of Agriculture. 
Under 35 U.S.C. 156(g)(5)(B), it is the sum of--
    (1) The number of days in the period beginning on the date the 
authority to prepare an experimental biological product under the Virus-
Serum-Toxin Act became effective and ending on the date an application 
for a license was submitted under the Virus-Serum-Toxin Act; and
    (2) The number of days in the period beginning on the date an 
application for a license was initially submitted for approval under the 
Virus-Serum-Toxin Act and ending on the date such license was issued.
    (d) The term of the patent as extended for a veterinary biological 
product will be determined by--
    (1) Subtracting from the number of days determined by the Secretary 
of Agriculture to be in the regulatory review period:
    (i) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section that were on and before the date on which the 
patent issued;
    (ii) The number of days in the periods of paragraphs (c)(1) and 
(c)(2) of this section during which it is determined under 35 U.S.C. 
156(d)(2)(B) by the Secretary of Agriculture that applicant did not act 
with due diligence;
    (iii) One-half the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is reduced in 
accordance with paragraphs (d)(1) (i) and (ii) of this section; half 
days will be ignored for purposes of subtraction;
    (2) By adding the number of days determined in paragraph (d)(1) of 
this section to the original term of the patent

[[Page 175]]

as shortened by any terminal disclaimer;
    (3) By adding 14 years to the date of the issuance of a license 
under the Virus-Serum-Toxin Act;
    (4) By comparing the dates for the ends of the periods obtained 
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other 
and selecting the earlier date;
    (5) If the original patent was issued after November 16, 1988, by--
    (i) Adding 5 years to the original expiration date of the patent or 
any earlier date set by terminal disclaimer; and
    (ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(5)(i) of this section with each other and selecting the earlier 
date;
    (6) If the original patent was issued before November 16, 1988, and
    (i) If no request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, by--
    (A) Adding 5 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(i)(A) of this section with each other and selecting the earlier 
date; or
    (ii) If a request for the authority to prepare an experimental 
biological product under the Virus-Serum-Toxin Act was submitted before 
November 16, 1988, and the commercial marketing or use of the product 
was not approved before November 16, 1988, by--
    (A) Adding 3 years to the original expiration date of the patent or 
earlier date set by terminal disclaimer; and
    (B) Comparing the dates obtained pursuant to paragraphs (d)(4) and 
(d)(6)(ii)(A) of this section with each other and selecting the earlier 
date.

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



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

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

[65 FR 54680, Sept. 8, 2000]



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

    (a) Only one patent may be extended for a regulatory review period 
for any product (Sec.  1.720(h)). If more than one application for 
extension of the same patent is filed, the certificate of extension of 
patent term, if appropriate, will be issued based upon the first filed 
application for extension.
    (b) If more than one application for extension is filed by a single 
applicant which seeks the extension of the term of two or more patents 
based upon the same regulatory review period, and the patents are 
otherwise eligible for extension pursuant to the requirements of this 
subpart, in the absence of an election by the applicant, the certificate 
of extension of patent term, if appropriate, will be issued upon the 
application for extension of the patent term having the earliest date of 
issuance of those patents for which extension is sought.
    (c) If an application for extension is filed which seeks the 
extension of the term of a patent based upon the same

[[Page 176]]

regulatory review period as that relied upon in one or more applications 
for extension pursuant to the requirements of this subpart, the 
certificate of extension of patent term will be issued on the 
application only if the patent owner or its agent is the holder of the 
regulatory approval granted with respect to the regulatory review 
period.
    (d) An application for extension shall be considered complete and 
formal regardless of whether it contains the identification of the 
holder of the regulatory approval granted with respect to the regulatory 
review period. When an application contains such information, or is 
amended to contain such information, it will be considered in 
determining whether an application is eligible for an extension under 
this section. A request may be made of any applicant to supply such 
information within a non-extendable period of not less than one month 
whenever multiple applications for extension of more than one patent are 
received and rely upon the same regulatory review period. Failure to 
provide such information within the period for reply set shall be 
regarded as conclusively establishing that the applicant is not the 
holder of the regulatory approval.
    (e) Determinations made under this section shall be included in the 
notice of final determination of eligibility for extension of the patent 
term pursuant toSec. 1.750 and shall be regarded as part of that 
determination.

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



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

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

[60 FR 25619, May 12, 1995]



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

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

[60 FR 25619, May 12, 1995]

[[Page 177]]



              Subpart G_Biotechnology Invention Disclosures

                     Deposit of Biological Material

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



Sec.  1.801  Biological material.

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



Sec.  1.802  Need or opportunity to make a deposit.

    (a) Where an invention is, or relies on, a biological material, the 
disclosure may include reference to a deposit of such biological 
material.
    (b) Biological material need not be deposited unless access to such 
material is necessary for the satisfaction of the statutory requirements 
for patentability under 35 U.S.C. 112. If a deposit is necessary, it 
shall be acceptable if made in accordance with these regulations. 
Biological material need not be deposited, inter alia, if it is known 
and readily avaliable to the public or can be made or isolated without 
undue experimentation. Once deposited in a depository complying with 
these regulations, a biological material will be considered to be 
readily available even though some requirement of law or regulation of 
the United States or of the country in which the depository institution 
is located permits access to the material only under conditions imposed 
for safety, public health or similar reasons.
    (c) The reference to a biological material in a specification 
disclosure or the actual deposit of such material by an applicant or 
patent owner does not create any presumption that such material is 
necessary to satisfy 35 U.S.C. 112 or that deposit in accordance with 
these regulations is or was required.



Sec.  1.803  Acceptable depository.

    (a) A deposit shall be recognized for the purposes of these 
regulations if made in
    (1) Any International Depositary Authority (IDA) as established 
under the Budapest Treaty on the International Recognition of the 
Deposit of Microorganisms for the Purposes of Patent Procedure, or
    (2) Any other depository recognized to be suitable by the Office. 
Suitability will be determined by the Director on the basis of the 
administrative and technical competence, and agreement of the depository 
to comply with the terms and conditions applicable to deposits for 
patent purposes. The Director may seek the advice of impartial 
consultants on the suitability of a depository. The depository must:
    (i) Have a continuous existence;
    (ii) Exist independent of the control of the depositor;
    (iii) Possess the staff and facilities sufficient to examine the 
viability of a deposit and store the deposit in a manner which ensures 
that it is kept viable and uncontaminated;
    (iv) Provide for sufficient safety measures to minimize the risk of 
losing biological material deposited with it;
    (v) Be impartial and objective;
    (vi) Furnish samples of the deposited material in an expeditious and 
proper manner; and
    (vii) Promptly notify depositors of its inability to furnish 
samples, and the reasons why.
    (b) A depository seeking status under paragraph (a)(2) of this 
section must direct a communication to the Director which shall:
    (1) Indicate the name and address of the depository to which the 
communication relates;
    (2) Contain detailed information as to the capacity of the 
depository to comply with the requirements of paragraph (a)(2) of this 
section, including information on its legal status, scientific standing, 
staff and facilities;

[[Page 178]]

    (3) Indicate that the depository intends to be available, for the 
purposes of deposit, to any depositor under these same conditions;
    (4) Where the depository intends to accept for deposit only certain 
kinds of biological material, specify such kinds;
    (5) Indicate the amount of any fees that the depository will, upon 
acquiring the status of suitable depository under paragraph (a)(2) of 
this section, charge for storage, viability statements and furnishings 
of samples of the deposit.
    (c) A depository having status under paragraph (a)(2) of this 
section limited to certain kinds of biological material may extend such 
status to additional kinds of biological material by directing a 
communication to the Director in accordance with paragraph (b) of this 
section. If a previous communication under paragraph (b) of this section 
is of record, items in common with the previous communication may be 
incorporated by reference.
    (d) Once a depository is recognized to be suitable by the Director 
or has defaulted or discontinued its performance under this section, 
notice thereof will be published in the Office Gazette of the Patent and 
Trademark Office.



Sec.  1.804  Time of making an original deposit.

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

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



Sec.  1.805  Replacement or supplement of deposit.

    (a) A depositor, after receiving notice during the pendency of an 
application for patent, application for reissue patent or reexamination 
proceeding, that the depository possessing a deposit either cannot 
furnish samples thereof or can furnish samples thereof but the deposit 
has become contaminated or has lost its capability to function as 
described in the specification, shall notify the Office in writing, in 
each application for patent or patent affected. In such a case, or where 
the Office otherwise learns, during the pendency of an application for 
patent, application for reissue patent or reexamination proceeding, that 
the depository possessing a deposit either cannot furnish samples 
thereof or can furnish samples thereof but the deposit has become 
contaminated or has lost its capability to function as described in the 
specification, the need for making a replacement or supplemental deposit 
will be governed by the same considerations governing the need for 
making an original deposit under the provisions set forth inSec. 
1.802(b). A replacement or supplemental deposit made during the pendency 
of an application for patent shall not be accepted unless it meets the 
requirements for making an original deposit under these regulations, 
including the requirement set forth underSec. 1.804(b). A replacement 
or supplemental deposit made in connection with a patent, whether or not 
made during the pendency of an application for reissue patent or a 
reexamination proceeding or both, shall not be accepted unless a 
certificate of correction underSec. 1.323 is requested by the patent 
owner which meets the terms of paragraphs (b) and (c) of this section.
    (b) A request for certificate of correction under this section shall 
not be granted unless the certificate identifies:
    (1) The accession number for the replacement or supplemental 
deposit;
    (2) The date of the deposit; and
    (3) The name and address of the depository.
    (c) A request for a certificate of correction under this section 
shall not be granted unless the request is made promptly after the 
replacement or supplemental deposit has been made and the request:
    (1) Includes a statement of the reason for making the replacement or 
supplemental deposit;

[[Page 179]]

    (2) Includes a statement from a person in a position to corroborate 
the fact, and stating that the replacement or supplemental deposit is of 
a biological material which is identical to that originally deposited;
    (3) Includes a showing that the patent owner acted diligently--
    (i) In the case of a replacement deposit, in making the deposit 
after receiving notice that samples could no longer be furnished from an 
earlier deposit; or
    (ii) In the case of a supplemental deposit, in making the deposit 
after receiving notice that the earlier deposit had become contaminated 
or had lost its capability to function as described in the 
specification;
    (4) Includes a statement that the term of the replacement or 
supplemental deposit expires no earlier than the term of the deposit 
being replaced or supplemented; and
    (5) Otherwise establishes compliance with these regulations.
    (d) A depositor's failure to replace a deposit, or in the case of a 
patent, to diligently replace a deposit and promptly thereafter request 
a certificate of correction which meets the terms of paragraphs (b) and 
(c) of this section, after being notified that the depository possessing 
the deposit cannot furnish samples thereof, shall cause the application 
or patent involved to be treated in any Office proceeding as if no 
deposit were made.
    (e) In the event a deposit is replaced according to these 
regulations, the Office will apply a rebuttable presumption of identity 
between the original and the replacement deposit where a patent making 
reference to the deposit is relied upon during any Office proceeeding.
    (f) A replacement or supplement deposit made during the pendency of 
an application for patent may be made for any reason.
    (g) In no case is a replacement or supplemental deposit of a 
biological material necessary where the biological material, in 
accordance withSec. 1.802(b), need not be deposited.
    (h) No replacement deposit of a biological material is necessary 
where a depository can furnish samples thereof but the depository for 
national security, health or environmental safety reasons is unable to 
provide samples to requesters outside of the jurisdiction where the 
depository is located.
    (i) The Office will not recognize in any Office proceeding a 
replacement deposit of a biological material made by a patent owner 
where the depository could furnish samples of the deposit being 
replaced.

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



Sec.  1.806  Term of deposit.

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



Sec.  1.807  Viability of deposit.

    (a) A deposit of biological material that is capable of self-
replication either directly or indirectly must be viable at the time of 
deposit and during the term of deposit. Viability may be tested by the 
depository. The test must conclude only that the deposited material is 
capable of reproduction. No evidence is necessarily required regarding 
the ability of the deposited material to perform any function described 
in the patent application.
    (b) A viability statement for each deposit of a biological material 
defined in paragraph (a) of this section not made under the Budapest 
Treaty on the International Recognition of the Deposit of Microorganisms 
for the Purposes of Patent Procedure must be filed in the application 
and must contain:
    (1) The name and address of the depository;
    (2) The name and address of the depositor;
    (3) The date of deposit;
    (4) The identity of the deposit and the accession number given by 
the depository;
    (5) The date of the viability test;

[[Page 180]]

    (6) The procedures used to obtain a sample if the test is not done 
by the depository; and
    (7) A statement that the deposit is capable of reproduction.
    (c) If a viability test indicates that the deposit is not viable 
upon receipt, or the examiner cannot, for scientific or other valid 
reasons, accept the statement of viability received from the applicant, 
the examiner shall proceed as if no deposit has been made. The examiner 
will accept the conclusion set forth in a viability statement issued by 
a depository recognized underSec. 1.803(a).



Sec.  1.808  Furnishing of samples.

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



Sec.  1.809  Examination procedures.

    (a) The examiner shall determine pursuant toSec. 1.104 in each 
application for patent, application for reissue patent or reexamination 
proceeding if a deposit is needed, and if needed, if a deposit actually 
made is acceptable for patent purposes. If a deposit is needed and has 
not been made or replaced or supplemented in accordance with these 
regulations, the examiner, where appropriate, shall reject the affected 
claims under the appropriate provision of 35 U.S.C. 112, explaining why 
a deposit is needed and/or why a deposit actually made cannot be 
accepted.
    (b) The applicant for patent or patent owner shall reply to a 
rejection under paragraph (a) of this section by--
    (1) In the case of an applicant for patent, either making an 
acceptable original, replacement, or supplemental deposit, or assuring 
the Office in writing that an acceptable deposit will be made; or, in 
the case of a patent owner, requesting a certificate of correction of 
the patent which meets the terms of paragraphs (b) and (c) ofSec. 
1.805, or
    (2) Arguing why a deposit is not needed under the circumstances of 
the application or patent considered and/or why a deposit actually made 
should be accepted. Other replies to the examiner's action shall be 
considered nonresponsive. The rejection will be repeated until either 
paragraph (b)(1) of this section is satisfied or the examiner is 
convinced that a deposit is not needed.
    (c) If an application for patent is otherwise in condition for 
allowance except for a needed deposit and the Office has received a 
written assurance that an acceptable deposit will be made, applicant 
will be notified and given a period of time within which the deposit 
must be made in order to avoid abandonment. This time period is not 
extendable underSec. 1.136(a) or (b) if set forth in a ``Notice of 
Allowability'' or in an Office action having a mail date on or after the 
mail date of a ``Notice of Allowability'' (seeSec. 1.136(c)).

[[Page 181]]

    (d) For each deposit made pursuant to these regulations, the 
specification shall contain:
    (1) The accession number for the deposit;
    (2) The date of the deposit;
    (3) A description of the deposited biological material sufficient to 
specifically identify it and to permit examination; and
    (4) The name and address of the depository.
    (e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of 
this section must be filed before or with the payment of the issue fee 
(seeSec. 1.312).

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

    Application Disclosures Containing Nucleotide and/or Amino Acid 
                                Sequences

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



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

    (a) Nucleotide and/or amino acid sequences as used in Sec.Sec. 
1.821 through 1.825 are interpreted to mean an unbranched sequence of 
four or more amino acids or an unbranched sequence of ten or more 
nucleotides. Branched sequences are specifically excluded from this 
definition. Sequences with fewer than four specifically defined 
nucleotides or amino acids are specifically excluded from this section. 
``Specifically defined'' means those amino acids other than ``Xaa'' and 
those nucleotide bases other than ``n''defined in accordance with the 
World Intellectual Property Organization (WIPO) Handbook on Industrial 
Property Information and Documentation, Standard ST.25: Standard for the 
Presentation of Nucleotide and Amino Acid Sequence Listings in Patent 
Applications (1998), including Tables 1 through 6 in Appendix 2, herein 
incorporated by reference. (Hereinafter ``WIPO Standard ST.25 (1998)''). 
This incorporation by reference was approved by the Director of the 
Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. 
Copies of WIPO Standard ST.25 (1998) may be obtained from the World 
Intellectual Property Organization; 34 chemin des Colombettes; 1211 
Geneva 20 Switzerland. Copies may also be inspected at the National 
Archives and Records Administration (NARA). For information on the 
availability of this material at NARA, call 202-741-6030, or go to: 
http://www.archives.gov/federal--register/code--of--federal--
regulations/ibr--locations.html. Nucleotides and amino acids are further 
defined as follows:
    (1) Nucleotides: Nucleotides are intended to embrace only those 
nucleotides that can be represented using the symbols set forth in WIPO 
Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g., 
methylated bases, may be described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 2, but shall not be shown explicitly in the 
nucleotide sequence.
    (2) Amino acids: Amino acids are those L-amino acids commonly found 
in naturally occurring proteins and are listed in WIPO Standard ST.25 
(1998), Appendix 2, Table 3. Those amino acid sequences containing D-
amino acids are not intended to be embraced by this definition. Any 
amino acid sequence that contains post-translationally modified amino 
acids may be described as the amino acid sequence that is initially 
translated using the symbols shown in WIPO Standard ST.25 (1998), 
Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or 
glycosylations, being described as set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 4, but these modifications shall not be shown 
explicitly in the amino acid sequence. Any peptide or protein that can 
be expressed as a sequence using the symbols in WIPO Standard ST.25 
(1998), Appendix 2, Table 3 in conjunction with a description in the 
Feature section to describe, for example, modified linkages, cross links 
and end caps, non-peptidyl bonds, etc., is embraced by this definition.
    (b) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences, in accordance with the definition in paragraph 
(a) of this section, shall, with regard to the manner in which the 
nucleotide and/or amino

[[Page 182]]

acid sequences are presented and described, conform exclusively to the 
requirements of Sec.Sec. 1.821 through 1.825.
    (c) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences must contain, as a separate part of the 
disclosure, a paper or compact disc copy (seeSec. 1.52(e)) disclosing 
the nucleotide and/or amino acid sequences and associated information 
using the symbols and format in accordance with the requirements of 
Sec.Sec. 1.822 and 1.823. This paper or compact disc copy is referred 
to elsewhere in this subpart as the ``Sequence Listing.'' Each sequence 
disclosed must appear separately in the ``Sequence Listing.'' Each 
sequence set forth in the ``Sequence Listing'' must be assigned a 
separate sequence identifier. The sequence identifiers must begin with 1 
and increase sequentially by integers. If no sequence is present for a 
sequence identifier, the code ``000'' must be used in place of the 
sequence. The response for the numeric identifier <160 must 
include the total number of SEQ ID NOs, whether followed by a sequence 
or by the code ``000.''
    (d) Where the description or claims of a patent application discuss 
a sequence that is set forth in the ``Sequence Listing'' in accordance 
with paragraph (c) of this section, reference must be made to the 
sequence by use of the sequence identifier, preceded by ``SEQ ID NO:'' 
in the text of the description or claims, even if the sequence is also 
embedded in the text of the description or claims of the patent 
application.
    (e) A copy of the ``Sequence Listing'' referred to in paragraph (c) 
of this section must also be submitted in computer readable form (CRF) 
in accordance with the requirements ofSec. 1.824. The computer 
readable form must be a copy of the ``Sequence Listing'' and may not be 
retained as a part of the patent application file. If the computer 
readable form of a new application is to be identical with the computer 
readable form of another application of the applicant on file in the 
Office, reference may be made to the other application and computer 
readable form in lieu of filing a duplicate computer readable form in 
the new application if the computer readable form in the other 
application was compliant with all of the requirements of this subpart. 
The new application must be accompanied by a letter making such 
reference to the other application and computer readable form, both of 
which shall be completely identified. In the new application, applicant 
must also request the use of the compliant computer readable ``Sequence 
Listing'' that is already on file for the other application and must 
state that the paper or compact disc copy of the ``Sequence Listing'' in 
the new application is identical to the computer readable copy filed for 
the other application.
    (f) In addition to the paper or compact disc copy required by 
paragraph (c) of this section and the computer readable form required by 
paragraph (e) of this section, a statement that the ``Sequence Listing'' 
content of the paper or compact disc copy and the computer readable copy 
are the same must be submitted with the computer readable form, e.g., a 
statement that ``the sequence listing information recorded in computer 
readable form is identical to the written (on paper or compact disc) 
sequence listing.''
    (g) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing under 35 U.S.C. 111(a) 
or at the time of entering the national stage under 35 U.S.C. 371, 
applicant will be notified and given a period of time within which to 
comply with such requirements in order to prevent abandonment of the 
application. Any submission in reply to a requirement under this 
paragraph must be accompanied by a statement that the submission 
includes no new matter.
    (h) If any of the requirements of paragraphs (b) through (f) of this 
section are not satisfied at the time of filing an international 
application under the Patent Cooperation Treaty (PCT), which application 
is to be searched by the United States International Searching Authority 
or examined by the United States International Preliminary Examining 
Authority, applicant will be sent a notice necessitating compliance with 
the requirements within a prescribed time period. Any submission in 
reply to a requirement

[[Page 183]]

under this paragraph must be accompanied by a statement that the 
submission does not include matter which goes beyond the disclosure in 
the international application as filed. If applicant fails to timely 
provide the required computer readable form, the United States 
International Searching Authority shall search only to the extent that a 
meaningful search can be performed without the computer readable form 
and the United States International Preliminary Examining Authority 
shall examine only to the extent that a meaningful examination can be 
performed without the computer readable form.

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



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

    (a) The symbols and format to be used for nucleotide and/or amino 
acid sequence data shall conform to the requirements of paragraphs (b) 
through (e) of this section.
    (b) The code for representing the nucleotide and/or amino acid 
sequence characters shall conform to the code set forth in the tables in 
WIPO Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This 
incorporation by reference was approved by the Director of the Federal 
Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of 
ST.25 may be obtained from the World Intellectual Property Organization; 
34 chemin des Colombettes; 1211 Geneva 20 Switzerland. Copies may also 
be inspected at the National Archives and Records Administration (NARA). 
For information on the availability of this material at NARA, call 202-
741-6030, or go to: http://www.archives.gov/federal--register/code--of--
federal--regulations/ibr--locations.html. No code other than that 
specified in these sections shall be used in nucleotide and amino acid 
sequences. A modified base or modified or unusual amino acid may be 
presented in a given sequence as the corresponding unmodified base or 
amino acid if the modified base or modified or unusual amino acid is one 
of those listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and 
4, and the modification is also set forth in the Feature section. 
Otherwise, each occurrence of a base or amino acid not appearing in WIPO 
Standard ST.25 (1998), Appendix 2, Tables 1 and 3, shall be listed in a 
given sequence as ``n'' or ``Xaa,'' respectively, with further 
information, as appropriate, given in the Feature section, preferably by 
including one or more feature keys listed in WIPO Standard ST.25 (1998), 
Appendix 2, Tables 5 and 6.
    (c) Format representation of nucleotides. (1) A nucleotide sequence 
shall be listed using the lower-case letter for representing the one-
letter code for the nucleotide bases set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 1.
    (2) The bases in a nucleotide sequence (including introns) shall be 
listed in groups of 10 bases except in the coding parts of the sequence. 
Leftover bases, fewer than 10 in number, at the end of noncoding parts 
of a sequence shall be grouped together and separated from adjacent 
groups of 10 or 3 bases by a space.
    (3) The bases in the coding parts of a nucleotide sequence shall be 
listed as triplets (codons). The amino acids corresponding to the codons 
in the coding parts of a nucleotide sequence shall be typed immediately 
below the corresponding codons. Where a codon spans an intron, the amino 
acid symbol shall be typed below the portion of the codon containing two 
nucleotides.
    (4) A nucleotide sequence shall be listed with a maximum of 16 
codons or 60 bases per line, with a space provided between each codon or 
group of 10 bases.
    (5) A nucleotide sequence shall be presented, only by a single 
strand, in the 5 to 3 direction, from left to right.
    (6) The enumeration of nucleotide bases shall start at the first 
base of the sequence with number 1. The enumeration shall be continuous 
through the whole sequence in the direction 5 to 3. The enumeration 
shall be marked in the right margin, next to the line containing the 
one-letter codes for the bases, and giving the number of the last base 
of that line.
    (7) For those nucleotide sequences that are circular in 
configuration, the

[[Page 184]]

enumeration method set forth in paragraph (c)(6) of this section remains 
applicable with the exception that the designation of the first base of 
the nucleotide sequence may be made at the option of the applicant.
    (d) Representation of amino acids. (1) The amino acids in a protein 
or peptide sequence shall be listed using the three-letter abbreviation 
with the first letter as an upper case character, as in WIPO Standard 
ST.25 (1998), Appendix 2, Table 3.
    (2) A protein or peptide sequence shall be listed with a maximum of 
16 amino acids per line, with a space provided between each amino acid.
    (3) An amino acid sequence shall be presented in the amino to 
carboxy direction, from left to right, and the amino and carboxy groups 
shall not be presented in the sequence.
    (4) The enumeration of amino acids may start at the first amino acid 
of the first mature protein, with the number 1. When presented, the 
amino acids preceding the mature protein, e.g., pre-sequences, pro-
sequences, pre-pro-sequences and signal sequences, shall have negative 
numbers, counting backwards starting with the amino acid next to number 
1. Otherwise, the enumeration of amino acids shall start at the first 
amino acid at the amino terminal as number 1. It shall be marked below 
the sequence every 5 amino acids. The enumeration method for amino acid 
sequences that is set forth in this section remains applicable for amino 
acid sequences that are circular in configuration, with the exception 
that the designation of the first amino acid of the sequence may be made 
at the option of the applicant.
    (5) An amino acid sequence that contains internal terminator symbols 
(e.g., ``Ter'', ``*'', or ``.'', etc.) may not be represented as a 
single amino acid sequence, but shall be presented as separate amino 
acid sequences.
    (e) A sequence with a gap or gaps shall be presented as a plurality 
of separate sequences, with separate sequence identifiers, with the 
number of separate sequences being equal in number to the number of 
continuous strings of sequence data. A sequence that is made up of one 
or more noncontiguous segments of a larger sequence or segments from 
different sequences shall be presented as a separate sequence.

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



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

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

[[Page 185]]

presentation of the items of information in the ``Sequence Listing'' 
shall conform to the arrangement given below. Each item of information 
shall begin on a new line and shall begin with the numeric identifier 
enclosed in angle brackets as shown. The submission of those items of 
information designated with an ``M'' is mandatory. The submission of 
those items of information designated with an ``O'' is optional. Numeric 
identifiers <110 through <170 shall only be set 
forth at the beginning of the ``Sequence Listing.'' The following table 
illustrates the numeric identifiers.

----------------------------------------------------------------------------------------------------------------
                                                                                      Mandatory (M) or optional
    Numeric identifier            Definition              Comments and format                   (O).
----------------------------------------------------------------------------------------------------------------
<110..........  Applicant...............  Preferably max. of 10 names;   M.
                                                      one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
<120..........  Title of Invention......  .............................  M.
<130..........  File Reference..........  Personal file reference......  M when filed prior to
                                                                                     assignment of appl. number.
<140..........  Current Application       Specify as: US 07/999,999 or   M, if available.
                            Number.                   PCT/US96/99999.
<141..........  Current Filing Date.....  Specify as: yyyy-mm-dd.......  M, if available.
<150..........  Prior Application Number  Specify as: US 07/999,999 or   M, if applicable include
                                                      PCT/US96/99999.                priority documents under 35
                                                                                     USC 119 and 120.
<151..........  Prior Application Filing  Specify as: yyyy-mm-dd.......  M, if applicable.
                            Date.
<160..........  Number of SEQ ID NOs....  Count includes total number    M.
                                                      of SEQ ID NOs.
<170..........  Software................  Name of software used to       O.
                                                      create the Sequence Listing.
<210..........  SEQ ID NO::....  Response shall be an integer   M.
                                                      representing the SEQ ID NO
                                                      shown.
<211..........  Length..................  Respond with an integer        M.
                                                      expressing the number of
                                                      bases or amino acid residues.
<212..........  Type....................  Whether presented sequence     M.
                                                      molecule is DNA, RNA, or PRT
                                                      (protein). If a nucleotide
                                                      sequence contains both DNA
                                                      and RNA fragments, the type
                                                      shall be ``DNA.'' In
                                                      addition, the combined DNA/
                                                      RNA molecule shall be
                                                      further described in the
                                                      <220 to <223 feature section.
<213..........  Organism................  Scientific name, i.e., Genus/  M
                                                      species, Unknown or
                                                      Artificial Sequence. In
                                                      addition, the ``Unknown'' or
                                                      ``Artificial Sequence''
                                                      organisms shall be further
                                                      described in the <220 to <223
                                                      feature section.
<220..........  Feature.................  Leave blank after <220. <221-223       conditions: if ``n,''
                                                      provide for a description of   ``Xaa,'' or a modified or
                                                      points of biological           unusual L-amino acid or
                                                      significance in the            modified base was used in a
                                                      sequence..                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown''; if molecule is
                                                                                     combined DNA/RNA''
<221..........  Name/Key................  Provide appropriate            M, under the following
                                                      identifier for feature,        conditions: if ``n,''
                                                      preferably from WIPO           ``Xaa,'' or a modified or
                                                      Standard ST.25 (1998),         unusual L-amino acid or
                                                      Appendix 2, Tables 5 and 6.    modified base was used in a
                                                                                     sequence.
<222..........  Location................  Specify location within        M, under the following
                                                      sequence; where appropriate    conditions: if ``n,''
                                                      state number of first and      ``Xaa,'' or a modified or
                                                      last bases/amino acids in      unusual L-amino acid or
                                                      feature.                       modified base was used in a
                                                                                     sequence.
<223..........  Other Information.......  Other relevant information;    M, under the following
                                                      four lines maximum.            conditions: if ``n,''
                                                                                     ``Xaa,'' or a modified or
                                                                                     unusual L-amino acid or
                                                                                     modified base was used in a
                                                                                     sequence; if ORGANISM is
                                                                                     ``Artificial Sequence'' or
                                                                                     ``Unknown''; if molecule is
                                                                                     combined DNA/RNA.
<300..........  Publication Information.  Leave blank after <300.
<301..........  Authors.................  Preferably max of ten named    O.
                                                      authors of publication;
                                                      specify one name per line;
                                                      preferable format: Surname,
                                                      Other Names and/or Initials.
<302..........  Title...................  .............................  O.

[[Page 186]]

 
<303..........  Journal.................  .............................  O.
<304..........  Volume..................  .............................  O.
<305..........  Issue...................  .............................  O.
<306..........  Pages...................  .............................  O.
<307..........  Date....................  Journal date on which data     O.
                                                      published; specify as yyyy-
                                                      mm-dd, MMM-yyyy or Season-
                                                      yyyy.
<308..........  Database Accession        Accession number assigned by   O.
                            Number.                   database including database
                                                      name.
<309..........  Database Entry Date.....  Date of entry in database;     O.
                                                      specify as yyyy-mm-dd or MMM-
                                                      yyyy.
<310..........  Patent Document Number..  Document number; for patent-   O.
                                                      type citations only. Specify
                                                      as, for example, US 07/
                                                      999,999.
<311..........  Patent Filing Date......  Document filing date, for      O.
                                                      patent-type citations only;
                                                      specify as yyyy-mm-dd.
<312..........  Publication Date........  Document publication date,     O.
                                                      for patent-type citations
                                                      only; specify as yyyy-mm-dd.
<313..........  Relevant Residues.......  FROM (position) TO (position)  O.
<400..........  Sequence................  SEQ ID NO should follow the    M.
                                                      numeric identifier and
                                                      should appear on the line
                                                      preceding the actual
                                                      sequence.
----------------------------------------------------------------------------------------------------------------


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



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

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

[[Page 187]]

    (3) 8mm Data Cartridge: Format: Unix tar command; specify blocking 
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus 
ASCII Line Feed.
    (4) Compact disc: Format: ISO 9660 or High Sierra Format.
    (5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch, 
640 Mb.
    (d) Computer readable forms that are submitted to the Office will 
not be returned to the applicant.

[65 FR 54681, Sept. 8, 2000]



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

    (a) Any amendment to a paper copy of the ``Sequence Listing'' (Sec.  
1.821(c)) must be made by the submission of substitute sheets and 
include a statement that the substitute sheets include no new matter. 
Any amendment to a compact disc copy of the ``Sequence Listing'' (Sec.  
1.821(c)) must be made by the submission of a replacement compact disc 
(2 copies) in compliance withSec. 1.52(e). Amendments must also be 
accompanied by a statement that indicates support for the amendment in 
the application, as filed, and a statement that the replacement compact 
disc includes no new matter.
    (b) Any amendment to the paper or compact disc copy of the 
``Sequence Listing,'' in accordance with paragraph (a) of this section, 
must be accompanied by a substitute copy of the computer readable form 
(Sec.  1.821(e)) including all previously submitted data with the 
amendment incorporated therein, accompanied by a statement that the copy 
in computer readable form is the same as the substitute copy of the 
``Sequence Listing.''
    (c) Any appropriate amendments to the ``Sequence Listing'' in a 
patent; e.g., by reason of reissue or certificate of correction, must 
comply with the requirements of paragraphs (a) and (b) of this section.
    (d) If, upon receipt, the computer readable form is found to be 
damaged or unreadable, applicant must provide, within such time as set 
by the Director, a substitute copy of the data in computer readable form 
accompanied by a statement that the substitute data is identical to that 
originally filed.

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

[[Page 188]]



     Sec. Appendix A to Subpart G of Part 1--Sample Sequence Listing
[GRAPHIC] [TIFF OMITTED] TR01JN98.006


[[Page 189]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.007


[[Page 190]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.008


[[Page 191]]


[GRAPHIC] [TIFF OMITTED] TR01JN98.009

[GRAPHIC] [TIFF OMITTED] TR01JN98.010


[63 FR 29639, June 1, 1998]

[[Page 192]]



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

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

                           Prior Art Citations



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

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

[72 FR 18906, Apr. 16, 2007]

         Requirements for Inter Partes Reexamination Proceedings



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

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



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

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



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

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



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

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

[[Page 193]]



Sec.  1.907  Inter partes reexamination prohibited.

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



Sec.  1.913  Persons eligible to file, and time for filing, a request
for inter partes reexamination.

    (a) Except as provided for inSec. 1.907 and in paragraph (b) of 
this section, any person other than the patent owner or its privies may, 
at any time during the period of enforceability of a patent which issued 
from an original application filed in the United States on or after 
November 29, 1999, file a request for inter partes reexamination by the 
Office of any claim of the patent on the basis of prior art patents or 
printed publications cited underSec. 1.501.
    (b) Any request for an inter partes reexamination submitted on or 
after September 16, 2012, will not be accorded a filing date, and any 
such request will not be granted.

[76 FR 59057, Sept. 23, 2011]



Sec.  1.915  Content of request for inter partes reexamination.

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

[[Page 194]]

    (7) A certification by the third party requester that the estoppel 
provisions ofSec. 1.907 do not prohibit the inter partes 
reexamination.
    (8) A statement identifying the real party in interest to the extent 
necessary for a subsequent person filing an inter partes reexamination 
request to determine whether that person is a privy.
    (c) If an inter partes request is filed by an attorney or agent 
identifying another party on whose behalf the request is being filed, 
the attorney or agent must have a power of attorney from that party or 
be acting in a representative capacity pursuant toSec. 1.34.
    (d) If the inter partes request does not include the fee for 
requesting inter partes reexamination required by paragraph (a) of this 
section and meet all the requirements of paragraph (b) of this section, 
then the person identified as requesting inter partes reexamination will 
be so notified and will generally be given an opportunity to complete 
the request within a specified time. Failure to comply with the notice 
will result in the inter partes reexamination request not being granted 
a filing date, and will result in placement of the request in the patent 
file as a citation if it complies with the requirements ofSec. 1.501.

[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006; 71 
FR 44223, Aug. 4, 2006; 72 FR 18906, Apr. 16, 2007; 76 FR 59058, Sept. 
23, 2011]



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

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

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



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

    Within three months following the filing date of a request for inter 
partes reexamination underSec. 1.915, the examiner will consider the 
request and determine whether or not the request and the prior art 
establish a reasonable likelihood that the requester will prevail with 
respect to at least one of the claims challenged in the request. The 
examiner's determination will be based on the claims in effect at the 
time of the determination, will become a part of the official file of 
the patent, and will be mailed to the patent owner at the address as 
provided for inSec. 1.33(c) and to the third party requester. If the 
examiner determines that the request has not established a reasonable 
likelihood that the requester will prevail with respect to at least one 
of the challenged claims, the examiner shall refuse the request and 
shall not order inter partes reexamination.

[76 FR 59058, Sept. 23, 2011]



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

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



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

    The third party requester may seek review by a petition to the 
Director underSec. 1.181 within one month of the mailing date of the 
examiner's determination refusing to order inter partes reexamination. 
Any such petition must comply withSec. 1.181(b). If no petition is 
timely filed or if the decision on petition affirms that a reasonable 
likelihood that the requester will prevail with respect to at least one 
of the claims challenged in the request has not been established, the 
determination shall be final and nonappealable.

[76 FR 59058, Sept. 23, 2011]

                  Inter Partes Reexamination of Patents



Sec.  1.931  Order for inter partes reexamination.

    (a) If it is found that there is a reasonable likelihood that the 
requester will prevail with respect to at least one of the claims 
challenged in the request, the determination will include an order

[[Page 195]]

for inter partes reexamination of the patent for resolution of the 
question of whether the requester will prevail.
    (b) If the order for inter partes reexamination resulted from a 
petition pursuant toSec. 1.927, the inter partes reexamination will 
ordinarily be conducted by an examiner other than the examiner 
responsible for the initial determination underSec. 1.923.

[65 FR 76777, Dec. 7, 2000, as amended at 76 FR 59058, Sept. 23, 2011]

          Information Disclosure in Inter Partes Reexamination



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

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

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



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

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



Sec.  1.937  Conduct of inter partes reexamination.

    (a) All inter partes reexamination proceedings, including any 
appeals to the Patent Trial and Appeal Board, will be conducted with 
special dispatch within the Office, unless the Director makes a 
determination that there is good cause for suspending the reexamination 
proceeding.
    (b) The inter partes reexamination proceeding will be conducted in 
accordance with Sec.Sec. 1.104 through 1.116, the sections governing 
the application examination process, and will result in the issuance of 
an inter partes reexamination certificate underSec. 1.997, except as 
otherwise provided.
    (c) All communications between the Office and the parties to the 
inter partes reexamination which are directed to the merits of the 
proceeding must be in writing and filed with the Office for entry into 
the record of the proceeding.
    (d) A petition in an inter partes reexamination proceeding must be 
accompanied by the fee set forth inSec. 1.20(c)(6), except for 
petitions underSec. 1.956 to extend the period for response by a 
patent owner, petitions underSec. 1.958 to accept a delayed response 
by a patent owner, petitions underSec. 1.78 to accept an 
unintentionally delayed benefit claim, and petitions underSec. 
1.530(l) for correction of inventorship in a reexamination proceeding.

[65 FR 76777, as amended at 77 FR 46628, Aug. 6, 2012; 77 FR 48853, Aug. 
14, 2012]



Sec.  1.939  Unauthorized papers in inter partes reexamination.

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



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

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

[[Page 196]]



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

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



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

    (a) The patent owner will be given at least thirty days to file a 
response to any Office action on the merits of the inter partes 
reexamination.
    (b) Any supplemental response to the Office action will be entered 
only where the supplemental response is accompanied by a showing of 
sufficient cause why the supplemental response should be entered. The 
showing of sufficient cause must include:
    (1) An explanation of how the requirements ofSec. 1.111(a)(2)(i) 
are satisfied;
    (2) An explanation of why the supplemental response was not 
presented together with the original response to the Office action; and
    (3) A compelling reason to enter the supplemental response.

[72 FR 18906, Apr. 16, 2007]



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

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



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

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



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

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

[[Page 197]]

patent owner, unless the new ground was necessitated by an amendment.



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

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



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

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

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

           Interviews Prohibited in Inter Partes Reexamination



Sec.  1.955  Interviews prohibited in inter partes reexamination
proceedings.

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

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



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

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

[69 FR 56546, Sept. 21, 2004]

[[Page 198]]



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

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

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



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

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

      Appeal to the Patent Trial and Appeal Board in Inter Partes 
                              Reexamination



Sec.  1.959  Appeal in inter partes reexamination.

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

[77 FR 46628, Aug. 6, 2012]



Sec.Sec. 1.961-1.977  [Reserved]



Sec.  1.979  Return of Jurisdiction from the Patent Trial and Appeal
Board; termination of appeal proceedings.

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

[77 FR 46628, Aug. 6, 2012]



Sec.  1.981  Reopening after a final decision of the Patent Trial 
and Appeal Board.

    When a decision by the Patent Trial and Appeal Board on appeal has 
become final for judicial review, prosecution of the inter partes 
reexamination proceeding will not be reopened or reconsidered by the 
primary examiner except under the provisions ofSec. 41.77 of this 
title without the written authority of the Director, and then only for

[[Page 199]]

the consideration of matters not already adjudicated, sufficient cause 
being shown.

[77 FR 46628, Aug. 6, 2012]

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



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

    (a) The patent owner or third party requester in an inter partes 
reexamination proceeding who is a party to an appeal to the Patent Trial 
and Appeal Board and who is dissatisfied with the decision of the Patent 
Trial and Appeal Board may, subject toSec. 41.81, appeal to the U.S. 
Court of Appeals for the Federal Circuit and may be a party to any 
appeal thereto taken from a reexamination decision of the Patent Trial 
and Appeal Board.
    (b) The appellant must take the following steps in such an appeal:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice of appeal directed to the Director in accordance with Sec.Sec. 
1.302 and 1.304;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice of appeal and pay the fee, as provided for in the 
rules of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice of appeal on every other party in the 
reexamination proceeding in the manner provided inSec. 1.248.
    (c) If the patent owner has filed a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit, the third party requester may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Patent Trial and Appeal 
Board.
    (d) If the third party requester has filed a notice of appeal to the 
U.S. Court of Appeals for the Federal Circuit, the patent owner may 
cross appeal to the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Patent Trial and Appeal 
Board.
    (e) A party electing to participate in an appellant's appeal must, 
within fourteen days of service of the appellant's notice of appeal 
under paragraph (b) of this section, or notice of cross appeal under 
paragraphs (c) or (d) of this section, take the following steps:
    (1) In the U.S. Patent and Trademark Office, timely file a written 
notice directed to the Director electing to participate in the 
appellant's appeal to the U.S. Court of Appeals for the Federal Circuit 
by mail to, or hand service on, the General Counsel as provided inSec. 
104.2;
    (2) In the U.S. Court of Appeals for the Federal Circuit, file a 
copy of the notice electing to participate in accordance with the rules 
of the U.S. Court of Appeals for the Federal Circuit; and
    (3) Serve a copy of the notice electing to participate on every 
other party in the reexamination proceeding in the manner provided in 
Sec.  1.248.
    (f) Notwithstanding any provision of the rules, in any reexamination 
proceeding commenced prior to November 2, 2002, the third party 
requester is precluded from appealing and cross appealing any decision 
of the Patent Trial and Appeal Board to the U.S. Court of Appeals for 
the Federal Circuit, and the third party requester is precluded from 
participating in any appeal taken by the patent owner to the U.S. Court 
of Appeals for the Federal Circuit.

[68 FR 71008, Dec. 22, 2003, as amended at 72 FR 18907, Apr. 16, 2007; 
77 FR 46628, Aug. 6, 2012]

      Concurrent Proceedings Involving Same Patent in Inter Partes 
                              Reexamination



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

    (a) In any inter partes reexamination proceeding, the patent owner 
shall call the attention of the Office to any prior or concurrent 
proceedings in which the patent is or was involved, including but not 
limited to interference or trial before the Patent Trial and Appeal 
Board, reissue, reexamination, or litigation and the results of such 
proceedings.
    (b) Notwithstanding any provision of the rules, any person at any 
time may

[[Page 200]]

file a paper in an inter partes reexamination proceeding notifying the 
Office of a prior or concurrent proceeding in which the same patent is 
or was involved, including but not limited to interference or trial 
before the Patent Trial and Appeal Board, reissue, reexamination, or 
litigation and the results of such proceedings. Such paper must be 
limited to merely providing notice of the other proceeding without 
discussion of issues of the current inter partes reexamination 
proceeding.

[77 FR 46629, Aug. 6, 2012]



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

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



Sec.  1.989  Merger of concurrent reexamination proceedings.

    (a) If any reexamination is ordered while a prior inter partes 
reexamination proceeding is pending for the same patent and prosecution 
in the prior inter partes reexamination proceeding has not been 
terminated, a decision may be made to merge the two proceedings or to 
suspend one of the two proceedings. Where merger is ordered, the merged 
examination will normally result in the issuance and publication of a 
single reexamination certificate underSec. 1.997.
    (b) An inter partes reexamination proceeding filed underSec. 1.913 
which is merged with an ex parte reexamination proceeding filed under 
Sec.  1.510 will result in the merged proceeding being governed by 
Sec.Sec. 1.902 through 1.997, except that the rights of any third 
party requester of the ex parte reexamination shall be governed by 
Sec.Sec. 1.510 through 1.560.

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



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

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

[72 FR 18907, Apr. 16, 2007]



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

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

[77 FR 46629, Aug. 6, 2012]



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

    When a third party requester is involved in one or more proceedings, 
including an inter partes reexamination

[[Page 201]]

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

         Reexamination Certificate in Inter Partes Reexamination



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

    (a) To conclude an inter partes reexamination proceeding, the 
Director will issue and publish an inter partes reexamination 
certificate in accordance with 35 U.S.C. 316 setting forth the results 
of the inter partes reexamination proceeding and the content of the 
patent following the inter partes reexamination proceeding.
    (b) A certificate will be issued and published in each patent in 
which an inter partes reexamination proceeding has been ordered under 
Sec.  1.931. Any statutory disclaimer filed by the patent owner will be 
made part of the certificate.
    (c) The certificate will be sent to the patent owner at the address 
as provided for inSec. 1.33(c). A copy of the certificate will also be 
sent to the third party requester of the inter partes reexamination 
proceeding.
    (d) If a certificate has been issued and published which cancels all 
of the claims of the patent, no further Office proceedings will be 
conducted with that patent or any reissue applications or any 
reexamination requests relating thereto.
    (e) If the inter partes reexamination proceeding is terminated by 
the grant of a reissued patent as provided inSec. 1.991, the reissued 
patent will constitute the reexamination certificate required by this 
section and 35 U.S.C. 316.
    (f) A notice of the issuance of each certificate under this section 
will be published in the Official Gazette.

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



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



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



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



Sec.
3.1 Definitions.

                    Documents Eligible for Recording

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

                       Requirements for Recording

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

                        Cover Sheet Requirements

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

                                  Fees

3.41 Recording fees.

                      Date and Effect of Recording

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

                         Domestic Representative

3.61 Domestic representative.

                        Action Taken by Assignee

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

                          Issuance to Assignee

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

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

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

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

[[Page 202]]



Sec.  3.1  Definitions.

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

[69 FR 29878, May 26, 2004]

                    Documents Eligible for Recording



Sec.  3.11  Documents which will be recorded.

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

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



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

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

[64 FR 48926, Sept. 8, 1999]

                       Requirements for Recording



Sec.  3.21  Identification of patents and patent applications.

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

[[Page 203]]

mistake as to the provisional application intended.

[69 FR 29878, May 26, 2004]



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

    (a) For electronic submissions: Either a copy of the original 
document or an extract of the original document may be submitted for 
recording. All documents must be submitted as digitized images in Tagged 
Image File Format (TIFF) or another form as prescribed by the Director. 
When printed to a paper size of either 21.6 by 27.9 cm (8\1/2\ by 11 
inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible 
and a 2.5 cm (one-inch) margin must be present on all sides.
    (b) For paper or facsimile submissions: Either a copy of the 
original document or an extract of the original document must be 
submitted for recording. Only one side of each page may be used. The 
paper size must be either 21.6 by 27.9 cm (8\1/2\ by 11 inches) or 21.0 
by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin 
must be present on all sides. For paper submissions, the paper used 
should be flexible, strong white, non-shiny, and durable. The Office 
will not return recorded documents, so original documents must not be 
submitted for recording.

[69 FR 29879, May 26, 2004]



Sec.  3.25  Recording requirements for trademark applications and 
registrations.

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

[69 FR 29879, May 26, 2004]



Sec.  3.26  English language requirement.

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

[62 FR 53202, Oct. 10, 1997]



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

    Documents and cover sheets submitted by mail for recordation should 
be addressed to Mail Stop Assignment Recordation Services, Director of 
the United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, unless they are filed together with new 
applications.

[69 FR 29879, May 26, 2004]



Sec.  3.28  Requests for recording.

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

[[Page 204]]

completion, in which case the document and a completed cover sheet 
should be resubmitted.

[70 FR 56128, Sept. 26, 2005]

                        Cover Sheet Requirements



Sec.  3.31  Cover sheet content.

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

[[Page 205]]

the party receiving the interest if using an Office-provided form);
    (3) Indicate the name of each other party to the joint research 
agreement party (in the space provided for the name of the party 
conveying the interest if using an Office-provided form); and
    (4) Indicate the date the joint research agreement was executed.
    (h) The assignment cover sheet required bySec. 3.28 must contain a 
conspicuous indication of an intent to utilize the assignment as the 
required oath or declaration underSec. 1.63 of this chapter.

[57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997; 64 
FR 48927, Sept. 8, 1999; 67 FR 79523, Dec. 30, 2002; 69 FR 29879, May 
26, 2004; 70 FR 1824, Jan. 11, 2005; 70 FR 56128, Sept. 26, 2005; 73 FR 
67775, Nov. 17, 2008; 77 FR 48825, Aug. 14, 2012]



Sec.  3.34  Correction of cover sheet errors.

    (a) An error in a cover sheet recorded pursuant toSec. 3.11 will 
be corrected only if:
    (1) The error is apparent when the cover sheet is compared with the 
recorded document to which it pertains, and
    (2) A corrected cover sheet is filed for recordation.
    (b) The corrected cover sheet must be accompanied by a copy of the 
document originally submitted for recording and by the recording fee as 
set forth inSec. 3.41.

[69 FR 29879, May 26, 2004]

                                  Fees



Sec.  3.41  Recording fees.

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

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

                      Date and Effect of Recording



Sec.  3.51  Recording date.

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

[62 FR 53203, Oct. 10, 1997]



Sec.  3.54  Effect of recording.

    The recording of a document pursuant toSec. 3.11 is not a 
determination by the Office of the validity of the document or the 
effect that document has on the title to an application, a patent, or a 
registration. When necessary, the

[[Page 206]]

Office will determine what effect a document has, including whether a 
party has the authority to take an action in a matter pending before the 
Office.



Sec.  3.56  Conditional assignments.

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



Sec.  3.58  Governmental registers.

    (a) The Office will maintain a Departmental Register to record 
governmental interests required to be recorded by Executive Order 9424. 
This Departmental Register will not be open to public inspection but 
will be available for examination and inspection by duly authorized 
representatives of the Government. Governmental interests recorded on 
the Departmental Register will be available for public inspection as 
provided inSec. 1.12.
    (b) The Office will maintain a Secret Register to record 
governmental interests required to be recorded by Executive Order 9424. 
Any instrument to be recorded will be placed on this Secret Register at 
the request of the department or agency submitting the same. No 
information will be given concerning any instrument in such record or 
register, and no examination or inspection thereof or of the index 
thereto will be permitted, except on the written authority of the head 
of the department or agency which submitted the instrument and requested 
secrecy, and the approval of such authority by the Director. No 
instrument or record other than the one specified may be examined, and 
the examination must take place in the presence of a designated official 
of the Patent and Trademark Office. When the department or agency which 
submitted an instrument no longer requires secrecy with respect to that 
instrument, it must be recorded anew in the Departmental Register.

[62 FR 53203, Oct. 10, 1997]

                         Domestic Representative



Sec.  3.61  Domestic representative.

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

[67 FR 79522, Dec. 30, 2002]

                        Action Taken by Assignee



Sec.  3.71  Prosecution by assignee.

    (a) Patents--conducting of prosecution. One or more assignees as 
defined in paragraph (b) of this section may conduct prosecution of a 
national patent application as the applicant underSec. 1.46 of this 
title, or conduct prosecution of a supplemental examination or 
reexamination proceeding, to the exclusion of the inventor or previous 
applicant or patent owner. Conflicts between purported assignees are 
handled in accordance withSec. 3.73(c)(3).
    (b) Patents--assignee(s) who can prosecute. The assignee(s) who may 
conduct either the prosecution of a national application for patent as 
the applicant underSec. 1.46 of this title or a supplemental 
examination or reexamination proceeding are:
    (1) A single assignee. An assignee of the entire right, title and 
interest in the application or patent, or
    (2) Partial assignee(s) together or with inventor(s). All partial 
assignees, or all partial assignees and inventors who have not assigned 
their right, title and interest in the application or patent, who 
together own the entire right, title and interest in the application or 
patent. A partial assignee is any assignee having less than the entire 
right, title and interest in the application or patent. The word 
``assignee'' as used in this chapter means with respect to patent 
matters the single assignee of the entire right, title and interest in 
the application or patent if there is such a single assignee, or all of

[[Page 207]]

the partial assignees, or all of the partial assignee and inventors who 
have not assigned their interest in the application or patent, who 
together own the entire right, title and interest in the application or 
patent.
    (c) Patents--Becoming of record. An assignee becomes of record as 
the applicant in a national patent application underSec. 1.46 of this 
title, and in a supplemental examination or reexamination proceeding, by 
filing a statement in compliance withSec. 3.73(c) that is signed by a 
party who is authorized to act on behalf of the assignee.
    (d) Trademarks. The assignee of a trademark application or 
registration may prosecute a trademark application, submit documents to 
maintain a trademark registration, or file papers against a third party 
in reliance on the assignee's trademark application or registration, to 
the exclusion of the original applicant or previous assignee. The 
assignee must establish ownership in compliance withSec. 3.73(b).

[65 FR 54682, Sept. 8, 2000, as amended at 77 FR 48825, Aug. 14, 2012]



Sec.  3.73  Establishing right of assignee to take action.

    (a) The original applicant is presumed to be the owner of an 
application for an original patent, and any patent that may issue 
therefrom, unless there is an assignment. The original applicant is 
presumed to be the owner of a trademark application or registration, 
unless there is an assignment.
    (b) In order to request or take action in a trademark matter, the 
assignee must establish its ownership of the trademark property of 
paragraph (a) of this section to the satisfaction of the Director. The 
establishment of ownership by the assignee may be combined with the 
paper that requests or takes the action. Ownership is established by 
submitting to the Office a signed statement identifying the assignee, 
accompanied by either:
    (1) Documentary evidence of a chain of title from the original owner 
to the assignee (e.g., copy of an executed assignment). The documents 
submitted to establish ownership may be required to be recorded pursuant 
toSec. 3.11 in the assignment records of the Office as a condition to 
permitting the assignee to take action in a matter pending before the 
Office; or
    (2) A statement specifying where documentary evidence of a chain of 
title from the original owner to the assignee is recorded in the 
assignment records of the Office (e.g., reel and frame number).
    (c)(1) In order to request or take action in a patent matter, an 
assignee who is not the original applicant must establish its ownership 
of the patent property of paragraph (a) of this section to the 
satisfaction of the Director. The establishment of ownership by the 
assignee may be combined with the paper that requests or takes the 
action. Ownership is established by submitting to the Office a signed 
statement identifying the assignee, accompanied by either:
    (i) Documentary evidence of a chain of title from the original owner 
to the assignee (e.g., copy of an executed assignment). The submission 
of the documentary evidence must be accompanied by a statement affirming 
that the documentary evidence of the chain of title from the original 
owner to the assignee was or concurrently is being submitted for 
recordation pursuant toSec. 3.11; or
    (ii) A statement specifying where documentary evidence of a chain of 
title from the original owner to the assignee is recorded in the 
assignment records of the Office (e.g., reel and frame number).
    (2) If the submission is by an assignee of less than the entire 
right, title and interest (e.g., more than one assignee exists) the 
Office may refuse to accept the submission as an establishment of 
ownership unless:
    (i) Each assignee establishes the extent (by percentage) of its 
ownership interest, so as to account for the entire right, title and 
interest in the application or patent by all parties including 
inventors; or
    (ii) Each assignee submits a statement identifying the parties 
including inventors who together own the entire right, title and 
interest and stating that all the identified parties own the entire 
right, title and interest.

[[Page 208]]

    (3) If two or more purported assignees file conflicting statements 
under paragraph (c)(1) of this section, the Director will determine 
which, if any, purported assignee will be permitted to control 
prosecution of the application.
    (d) The submission establishing ownership under paragraph (b) or (c) 
of this section must show that the person signing the submission is a 
person authorized to act on behalf of the assignee by:
    (1) Including a statement that the person signing the submission is 
authorized to act on behalf of the assignee;
    (2) Being signed by a person having apparent authority to sign on 
behalf of the assignee; or
    (3) For patent matters only, being signed by a practitioner of 
record.

[77 FR 48825, Aug. 14, 2012]

                          Issuance to Assignee



Sec.  3.81  Issue of patent to assignee.

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

[69 FR 29879, May 26, 2004]



Sec.  3.85  Issue of registration to assignee.

    The certificate of registration may be issued to the assignee of the 
applicant, or in a new name of the applicant, provided that the party 
files a written request in the trademark application by the time the 
application is being prepared for issuance of the certificate of 
registration, and the appropriate document is recorded in the Office. If 
the assignment or name change document has not been recorded in the 
Office, then the written request must state that the document has been 
filed for recordation. The address of the assignee must be made of 
record in the application file.



PART 4_COMPLAINTS REGARDING INVENTION PROMOTERS--Table of Contents



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

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

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



Sec.  4.1  Complaints regarding invention promoters.

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

[[Page 209]]



Sec.  4.2  Definitions.

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



Sec.  4.3  Submitting complaints.

    (a) A person may submit a complaint concerning an invention promoter 
with the Office. A person submitting a complaint should understand that 
the complaint may be forwarded to the invention promoter and may become 
publicly available. The Office will not accept any complaint that 
requests that it be kept confidential.
    (b) A complaint must be clearly marked, or otherwise identified, as 
a complaint under these rules. The complaint must include:
    (1) The name and address of the complainant;
    (2) The name and address of the invention promoter;
    (3) The name of the customer;
    (4) The invention promotion services offered or performed by the 
invention promoter;
    (5) The name of the mass media in which the invention promoter 
advertised providing such services;
    (6) An explanation of the relationship between the customer and the 
invention promoter; and
    (7) A signature of the complainant.
    (c) The complaint should fairly summarize the action of the 
invention promoter about which the person complains. Additionally, the 
complaint should include names and addresses of persons believed to be 
associated with the invention promoter. Complaints, and any replies, 
must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box 
1450, Alexandria, Virginia 22313-1450.
    (d) Complaints that do not provide the information requested in 
paragraphs (b) and (c) of this section will be returned. If 
complainant's address is not provided, the complaint will be destroyed.
    (e) No originals of documents should be included with the complaint.
    (f) A complaint can be withdrawn by the complainant or the named 
customer at any time prior to its publication.

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



Sec.  4.4  Invention promoter reply.

    (a) If a submission appears to meet the requirements of a complaint, 
the invention promoter named in the complaint will be notified of the 
complaint and given 30 days to respond. The invention promoter's 
response will be made available to the public along with the complaint. 
If the invention promoter fails to reply within the 30-day time period 
set by the Office, the complaint will be made available to the public. 
Replies sent after the complaint is made available to the public will 
also be published.
    (b) A response must be clearly marked, or otherwise identified, as a

[[Page 210]]

response by an invention promoter. The response must contain:
    (1) The name and address of the invention promoter;
    (2) A reference to a complaint forwarded to the invention promoter 
or a complaint previously published;
    (3) The name of the individual signing the response; and
    (4) The title or authority of the individual signing the response.



Sec.  4.5  Notice by publication.

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

[68 FR 9553, Feb. 28, 2003]



Sec.  4.6  Attorneys and Agents.

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

[68 FR 14338, Mar. 25, 2003]



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



                             Secrecy Orders

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

                Licenses for Foreign Exporting and Filing

5.11 License for filing in a foreign country an application on an 
          invention made in the United States or for transmitting 
          international application.
5.12 Petition for license.
5.13 Petition for license; no corresponding application.
5.14 Petition for license; corresponding U.S. application.
5.15 Scope of license.
5.16-5.17 [Reserved]
5.18 Arms, ammunition, and implements of war.
5.19 Export of technical data.
5.20 Export of technical data relating to sensitive nuclear technology.
5.25 Petition for retroactive license.

                                 General

5.31-5.33 [Reserved]

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

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

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

                             Secrecy Orders



Sec.  5.1  Applications and correspondence involving national security.

    (a) All correspondence in connection with this part, including 
petitions, should be addressed to: Mail Stop L&R, Commissioner for 
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

[[Page 211]]

    (b) Application as used in this part includes provisional 
applications filed under 35 U.S.C. 111(b) (Sec.  1.9(a)(2) of this 
chapter), nonprovisional applications filed under 35 U.S.C. 111(a) or 
entering the national stage from an international application after 
compliance with 35 U.S.C. 371 (Sec.  1.9(a)(3)), or international 
applications filed under the Patent Cooperation Treaty prior to entering 
the national stage of processing (Sec.  1.9(b)).
    (c) Patent applications and documents relating thereto that are 
national security classified (seeSec. 1.9(i) of this chapter) and 
contain authorized national security markings (e.g., ``Confidential,'' 
``Secret'' or ``Top Secret'') are accepted by the Office. National 
security classified documents filed in the Office must be either hand-
carried to Licensing and Review or mailed to the Office in compliance 
with paragraph (a) of this section.
    (d) The applicant in a national security classified patent 
application must obtain a secrecy order pursuant toSec. 5.2(a). If a 
national security classified patent application is filed without a 
notification pursuant toSec. 5.2(a), the Office will set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant toSec. 
5.2(a), or the applicant must submit evidence of a good faith effort to 
obtain a secrecy order pursuant toSec. 5.2(a) from the relevant 
department or agency in order to prevent abandonment of the application. 
If evidence of a good faith effort to obtain a secrecy order pursuant to 
Sec.  5.2(a) from the relevant department or agency is submitted by the 
applicant within the time period set by the Office, but the application 
has not been declassified or placed under a secrecy order pursuant to 
Sec.  5.2(a), the Office will again set a time period within which 
either the application must be declassified, or the application must be 
placed under a secrecy order pursuant toSec. 5.2(a), or the applicant 
must submit evidence of a good faith effort to again obtain a secrecy 
order pursuant toSec. 5.2(a) from the relevant department or agency in 
order to prevent abandonment of the application.
    (e) An application will not be published underSec. 1.211 of this 
chapter or allowed underSec. 1.311 of this chapter if publication or 
disclosure of the application would be detrimental to national security. 
An application under national security review will not be published at 
least until six months from its filing date or three months from the 
date the application was referred to a defense agency, whichever is 
later. A national security classified patent application will not be 
published underSec. 1.211 of this chapter or allowed underSec. 1.311 
of this chapter until the application is declassified and any secrecy 
order underSec. 5.2(a) has been rescinded.
    (f) Applications on inventions made outside the United States and on 
inventions in which a U.S. Government defense agency has a property 
interest will not be made available to defense agencies.

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



Sec.  5.2  Secrecy order.

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

[[Page 212]]

hand-carried to Licensing and Review or mailed to the Office in 
compliance withSec. 5.1(a).

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



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

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

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

[43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988; 62 
FR 53203, Oct. 10, 1997; 69 FR 50002, Aug. 12, 2004; 77 FR 46629, Aug. 
6, 2012]



Sec.  5.4  Petition for rescission of secrecy order.

    (a) A petition for rescission or removal of a secrecy order may be 
filed by, or on behalf of, any principal affected thereby. Such petition 
may be in letter form, and it must be in duplicate.
    (b) The petition must recite any and all facts that purport to 
render the order ineffectual or futile if this is the basis of the 
petition. When prior publications or patents are alleged the petition 
must give complete data as to such publications or patents and should be 
accompanied by copies thereof.
    (c) The petition must identify any contract between the Government 
and any of the principals, under which the subject matter of the 
application or any significant part thereof was developed, or to which 
the subject matter is otherwise related. If there is no such contract, 
the petition must so state.
    (d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 
181, from a secrecy order cannot be taken until after a petition for 
rescission of the secrecy order has been made and denied. Appeal must be 
taken within sixty days from the date of the denial, and the party 
appealing, as well as the department or agency which caused the order to 
be issued, will be notified of the time and place of hearing.

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



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

    (a) Consent to disclosure, or to the filing of an application 
abroad, as provided in 35 U.S.C. 182, shall be made by a ``permit'' or 
``modification'' of the secrecy order.
    (b) Petitions for a permit or modification must fully recite the 
reason or purpose for the proposed disclosure. Where any proposed 
disclosee is known

[[Page 213]]

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

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



Sec.Sec. 5.6-5.8  [Reserved]

                Licenses for Foreign Exporting and Filing



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

    (a) A license from the Commissioner for Patents under 35 U.S.C. 184 
is required before filing any application for patent including any 
modifications, amendments, or supplements thereto or divisions thereof 
or for the registration of a utility model, industrial design, or model, 
in a foreign patent office or any foreign patent agency or any 
international agency other than the United States Receiving Office, if 
the invention was made in the United States and:
    (1) An application on the invention has been on file in the United 
States less than six months prior to the date on which the application 
is to be filed, or
    (2) No application on the invention has been filed in the United 
States.
    (b) The license from the Commissioner for Patents referred to in 
paragraph (a) would also authorize the export of technical data abroad 
for purposes relating to the preparation, filing or possible filing and 
prosecution of a foreign patent application without separately complying 
with the regulations contained in 22 CFR parts 121 through 130 
(International Traffic in Arms Regulations of the Department of State), 
15 CFR parts 730-774 (Regulations of the Bureau of Industry and 
Security, Department of Commerce) and 10 CFR part 810 (Foreign Atomic 
Energy Programs of the Department of Energy).
    (c) Where technical data in the form of a patent application, or in 
any form, are being exported for purposes related to the preparation, 
filing or possible filing and prosecution of a foreign patent 
application, without the license from the Commissioner for Patents 
referred to in paragraphs (a) or (b) of this section, or on an invention 
not made in the United States, the export regulations contained in 22 
CFR parts 120 through 130 (International Traffic in Arms Regulations of 
the Department of State), 15 CFR parts 730-774 (Bureau of Industry and 
Security Regulations, Department of Commerce) and 10 CFR part 810 
(Assistance to Foreign Atomic Energy Activities Regulations of the 
Department of Energy) must be complied with unless a license is not 
required because a United States application was on file at the time of 
export for at least six months without a secrecy order underSec. 5.2 
being placed thereon. The term ``exported'' means export as it is 
defined in 22 CFR part 120, 15 CFR part 734 and activities covered by 10 
CFR part 810.

[[Page 214]]

    (d) If a secrecy order has been issued underSec. 5.2, an 
application cannot be exported to, or filed in, a foreign country 
(including an international agency in a foreign country), except in 
accordance withSec. 5.5.
    (e) No license pursuant to paragraph (a) of this section is 
required:
    (1) If the invention was not made in the United States, or
    (2) If the corresponding United States application is not subject to 
a secrecy order underSec. 5.2, and was filed at least six months prior 
to the date on which the application is filed in a foreign country, or
    (3) For subsequent modifications, amendments and supplements 
containing additional subject matter to, or divisions of, a foreign 
patent application if:
    (i) A license is not, or was not, required under paragraph (e)(2) of 
this section for the foreign patent application;
    (ii) The corresponding United States application was not required to 
be made available for inspection under 35 U.S.C. 181; and
    (iii) Such modifications, amendments, and supplements do not, or did 
not, change the general nature of the invention in a manner which would 
require any corresponding United States application to be or have been 
available for inspection under 35 U.S.C. 181.
    (f) A license pursuant to paragraph (a) of this section can be 
revoked at any time upon written notification by the Patent and 
Trademark Office. An authorization to file a foreign patent application 
resulting from the passage of six months from the date of filing of a 
United States patent application may be revoked by the imposition of a 
secrecy order.

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



Sec.  5.12  Petition for license.

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

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

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



Sec.  5.13  Petition for license; no corresponding application.

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

[62 FR 53204, Oct. 10, 1997]



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

    (a) When there is a corresponding United States application on file, 
a petition for license underSec. 5.12(b) must also identify this 
application by application number, filing date, inventor, and title, but 
a copy of the material upon which the license is desired is not 
required. The subject matter licensed will be measured by the disclosure 
of the United States application.
    (b) Two or more United States applications should not be referred to 
in the same petition for license unless they are to be combined in the 
foreign or international application, in which event the petition should 
so state and the identification of each United States application should 
be in separate paragraphs.
    (c) When the application to be filed or exported abroad contains 
matter not disclosed in the United States application or applications, 
including the case where the combining of two or more United States 
applications introduces subject matter not disclosed in any of them, a 
copy of the application as it is to be filed in the foreign country or

[[Page 215]]

international application which is to be transmitted to a foreign 
international or national agency for filing in the Receiving Office, 
must be furnished with the petition. If however, all new matter in the 
foreign or international application to be filed is readily 
identifiable, the new matter may be submitted in detail and the 
remainder by reference to the pertinent United States application or 
applications.

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

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



Sec.  5.15  Scope of license.

    (a) Applications or other materials reviewed pursuant to Sec.Sec. 
5.12 through 5.14, which were not required to be made available for 
inspection by defense agencies under 35 U.S.C. 181, will be eligible for 
a license of the scope provided in this paragraph. This license permits 
subsequent modifications, amendments, and supplements containing 
additional subject matter to, or divisions of, a foreign patent 
application, if such changes to the application do not alter the general 
nature of the invention in a manner which would require the United 
States application to have been made available for inspection under 35 
U.S.C. 181. Grant of this license authorizing the export and filing of 
an application in a foreign country or the transmitting of an 
international application to any foreign patent agency or international 
patent agency when the subject matter of the foreign or international 
application corresponds to that of the domestic application. This 
license includes authority:
    (1) To export and file all duplicate and formal application papers 
in foreign countries or with international agencies;
    (2) To make amendments, modifications, and supplements, including 
divisions, changes or supporting matter consisting of the illustration, 
exemplification, comparison, or explanation of subject matter disclosed 
in the application; and
    (3) To take any action in the prosecution of the foreign or 
international application provided that the adding of subject matter or 
taking of any action under paragraphs (a)(1) or (2) of this section does 
not change the general nature of the invention disclosed in the 
application in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 by including 
technical data pertaining to:
    (i) Defense services or articles designated in the United States 
Munitions List applicable at the time of foreign filing, the unlicensed 
exportation of which is prohibited pursuant to the Arms Export Control 
Act, as amended, and 22 CFR parts 121 through 130; or
    (ii) Restricted Data, sensitive nuclear technology or technology 
useful in the production or utilization of special nuclear material or 
atomic energy, dissemination of which is subject to restrictions of the 
Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation 
Act of 1978, as implemented by the regulations for Unclassified 
Activities in Foreign Atomic Energy Programs, 10 CFR part 810, in effect 
at the time of foreign filing.
    (b) Applications or other materials which were required to be made 
available for inspection under 35 U.S.C. 181 will be eligible for a 
license of the scope provided in this paragraph. Grant of this license 
authorizes the export and filing of an application in a foreign country 
or the transmitting of an international application to any foreign 
patent agency or international patent agency. Further, this license 
includes authority to export and file all duplicate and formal papers in 
foreign countries or with foreign and international patent agencies and 
to make amendments, modifications, and supplements to, file divisions 
of, and take any action in the prosecution of the foreign or 
international application, provided subject matter additional to that 
covered by the license is not involved.
    (c) A license granted underSec. 5.12(b) pursuant toSec. 5.13 or 
Sec.  5.14 shall have the scope indicated in paragraph (a) of this 
section, if it is so specified in the license. A petition, accompanied 
by the required fee (Sec.  1.17(g) of this chapter), may also be filed 
to change a license having the scope indicated in paragraph (b) of this 
section to a license

[[Page 216]]

having the scope indicated in paragraph (a) of this section. No such 
petition will be granted if the copy of the material filed pursuant to 
Sec.  5.13 or any corresponding United States application was required 
to be made available for inspection under 35 U.S.C. 181. The change in 
the scope of a license will be effective as of the date of the grant of 
the petition.
    (d) In those cases in which no license is required to file the 
foreign application or transmit the international application, no 
license is required to file papers in connection with the prosecution of 
the foreign or international application not involving the disclosure of 
additional subject matter.
    (e) Any paper filed abroad or transmitted to an international patent 
agency following the filing of a foreign or international application 
which changes the general nature of the subject matter disclosed at the 
time of filing in a manner which would require such application to have 
been made available for inspection under 35 U.S.C. 181 or which involves 
the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii) 
of this section must be separately licensed in the same manner as a 
foreign or international application. Further, if no license has been 
granted underSec. 5.12(a) on filing the corresponding United States 
application, any paper filed abroad or with an international patent 
agency which involves the disclosure of additional subject matter must 
be licensed in the same manner as a foreign or international 
application.
    (f) Licenses separately granted in connection with two or more 
United States applications may be exercised by combining or dividing the 
disclosures, as desired, provided:
    (1) Subject matter which changes the general nature of the subject 
matter disclosed at the time of filing or which involves subject matter 
listed in paragraph (a)(3) (i) or (ii) of this section is not 
introduced, and
    (2) In the case where at least one of the licenses was obtained 
underSec. 5.12(b), additional subject matter is not introduced.
    (g) A license does not apply to acts done before the license was 
granted. SeeSec. 5.25 for petitions for retroactive licenses.

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



Sec.Sec. 5.16-5.17  [Reserved]



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

    (a) The exportation of technical data relating to arms, ammunition, 
and implements of war generally is subject to the International Traffic 
in Arms Regulations of the Department of State (22 CFR parts 120 through 
130); the articles designated as arms, ammunitions, and implements of 
war are enumerated in the U.S. Munitions List (22 CFR part 121). 
However, if a patent applicant complies with regulations issued by the 
Commissioner for Patents under 35 U.S.C. 184, no separate approval from 
the Department of State is required unless the applicant seeks to export 
technical data exceeding that used to support a patent application in a 
foreign country. This exemption from Department of State regulations is 
applicable regardless of whether a license from the Commissioner for 
Patents is required by the provisions of Sec.Sec. 5.11 and 5.12 (22 
CFR part 125).
    (b) When a patent application containing subject matter on the 
Munitions List (22 CFR part 121) is subject to a secrecy order under 
Sec.  5.2 and a petition is made underSec. 5.5 for a modification of 
the secrecy order to permit filing abroad, a separate request to the 
Department of State for authority to export classified information is 
not required (22 CFR part 125).

[62 FR 53205, Oct. 10, 1997]



Sec.  5.19  Export of technical data.

    (a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the 
Department of Commerce, a license is not required in any case to file a 
patent application or part thereof in a foreign country if the foreign 
filing is in accordance with the regulations (Sec.Sec. 5.11 through 
5.25) of the U.S. Patent and Trademark Office.

[[Page 217]]

    (b) An export license is not required for data contained in a patent 
application prepared wholly from foreign-origin technical data where 
such application is being sent to the foreign inventor to be executed 
and returned to the United States for subsequent filing in the U.S. 
Patent and Trademark Office (15 CFR 734.10(a)).

[70 FR 56129, Sept. 26, 2005]



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

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

[62 FR 53205, Oct. 10, 1997]



Sec.  5.25  Petition for retroactive license.

    (a) A petition for a retroactive license under 35 U.S.C. 184 shall 
be presented in accordance withSec. 5.13 orSec. 5.14(a), and shall 
include:
    (1) A listing of each of the foreign countries in which the 
unlicensed patent application material was filed,
    (2) The dates on which the material was filed in each country,
    (3) A verified statement (oath or declaration) containing:
    (i) An averment that the subject matter in question was not under a 
secrecy order at the time it was filed aboard, and that it is not 
currently under a secrecy order,
    (ii) A showing that the license has been diligently sought after 
discovery of the proscribed foreign filing, and
    (iii) An explanation of why the material was filed abroad through 
error without the required license underSec. 5.11 first having been 
obtained, and
    (4) The required fee (Sec.  1.17(g) of this chapter).
    (b) The explanation in paragraph (a) of this section must include a 
showing of facts rather than a mere allegation of action through error. 
The showing of facts as to the nature of the error should include 
statements by those persons having personal knowledge of the acts 
regarding filing in a foreign country and should be accompanied by 
copies of any necessary supporting documents such as letters of 
transmittal or instructions for filing. The acts which are alleged to 
constitute error should cover the period leading up to and including 
each of the proscribed foreign filings.
    (c) If a petition for a retroactive license is denied, a time period 
of not less than thirty days shall be set, during which the petition may 
be renewed. Failure to renew the petition within the set time period 
will result in a final denial of the petition. A final denial of a 
petition stands unless a petition is filed underSec. 1.181 within two 
months of the date of the denial. If the petition for a retroactive 
license is denied with respect to the invention of a pending application 
and no petition underSec. 1.181 has been filed, a final rejection of 
the application under 35 U.S.C. 185 will be made.

[49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62 
FR 53206, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004; 77 FR 48826, Aug. 
14, 2012]

                                 General



Sec.Sec. 5.31-5.33  [Reserved]



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



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



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



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

[[Page 219]]

                    INDEX I_RULES RELATING TO PATENTS

  Editorial Note: This listing is provided for informational purposes 
only. It is compiled and kept current by the Department of Commerce. 
This index is updated as of July 1, 2013.

                                                                 Section

                                 A

Abandoned applications:
Abandonment by failure to prosecute................................1.135
Abandonment during interference................................41.127(b)
Abandonment for failure to pay issue fee...........................1.316
Express abandonment................................................1.138
To avoid publication............................................1.138(c)
Referred to in issued patents.......................................1.14
Revival of.........................................................1.137
When open for public inspection.....................................1.14
Abandonment of application. (See Abandoned applications)
Abstract of the disclosure.(content, physical requirements).........1.72
Separate sheet required for commencement of..........1.52(b)(4), 1.72(b)
Arrangement in overall application...........................1.77, 1.163
Access to pending applications (limited)............................1.14
Action by applicant.............................1.111-1.116, 1.121-1.138
Address, Correspondence, only one recognized by Office...........1.33(c)
Address for notice to Director of appeal to Fed. Cir................90.2
Address of Solicitor's Office..................................1.1(a)(3)
Address of the Patent and Trademark Office...........................1.1
Mail Stop Assignment Recordation Services................1.1(a)(4), 3.27
Mail Stop Document Services....................................1.1(a)(4)
Mail Stop Ex Parte Reexam......................................1.1(c)(1)
Mail Stop Inter Partes Reexam..................................1.1(c)(2)
Mail Stop Interference..........................................41.10(b)
Mail Stop OED.............................................1.1(a)(5), 4.6
Mail Stop Patent Ext..............................................1.1(e)
Mail Stop PCT.....................................................1.1(b)
Adjustment of patent term. (See Patent term adjustment)
Administrator, executor, or other legal representative may make 
application and receive patent................................1.42, 1.43
In an international application....................................1.422
Oath or declaration.................................................1.64
Admission to practice. (See Attorneys and agents)
Affidavit (see also Oath in patent application):
After appeal....................................................41.33(d)
In support of application for reissue..............................1.175
To disqualify commonly owned patent as prior art...................1.130
To overcome cited patent or publication............................1.131
Traversing grounds of rejection....................................1.132
Agents. (See Attorneys and agents)
Allowance and issue of patent:
Amendment after allowance (before or with issue fee)...............1.312
Deferral of issuance...............................................1.314
Delivery of patent.................................................1.315
Failure to pay issue fee.................................1.137(c), 1.316

[[Page 220]]

Issuance of patent.................................................1.314
Notice of allowance................................................1.311
Patent to issue upon payment of issue fee..........................1.314
Patent to lapse if issue fee is not paid in full...................1.317
Reasons for.....................................................1.104(e)
Withdrawal from issue..............................................1.313
Amendment:
Adding or substituting claims...............................1.111, 1.121
After appeal.........................................1.116, 41.33, 41.63
After decision on appeal, based on new rejection of Patent Trial 
and Appeal Board................................................41.50(b)
After final action..........................................1.116, 41.33
After final action (transitional procedures).......................1.129
After notice of allowance..........................................1.312
By patent owner....................................................1.530
Copying claim of another application for interference.............41.202
Copying claim of issued patent....................................41.202
Deletions and insertions...........................................1.121
Drawings............................................1.84, 1.85, 1.121(d)
Manner of making...................................................1.121
May be required....................................................1.121
New matter prohibited.................................1.121(f), 1.173(a)
Numbering of claims................................................1.126
Of amendments......................................................1.121
Of claims...................................................1.111, 1.121
Of disclosure......................................................1.121
Of drawing......................................................1.121(d)
Of specification...................................................1.121
Paper and writing...................................................1.52
Petition from refusal to admit.....................................1.127
Preliminary........................................................1.115
Proposed during interference..............................41.121, 41.208
Provisional application................................1.53(c), 1.121(k)
Reexamination proceedings.........................1.121(j), 1.530, 1.941
Reissue...............................................1.121(i), 1.173(b)
Requisites of........................1.33(b), 1.111, 1.116, 1.121, 1.125
Right to amend.........................1.111, 1.114, 1.116, 1.121, 1.127
Signature to.....................................................1.33(b)
Substitute specification...........................................1.125
Time for...........................................................1.134
To applications in interference...........................41.121, 41.208
To correct inaccuracies.........................................1.121(e)
To correspond to original drawing or specification..............1.121(e)
To reissues..............................................1.121(i), 1.173
To save from abandonment...........................................1.135
America Invents Act Post-Grant Proceedings (See Inter parte review, 
post-grant review, covered business method review, and derivation 
proceeding)
Amino Acid Sequences. (See Nucleotide and/or Amino Acid Sequences)
Appeal to Patent Trial and Appeal Board:
Action following decision..........................................41.54
Affidavits after appeal.........................................41.33(d)
Brief..............................................................41.37
Decision by Board...............................................41.50(b)
Examiner's answer..................................................41.39
Fees........................................................41.20, 41.45
Hearing of.........................................................41.47
New grounds for rejecting a claim...............................41.50(b)
Notice of appeal...................................................41.31

[[Page 221]]

Reexamination, inter partes proceeding.............................1.959
Rehearing..........................................................41.52
Reopening after decision...........................................1.198
Reply brief........................................................41.41
Statement of grounds for rejecting, by Patent Trial and Appeal 
Board..............................................................41.50
Appeal to Court of Appeals for the Federal Circuit:
Fee provided by rules of court......................................90.2
From Patent Trial and Appeal Board.............................90.1-90.3
Notice and reasons of appeal........................................90.2
Reexamination, inter partes proceeding.............................1.983
Time for............................................................90.3
Applicant for patent.........................................1.42, 1.421
Change.......................................................1.46, 1.472
Deceased or legally incapacitated inventor..........1.43, 1.64(b), 1.422
Executor or administrator...........................................1.43
Informed of application number...................................1.54(b)
Joint changed to sole........................................1.48, 1.472
Letters for, sent to attorney or agent...........................1.33(a)
May be represented by patent practitioner...........................1.31
Must be represented by patent practitioner if juristic entity.......1.31
Personal attendance unnecessary......................................1.2
Required to conduct business with decorum and courtesy...............1.3
Required to report assistance received............................1.4(g)
Sole changed to another sole..............................1.48, 1.497(d)
Sole changed to joint.....................................1.48, 1.497(d)
Application data sheet..............................................1.76
Application for patent (see also Abandoned applications, Claims, 
Drawing, Examination of application Reissues, Provisional applications, 
Specification):
Access to...........................................................1.14
Acknowledgement of filing........................................1.54(b)
Alteration after execution.......................................1.52(c)
Alteration before execution......................................1.52(c)
Applicant...........................................................1.42
Application number and filing date..................................1.54
Arrangement...........................................1.77, 1.154, 1.163
Continuation or division, reexecution not required...............1.63(d)
Continued Prosecution Application (CPA), Design..................1.53(d)
Copies of, furnished to applicants...............................1.59(c)
Cross-references of related applications............................1.78
Deceased or legally incapacitated inventor....................1.43, 1.64
International phase................................................1.422
Declaration in lieu of oath.........................................1.68
Duty of disclosure..................................................1.56
Elements of, order and arrangement of.................1.77, 1.154, 1.163
Filed apparently without all figures of drawing:
Petition asserting all figures of drawing were filed.............1.53(e)
Petition and filing of missing figures seeking new filing date.....1.182
Filed apparently without all pages of specification, petition 
asserting all pages were filed...................................1.53(e)
Filed apparently without any drawing, petition asserting drawing 
was filed, or was not necessary, or adding drawing and seeking new 
filing date......................................................1.53(e)
Filed by other than inventor............................1.42, 1.43, 1.46
International phase......................................1.421(c), 1.422
Filing and national fees..............................1.16, 1.445, 1.492
Filing date.........................................................1.53
International application.......................................1.431(b)

[[Page 222]]

Foreign language oath or declaration................................1.69
Formulas and tables.................................................1.58
General requisites..................................................1.51
Identification required in letters concerning........................1.5
Incomplete application not forwarded for examination................1.53
Interlineations, etc., to be indicated........................1.52(c)(1)
Language, paper, writing, margin....................................1.52
Later filing of oath and filing fee..............................1.53(f)
Must be made by actual inventor, with exceptions........1.42, 1.46, 1.64
Names of all inventors required...............................1.41, 1.53
Non-English language......................................1.52(b)(1)(ii)
Nonprovisional filed without at least one claim, filing of 
petition to convert to a provisional application..............1.53(c)(2)
Nonprovisional application forwarded for examination only when 
complete............................................................1.53
Owned by Government.............................................1.103(f)
Papers forming part of original disclosure not to be expunged 
                                                              1.59(a)(2)
Parts filed separately..............................................1.54
Parts of application desirably filed together.......................1.54
Parts of complete application.......................................1.51
Processing fees.....................................................1.17
Provisional application............1.9(a)(2), 1.51(c), 1.53(c), 1.121(k)
Publication. (See Publication of applications)
Relating to atomic energy........................................1.14(d)
Reservation for future application not permitted....................1.79
Secrecy order....................................................5.1-5.5
Tables and formulas.................................................1.58
To be made to Director of the U.S. Patent and Trademark Office......1.51
To claim one independent and distinct invention....................1.141
Two or more by same party with conflicting claims................1.78(e)
Application number..............................1.5(a), 1.53(a), 1.54(b)
Application size fee....................................1.16(s), 1.52(f)
Arbitration award filing...........................................1.335
Arbitration in interference.......................................41.126
Assertion of micro entity status....................................1.29
Assertion of small entity status.................................1.27(c)
Assignee:
Correspondence held with assignee of entire interest..........3.71, 3.73
Establishing ownership...........................................3.73(b)
If of entire interest, patent may issue to....................1.46, 3.81
If of undivided part interest, correspondence will be held with 
inventor............................................................1.33
If of undivided part interest, must assent to application for 
reissue of patent..................................................1.172
If of undivided part interest, patent may issue jointly.......1.46, 3.81
May conduct prosecution of application........................3.71, 3.73
May take action in interference.....................................41.9
Assignments and recording:
Abstracts of title, fee for......................................1.19(b)
Conditional assignments.............................................3.56
Correction of Cover Sheet errors....................................3.34
Cover Sheet required..........................................3.28, 3.31
Date of receipt is date of record...................................3.51
Effect of recording.................................................3.54
Fees.......................................................1.21(h), 3.41
If recorded before payment of issue fee, patent may issue to 
assignee............................................................3.81
Impact on entitlement to micro entity status........................1.29

[[Page 223]]

Impact on entitlement to small entity status........................1.27
May serve as inventor?s oath or declaration......................1.63(e)
Must be recorded in Patent and Trademark Office to issue patent to 
assignee............................................................3.81
Must identify patent or application.................................3.21
Orders for copies of................................................1.12
Patent may issue to assignee........................................3.81
Recording of assignments............................................3.11
Records open to public inspection...................................1.12
Requirements for recording.....................................3.21-3.41
What will be accepted for recording.................................3.11
Atomic energy applications reported to Department of Energy.........1.14
Attorneys and agents:
Acting in a representative capacity...........................1.33, 1.34
Assignment will not operate as a revocation of power................1.36
Certificate of good standing..................................1.21(a)(4)
Fee on admission.................................................1.21(a)
Office cannot aid in selection of...................................1.31
Personal interviews with examiners.................................1.133
Power of attorney...................................................1.32
Representation in international application........................1.455
Representative capacity.......................................1.33, 1.34
Required to conduct business with decorum and courtesy...............1.3
Revocation of power..............................................1.36(a)
Withdrawal of..............................................1.36(b), 41.5
Authorization of agents. (See Attorneys and agents)
Award in arbitration...............................................1.335

                                 B

Balance in deposit account..........................................1.25
Basic filing fee....................................................1.16
Basic national fee.................................................1.492
Benefit of earlier application......................................1.78
Bill in equity. (See Civil action)
Biological material. (See Deposit of Biological material)
Board of Patent Appeals and Interferences (renamed as Patent Trial and 
Appeal Board). (See Appeal to Patent Trial and Appeal BoardPatent Trial 
and Appeal Board, Inter Partes Review, Post-Grant Review, Derivation 
Proceeding, Patent Trial Practice and Procedure, and Interferences)
Briefs:
In petitions to Director...........................................1.181
On appeal to Patent Trial and Appeal Board.........................41.37
Business to be conducted with decorum and courtesy...................1.3
Business to be transacted in writing.................................1.2

                                 C

Certificate of correction...................................1.322, 1.323
Fee..............................................................1.20(a)
Mistakes not corrected.............................................1.325
Certificate of mailing (as first class mail) or transmission.........1.8
Certificate, reexamination.........................................1.570
Certified copies of records, papers, etc....................1.4(f), 1.13
Fee for certification............................................1.19(b)
Chemical and mathematical formulas and tables.......................1.58
Citation of prior art in patent....................................1.501
Citation of references by examiner..............................1.104(d)

[[Page 224]]

Civil action...................................................90.1-90.3
Claims (see also Examination of applications):
Amendment of.......................................................1.121
Conflicting, same applicant or owner................................1.78
Date of invention of...............................................1.110
Dependent...........................................................1.75
Design patent......................................................1.153
In an international application....................................1.436
May be in dependent form............................................1.75
More than one permitted.............................................1.75
Multiple dependent..................................................1.75
Must conform to invention and specification.........................1.75
Notice of rejection of.............................................1.104
Numbering of.......................................................1.126
Part of complete application........................................1.51
Plant patent.......................................................1.164
Rejection of....................................................1.104(c)
Required............................................................1.75
Separate Sheet required for commencement of claim(s)....1.52(b), 1.75(h)
Twice or finally rejected before appeal.........................41.31(a)
Classification of application suggested by applicant..........1.76(b)(3)
Color drawing.................................................1.84(a)(2)
Color photographs.............................................1.84(b)(2)
Commissioner of Patents and Trademarks. (See Director of the USPTO)
Common Ownership, statement by assignee may be required.............1.78
Compact disc submissions:
Computer program listings...........................................1.96
Requirements.....................................................1.52(e)
Sequence listings...............................................1.821(c)
Tables..............................................................1.58
Complaints against examiners, how presented..........................1.3
Composition of matter, specimens of ingredients may be required.....1.93
Computer program listings...........................................1.96
Concurrent office proceedings......................................1.565
Conduct of ex parte reexamination proceedings......................1.550
Conflicting claims, same applicant or owner in two or more 
applications........................................................1.78
Continued examination, request for.................................1.114
Continued Prosecution Application (CPA), Design..................1.53(d)
Continuing application for invention disclosed and claimed in 
prior application................................................1.53(b)
Copies of patents, published applications, records, etc......1.11, 1.12, 
                                                                    1.13
Copies of records, fees....................................1.19(b), 1.59
Copyright notice in drawings.....................................1.84(s)
Copyright notice in specification................................1.71(d)
Corrected publication of application...............................1.221
Correction, certificate of..................................1.322, 1.323
Correction of inventorship...................................1.48, 1.324
Correspondence:
Address, only one recognized.....................................1.33(c)
Addresses for non-trademark correspondence...........................1.1
Business with the Office to be transacted by.........................1.2
Discourteous communications not entered..............................1.3
Double, with different parties in interest not allowed..............1.33
Facsimile transmissions...........................................1.6(d)
Held with attorney or agent.........................................1.33
Identification of application or patent in letter relating to........1.5
Involving national security..........................................5.1

[[Page 225]]

May be held exclusively with assignee of entire interest............3.71
Nature of............................................................1.4
Patent owners in reexamination...................................1.33(c)
Receipt of letters and papers........................................1.6
Rules for conducting in general..................................1.1-1.8
Separate letter for each subject or inquiry.......................1.4(c)
Signature requirements............................................1.4(d)
When no attorney or agent...........................................1.33
With attorney or agent after power or authorization is filed........1.33
Court of Appeals for the Federal Circuit, appeal to. (See Appeal to 
Court of Appeals for the Federal Circuit)
CPA (Continued Prosecution Application), Design..................1.53(d)
Credit card payment.................................................1.23
Customer Number:
Defined.......................................................1.32(a)(5)
Required to establish a Fee Address.............................1.363(c)
Covered Business Method Patent Review. (See also Patent Trial Practice 
and Procedure; Post-Grant Review):
General....................................................42.300-42.304
Procedure; pendency...............................................42.300
Definitions.......................................................42.301
Who may petition..................................................42.302
Time for filing...................................................42.303
Content of petition...............................................42.304

                                 D

Date of invention of subject matter of individual claims...........1.110
Day for taking any action or paying any fee falling on Saturday, 
Sunday, or Federal holiday...................................1.7, 1.9(h)
Daytime telephone number.........................................1.33(a)
Death or legal incapacitation of inventor...........................1.43
In an international application....................................1.422
Decision on appeal by the Patent Trial and Appeal Board............41.50
Action following decision..........................................41.54
Declaration (See also Oath in patent application).
Foreign language....................................................1.69
In lieu of oath.....................................................1.68
In patent application...............................................1.68
Requirements to enter the U.S. national phase......................1.497
Deferral of examination............................................1.103
Definitions:
Applicant...........................................................1.42
Assignment...........................................................3.1
Customer Number...............................................1.32(a)(5)
Document.............................................................3.1
Effective filing date of a claimed invention.......................1.109
Federal holiday within the District of Columbia...................1.9(h)
Inventorship................................................1.9(d), 1.41
Joint Research Agreement..........................................1.9(e)
Micro entity........................................................1.29
National and international applications..............................1.9
National security classified......................................1.9(i)
Nonprofit organization(for small entity purposes).............1.27(a)(3)
Nonprovisional application.....................................1.9(a)(3)
Paper.............................................................1.9(k)
Person (for small entity purposes)............................1.27(a)(1)
Power of attorney.............................................1.32(a)(2)

[[Page 226]]

Principal.....................................................1.32(a)(3)
Provisional application........................................1.9(a)(2)
Published application.............................................1.9(c)
Recorded document....................................................3.1
Revocation....................................................1.32(a)(4)
Service of process.....................................15 C.F.R. Part 15
Small business concern (for small entity purposes)............1.27(a)(2)
Small entity.....................................................1.27(a)
Terms under Patent Cooperation Treaty..............................1.401
Delivery of patent.................................................1.315
Deposit accounts....................................................1.25
Fees.............................................................1.21(b)
Deposit of computer program listings................................1.96
Deposit of biological material:
Acceptable depository..............................................1.803
Biological material................................................1.801
Examination procedures.............................................1.809
Furnishing of samples..............................................1.808
Need or Opportunity to make a deposit..............................1.802
Replacement or supplemental deposit................................1.805
Term of deposit....................................................1.806
Time of making original deposit....................................1.804
Viability of deposit...............................................1.807
Depositions (See also Testimony in interferences):
Certificate of officer to accompany............................41.157(e)
Formalities to be observed in preparing...........................41.157
Person before whom taken..........................................41.157
Description of invention. (See Specification)
Design Patent Applications:
Arrangement of specification.......................................1.154
Claim...........................................................1.153(a)
Description.....................................................1.153(a)
Drawing............................................................1.152
Expedited Examination..............................................1.155
Filing fee.......................................................1.16(b)
Issue fee........................................................1.18(b)
Oath............................................................1.153(b)
Rules applicable...................................................1.151
Title...........................................................1.153(a)
Determination of request for ex parte reexamination................1.515
Derivation Proceeding (See also Patent Trial Practice and Procedure)
General....................................................42.400-42.407
Procedure; pendency...............................................42.400
Definitions.......................................................42.401
Who may petition..................................................42.402
Time for filing...................................................42.403
Derivation Fee.............................................42.15, 42.404
Content of petition...............................................42.405
Service of petition...............................................42.406
Filing date.......................................................42.407
Institution of derivation proceeding..............................42.408
After Institution..........................................42.409-42.412
Settlement agreement..............................................42.409
Arbitration.......................................................42.410
Common interests in the invention.................................42.411
Public availability of Board records..............................42.412
Director of the USPTO (See also Petition to the Director):
Address of...........................................................1.1

[[Page 227]]

Availability of decisions by........................................1.14
Cases decided by Board reopened only by............................1.198
Initiates ex parte reexamination...................................1.520
Disclaimer, statutory:
During interference............................................41.127(b)
Fee..............................................................1.20(d)
Requirements of....................................................1.321
Terminal...........................................................1.321
Discovery in interferences........................................41.150
Division. (See Restriction of application)
Division of patent on reissue......................................1.177
Document supply fees................................................1.19
Drawing:
Amendment of....................................................1.121(d)
Annotated drawings..............................................1.121(d)
Arrangement of views.............................................1.84(i)
Arrows...........................................................1.84(r)
Character of lines...............................................1.84(l)
Color.........................................................1.84(a)(2)
Content of drawing..................................................1.83
Conventional features............................................1.83(a)
Copyright notice.................................................1.84(s)
Correction....................................1.84(w), 1.85(c), 1.121(d)
Cost of copies of...................................................1.19
Description, brief and detailed.....................................1.74
Design application.................................................1.152
Figure for front page................................1.76(b)(3), 1.84(j)
Filed with application..............................................1.81
Graphics.........................................................1.84(d)
Hatching and shading.............................................1.84(m)
Holes............................................................1.84(x)
Identification...................................................1.84(c)
If of an improvement, must show connection with old structure....1.83(b)
In international applications......................................1.437
Ink...........................................................1.84(a)(1)
Lead lines.......................................................1.84(q)
Legends..........................................................1.84(o)
Letters..........................................................1.84(p)
Location of names................................................1.84(c)
Margin...........................................................1.84(g)
Mask work notice.................................................1.84(s)
Must show every feature of the invention.........................1.83(a)
No return or release.............................................1.85(b)
Numbering of sheets..............................................1.84(t)
Numbering of views...............................................1.84(u)
Numbers..........................................................1.84(p)
Original should be retained by applicant.........................1.81(a)
Paper............................................................1.84(e)
Part of application papers.......................................1.52(b)
Photographs......................................................1.84(b)
Plant patent application.....................................1.81, 1.165
Printed and published by the Office when patented...................1.84
Reference letters, numerals, and characters................1.74, 1.84(p)
Reissue......................................................1.173(a)(2)
Release not permitted............................................1.85(b)
Replacement drawings............................................1.121(d)
Required by law when necessary for understanding....................1.81
Scale............................................................1.84(k)

[[Page 228]]

Security markings................................................1.84(v)
Shading..........................................................1.84(m)
Size of sheet....................................................1.84(f)
Standards for drawings..............................................1.84
Symbols..........................................................1.84(n)
Views............................................................1.84(h)
When necessary, part of complete application........................1.51
Duplicate copies..................................................1.4(b)
Duty of disclosure....................................1.56, 1.555, 1.933
Patent term extension..............................................1.765

                                 E

Early publication of application...................................1.219
Eighteen-month publication of applications. (See Publication of 
applications)
Election of species................................................1.146
Electronic documents.............................................1.52(e)
Application size fee....................................1.16(s), 1.52(f)
Non-electronic filing fee........................................1.16(t)
Electronic filing of application...................1.6(a)(4), 1.52(a)(5)
Establishing micro entity status....................................1.29
Establishing small entity status..............................1.27, 1.28
Evidence. (See Testimony in interferences)
Ex parte reexamination. (See Reexamination)
Examination of applications:
Advancement of examination.........................................1.102
As to form...................................................1.104(a)(1)
Citation of references..........................................1.104(d)
Completeness of examiner's action...............................1.104(b)
Deferral of........................................................1.103
Examiner's action...............................................1.104(a)
International-type search....................................1.104(a)(3)
Nature of examination...........................................1.104(a)
Prioritized examination.........................................1.102(e)
Reasons for allowance...........................................1.104(e)
Reconsideration after rejection if requested.......................1.111
Reissue............................................................1.176
Rejection of claims.............................................1.104(c)
Request for continued examination(RCE).............................1.114
Requirement for information by examiner............................1.105
Suspension of action by the Office.................................1.103
Examiners:
Answers on appeal..................................................41.39
Complaints against...................................................1.3
Interviews with.............................................1.133, 1.560
Executors..............................................1.42, 1.64, 1.422
Exhibits. (See Models and exhibits)
Expedited examination of design applications.......................1.155
Export of technical data......................................5.19, 5.20
Express abandonment................................................1.138
To avoid publication............................................1.138(c)
Express mail........................................................1.10
Date of receipt of...................................................1.6
Petition in regard to...............................................1.10
Expungement of information..........................................1.59
Extension of patent term. (See also Patent term adjustment):
Due to examination delay under the URAA (35 U.S.C. 154)............1.701
Due to regulatory review period (35 U.S.C. 156):

[[Page 229]]

Applicant for......................................................1.730
Application for....................................................1.740
Calculation of term:
Animal Drug Product................................................1.778
Food or color additive.............................................1.776
Human drug product.................................................1.775
Medical device.....................................................1.777
Veterinary biological product......................................1.779
Certificate........................................................1.780
Conditions for.....................................................1.720
Determination of eligibility.......................................1.750
Duty of disclosure.................................................1.765
Filing date of application.........................................1.741
Formal requirements................................................1.740
Incomplete application.............................................1.741
Interim extension...........................................1.760, 1.790
Multiple applications..............................................1.785
Patents subject to.................................................1.710
Signature requirements for application.............................1.730
Withdrawal of application..........................................1.770
Extension of time..................................................1.136
Fees.............................................................1.17(a)
Interference proceedings............................................41.4
Reexamination proceedings.......................................1.550(c)

                                 F

Facsimile transmissions......................................1.6(d), 1.8
Federal Holiday, time for taking action......................1.7, 1.9(h)
Federal Register, publication of rules in..........................1.351
Fees and payment of money:
Credit card......................................................1.23(b)
Deposit account.....................................................1.25
Document supply fees................................................1.19
Extension of time................................................1.17(a)
Fee on appeal to the Court of Appeals for the Federal Circuit 
provided by rules of court..........................................90.2
Fees payable in advance..........................................1.22(a)
Foreign filing license petition..................................1.17(g)
For international-type search report.............................1.21(e)
Itemization required.............................................1.22(b)
Method of payment...................................................1.23
Money by mail at risk of sender..................................1.23(a)
Money paid by mistake or in excess..................................1.26
Necessary for application to be complete............................1.51
Petition fees.................................1.17(g), 1.17(h), 41.20(a)
Prioritized examination..........................................1.17(c)
Processing fees..................................................1.17(i)
Publication of application.............................1.18(d), 1.211(e)
Reexamination request............................................1.20(c)
Refunds.......................................................1.26, 1.28
Relating to international applications......................1.445, 1.492
Schedule of fees and charges...................................1.16-1.21
Files open to the public......................................1.11, 1.14
Filing date of application..........................................1.53
Filing, search and examination fees.................................1.16
Filing of interference settlement agreements......................41.205
Final rejection:

[[Page 230]]

Appeal from........................................................41.31
Response to...................................1.113, 1.114, 1.116, 1.129
When and how given.................................................1.113
First Class Mail.....................................................1.8
Foreign application.................................................1.55
License to file................................................5.11-5.25
Foreign country:
Taking oath in......................................................1.66
Taking testimony in.......................................41.156, 41.157
Foreign mask work protection....................................Part 150
Evaluation of request..............................................150.4
Definition.........................................................150.1
Duration of proclamation...........................................150.5
Initiation of evaluation...........................................150.2
Mailing address....................................................150.6
Submission of requests.............................................150.3
Formulas and tables in patent applications..........................1.58
Fraud practiced or attempted on Office.......1.27(h), 1.56, 1.555, 1.765
Freedom of Information Act......................................Part 102

                                 G

Gazette. (See Official Gazette)
General authorization to charge deposit account.....................1.25
General information and correspondence.....................1.1-1.8, 1.10
Government acquisition of foreign patent rights.................Part 501
Government employee invention...................................Part 501
Government interest in patent, recording of.......3.11, 3.31, 3.41, 3.58
Governmental registers..............................................3.58

                                 H

Hearings:
Before the Patent Trial and Appeal Board...........................41.47
Fee for appeal hearing.............................................41.20
In disciplinary proceedings.......................................11. 44
Of motions in interferences.......................................41.124
Holiday, time for action expiring on............................1.6, 1.7

                                 I

Identification of application, patent or registration................1.5
Incorporation by Reference..........................................1.57
Information disclosure statement:
At time of filing application....................................1.51(d)
Content of..........................................................1.98
Not permitted in provisional applications........................1.51(d)
Reexamination...............................................1.555, 1.902
To comply with duty of disclosure...................................1.97
Information, Public.............................................Part 102
Inter partes reexamination. (See Reexamination)
Interferences. (See also Depositions, Notice, Statement in 
interferences, Testimony in interferences):
Abandonment of the contest.....................................41.127(b)
Access to applications............................................41.109
Action by examiner after interference.............................41.127
Addition of new party by judge....................................41.203
Amendment during..........................................41.121, 41.208
Appeal to the Court of Appeals for the Federal Circuit.........90.1-90.3

[[Page 231]]

Applicant requests................................................41.202
Arbitration.......................................................41.126
Burden of proof................................................41.121(b)
Civil action...................................................90.1-90.3
Concession of priority.........................................41.127(b)
Correspondence.....................................................41.10
Decision on motions...............................................41.125
Declaration of interference.......................................41.203
Definition................................................41.100, 41.201
Disclaimer to avoid interference...............................41.127(b)
Discovery.........................................................41.150
Extensions of time..................................................41.4
Identifying claim from patent.....................................41.202
In what cases declared............................................41.203
Inspection of cases of opposing parties...........................41.109
Interference with a patent........................................41.202
Judgment..........................................................41.127
Junior party fails to overcome filing date of senior party........41.204
Jurisdiction of interference......................................41.103
Manner of service of papers.......................................41.106
Motions...........................................41.121, 41.155, 41.208
Notice and access to applications of opposing parties.............41.109
Notice of basis for relief................................41.120, 41.204
Notice of reexamination, reissue, protest or litigation.............41.8
Notice to file civil action.........................................90.2
Oral argument.....................................................41.124
Ownership of applications or patents involved.....................41.206
Petitions...........................................................41.3
Preparation for...................................................41.202
Priority statement................................................41.204
Prosecution by assignee.............................................41.9
Recommendation by Patent Trial and Appeal Board...................41.127
Record and exhibits.......................................41.106, 41.154
Records of, when open to public...............................1.11, 41.6
Reissue filed by patentee during..................................41.203
Request by applicant..............................................41.202
Return of unauthorized papers.....................................41.128
Review of decision by civil action.............................90.1-90.3
Same party........................................................41.206
Sanctions for failure to comply with rules or order...............41.128
Sanctions for taking and maintaining a frivolous position.........41.128
Secrecy order cases...............................................5.3(b)
Service of papers.................................................41.106
Status of claims of defeated applicant after interference.........41.127
Statutory disclaimer by patentee during........................41.127(b)
Suggestion of claims for interference.............................41.202
Suspension of other proceedings...................................41.103
Testimony copies..................................................41.157
Time period for completion........................................41.200
Times for discovery and taking testimony..........41.150, 41.156, 41.157
Translation of document in foreign language.......................41.154
International application. (See Patent Cooperation Treaty)
International Bureau...............................................1.415
International Preliminary Examining Authority, United States as....1.416
International Searching Authority, United States as................1.413
Interview summary..................................................1.133
Interviews with examiner....................................1.133, 1.560
Inter Partes Review. (See also Patent Trial Practice and Procedure):

[[Page 232]]

General....................................................42.100-42.107
Procedure; pendency...............................................42.100
Who may petition..................................................42.101
Time for filing...................................................42.102
Fee........................................................42.15, 42.103
Content of petition...............................................42.104
Service of petition...............................................42.105
Filing date.......................................................42.106
Preliminary response..............................................42.107
Instituting a review..............................................42.108
After Institution..........................................42.120-42.123
Patent owner response.............................................42.120
Motion to amend...................................................42.121
Mulitple proceedings; joinder.....................................42.122
Supplemental information..........................................42.123
Invention promotors:
Complaints regarding.............................................4.1-4.6
Publication of.............................................4.1, 4.3, 4.5
Reply to.............................................................4.4
Submission of........................................................4.3
Withdrawal of........................................................4.4
Definition...........................................................4.2
Inventor (see also Oath in patent application):
Death or legal incapacity of........................................1.43
In international application......................................1.422,
May apply for patent................................................1.42
Unavailable or refuses to sign application..........................1.64
Inventor's certificate priority benefit.............................1.55
Inventorship and date of invention of the subject matter of 
individual claims..................................................1.110
Issue fee...........................................................1.18
Issue of patent. (See Allowance and issue of patent)
                                 J

Joinder of inventions in one application.....................1.141-1.146
Joint inventors........................1.45, 1.47, 1.48, 1.324, 1.421(b)
Joint patent to inventor and assignee.........................1.46, 3.81
Jurisdiction:
After decision by Patent Trial and Appeal Board.............1.197, 1.198
After notice of allowance...................................1.312, 1.313
Of involved files in contested case...............................41.103

                                 L

Lapsed patents..............................................1.137, 1.317
Legal representative of deceased or incapacitated inventor...1.42, 1.43, 
                                                                    1.64
In international application.......................................1.422
Legal Processes.................................................Part 104
Legibility of papers which are to become part of the permanent 
Office records...................................................1.52(a)
Letters to the Office. (See Correspondence)
Library service fee..............................................1.19(c)
License and assignment of government interest in patent......3.11, 3.31, 
                                                                    3.41
License for foreign filing.....................................5.11-5.15
List of U.S. Patents classified in a subclass, cost of...........1.19(d)
Local delivery box rental........................................1.21(d)
Lost files.........................................................1.251

[[Page 233]]

                                 M

Mail Stops
Mail Stop Assignment Recordation Services................1.1(a)(4), 3.27
Mail Stop Document Services....................................1.1(a)(4)
Mail Stop Ex parte Reexam......................................1.1(c)(1)
Mail Stop Inter partes Reexam..................................1.1(c)(2)
Mail Stop Interference..........................................41.10(b)
Mail Stop OED.............................................1.1(a)(5), 4.6
Mail Stop Patent Ext..............................................1.1(e)
Mail Stop PCT..........................1.1(b), 1.417, 1.434(a), 1.480(b)
Maintenance fees.............................................1.20(e)-(i)
Acceptance of delayed payment of...................................1.378
Address for payments and correspondence...........................1.1(d)
Fee address for....................................................1.363
Review of decision refusing to accept..............................1.377
Submission of......................................................1.366
Time for payment of................................................1.362
Mask work notice in specification................................1.71(d)
Mask work notice on drawing......................................1.84(s)
Mask work protection, foreign...................................Part 150
Microorganisms. (See Deposit of Biological Material)
Minimum balance in deposit accounts.................................1.25
Misjoinder of inventor.............................1.48, 1.324, 1.497(d)
Missing pages when application filed
Petition alleging there were no missing pages....................1.53(e)
Petition with new oath or declaration and later submission of 
missing pages seeking new filing date..............................1.182
Mistake in patent, certificate thereof issued...............1.322, 1.323
Models and exhibits:
Copies of...........................................................1.95
Disposal unless return arrangements made............................1.94
In contested cases................................................41.154
May be required if deemed necessary in examination of application 
                                                                 1.91(b)
Model not generally admitted as part of application or patent.......1.91
Not to be taken from the Office except in custody of sworn 
employee............................................................1.95
Return of...........................................................1.94
Working model may be required....................................1.91(b)
Money. (See Fees and payment of money)
Motions in interference...........................41.121, 41.155, 41.208
To take testimony in foreign country......................41.156, 41.157

                                 N

Name of applicant...................................................1.41
New matter inadmissible in application.................1.53(b), 1.121(f)
New matter inadmissible in reexamination..............1.530(d), 1.552(b)
New matter inadmissible in reissue.................................1.173
Non-English language specification fee...........................1.17(i)
Nonprofit organization:
Definition (for small entity purposes)........................1.27(a)(3)
Nonpublication request.............................................1.213
Notice:
Of allowance of application........................................1.311
Of appeal to the Court of Appeals for the Federal Circuit......90.1-90.3
Of arbitration award...............................................1.335

[[Page 234]]

Of defective reexamination request..............................1.510(c)
Of interference...........................................41.101, 41.203
Of oral hearings on appeals before Board of Patent Appeals and 
Interference.......................................................41.47
Of rejection of an application..................................1.104(a)
Nucleotide and/or Amino Acid Sequences:
Amendments to......................................................1.825
Disclosure in patent application...................................1.821
Form and format for computer readable form.........................1.824
Format for sequence data...........................................1.822
Replacement of.....................................................1.825
Requirements.......................................................1.823
Submission on compact disc............................1.52, 1.821, 1.823

                                 O

Oath or declaration (inventor?s) in patent application:
Assignment may serve as..........................................1.63(e)
Apostilles..........................................................1.66
Before whom taken in foreign countries..............................1.66
Before whom taken in the United States..............................1.66
By administrator or executor..................1.42, 1.63, 1.64, 1.497(b)
Certificate of Officer administering................................1.66
Continuation-in-part.............................................1.63(e)
Declaration in lieu of oath.........................................1.68
Foreign language....................................................1.69
Identification of specification to which it is directed.............1.63
International application, National Stage..........................1.497
Inventor's Certificate..............................................1.63
Made by inventor........................................1.41, 1.63, 1.64
Officers authorized to administer oaths.............................1.66
Part of complete application........................................1.51
Person making.................................................1.63, 1.64
Plant patent application...........................................1.162
Requirements of.....................................................1.63
Ribboned to other papers............................................1.66
Sealed..............................................................1.66
Signature to.......................................1.4, 1.63, 1.64, 1.67
Substitute Statement................................................1.64
Supplemental........................................................1.67
To acknowledge duty of disclosure...................................1.63
When taken abroad to seal all papers................................1.66
Oath or declaration in reissue application..................1.172, 1.175
Object of the invention.............................................1.73
Office action time for reply.......................................1.134
Office fees. (See Fees and payment of money)
Official action, based exclusively upon the written record...........1.2
Official business, should be transacted in writing...................1.2
Official Gazette:
Amendments to rules published in...................................1.351
Announces request for reexamination................1.11(c), 1.525, 1.904
Notice of filing application to nonsigning inventor.................1.47
Notice of issuance of ex parte reexamination certificate........1.570(f)
Notice of issuance of inter partes reexamination certificate.......1.997
Service of notices in.............................................41.101
Oral statements......................................................1.2
Order to reexamine.................................................1.525
Ownership, statement establishing by assignee....................3.73(b)

[[Page 235]]

                                 P

Paper, definition of..............................................1.9(k)
Papers (requirements to become part of Office permanent records) 
                                                                    1.52
Handwritten, no longer permitted.................................1.52(a)
Papers not received on Saturday, Sunday or holidays..................1.6
Patent application. (See Application for patent and Provisional patent 
applications)
Patent application publication. (See Published application)
Patent attorneys and agents. (See Attorneys and agents)
Patent Cooperation Treaty:
Amendments and corrections during international processing.........1.471
Amendments during international preliminary examination............1.485
Applicant for international application............................1.421
Changes in person, name and address, where filed.........1.421(f), 1.472
Commencement of the national stage..............................1.491(a)
Conduct of international preliminary examination...................1.484
Definition of terms................................................1.401
Delays in meeting time limits......................................1.468
Demand for international preliminary examination...................1.480
Designation of States..............................................1.432
Election of States..............................................1.480(d)
Entry into national stage................................1.491(b), 1.495
Examination at national stage......................................1.496
Fees:
Due within one month of filing international application........1.431(c)
Failure to pay results in withdrawal of application......1.431(d), 1.432
Filing and processing fees.........................................1.445
International preliminary examination.......................1.481, 1.482
National stage.....................................................1.492
Refunds............................................1.26, 1.446, 1.480(c)
Filing by other than inventor............................1.421(c), 1.422
International application requirements.............................1.431
Abstract...........................................................1.438
Claims.............................................................1.436
Description........................................................1.435
Drawings...........................................................1.437
Physical requirements..............................................1.433
Request............................................................1.434
International Bureau...............................................1.415
Inventor deceased...........................................1.422, 1.497
Inventor insane or legally incapacitated...........................1.497
Inventors, joint.........................................1.421(b), 1.497
Inventorship, correction in national phase......................1.497(d)
National stage examination.........................................1.496
Oath or declaration at national stage..............................1.497
Priority, claim for.........................................1.451, 1.452
Record copy to International Bureau, Transmittal procedures........1.461
Representation by attorney or agent................................1.455
Time limits for processing applications.....................1.465, 1.468
Translation:
Of international application for U.S. national phase...............1.495
Of publication of international application for provisional rights
                                                                   1.417
United States as:
Designated or Elected Office.......................................1.414
International Preliminary Examining Authority......................1.416
International Searching Authority..................................1.413

[[Page 236]]

Receiving Office...................................................1.412
Unity of invention:
Before International Searching Authority....................1.475, 1.476
Before International Preliminary Examining Authority...............1.488
National stage..............................................1.475, 1.499
Protest to lack of..........................................1.477, 1.489
Withdrawal of international application, designations, priority 
claims, demands and elections.........................1.421(g), 1.431(d)
Patent term adjustment due to examination delay..............1.702-1.705
Application for....................................................1.705
Determination......................................................1.705
Grounds for........................................................1.702
Period of adjustment...............................................1.703
Reduction of period of adjustment..................................1.704
Patent term extension due to examination delay.....................1.701
Patent term extension due to regulatory review period. (See Extension of 
patent term due to regulatory review period (35 U.S.C. 156))
Patentee notified of interference.........................41.101, 41.203
Patents. (see also Allowance and issue of Patent):
Available for license or sale, publication of notice.............1.21(i)
Certified copies of.................................................1.13
Correction of errors in.......................1.171, 1.322, 1.323, 1.324
Delivery of........................................................1.315
Disclaimer.........................................................1.321
Identification required in letters concerning........................1.5
Lapsed, for nonpayment of issue fee.........................1.137, 1.317
Obtainable by civil action.....................................90.1-90.3
Price of copies.....................................................1.19
Records of, open to public..........................................1.11
Reissuing of, when defective.................................1.171-1.178
Payment of fees.....................................................1.23
Person, definition for small entity purposes..................1.27(a)(1)
Personal attendance unnecessary......................................1.2
Petition for reissue........................................1.171, 1.172
Patent Trial and Appeal Board. (See Appeal to Patent Trial and Appeal 
BoardPatent Trial and Appeal Board, Inter Partes Review, Post-Grant 
Review, Derivation Proceeding, Patent Trial Practice and Procedure, and 
Interferences)
Patent Trial Practice and Procedure (see also inter partes review, post-
grant review, covered business method patent review, and derivation 
proceeding)
General.......................................................42.1-42.14
Policy..............................................................42.1
Definitions.........................................................42.2
Jurisdiction........................................................42.3
Notice of trial.....................................................42.4
Conduct of the proceeding...........................................42.5
Filing of documents, including exhibits; service....................42.6
Management of the record............................................42.7
Mandatory notices...................................................42.8
 Action by patent owner.............................................42.9
Counsel............................................................42.10
 Duty of candor....................................................42.11
 Sanctions.........................................................42.12
 Citation of authority.............................................42.13
 Public availability...............................................42.14
Fees...............................................................42.15
Petition and Motion Practice.................................42.20-42.25
General............................................................42.20

[[Page 237]]

Notice of basis for relief.........................................42.21
Content of petitions and motions...................................42.22
Oppositions and replies............................................42.23
Page limits for petitions, motions, oppositions and replies........42.24
Default filing times...............................................42.25
Testimony and Production.....................................42.51-42.65
Discovery..........................................................42.51
Compelling testimony and production................................42.52
Taking testimony...................................................42.53
Protective order...................................................42.54
Confidential information in a petition.............................42.55
Expungement of confidential information............................42.56
Admissibility......................................................42.61
Applicability of the Federal Rules of Evidence.....................42.62
Form of evidence...................................................42.63
Objection; motion to exclude; motion in limine.....................42.64
Expert testimony; tests and data...................................42.65
Oral Argument, Decision, and Settlement.........................42.70-74
Oral argument......................................................42.70
Decision on petitions or motions...................................42.71
Termination of trial...............................................42.72
Judgment...........................................................42.73
Settlement.........................................................42.74
Certificate........................................................42.80
Petition to the Director:
Fees................................................................1.17
For delayed payment of issue fee...................................1.137
For license for foreign filing......................................5.12
For the revival of an abandoned application........................1.137
From formal objections or requirements......................1.113, 1.181
From requirement for restriction............................1.129, 1.144
General requirements...............................................1.181
In interferences....................................................41.3
In reexamination................................................1.515(c)
On refusal of examiner to admit amendment..........................1.127
Petition to accept an unintentionally delayed claim for domestic 
priority............................................................1.78
 Petition to accept an unintentionally delayed claim for foreign 
priority............................................................1.55
Questions not specifically provided for............................1.182
Suspension of rules................................................1.183
To exercise supervisory authority..................................1.181
To make special....................................................1.102
Plant patent applications:
Applicant....................................................1.42, 1.162
Claim..............................................................1.164
Declaration........................................................1.162
Description........................................................1.162
Drawings...........................................................1.165
Examination........................................................1.167
Fee for copies......................................................1.19
Filing fee.......................................................1.16(c)
Issue fee........................................................1.18(c)
Latin named genus and species....................1.76(b)(3), 1.163(c)(4)
Oath...............................................................1.162
Rules applicable...................................................1.161
Specification......................................................1.163
Specimens..........................................................1.166

[[Page 238]]

Post issuance fees..................................................1.20
Post Office receipt as filing date..................................1.10
Postal emergency or interruption.............................1.10(g)-(i)
Post-Grant Review. (See also Patent Trial Practice and Procedure):
General....................................................42.200-42.207
Procedure; pendency...............................................42.200
Who may petition..................................................42.201
Time for filing...................................................42.202
Fee........................................................42.15, 42.203
Content of petition...............................................42.204
Service of petition...............................................42.205
Filing date.......................................................42.206
Preliminary response..............................................42.207
Instituting a review..............................................42.208
After Institution..........................................42.220-42.224
Patent owner response.............................................42.220
Motion to amend...................................................42.221
Mulitple proceedings; joinder.....................................42.222
Supplemental information..........................................42.223
Discovery.........................................................42.224
Power of attorney. (See Attorneys and agents)
Preliminary amendments.............................................1.115
Preserved in confidence, applications.........................1.12, 1.14
Exceptions (status, access or copies available).....................1.14
Prior art citation in patent files.................................1.501
Prior art statement:
Content of..........................................................1.98
In reexamination............................................1.555, 1.933
To comply with duty of disclosure...................................1.97
Prior art submission by third party:
In patent application..............................................1.290
In patent file.....................................................1.501
In protest against pending unpublished application.................1.291
Prior Invention, affidavit or declaration of, to overcome 
rejection..........................................................1.131
Prior public disclosure, affidavit or declaration of, to overcome 
rejection..........................................................1.130
Prioritized examination.........................................1.102(e)
Priority, international applications...............................1.451
Priority, right of, under treaty or law.............................1.55
Priority statement in interferences:
Contents of.......................................................41.204
Correction of statement on motion.................................41.120
Effect of statement...............................................41.204
Failure to file...................................................41.204
In case of motion to amend interference...........................41.208
May be amended if defective.......................................41.120
Reliance on prior application.....................................41.204
Requirement for...................................................41.204
Service on opposing parties.......................................41.204
When opened to inspection.........................................41.204
Proclamation as to protection of foreign mask works.............Part 150
Protests to grant of patent........................................1.291
Provisional patent applications:
Claiming the benefit of.............................................1.78
Converting a nonprovisional to a provisional..................1.53(c)(2)
Converting a provisional to a nonprovisional..................1.53(c)(3)
Filing date.........................................................1.53
Filing fee.......................................................1.16(d)

[[Page 239]]

General requisites...............................................1.51(c)
Later filing of filing fee and cover sheet.......................1.53(g)
Names of all inventors required............................1.41, 1.53(c)
No right of priority..........................................1.53(c)(4)
No examination...................................................1.53(i)
Papers concerning, must identify provisional applications as such, 
and by application number.........................................1.5(f)
Parts of complete provisional application........................1.51(c)
Processing fees..................................................1.17(i)
Revival of.........................................................1.137
When abandoned...................................................1.53(i)
Public information..............................................Part 102
Fee..............................................................1.17(j)
Publication:
Of reexamination certificate..........................1.570(f), 1.997(f)
Publication of application.........................................1.211
Early publication..................................................1.219
Express abandonment to avoid publication........................1.138(c)
Fee.................................................................1.18
Nonpublication request.............................................1.213
Publication of redacted copy.......................................1.217
Republication......................................................1.221
Voluntary publication..............................................1.221
Published application
Access to.....................................................1.11, 1.14
Certified copies....................................................1.13
Contents...........................................................1.215
Definition........................................................1.9(c)
Records of, open to public....................................1.11, 1.12
Republication of...................................................1.221
Third party submission in..........................................1.290

                                 R

RCE (Request for continued examination)............................1.114
Reasons for allowance...........................................1.104(e)
Reconsideration of Office action...................................1.112
Reconstruction of lost files.......................................1.251
Recording of assignments. (See Assignments and recording)
Records of the Patent and Trademark Office.....................1.11-1.15
Redacted publication of application................................1.217
Reexamination:
Amendments, manner of making....................................1.121(c)
Announcement in Official Gazette.................................1.11(c)
Correction of inventorship.........................................1.530
Correspondence address...........................................1.33(c)
Ex parte proceedings
Amendments, manner of making..............................1.21(j), 1.530
Appeal to Board....................................................41.31
Appeal to C.A.F.C..............................................90.1-90.3
Civil action under 35 U.S.C. 145...............................90.1-90.3
Concurrent with interference, reissue, other reexamination, 
litigation or office proceedings(s)................................1.565
Conduct of.........................................................1.550
Duty of disclosure in..............................................1.555
Examiner's determination to grant or refuse request for............1.515
Extensions of time..............................................1.550(c)
Initiated by the Director..........................................1.520

[[Page 240]]

Interviews in......................................................1.560
Issuance of certificate at conclusion of...........................1.570
Order for reexamination by examiner................................1.525
Patent owner's statement....................................1.530, 1.540
Processing of prior art citations during...........................1.502
Reply to patent owner's statement to third party requester........1.535, 
                                                                   1.540
Request for........................................................1.510
Scope of...........................................................1.552
Service of papers..................................................1.248
Examiner's action..................................................1.104
Fee..............................................................1.20(c)
Fee charged to deposit account......................................1.25
Identification in letter..........................................1.5(d)
Inter partes proceedings.......................................1.902-907
Amendments, manner of making......................1.121(j), 1.530, 1.941
Appeal to Board....................................................41.61
Appeal to C.A.F.C..................................................1.983
Civil action under 35 U.S.C. 145 not available.................90.1-90.3
Concurrent with interference, reissue, other reexamination, 
litigation or office proceedings(s).........................1.565, 1.985
Conduct of.........................................................1.937
Duty of disclosure in.......................................1.555, 1.933
Examiner's determination to grant or refuse request for......1.923-1.927
Extensions of time.................................................1.956
Filing date of request for.........................................1.919
Issuance of certificate at conclusion of...........................1.997
Merged with concurrent reexamination proceedings...................1.989
Merged with reissue application....................................1.991
Notice of, in the Official Gazette.................................1.904
Persons eligible to file request for...............................1.903
Processing of prior art citations during...........................1.902
Scope of...........................................................1.906
Service of papers...........................................1.248, 1.903
Submission of papers by the public.................................1.905
Subsequent requests for............................................1.907
Suspension due to concurrent interference..........................1.993
Suspension due to litigation.......................................1.987
Information Disclosure Statements............................1.98, 1.555
Open to public...................................................1.11(d)
Reconsideration before final action................................1.112
Refund of fee.......................................................1.26
Reply to action....................................................1.111
Revival of termination examination.................................1.137
Reference characters in drawings...........................1.74, 1.84(p)
References cited on examination.................................1.104(d)
Refund of money paid by mistake.....................................1.26
Refund of international application filing and processing fees.....1.446
Register of Government interest in patents..........................3.58
Rehearing:
Of appeal decisions by Patent Trial and Appeal Board...............41.52
Request for, time for appeal after action on........................90.3
Reissues:
Amendments.........................................................1.173
Applicants, assignees..............................................1.172
Application for reissue............................................1.171
Application made and sworn to by inventor, if living...............1.172
Declaration........................................................1.175
Drawings........................................1.173(a)(2), 1.173(b)(3)

[[Page 241]]

Examination of reissue.............................................1.176
Filed during interference.................................41.202, 41.203
Filing during reexamination.................................1.565, 1.985
Filing fee..........................................................1.16
Filing of announced in Official Gazette..........................1.11(b)
Grounds for and requirements....................1.171-1.173, 1.175-1.178
Issue fee........................................................1.18(a)
Oath...............................................................1.175
Open to public......................................................1.11
Original claims subject to reexamination...........................1.176
Original patent surrendered........................................1.178
Reissue in divisions...............................................1.177
Restriction........................................................1.176
Specification......................................................1.173
Take precedence in order of examination............................1.176
To contain no new matter........................................1.173(a)
What must accompany application.............................1.171, 1.172
Rejection:
After two rejections appeal may be taken from examiner to Board of 
Appeals.....................................................1.191, 41.31
Applicant will be notified of rejection with reasons and 
references...................................................1.104(a)(2)
Examiner may rely on admissions by applicant or patent owner, or 
facts within examiner's knowledge............................1.104(c)(3)
Final..............................................................1.113
Formal objections..................................................1.104
On account of invention shown by others but not claimed, how 
overcome...........................................................1.131
References will be cited........................................1.104(c)
Requisites of notice of............................................1.104
Reply brief........................................................41.41
Reply by applicant or patent owner.................................1.111
Reply by requester..........................................1.535, 1.947
Representative capacity..........................................1.34(a)
Request for continued examination(RCE).............................1.114
Request for reconsideration........................................1.112
Request for ex parte reexamination.................................1.510
Request for inter partes reexamination.......................1.913-1.927
Requirement for information........................................1.105
Reservation clauses not permitted...................................1.79
Response time to Office action.....................................1.134
Restriction of application...................................1.141-1.146
Claims to nonelected invention withdrawn...........................1.142
Constructive election..............................................1.145
Petition from requirements for..............................1.129, 1.144
Provisional election...............................................1.143
Reconsideration of requirement.....................................1.143
Reissue............................................................1.176
Requirement for....................................................1.142
Subsequent presentation of claims for different invention..........1.145
Transitional procedures............................................1.129
Return of correspondence..........................................1.5(a)
Revival of abandoned application, terminated reexamination 
proceeding, or lapsed patent.......................................1.137
Unavoidable abandonment fee......................................1.17(l)
Unintentional abandonment fee....................................1.17(m)
Revocation of power of attorney or authorization of agent........1.36(a)
Rules of Practice:
Amendments to rules will be published..............................1.351

[[Page 242]]

                                 S

Saturday, when last day falls on.............................1.7, 1.9(h)
Scope of reexamination proceedings..........................1.552, 1.906
Secrecy order....................................................5.1-5.5
Serial number of application (see also Application Number)....1.5, 1.53, 
                                                                 1.54(b)
Service of notices:
For taking testimony..............................................41.157
In contested cases................................................41.101
Of appeal to the Court of Appeals for the Federal Circuit......90.1-90.3
Service of papers..................................................1.248
Shortened period for reply.........................................1.134
Signature:
Handwritten....................................................1.4(d)(1)
Implicit certifications....................................1.4(d), 11.18
S-Signature....................................................1.4(d)(2)
To a written assertion of small entity status.................1.27(c)(2)
To amendments and other papers...................................1.33(b)
To an application for extension of patent term.....................1.730
To express abandonment.............................................1.138
To oath.............................................................1.63
To reissue oath or declaration.....................................1.172
When copy is acceptable..............................................1.4
Small business concern:
Definition (for small entity purposes)........................1.27(a)(2)
Small entity:
Definition.......................................................1.27(a)
License to Federal Agency.....................................1.27(a)(4)
Status establishment..........................................1.27, 1.28
Status update..............................................1.27(g), 1.28
Written assertion................................................1.27(c)
Solicitor's address............................................1.1(a)(3)
Species of invention claimed................................1.141, 1.146
Specification (see also Application for patent, Claims):
Abstract............................................................1.72
Amendments to...............................................1.121, 1.125
Arrangement of........................................1.77, 1.154, 1.163
Best mode...........................................................1.71
Claim...............................................................1.75
Contents of....................................................1.71-1.75
Copyright notice.................................................1.71(d)
Cross-references to other applications..............................1.78
Description of the invention........................................1.71
If defective, reissue to correct.............................1.171-1.178
Mask work notice.................................................1.71(d)
Must conclude with specific and distinct claim......................1.75
Must point out new improvements specifically........................1.71
Must refer by figures to drawings...................................1.74
Must set forth the precise invention................................1.71
Object of the invention.............................................1.73
Order of arrangement in framing.....................................1.77
Paper, writing, margins.............................................1.52
Paragraph numbering...........................................1.52(b)(6)
Part of complete application........................................1.51
Reference to drawings...............................................1.74
Requirements of................................................1.71-1.75
Reservation clauses not permitted...................................1.79
Substitute.........................................................1.125

[[Page 243]]

Summary of the invention............................................1.73
Title of the invention..............................................1.72
To be rewritten, if necessary......................................1.125
Specimens. (See Models and exhibits)
Specimens of composition of matter to be furnished when required 
                                                                    1.93
Specimens of plants................................................1.166
Statutory disclaimer fee.........................................1.20(d)
Sufficient funds in deposit account.................................1.25
Suit in equity. (See Civil action)
Summary of invention................................................1.73
Sunday, when last day falls on...............................1.7. 1.9(h)
Supervisory authority, petition to Director to exercise............1.181
Supplemental oath/declaration.......................................1.67
Supplemental Examination of Patents:
Conclusion of......................................................1.625
Conduct of.........................................................1.620
Content of request................................................1.610.
Filing of papers in supplemental examination.......................1.601
Format of papers filed.............................................1.615
Procedure after conclusion.........................................1.625
Publication of certificate.........................................1.625
Surcharge for oath or basic filing fee filed after filing date 
                                                        1.16(f), 1.53(f)
Suspension of action by Office.....................................1.103
CPA, Design.....................................................1.103(b)
Deferral of examination.........................................1.103(d)
For cause.......................................................1.103(a)
RCE.............................................................1.103(c)
Suspension of ex parte prosecution during interference............41.103
Suspension of rules................................................1.183
Symbols for drawings.............................................1.84(n)
Symbols for nucleotide and/or amino acid sequence data.............1.822

                                 T

Tables in patent applications.......................................1.58
Technological Invention...........................................42.301
Terminal disclaimer................................................1.321
Testimony by Office employees.........................15 C.F.R. Part 15a
Testimony in interferences:
Additional time for taking..........................................41.4
Assignment of times for taking....................................41.157
Certification and filing by officer...............................41.157
Copies of.........................................................41.157
Depositions must be filed.........................................41.157
Discovery.........................................................41.150
Effect of errors and irregularities in deposition.........41.155, 41.157
Evidence must comply with rules...................................41.152
Examination of witnesses..........................................41.157
Form of deposition................................................41.157
Formal objections to......................................41.155, 41.157
Formalities in preparing depositions..............................41.157
In foreign countries......................................41.156, 41.157
Manner of taking testimony of witnesses...........................41.157
Notice of examination of witnesses................................41.157
Objections noted in depositions...........................41.155, 41.157
Objections to formal matters..............................41.155, 41.157
Officer's certificate.............................................41.157
Persons before whom depositions may be taken......................41.157

[[Page 244]]

Service of notice.................................................41.157
Stipulations or agreements concerning.............................41.157
Taken by depositions..............................................41.157
Time for taking...................................................41.157
Third-party submission in published application....................1.290
Time expiring on Saturday, Sunday, or holiday................1.7, 1.9(h)
Time for payment of issue fee......................................1.311
Time for reply by applicant.................................1.134, 1.136
Time for reply by patent owner..............................1.530, 1.945
Time for reply by requester.................................1.535, 1.947
Time for reply to Office action.............................1.134, 1.136
Time, periods of.....................................................1.7
Timely filing of correspondence................................1.8, 1.10
Title of invention..................................................1.72
Title reports, fee for........................................1.19(b)(4)
Transitional procedures............................................1.129

                                 U

Unavoidable abandonment............................................1.137
Unavoidable delay in reexamination.................1.550(e)(1), 1.958(a)
Unintentional abandonment..........................................1.137
Unintentional delay in reexamination...............1.550(e)(2), 1.958(b)
United States as:
Designated Office..................................................1.414
Elected Office.....................................................1.414
International Preliminary Examining Authority......................1.416
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unlocatable files..................................................1.251
Unsigned continuation or divisional application...............1.53, 1.63
Use of file of parent application................................1.53(d)

                                 V

Voluntary publication of application...............................1.221

                                 W

Waiver of confidentiality.....................................1.53(d)(6)
Withdrawal from issue..............................................1.313
Withdrawal of attorney or agent.....................................1.36

[[Page 245]]









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



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



TRADEMARKS--Table of Contents





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



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

         Representation by Attorneys or Other Authorized Persons

2.11 Applicants may be represented by an attorney.
2.12-2.16 [Reserved]
2.17 Recognition for representation.
2.18 Correspondence, with whom held.
2.19 Revocation or withdrawal of attorney.

                              Declarations

2.20 Declarations in lieu of oaths.

                      Application for Registration

2.21 Requirements for receiving a filing date.
2.22 Filing requirements for a TEAS Plus application.
2.23 Additional requirements for TEAS Plus application.
2.24 Designation and revocation of domestic representative by foreign 
          applicant.
2.25 Documents not returnable.
2.27 Pending trademark application index; access to applications.

                         The Written Application

2.31 [Reserved]
2.32 Requirements for a complete application.
2.33 Verified statement.
2.34 Bases for filing.
2.35 Adding, deleting, or substituting bases.
2.36 Identification of prior registrations.
2.37 Description of mark.
2.38 Use by predecessor or by related companies.
2.39 [Reserved]
2.41 Proof of distinctiveness under section 2(f).
2.42 Concurrent use.
2.43 Service mark.
2.44 Collective mark.
2.45 Certification mark.
2.46 Principal Register.
2.47 Supplemental Register.
2.48 Office does not issue duplicate registrations.

                                 Drawing

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

                                Specimens

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

           Examination of Application and Action by Applicants

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

                        Amendment of Application

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

                    Publication and Post Publication

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

                             Classification

2.85 Classification schedules.
2.86 Application may include multiple classes.
2.87 Dividing an application.

[[Page 246]]

                        Post Notice of Allowance

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

              Interferences and Concurrent Use Proceedings

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

                               Opposition

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

                              Cancellation

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

                  Procedure in Inter Partes Proceedings

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

                                 Appeals

2.141 Ex parte appeals from action of trademark examining attorney.
2.142 Time and manner of ex parte appeals.
2.144 Reconsideration of decision on ex parte appeal.
2.145 Appeal to court and civil action.

                  Petitions and Action by the Director

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

                               Certificate

2.151 Certificate.

             Publication of Marks Registered Under 1905 Act

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

           Reregistration of Marks Registered Under Prior Acts

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

 Cancellation for Failure To File Affidavit or Declaration During Sixth 
                                  Year

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

                Affidavit or Declaration Under Section 15

2.167 Affidavit or declaration under section 15.
2.168 Affidavit or declaration under section 15 combined with affidavit 
          or declaration under sections 8 or 71, or with renewal 
          application.

                 Correction, Disclaimer, Surrender, Etc.

2.171 New certificate on change of ownership.
2.172 Surrender for cancellation.
2.173 Amendment of registration.

[[Page 247]]

2.174 Correction of Office mistake.
2.175 Correction of mistake by owner.
2.176 Consideration of above matters.

                            Term and Renewal

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

        General Information and Correspondence in Trademark Cases

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

     Trademark Records and Files of the Patent and Trademark Office

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

              Fees and Payment of Money in Trademark Cases

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

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

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

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



Sec.  2.1  [Reserved]



Sec.  2.2  Definitions.

    (a) The Act as used in this part means the Trademark Act of 1946, 60 
Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.
    (b) Entity as used in this part includes both natural and juristic 
persons.
    (c) Director as used in this chapter, except for part 11, means the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
    (d) Federal holiday within the District of Columbia means any day, 
except Saturdays and Sundays, when the United States Patent and 
Trademark Office is officially closed for business for the entire day.
    (e) The term Office means the United States Patent and Trademark 
Office.
    (f) The acronym TEAS means the Trademark Electronic Application 
System, available online at http://www.uspto.gov.
    (g) The acronym ESTTA means the Electronic System for Trademark 
Trials and Appeals, available at www.uspto.gov.
    (h) The term international application means an application for 
international registration that is filed under the Protocol Relating to 
the Madrid Agreement Concerning the International Registration of Marks.

[54 FR 37588, Sept. 11, 1989, as amended at 68 FR 48289, Aug. 13, 2003; 
68 FR 55762, Sept. 26, 2003; 73 FR 47685, Aug. 14, 2008; 78 FR 20197, 
Apr. 3, 2013]



Sec.  2.6  Trademark fees.

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

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

[[Page 248]]

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

    (b) Trademark service fees.

(1) For printed copy of registered mark, copy only. Service includes 
preparation of copies by the Office within two to three business days 
and delivery by United States Postal Service; and preparation of copies 
by the Office within one business day of receipt and delivery to an 
Office Box or by electronic means (e.g., facsimile, electronic mail)-- 
                                                                   $3.00
(2) Certified or uncertified copy of trademark application as filed 
processed within seven calendar days--............................$15.00
(3) Certified or uncertified copy of a trademark-related official 
record--..........................................................$50.00

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

(i) Regular service...............................................$15.00
(ii) Expedited local service......................................$30.00
(5) Certified or uncertified copy of trademark records, per document 
except as otherwise provided in this section......................$25.00
(6) For recording each trademark assignment, agreement or other document 
relating to the property in a registration or application
(i) First property in a document..................................$40.00
(ii) For each additional property in the same document............$25.00
(7) For assignment records, abstract of title and certification, per 
registration......................................................$25.00
(8) Marginal cost, paid in advance, for each hour of terminal session 
time, including print time, using X-Search capabilities, prorated for 
the actual time used. The Director may waive the payment by an 
individual for access to X-Search upon a showing of need or hardship, 
and if such waiver is in the public interest......................$40.00
(9) Self-service copy charge, per page.............................$0.25
(10) Labor charges for services, per hour or fraction thereof.....$40.00
(11) For items and services that the Director finds may be supplied, for 
which fees are not specified by statute or by this part, such charges as 
may be determined by the Director with respect to each such item or 
service......................................................Actual Cost
(12) For processing each payment refused (including a check returned 
``unpaid'') or charged back by a financial institution............$50.00
(13) Deposit accounts:
(i) For establishing a deposit account............................$10.00
(ii) Service charge for each month when the balance at the end of the 
month is below $1,000.............................................$25.00

[56 FR 65155, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991, as amended at 
57 FR 38196, Aug. 21, 1992; 59 FR 257, Jan. 4, 1994; 60 FR 41023, Aug. 
11, 1995; 62 FR 40453, July 29, 1997; 64 FR 48918, Sept. 8, 1999; 64 FR 
67486, Dec. 2, 1999; 64 FR 67777, Dec. 3, 1999; 67 FR 79522, Dec. 30, 
2002; 67 FR 70850, Nov. 27, 2002; 68 FR 48289, Aug. 13, 2003; 70 FR 
2953, Jan. 19, 2005; 70 FR 38773, July 6, 2005; 73 FR 67767, Nov. 17, 
2008]



Sec.  2.7  Fastener recordal fees.

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

[61 FR 55223, Oct. 25, 1996]

         Representation by Attorneys or Other Authorized Persons

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

[[Page 249]]



Sec.  2.11  Applicants may be represented by an attorney.

    Representation before the Office is governed bySec. 11.14 of this 
chapter. The Office cannot aid in the selection of an attorney.

[73 FR 47685, Aug. 14, 2008]



Sec.Sec. 2.12-2.16  [Reserved]



Sec.  2.17  Recognition for representation.

    (a) Authority to practice in trademark cases. Only an individual 
qualified to practice underSec. 11.14 of this chapter may represent an 
applicant, registrant, or party to a proceeding before the Office in a 
trademark case.
    (b)(1) Recognition of practitioner as representative. To be 
recognized as a representative in a trademark case, a practitioner 
qualified underSec. 11.14 of this chapter may:
    (i) File a power of attorney that meets the requirements of 
paragraph (c) of this section;
    (ii) Sign a document on behalf of an applicant, registrant, or party 
to a proceeding who is not already represented by a practitioner 
qualified underSec. 11.14 of this chapter from a different firm; or
    (iii) Appear in person on behalf of an applicant, registrant, or 
party to a proceeding who is not already represented by a practitioner 
qualified underSec. 11.14 of this chapter from a different firm.
    (2) Signature as certificate of authorization to represent. When a 
practitioner qualified underSec. 11.14 of this chapter appears in 
person or signs a document pursuant to paragraph (b) of this section, 
his or her personal appearance or signature shall constitute a 
representation to the Office that he or she is authorized to represent 
the person or entity on whose behalf he or she acts. The Office may 
require further proof of authority to act in a representative capacity.
    (c) Requirements for power of attorney. A power of attorney must:
    (1) Designate by name at least one practitioner meeting the 
requirements ofSec. 11.14 of this chapter; and
    (2) Be signed by the individual applicant, registrant, or party to a 
proceeding pending before the Office, or by someone with legal authority 
to bind the applicant, registrant, or party (e.g., a corporate officer 
or general partner of a partnership). In the case of joint applicants or 
joint registrants, all must sign. Once the applicant, registrant, or 
party has designated a practitioner(s) qualified to practice underSec. 
11.14 of this chapter, that practitioner may sign an associate power of 
attorney appointing another qualified practitioner(s) as an additional 
person(s) authorized to represent the applicant, registrant, or party. 
If the applicant, registrant, or party revokes the original power of 
attorney (Sec.  2.19(a)), the revocation discharges any associate power 
signed by the practitioner whose power has been revoked. If the 
practitioner who signed an associate power withdraws (Sec.  2.19(b)), 
the withdrawal discharges any associate power signed by the withdrawing 
practitioner upon acceptance of the request for withdrawal by the 
Office.
    (d) Power of attorney relating to multiple applications or 
registrations. (1) The owner of an application or registration may 
appoint a practitioner(s) qualified to practice underSec. 11.14 of 
this chapter for up to twenty applications or registrations that have 
the identical owner name and attorney through TEAS.
    (2) The owner of an application or registration may file a power of 
attorney that relates to more than one trademark application or 
registration, or to all existing and future applications and 
registrations of that owner, on paper. A person relying on such a power 
of attorney must:
    (i) Include a copy of the previously filed power of attorney; or
    (ii) Refer to the power of attorney, specifying the filing date of 
the previously filed power of attorney; the application serial number 
(if known), registration number, or inter partes proceeding number for 
which the original power of attorney was filed; and the name of the 
person who signed the power of attorney; or, if the application serial 
number is not known, submit a copy of the application or a copy of the 
mark, and specify the filing date.
    (e) Canadian attorneys and agents. (1) A Canadian patent agent who 
is registered and in good standing as a patent agent underSec. 11.6(c) 
may represent

[[Page 250]]

parties located in Canada before the Office in trademark matters.
    (2) A Canadian attorney or agent who is registered or in good 
standing with the Canadian Intellectual Property Office, but not 
registered as a patent agent underSec. 11.6(c), may represent parties 
located in Canada if he or she has been authorized to do so by the 
Director of the Office of Enrollment and Discipline, pursuant toSec. 
11.14(f) of this chapter.
    (f) Non-lawyers. A non-lawyer may not act as a representative except 
in the limited circumstances set forth inSec. 11.14(b) of this 
chapter. Before any non-lawyer who meets the requirements ofSec. 
11.14(b) of this chapter may take action of any kind with respect to an 
application, registration or proceeding, a written authorization must be 
filed, signed by the applicant, registrant, or party to the proceeding, 
or by someone with legal authority to bind the applicant, registrant, or 
party (e.g., a corporate officer or general partner of a partnership).
    (g) Duration of power of attorney. (1) For purposes of recognition 
as a representative, the Office considers a power of attorney filed 
while an application is pending to end when the mark registers, when 
ownership changes, or when the application is abandoned.
    (2) The Office considers a power of attorney filed after 
registration to end when the mark is cancelled or expired, or when 
ownership changes. If the power was filed in connection with an 
affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, renewal 
application under section 9 of the Act, or request for amendment or 
correction under section 7 of the Act, the power is deemed to end upon 
acceptance or final rejection of the filing.

[74 FR 54906, Oct. 26, 2009]



Sec.  2.18  Correspondence, with whom held.

    (a) Establishing the correspondence address. (1) If a written power 
of attorney that meets the requirements ofSec. 2.17 is filed, the 
Office will send correspondence to the practitioner designated in the 
power.
    (2) If a practitioner qualified underSec. 11.14 of this chapter 
transmits a document(s) on behalf of an applicant, registrant, or party 
to a proceeding who is not already represented by another qualified 
practitioner from a different firm, the Office will send correspondence 
to the practitioner transmitting the documents.
    (3) If an application, registration or proceeding is not being 
prosecuted by a practitioner qualified underSec. 11.14 of this chapter 
and the applicant, registrant, or party to the proceeding designates a 
correspondence address in writing, the Office will send correspondence 
to the designated address if appropriate.
    (4) If an application, registration or proceeding is not being 
prosecuted by a practitioner qualified underSec. 11.14 of this chapter 
and the applicant, registrant, or party to the proceeding has not 
designated a correspondence address in writing, but a domestic 
representative has been appointed, the Office will send correspondence 
to the domestic representative if appropriate.
    (5) If the application, registration or proceeding is not being 
prosecuted by a practitioner qualified underSec. 11.14 of this 
chapter, the applicant, registrant, or party to the proceeding has not 
designated a correspondence address, and no domestic representative has 
been appointed, the Office will send correspondence directly to the 
applicant, registrant, or party to the proceeding.
    (6) The Office will send correspondence to only one address in an ex 
parte matter.
    (7) Once the Office has recognized a practitioner qualified under 
Sec.  11.14 of this chapter as the representative of an applicant or 
registrant, the Office will communicate and conduct business only with 
that practitioner, or with another qualified practitioner from the same 
firm. The Office will not conduct business directly with the applicant 
or registrant, or with another practitioner from a different firm, 
unless the applicant or registrant files a revocation of the power of 
attorney underSec. 2.19(a), and/or a new power of attorney that meets 
the requirements ofSec. 2.17(c). A written request to change the 
correspondence address does not revoke a power of attorney.

[[Page 251]]

    (b) Changing the correspondence address. (1) If a physical or e-mail 
correspondence address changes, the applicant, registrant, or party to a 
proceeding must file a written request to change the correspondence 
address. The request should be promptly filed.
    (2) A request to change the correspondence address must be made in 
writing, signed by the applicant, registrant, or party to a proceeding, 
someone with legal authority to bind the applicant, registrant, or party 
(e.g., a corporate officer or general partner of a partnership), or a 
practitioner qualified to practice underSec. 11.14 of this chapter, in 
accordance withSec. 2.193(e)(9).
    (3) If an applicant or registrant files a new power of attorney that 
meets the requirements ofSec. 2.17(c), the Office will change the 
correspondence address to that of the practitioner named in the power.
    (4) If a practitioner qualified underSec. 11.14 of this chapter 
transmits a document(s) on behalf of an applicant, registrant, or party 
to a proceeding who is not already represented by another qualified 
practitioner, the Office will construe this as including a request to 
change the correspondence address to that of the practitioner, and will 
send correspondence to the practitioner.
    (c) Post registration filings under sections 7, 8, 9, 12(c), 15, and 
71. (1) Even if there is no new power of attorney or written request to 
change the correspondence address, the Office will change the 
correspondence address upon the examination of an affidavit under 
section 8, 12(c), 15 or 71 of the Trademark Act, renewal application 
under section 9 of the Act, or request for amendment or correction under 
section 7 of the Act. If a practitioner qualified underSec. 11.14 of 
this chapter transmits the affidavit, renewal application, or section 7 
request, the Office will send correspondence to the practitioner. If the 
owner of the registration is not represented by a qualified 
practitioner, the Office will send correspondence directly to the owner, 
or to the domestic representative if appropriate, in accordance with 
paragraph (a).
    (2) Once the Office establishes a correspondence address upon 
examination of an affidavit, renewal application, or section 7 request, 
a written request to change the address in accordance with the 
requirements of paragraph (b)(2) of this section is required to change 
the address during the pendency of that filing.

[74 FR 54906, Oct. 26, 2009]



Sec.  2.19  Revocation or withdrawal of attorney.

    (a) Revocation. (1) Authority to represent an applicant, registrant 
or party to a proceeding before the Office may be revoked at any stage 
in the proceedings of a trademark case, upon written notification signed 
by the applicant, registrant, or party to the proceeding, or by someone 
with legal authority to bind the applicant, registrant, or party (e.g., 
a corporate officer or general partner of a partnership). In the case of 
joint applicants or joint registrants, all must sign.
    (2) When a power of attorney is revoked, the Office will communicate 
directly with the applicant, registrant, or party to the proceeding, or 
with the new attorney or domestic representative if appropriate.
    (3) A request to change the correspondence address does not revoke a 
power of attorney.
    (4) A new power of attorney that meets the requirements ofSec. 
2.17(c) will be treated as a revocation of the previous power.
    (b) Withdrawal of attorney. If the requirements ofSec. 10.40 of 
this chapter are met, a practitioner authorized to represent an 
applicant, registrant, or party to a proceeding in a trademark case may 
withdraw upon application to and approval by the Director or, when 
applicable, upon motion granted by the Trademark Trial and Appeal Board. 
The practitioner should file the request to withdraw soon after the 
practitioner notifies the client of his/her intent to withdraw. The 
request must include the following:
    (1) The application serial number, registration number, or 
proceeding number;
    (2) A statement of the reason(s) for the request to withdraw; and
    (3) Either
    (i) A statement that the practitioner has given notice to the client 
that the

[[Page 252]]

practitioner is withdrawing from employment and will be filing the 
necessary documents with the Office; that the client was given notice of 
the withdrawal at least two months before the expiration of the response 
period, if applicable; that the practitioner has delivered to the client 
all documents and property in the practitioner's file concerning the 
application, registration or proceeding to which the client is entitled; 
and that the practitioner has notified the client of any responses that 
may be due, and of the deadline for response; or
    (ii) If more than one qualified practitioner is of record, a 
statement that representation by co-counsel is ongoing.

[74 FR 54907, Oct. 26, 2009]

                              Declarations



Sec.  2.20  Declarations in lieu of oaths.

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

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

[64 FR 48918, Sept. 8, 1999]

                      Application for Registration

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



Sec.  2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application under 
section 1 or section 44 of the Act that is in the English language and 
contains all of the following:
    (1) The name of the applicant;
    (2) A name and address for correspondence;
    (3) A clear drawing of the mark;
    (4) A listing of the goods or services; and
    (5) The filing fee for at least one class of goods or services, 
required bySec. 2.6.
    (b) If the applicant does not submit all the elements required in 
paragraph (a) of this section, the Office will deny a filing date and 
issue a notice explaining why the filing date was denied.

[64 FR 48918, Sept. 8, 1999, as amended at 68 FR 55762, Sept. 26, 2003; 
73 FR 67767, Nov. 17, 2008]



Sec.  2.22  Filing requirements for a TEAS Plus application.

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

[[Page 253]]

    (11) A verified statement that meets the requirements ofSec. 2.33, 
dated and signed by a person properly authorized to sign on behalf of 
the owner pursuant toSec. 2.193(e)(1);
    (12) A clear drawing of the mark. If the applicant does not claim 
standard characters, the applicant must attach a digitized image of the 
mark in .jpg format. If the mark includes color, the drawing must show 
the mark in color;
    (13) If the mark is in standard characters, a mark comprised of only 
characters in the Office's standard character set, currently available 
at http://www.uspto.gov, typed in the appropriate field of the TEAS Plus 
form;
    (14) If the mark includes color, a statement naming the color(s) and 
describing where the color(s) appears on the mark, and a claim that the 
color(s) is a feature of the mark;
    (15) If the mark is not in standard characters, a description of the 
mark;
    (16) If the mark includes non-English wording, an English 
translation of that wording;
    (17) If the mark includes non-Latin characters, a transliteration of 
those characters;
    (18) If the mark includes an individual's name or portrait, either 
(i) a statement that identifies the living individual whose name or 
likeness the mark comprises and written consent of the individual, or 
(ii) a statement that the name or portrait does not identify a living 
individual (see section 2(c) of the Act);
    (19) If the applicant owns one or more registrations for the same 
mark, a claim of ownership of the registration(s) identified by the 
registration number(s), pursuant toSec. 2.36; and
    (20) If the application is a concurrent use application, compliance 
withSec. 2.42.
    (b) If an application does not meet the requirements of paragraph 
(a) of this section at the time of filing, the applicant must pay the 
fee required bySec. 2.6(a)(1)(iv). The application will retain its 
original filing date, provided that when filed, the application met the 
filing date requirements ofSec. 2.21.
    (c) The following types of applications cannot be filed as TEAS Plus 
applications under paragraph (a) of this section:
    (1) Applications for certification marks (seeSec. 2.45);
    (2) Applications for collective marks (seeSec. 2.44);
    (3) Applications for collective membership marks (seeSec. 2.44); 
and
    (4) Applications for registration on the Supplemental Register (see 
Sec.  2.47).

[70 FR 38773, July 6, 2005, as amended at 74 FR 54907, Oct. 26, 2009]



Sec.  2.23  Additional requirements for TEAS Plus application.

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

[70 FR 38773, July 6, 2005, as amended at 73 FR 67768, Nov. 17, 2008]



Sec.  2.24  Designation and revocation of domestic representative
by foreign applicant.

    (a)(1) If an applicant is not domiciled in the United States, the 
applicant may designate a domestic representative (i.e., a person 
residing in the United States on whom notices or process in proceedings 
affecting the mark may be served) by either:

[[Page 254]]

    (i) Setting forth the name and address of the domestic 
representative in the initial application; or
    (ii) Filing a separate designation setting forth the name and 
address of the domestic representative, signed by the applicant, someone 
with legal authority to bind the applicant (e.g., a corporate officer or 
general partner of a partnership), or a practitioner qualified to 
practice underSec. 11.14 of this chapter.
    (2) If the applicant does not file a document designating the name 
and address of a person residing in the United States on whom notices or 
process in proceedings affecting the mark may be served, or if the last 
person designated cannot be found at the address given in the 
designation, then notices or process in proceedings affecting the mark 
may be served on the Director.
    (3) The mere designation of a domestic representative does not 
authorize the person designated to represent the applicant unless 
qualified underSec. 11.14 of this chapter.
    (b) A request to change or revoke a designation of domestic 
representative must be signed by the applicant, someone with legal 
authority to bind the applicant (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice under 
Sec.  11.14 of this chapter.

[74 FR 54907, Oct. 26, 2009]



Sec.  2.25  Documents not returnable.

    Except as provided inSec. 2.27(e), documents filed in the Office 
by the applicant or registrant become part of the official record and 
will not be returned or removed.

[73 FR 67768, Nov. 17, 2008]



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

    (a) An index of pending applications including the name and address 
of the applicant, a reproduction or description of the mark, the goods 
or services with which the mark is used, the class number, the dates of 
use, and the serial number and filing date of the application will be 
available for public inspection as soon as practicable after filing.
    (b) Except as provided in paragraph (e) of this section, access to 
the file of a particular pending application will be permitted prior to 
publication underSec. 2.80 upon written request.
    (c) Decisions of the Director and the Trademark Trial and Appeal 
Board in applications and proceedings relating thereto are published or 
available for inspection or publication.
    (d) Except as provided in paragraph (e) of this section, the 
official records of applications and all proceedings relating thereto 
are available for public inspection and copies of the documents may be 
furnished upon payment of the fee required bySec. 2.6.
    (e) Anything ordered to be filed under seal pursuant to a protective 
order issued or made by any court or by the Trademark Trial and Appeal 
Board in any proceeding involving an application or a registration shall 
be kept confidential and shall not be made available for public 
inspection or copying unless otherwise ordered by the court or the 
Board, or unless the party protected by the order voluntarily discloses 
the matter subject thereto. When possible, only confidential portions of 
filings with the Board shall be filed under seal.

[36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48 
FR 27225, June 14, 1983; 73 FR 67768, Nov. 17, 2008]

                         The Written Application



Sec.  2.31  [Reserved]



Sec.  2.32  Requirements for a complete application.

    (a) The application must be in English and include the following:
    (1) A request for registration;
    (2) The name of the applicant(s);
    (3)(i) The citizenship of the applicant(s); or
    (ii) If the applicant is a corporation, association, partnership or 
other juristic person, the jurisdiction (usually state or nation) under 
the laws of which the applicant is organized; and
    (iii) If the applicant is a domestic partnership, the names and 
citizenship of the general partners;
    (iv) If the applicant is a domestic joint venture, the names and 
citizenship of the active members of the joint venture;
    (4) The address of the applicant;

[[Page 255]]

    (5) One or more bases, as required bySec. 2.34(a);
    (6) A list of the particular goods or services on or in connection 
with which the applicant uses or intends to use the mark. In a United 
States application filed under section 44 of the Act, the scope of the 
goods and/or services covered by the section 44 basis may not exceed the 
scope of the goods and/or services in the foreign application or 
registration;
    (7) The international class of goods or services, if known. See 
Sec.  6.1 of this chapter for a list of the international classes of 
goods and services.
    (8) If the mark is not in standard characters, a description of the 
mark;
    (9) If the mark includes non-English wording, an English translation 
of that wording; and
    (10) If the mark includes non-Latin characters, a transliteration of 
those characters, and either a translation of the transliterated term in 
English, or a statement that the transliterated term has no meaning in 
English.
    (b) The application must include a verified statement that meets the 
requirements ofSec. 2.33.
    (c) The application must include a drawing that meets the 
requirements of Sec.Sec. 2.51 and 2.52.
    (d) The application must include fee required bySec. 2.6 for each 
class of goods or services.
    (e) For the requirements for a multiple class application, seeSec. 
2.86.

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