PATENT RULES
Title 37 - Code of Federal Regulations
Patents, Trademarks, and Copyrights
CHAPTER I -- PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

Table of Contents:

SUBCHAPTER A GENERAL
PATENTS
PART 1 RULES OF PRACTICE IN PATENT CASES
Subpart A General Provisions
GENERAL INFORMATION AND CORRESPONDENCE
Section 1.1 Addresses for correspondence with the Patent and Trademark Office.
Section 1.2 Business to be transacted in writing.
Section 1.3 Business to be conducted with decorum and courtesy.
Section 1.4 Nature of correspondence and signature requirements.
Section 1.5 Identification of application, patent, or registration.
Section 1.6 Receipt of correspondence.
Section 1.7 Times for taking action; expiration on Saturday, Sunday, or Federal holiday.
Section 1.8 Certificate of mailing or transmission.
Section 1.9 Definitions.
Section 1.10 Filing of papers and fees by “Express Mail.”
RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE
Section 1.11 Files open to the public.
Section 1.12 Assignment records open to public inspection.
Section 1.13 Copies and certified copies.
Section 1.14 Patent applications preserved in confidence.
Section 1.15 Requests for identifiable records.
FEES AND PAYMENT OF MONEY
Section 1.16 National application filing fees.
Section 1.17 Patent application processing fees.
Section 1.18 Patent issue fees.
Section 1.19 Document supply fees.
Section 1.20 Post issuance fees.
Section 1.21 Miscellaneous fees and charges.
Section 1.22 Fees payable in advance.
Section 1.23 Method of payment.
Section 1.24 Coupons.
Section 1.25 Deposit accounts.
Section 1.26 Refunds.
Section 1.27 Statement of status as small entity.
Section 1.28 Effect on fees of failure to establish status, or change status, as a small entity.
Subpart B National Processing Provisions
PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT
Section 1.31 Applicants may be represented by a registered attorney or agent.
Section 1.32 [Reserved]
Section 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
Section 1.34 Recognition for representation.
Section 1.36 Revocation of power of attorney or authorization; withdrawal of attorney or agent.
WHO MAY APPLY FOR A PATENT
Section 1.41 Applicant for patent.
Section 1.42 When the inventor is dead.
Section 1.43 When the inventor is insane or legally incapacitated.
Section 1.44 Proof of authority.
Section 1.45 Joint inventors.
Section 1.46 Assigned inventions and patents.
Section 1.47 Filing when an inventor refuses to sign or cannot be reached.
Section 1.48 Correction of inventorship in a patent application, other than a reissue application.
THE APPLICATION
Section 1.51 General requisites of an application.
Section 1.52 Language, paper, writing, margins.
Section 1.53 Application number, filing date, and completion of application.
Section 1.54 Parts of application to be filed together; filing receipt.
Section 1.55 Claim for foreign priority.
Section 1.56 Duty to disclose information material to patentability.
Section 1.57 [Reserved]
Section 1.58 Chemical and mathematical formulae and tables.
Section 1.59 Expungement of information or copy of papers in application file.
Section 1.60 [Reserved]
Section 1.61 [Reserved]
Section 1.62 [Reserved]
OATH OR DECLARATION
Section 1.63 Oath or declaration.
Section 1.64 Person making oath or declaration.
Section 1.66 Officers authorized to administer oaths.
Section 1.67 Supplemental oath or declaration.
Section 1.68 Declaration in lieu of oath.
Section 1.69 Foreign language oaths and declarations.
Section 1.70 [Reserved]
SPECIFICATION
Section 1.71 Detailed description and specification of the invention.
Section 1.72 Title and abstract.
Section 1.73 Summary of the invention.
Section 1.74 Reference to drawings.
Section 1.75 Claim(s).
Section 1.77 Arrangement of application elements.
Section 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
Section 1.79 Reservation clauses not permitted.
THE DRAWINGS
Section 1.81 Drawings required in patent application.
Section 1.83 Content of drawing.
Section 1.84 Standards for drawings.
Section 1.85 Corrections to drawings.
Section 1.88 [Reserved]
MODELS, EXHIBITS, SPECIMENS
Section 1.91 Models or exhibits not generally admitted as part of application or patent.
Section 1.92 [Reserved]
Section 1.93 Specimens.
Section 1.94 Return of models, exhibits or specimens.
Section 1.95 Copies of exhibits.
Section 1.96 Submission of computer program listings.
INFORMATION DISCLOSURE STATEMENT
Section 1.97 Filing of information disclosure statement.
Section 1.98 Content of information disclosure statement.
Section 1.99 [Reserved]
EXAMINATION OF APPLICATIONS
Section 1.101 [Reserved]
Section 1.102 Advancement of examination.
Section 1.103 Suspension of action.
Section 1.104 Nature of examination.
Section 1.105 [Reserved]
Section 1.106 [Reserved]
Section 1.107 [Reserved]
Section 1.108 [Reserved]
Section 1.109 [Reserved]
Section 1.110 Inventorship and date of invention of the subject matter of individual claims.
ACTION BY APPLICANT AND FURTHER CONSIDERATION
Section 1.111 Reply by applicant or patent owner.
Section 1.112 Reconsideration before final action.
Section 1.113 Final rejection or action.
AMENDMENTS
Section 1.115 [Reserved]
Section 1.116 Amendments after final action or appeal.
Section 1.117 [Reserved]
Section 1.118 [Reserved]
Section 1.119 [Reserved]
Section 1.121 Manner of making amendments.
Section 1.122 [Reserved]
Section 1.123 [Reserved]
Section 1.124 [Reserved]
Section 1.125 Substitute specification.
Section 1.126 Numbering of claims.
Section 1.127 Petition from refusal to admit amendment.
TRANSITIONAL PROVISIONS
Section 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
AFFIDAVITS OVERCOMING REJECTIONS
Section 1.130 Affidavit or declaration to disqualify commonly owned patent as prior art.
Section 1.131 Affidavit or declaration of prior invention to overcome cited patent or publication.
Section 1.132 Affidavits or declarations traversing grounds of rejection.
INTERVIEWS
Section 1.133 Interviews.
TIME FOR REPLY BY APPLICANT; ABANDONMENT OF APPLICATION
Section 1.134 Time period for reply to an Office action.
Section 1.135 Abandonment for failure to reply within time period.
Section 1.136 Extensions of time.
Section 1.137 Revival of abandoned application or lapsed patent.
Section 1.138 Express abandonment.
Section 1.139 [Reserved]
JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION
Section 1.141 Different inventions in one national application.
Section 1.142 Requirement for restriction.
Section 1.143 Reconsideration of requirement.
Section 1.144 Petition from requirement for restriction.
Section 1.145 Subsequent presentation of claims for different invention.
Section 1.146 Election of species.
DESIGN PATENTS
Section 1.151 Rules applicable.
Section 1.152 Design drawings.
Section 1.153 Title, description and claim, oath or declaration.
Section 1.154 Arrangement of application elements.
Section 1.155 Issue of design patents.
PLANT PATENTS
Section 1.161 Rules applicable.
Section 1.162 Applicant, oath or declaration.
Section 1.163 Specification and arrangement of application elements.
Section 1.164 Claim.
Section 1.165 Plant Drawings.
Section 1.166 Specimens.
Section 1.167 Examination.
REISSUES
Section 1.171 Application for reissue.
Section 1.172 Applicants, assignees.
Section 1.173 Specification.
Section 1.174 Drawings.
Section 1.175 Reissue oath or declaration.
Section 1.176 Examination of reissue.
Section 1.177 Reissue in divisions.
Section 1.178 Original patent.
Section 1.179 Notice of reissue application.
PETITIONS AND ACTION BY THE COMMISSIONER
Section 1.181 Petition to the Commissioner.
Section 1.182 Questions not specifically provided for.
Section 1.183 Suspension of rules.
Section 1.184 [Reserved]
APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES
Section 1.191 Appeal to Board of Patent Appeals and Interferences.
Section 1.192 Appellant's brief.
Section 1.193 Examiner's answer and reply brief.
Section 1.194 Oral hearing.
Section 1.195 Affidavits or declarations after appeal.
Section 1.196 Decision by the Board of Patent Appeals and Interferences.
Section 1.197 Action following decision.
Section 1.198 Reopening after decision.
MISCELLANEOUS PROVISIONS
Section 1.248 Service of papers; manner of service; proof of service in cases other than interferences.
PROTESTS AND PUBLIC USE PROCEEDINGS
Section 1.291 Protests by the public against pending applications.
Section 1.292 Public use proceedings.
Section 1.293 Statutory invention registration.
Section 1.294 Examination of request for publication of a statutory invention registration and patent application to which the request is directed.
Section 1.295 Review of decision finally refusing to publish a statutory invention registration.
Section 1.296 Withdrawal of request for publication of statutory invention registration.
Section 1.297 Publication of statutory invention registration.
REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT
Section 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
Section 1.302 Notice of appeal.
Section 1.303 Civil action under 35 U.S.C. 145, 146, 306.
Section 1.304 Time for appeal or civil action.
ALLOWANCE AND ISSUE OF PATENT
Section 1.311 Notice of Allowance.
Section 1.312 Amendments after allowance.
Section 1.313 Withdrawal from issue.
Section 1.314 Issuance of patent.
Section 1.315 Delivery of patent.
Section 1.316 Application abandoned for failure to pay issue fee.
Section 1.317 Lapsed patents; delayed payment of balance of issue fee.
Section 1.318 [Reserved]
DISCLAIMER
Section 1.321 Statutory disclaimers, including terminal disclaimers.
CORRECTION OF ERRORS IN PATENT
Section 1.322 Certificate of correction of Office mistake.
Section 1.323 Certificate of correction of applicant's mistake.
Section 1.324 Correction of inventorship in patent.
Section 1.325 Other mistakes not corrected.
ARBITRATION AWARDS
Section 1.331 [Reserved]
Section 1.332 [Reserved]
Section 1.333 [Reserved]
Section 1.334 [Reserved]
Section 1.335 Filing of notice of arbitration awards.
AMENDMENT OF RULES
Section 1.351 Amendments to rules will be published.
Section 1.352 [Reserved]
MAINTENANCE FEES
Section 1.362 Time for payment of maintenance fees.
Section 1.363 Fee address for maintenance fee purposes.
Section 1.366 Submission of maintenance fees.
Section 1.377 Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent.
Section 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent.
Subpart C International Processing Provisions
GENERAL INFORMATION
Section 1.401 Definitions of terms under the Patent Cooperation Treaty.
Section 1.412 The United States Receiving Office.
Section 1.413 The United States International Searching Authority.
Section 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office.
Section 1.415 The International Bureau.
Section 1.416 The United States International Preliminary Examining Authority.
WHO MAY FILE AN INTERNATIONAL APPLICATION
Section 1.421 Applicant for international application.
Section 1.422 When the inventor is dead.
Section 1.423 When the inventor is insane or legally incapacitated.
Section 1.424 Joint inventors.
Section 1.425 Filing by other than inventor.
THE INTERNATIONAL APPLICATION
Section 1.431 International application requirements.
Section 1.432 Designation of States and payment of designation fees.
Section 1.433 Physical requirements of international application.
Section 1.434 The request.
Section 1.435 The description.
Section 1.436 The claims.
Section 1.437 The drawings.
Section 1.438 The abstract.
FEES
Section 1.445 International application filing, processing and search fees.
Section 1.446 Refund of international application filing and processing fees.
PRIORITY
Section 1.451 The priority claim and priority document in an international application.
REPRESENTATION
Section 1.455 Representation in international applications.
TRANSMITTAL OF RECORD COPY
Section 1.461 Procedures for transmittal of record copy to the International Bureau.
TIMING
Section 1.465 Timing of application processing based on the priority date.
Section 1.468 Delays in meeting time limits.
AMENDMENTS
Section 1.471 Corrections and amendments during international processing.
Section 1.472 Changes in person, name, or address of applicants and inventors.
UNITY OF INVENTION
Section 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage.
Section 1.476 Determination of unity of invention before the International Searching Authority.
Section 1.477 Protest to lack of unity of invention before the International Searching Authority.
INTERNATIONAL PRELIMINARY EXAMINATION
Section 1.480 Demand for international preliminary examination.
Section 1.482 International preliminary examination fees.
Section 1.484 Conduct of international preliminary examination.
Section 1.485 Amendments by applicant during international preliminary examination.
Section 1.488 Determination of unity of invention before the International Preliminary Examining Authority.
Section 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority.
NATIONAL STAGE
Section 1.491 Entry into the national stage.
Section 1.492 National stage fees.
Section 1.494 Entering the national stage in the United States of America as a Designated Office.
Section 1.495 Entering the national stage in the United States of America as an Elected Office
Section 1.496 Examination of international applications in the national stage.
Section 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).
Section 1.499 Unity of invention during the national stage.
Subpart D Reexamination of Patents
CITATION OF PRIOR ART
Section 1.501 Citation of prior art in patent files.
REQUEST FOR REEXAMINATION
Section 1.510 Request for reexamination.
Section 1.515 Determination of the request for reexamination.
Section 1.520 Reexamination at the initiative of the Commissioner.
REEXAMINATION
Section 1.525 Order to reexamine.
Section 1.530 Statement; amendment by patent owner.
Section 1.535 Reply by requester.
Section 1.540 Consideration of responses.
Section 1.550 Conduct of reexamination proceedings.
Section 1.552 Scope of reexamination in reexamination proceedings.
Section 1.555 Information material to patentability in reexamination proceedings.
Section 1.560 Interviews in reexamination proceedings.
Section 1.565 Concurrent office proceedings.
CERTIFICATE
Section 1.570 Issuance of reexamination certificate after reexamination proceedings.
Subpart E Interferences
Section 1.601 Scope of rules, definitions.
Section 1.602 Interest in applications and patents involved in an interference.
Section 1.603 Interference between applications; subject matter of the interference.
Section 1.604 Request for interference between applications by an applicant.
Section 1.605 Suggestion of claim to applicant by examiner.
Section 1.606 Interference between an application and a patent; subject matter of the interference.
Section 1.607 Request by applicant for interference with patent.
Section 1.608 Interference between an application and a patent; prima facie showing by applicant.
Section 1.609 Preparation of interference papers by examiner.
Section 1.610 Assignment of interference to administrative patent judge, time period for completing interference.
Section 1.611 Declaration of interference.
Section 1.612 Access to applications.
Section 1.613 Lead attorney, same attorney representing different parties in an interference, withdrawal of attorney or agent.
Section 1.614 Jurisdiction over interference.
Section 1.615 Suspension of ex parte prosecution.
Section 1.616 Sanctions for failure to comply with rules or order or for taking and maintaining a frivolous position.
Section 1.617 Summary judgment against applicant.
Section 1.618 Return of unauthorized papers.
Section 1.621 Preliminary statement, time for filing, notice of filing.
Section 1.622 Preliminary statement, who made invention, where invention made.
Section 1.623 Preliminary statement; invention made in United States, a NAFTA country, or a WTO member country.
Section 1.624 Preliminary statement; invention made in a place other than the United States, a NAFTA country, or a WTO member country.
Section 1.625 Preliminary statement; derivation by an opponent
Section 1.626 Preliminary statement; earlier application.
Section 1.627 Preliminary statement; sealing before filing, opening of statement.
Section 1.628 Preliminary statement; correction of error.
Section 1.629 Effect of preliminary statement.
Section 1.630 Reliance on earlier application.
Section 1.631 Access to preliminary statement, service of preliminary statement.
Section 1.632 Notice of intent to argue abandonment, suppression or concealment by opponent.
Section 1.633 Preliminary motions.
Section 1.634 Motion to correct inventorship.
Section 1.635 Miscellaneous motions.
Section 1.636 Motions, time for filing.
Section 1.637 Content of motions.
Section 1.638 Opposition and reply; time for filing opposition and reply.
Section 1.639 Evidence in support of motion, opposition, or reply.
Section 1.640 Motions, hearing and decision, redeclaration of interference, order to show cause.
Section 1.641 Unpatentability discovered by administrative patent judge.
Section 1.642 Addition of application or patent to interference.
Section 1.643 Prosecution of interference by assignee.
Section 1.644 Petitions in interferences.
Section 1.645 Extension of time, late papers, stay of proceedings.
Section 1.646 Service of papers, proof of service.
Section 1.647 Translation of document in foreign language.
Section 1.651 Setting times for discovery and taking testimony, parties entitled to take testimony.
Section 1.652 Judgment for failure to take testimony or file record.
Section 1.653 Record and exhibits.
Section 1.654 Final hearing.
Section 1.655 Matters considered in rendering a final decision.
Section 1.656 Briefs for final hearing.
Section 1.657 Burden of proof as to date of invention.
Section 1.658 Final decision.
Section 1.659 Recommendation.
Section 1.660 Notice of reexamination, reissue, protest, or litigation.
Section 1.661 Termination of interference after judgment.
Section 1.662 Request for entry of adverse judgment; reissue filed by patentee.
Section 1.663 Status of claim of defeated applicant after interference.
Section 1.664 Action after interference.
Section 1.665 Second interference.
Section 1.666 Filing of interference settlement agreements.
Section 1.671 Evidence must comply with rules.
Section 1.672 Manner of taking testimony.
Section 1.673 Notice of examination of witness.
Section 1.674 Persons before whom depositions may be taken.
Section 1.675 Examination of witness, reading and signing transcript of deposition.
Section 1.676 Certification and filing by officer, marking exhibits.
Section 1.677 Form of an affidavit or a transcript of deposition.
Section 1.678 Time for filing transcript of deposition.
Section 1.679 Inspection of transcript.
Section 1.682 Official records and printed publications.
Section 1.683 Testimony in another interference, proceeding, or action.
Section 1.684 [Reserved]
Section 1.685 Errors and irregularities in depositions.
Section 1.687 Additional discovery.
Section 1.688 Use of discovery.
Section 1.690 Arbitration of interferences.
Subpart F Extension of Patent Term
Section 1.701 Extension of patent term due to prosecution delay.
Section 1.710 Patents subject to extension of the patent term.
Section 1.720 Conditions for extension of patent term.
Section 1.730 Applicant for extension of patent term.
Section 1.740 Application for extension of patent term.
Section 1.741 Filing date of application.
Section 1.750 Determination of eligibility for extension of patent term.
Section 1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
Section 1.765 Duty of disclosure in patent term extension proceedings.
Section 1.770 Express withdrawal of application for extension of patent term.
Section 1.775 Calculation of patent term extension for a human drug, antibiotic drug, or human biological product.
Section 1.776 Calculation of patent term extension for a food additive or color additive.
Section 1.777 Calculation of patent term extension for a medical device.
Section 1.778 Calculation of patent term extension for an animal drug product.
Section 1.779 Calculation of patent term extension for a veterinary biological product.
Section 1.780 Certificate of extension of patent term.
Section 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.
Section 1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5)
Section 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
Section 1.801 Biological material.
Section 1.802 Need or opportunity to make a deposit.
Section 1.803 Acceptable depository.
Section 1.804 Time of making an original deposit.
Section 1.805 Replacement or supplement of deposit.
Section 1.806 Term of deposit.
Section 1.807 Viability of deposit.
Section 1.808 Furnishing of samples.
Section 1.809 Examination procedures.
APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES
Section 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications.
Section 1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data.
Section 1.823 Requirements for nucleotide and/or amino acid sequences as part of the application papers.
Section 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form.
Section 1.825 Amendments to or replacement of sequence listing and computer readable copy thereof.
PART 3 ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
Section 3.1 Definitions.
DOCUMENTS ELIGIBLE FOR RECORDING
Section 3.11 Documents which will be recorded.
Section 3.16 Assignability of trademarks prior to filing of use statements.
REQUIREMENTS FOR RECORDING
Section 3.21 Identification of patents and patent applications.
Section 3.24 Formal requirements for documents and cover sheets.
Section 3.26 English language requirement.
Section 3.27 Mailing address for submitting documents to be recorded.
Section 3.28 Requests for recording.
COVER SHEET REQUIREMENTS
Section 3.31 Cover sheet content.
Section 3.34 Correction of cover sheet errors.
FEES
Section 3.41 Recording fees.
DATE AND EFFECT OF RECORDING
Section 3.51 Recording date.
Section 3.54 Effect of recording.
Section 3.56 Conditional assignments.
Section 3.58 Governmental registers.
DOMESTIC REPRESENTATIVE
Section 3.6 1 Domestic representative.
ACTION TAKEN BY ASSIGNEE
Section 3.7 1 Prosecution by assignee.
Section 3.73 Establishing right of assignee to take action.
ISSUANCE TO ASSIGNEE
Section 3.81 Issue of patent to assignee.
Section 3.85 Issue of registration to assignee.
PART 5 SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES
SECRECY ORDERS
Section 5.1 Correspondence.
Section 5.2 Secrecy order.
Section 5.3 Prosecution of application under secrecy orders; withholding patent.
Section 5.4 Petition for rescission of secrecy order.
Section 5.5 Permit to disclose or modification of secrecy order.
Section 5.6 [Reserved]
Section 5.7 [Reserved]
Section 5.8 [Reserved]
LICENSES FOR FOREIGN EXPORTING AND FILING
Section 5.11 License for filing in a foreign country an application on an invention made in the United States or for transmitting international application.
Section 5.12 Petition for license.
Section 5.13 Petition for license; no corresponding application.
Section 5.14 Petition for license; corresponding U.S. application.
Section 5.15 Scope of license.
Section 5.16 [Reserved]
Section 5.17 [Reserved]
Section 5.18 Arms, ammunition, and implements of war.
Section 5.19 Export of technical data.
Section 5.20 Export of technical data relating to sensitive nuclear technology.
Section 5.25 Petition for retroactive license.
GENERAL
Section 5.31 [Reserved]
Section 5.32 [Reserved]
Section 5.33 [Reserved]
PART 7 [RESERVED]
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
PART 10 REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
Section 10.1 Definitions.
Section 10.2 Director of Enrollment and Discipline.
Section 10.3 Committee on Enrollment.
Section 10.4 Committee on Discipline.
Section 10.5 Register of attorneys and agents in patent cases.
Section 10.6 Registration of attorneys and agents.
Section 10.7 Requirements for registration.
Section 10.8 Oath and registration fee.
Section 10.9 Limited recognition in patent cases.
Section 10.10 Restrictions on practice in patent cases.
Section 10.11 Removing names from the register.
Section 10.14 Individuals who may practice before the Office in trademark and other non-patent cases.
Section 10.15 Refusal to recognize a practitioner.
Section 10.18 Signature and certificate for correspondence filed in the Patent and Trademark Office.
Section 10.19 [Reserved]
PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL RESPONSIBILITY
Section 10.20 Canons and Disciplinary Rules.
Section 10.21 Canon 1.
Section 10.22 Maintaining integrity and competence of the legal profession.
Section 10.23 Misconduct.
Section 10.24 Disclosure of information to authorities.
Section 10.25 - 10.29 [Reserved]
Section 10.30 Canon 2.
Section 10.31 Communications concerning a practitioner's services.
Section 10.32 Advertising.
Section 10.33 Direct contact with prospective clients.
Section 10.34 Communication of fields of practice.
Section 10.35 Firm names and letterheads.
Section 10.36 Fees for legal services.
Section 10.37 Division of fees among practitioners.
Section 10.38 Agreements restricting the practice of a practitioner.
Section 10.39 Acceptance of employment.
Section 10.40 Withdrawal from employment.
Section 10.46 Canon 3.
Section 10.47 Aiding unauthorized practice of law.
Section 10.48 Sharing legal fees.
Section 10.49 Forming a partnership with a non-practitioner.
Section 10.56 Canon 4.
Section 10.57 Preservation of confidences and secrets of a client.
Section 10.61 Canon 5.
Section 10.62 Refusing employment when the interest of the practitioner may impair the practitioner's independent professional judgment.
Section 10.63 Withdrawal when the practitioner becomes a witness.
Section 10.64 Avoiding acquisition of interest in litigation or proceeding before the Office.
Section 10.65 Limiting business relations with a client.
Section 10.66 Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner.
Section 10.67 Settling similar claims of clients.
Section 10.68 Avoiding influence by others than the client.
Section 10.76 Canon 6.
Section 10.77 Failing to act competently.
Section 10.78 Limiting liability to client.
Section 10.83 Canon 7.
Section 10.84 Representing a client zealously.
Section 10.85 Representing a client within the bounds of the law.
Section 10.86 [Reserved]
Section 10.87 Communicating with one of adverse interest.
Section 10.88 Threatening criminal prosecution.
Section 10.89 Conduct in proceedings.
Section 10.92 Contact with witnesses.
Section 10.93 Contact with officials.
Section 10.100 Canon 8.
Section 10.101 Action as a public official.
Section 10.102 Statements concerning officials.
Section 10.103 Practitioner candidate for judicial office.
Section 10.110 Canon 9.
Section 10.111 Avoiding even the appearance of impropriety.
Section 10.112 Preserving identity of funds and property of client.
INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS
Section 10.130 Reprimand, suspension or exclusion.
Section 10.131 Investigations.
Section 10.132 Initiating a disciplinary proceeding; reference to an administrative law judge.
Section 10.133 Conference between Director and practitioner; resignation.
Section 10.134 Complaint.
Section 10.135 Service of complaint.
Section 10.136 Answer to complaint.
Section 10.137 Supplemental complaint.
Section 10.138 Contested case.
Section 10.139 Administrative law judge; appointment; responsibilities; review of interlocutory orders; stays.
Section 10.140 Representative for Director or respondent.
Section 10.141 Filing of papers.
Section 10.142 Service of papers.
Section 10.143 Motions.
Section 10.144 Hearings.
Section 10.145 Proof; variance; amendment of pleadings.
Section 10.149 Burden of proof.
Section 10.150 Evidence.
Section 10.151 Depositions.
Section 10.152 Discovery.
Section 10.153 Proposed findings and conclusions; post- hearing memorandum.
Section 10.154 Initial decision of administrative law judge.
Section 10.155 Appeal to the Commissioner.
Section 10.156 Decision of the Commissioner.
Section 10.157 Review of Commissioner's final decision.
Section 10.158 Suspended or excluded practitioner.
Section 10.159 Notice of suspension or exclusion.
Section 10.160 Petitioner for reinstatement.
Section 10.161 Savings clause.
Section 10.170 Suspension of rules.
PART 15 -[Reserved]
PART 15a - [Reserved]
SUBCHAPTER C PROTECTION OF FOREIGN MASK WORKS
PART 150 REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)
Section 150.1 Definitions.
Section 150.2 Initiation of evaluation.
Section 150.3 Submission of requests.
Section 150.4 Evaluation.
Section 150.5 Duration of proclamation.
Section 150.6 Mailing address.

A GENERAL

PATENTS

1 RULES OF PRACTICE IN PATENT CASES

A General Provisions

GENERAL INFORMATION AND CORRESPONDENCE

1.1 Addresses for correspondence with the Patent and Trademark Office.

(a)
Except for § 1.1(a)(3) (i) and (ii), all correspondence intended for the Patent and Trademark Office must be addressed to either “Commissioner of Patents and Trademarks, Washington, D.C. 20231” or to specific areas within the Office as set out in paragraphs (a) (1), (2) and (3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
(1)
Patent correspondence. All correspondence concerning patent matters processed by organizations reporting to the Assistant Commissioner for Patents should be addressed to “Assistant Commissioner for Patents, Washington, D.C. 20231.”
(2)
Trademark correspondence. All correspondence concerning trademark matters, except for trademark-related documents sent to the Assignment Division for recordation and requests for certified and uncertified copies of trademark application and registration documents, should be addressed to “Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.” This includes correspondence intended for the Trademark Trial and Appeal Board.
(3)
Office of Solicitor correspondence.
(i)
Correspondence relating to pending litigation required by court rule or order to be served on the Solicitor shall be hand-delivered to the Office of the Solicitor or shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington, Virginia 22215; or such other address as may be designated in writing in the litigation. See §§ 1.302(c) and 2.145(b)(3) for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit.
(ii)
Correspondence relating to disciplinary proceedings pending before an Administrative Law Judge or the Commissioner shall be mailed to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
(iii)
All other correspondence to the Office of the Solicitor shall be addressed to: Box 8, Commissioner of Patents and Trademarks, Washington, D.C. 20231.
(iv)
Correspondence improperly addressed to a Post Office Box specified in paragraphs (a)(3) (i) and (ii) of this section will not be filed elsewhere in the Patent and Trademark Office, and may be returned.
(b)
Letters and other communications relating to international applications during the international stage and prior to the assignment of a national serial number should be additionally marked “Box PCT.”
(c)
Requests for reexamination should be additionally marked “Box Reexam.”
(d)
Payments of maintenance fees in patents and other communications relating thereto should be additionally marked “Box M. Fee.”
(e)
Communications relating to interferences and applications or patents involved in an interference should be additionally marked “BOX INTERFERENCE.”
(f)
All applications for extension of patent term and any communications relating thereto intended for the Patent and Trademark Office should be additionally marked “Box Patent Ext.” When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.
(g)
[Reserved]
(h)
In applications under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), all statements of use filed under section 1(d) of the Act, and requests for extensions of time therefor, should be additionally marked “Box ITU.”
(i)
The filing of all provisional applications and any communications relating thereto should be additionally marked “Box Provisional Patent Application.”


NOTE -- Sections 1.1 to 1.26 are applicable to trademark cases as well as to national and international patent cases ex­cept for provisions specifically directed to patent cases. See§ 1.9 for definitions of “national application'' and “interna­tional application.''

[46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec.12, 1984, effective Feb. 11, 1985; para. (f) added, 52 FR 9394, Mar. 24, 1987; para. (g) added, 53 FR 16413, May 9, 1988; para. (h) added, 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised and para. (g) removed and reserved,61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996]



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.

1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct their business with the Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Commissioner and will be returned by the Commissioner's direct order. Complaints against examiners and other employees must be made in correspondence separate from other papers.

[Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996]



1.4 Nature of correspondence and signature requirements.

(a)
Correspondence with the Patent and Trademark Office comprises:
(1)
Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents or trademark registrations, orders for copies of records, transmission of assignments for recording, and the like, and
(2)
Correspondence in and relating to a particular application or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B, §§ 1.31 to 1.378; of international applications in subpart C, §§ 1.401 to 1.499; of reexamination of patents in subpart D, §§ 1.501 to 1.570; of interferences in subpart E; §§ 1.601 to 1.690; of extension of patent term in subpart F, §§ 1.710 to 1.785; and of trademark applications §§ 2.11 to 2.189.
(b)
Since each application file should be complete in itself, a separate copy of every paper to be filed in an application should be furnished for each application to which the paper pertains, even though the contents of the papers filed in two or more applications may be identical.
(c)
Since different matters may be considered by different branches or sections of the Patent and Trademark Office, each distinct subject, inquiry, or order should be contained in a separate letter to avoid confusion and delay in answering letters dealing with different subjects.
(d)
 
(1)
Each piece of correspondence, except as provided in paragraphs (e) and (f) of this section, filed in a patent or trademark application, reexamination proceeding, patent or trademark interference proceeding, patent file or trademark registration file, trademark opposition proceeding, trademark cancellation proceeding, or trademark concurrent use proceeding, which requires a person's signature, must either:
(i)
Be an original, that is, have an original signature personally signed in permanent ink by that person; or
(ii)
Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Patent and Trademark Office may require submission of the original.
(2)
The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under§ 10.18(c) of this chapter. Any practitioner violating§ 10.18(b) may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15).
(e)
Correspondence requiring person's signature and relating to registration practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings must be submitted with an original signature personally signed in permanent ink by that person.
(f)
When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
(g)
An applicant who has not made of record a registered attorney or agent may be required to state whether assistance was received in the preparation or prosecution of the patent application, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. Assistance includes the preparation for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.

[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978; para. (a), 48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a)(2), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; paras. (d)-(f) added, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (d) revised & para. (g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.5 Identification of application, patent, or registration.

(a)
No correspondence relating to an application should be filed prior to receipt of the application number from the Patent and Trademark Office. When a letter directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), 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 under § 1.8 or the Express Mail procedure under § 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 applicant, the title of the invention, the date of filing the same, and, if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the letter and the name of the examiner or other person to which it has been assigned.
(b)
When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366(c).
(c)
A letter relating to a trademark application should identify it as such and by the name of the applicant and the serial number and filing date of the application. A letter relating to a registered trademark should identify it by the name of the registrant and by the number and date of the certificate.
(d)
A letter relating to a reexamination proceeding should identify it as such by the number of the patent undergoing reexamination, the reexamination request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.
(e)
When a paper concerns an interference, it should state the names of the parties and the number of the interference. The name of the examiner-in-chief assigned to the interference (§ 1.610) and the name of the party filing the paper should appear conspicuously on the first page of the paper.
(f)
When a paper concerns a provisional application, it should identify the application as such and include the application number.

[24 FR 10332, Dec 22, 1959; 46 FR 29181, May 29, 1981; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a) & (b), 53 FR 47807, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (f) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996]



1.6 Receipt of correspondence.

(a)
Date of receipt and Express Mail date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
(1)
The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile as provided for in paragraph (a)(3) of this section, no correspondence is received in the Patent and Trademark Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2)
Correspondence filed in accordance with§§ 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.
(b)
Patent and Trademark Office Post Office pouch. Mail placed in the Patent and Trademark Office pouch up to midnight on any day, except Saturdays, Sundays, and Federal holidays within the District of Columbia, by the post office at Washington, DC, serving the Patent and Trademark Office, is considered as having been received in the Patent and Trademark Office on the day it was so placed in the pouch by the U.S. Postal Service.
(c)
Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(d)
Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See § 1.6(a)(3). To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the Patent and Trademark Office. The application number of a patent or trademark application, the control number of a reexamination proceeding, the interference number of an interference proceeding, the patent number of a patent, or the registration number of a trademark should be entered as a part of the sender's identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
(1)
Correspondence as specified in § 1.4(e), requiring an original signature;
(2)
Certified documents as specified in § 1.4(f);
(3)
Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), § 1.8(a)(2)(ii)(A), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;
(4)
Drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
(5)
A request for reexamination under § 1.510;
(6)
Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
(7)
Requests for cancellation or amendment of a registration under section 7(e) of the Trademark Act,15 U.S.C. 1057(e); and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act, 15 U.S.C. 1057(e);
(8)
Correspondence to be filed with the Trademark Trial and Appeal Board, except the notice ofex parte appeal;
(9)
Correspondence to be filed in an interference proceeding which consists of a preliminary statement under § 1.621; a transcript of a deposition under§ 1.676 or of interrogatories, cross-interrogatories, or recorded answers under § 1.684(c); or an evidentiary record and exhibits under § 1. 653.
(e)
Interruptions in U.S. Postal Service. If interruptions or emergencies in the United States Postal Service which have been so designated by the Commissioner occur, the Patent and Trademark Office will consider as filed on a particular date in the Office any correspondence which is:
(1)
Promptly filed after the ending of the designated interruption or emergency; and
(2)
Accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service.
(f)
Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Commissioner to accord the application under § 1.53(d) a filing date as of the date the application under § 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 § 1.53(d):
(i)
Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);
(ii)
Supplies an additional copy of the previously transmitted application under § 1.53(d); and
(iii)
Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Commissioner to the previous transmission of the application under § 1.53(d) and is accompanied by a copy of the sending unit's report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).
(2)
The Office may require additional evidence to determine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; revised, 58 FR 54494, Oct. 22, 1993, effectiveNov. 22, 1993; para. (a) amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d)(3), (d)(6) & (e) amended, para. (f) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.7 Times for taking action; expiration on Saturday, Sunday, or Federal holiday.
Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday. See § 1.304 for time for appeal or for commencing civil action.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; corrected 48 FR 4285, Jan. 31, 1983]



1.8 Certificate of mailing or transmission.

(a)
Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required to be filed in the Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
(1)
Correspondence will be considered as being timely filed if:
(i)
The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
(A)
Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or
(B)
Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d); and
(ii)
The correspondence includes a certificate for each piece of correspondence stating the dateof deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2)
The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on, the following:
(i)
Relative to Patents and Patent Applications–
(A)
The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under § 1.53(d);
(B)
The filing of correspondence in an interference which an examiner-in-chief orders to be filed by hand or “Express Mail”;
(C)
The filing of agreements between parties to an interference under 35 U.S.C. 135(c);
(D)
The filing of an international application for patent;
(E)
The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
(F)
The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.494(b) or§ 1.495(b).
(ii)
Relative to Trademark Registrations and Trademark Applications–
(A)
The filing of a trademark application.
(B)
[Reserved]
(C)
[Reserved]
(D)
[Reserved]
(E)
[Reserved]
(F)
[Reserved]
(iii)
Relative to Disciplinary Proceedings–
(A)
Correspondence filed in connection with a disciplinary proceeding under part 10 of this chapter.
(B)
[Reserved]
(b)
In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Patent and Trademark Office, and the application is held to be abandoned or the proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1)
Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
(2)
Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3)
Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Commissioner to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit's report confirming transmission may be used to support this statement.
(c)
The Office may require additional evidence to determine if the correspondence was timely filed.

[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 1978; para. (a). 47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; para. (a),48 FR 2708, Jan. 20, 1983; para. (a) 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 52 FR 20046, May 28, 1987; subparas. (a)(2)(xiv)-(xvi), 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) revised, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (a)(2)(i)(A) & (b) revised;62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.9 Definitions.

(a)
 
(1)
A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371.
(2)
A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
(3)
A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a), or which entered the national stage froman international application after compliance with35 U.S.C. 371.
(b)
An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
(c)
An independent inventor as used in this chapter means any inventor who (1) has not assigned, granted, conveyed, or licensed, and (2) is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person who could not likewise be classified as an independent inventor if that person had made the invention, or to any concern which would not qualify as a small business concern or a nonprofit organization under this section.
(d)
A small business concern as used in this chapter means any business concern meeting the size standards set forth in 13 CFR Part 121 to be eligible for reduced patent fees. Questions related to size standards for a small business concern may be directed to:Small Business Administration, Size Standards Staff,409 Third Street, SW, Washington, DC 20416.
(e)
A nonprofit organization as used in this chapter means (1) a university or other institution of higher education located in any country; (2) an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)); (3) any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or (4) any non-profit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (e) (2) or (3) of this section if it were located in this country.
(f)
A small entity as used in this chapter means an independent inventor, a small business concern, or a non-profit organization eligible for reduced patent fees.
(g)
For definitions in interferences see § 1.601.
(h)
A Federal holiday within the District of Columbia as used in this chapter means any day, except Saturdays and Sundays, when the Patent and Trademark Office is officially closed for business for the entire day.

[43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 1982, effective Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982, effective Oct. 1, 1982; para. (d), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (g), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (h) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (f) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.10 Filing of papers and fees by “Express Mail.”

(a)
Any correspondence received by the Patent and Trademark Office (Office) that was delivered by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) will be considered filed in the Office on the date of deposit with the USPS. The date of deposit with the USPS is shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the Office receipt date as the filing date. See § 1.6(a).
(b)
Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the “Express Mail” mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
(c)
Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Commissioner to accord the correspondence a filing date as of the “date-in” on the “Express Mail” mailing label or other official USPS notation, provided that:
(1)
The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(2)
The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail;” and
(3)
The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” and of any other official notation by the USPS relied upon to show the date of deposit.
(d)
Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Commissioner to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1)
The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2)
The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”; and
(3)
The petition includes a showing which establishes, to the satisfaction of the Commissioner, that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS.
(e)
Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS but not received by the Office, may petition the Commissioner to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1)
The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2)
The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by ”Express Mail”;
(3)
The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day; and
(4)
The petition includes a statement which establishes, to the satisfaction of the Commissioner, the original deposit of the correspondence and that the copies of the correspondence, the copy of the “Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and official notation entered by the USPS.
(f)
The Office may require additional evidence to determine if the correspondence was deposited as “Express Mail” with the USPS on the date in question.

[48 FR 2708, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983, paras. (a) & (c), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a) - (c) revised and paras. (d) - (f) added, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. (d) & (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE

1.11 Files open to the public.

(a)
After a patent has been issued or a statutory invention registration has been published, the specification, drawings, and all papers relating to the case in the file of the patent or statutory invention registration are open to inspection by the public, and copies may be obtained upon paying the fee therefor. See § 2.27 for trademark files.
(b)
All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecutionapplications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
(c)
All requests for reexamination for which the fee under § 1.20(c) has been paid, will be announced in the Official Gazette. Any reexaminations at the initiative of the Commissioner pursuant to § 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 Commissioner initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
(d)
All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
(e)
The file of any interference involving a patent, a statutory invention registration, a reissue application, or an application on which a patent has been issued or which has been published as a statutory invention registration, is open to inspection by the public, and copies may be obtained upon paying the fee therefor, if:
(1)
The interference has terminated or
(2)
An award of priority or judgment has been entered as to all parties and all counts.

[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 1978; 46 FR 29181, May 29, 1981, para. (c), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a), (b) and (e), 50 FR 9278, Mar. 7, 1985, effective May 8, 1985; para. (e) revised, 60 FR 14488, Mar. 17, 1995, effective Mar. 17, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.12 Assignment records open to public inspection.

(a)
 
(1)
Separate assignment records are maintained in the Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes, for assignments recorded on or after May 1, 1957, and assignment records relating to pending or abandoned trademark applications and to trademark registrations, for assignments recorded on or after January 1, 1955, are open to public inspection at the Patent and Trademark Office, and copies of those assignment records may be obtained upon request and payment of the fee set forth in § 1.19 and § 2.6 of this chapter.
(2)
All records of assignments of patents recorded before May 1, 1957, and all records of trademark assignments recorded before January 1, 1955, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
(b)
Assignment records, digests, and indexes relating to any pending or abandoned application are not available to the public. Copies of any such assignment records and information with respect thereto shall be obtainable only upon written authority of the applicant or applicant's assignee or attorney or agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided by these rules.
(c)
Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:
(1)
Be in the form of a petition accompanied by the petition fee set forth in § 1.17(i); or
(2)
Include written authority granting access to the member of the public to the particular assignment records from the applicant or applicant's assignee or attorney or agent of record.
(d)
An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



1.13 Copies and certified copies.

(a)
Non-certified copies of patents and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the Patent and Trademark Office and open to the public, will be furnished by the Patent and Trademark Office to any person, and copies of other records or papers will be furnished to persons entitled thereto, upon payment of the fee therefor.
(b)
Certified copies of the patents and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the Patent and Trademark Office and certified by the Commissioner, or in his name attested by an officer of the Patent and Trademark Office authorized by the Commissioner, upon payment of the fee for the certified copy.

[Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994]



1.14 Patent applications preserved in confidence.

(a)
Patent applications are generally preserved in confidence pursuant to 35 U.S.C. 122. No information will be given concerning the filing, pendency, or subject matter of any application for patent, and no access will be given to, or copies furnished of, any application or papers relating thereto, except as set forth in this section.
(1)
Status information includes information such as whether the application is pending, abandoned, or patented, as well as the application number and filing date (or international filing date or date of entry into the national stage).
(i)
Status information concerning an application may be supplied:
(A)
When copies of, or access to, the application may be provided pursuant to paragraph (a)(3) of this section;
(B)
When the application is identified by application number or serial number and filing date in a published patent document or in a U.S. application open to public inspection; or
(C)
When the application is the national stage of an international application in which the United States of America has been indicated as a Designated State.
(ii)
Status information concerning an application may also be supplied when the application claims the benefit of the filing date of an application for which status information may be provided pursuant to paragraph (a)(1)(i) of this section.
(2)
Copies of an application-as-filed may be provided to any person, upon written request accompanied by the fee set forth in § 1.19(b)(1), without notice to the applicant, if the application is incorporated by reference in a U.S. patent.
(3)
Copies of (upon payment of the fee set forth in § 1.19(b)(2)), and access to, an application file wrapper and contents may be provided to any person, upon written request, without notice to the applicant, when the application file is available and:
(i)
It has been determined by the Commissioner to be necessary for the proper conduct of business before the Office or warranted by other special circumstances;
(ii)
The application is open to the public as provided in § 1.11(b);
(iii)
Written authority in that application from the applicant, the assignee of the application, or the attorney or agent of record has been granted; or
(iv)
The application is abandoned, but not if the application is in the file jacket of a pending application under § 1.53(d), and is:
(A)
Referred to in a U.S. patent;
(B)
Referred to in a U.S. application open to public inspection;
(C)
An application which claims the benefit of the filing date of a U.S. application open to public inspection; or
(D)
An application in which the applicant has filed an authorization to lay open the complete application to the public.
(b)
Complete applications (§ 1.51(a)) which are abandoned may be destroyed and hence may not be available for access or copies as permitted by paragraph (a)(3)(iv) of this section after 20 years from their filing date, except those to which particular attention has been called and which have been marked for preservation.
(c)
Applications for patents which disclose or which appear to disclose, or which purport to disclose, inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to such applications, but such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or an invention or discovery or that such application in fact discloses subject matter in categories specified by sections 151(c) and 151(d) of the Atomic Energy Act of 1954, 68 Stat. 919; 42 U.S. C. 2181 (c) and (d).
(d)
Any decision of the Board of Patent Appeals and Interferences, or any decision of the Commissioner on petition, not otherwise open to public inspection shall be published or made available for public inspection if: (1) The Commissioner believes the decision involves an interpretation of patent laws or regulations that would be of important precedent value; and (2) the applicant, or any party involved in the interference, does not within two months after being notified of the intention to make the decision public, object in writing on the ground that the decision discloses a trade secret or other confidential information. If a decision discloses such information, the applicant or party shall identify the deletions in the text of the decision considered necessary to protect the information. If it is considered the entire decision must be withheld from the public to protect such information, the applicant or party must explain why. Applicants or parties will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of decisions are made public over their objection. See § 2.27 for trademark applications.
(e)
Any request by a member of the public seeking access to, or copies of, any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any papers relating thereto, must:
(1)
Be in the form of a petition and be accompanied by the petition fee set forth in § 1.17(i); or
(2)
Include written authority granting access to the member of the public in that particular application from the applicant or the applicant's assignee or attorney or agent of record.
(f)
Information as to the filing of an application will be published in the Official Gazette in accordance with § 1.47(a) and (b).

[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 1978; para. (e) added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 1984; para. (d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b), 50 FR 9378, Mar. 7, 1985, effective May 8, 1985; 53 FR 23733, June 23, 1988; para. (e), 54 FR 6893, Feb. 15, 1989, effective April 17, 1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (e) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b) and (e) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised & para. (f) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.15 Requests for identifiable records.

(a)
Requests for records not disclosed to the public as part of the regular informational activity of the Patent and Trademark Office and which are not otherwise dealt with in the rules in this part shall be made in writing, with the envelope and the letter clearly marked “Freedom of Information Request.” Each such request, so marked, should be submitted by mail addressed to the “Patent and Trademark Office, Freedom of Information Request Control Desk, Box 8, Washington, D.C. 20231,” or hand-delivered to the Office of the Solicitor, Patent and Trademark Office, Arlington, Virginia. The request will be processed in accordance with the procedures set forth in Part 4 of Title 15, Code of Federal Regulations.
(b)
Any person whose request for records has been initially denied in whole or in part, or has not been timely determined, may submit a written appeal as provided in § 4.8 of Title 15, Code of Federal Regulations.
(c)
Procedures applicable in the event of service of process or in connection with testimony of employees on official matters and production of official documents of the Patent and Trademark Office in civil legal proceedings not involving the United States shall be those established in parts 15 and 15a of Title 15, Code of Federal Regulations.

[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 1969; amended 53 FR 47685, Nov. 25, 1988, effective Dec. 30, 1988]

FEES AND PAYMENT OF MONEY

1.16 National application filing fees.

(a)
Basic fee for filing each application for an original patent, except provisional, design or plant applications:
By a small entity (§ 1.9(f)) 395.00
By other than a small entity 790.00
(b)
In addition to the basic filing fee in an original application, except provisional applications, for filing or later presentation of each independent claim in excess of 3:
By a small entity (§ 1.9(f)) 41.00
By other than a small entity 82.00
(c)
In addition to the basic filing fee in an original application, except provisional applications, for filing or later presentation of each claim (whether independent or dependent) in excess of 20 (Note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes.):
By a small entity (§ 1.9(f)) 11.00
By other than a small entity 22.00
(d)
In addition to the basic filing fee in an original application, except provisional applications, if theapplication contains, or is amended to contain, a multiple dependent claim(s), per application:
By a small entity (§ 1.9(f)) 135.00
By other than a small entity 270.00
(e)
Surcharge for filing the basic filing fee or oath or declaration on a date later than the filing date of the application, except provisional applications:
By a small entity (§ 1.9(f)) 65.00
By other than a small entity 130.00
(f)
Basic fee for filing each design application:
By a small entity (§ 1.9(f)) 165.00
By other than a small entity 330.00
(g)
Basic fee for filing each plant application, except provisional applications:
By a small entity (§ 1.9(f)) 270.00
By other than a small entity 540.00
(h)
Basic fee for filing each reissue application:
By a small entity (§ 1.9(f)) 395.00
By other than a small entity 790.00
(i)
In addition to the basic filing fee in a reissue application, for filing or later presentation of each independent claim which is in excess of the number of independent claims in the original patent:
By a small entity (§ 1.9(f)) 41.00
By other than a small entity 82.00
(j)
In addition to the basic filing fee in a reissue application, for filing or later presentation of each claim (whether independent or dependent) in excess of 20 and also in excess of the number of claims in the original patent. (Note that § 1.75(c) indicates how multiple dependent claims are considered for fee purposes):
By a small entity (§ 1.9(f)) 11.00
By other than a small entity 22.00
(k)
Basic fee for filing each provisional application:
By a small entity (§ 1.9(f)) 75.00
By other than a small entity 150.00
(l)
Surcharge for filing the basic filing fee or cover sheet (§ 1.51(c)(1)) on a date later than the filing date of the provisional application:
By a small entity (§ 1.9(f)) 25.00
By other than a small entity 50.00
(m)
If the additional fees required by paragraphs (b), (c), (d), (i) and (j) of this section are not paid on filing or on later presentation of the claims for which the additional fees are due, they must be paid or the claims canceled by amendment, prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency.


NOTE -- See §§ 1.445, 1.482 and 1.492 for international application filing and processing fees.

[Added, 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b), (d) - (i), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; paras. (a)-(j), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)-(d) and (f)-(j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; paras. (a), (b), (d) and (f)-(i), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a)-(g) amended and paras. (k) and (l) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a), (b), (d), & (f)-(i) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (b), (d), and (f)-(i) amended and para. (m) added, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), (d), and (f) - (i) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (d) & (l) amended, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.17 Patent application processing fees.

(a)
Extension fees pursuant to § 1.136(a):
(1)
For reply within first month:
By a small entity (§ 1.9(f)) 55.00
By other than a small entity 110.00
(2)
For reply within second month:
By a small entity (§ 1.9(f)) 200.00
By other than a small entity 400.00
(3)
For reply within third month:
By a small entity (§ 1.9(f)) 475.00
By other than a small entity 950.00
(4)
For reply within fourth month:
By a small entity (§ 1.9(f)) 755.00
By other than a small entity 1
(5)
For reply within fifth month:
By a small entity (§ 1.9(f)) 1
By other than a small entity 2
(b)
For filing a notice of appeal from the examiner to the Board of Patent Appeals and Interferences:
By a small entity (§ 1.9(f)) 155.00
By other than a small entity 310.00
(c)
In addition to the fee for filing a notice of appeal, for filing a brief in support of an appeal:
By a small entity (§ 1.9(f)) 155.00
By other than a small entity 310.00
(d)
For filing a request for an oral hearing before the Board of Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:
By a small entity (§ 1.9(f)) 135.00
By other than a small entity 270.00
(e)
[Reserved]
(f)
[Reserved]
(g)
[Reserved]
(h)
For filing a petition to the Commissionerunder a section listed below which refers to this paragraph 130.00
(i)
For filing a petition to the Commissioner under a section listed below which refers to this paragraph 130.00
(j)
For filing a petition to institute a public use proceeding under § 1.292 1,510.00
(k)
For processing an application filed witha specification in a non-English language(§ 1.52(d)) 130.00
(l)
For filing a petition:
(1)
For the revival of an unavoidably abandoned application under 35 U.S.C. 111, 133, 364, or 371 or
(2)
For delayed payment of the issue fee under 35 U.S.C. 151:
By a small entity (§ 1.9(f)) 55.00
By other than a small entity 110.00
(m)
For filing a petition:
(1)
For revival of an unintentionally abandoned application, or
(2)
For the unintentionally delayed payment of the fee for issuing a patent:
By a small entity (§ 1.9(f)) 660.00
By other than a small entity 1
(n)
For requesting publication of a statutory invention registration prior to the mailing of the first examiner's action pursuant to § 1.104 - $920.00 reduced by the amount of the application basic filing fee paid.
(o)
For requesting publication of a statutory invention registration after the mailing of the first examiner's action pursuant to § 1.104 - $1,840.00 reduced by the amount of the application basic filing fee paid.
(p)
For submission of an information disclosure statement under § 1.97(c) 240.00
(q)
For filing a petition to the Commissioner under a section listed below which refers to thisparagraph 50.00
(r)
For entry of a submission after final rejection under § 1.129(a):
By a small entity (§ 1.9(f)) 395.00
By other than a small entity 790.00
(s)
For each additional invention requested to be examined under § 1.129(b):
By a small entity (§ 1.9(f)) 395.00
By other than a small entity 790.00

[Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982 ; para. (h), 48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; para. (h), 49 FR 13461, Apr. 4, 1984, effective June 4, 1984; para. (h), 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; paras. (e), (g), (h) and (i), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (h), (n) and (c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1985;50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; paras. (a)- (m), 54 FR 6893, Feb. 15, 1989, 54 FR 9431, March 7, 1989, effective Apr. 17, 1989; para. (i)(1), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(o), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (i)(1), 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (p) added, 57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. (i)(1), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; corrected 57 FR 32439, July 22, 1992; paras. (b)-(g), (j), and (m)-(o), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (h) & (i) amended and paras. (q)-(s) added, 67 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (b) - (g), (j), (m)-(p), (r) and (s) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (b) - (g), (j), (m) - (p), (r) & (s) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; paras. (a) - (d), (h), (i) & (q) revised, paras. (e) - (g) reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (q) corrected, 62 FR 61235, Nov. 17, 1997, effective Dec. 1, 1997]



1.18 Patent issue fees.

(a)
Issue fee for issuing each original or reissue patent, except a design or plant patent:
By a small entity (§ 1.9(f)) 660.00
By other than a small entity 1
(b)
Issue fee for issuing a design patent:
By a small entity (§ 1.9(f)) 225.00
By other than a small entity 450.00
(c)
Issue fee for issuing a plant patent:
By a small entity (§ 1.9(f)) 335.00
By other than a small entity 670.00

[Added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 56 FR 65142, Dec. 13. 1991, effective Dec. 16, 1991; paras. (a)-(c),57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997]



1.19 Document supply fees.
The Patent and Trademark Office will supply copies of the following documents upon payment of the fees indicated:

(a)
Uncertified copies of patents:
(1)
Printed copy of a patent, including a design patent, statutory invention registration, or defensive publication document, except plant or statutory invention registration containing color drawing:
(i)
Regular service 3.00
(ii)
Overnight delivery to PTO Box or overnight fax 6.00
(iii)
Expedited service for copy ordered by expedited mail or fax delivery service and delivered to the customer within two workdays 25.00
(2)
Printed copy of a plant patent incolor 15.00
(3)
Copy of a utility patent or statutory invention registration containing color drawing (see § 1.84(a)(2)) 25.00
(b)
Certified and uncertified copies of Office documents:
(1)
Certified or uncertified copy of patent application as filed:
(i)
Regular service 15.00
(ii)
Expedited regular service 30.00
(2)
Certified or uncertified copy of patent-related file wrapper and contents 150.00
(3)
Certified or uncertified copy of Office records, per document except as otherwise provided in this section 25.00
(4)
For assignment records, abstract of title and certification, per patent 25.00
(c)
Library service (35 U.S.C. 13): For providing to libraries copies of all patents issued annually, perannum 50.00
(d)
For list of all United States patents and statutory invention registrations in a subclass 3.00
(e)
Uncertified statement as to status of the payment of maintenance fees due on a patent or expiration of a patent 10.00
(f)
Uncertified copy of a non-United States patent document, per document 25.00
(g)
To compare and certify copies made from Patent and Trademark Office records but not prepared by the Patent and Trademark Office, per copy of document . . 25.00
(h)
Additional filing receipts; duplicate; or corrected due to:

[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (f) and (g) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (a) and (c), 50 FR 9379, Mar. 7, 1985, effective date May 8,1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989;54 FR 9432, March 7, 1989, effective Apr. 17, 1989, revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (b)(4), (f) and (h),57 FR 38190, Aug. 21, 1992, effective Oct.1, 1992;para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (a)(1)(ii), (a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended,60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(2) and (a)(3) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997]



1.20 Post issuance fees.

(a)
For providing a certificate of correction for applicant's mistake (§ 1.323) 100.00
(b)
Petition for correction of inventorship in patent (§ 1.324) 130.00
(c)
For filing a request for reexamination(§ 1.510(a)) 2,520.00
(d)
For filing each statutory disclaimer (§ 1.321):
By a small entity (§ 1.9(f)) 55.00
By other than a small entity 110.00
(e)
For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond four years; the fee is due by three years and six months after the original grant:
By other than a small entity 1
(f)
For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond eight years; the fee is due by seven years and six months after the original grant:
By a small entity (§ 1.9(f)) 1
By other than a small entity 2
(g)
For maintaining an original or reissue patent, except a design or plant patent, based on an application filed on or after December 12, 1980, in force beyond twelve years; the fee is due by eleven years and six months after the original grant:
By a small entity (§ 1.9(f)) 1
By other than a small entity 3
(h)
Surcharge for paying a maintenance fee during the six-month grace period following the expiration of three years and six months, seven years and six months, and eleven years and six months after the date of the original grant of a patent based on an application filed on or after December 12, 1980:
By a small entity (§ 1.9(f)) 65.00
By other than a small entity 130.00
(i)
Surcharge for accepting a maintenance fee after expiration of a patent for non-timely payment of a maintenance fee where the delay in payment is shown to the satisfaction of the Commissioner to have been –
(1)
Unavoidable 700.00
(2)
Unintentional 1,640.00
(j)
For filing an application for extension of the term of a patent
(1)
Application for extension under§ 1.740 1,120.00
(2)
Initial application for interim extension under § 1.790 420.00
(3)
Subsequent application for interim extension under § 1.790 220.00

[Added 47 FR 41273, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (k), (l) and (m) added, 49 FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras. (c), (f), (g) and (m), 50 FR 9379, Mar. 7, 1985, effective date May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986;52 FR 9394, Mar. 24, 1987; paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 FR 8053, Feb. 24, 1989, effective Apr. 17, 1989; revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a), (c), (e)-(g) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (i), 58 FR 44277, Aug. 20, 1993, effectiveSept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (j) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; paras. (c), (e)-(g), (i)(2), & (j)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (e) - (g), (i)(1), (i)(2), and (j)(1) - (j)(3) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (c), (e) - (g), (i)(1), (i)(2), and (j)(1) - (j)(3) amended,62 FR 40450, July 29, 1997, effective Oct. 1, 1997]



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:
(l)
For admission to examination for registration to practice:
(i)
Application Fee (non-refundable) . . $40.00
(ii)
Registration examination fee 310.00
(2)
On registration to practice 100.00
(3)
For reinstatement to practice 40.00
(4)
For certificate of good standing as an attorney or agent 10.00
(5)
For review of decision of the Director of Enrollment and Discipline under § 10.2(c) 130.00
(6)
For requesting regrading of an examination under § 10.7(c ):
(i)
Regrading of morning section (PTO Practice and Procedure) 230.00
(ii)
Regrading of afternoon section (Claim Drafting) 540.00
(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 asissued 25.00
(c)
Disclosure document: For filing a disclosure document 10.00
(d)
Delivery box: Local delivery box rental, per annum 50.00
(e)
International type search reports: For preparing an international type search report of an international type search made at the time of the first action on the merits in a national patent application 40.00
(f)
[Reserved]
(g)
Self-service copy charge, per page 0.25
(h)
For recording each assignment, agreement, or other paper relating to the property in a patent or application, per property 40.00
(i)
Publication in Official Gazette: For publication in the Official Gazette of a notice of the availability of an application or a patent for licensing or sale:
Each application or patent 25.00
(j)
Labor charges for services, per hour or fraction thereof 40.00
(k)
For items and services that the Commissioner finds may be supplied, for which fees are not specified by statute or by this part, such charges as may be determined by the Commissioner with respect to each such item or service Actual cost
(l)
For processing and retaining any application abandoned pursuant to § 1.53(f), unless the required basic filing fee (§ 1.16) has been paid 130.00
(m)
For processing each check returned “unpaid” by a bank 50.00
(n)
For handling an application in which proceedings are terminated pursuant to § 1.53(e) 130.00
(o)
Marginal cost, paid in advance, for each hour of terminal session time, including print time, using Automated Patent System full-text search capabilities, prorated for the actual time used. The Commissioner may waive the payment by an individual for access to the Automated Patent System full-text search capability (APS-Text) upon a showing of need or hardship and if such waiver is in the public interest 40.00

[Added 47 FR 41274, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b) and (l), 49 FR 553, Jan. 4, 1984, effective date Apr. 1, 1984; paras. (a)(5) and (6) added, 50 FR 5171, Feb. 6, 1985, effective date Apr. 8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; paras. (a), (b)(1), (d)-(j), (l)-(m),54 FR 6893, Feb. 15, 1989; 54 FR 8053, Feb. 24, 1989; 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (n) added54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (o)-(q) added 54 FR 50942, Dec.11, 1989, effective Feb. 12, 1990; paras. (a)-(c), (e)-(h), (j)-(l) & (n) amended, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (p) and (q) deleted, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1), (a)(5), (a)(6), (b)(2), (b)(3), (e) and (i), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) added,57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (p) deleted, 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994;para. (l) amended, 60 FR 20195, Apr. 25, 1995, effective June8, 1995; para. (a)(1) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1), (a)(3) and (a)(6) revised,61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(ii), (a)(6), and (j) amended, 62 FR 40450, July 29,1997, effective Oct. 1, 1997; paras. (l) & (n) revised, 62 FR53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.22 Fees payable in advance.

(a)
Patent and trademark fees and charges payable to the Patent and Trademark Office are required to be paid in advance, that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under § 1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
(b)
All patent and trademark fees paid to the Patent and Trademark Office should be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid.

[48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983]



1.23 Method of payment.
All payments of money required for Patent and Trademark Office fees, including fees for the processing of international applications (§ 1.445), should be made in U.S. specie, Treasury notes, national bank notes, post office money orders, or by certified check. If sent in any other form, the Office may delay or cancel the credit until collection is made. Money orders and checks must be made payable to the Commissioner of Patents and Trademarks. Remittances from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent by mail to the Patent and Trademark Office will be at the risk of the sender; letters containing money should be registered.

[43 FR 20462, May 11, 1978]



1.24 Coupons.
Coupons in denominations of three dollars, for the purchase of patents, designs, defensive publications, statutory invention registrations, and trademark registrations are sold by the Patent and Trademark Office for the convenience of the general public; these coupons may not be used for any other purpose. The three-dollar coupons are sold individually and in books of 50 for $150.00. These coupons are good until used; they may be transferred but cannot be redeemed.

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2708, Jan. 20, 1983, effective date Feb. 27, 1983; 50 FR 31825, Aug. 6, 1985, effective Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986;56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991]



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 § 1.21(b)(1)). A minimum deposit of $1,000 is required for paying any fee 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 value. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 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 (§ 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 §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed. An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.

[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 41274, Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985]



1.26 Refunds.

(a)
Any fee paid by actual mistake or in excess of that required will be refunded, but a mere change of purpose after the payment of money, as when a party desires to withdraw an application, an appeal, or a request for oral hearing, will not entitle a party to demand such a return. Amounts of twenty-five dollars or less will not be returned unless specifically requested within a reasonable time, nor will the payer be notified of such amounts; amounts over twenty-five dollars may be returned by check or, if requested, by credit to a deposit account.
(b)
[Reserved]
(c)
If the Commissioner decides not to institute a reexamination proceeding, a refund of $1,690 will be made to the requester of the proceeding. Reexamination requesters should indicate whether any refund should be made by check or by credit to a deposit account.

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 50 FR 31826 Aug. 6, 1985, effective Oct. 5, 1985; para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (c), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) and (c), 57 FR 38190, Aug. 21, 1992, effective Oct. 1,1992; para. (a) revised,62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.27 Statement of status as small entity.

(a)
Any person seeking to establish status as a small entity (§ 1.9(f) of this part) for purposes of paying fees in an application or a patent must file a statement in the application or patent prior to or with the first fee paid as a small entity. Such a statement need only be filed once in an application or patent and remains in effect until changed.
(b)
When establishing status as a small entity pursuant to paragraph (a) of this section, any statement filed on behalf of an independent inventor must be signed by the independent inventor except as provided in § 1.42, § 1.43, or § 1.47 of this part and must state that the inventor qualifies as an independent inventor in accordance with § 1.9(c) of this part. Where there are joint inventors in an application, each inventor must file a statement establishing status as an independent inventor in order to qualify as a small entity. Where any rights have been assigned, granted, conveyed, or licensed, or there is an obligation to assign, grant, convey, or license, any rights to a small business concern, a nonprofit organization, or any other individual, a statement must be filed by the individual, the owner of the small business concern, or an official of the small business concern or nonprofit organization empowered to act on behalf of the small business concern or nonprofit organization identifying their status. For purposes of a statement under this paragraph, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license as set forth in § 1.9 of this part.
(c)
 
(1)
Any statement filed pursuant to paragraph (a) of this section on behalf of a small business concern must:
(i)
Be signed by the owner or an official of the small business concern empowered to act on behalf of the concern;
(ii)
State that the concern qualifies as a small business concern as defined in § 1.9(d); and
(iii)
State that the exclusive rights to the invention have been conveyed to and remain with the small business concern or, if the rights are not exclusive, that all other rights belong to small entities as defined in § 1.9.
(2)
Where the rights of the small business concern as a small entity are not exclusive, a statement must also be filed by the other small entities having rights stating their status as such. For purposes of a statement under this paragraph, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a license as set forth in § 1.9 of this part.
(d)
 
(1)
Any statement filed pursuant to paragraph (a) of this section on behalf of a nonprofit organization must:
(i)
Be signed by an official of the nonprofit organization empowered to act on behalf of the organization;
(ii)
State that the organization qualifies as a nonprofit organization as defined in § 1.9(e) of this part specifying under which one of § 1.9(e)(1), (2), (3), or (4) of this part the organization qualifies; and
(iii)
State that exclusive rights to the invention have been conveyed to and remain with the organization or if the rights are not exclusive that all other rights belong to small entities as defined in § 1.9 of this part.
(2)
Where the rights of the nonprofit organization as a small entity are not exclusive, a statement must also be filed by the other small entities having rights stating their status as such. For purposes of a statement under this paragraph, a license to a Federal agency pursuant to 35 U.S.C. 202(c)(4) does not constitute a conveyance of rights as set forth in this paragraph.

[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997]



1.28 Effect on fees of failure to establish status, or change status, as a small entity.

(a)
 
(1)
The failure to establish status as a small entity (§§ 1.9(f) and 1.27 of this part) in any application or patent prior to paying, or at the time of paying, any fee precludes payment of the fee in the amount established for small entities. A refund pursuant to § 1.26 of this part, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if a statement under § 1.27 and a request for a refund of the excess amount are filed within two months of the date of the timely payment of the full fee. The two-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within two months of the date of payment of, the fee.
(2)
Status as a small entity must be specifically established in each application or patent in which the status is available and desired. Status as a small entity in one application or patent does not affect any other application or patent, including applications or patents which are directly or indirectly dependent upon the application or patent in which the status has been established. The refiling of an application under § 1.53 as a continuation, division, or continuation-in-part (including a continued prosecution application under§ 1.53(d)), or the filing of a reissue application requires a new determination as to continued entitlement to small entity status for the continuing or reissue application. A nonprovisional application claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application, or a reissue application may rely on a statement filed in the prior application or in the patent if the nonprovisional application or the reissue application includes a reference to the statement in the prior application or in the patent or includes a copy of the statement in the prior application or in the patent and status as a small entity is still proper and desired. The payment of the small entity basic statutory filing fee will be treated as such a reference for purposes of this section.
(3)
Once status as a small entity has been established in an application or patent, the status remains in that application or patent without the filing of a further statement pursuant to § 1.27 of this part unless the Office is notified of a change in status.
(b)
Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. Notification of any change in status resulting in loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate pursuant to § 1.9 of this part. The notification of change in status may be signed by the applicant, any person authorized to sign on behalf of the assignee, or an attorney or agent of record or acting in a representative capacity pursuant to § 1.34(a) of this part.
(c)
If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error or that through error the Office was not notified of a change in status as required by paragraph (b) of this section, the error will be excused upon payment of the deficiency between the amount paid and the amount due. The deficiency is based on the amount of the fee, for other than a small entity, in effect at the time the deficiency is paid in full.
(d)
 
(1)
Any attempt to fraudulently (i) establish status as a small entity or (ii) pay fees as a small entity shall be considered as a fraud practiced or attempted on the Office.
(2)
Improperly and with intent to deceive (i) Establishing status as a small entity, or (ii) Paying fees as a small entity shall be considered as a fraud practiced or attempted on the Office.

[47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 1982; para. (a), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; para. (d)(2), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (c) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997]

B National Processing Provisions

PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT

1.31 Applicants may be represented by a registered attorney or agent.
An applicant for patent may file and prosecute his or her own case, or he or she may be represented by a registered attorney, registered agent, or other individualauthorized to practice before the Patent and Trademark Office in patent cases. See §§ 10.6 and 10.9 of this subchapter. The Patent and Trademark Office cannot aid in the selection of a registered attorney or agent.

[50 FR 5171, Feb. 6,1985, effective Mar. 8, 1985]



1.32 [Reserved]

[Deleted 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]



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

(a)
The applicant, the assignee(s) of the entire interest (see §§ 3.71 and 3.73) or an attorney or agent of record (see § 1.34(b)) may specify a correspondence address to which communications about the application are to be directed. All notices, official letters, and other communications in the application will be directed to the correspondence address or, if no such correspondence address is specified, to an attorney or agent of record (see § 1.34(b)), or, if no attorney or agent is of record, to the applicant, so long as a post office address has been furnished in the application. Double correspondence with an applicant and an attorney or agent, or with more than one attorney or agent, will not be undertaken. If more than one attorney or agent is made of record and a correspondence address has not been specified, correspondence will be held with the one last made of record.
(b)
Amendments and other papers filed in the application must be signed by:
(1)
An attorney or agent of record appointed in compliance with § 1.34(b);
(2)
A registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34(a);
(3)
The assignee of record of the entire interest, if there is an assignee of record of the entire interest;
(4)
An assignee of record of an undivided part interest, and any assignee(s) of the remaining interest and any applicant retaining an interest, if there is an assignee of record of an undivided part interest; or
(5)
All of the applicants (§§ 1.42, 1.43 and 1.47) for patent, unless there is an assignee of record of the entire interest and such assignee has taken action in the application in accordance with §§ 3.71 and 3.73.
(c)
All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the attorney or agent of record (see § 1.34(b)) in the patent file at the address listed on the register of patent attorneys and agents maintained pursuant to §§ 10.5 and 10.11 or, if no attorney or agent is of record, to the patent owner or owners at the address or addresses of record. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34(a). Double correspondence with the patent owner or owners and the patent owner's attorney or agent, or with more than one attorney or agent, will not be undertaken. If more than one attorney or agent is of record and a correspondence address has not been specified, correspondence will be held with the last attorney or agent made of record.
(d)
A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The“correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.

[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; paras. (a) & (b) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 1997]



1.34 Recognition for representation.

(a)
When a registered attorney or agent acting in a representative capacity appears in person or signs a paper in practice before the Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representation to the Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party in whose behalf he or she acts. In filing such a paper, the registered attorney or agent should specify his or her registration number with his or her signature. Further proof of authority to act in a representative capacity may be required.
(b)
When an attorney or agent shall have filed his or her power of attorney, or authorization, duly executed by the person or persons entitled to prosecute an application or a patent involved in a reexamination proceeding, he or she is a principal attorney of record in the case. A principal attorney or agent, so appointed, may appoint an associate attorney or agent who shall also then be of record.

[46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, Feb. 6, 1985, effective Mar. 6, 1985]



1.36 Revocation of power of attorney or authorization; withdrawal of attorney or agent.
A power of attorney or authorization of agent may be revoked at any stage in the proceedings of a case, and an attorney or agent may withdraw, upon application to and approval by the Commissioner. An attorney or agent, except an associate attorney or agent whose address is the same as that of the principal attorney or agent, will be notified of the revocation of the power of attorney or authorization, and the applicant or patent owner will be notified of the withdrawal of the attorney or agent. An assignment will not of itself operate as a revocation of a power or authorization previously given, but the assignee of the entire interest may revoke previous powers and be represented by an attorney or agent of the assignee's own selection. See § 1.613(d) for withdrawal of an attorney or agent of record in an interference.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]

WHO MAY APPLY FOR A PATENT

1.41 Applicant for patent.

(a)
A patent is applied for in the name or names of the actual inventor or inventors.
(1)
The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63, except as provided for in § 1.53(d)(4) and § 1.63(d). If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b), unless a petition under this paragraph accompanied by the fee set forth in § 1.17(i) is filed supplying or changing the name or names of the inventor or inventors.
(2)
The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1). If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c), unless a petition under this paragraph accompanied by the fee set forth in § 1.17(q) is filed supplying or changing the name or names of the inventor or inventors.
(3)
In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1), the name or names of person or persons believed to be the actual inventor or inventors should be provided for identification purposes when the application papers pursuant to § 1.53(b) or (c) are filed. If no name of a person believed to be an actual inventor is so provided, the application should include an applicant identifier consisting of alphanumeric characters.
(b)
Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42, 1.43 or 1.47 whois applying for a patent in place of the inventor.
(c)
Any person authorized by the applicant may file an application for patent on behalf of the inventor or inventors, but an oath or declaration for the application (§ 1.63) can only be made in accordance with § 1.64.
(d)
A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.42 When the inventor is dead.
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]



1.43 When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally incapacitated, the legal representative (guardian, conservator, etc.) of such inventor may make the necessary oath or declaration, and apply for and obtain the patent.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983]



1.44 Proof of authority.
In the cases mentioned in §§ 1.42 and 1.43, proof of the power or authority of the legal representative must be recorded in the Patent and Trademark Office or filed in the application before the grant of a patent.

1.45 Joint inventors.

(a)
Joint inventors must apply for a patent jointly and each must make the required oath or declaration: neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47.
(b)
Inventors may apply for a patent jointly even though
(1)
They did not physically work together or at the same time,
(2)
Each inventor did not make the same type or amount of contribution, or
(3)
Each inventor did not make a contribution to the subject matter of every claim of the application.
(c)
If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116. If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116.

[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983;50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]



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

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]



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

(a)
If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in § 1.17(i) and the last known address of the nonsigning inventor. The Patent and Trademark Office shall, except in a continued prosecution application under § 1.53(d), forward notice of the filing of the application to the nonsigning inventor at said address and publish notice of the filing of the application in the Official Gazette. The nonsigning inventor may subsequently join in the application on filing an oath or declaration complying with § 1.63.
(b)
Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action may make application for patent on behalf of and as agent for all the inventors. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, the fee set forth in § 1.17(i), and the last known address of all of the inventors. The Office shall, except in a continued prosecution application under § 1.53(d), forward notice of the filing of the application to all of the inventors at the addresses stated in the application and publish notice of the filing of the application in the Official Gazette. An inventor may subsequently join in the application on filing an oath or declaration complying with § 1.63.

[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 48FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.48 Correction of inventorship in a patent application, other than a reissue application.

(a)
If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in an application, other than a reissue application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the application may be amended to name only the actual inventor or inventors. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Such amendment must be accompanied by:
(1)
A petition including a statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
(2)
An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or 1.47;
(3)
The fee set forth in § 1.17(i); and
(4)
If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b)).
(b)
If the correct inventors are named in a nonprovisional application, other than a reissue application, and the prosecution of the application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the application, an amendment must be filed deleting the name or names of the person or persons who are not inventors of the invention being claimed. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Such amendment must be accompanied by:
(1)
A petition including a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer being claimed in the application; and
(2)
The fee set forth in § 1.17(i).
(c)
If a nonprovisional application, other than a reissue application, discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. When the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Such amendment must be accompanied by:
(1)
A petition including a statement from each person being added as an inventor that the amendment is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;
(2)
An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or 1.47;
(3)
The fee set forth in § 1.17(i); and
(4)
If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b)).
(d)
If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Such amendment must be accompanied by:
(1)
A petition including a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
(2)
The fee set forth in § 1.17(q).
(e)
If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Such amendment must be accompanied by:
(1)
A petition including a statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
(2)
The fee set forth in § 1.17(q); and
(3)
If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b)).
(f)
 
(1)
If the correct inventor or inventors are not named on filing a nonprovisional application under§ 1.53(b) without an executed oath or declaration under § 1.63, the later submission of an executed oath or declaration under § 1.63 during the pendency of the application will act to correct the earlier identification of inventorship.
(2)
If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship.
(g)
The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (a), 57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

THE APPLICATION

1.51 General requisites of an application.

(a)
Applications for patents must be made to the Commissioner of Patents and Trademarks.
(b)
A complete application filed under § 1.53(b) comprises:
(1)
A specification as prescribed by 35 U.S.C. 112, including a claim or claims, see §§ 1.71 to 1.77;
(2)
An oath or declaration, see § 1.63 and § 1.68;
(3)
Drawings, when necessary, see §§ 1.81 to 1.85; and
(4)
The prescribed filing fee, see § 1.16.
(c)
A complete provisional application filed under § 1.53(c) comprises:
(1)
A cover sheet identifying:
(i)
The application as a provisional application,
(ii)
The name or names of the inventor or inventors, (see § 1.41(a)(2)),
(iii)
The residence of each named inventor,
(iv)
The title of the invention,
(v)
The name and registration number of the attorney or agent (if applicable),
(vi)
The docket number used by the person filing the application to identify the application (if applicable),
(vii)
The correspondence address, and
(viii)
The name of the U.S. Government agency and Government contract number (if the invention was made by an agency of the U.S. Government or under a contract with an agency of the U.S. Government);
(2)
A specification as prescribed by the first paragraph of 35 U.S.C. 112, see § 1.71;
(3)
Drawings, when necessary, see §§ 1.81 to 1.85; and
(4)
The prescribed filing fee, see § 1.16.
(d)
Applicants are encouraged to file an information disclosure statement in nonprovisional applications. See § 1.97 and § 1.98. No information disclosure statement may be filed in a provisional application.

[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.52 Language, paper, writing, margins.

(a)
The application, any amendments or corrections thereto, and the oath or declaration must be in the English language except as provided for in § 1.69 and paragraph (d) of this section, or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation isaccurate. All papers which are to become a part of the permanent records of the Patent and Trademark Office must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper. All of the application papers must be presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic reproduction by use of digital imaging and optical character recognition. If the papers are not of the required quality, substitute typewritten or mechanically printed papers of suitable quality will be required. See § 1.125 for filing substitute typewritten or mechanically printed papers constituting a substitute specification when required by the Office.
(b)
Except for drawings, the application papers (specification, including claims, abstract, oath or declaration, and papers as provided for in this part) and also papers subsequently filed, must have each page plainly written on only one side of a sheet of paper, with the claim or claims commencing on a separate sheet and the abstract commencing on a separate sheet. See §§ 1.72(b) and 1.75(h). The sheets of paper must be the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). Each sheet must include a top margin of at least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm. (3/4 inch), and no holes should be made in the sheets as submitted. The lines of the specification, and any amendments to the specification, must be 1 1/2 or double spaced. The pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably, below, the text. See § 1.84 for drawings.
(c)
Any interlineation, erasure, cancellation or other alteration of the application papers filed should be made on or before the signing of any accompanying oath or declaration pursuant to § 1.63 referring to those application papers and should be dated and initialed or signed by the applicant on the same sheet of paper. Application papers containing alterations made after the signing of an oath or declaration referring to those application papers must be supported by a supplemental oath or declaration under § 1.67(c). After the signing of the oath or declaration referring to the application papers, amendments may only be made in the manner provided by § 1.121.
(d)
An application may be filed in a language other than English. An English translation of the non-English-language application, a statement that the translation is accurate, and the fee set forth in§ 1.17(k) are required to be filed with the application or within such time as may be set by the Office.

[43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; para. (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) and (b) amended,61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (a), (c) & (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

(a)
Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
(b)
Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to§ 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).
(1)
A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2)
A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
(c)
Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1)
A provisional application must also include the cover sheet required by § 1.51(c)(1) or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
(2)
An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section,
(i)
Provided that a petition requesting the conversion, with the fee set forth in § 1.17(q), is filed prior to the earliest of:
(A)
Abandonment of the application filed under paragraph (b) of this section;
(B)
Payment of the issue fee on the application filed under paragraph (b) of this section;
(C)
Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or
(D)
The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.
(ii)
The grant of any such petition will not entitle applicant to a refund of the fees which were properly paid in the application filed under paragraph (b) of this section.
(3)
A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under § 1.78(a)(3) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
(d)
Application filing requirements - Continued prosecution (nonprovisional) application.
(1)
A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i)
The prior nonprovisional application is either:
(A)
Complete as defined by § 1.51(b) ; or
(B)
The national stage of an international application in compliance with 35 U.S.C. 371; and
(ii)
The application under this paragraph is filed before the earliest of:
(A)
Payment of the issue fee on the prior application, unless a petition under § 1.313(b)(5) is granted in the prior application;
(B)
Abandonment of the prior application; or
(C)
Termination of proceedings on the prior application.
(2)
The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i)
Must identify the prior application;
(ii)
Discloses and claims only subject matter disclosed in the prior application;
(iii)
Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv)
Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v)
Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3)
The filing fee for a continued prosecution application filed under this paragraph is:
(i)
The basic filing fee as set forth in § 1.16; and
(ii)
Any additional § 1.16 fee due based on the number of claims remaining in the application after entry of any amendment accompanying the request for an application under this paragraph and entry of any amendments under § 1.116 unentered in the prior application which applicant has requested to be entered in the continued prosecution application.
(4)
An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of a petition under § 1.48.
(5)
Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6)
The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7)
A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8)
In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i)
Title of invention;
(ii)
Name of applicant(s); and
(iii)
Correspondence address.
(9)
Envelopes containing only requests and fees for filing an application under this paragraph should be marked “Box CPA.” Requests for an application under this paragraph filed by facsimile transmission should be clearly marked “Box CPA.”
(e)
Failure to meet filing date requirements.
(1)
If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a time period within which to correct the filing error.
(2)
Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph. Any petition under this paragraph must be accompanied by the fee set forth in § 1.17(i) in an application filed under paragraphs (b) or (d) of this section, and the fee set forth in § 1.17(q) in an application filed under paragraph (c) of this section. In the absence of a timely (§ 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 (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
(f)
Completion of application subsequent to filing - Nonprovisional (including continued prosecution)application. If an application which has been accorded a filing date pursuant to paragraph (b) of this section, including a continuation, divisional, or continuation-in-part application, does not include the appropriate filing fee or an oath or declaration by the applicant pursuant to § 1.63 or § 1.175, or, if an application which has been accorded a filing date pursuant to paragraph (d) of this section does not include the appropriate filing fee, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, oath or declaration, and the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application. If the required filing fee is not timely paid, or if the processing and retention fee set forth in§ 1.21(l) is not paid within one year of the date of mailing of the notification required by this paragraph, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, the oath or declaration in an application under paragraph (b) of this section, and the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application; or, if no basic filing fee has been paid, one year from the filing date to pay the processing and retention fee set forth in § 1.21(l) to prevent disposal of the application.
(g)
Completion of application subsequent to filing -Provisional application. If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the appropriate filing fee or the cover sheet required by § 1.51(c)(1), applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to file the fee, cover sheet, and the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the application. If the required filing fee is not timely paid, the application may be disposed of. The notification pursuant to this paragraph may be made simultaneously with any notification pursuant to paragraph (e) of this section. If no correspondence address is included in the application, applicant has two months from the filing date to file the basic filing fee, cover sheet, and the surcharge as set forth in § 1.16(l) in order to prevent abandonment of the application.
(h)
Subsequent treatment of application - Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.
(i)
Subsequent treatment of application - Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
(j)
Filing date of international application. The filing date of an international application designating the United States of America is treated as the filing date in the United States of America under PCT Article 11(3), except as provided in 35 U.S.C. 102(e).

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (c), 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; paras.(c) and (d), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; paras. (b) and (c), 54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10 ,1997, effective Dec. 1, 1997; para. (d) revised, 63 FR 5734, Feb. 4, 1998, effective Feb. 4, 1998]



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

(a)
It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53(f) and (g) with regard to completion of an application.
(b)
Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under § 1.53(d).

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.55 Claim for foreign priority.

(a)
An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and 172. The claim to priority need be in no special form and may be made by the attorney or agent if the foreign application is referred to in the oath or declaration as required by § 1.63. The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) must be filed in the case of an interference (§ 1.630), when necessary to overcome the date of a reference relied upon by the examiner, when specifically required by the examiner, and in all other situations, before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by a petition requesting entry and by the fee set forth in § 1.17(i). If the certified copy is not in the English language, a translation need not be filed except in the case of interference; or when necessary to overcome the date of a reference relied upon by the examiner; or when specifically required by the examiner, in which event an English language translation must be filed together with a statement that the translation of the certified copy is accurate.
(b)
An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in paragraph (a) of this section, shall include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor's certificate, had the option to file an application for either a patent or an inventor's certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.

[para. (b), 48 FR 41275, Sept. 17, 1982, effective Oct. 1 1982; 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; para. (b),49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (a),54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 60 FR 20195, Apr.25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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 §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:
(1)
Prior art cited in search reports of a foreign patent office in a counterpart application, and
(2)
The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentably defines, to make sure that any material information contained therein is disclosed to the Office.
(b)
Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1)
It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2)
It refutes, or is inconsistent with, a position the applicant takes in:
(i)
Opposing an argument of unpatentability relied on by the Office, or
(ii)
Asserting an argument of patentability.


A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

(c)
Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1)
Each inventor named in the application;
(2)
Each attorney or agent who prepares or prosecutes the application; and
(3)
Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.
(d)
Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.

[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 47 FR 21751, May 19, 1982, effective July 1, 1982; para. (c), 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992]



1.57 [Reserved]

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983]



1.58 Chemical and mathematical formulae and tables.

(a)
The specification, including the claims, may contain chemical and mathematical formulas, but shall not contain drawings or flow diagrams. The description portion of the specification may contain tables; claims may contain tables either if necessary to conform to35 U.S.C. 112 or if otherwise found to be desirable.
(b)
[Reserved]
(c)
Chemical and mathematical formulae and tables must be presented in compliance with § 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 are at least 0.21 cm. (0.08 inch) high (e.g., elite type). A space at least 0.64 cm. (1/4 inch) high should be provided between complex formulae and tables and the text. Tables should have the lines and columns of data closely spaced to conserve space, consistent with a high degree of legibility.

[43 FR 20463, May 11, 1978; para. (b) removed and reserved, para. (c) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



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

(a)
 
(1)
Information in an application will not be expunged and returned, except as provided in paragraph (b) of this section. See § 1.618 for return of unauthorized and improper papers in interferences.
(2)
Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment specifically incorporated into an executed oath or declaration under §§ 1.63 and 1.175) will not be expunged from the application file.
(b)
Information, other than what is excluded by paragraph (a)(2) of this section, may be requested to be expunged and returned to applicant upon petition under this paragraph and payment of the petition fee set forth in § 1.17(i). Any petition to expunge and return information from an application must establish to the satisfaction of the Commissioner that the return of the information is appropriate.
(c)
Upon request by an applicant and payment of the fee specified in § 1.19(b), the Office will furnish copies of an application, unless the application has been disposed of (see § 1.53(e), (f) and (g)). The Office cannot provide or certify copies of an application that has been disposed of.

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.60 [Reserved]

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; paras. (a), (b) and (c), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (b) and (c) revised, para. (d) added, 57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.61 [Reserved]

(Editor's note: Substance moved to § 1.494)

[52 FR 20046, May 28, 1987, effective July 1, 1987]



1.62 [Reserved]

[47 FR 47244, Oct. 25, 1982, added effective Feb. 27, 1983; 48 FR 2710, Jan. 20, 1983, effective date Feb. 27, 1983; paras. (a) and (d), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a), (c), and (h), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; paras. (e) and (j), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a) and (e) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (f) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

OATH OR DECLARATION

1.63 Oath or declaration.

(a)
An oath or declaration filed under § 1.51(b)(2) as a part of an application must:
(1)
Be executed in accordance with either § 1.66 or § 1.68;
(2)
Identify the specification to which it is directed;
(3)
Identify each inventor by: full name, including the family name, and at least one given name without abbreviation together with any other given name or initial, and the residence, post office address and country of citizenship of each inventor; and
(4)
State whether the inventor is a sole or joint inventor of the invention claimed.
(b)
In addition to meeting the requirements of paragraph (a), the oath or declaration must state that the person making the oath or declaration:
(1)
Has reviewed and understands the contents of the specification, including the claims, as amended by any amendment specifically referred to in the oath or declaration;
(2)
Believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought; and
(3)
Acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.
(c)
In addition to meeting the requirements of paragraphs (a) and (b) of this section, the oath or declaration in any application in which a claim for foreign priority is made pursuant to § 1.55 must identify the foreign application for patent or inventor's certificate on which priority is claimed and any foreign application having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.
(d)
 
(1)
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
(i)
The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
(ii)
The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
(iii)
The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
(iv)
A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
(2)
The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
(3)
Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
(i)
A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and
(ii)
If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
(4)
Where the power of attorney (or authorization of agent) or correspondence address was changed during the prosecution of the prior application, the change in power of attorney (or authorization of agent) or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney (or authorization of agent) or correspondence address during the prosecution of the prior application.
(5)
A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
(e)
A newly executed oath or declaration must be filed in any continuation-in-part application, which application may name all, more, or fewer than all of the inventors named in the prior application. The oath or declaration in any continuation-in-part application must also state that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application.

[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & (d) revised, para. (e) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.64 Person making oath or declaration.

(a)
The oath or declaration must be made by all of the actual inventors except as provided for in §§ 1.42, 1.43, or 1.47.
(b)
If the person making the oath or declaration is not the inventor (§§ 1.42, 1.43, or 1.47), the oath or declaration shall state the relationship of the person to the inventor and, upon information and belief, the facts which the inventor is required to state.

[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 1983]



1.66 Officers authorized to administer oaths.

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

[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982]



1.67 Supplemental oath or declaration.

(a)
A supplemental oath or declaration meeting the requirements of § 1.63 may be required to be filed to correct any deficiencies or inaccuracies present in an earlier filed oath or declaration.
(b)
A supplemental oath or declaration meeting the requirements of § 1.63 must be filed when a claim is presented for matter originally shown or described but not substantially embraced in the statement of invention or claims originally presented or when an oath or declaration submitted in accordance with § 1.53(f) after the filing of the specification and any required drawings specifically and improperly refers to an amendment which includes new matter. No new matter may be introduced into a nonprovisional application after its filing date even if a supplemental oath or declaration is filed. In proper situations, the oath or declaration here required may be made on information and belief by an applicant other than the inventor.
(c)
A supplemental oath or declaration meeting the requirements of § 1.63 must also be filed if the application was altered after the oath or declaration was signed or if the oath or declaration was signed:
(1)
In blank;
(2)
Without review thereof by the person making the oath or declaration; or
(3)
Without review of the specification, including the claims, as required by § 1.63(b)(1).

[48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (c) added, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.68 Declaration in lieu of oath.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]



1.69 Foreign language oaths and declarations.

(a)
Whenever an individual making an oath or declaration cannot understand English, the oath or declaration must be in a language that such individual can understand and shall state that such individual understands the content of any documents to which the oath or declaration relates.
(b)
Unless the text of any oath or declaration in a language other than English is a form provided or approved by the Patent and Trademark Office, it must be accompanied by an English translation together with a statement that the translation is accurate, except that in the case of an oath or declaration filed under § 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.

[42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.70 [Reserved]

(Editor's note: Substance moved to § 1.497)

[52 FR 20046, May 28, 1987, effective July 1, 1987]

SPECIFICATION

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 ofthe process, machine, manufacture, or compositionof matter to which the improvement relates, andthe description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
(d)
A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
(e)
The authorization shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by any­one of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patentfile or records, but otherwise reserves all (copyrightor mask work) rights whatsoever.

[paras. (d) and (e), 53 FR 47808, Nov. 28, 1988, effective Jan. 1, 1989; para. (d), 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]



1.72 Title and abstract.

(a)
The title of the invention, which should be as short and specific as possible, should appear as a heading on the first page of the specification, if it does not otherwise appear at the beginning of the application.
(b)
A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, under the heading “Abstract of the Disclosure.” The purpose of the abstract is to enable the Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure. The abstract shall not be used for interpreting the scope of the claims.

[31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 1978; para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



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.

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).

1.75 Claim(s).

(a)
The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
(b)
More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.
(c)
One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim (“multiple dependent claim”) shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under§ 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes, also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(d). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
(d)
 
(1)
The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See§ 1.58(a)).
(2)
See §§ 1.141 to 1.146 as to claiming different inventions in one application.
(e)
Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1)
A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2)
A phrase such as “wherein the improvement comprises,” and
(3)
Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
(f)
If there are several claims, they shall be numbered consecutively in Arabic numerals.
(g)
The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.
(h)
The claim or claims must commence on a separate sheet.
(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.

[31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 1971; 37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; para. (c), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (g) amended, paras. (h) and (i) added, 61 FR 42790, Aug. 19, 1996, effective Sept 23, 1996]



1.77 Arrangement of application elements.

(a)
The elements of the application, if applicable, should appear in the following order:
(1)
Utility Application Transmittal Form.
(2)
Fee Transmittal Form.
(3)
Title of the invention; or an introductory portion stating the name, citizenship, and residence of the applicant, and the title of the invention.
(4)
Cross-reference to related applications.
(5)
Statement regarding federally sponsored research or development.
(6)
Reference to a “Microfiche appendix.” (See § 1.96 (c)). The total number of microfiche and total number of frames should be specified.
(7)
Background of the invention.
(8)
Brief summary of the invention.
(9)
Brief description of the several views of the drawing.
(10)
Detailed description of the invention.
(11)
Claim or claims.
(12)
Abstract of the Disclosure.
(13)
Drawings.
(14)
Executed oath or declaration.
(15)
Sequence Listing (See §§ 1.821 through 1.825).
(b)
The elements set forth in paragraphs (a)(3) through (a)(5), (a)(7) through (a)(12) and (a)(15) of this section should appear in upper case, without underlining or bold type, as section headings. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading.

[43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 1981; paras. (h) and (i), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



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

(a)
 
(1)
A nonprovisional application may claim an invention disclosed in one or more prior filed copending nonprovisional applications or copending international applications designating the United States of America. In order for a nonprovisional application to claim the benefit of a prior filed copending nonprovisional application or copending international application designating the United States of America, each prior application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor's invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior application must be:
(i)
An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or
(ii)
Complete as set forth in § 1.51(b); or
(iii)
Entitled to a filing date as set forth in§ 1.53(b) or § 1.53(d) and include the basic filing fee set forth in § 1.16; or
(iv)
Entitled to a filing date as set forth in§ 1.53(b) and have paid therein the processing and retention fee set forth in § 1.21(l) within the time period set forth in § 1.53(f).
(2)
Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application claiming the benefit of one or more prior filed copending nonprovisional applications or international applications designating the United States of America must contain or be amended to contain in the first sentence of the specification following the title a reference to each such prior application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior application. The identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number. Cross-references to other related applications may be made when appropriate (see § 1.14(a)).
(3)
A nonprovisional application other than for a design patent may claim an invention disclosed in one or more prior filed copending provisional applications. Since a provisional application can be pending for no more than twelve months, the last day of pendency may occur on a Saturday, Sunday, or Federal holiday within the District of Columbia which for copendency would require the nonprovisional application to be filed on or prior to the Saturday, Sunday, or Federal holiday. In order for a nonprovisional application to claim the benefit of one or more prior filed copending provisional applications, each prior provisional application must name as an inventor at least one inventor named in the later filed nonprovisional application and disclose the named inventor's invention claimed in at least one claim of the later filed nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior provisional application must be:
(i)
Complete as set forth in § 1.51(c); or
(ii)
Entitled to a filing date as set forth in§ 1.53(c) and include the basic filing fee set forth in § 1.16(k).
(4)
Any nonprovisional application claiming the benefit of one or more prior filed copending provisional applications must contain or be amended to contain in the first sentence of the specification following the title a reference to each such prior provisional application, identifying it as a provisional application, and including the provisional application number (consisting of series code and serial number).
(b)
Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
(c)
Where an application or a patent under reexamination and at least one other application naming different inventors are owned by the same party and contain conflicting claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, the assignee may be called upon to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and if not, indicate which named inventor is the prior inventor.

[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; paras. (a), (c) & (d), 50 FR 9380, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; para. (a) revised 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)(1) and (a)(2) revised and paras. (a)(3) and (a)(4) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (c) revised and para. (d) deleted, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

1.81 Drawings required in patent application.

(a)
The applicant for a patent is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented; this drawing, or a high quality copy thereof, must be filed with the application. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.
(b)
Drawings may include illustrations which facilitate an understanding of the invention (for example, flowsheets in cases of processes, and diagrammatic views).
(c)
Whenever the nature of the subject matter sought to be patented admits of illustration by a drawing without its being necessary for the understanding of the subject matter and the applicant has not furnished such a drawing, the examiner will require its submission within a time period of not less than two months from the date of the sending of a notice thereof.
(d)
Drawings submitted after the filing date of the application may not be used to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, Nov. 28, 1988, effective Jan. 1, 1989]



1.83 Content of drawing.

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

[31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 1978;paras. (a) and (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]



1.84 Standards for drawings.

(a)
Drawings. There are two acceptable categories for presenting drawings in utility patent applications:
(1)
Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings, or
(2)
Color. On rare occasions, color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application or the subject matter of a statutory invention registration. The Patent and Trademark Office will accept color drawings in utility patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary. Any such petition must include the following:
(i)
The fee set forth in § 1.17(i);
(ii)
Three (3) sets of color drawings; and
(iii)
The specification must contain the following language as the first paragraph in that portion of the specification relating to the brief description of the drawing:
The file of this patent contains at least one drawing executed in color. Copies of this patent with color drawing(s) will be provided by the Patent and Trademark Office upon request and payment of the necessary fee.


If the language is not in the specification, a proposed amendment to insert the language must accompany the petition.

(b)
Photographs.
(1)
Black and white. Photographs are not ordinarily permitted in utility patent applications. However, the Office will accept photographs in utility patent applications only after the granting of a petition filed under this paragraph which requests that photographs be accepted. Any such petition must include the following:
(i)
The fee set forth in § 1.17(i); and
(ii)
Three (3) sets of photographs. Photo­ graphs must either be developed on double weight photographic paper or be permanently mounted on bristol board. The photographs must be of sufficient quality so that all details in the drawings are reproducible in the printed patent.
(2)
Color. Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied. See paragraph (a)(2) of this section.
(c)
Identification of drawings. Identifying indicia, if provided, should include the application number or the title of the invention, inventor's name, docket number (if any), and the name and telephone number of a person to call if the Office is unable to match the drawings to the proper application. This information should be placed on the back of each sheet of drawings a minimum distance of 1.5 cm. (5/8 inch) down from the top of the page. In addition, a reference to the application number, or, if an application number has not been assigned, the inventor's name, may be included in the left-hand corner, provided that the reference appears within 1.5 cm. (5/8 inch) from the top of the sheet.
(d)
Graphic forms in drawings. Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. Each chemical or mathematical formula must be labeled as a separate figure, using brackets when necessary, to show that information is properly integrated. Each group of waveforms must be presented as a single figure, using a common vertical axis with time extending along the horizontal axis. Each individual waveform discussed in the specification must be identified with a separate letter designation adjacent to the vertical axis.
(e)
Type of paper. Drawings submitted to the Office must be made on paper which is flexible, strong, white, smooth, non-shiny, and durable. All sheets must be free from cracks, creases, and folds. Only one side of the sheet shall be used for the drawing. Each sheet mustbe reasonably free from erasures and must be freefrom alterations, overwritings, and interlineations. Photographs must either be developed on double weight photographic paper or be permanently mounted on bristol board. See paragraph (b) of this section for other requirements for photographs.
(f)
Size of paper. All drawing sheets in an application must be the same size. One of the shorter sides of the sheet is regarded as its top. The size of the sheets on which drawings are made must be:
(1)
21.0 cm. by 29.7 cm. (DIN size A4), or
(2)
21.6 cm. by 27.9 cm. (8 1/2 by 11 inches).
(g)
Margins. The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two catercorner margin corners. Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.
(h)
Views. The drawing must contain as many views as necessary to show the invention. The views may be plan, elevation, section, or perspective views. Detail views of portions of elements, on a larger scale if necessary, may also be used. All views of the drawing must be grouped together and arranged on the sheet(s) without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract. Views must not be connected by projection lines and must not contain center lines. Waveforms of electrical signals may be connected by dashed lines to show the relative timing of the waveforms.
(1)
Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.
(2)
Partial views. When necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in 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°. A cross section must be set out and drawn to show all of the materials as they are shown in the view from which the cross section was taken. The parts in cross section must show proper material(s) by hatching with regularly spaced parallel oblique strokes, the space between strokes being chosen on the basis of the total area to be hatched. The various parts of a cross section of the same item should be hatched in the same manner and should accurately and graphically indicate the nature of the material(s) that is illustrated in cross section. The hatching of juxtaposed different elements must be angled in a different way. In the case of large areas, hatching may be confined to an edging drawn around the entire inside of the outline of the area to be hatched. Different types of hatching should have different conventional meanings as regards the nature of a material seen in cross section.
(4)
Alternate position. A moved position may be shown by a broken line superimposed upon a suitable view if this can be done without crowding; otherwise, a separate view must be used for this purpose.
(5)
Modified forms. Modified forms of construction must be shown in separate views.
(i)
Arrangement of views. One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position. If views wider than the width of the sheet are necessary for the clearest illustration of the invention, the sheet may be turned on its side so that the top of the sheet, with the appropriate top margin to be used as the heading space, is on the right-hand side. Words must appear in a horizontal, left-to-right fashion when the page is either upright or turned so that the top becomes the right side, except for graphs utilizing standard scientific convention to denote the axis of abscissas (of X) and the axis of ordinates (of Y).
(j)
View for Official Gazette. One of the views should be suitable for publication in the Official Gazette as the illustration of the invention.
(k)
Scale.
(1)
The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. Views of portions of the mechanism on a larger scale should be used when necessary to show details clearly. Two or more sheets may be used if one does not give sufficient room. The number of sheets should be kept to a minimum.
(2)
When approved by the examiner, the scale of the drawing may be graphically represented. Indications such as “actual size” or “scale 1/2” on the drawings, are not permitted, since these lose their meaning with reproduction in a different format.
(3)
Elements of the same view must be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the view. Instead of showing elements in different proportion, a supplementary view may be added giving a larger-scale illustration of the element of the initial view. The enlarged element shown in the second view should be surrounded by a finely drawn or “dot-dash” circle in the first view indicating its location without obscuring the view.
(l)
Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
(m)
Shading. The use of shading in views is encouraged if it aids in understanding the invention and if it does not reduce legibility. Shading is used to indicate the surface or shape of spherical, cylindrical, and conical elements of an object. Flat parts may also be lightly shaded. Such shading is preferred in the case of parts shown in perspective, but not for cross sections. See paragraph (h)(3) of this section. Spaced lines for shading are preferred. These lines must be thin, as few in number as practicable, and they must contrast with the rest of the drawings. As a substitute for shading, heavy lines on the shade side of objects can be used except where they superimpose on each other or obscure reference characters. Light should come from the upper left corner at an angle of 45°. Surface delineations should preferably be shown by proper shading. Solid black shading areas are not permitted, except when used to represent bar graphs or color.
(n)
Symbols. Graphical drawing symbols may be used for conventional elements when appropriate. The elements for which such symbols and labeled representations are used must be adequately identified in the specification. Known devices should be illustrated by symbols which have a universally recognized conventional meaning and are generally accepted in the art. Other symbols which are not universally recognized may be used, subject to approval by the Office, if they are not likely to be confused with existing conventional symbols, and if they are readily identifiable.
(o)
Legends. Suitable descriptive legends may be used, or may be required by the Examiner, where necessary for understanding of the drawing, subject to approval by the Office. They should contain as few words as possible.
(p)
Numbers, letters, and reference characters.
(1)
Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
(2)
The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
(3)
Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct.
(4)
The same part of an invention appearing in more than one view of the drawing must always be designated by the same reference character, and the same reference character must never be used to designate different parts.
(5)
Reference characters not mentioned in the description shall not appear in the drawings. Reference characters mentioned in the description must appear in the drawings.
(q)
Lead lines. Lead lines are those lines between the reference characters and the details referred to. Such lines may be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.
(r)
Arrows. Arrows may be used at the ends of lines, provided that their meaning is clear, as follows:
(1)
On a lead line, a freestanding arrow to indicate the entire section towards which it points;
(2)
On a lead line, an arrow touching a line to indicate the surface shown by the line looking along the direction of the arrow; or
(3)
To show the direction of movement.
(s)
Copyright or Mask Work Notice. A copyright or mask work notice may appear in the drawing, but must be placed within the sight of the drawing immediately below the figure representing the copyright or mask work material and be limited to letters having a print size of .32 cm. to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be limited to only those elements provided for by law. For example, “ ©1983 John Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in § 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. (See § 1.152 for design drawings,§ 1.165 for plant drawings, and § 1.174 for reissue drawings.)

[24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 1966; 36 FR 9775, May 28, 1971; 43 FR 20464, May 11, 1978; 45 FR 73657, Nov. 6,1980; paras. (a), (b), (i), (j), and (l) amended, paras. (n), (o), and (p) added, 53 FR 47809, Nov. 28, 1988, effective Jan. 1, 1989; revised, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; paras. (c), (f), (g), and (x) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (a)(2)(i), (b), (c) & (g) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.85 Corrections to drawings.

(a)
The requirements of § 1.84 relating to drawings will be strictly enforced. A drawing not executed in conformity thereto, if suitable for reproduction, may be admitted for examination but in such case a new drawing must be furnished.
(b)
The Patent and Trademark Office will not release drawings in applications having a filing date after January 1, 1989, or any drawings from any applications after January 1, 1991, for purposes of correction. If corrections are necessary, new corrected drawings must be submitted within the time set by the Office.
(c)
When corrected drawings are required to be submitted at the time of allowance, the applicant is required to submit acceptable drawings within three months from the mailing of the “Notice of Allowability.” Within that three-month period, two weeks should be allowed for review of the drawings by the Drafting Branch. If the Office finds that correction is necessary, the applicant must submit a new corrected drawing to the Office within the original three-month period to avoid the necessity of obtaining an extension of time and paying the extension fee. Therefore, the applicant should file corrected drawings as soon as possible following the receipt of the Notice of Allowability. The provisions with respect to obtaining an extension of time relates only to the late filing of corrected drawings. The time limit for payment of the issue fee is a fixed three-month period which cannot be extended as set forth in 35 U.S.C. 151.

[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989]



1.88 [Reserved]

[Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]

MODELS, EXHIBITS, SPECIMENS

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

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

[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.92 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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.

1.94 Return of models, exhibits or specimens.
Models, exhibits, or specimens in applications which have become abandoned, and also in other applications on conclusion of the prosecution, may be returned to the applicant upon demand and at his expense, unless it is deemed necessary that they be preserved in the Office. Such physical exhibits in contested cases may bereturned to the parties at their expense. If not claimed within a reasonable time, they may be disposed of at the discretion of the Commissioner.

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 Commissioner.

1.96 Submission of computer program listings.

(a)
General. Descriptions of the operation and general content of computer program listings should appear in the description portion of the specification. A computer program listing for the purpose of this section is defined as a printout that lists in appropriate sequence the instructions, routines, and other contents of a program for a computer. The program listing may be either in machine or machine-independent (object or source) language which will cause a computer to perform a desired procedure or task such as solve a problem, regulate the flow of work in a computer, or control or monitor events. Computer program listings may be submitted in patent applications as set forth in paragraphs (b) and (c) of this section.
(b)
Material which will be printed in the patent. If the computer program listing is contained on ten printout pages or less, it must be submitted either as drawings or as part of the specification.
(1)
Drawings. If the listing is submitted as drawings, it must be submitted in the manner and complying with the requirements for drawings as provided in § 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 § 1.52, at the end of the description but before the claims.
(ii)
Any listing submitted as part of the specification must be direct printouts (i.e., not copies) from the computer's printer with dark solid black letters not less than 0.21 cm. high, on white, unshaded and unlined paper, and the sheets should be submitted in a protective cover. Any amendment must be made by way of submission of substitute sheets.
(c)
As an appendix which will not be printed. If a computer program listing printout is eleven or more pages long, applicants must submit such listing in the form of microfiche, referred to in the specification (see § 1.77(a)(6)). Such microfiche filed with a patent application is to be referred to as a “microfiche appendix.” The “microfiche appendix” will not be part of the printed patent. Reference in the application to the “microfiche appendix” must be made at the beginning of the specification at the location indicated in § 1.77(a)(6). Any amendments thereto must be made by way of revised microfiche.
(1)
Availability of appendix. Such computer program listings on microfiche will be available to the public for inspection, and microfiche copies thereof will be available for purchase with the file wrapper and contents, after a patent based on such application is granted or the application is otherwise made publicly available.
(2)
Submission requirements. Except as modified or clarified in this paragraph (c)(2), computer-generated information submitted as a “microfiche appendix” to an application shall be in accordance with the standards set forth in 36 CFR Part 1230 (Micrographics).
(i)
Film submitted shall be a first generation (camera film) negative appearing microfiche (with emulsion on the back side of the film when viewed with the images right-reading).
(ii)
Reduction ratio of microfiche submitted should be 24:1 or a similar ratio where variation from said ratio is required in order to fit the documents into the image area of the microfiche format used.
(iii)
At least the left-most third (50 mm. x 12 mm.) of the header or title area of each microfiche submitted shall be clear or positive appearing so that the Patent and Trademark Office can apply an application number and filing date thereto in an eye-readable form. The middle portion of the header shall be used by applicant to apply an eye-readable application identification such as the title and/or the first inventor's name. The attorney's docket number may be included. The final right-hand portion of the microfiche shall contain sequence in­ formation for the microfiche, such as 1 of 4, 2 of 4, etc.
(iv)
Additional requirements which apply specifically to microfiche of filmed paper copy:
(A)
The first frame of each microfiche submitted shall contain a test target.
(B)
The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed.
(C)
The pages or lines appearing on the microfiche frames should be consecutively numbered.
(D)
Pagination of the microfiche frames shall be from left to right and from top to bottom.
(E)
At a reduction of 24:1, resolution of the original microfilm shall be at least 120 lines per mm. (5.0 target).
(F)
An index, when included, should appear in the last frame (lower-right hand corner when data is right-reading) of each microfiche.
(v)
Microfiche generated by Computer Output Microfilm.
(A)
The first frame of each microfiche submitted should contain a resolution test frame.
(B)
The second frame of each microfiche submitted must contain a fully descriptive title and the inventor's name as filed.
(C)
The pages or lines appearing on the microfiche frames should be consecutively numbered.
(D)
It is preferred that pagination of the microfiche frames be from left to right and top to bottom but the alternative, i.e., from top to bottom and from left to right, is also acceptable.
(E)
An index, when included, should appear on the last frame (lower-right hand corner when data is right reading) of each microfiche.

[46 FR 2612, Jan. 12, 1981; para. (b)(1), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

INFORMATION DISCLOSURE STATEMENT

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 § 1.98 considered by the Office during the pendency of the application, it must satisfy paragraph (b), (c), or (d) of this section.
(b)
An information disclosure statement shall be considered by the Office if filed by the applicant:
(1)
Within three months of the filing date of a national application;
(2)
Within three months of the date of entryof the national stage as set forth in § 1.491 in an international application; or
(3)
Before the mailing date of a first Office action on the merits,
(c)
An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (b) of this section, provided that the information disclosure statement is filed before the mailing date of either a final action under § 1.113, or a notice of allowance under § 1.311, whichever occurs first, and is accompanied by either:
(1)
A statement as specified in paragraph (e) of this section; or
(2)
The fee set forth in § 1.17(p).
(d)
An information disclosure statement shall be considered by the Office if filed by the applicant after the period specified in paragraph (c) of this section, provided that the information disclosure statement is filed on or before payment of the issue fee and is accompanied by:
(1)
A statement as specified in paragraph (e) of this section;
(2)
A petition requesting consideration of the information disclosure statement; and
(3)
The petition fee set forth in § 1.17(i).
(e)
A statement under this section must state either:
(1)
That each item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
(2)
That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the statement after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.
(f)
No extensions of time for filing an information disclosure statement are permitted under § 1.136. If a bona fide attempt is made to comply with § 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 section shall not be construed as a representation that a search has been made.
(h)
The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
(i)
Information disclosure statements, filed before the grant of a patent, which do not comply with this section and § 1.98 will be placed in the file, but will not be considered by the Office.

[48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983;57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; paras. (a)- (d) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (c)-(e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.98 Content of information disclosure statement.

(a)
Any information disclosure statement filed under § 1.97 shall include:
(1)
A list of all patents, publications, or other information submitted for consideration by the Office;
(2)
A legible copy of :
(i)
Each U.S. and foreign patent;
(ii)
Each publication or that portion which caused it to be listed; and
(iii)
All other information or that portion which caused it to be listed, except that no copy of a U.S. patent application need be included; and
(3)
A concise explanation of the relevance, as it is presently understood by the individual designated in§ 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from the specification or incorporated therein.
(b)
Each U.S. patent listed in an information disclosure statement shall be identified by patentee, patent number and issue date. Each foreign patent or published foreign patent application shall be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application. Each publication shall be identified by author (if any), title, relevant pages of the publication, date and place of publication.
(c)
When the disclosures of two or more patents or publications listed in an information disclosure statement are substantively cumulative, a copy of oneof the patents or publications may be submittedwithout copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulative. If a written English-language translation of a non-English language document, or portion thereof, is within the possession, custody or control of, or is readily available to any individual designated in § 1.56(c), a copy of the translation shall accompany the statement.
(d)
A copy of any patent, publication or other information listed in an information disclosure statement is not required to be provided if it was previously cited by or submitted to the Office in a prior application, provided that the prior application is properly identified in the statement and relied upon for an earlier filing date under 35 U.S.C. 120.

[42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992]



1.99 [Reserved]

[48 FR 2712, Jan. 20, 1983; effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992]

EXAMINATION OF APPLICATIONS

1.101 [Reserved]

[29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 52 FR 20046, May 28, 1987, effective July 1, 1987; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.10 2 Advancement of examination.

(a)
Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Commissioner to expedite the business of the Office, or upon filing of a request under paragraph (b) of this section or upon filing a petition under paragraphs (c) or (d) of this section with a showing which, in the opinion of the Commissioner, will justify so advancing it.
(b)
Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination.
(c)
A petition to make an application special may be filed without a fee if the basis for the petition is the applicant's age or health or that the invention will materially enhance the quality of the environment or materially contribute to the development or conservation of energy resources.
(d)
A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the petition fee set forth in § 1.17(i).

[24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.103 Suspension of action.

(a)
Suspension of action by the Office will be granted for good and sufficient cause and for a reasonable time specified upon petition by the applicant and, if such cause is not the fault of the Office, the payment of the fee set forth in § 1.17(i). Action will not be suspended when a reply by the applicant to an Office action is required.
(b)
If action by the Office on an application is suspended when not requested by the applicant, the applicant shall be notified of the reasons therefor.
(c)
Action by the examiner may be suspended by order of the Commissioner in the case of applications owned by the United States whenever publication of the invention by the granting of a patent thereon might be detrimental to the public safety or defense, at the request of the appropriate department or agency.
(d)
Action on applications in which the Office has accepted a request to publish a defensive publication will be suspended for the entire pendency of these applications except for purposes relating to patent interference proceedings under Subpart E.

[24 FR 10332, Dec. 22, 11959; 33 FR 5624, Apr. 11, 1968; paras. (a) and (b), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (d), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.104 Nature of examination.

(a)
Examiner's action.
(1)
On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated.
(2)
The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner's action. The reasons for any adverse action or any objection or requirement will be stated and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution.
(3)
An international-type search will be made in all national applications filed on and after June 1, 1978.
(4)
Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in§ 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application.
(5)
Copending applications will be considered by the examiner to be owned by, or subject to an obligation of assignment to, the same person if:
(i)
The application files refer to assignments recorded in the Patent and Trademark Office in accordance with Part 3 of this chapter which convey the entire rights in the applications to the same person or organization; or
(ii)
Copies of unrecorded assignments which convey the entire rights in the applications to the same person or organization are filed in each of the applications; or
(iii)
An affidavit or declaration by the common owner is filed which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; or
(iv)
Other evidence is submitted which establishes common ownership of the applications.
(b)
Completeness of examiner's action. The examiner's action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
(c)
Rejection of claims.
(1)
If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected.
(2)
In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
(3)
In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section.
(4)
Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or organization or subject to an obligation of assignment to the same person or organization at the time the claimed invention was made.
(5)
The claims in any original application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the same subject matter is claimed in the application and the statutory invention registration. The claims in any reissue application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the reissue application seeks to claim subject matter:
(i)
Which was not covered by claims issued in the patent prior to the date of publication of the statutory invention registration; and
(ii)
Which was the same subject matter waived in the statutory invention registration.
(d)
Citation of references.
(1)
If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees must be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees must be stated, and such other data must be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon must be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, shall be given.
(2)
When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.
(e)
Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure to file such a statement does not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner.

[43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 1981; para. (d), 47 FR 41276, Sept. 17, 1982, effective date Oct. 1, 1982; para. (e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; para. (e), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.105 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997]



1.106 [Reserved]

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (c) added, 47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (d) and (e), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.107 [Reserved]

[46 FR 29182, May 29, 1981; para. (a) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; removed and reserved,62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.108 [Reserved]

[50 FR 9381, Mar. 7, 1985, effective May 8, 1985; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.109 [Reserved]

[46 FR 29182, May 29, 1981; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.110 Inventorship and date of invention of the subject matter of individual claims.
When more than one inventor is named in anapplication or patent, the Patent and Trademark Office, when necessary for purposes of an Office proceeding, may require an applicant, patentee, or owner to identify the inventive entity of the subject matter of each claim in the application or patent. Where appropriate, the invention dates of the subject matter of each claim and the ownership of the subject matter on the date of invention may be required of the applicant, patentee or owner. See also §§ 1.78(c) and 1.130.

[50 FR 9381, Mar. 7, 1985, effective date May 8, 1985; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

ACTION BY APPLICANT AND FURTHER CONSIDERATION

1.111 Reply by applicant or patent owner.

(a)
After the Office action, if adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply thereto and may request reconsideration or further examination, with or without amendment.
(b)
In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
(c)
In amending in response to a rejection of claims in an application or patent undergoing reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections. (See §§ 1.135 and 1.136 for time for reply.)

[46 FR 29182, May 29, 1981; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.112 Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111) to a non-final action, the application or patent under reexamination will be reconsidered and again examined. The applicant or patent owner will be notified if claims are rejected, or objections or requirements made, in the same manner as after the first examination. Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111, with or without amendment, unless such Office action indicates that it is made final (§ 1.113).

[46 FR 29182, May 29, 1981; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.113 Final rejection or action.

(a)
On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant's or patent owner's reply is limited to appeal in the case of rejection of any claim (§ 1.191), or to amendment as specified in § 1.116. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim (§ 1.181). Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form.
(b)
In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof.

[24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 1981; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

AMENDMENTS

1.115 [Reserved]

[46 FR 29183, May 29, 1981; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.116 Amendments after final action or appeal.

(a)
After a final rejection or other final action (§ 1.113), amendments may be made cancelling claims or complying with any requirement of form expressly set forth in a previous Office action. Amendments presenting rejected claims in better form for consideration on appeal may be admitted. The admission of, or refusal to admit, any amendment after final rejection, and any related proceedings, will not operate to relieve the application or patent under reexamination from its condition as subject to appeal or to save the application from abandonment under § 1.135.
(b)
If amendments touching the merits of the application or patent under reexamination are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.
(c)
No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in § 1.198, or to carry into effect a recommendation under § 1.196.

[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.117 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.118 [Reserved]

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.119 [Reserved]

[32 FR 13583, Sept. 28, 1967; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.121 Manner of making amendments.

(a)
Amendments in nonprovisional applications, other than reissue applications: Amendments in nonprovisional applications, excluding reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(1)
Specification other than the claims. Except as provided in § 1.125, amendments to add matter to, or delete matter from, the specification, other than to the claims, may only be made as follows:
(i)
Instructions for insertions: The precise point in the specification must be indicated where an insertion is to be made, and the matter to be inserted must be set forth.
(ii)
Instructions for deletions: The precise point in the specification must be indicated where a deletion is to be made, and the matter to be deleted must be set forth or otherwise indicated.
(iii)
Matter deleted by amendment can be reinstated only by a subsequent amendment presenting the previously deleted matter as a new insertion.
(2)
Claims. Amendments to the claims may only be made as follows:
(i)
Instructions for insertions and deletions: A claim may be amended by specifying only the exact matter to be deleted or inserted by an amendment and the precise point where the deletion or insertion is to be made, where the changes are limited to:
(A)
Deletions and/or
(B)
The addition of no more than five(5) words in any one claim; or
(ii)
Claim cancellation or rewriting: A claim may be amended by directions to cancel the claim or by rewriting such claim with underlining below the matter added and brackets around the matter deleted. The rewriting of a claim in this form will be construed as directing the deletion of the previous version of that claim. If a previously rewritten claim is again rewritten, underlining and bracketing will be applied relative to the previous version of the claim, with the parenthetical expression “twice amended,” “three times amended,” etc., following the original claim number. The original claim number followed by that parenthetical expression must be used for the rewritten claim. No interlineations or deletions of any prior amendment may appear in the currently submitted version of the claim. A claim canceled by amendment (not deleted and rewritten) can be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number.
(3)
Drawings.
(i)
Amendments to the original application drawings are not permitted. Any change to the application drawings must be by way of a substitute sheet of drawings for each sheet changed submitted in compliance with § 1.84.
(ii)
Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(4)
[Reserved]
(5)
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(6)
No amendment may introduce new matter into the disclosure of an application.
(b)
Amendments in reissue applications: Amendments in reissue applications are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(1)
Specification other than the claims. Amendments to the specification, other than to the claims, may only be made as follows:
(i)
Amendments must be made by submission of the entire text of a newly added or rewritten paragraph(s) with markings pursuant to paragraph (b)(1)(iii) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
(ii)
The precise point in the specification must be indicated where the paragraph to be amended is located.
(iii)
Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made.
(2)
Claims. Amendments to the claims may only be made as follows:
(i)
(A) The amendment must be made relative to the patent claims in accordance with paragraph (b)(6) of this section and must include the entire text of each claim which is being amended by the current amendment and of each claim being added by the current amendment with markings pursuant to paragraph (b)(2)(i)(C) of this section, except that a patent claim or added claim should be cancelled by a statement cancelling the patent claim or added claim without presentation of the text of the patent claim or added claim.
(B)
Patent claims must not be renumbered and the numbering of any claims added to the patent must follow the number of the highest numbered patent claim.
(C)
Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made. If a claim is amended pursuant to paragraph (b)(2)(i)(A) of this section, a parenthetical expression “amended,” “twice amended,” etc., should follow the original claim number.
(ii)
Each amendment submission must set forth the status (i.e., pending or cancelled) as of the date of the amendment, of all patent claims and of all added claims.
(iii)
Each amendment when originally submitted must be accompanied by an explanation of the support in the disclosure of the patent for the amendment along with any additional comments on page(s) separate from the page(s) containing the amendment.
(3)
Drawings.
(i)
Amendments to the original patent drawings are not permitted. Any change to the patent drawings must be by way of a new sheet of drawings with the amended figures identified as “amended” and with added figures identified as “new” for each sheet changed submitted in compliance with § 1.84.
(ii)
Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(4)
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(5)
No reissue patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent, pursuant to 35 U.S.C. 251. No amendment to the patent may introduce new matter or be made in an expired patent.
(6)
All amendments must be made relative to the patent specification, including the claims, and drawings, which is in effect as of the date of filing of the reissue application.
(c)
Amendments in reexamination proceedings: Any proposed amendment to the description and claims in patents involved in reexamination proceedings must be made in accordance with § 1.530(d).

[32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 1981; para. (e), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.122 [Reserved]

[24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.123 [Reserved]

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; removed and reserved,62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.124 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.125 Substitute specification.

(a)
If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
(b)
A substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by:
(1)
A statement that the substitute specification includes no new matter; and
(2)
A marked-up copy of the substitute specification showing the matter being added to and the matter being deleted from the specification of record.
(c)
A substitute specification submitted under this section must be submitted in clean form without markings as to amended material.
(d)
A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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.

[32 FR 13583, Sept. 28, 1967; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.127 Petition from refusal to admit amendment.
From the refusal of the primary examiner to admit an amendment, in whole or in part, a petition will lie to the Commissioner under § 1.181.

TRANSITIONAL PROVISIONS

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

(a)
An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in § 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 submis­ sion, if the second submission and a second fee set forth in § 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in § 1.17(r). Any submission filed after a final rejection made in an application subsequent to the fee set forth in § 1.17(r) having been twice paid will be treated as set forth in§ 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 under35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995;
(ii)
The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant; or
(iii)
The required fee for examination of each additional invention was not paid.
(2)
If the application contains more than one independent and distinct invention and a requirement for restriction or for the filing of divisional applications cannot be made or maintained pursuant to this paragraph, applicant will be so notified and given a time period to:
(i)
Elect the invention or inventions to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects;
(ii)
Confirm an election made prior to the notice and pay the fee set forth in § 1.17(s) for each independent and distinct invention claimed in the application in addition to the one invention which applicant previously elected; or
(iii)
File a petition under this section traversing the requirement. If the required petition is filed in a timely manner, the original time period for electing and paying the fee set forth in § 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 § 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.
(3)
The additional inventions for which the required fee has not been paid will be withdrawn from consideration under § 1.142(b). An applicant who desires examination of an invention so withdrawn from consideration can file a divisional application under35 U.S.C. 121.
(c)
The provisions of this section shall not be applicable to any application filed after June 8, 1995.

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

AFFIDAVITS OVERCOMING REJECTIONS

1.130 Affidavit or declaration to disqualify commonly owned patent as prior art.

(a)
When any claim of an application or a patent under reexamination is rejected under 35 U.S.C. 103 in view of a U.S. patent which is not prior art under 35 U.S.C. 102(b), and the inventions defined by the claims in the application or patent under reexamination and by the claims in the patent are not identical but are not patentably distinct, and the inventions are owned by the same party, the applicant or owner of the patent under reexamination may disqualify the patent as prior art. The patent can be disqualified as prior art by submission of:
(1)
A terminal disclaimer in accordance with § 1.321(c), and
(2)
An oath or declaration stating that the application or patent under reexamination and the patent are currently owned by the same party, and that the inventor named in the application or patent under reexamination is the prior inventor under 35 U.S.C. 104.
(b)
When an application or a patent under reexamination claims an invention which is not patentably distinct from an invention claimed in a commonly owned patent with the same or a different inventive entity, a double patenting rejection will be made in the application or a patent under reexamination. A judicially created double patenting rejection may be obviated by filing a terminal disclaimer in accordance with § 1.321(c).

[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



1.131 Affidavit or declaration of prior invention to overcome cited patent or publication.

(a)
 
(1)
When any claim of an application or a pat­ ent under reexamination is rejected under 35 U.S.C. 102(a) or (e), or 35 U.S.C. 103 based on a U.S. patent to another or others which is prior art under 35 U.S.C. 102(a) or (e) and which substantially shows or describes but does not claim the same patentable invention, as defined in § 1.601(n), or on reference to a foreign patent or to a printed publication, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party qualified under §§ 1.42, 1.43, or 1.47, may submit an appropriate oath or declaration to overcome the patent or publication. The oath or declaration must include facts showing a completion of the invention in this country or in a NAFTA or WTO member country before the filing date of the application on which the U.S. patent issued, or before the date of the foreign patent, or before the date of the printed publication. When an appropriate oath or declaration is made, the patent or publication cited shall not bar the grant of a patent to the inventor or the confirmation of the patentability of the claims of the patent, unless the date of such patent or printed publication is more than one year prior to the date on which the inventor's or patent owner's application was filed in this country.
(2)
A date of completion of the invention may not be established under this section before December 8, 1993, in a NAFTA country, or before January 1, 1996, in a WTO member country other than a NAFTA country.
(b)
The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence satisfactorily explained.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53 FR 23733, June 23, 1988, effective Sept. 12, 1988; para. (a)(1) revised and para. (a)(2) added, 60 FR 21043, May 1, 1995, effective May 31, 1995; para. (a) revised,61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



1.132 Affidavits or declarations traversing grounds of rejection.
When any claim of an application or a patent under reexamination is rejected on reference to a U.S. patent which substantially shows or describes but does not claim the same patentable invention, as defined in § 1.601(n), on reference to a foreign patent, on reference to a printed publication, or on reference to facts within the personal knowledge of an employee of the Office, or when rejected upon a mode or capability of operation attributed to a reference, or because the alleged invention is held to be inoperative, lacking in utility, frivolous, or injurious to public health or morals, affidavits or declarations traversing these references or objections may be received.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

INTERVIEWS

1.133 Interviews.

(a)
Interviews with examiners concerning applications and other matters pending before the Office must be had in the examiners' rooms at such times, within office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Commissioner. Interviews for the discussion of the patentability of pending applications will not be had before the first official action thereon. Interviews should be arranged for in advance.
(b)
In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in§§ 1.111 and 1.135.

[Para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

TIME FOR REPLY BY APPLICANT; ABANDONMENT OF APPLICATION

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.

[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982;revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.135 Abandonment for failure to reply within time period.

(a)
If an applicant of a patent application fails to reply within the time period provided under § 1.134 and § 1.136, the application will become abandoned unless an Office action indicates otherwise.
(b)
Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment.
(c)
When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134 to supply the omission.

[Paras. (a), (b), and (c), 47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. (d) deleted, 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.136 Extensions of time.

(a)
 
(1)
If an applicant is required to reply within a nonstatutory or shortened statutory time period,applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless:
(i)
Applicant is notified otherwise in an Office action;
(ii)
The reply is a reply brief submitted pursuant to § 1.193(b);
(iii)
The reply is a request for an oral hearing submitted pursuant to § 1.194(b);
(iv)
The reply is to a decision by the Board of Patent Appeals and Interferences pursuant to § 1.196,§ 1.197 or § 1.304; or
(v)
The application is involved in an interference declared pursuant to § 1.611.
(2)
The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (§ 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of this paragraph are available. See § 1.136(b) for extensions of time relating to proceedings pursuant to §§ 1.193(b), 1.194, 1.196 or 1.197; § 1.304 for extension of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action;§ 1.550(c) for extension of time in reexamination proceedings; and § 1.645 for extension of time in interference proceedings.
(3)
A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under § 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in § 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission.
(b)
When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. See § 1.304 for extension of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; § 1.645 for extension of time in interference proceedings; and§ 1.550(c) for extension of time in reexamination proceedings.

[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 54 FR 29551, July 13, 1989, effective Aug. 20, 1989; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.137 Revival of abandoned application or lapsed patent.

(a)
Unavoidable. Where the delay in reply was unavoidable, a petition may be filed to revive an abandoned application or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by:
(1)
The required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In an application or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof;
(2)
The petition fee as set forth in § 1.17(l);
(3)
A showing to the satisfaction of the Commissioner that the entire delay in filing the required reply from the due date for the reply until the filing ofa grantable petition pursuant to this paragraph was unavoidable; and
(4)
Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (c) of this section.
(b)
Unintentional. Where the delay in reply was unintentional, a petition may be filed to revive an abandoned application or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by:
(1)
The required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In an application or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof;
(2)
The petition fee as set forth in § 1.17(m);
(3)
A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Commissioner may require additional information where there is a question whether the delay was unintentional; and
(4)
Any terminal disclaimer (and fee as set forth in § 1.20(d)) required pursuant to paragraph (c) of this section.
(c)
In a design application, a utility application filed before June 8, 1995, or a plant application filed before June 8, 1995, any petition to revive pursuant to this section must be accompanied by a terminal disclaimer and fee as set forth in § 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any terminal disclaimer pursuant to this paragraph must also apply to any patent granted on any continuing application that contains a specific reference under35 U.S.C. 120, 121, or 365(c) to the application for which revival is sought. The provisions of this paragraph do not apply to lapsed patents.
(d)
Any request for reconsideration or review of a decision refusing to revive an abandoned application or lapsed patent upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of § 1.136.
(e)
A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section so as to be pending for a period of no longer than twelve months from its filing date. Under no circumstances will a provisional application be regarded as pending after twelve months from its filing date.

[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; para. (b) 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; paras.(a) - (c), paras. (d) & (e) added, 58 FR 44277, Aug. 20,1993, effective Sept. 20, 1993; para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.138 Express abandonment.
An application may be expressly abandoned by filing in the Patent and Trademark Office a written declaration of abandonment signed by the applicant and the assignee of record, if any, and identifying the application. An application may also be expressly abandoned by filing a written declaration of abandonment signed by the attorney or agent of record. A registered attorney or agent acting under the provision of § 1.34(a), or of record, may also expressly abandon a prior application as of the filing date granted to a continuing application when filing such a continuing application. Express abandonment of the application may not be recognized by the Office unless it is actually received by appropriate officials in time to act thereon before the date of issue.

[47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]



1.139 [Reserved]

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8,1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION

1.141 Different inventions in one national application.

(a)
Two or more independent and distinct inventions may not be claimed in one national application, ex­ cept 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 gen­ eric to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 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, effective July 1, 1987]



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.

[Para (a) revised, 62 FR 53131, Oct. 10, 1997, effectiveDec. 1, 1997]



1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. (See § 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.

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

[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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 §§ 1.143 and 1.144.

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.

[43 FR 20465, May 11, 1978; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

DESIGN PATENTS

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.

1.152 Design drawings.

(a)
The design must be represented by a drawing that complies with the requirements of § 1.84, and must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design.
(1)
Appropriate and adequate surface shading should be used to show the character or contour of the surfaces represented. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Broken lines may be used to show visible environmental structure, but may not be used to show hidden planes and surfaces which cannot be seen through opaque materials. Alternate positions of a design component, illustrated by full and broken lines in the same view are not permitted in a design drawing.
(2)
Color photographs and color drawings are not permitted in design applications in the absence of a grantable petition pursuant to § 1.84(a)(2). Photo­ graphs and ink drawings are not permitted to be combined as formal drawings in one application. Photographs submitted in lieu of ink drawings in design patent applications must comply with § 1.84(b) and must not disclose environmental structure but must be limited to the design for the article claimed.
(b)
Any detail shown in the ink or color drawings or photographs (formal or informal) deposited with the original application papers constitutes an integral part of the disclosed and claimed design, except as otherwise provided in this paragraph. This detail may include, but is not limited to, color or contrast, graphic or written indicia, including identifying indicia of a proprietary nature, surface ornamentation on an article, or any combination thereof.
(1)
When any detail shown in informal drawings or photographs does not constitute an integral part of the disclosed and claimed design, a specific disclaimer must appear in the original application papers either in the specification or directly on the drawings or photographs. This specific disclaimer in the original application papers will provide antecedent basis for the omission of the disclaimed detail(s) in later-filed drawings or photographs.
(2)
When informal color drawings or photographs are deposited with the original application papers without a disclaimer pursuant to paragraph (b)(1) of this section, formal color drawings or photographs, or a black and white drawing lined to represent color, will be required.

[53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.153 Title, description and claim, oath or declaration.

(a)
The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.
(b)
The oath or declaration required of the applicant must comply with § 1.63.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; para. (b), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983]



1.154 Arrangement of application elements.

(a)
The elements of the design application, if applicable, should appear in the following order:
(1)
Design Application Transmittal Form.
(2)
Fee Transmittal Form.
(3)
Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(4)
Cross-reference to related applications.
(5)
Statement regarding federally sponsored research or development.
(6)
Description of the figure or figures of the drawing.
(7)
Feature Description.
(8)
A single claim.
(9)
Drawings or photographs.
(10)
Executed oath or declaration (See § 1.153(b)).
(b)
[Reserved]

[24 FR 10332, Dec. 22, 1959, para. (e), 48 FR 2713, Jan. 20, 1983, effective date Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a)(3) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.155 Issue of design patents.
If, on examination, it appears that the applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant, or applicant's attorney or agent, calling for the payment of the issue fee (§ 1.18(b)). If this issue fee is not paid within three months of the date of the notice of allowance, the application shall be regarded as abandoned.

[47 FR 41277, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b) - (d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

PLANT PATENTS

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.

1.162 Applicant, oath or declaration.
The applicant for a plant patent must be the person who has invented or discovered and asexually reproduced the new and distinct variety of plant for which a patent is sought (or as provided in §§ 1.42, 1.43, and 1.47). The oath or declaration required of the applicant, in addition to the averments required by § 1.63, must state that he or she has asexually reproduced the plant. Where the plant is a newly found plant the oath or declaration must also state that it was found in a cultivated area.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983]



1.163 Specification and arrangement of application elements.

(a)
The specification must contain as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. In the case of a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered.
(b)
Two copies of the specification (including the claim) must be submitted, but only one signed oath or declaration is required.
(c)
The elements of the plant application, if applicable, should appear in the following order:
(1)
Plant Application Transmittal Form.
(2)
Fee Transmittal Form.
(3)
Title of the invention.
(4)
Cross-reference to related applications.
(5)
Statement regarding federally sponsored research or development.
(6)
Background of the invention.
(7)
Brief summary of the invention.
(8)
Brief description of the drawing.
(9)
Detailed Botanical Description.
(10)
A single claim.
(11)
Abstract of the Disclosure.
(12)
Drawings (in duplicate).
(13)
Executed oath or declaration.
(14)
Plant color coding sheet.
(d)
A plant color coding sheet as used in this section means a sheet that specifies a color coding system as designated in a color dictionary, and lists every plant structure to which color is a distinguishing feature and the corresponding color code which best represents that plant structure.

[24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; paras. (c) and (d) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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.

1.165 Plant Drawings.

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

[24 FR 10332, Dec. 22, 1959; para. (b), 47 FR 41277,Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and (b) amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 1993]



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.

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

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

REISSUES

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 asotherwise provided, and in addition, must comply with the requirements of the rules relating to reissue applications.

[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised, 54 FR 6893, Feb. 17, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.172 Applicants, assignees.

(a)
A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as otherwise provided (see §§ 1.42, 1.43, 1.47), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.
(b)
A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a) revised, 62 FR 53131,Oct. 10, 1997, effective Dec. 1, 1997]



1.173 Specification.
The specification of the reissue application must include the entire specification and claims of the patent, with the matter to be omitted by reissue enclosed in square brackets; and any additions made by the reissue must be underlined, so that the old and the new specifications and claims may be readily compared. Claims should not be renumbered and the numbering of claims added by reissue should follow the number of the highest numbered patent claim. No new matter shall be introduced into the specification.

1.174 Drawings.

(a)
The drawings upon which the original patent was issued may be used in reissue applications if no changes whatsoever are to be made in the drawings. In such cases, when the reissue application is filed, the applicant must submit a temporary drawing which may consist of a copy of the printed drawings of the patent or a photoprint of the original drawings of the size required for original drawing.
(b)
Amendments which can be made in a reissue drawing, that is, changes from the drawing of the patent, are restricted.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983]



1.175 Reissue oath or declaration.

(a)
The reissue oath or declaration in addition to complying with the requirements of § 1.63, must also state that:
(1)
The applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent, stating at least one error being relied upon as the basis for reissue; and
(2)
All errors being corrected in the reissue application up to the time of filing of the oath or declaration under this paragraph arose without any deceptive intention on the part of the applicant.
(b)
 
(1)
For any error corrected, which is not covered by the oath or declaration submitted under paragraph (a) of this section, applicant must submit a supplemental oath or declaration stating that every such error arose without any deceptive intention on the part of the applicant. Any supplemental oath or declaration required by this paragraph must be submitted before allowance and may be submitted:
(i)
With any amendment prior to allowance; or
(ii)
In order to overcome a rejection under 35 U.S.C. 251 made by the examiner where it is indicated that the submission of a supplemental oath or declaration as required by this paragraph will overcome the rejection.
(2)
For any error sought to be corrected after allowance, a supplemental oath or declaration must accompany the requested correction stating that the error(s) to be corrected arose without any deceptive intention on the part of the applicant.
(c)
Having once stated an error upon which the reissue is based, as set forth in paragraph (a)(1), unless all errors previously stated in the oath or declaration are no longer being corrected, a subsequent oath or declaration under paragraph (b) of this section need not specifically identify any other error or errors being corrected.
(d)
The oath or declaration required by paragraph (a) of this section may be submitted under the provisions of § 1.53(f).

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964;34 FR 18857, Nov. 26, 1969; para. (a), 47 FR 21752, May 19, 1982, effective July 1,1982; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.176 Examination of reissue.
An original claim, if re-presented in the reissue application, is subject to reexamination, and the entire application will be examined in the same manner as original applications, subject to the rules relating thereto, excepting that division will not be required. Applications for reissue will be acted on by the examiner in advance of other applications, but not sooner than two months after announcement of the filing of the reissue application has appeared in the Official Gazette.

[42 FR 5595, Jan. 28, 1977]



1.177 Reissue in divisions.
The Commissioner may, in his or her discretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for each division. Each division of a reissue constitutes the subject of a separate specification descriptive of the part or parts of the invention claimed in such division; and the drawing may represent only such part or parts, subject to the provisions of §§ 1.83 and 1.84. On filing divisional reissue applications, they shall be referred to the Commissioner. Unless otherwise ordered by the Commissioner upon petition and payment of the fee set forth in § 1.17(i), all the divisions of a reissue will issue simultaneously; if there is any controversy as to one division, the others will be withheld from issue until the controversy is ended, unless the Commissioner orders otherwise.

[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]



1.178 Original patent.
The application for a reissue must be accompanied by an offer to surrender the original patent. The application should also be accompanied by the original patent, or if the original is lost or inaccessible, by an affidavit or declaration to that effect. The application may be accepted for examination in the absence of the original patent or the affidavit or declaration, but one or the other must be supplied before the case is allowed. If a reissue be refused, the original patent will be returned to applicant upon his request.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969]



1.179 Notice of reissue application.
When an application for a reissue is filed, there will be placed in the file of the original patent a notice stating that an application for reissue has been filed. When the reissue is granted or the reissue application is otherwise terminated, the fact will be added to the notice in the file of the original patent.

PETITIONS AND ACTION BY THE COMMISSIONER

1.18 1 Petition to the Commissioner.

(a)
Petition may be taken to the Commissioner:(1) From any action or requirement of any examiner in the ex parte prosecution of an application which is not subject to appeal to the Board of Patent Appeals and Interferences or to the court; (2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Commissioner; and (3) To invoke the supervisory authority of the Commissioner in appropriate circumstances. For petitions in interferences, see § 1.644.
(b)
Any such petition must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition; and where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.
(c)
When a petition is taken from an action or requirement of an examiner in the ex parte prosecution of an application, it may be required that there have been a proper request for reconsideration (§ 1.111) and a repeated action by the examiner. The examiner may be directed by the Commissioner to furnish a written statement, within a specified time, setting forth the reasons for his decision upon the matters averred in the petition, supplying a copy thereof to the petitioner.
(d)
Where a fee is required for a petition to the Commissioner the appropriate section of this part will so indicate. If any required fee does not accompany the petition, the petition will be dismissed.
(e)
Oral hearing will not be granted except when considered necessary by the Commissioner.
(f)
Except as otherwise provided in these rules, any such petition not filed within 2 months from the action complained of, may be dismissed as untimely. The mere filing of a petition will not stay the period for reply to an Examiner's action which may be running against an application, nor act as a stay of other proceedings.
(g)
The Commissioner may delegate to appropriate Patent and Trademark Office officials the determination of petitions.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969; paras. (d) and (g), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]



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

[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982]



1.184 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES

1.191 Appeal to Board of Patent Appeals and Interferences.

(a)
Every applicant for a patent or for reissue of a patent, and every owner of a patent under reexamination, any of whose claims has been twice or finally(§ 1.113) rejected, may appeal from the decision of the examiner to the Board of Patent Appeals and Interferences by filing a notice of appeal and the fee set forthin § 1.17(b) within the time period provided under §§ 1.134 and 1.136 for reply.
(b)
The signature requirement of § 1.33 does not apply to a notice of appeal filed under this section.
(c)
An appeal when taken must be taken from the rejection of all claims under rejection which the applicant or patent owner proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered.
(d)
The time periods set forth in §§ 1.191 and 1.192 are subject to the provisions of § 1.136 for patent applications and § 1.550(c) for reexamination proceedings. The time periods set forth in §§ 1.193, 1.194, 1.196 and 1.197 are subject to the provisions of § 1.136(b) for patent applications or § 1.550(c) for reexamination proceedings. See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
(e)
Jurisdiction over the application or patent under reexamination passes to the Board of Patent Appeals and Interferences upon transmittal of the file, including all briefs and examiner's answers, to the Board. Prior to the entry of a decision on the appeal, the Com­ missioner may sua sponte order the application remanded to the examiner.

[46 FR 29183, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (b) and (d) amended, para. (e) added, 54 FR 29553, July 13, 1989, effective Aug. 20, 1989; para. (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a) and (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.192 Appellant's brief.

(a)
Appellant must, within two months from the date of the notice of appeal under § 1.191 or within the time allowed for reply to the action from which the appeal was taken, if such time is later, file a brief in triplicate. The brief must be accompanied by the fee set forth in § 1.17(c) and must set forth the authorities and arguments on which appellant will rely to maintain the appeal. Any arguments or authorities not included in the brief will be refused consideration by the Board of Patent Appeals and Interferences, unless good cause is shown.
(b)
On failure to file the brief, accompanied by the requisite fee, within the time allowed, the appeal shall stand dismissed.
(c)
The brief shall contain the following items under appropriate headings and in the order indicated below unless the brief is filed by an applicant who is not represented by a registered practitioner:
(1)
Real party in interest. A statement identifying the real party in interest, if the party named in the caption of the brief is not the real party in interest.
(2)
Related appeals and interferences. A statement identifying by number and filing date all other appeals or interferences known to appellant, the appellant's legal representative, or assignee which will directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal.
(3)
Status of claims. A statement of the status of all the claims, pending or cancelled, and identifying the claims appealed.
(4)
Status of amendments. A statement of the status of any amendment filed subsequent to final rejection.
(5)
Summary of invention. A concise explanation of the invention defined in the claims involved in the appeal, which shall refer to the specification by page and line number, and to the drawing, if any, by reference characters.
(6)
Issues. A concise statement of the issues presented for review.
(7)
Grouping of claims. For each ground of rejection which appellant contests and which applies to a group of two or more claims, the Board shall select a single claim from the group and shall decide the appeal as to the ground of rejection on the basis of that claim alone unless a statement is included that the claims of the group do not stand or fall together and, in the argument under paragraph (c)(8) of this section, appellant explains why the claims of the group are believed to be separately patentable. Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable.
(8)
Argument. The contentions of appellant with respect to each of the issues presented for review in paragraph (c)(6) of this section, and the basis therefor, with citations of the authorities, statutes, and parts of the record relied on. Each issue should be treated under a separate heading.
(i)
For each rejection under 35 U.S.C. 112, first paragraph, the argument shall specify the errors in the rejection and how the first paragraph of 35 U.S.C. 112 is complied with, including, as appropriate, how the specification and drawings, if any,
(A)
Describe the subject matter defined by each of the rejected claims,
(B)
Enable any person skilled in the art to make and use the subject matter defined by each of the rejected claims, and
(C)
Set forth the best mode contemplated by the inventor of carrying out his or her invention.
(ii)
For each rejection under 35 U.S.C. 112, second paragraph, the argument shall specify the errors in the rejection and how the claims particularly point out and distinctly claim the subject matter which applicant regards as the invention.
(iii)
For each rejection under 35 U.S.C. 102, the argument shall specify the errors in the rejection and why the rejected claims are patentable under35 U.S.C. 102, including any specific limitations in the rejected claims which are not described in the prior art relied upon in the rejection.
(iv)
For each rejection under 35 U.S.C. 103, the argument shall specify the errors in the rejection and, if appropriate, the specific limitations in the rejected claims which are not described in the prior art relied on in the rejection, and shall explain how such limitations render the claimed subject matter unobvious over the prior art. If the rejection is based upon a combination of references, the argument shall explain why the references, taken as a whole, do not suggest the claimed subject matter, and shall include, as may be appropriate, an explanation of why features disclosed in one reference may not properly be combined with features disclosed in another reference. A general argument that all the limitations are not described in a single reference does not satisfy the requirements of this paragraph.
(v)
For any rejection other than those re­ ferred to in paragraphs (c)(8)(i) to (iv) of this section, the argument shall specify the errors in the rejection and the specific limitations in the rejected claims, if appropriate, or other reasons, which cause the rejection to be in error.
(9)
Appendix. An appendix containing a copy of the claims involved in the appeal.
(d)
If a brief is filed which does not comply with all the requirements of paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and provided with a period of one month within which to file an amended brief. If appellant does not file an amended brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, the appeal will stand dismissed.

[36 FR 5850, Mar. 30, 1971; para. (a), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; 53 FR 23734, June 23, 1988, effective Sept. 12, 1988; para. (a), (c), and (d) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)-(c) revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.193 Examiner's answer and reply brief.

(a)
 
(1)
The primary examiner may, within such time as may be directed by the Commissioner, furnish a written statement in answer to appellant's brief including such explanation of the invention claimed and of the references and grounds of rejection as may be necessary, supplying a copy to appellant. If the primary examiner finds that the appeal is not regular in form or does not relate to an appealable action, the primary examiner shall so state.
(2)
An examiner's answer must not include a new ground of rejection, but if an amendment under § 1.116 proposes to add or amend one or more claims and appellant was advised that the amendment under § 1.116 would be entered for purposes of appeal and which individual rejection(s) set forth in the action from which the appeal was taken would be used to reject the added or amended claim(s), then the appeal brief must address the rejection(s) of the claim(s) added or amended by the amendment under § 1.116 as appellant was so advised and the examiner's answer may include the rejection(s) of the claim(s) added or amended by the amendment under § 1.116 as appellant was so advised. The filing of an amendment under § 1.116 which is entered for purposes of appeal represents appellant's consent that when so advised any appeal proceed on those claim(s) added or amended by the amendment under § 1.116 subject to any rejection set forth in the action from which the appeal was taken.
(b)
 
(1)
Appellant may file a reply brief to an examiner's answer within two months from the date of such examiner's answer. See § 1.136(b) for extensions of time for filing a reply brief in a patent application and§ 1.550(c) for extensions of time for filing a reply brief in a reexamination proceeding. The primary examiner must either acknowledge receipt and entry of the reply brief or withdraw the final rejection and reopen prosecution to respond to the reply brief. A supplemental examiner's answer is not permitted, unless the application has been remanded by the Board of Patent Appeals and Interferences for such purpose.
(2)
Where prosecution is reopened by the primary examiner after an appeal or reply brief has been filed, appellant must exercise one of the following two options to avoid abandonment of the application:
(i)
File a reply under § 1.111, if the Office action is not final, or a reply under § 1.113, if the Office action is final; or
(ii)
Request reinstatement of the appeal. If reinstatement of the appeal is requested, such request must be accompanied by a supplemental appeal brief, but no new amendments, affidavits (§§ 1.130, 1.131 or 1.132) or other evidence are permitted.

[24 FR 10332, Dec. 22, 1959; 34 FR 18858, Nov.26, 1969; para. (c), 47 FR 21752, May 19, 1982, added effective July 1, 1982; para. (b), 50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (c) deleted, 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.194 Oral hearing.

(a)
An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided without an oral hearing will receive the same consideration by the Board of Patent Appeals and Interferences as appeals decided after oral hearing.
(b)
If appellant desires an oral hearing, appellant must file, in a separate paper, a written request for such hearing accompanied by the fee set forth in § 1.17(d) within two months from the date of the examiner's answer. If appellant requests an oral hearing and submits therewith the fee set forth in § 1.17(d), an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. See § 1.136(b) for extensions of time for requesting an oral hearing in a patent application and § 1.550(c) for extensions of time for requesting an oral hearing in a reexamination proceeding.
(c)
If no request and fee for oral hearing have been timely filed by appellant, the appeal will be assigned for consideration and decision. If appellant has requested an oral hearing and has submitted the fee set forth in § 1.17(d), a day of hearing will be set, and due notice thereof given to appellant and to the primary examiner. A hearing will be held as stated in the notice, and oral argument will be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered before the hearing begins. If the Board decides that a hearing is not necessary, the Board will so notify appellant.

[42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (b) revised 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.195 Affidavits or declarations after appeal.
Affidavits, declarations, or exhibits submitted after the case has been appealed will not be admitted without a showing of good and sufficient reasons why they were not earlier presented.

[34 FR 18858, Nov. 26, 1969]



1.196 Decision by the Board of Patent Appeals and Interferences.

(a)
The Board of Patent Appeals and Interferences, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner or remand the application to the examiner for further consideration. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.
(b)
Should the Board of Patent Appeals and Interferences have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in the decision a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim. A new ground of rejection shall not be considered final for purposes of judicial review. When the Board of Patent Appeals and Interferences makes a new ground of rejection, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected claims:
(1)
Submit an appropriate amendment of the claims so rejected or a showing of facts relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the application will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or showing of facts not previously of record be made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. Should the examiner reject the claims, appellant may again appeal pursuant to §§ 1.191 through 1.195 to the Board of Patent Appeals and Interferences.
(2)
Request that the application be reheard under § 1.197(b) by the Board of Patent Appeals and Interferences upon the same record. The request for rehearing must address the new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought. Where request for such rehearing is made, the Board of Patent Appeals and Interferences shall rehear the new ground of rejection and, if necessary, render a new decision which shall include all grounds of rejection upon which a patent is refused. The decision on rehearing is deemed to incorporate the earlier decision for purposes of appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision.
(c)
Should the decision of the Board of Patent Appeals and Interferences include an explicit statement that a claim may be allowed in amended form, appellant shall have the right to amend in conformity with such statement which shall be binding on the examiner in the absence of new references or grounds of rejection.
(d)
The Board of Patent Appeals and Interferences may require appellant to address any matter that is deemed appropriate for a reasoned decision on the pending appeal. Appellant will be given a non-extendable time period within which to respond to such a requirement.
(e)
Whenever a decision of the Board of Patent Appeals and Interferences includes or allows a remand, that decision shall not be considered a final decision. When appropriate, upon conclusion of proceedings on remand before the examiner, the Board of Patent Appeals and Interferences may enter an order otherwise making its decision final.
(f)
See § 1.136(b) for extensions of time to take action under this section in a patent application and § 1.550(c) for extensions of time in a reexamination proceeding.

[24 FR 10332, Dec. 12, 1959; 49 FR 29183, May 29, 1981; 49 FR 48416, Dec. 12, 1984, effective Feb. 12, 1985; para.(b) revised, 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; paras. (a), (b) & (d) amended, paras. (e) & (f) added,54 FR 29552, July 13, 1989, effective Aug. 20, 1989; para.(f) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,1994; paras. (b) & (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.197 Action following decision.

(a)
After decision by the Board of Patent Appeals and Interferences, the application will be returned to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application may require, to carry into effect the decision.
(b)
Appellant may file a single request for rehearing within two months from the date of the original decision, unless the original decision is so modified by the decision on rehearing as to become, in effect, a new decision, and the Board of Patent Appeals and Interferences so states. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought. See § 1.136(b) for extensions of time for seeking rehearing in a patent application and § 1.550(c) for extensions of time for seeking rehearing in a reexamination proceeding.
(c)
Termination of proceedings. Proceedings are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action (§ 1.304) except: (1) Where claims stand allowed in an application or (2) Where the nature of the decision requires further action by the examiner. The date of termination of proceedings is the date on which the appeal is dismissed or the date on which the time for appeal to the court or review by civil action (§ 1.304) expires. If an appeal to the court or a civil action has been filed, proceedings are considered terminated when the appeal or civil action is terminated. An appeal to the U.S. Court of Appeals for the Federal Circuit is terminated when the mandate is received by the Office. A civil action is terminated when the time to appeal the judgment expires.

[46 FR 29184, May 29, 1981; para. (a), 47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a) and (b), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (b) and (c), 54 FR 29552, July 13, 1989, effective Aug. 20, 1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)& (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.198 Reopening after decision.

[49 FR 48416, Dec. 12, 1984, effective date Feb. 11, 1985]

MISCELLANEOUS PROVISIONS

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

(a)
Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in any of the following ways:
(1)
By delivering a copy of the paper to the person served;
(2)
By leaving a copy at the usual place of business of the person served with someone in his employment;
(3)
When the person served has no usual place of business, by leaving a copy at the person's residence, with some person of suitable age and discretion who resides there;
(4)
Transmission by first class mail. When service is by mail the date of mailing will be regarded as the date of service;
(5)
Whenever it shall be satisfactorily shown to the Commissioner that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.
(b)
Papers filed in the Patent and Trademark Office which are required to be served shall contain proof of service. Proof of service may appear on or be affixed to papers filed. Proof of service shall include the date and manner of service. In the case of personal service, proof of service shall also include the name of any person served, certified by the person who made service. Proof of service may be made by:
(1)
An acknowledgement of service by or on behalf of the person served or
(2)
A statement signed by the attorney or agent containing the information required by this section.
(c)
See § 1.646 for service of papers in interferences.

[46 FR 29184, May 29, 1981; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]

PROTESTS AND PUBLIC USE PROCEEDINGS

1.291 Protests by the public against pending applications.

(a)
Protests by a member of the public against pending applications will be referred to the examiner having charge of the subject matter involved. A protest specifically identifying the application to which the protest is directed will be entered in the application file if:
(1)
The protest is submitted prior to the mailing of a notice of allowance under § 1.311; and
(2)
The protest is either served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible.
(b)
Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. Protests which do not adequately identify a pending patent application will be returned to the protestor and will not be further considered by the Office. A protest submitted in accordance with the second sentence of paragraph (a) of this section will be considered by the Office if the application is still pending when the protest and application file are brought before the examiner and it includes:
(1)
A listing of the patents, publications, or other information relied upon;
(2)
A concise explanation of the relevance of each listed item;
(3)
A copy of each listed patent or publication or other item of information in written form or at least the pertinent portions thereof; and
(4)
An English language translation of all the necessary and pertinent parts of any non-English language patent, publication, or other item of information in written form relied upon.
(c)
A member of the public filing a protest in an application under paragraph (a) of this section will not receive any communications from the Office relating to the protest, other than the return of a self-addressed postcard which the member of the public may include with the protest in order to receive an acknowledgment by the Office that the protest has been received. In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a protest. The limited involvement of the member of the public filing a protest pursuant to paragraph (a) of this section ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, except for additional prior art, or unless such submission raises new issues which could not have been earlier presented.

[47 FR 21752, May 19, 1982, effective July 1, 1982; paras.(a) and (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; paras. (a) and (b) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.292 Public use proceedings.

(a)
When a petition for the institution of public use proceedings, supported by affidavits or declarations is found, on reference to the examiner, to make a prima facie showing that the invention claimed in an application believed to be on file had been in public use or on sale more than one year before the filing of the application, a hearing may be had before the Commissioner to determine whether a public use proceeding should be instituted. If instituted, the Commissioner may designate an appropriate official to conduct the public use proceeding, including the setting of times for taking testimony, which shall be taken as provided by§§ 1.671 through 1.685. The petitioner will be heard in the proceedings but after decision therein will not be heard further in the prosecution of the application for patent.
(b)
The petition and accompanying papers, or a notice that such a petition has been filed, shall be entered in the application file if:
(1)
The petition is accompanied by the fee set forth in § 1.17(j);
(2)
The petition is served on the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and
(3)
The petition is submitted prior to the mailing of a notice of allowance under § 1.311.
(c)
A petition for institution of public use proceedings shall not be filed by a party to an interference as to an application involved in the interference. Public use and on sale issues in an interference shall be raised by a preliminary motion under § 1.633(a).

[42 FR 5595, Jan. 28, 1977; para. (a), 47 FR 41279, Sept. 17, 1982; paras. (a) and (c), 49 FR 48416, Dec. 12, 1984, effective Feb. 12, 1985; paras. (a) and (b) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



1.293 Statutory invention registration.

(a)
An applicant for an original patent may request, at any time during the pendency of applicant's pending complete application, that the specification and drawings be published as a statutory invention registration. Any such request must be signed by (1) the applicant and any assignee of record or (2) an attorney or agent of record in the application.
(b)
Any request for publication of a statutory invention registration must include the following parts:
(1)
A waiver of the applicant's right to receive a patent on the invention claimed effective upon the date of publication of the statutory invention registration;
(2)
The required fee for filing a request for publication of a statutory invention registration as provided for in § 1.17(n) or (o);
(3)
A statement that, in the opinion of the requester, the application to which the request is directed meets the requirements of 35 U.S.C. 112; and
(4)
A statement that, in the opinion of the requester, the application to which the request is directed complies with the formal requirements of this part for printing as a patent.
(c)
A waiver filed with a request for a statutory invention registration will be effective, upon publication of the statutory invention registration, to waive the inventor's right to receive a patent on the invention claimed in the statutory invention registration, in any application for an original patent which is pending on, or filed after, the date of publication of the statutory invention registration. A waiver filed with a request for a statutory invention registration will not affect the rights of any other inventor even if the subject matter of the statutory invention registration and an application of another inventor are commonly owned. A waiver filed with a request for a statutory invention registration will not affect any rights in a patent to the inventor which issued prior to the date of publication of the statutory invention registration unless a reissue application is filed seeking to enlarge the scope of the claims of the patent. See also § 1.104(c)(5).

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985;para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.294 Examination of request for publication of a statutory invention registration and patent application to which the request is directed.

(a)
Any request for a statutory invention registration will be examined to determine if the requirements of § 1.293 have been met. The application to which the request is directed will be examined to determine (1) if the subject matter of the application is appropriate for publication, (2) if the requirements for publication are met, and (3) if the requirements of 35 U.S.C. 112 and § 1.293 of this part are met.
(b)
Applicant will be notified of the results of the examination set forth in paragraph (a) of this section. If the requirements of § 1.293 and this section are not met by the request filed, the notification to applicant will set a period of time within which to comply with the requirements in order to avoid abandonment of the application. If the application does not meet the requirements of 35 U.S.C. 112, the notification to applicant will include a rejection under the appropriate provisions of 35 U.S.C. 112. The periods for reply established pursuant to this section are subject to the extension of time provisions of § 1.136. After reply by the applicant, the application will again be considered for publication of a statutory invention registration. If the requirements of § 1.293 and this section are not timely met, the refusal to publish will be made final. If the requirements of 35 U.S.C. 112 are not met, the rejection pursuant to 35 U.S.C. 112 will be made final.
(c)
If the examination pursuant to this section results in approval of the request for a statutory invention registration the applicant will be notified of the intent to publish a statutory invention registration.

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985;para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

(a)
Any requester who is dissatisfied with the final refusal to publish a statutory invention registration for reasons other than compliance with 35 U.S.C. 112 may obtain review of the refusal to publish the statutory invention registration by filing a petition to the Commissioner accompanied by the fee set forth in § 1.17(h) within one month or such other time as is set in the decision refusing publication. Any such petition should comply with the requirements of § 1.181(b). The petition may include a request that the petition fee be refunded if the final refusal to publish a statutory invention registration for reasons other than compliance with 35 U.S.C. 112 is determined to result from an error by the Patent and Trademark Office.
(b)
Any requester who is dissatisfied with a decision finally rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the decision by filing an appeal to the Board of Patent Appeals and Interferences pursuant to § 1.191. If the decision rejecting claims pursuant to 35 U.S.C.112 is reversed, the request for a statutory invention registration will be approved and the registration published if all of the other provisions of§ 1.293 and this section are met.

[50 FR 9382, Mar. 7, 1985, effective May 8, 1985]



1.296 Withdrawal of request for publication of statutory invention registration.
A request for a statutory invention registration, which has been filed, may be withdrawn prior to the date of the notice of the intent to publish a statutory invention registration issued pursuant to § 1.294(c) by filing a request to withdraw the request for publication of a statutory invention registration. The request to withdraw may also include a request for a refund of any amount paid in excess of the application filing fee and a handling fee of $130.00 which will be retained. Any request to withdraw the request for publication of a statutory invention registration filed on or after the date of the notice of intent to publish issued pursuant to § 1.294(c) must be in the form of a petition pursuant to § 1.183 accompanied by the fee set forth in § 1.17(h).

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989;56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991]



1.29 7 Publication of statutory invention registration.

(a)
If the request for a statutory invention registration is approved the statutory invention registration will be published. The statutory invention registration will be mailed to the requester at the correspondence address as provided for in § 1.33(a). A notice of the publication of each statutory invention registration will be published in the Official Gazette.
(b)
Each statutory invention registration published will include a statement relating to the attributes of a statutory invention registration. The statement will read as follows:
A statutory invention registration is not a pat­ent. It has the defensive attributes of a patent butdoes not have the enforceable attributes of a patent. No article or advertisement or the like may use theterm patent, or any term suggestive of a patent,when referring to a statutory invention registra­tion. For more specific information on the rightsassociated with a statutory invention registrationsee 35 U.S.C. 157.

[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985]

REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT

1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.
Any applicant or any owner of a patent involved in a reexamination proceeding dissatisfied with the decision of the Board of Patent Appeals and Interferences, and any party to an interference dissatisfied with the decision of the Board of Patent Appeals and Interferences, may appeal to the U.S. Court of Appeals for the Federal Circuit. The appellant must take the following steps in such an appeal:

(a)
In the Patent and Trademark Office file a written notice of appeal directed to the Commissioner (see §§ 1.302 and 1.304); and
(b)
In the Court, file a copy of the notice of appeal, and pay the fee for appeal, as provided by the rules of the Court.

[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9383,Mar. 7, 1985, effective May 8, 1985; 54 FR 29552, July 13, 1989, effective Aug. 20, 1989]



1.302 Notice of appeal.

(a)
When an appeal is taken to the U.S. Court of Appeals for the Federal Circuit, the appellant shall give notice thereof to the Commissioner within the time specified in § 1.304.
(b)
In interferences, the notice must be served as provided in § 1.646.
(c)
A notice of appeal, if mailed to the Office, shall be addressed as follows: Box 8, Commissioner of Patents and Trademarks, Washington, DC 20231.

[24 FR 10332, Dec. 22, 1959; para. (a), 47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 9383, Mar. 7, 1985, effective May8, 1985; para. (c) added, 53 FR 16414, May 8, 1988]



1.303 Civil action under 35 U.S.C. 145, 146, 306.

(a)
Any applicant or any owner of a patent involved in a reexamination proceeding dissatisfied with the decision of the Board of Patent Appeals and Interferences, and any party dissatisfied with the decision of the Board of Patent Appeals and Interferences may, instead of appealing to the the U.S. Court of Appeals for the Federal Circuit (§ 1.301), have remedy by civil action under 35 U.S.C. 145 or 146, as appropriate. Such civil action must be commenced within the time specified in § 1.304.
(b)
If an applicant in an ex parte case or an owner of a patent involved in a reexamination proceeding has taken an appeal to the U.S. Court of Appeals for the Federal Circuit, he or she thereby waives his or her right to proceed under 35 U.S.C. 145.
(c)
If any adverse party to an appeal taken to the U.S. Court of Appeals for the Federal Circuit by a defeated party in an interference proceeding files notice with the Commissioner within twenty days after the filing of the defeated party's notice of appeal to the court (§ 1.302), that he or she elects to have all further proceedings conducted as provided in 35 U.S.C. 146, the notice of election must be served as provided in § 1.646.

[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (c), 54 FR 29553, July 13, 1989, effective Aug. 20, 1989]



1.304 Time for appeal or civil action.

(a)
 
(1)
The time for filing the notice of appeal to the U.S. Court of Appeals for the Federal Circuit (§ 1.302) or for commencing a civil action (§ 1.303) is two months from the date of the decision of the Board of Patent Appeals and Interferences. If a request for rehearing or reconsideration of the decision is filed within the time period provided under § 1.197(b) or § 1.658(b), the time for filing an appeal or commencing a civil action shall expire two months after action on the request. In interferences, the time for filing a cross-appeal or cross-action expires:
(i)
14 days after service of the notice of appeal or the summons and complaint; or
(ii)
Two months after the date of decision of the Board of Patent Appeals and Interferences, whichever is later.
(2)
The time periods set forth in this section are not subject to the provisions of §§ 1.136, 1.550(c) or 1.645 (a) or (b).
(3)
The Commissioner may extend the time for filing an appeal or commencing a civil action:
(i)
For good cause shown if requested in writing before the expiration of the period for filing an appeal or commencing a civil action, or
(ii)
Upon written request after the expiration of the period for filing an appeal or commencing a civil action upon a showing that the failure to act was the result of excusable neglect.
(b)
The times specified in this section in days are calendar days. The time specified herein in months are calendar months except that one day shall be added to any two-month period which includes February 28. If the last day of the time specified for appeal or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to the next day which is neither a Saturday, Sunday nor a Federal holiday.
(c)
If a defeated party to an interference has taken an appeal to the U.S. Court of Appeals for the Federal Circuit and an adverse party has filed notice under 35 U.S.C. 141 electing to have all further proceedings conducted under 35 U.S.C. 146 (§ 1.303(c)), the time for filing a civil action thereafter is specified in 35 U.S.C. 141. The time for filing a cross-action expires 14 days after service of the summons and complaint.

[41 FR 758, Jan. 5, 1976; para. (a) and (c), 47 FR 47382, Oct. 26, 1982; para. (a), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; para. (a) 49 FR Dec. 12, 1984, effective Feb. 11, 1985; para. (a), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985;54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras.(a) and (c) revised 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a)(1) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

ALLOWANCE AND ISSUE OF PATENT

1.311 Notice of Allowance.

(a)
If, on examination, it shall appear that the applicant is entitled to a patent under the law, a notice of allowance will be sent to applicant at the correspondence address indicated in § 1.33 calling for the payment of a specified sum constituting the issue fee (§ 1.18) which shall be paid within 3 months from the date of the mailing of the notice of allowance.
(b)
An authorization to charge the issue fee(§ 1.18) to a deposit account may be filed in an individual application, either before or after mailing of the notice of allowance. Where an authorization to charge the issue fee to a deposit account has been filed before the mailing of the notice of allowance, the issue fee will be automatically charged to the deposit account at the time of mailing the notice of allowance.

[47 FR 41279, Sept. 17, 1982, effective Oct. 1, 1982]



1.312 Amendments after allowance.

(a)
No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment pursuant to this paragraph filed before the payment of the issue fee may be entered on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the case from issue.
(b)
Any amendment pursuant to paragraph (a) of this section filed after the date the issue fee is paid must be accompanied by a petition including the fee set forth in § 1.17(i) and a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented. For reissue applications, see § 1.175(b), which requires a supplemental oath or declaration to accompany the amendment.

[Para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (b) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.313 Withdrawal from issue.

(a)
Applications may be withdrawn from issue for further action at the initiative of the Office or upon petition by the applicant. Any such petition by the applicant must include a showing of good and sufficient reasons why withdrawal of the application is necessary and, if the reason for the withdrawal is not the fault of the Office, must be accompanied by the fee set forth in§ 1.17(i). If the application is withdrawn from issue, a new notice of allowance will be sent if the application is again allowed. Any amendment accompanying a petition to withdraw an application from issue must comply with the requirements of § 1.312.
(b)
When the issue fee has been paid, the application will not be withdrawn from issue for any reason except:
(1)
A mistake on the part of the Office;
(2)
A violation of § 1.56 or illegality in the application;
(3)
Unpatentability of one or more claims;
(4)
For interference; or
(5)
For abandonment to permit consideration of an information disclosure statement under § 1.97 in a continuing application.

[47 FR 41280, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]



1.314 Issuance of patent.
If payment of the issue fee is timely made, the patent will issue in regular course unless the application is withdrawn from issue (§ 1.313), or issuance of the patent is deferred. Any petition by the applicant requesting a deferral of the issuance of a patent must be accompanied by the fee set forth in § 1.17(i) and must include a showing of good and sufficient reasons why it is necessary to defer issuance of the patent.

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]



1.315 Delivery of patent.
The patent will be delivered or mailed upon issuance to the correspondence address of record. See § 1.33(a).

[Revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



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.

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (b)-(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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.

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 1982; paras. (a) - (d) amended, paras. (e) & (f) added, 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.318 [Reserved]

[43 FR 20465, May 11, 1978; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

DISCLAIMER

1.321 Statutory disclaimers, including terminal disclaimers.

(a)
A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. The disclaimer, to be recorded in the Patent and Trademark Office, must:
(1)
Be signed by the patentee, or an attorney or agent of record;
(2)
Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation;
(3)
State the present extent of patentee's ownership interest in the patent; and
(4)
Be accompanied by the fee set forth in § 1.20(d).
(b)
An applicant or assignee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted. Such terminal disclaimer is binding upon the grantee and its successors or assigns. The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1)
Be signed:
(i)
By the applicant, or
(ii)
If there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii)
If there is an assignee of record of the entire interest, by such assignee, or
(iv)
By an attorney or agent of record;
(2)
Specify the portion of the term of the patent being disclaimed;
(3)
State the present extent of applicant's or assignee's ownership interest in the patent to be granted; and
(4)
Be accompanied by the fee set forth in§ 1.20(d).
(c)
A terminal disclaimer, when filed to obviate a judicially created double patenting rejection in a patent application or in a reexamination proceeding, must:
(1)
Comply with the provisions of paragraphs (b)(2) through (b)(4) of this section;
(2)
Be signed in accordance with paragraph (b)(1) of this section if filed in a patent application or in accordance with paragraph (a)(1) of this section if filed in a reexamination proceeding; and
(3)
Include a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the rejection.

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (c) revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]

CORRECTION OF ERRORS IN PATENT

1.322 Certificate of correction of Office mistake.

(a)
A certificate of correction under 35 U.S.C. 254 may be issued at the request of the patentee or the patentee's assignee. Such certificate will not be issued at the request or suggestion of anyone not owning an interest in the patent, nor on motion of the Office, without first notifying the patentee (including any assignee of record) and affording the patentee an opportunity to be heard. When the request relates to a patent involved in an interference, the request shall comply with the requirements of this section and shall be accompanied by a motion under § 1.635.
(b)
If the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, the Commissioner may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee.

[24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar. 22, 1969; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]



1.323 Certificate of correction of applicant's mistake.
Whenever a mistake of a clerical or typographical nature or of minor character which was not the fault of the Office, appears in a patent and a showing is made that such mistake occurred in good faith, the Commissioner may, upon payment of the fee set forth in § 1.20(a), issue a certificate, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. A request for a certificate of correction of a patent involved in an interference shall comply with the requirements of this section and shall be accompanied by a motion under § 1.635.

[34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985]



1.324 Correction of inventorship in patent.

(a)
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his or her part, the Commissioner may, on petition, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 1.634.
(b)
Any petition pursuant to paragraph (a) of this section must be accompanied by:
(1)
A statement from each person who is being added as an inventor and from each person who is being deleted as an inventor that the inventorship error occurred without any deceptive intention on his or her part;
(2)
A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;
(3)
A statement from all assignees of the parties submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(b) of this chapter; and
(4)
The fee set forth in § 1.20(b).

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective Feb. 11, 1985; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.325 Other mistakes not corrected.
Mistakes other than those provided for §§ in 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.

[48 FR 2714, Jan. 20, 1983, effective date Feb. 27, 1983]

ARBITRATION AWARDS

1.331 [Reserved]

[24 FR 10332, Dec. 22, 1959; 43 FR 20465, May 11, 1978; 47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]



1.332 [Reserved]

[47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]



1.333 [Reserved]

[Deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]



1.334 [Reserved]

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]



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 to35 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 to35 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.

[48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983]

AMENDMENT OF RULES

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

1.352 [Reserved]

[Para. (a) amended, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

MAINTENANCE FEES

1.362 Time for payment of maintenance fees.

(a)
Maintenance fees as set forth in §§ 1.20(e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in force beyond 4, 8 and 12 years after the date of grant.
(b)
Maintenance fees are not required for any plant patents or for any design patents. Maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.
(c)
The application filing dates for purposes of payment of maintenance fees are as follows:
(1)
For an application not claiming benefit of an earlier application, the actual United States filing date of the application.
(2)
For an application claiming benefit of an earlier foreign application under 35 U.S.C. 119, the United States filing date of the application.
(3)
For a continuing (continuation, division, continuation-in-part) application claiming the benefit of a prior patent application under 35 U.S.C. 120, the actual United States filing date of the continuing application.
(4)
For a reissue application, including a continuing reissue application claiming the benefit of a reissue application under 35 U.S.C. 120, the 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 § 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 §§1.362 (d) and (e) with respect to a reissue application, including a continu­ ing 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, added effective Nov. 1, 1984; paras. (a) and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (c)(4) and (e) revised and para. (h) added, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994]



1.363 Fee address for maintenance fee purposes.

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

[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984]



1.366 Submission of maintenance fees.

(a)
The patentee may pay maintenance fees and any necessary surcharges, or any person or organization may pay maintenance fees and any necessary surcharges on behalf of a patentee. Authorization by the patentee need not be filed in the Patent and Trademark Office to pay maintenance fees and any necessary surcharges on behalf of the patentee.
(b)
A maintenance fee and any necessary surcharge submitted for a patent must be submitted in the amount due on the date the maintenance fee and any necessary surcharge are paid. A maintenance fee or surcharge may be paid in the manner set forth in § 1.23 or by an authorization to charge a deposit account established pursuant to § 1.25. Payment of a maintenance fee and any necessary surcharge or the authorization to charge a deposit account must be submitted within the periods set forth in § 1.362(d), (e), or (f). Any payment or authorization of maintenance fees and surcharges filed at any other time will not be accepted and will not serve as a payment of the maintenance fee except insofar as a delayed payment of the maintenance fee is accepted by the Commissioner in an expired patent pursuant to a petition filed under § 1.378. Any authorization to charge a deposit account must authorize the immediate charging of the maintenance fee and any necessary surcharge to the deposit account. Payment of less than the required amount, payment in a manner other than that set forth § 1.23, or in the filing of an authorization to charge a deposit account having insufficient funds will not constitute payment of a maintenance fee or surcharge on a patent. The procedures set forth in § 1.8 or§ 1.10 may be utilized in paying maintenance fees and any necessary surcharges.
(c)
In submitting maintenance fees and any necessary surcharges, identification of the patents for which maintenance fees are being paid must include the following:
(1)
The patent number; and
(2)
The application number of the United States application for the patent on which the maintenance fee is being paid.
(d)
Payment of maintenance fees and any surcharges should identify the fee being paid for each patent as to whether it is the 3 1/2-, 7 1/2-, or11 1/2-year fee, whether small entity status is being changed or claimed, the amount of the maintenance fee and any surcharge being paid, and any assigned customer number. If the maintenance fee and any necessary surcharge is being paid on a reissue patent, the payment must identify the reissue patent by reissue patent number and reissue application number as required by paragraph (c) of this section and should also include the original patent number.
(e)
Maintenance fee payments and surcharge payments relating thereto must be submitted separate from any other payments for fees or charges, whether submitted in the manner set forth in § 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§ 1.28(b).
(g)
Maintenance fees and surcharges relating thereto will not be refunded except in accordance with §§1.26 and 1.28(a).

[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 1984; para. (b) amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; paras. (b) - (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

(a)
Any patentee who is dissatisfied with the refusal of the Patent and Trademark Office to accept and record a maintenance fee which was filed prior to the expiration of the patent may petition the Commissioner to accept and record the maintenance fee.
(b)
Any petition under this section must be filed within 2 months of the action complained of, or within such other time as may be set in the action complained of, and must be accompanied by the fee set forth in§ 1.17(h). The petition may include a request that the petition fee be refunded if the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.
(c)
Any petition filed under this section must comply with the requirements of § 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, added effective Nov. 1, 1984; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

(a)
The Commissioner may accept the payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to the satisfaction of the Commissioner to have been unavoidable (paragraph (b) of this section) or unintentional (paragraph (c) of this section) and if the surcharge required by § 1.20(i) is paid as a condition of accepting payment of the maintenance fee. If the Commissioner accepts payment of the maintenance fee upon petition, the patent shall be considered as not having expired, but will be subject to the conditions set forth in 35 U.S.C. 41(c)(2).
(b)
Any petition to accept an unavoidably delayed payment of a maintenance fee filed under paragraph (a) of this section must include:
(1)
The required maintenance fee set forth in § 1.20 (e) through (g);
(2)
The surcharge set forth in § 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 § 1.362(e) and must include:
(1)
The required maintenance fee set forth in § 1.20 (e) through (g);
(2)
The surcharge set forth in § 1.20(i)(2); and
(3)
A statement that the delay in payment of the maintenance fee was unintentional.
(d)
Any petition under this section must be signed by an attorney or agent registered to practice before the Patent and Trademark Office, or by the patentee, the assignee, or other party in interest.
(e)
Reconsideration of a decision refusing to accept a maintenance fee upon petition filed pursuant to paragraph (a) of this section may be obtained by filing a petition for reconsideration within two months of, or such other time as set in, the decision refusing to accept the delayed payment of the maintenance fee. Any such petition for reconsideration must be accompanied by the petition fee set forth in § 1.17(h). After decision on the petition for reconsideration, no further reconsideration or review of the matter will be undertaken by the Commissioner. If the delayed payment of the maintenance fee is not accepted, the maintenance fee and the surcharge set forth in § 1.20(i) will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if none is filed. Any petition fee under this section will not be refunded unless the refusal to accept and record the maintenance fee is determined to result from an error by the Patent and Trademark Office.

[49 FR 34726, Aug. 31, 1984, added effective Nov. 1, 1984; para. (a), 50 FR 9383, Mar.7, 1985, effective May 8, 1985; paras. (b) and (c), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; paras. (a) - (c) and (e), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) - (c) and (e), 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

C International Processing Provisions

GENERAL INFORMATION

1.401 Definitions of terms under the Patent Cooperation Treaty.

(a)
The abbreviation PCT and the term Treaty mean the Patent Cooperation Treaty.
(b)
International Bureau means the World Intellectual Property Organization located in Geneva, Switzerland.
(c)
Administrative Instructions means that body of instructions for operating under the Patent Cooperation Treaty referred to in PCT Rule 89.
(d)
Request, when capitalized, means that element of the international application described in PCT Rules 3 and 4.
(e)
International application, as used in this subchapter is defined in § 1.9(b).
(f)
Priority date for the purpose of computing time limits under the Patent Cooperation Treaty is defined in PCT Art. 2(xi). Note also § 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; 52 FR 20047, May 28, 1987]



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, where the United States Receiving Office is not the competent Receiving Office under § 1.421(a) and PCT Rule 19.1 or 19.2, transmitting the international application to the International Bureau for processing in its capacity as a Receiving Office unless prescriptions concerning national security prevent the application from being so transmitted (PCT Rule 19.4).

[Para. (c)(6) added, 60 FR 21438, May 2, 1995, effective June 1, 1995]



1.413 The United States International Searching Authority.

(a)
Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Searching Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Commissioner, in accordance with agreement between the Patent and Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
(b)
The Patent and Trademark Office, when acting as an International Searching Authority, will be identified by the full title “United States International Searching Authority” or by the abbreviation “ISA/US.”
(c)
The major functions of the International Searching Authority include:
(1)
Approving or establishing the title and abstract;
(2)
Considering the matter of unity of invention;
(3)
Conducting international and international-type searches and preparing international and international-type search reports (PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to 45 and 47); and
(4)
Transmitting the international search report to the applicant and the International Bureau.



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

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

[52 FR 20047, May 28, 1987, effective July 1, 1987]



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.



1.416 The United States International Preliminary Examining Authority.

(a)
Pursuant to appointment by the Assembly, the United States Patent and Trademark Office will act as an International Preliminary Examining Authority for international applications filed in the United States Receiving Office and in other Receiving Offices as may be agreed upon by the Commissioner, in accordance with agreement between the Patent and Trademark Office and the International Bureau.
(b)
The United States Patent and Trademark Office, when acting as an International Preliminary Examining Authority, will be identified by the full title “United States International Preliminary Examining Authority” or by the abbreviation “IPEA/US.”
(c)
The major functions of the International Preliminary Examining Authority include:
(1)
Receiving and checking for defects in the Demand;
(2)
Collecting the handling fee for the International Bureau and the preliminary examination fee for the United States International Preliminary Examining Authority;
(3)
Informing applicant of receipt of the Demand;
(4)
Considering the matter of unity of invention;
(5)
Providing an international preliminary examination report which is a non-binding opinion on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable; and
(6)
Transmitting the international preliminary examination report to applicant and the International Bureau.

[Added 52 FR 20047, May 28, 1987]

WHO MAY FILE AN INTERNATIONAL APPLICATION

1.421 Applicant for international application.

(a)
Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant:
(1)
Has indicated a residence or nationality in a PCT Contracting State, or
(2)
Has no residence or nationality indicated, applicant will be so notified and, if the international application includes a fee amount equivalent to that required by § 1.445(a)(5), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office. (See also § 1.412(c)(6)).
(b)
Although the United States Receiving Office will accept international applications filed by any resident or national of the United States of America for international processing, an international application designating the United States of America will be accepted by the Patent and Trademark Office for the national stage only if filed by the inventor or as provided in §§ 1.422, 1.423 or 1.425.
(c)
International applications which do not designate the United States of America may be filed by the assignee or owner.
(d)
The attorney or agent of the applicant may sign the international application Request and file the international application for the applicant if the international application when filed is accompanied by a separate power of attorney to that attorney or agent from the applicant. The separate power of attorney from the applicant may be submitted after filing if sufficient cause is shown for not submitting it at the time of filing. Note that paragraph (b) of this section requires that the applicant be the inventor if the United States of America is designated.
(e)
Any indication of different applicants for the purpose of different Designated Offices must be shown on the Request portion of the international application.
(f)
Changes in the person, name, or address of the applicant of an international application shall be made in accordance with PCT Rule 92bis.
(g)
The wording of PCT Rule 92bis is as follows:
(a)
The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indications appearing in the request or demand:
(i)
Person name, residence, nationality or address of the applicant,
(ii)
Person, name or address of the agent, the common representative or the inventor.
(b)
The International Bureau shall not record the requested change if the request for recording is received by it after the expiration:
(i)
Of the time limit referred to in Article 22(1), where Article 39(1) is not applicable with respect to any Contracting State;
(ii)
Of the time limit referred to in Article 39(1)(a), where Article 39(1) is applicable with respect to at least one Contracting State.

[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; para. (a) amended, 60 FR 21438, May 2, 1995, effective June 1, 1995]



1.422 When the inventor is dead.
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may file an international application which designates the United States of America.

1.423 When the inventor is insane or legally incapacitated.
In case an inventor is insane or otherwise legally in­ capacitated, the legal representative (guardian, conservator, etc.) of such inventor may file an international application which designates the United States of America.

1.424 Joint inventors.
Joint inventors must jointly file an international application which designates the United States of America; the signature of either of them alone, or less than the entire number will be insufficient for an invention invented by them jointly, except as provided in § 1.425.

1.425 Filing by other than inventor.
Where an international application which designates the United States of America is filed and where one or more inventors refuse to sign the Request for the international application or cannot be found or reached after diligent effort, the Request need not be signed by such inventor if it is signed by another applicant. Such international application must be accompanied by a statement explaining to the satisfaction of the Commissioner the lack of the signature concerned.

[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

THE INTERNATIONAL APPLICATION

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 of receipt of the international application, provided that:
(1)
At least one applicant 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(§ 1.432);
(iii)
The name of the applicant, as prescribed (note §§1.421-1.424);
(iv)
A part which on the face of it appears to be a description; and
(v)
A part which on the face of it appears to be a claim.
(c)
Payment of the basic portion of the international fee (PCT Rule 15.2) and the transmittal and search fees (§ 1.445) may be made in full at the time the international application papers required by paragraph (b) of this section are deposited or within one month thereafter. If the basic transmittal and search fees are not paid within one month from the date of receipt of the international application, 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:
(1)
50% of the amount of the deficient fees up to a maximum amount equal to the basic fee, or
(2)
an amount equal to the transmittal fee (PCT Rule 16bis).


The one-month time limit set in the notice to pay deficient fees may not be extended.

(d)
If the payment needed to cover the transmittal fee, the basic fee, the search fee, one designation fee and the late payment fee pursuant to paragraph (c) of this section is not timely made, the Receiving Office will declare the international application withdrawn under PCT Article 14(3)(a).

[43 FR 20486, May 11, 1978; paras. (b), (c), (d) and (e), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para. (d) amended, 52 FR 20047, May 28, 1987; paras. (b)(1), (b)(3)(ii), (c) and (d) amended, para. (e) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]



1.432 Designation of States and payment of designation fees.

(a)
The designation of States including an indication that applicant wishes to obtain a regional patent, where applicable, shall appear in the Request upon filing and must be indicated as set forth in PCT Rule 4.9 and section 115 of the Administrative Instructions. Applicant must specify at least one national or regional designation on filing of the international application for a filing date to be granted.
(b)
If the fees necessary to cover all the national and regional designations specified in the Request are not paid by the applicant within one year from the priority date or within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date, applicant will be notified and given one month within which to pay the deficient designation fees plus a late payment fee equal to the greater of 50% of the amount of the deficient fees up to a maximum amount equal to the basic fee, or an amount equal to the transmittal fee (PCT Rule 16bis). The one-month time limit set in the notification of deficient designation fees may not be extended. Failure to timely pay at least one designation fee will result in the withdrawal of the international application. The one designation fee may be paid:
(1)
Within one year from the priority date,
(2)
Within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date, or
(3)
With the late payment fee defined in this paragraph within the time set in the notification of the deficient designation fees. If after a notification of deficient designation fees the applicant makes timely payment, but the amount paid is not sufficient to cover the late payment fee and all designation fees, the Receiving Office will, after allocating payment for the basic, search, transmittal and late payment fees, allocate the amount paid in accordance with PCT Rule 16 bis.1(c) and withdraw the unpaid designations. The notification of deficient designation fees pursuant to this paragraph may be made simultaneously with any notification pursuant to § 1.431(c).
(c)
On filing the international application, in addition to specifying at least one national or regional designation under PCT Rule 4.9(a), applicant may also indicate under PCT Rule 4.9(b) that all other designations permitted under the Treaty are made. The latter indication under PCT Rule 4.9(b) must be made in a statement on the Request that any designation made under this paragraph is subject to confirmation (PCT Rule 4.9(c)) not later than the expiration of 15 months from the priority date by:
(1)
Filing a written notice with the United States Receiving Office specifying the national and/or regional designations being confirmed;
(2)
Paying the designation fee for each designation being confirmed; and
(3)
Paying the confirmation fee specified in§ 1.445(a)(4).


Unconfirmed designations will be considered withdrawn. If the amount submitted is not sufficient to cover the designation fee and the confirmation fee for each designation being confirmed, the Receiving Office will allocate the amount paid in accordance with any priority of designations specified by applicant. If applicant does not specify any priority of designations, the allocation of the amount paid will be made in accordance with PCT Rule 16 bis.1(c).

[43 FR 20486, May 11, 1978; para. (b) amended 52 FR 20047, May 28, 1987; paras. (a), (b) amended and para. (c) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]



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.



1.434 The request.

(a)
The request shall be made on a standardized form (PCT Rules 3 and 4). Copies of printed Request forms are available from the Patent and Trademark Office. Letters requesting printed forms should be marked “Box PCT.”
(b)
The Check List portion of the Request form should indicate each document accompanying the international application on filing.
(c)
All information, for example, addresses, names of States and dates, shall be indicated in the Request as required by PCT Rule 4 and Administrative Instructions 110 and 201.
(d)
International applications which designate the United States of America shall include:
(1)
The name, address and signature of the inventor, except as provided by §§ 1.421(d), 1.422, 1.423 and 1.425;
(2)
A reference to any copending national application or international application designating the United States of America, if the benefit of the filing date for the prior copending application is to be claimed.

[Para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]



1.435 The description.

(a)
Requirements as to the content and form of the description are set forth in PCT Rules 5, 9, 10 and 11 and Administrative Instruction 204, and shall be adhered to.
(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.



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.

1.437 The drawings.

(a)
Subject to paragraph (b) of this section, when drawings are necessary for the understanding of the invention, or are mentioned in the description, they must be part of an international application as originally filed in the United States Receiving Office in order to maintain the international filing date during the national stage (PCT Art. 7).
(b)
Drawings missing from the application upon filing will be accepted if such drawings are received within 30 days of the date of first receipt of the incomplete papers. If the missing drawings are received within the 30-day period, the international filing date shall be the date on which such drawings are received. If such drawings are not timely received, all references to drawings in the international application shall be considered non-existent (PCT Art. 14(2), Administrative Instruction 310).
(c)
The physical requirements for drawings are set forth in PCT Rule 11 and shall be adhered to.



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 application being declared withdrawn.
FEES

1.445 International application filing, processing and search fees.

(a)
The following fees and charges for international applications are established by the Commissioner under the authority of 35 U.S.C. 376:
(1)
A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) 240.00
(2)
A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i)
Where a corresponding prior United States National application filed under 35 U.S.C. 111(a) with the filing fee under 37 CFR 1.6(a) has been filed 450.00
(ii)
For all situations not provided for in (a)(2)(i) of this section 700.00
(3)
A supplemental search fee when required, per additional invention 210.00
(b)
The basic fee and designation fee portion of the international fee shall be as prescribed in PCT Rule 15.

[43 FR 20466, May 11, 1978; para. (a), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para. (a)(4) - (6), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (a) amended 52 FR 20047, May 28, 1987; paras. (a)(2) and (3), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, effective Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991, effective Dec. 27, 1991; para. (a), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (a)(4) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1)-(3), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; para. (a)(5) added, 60 FR 21438, May 2, 1995, effective June 1, 1995; para. (a) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; para. (a) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; para. (a) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997]



1.446 Refund of international application filing and processing fees.

(a)
Money paid for international application fees, where paid by actual mistake or in excess, such as a payment not required by law or Treaty and its Regulations, will be refunded.
(b)
[Reserved]
(c)
Refund of the supplemental search fees will be made if such refund is determined to be warranted by the Commissioner or the Commissioner's designee acting under PCT Rule 40. 2(c).
(d)
The international and search fees will be refunded if no international filing date is accorded or if the application is withdrawn before transmittal of the record copy to the International Bureau (PCT Rules 15.6 and 16.2). The search fee will be refunded if the application is withdrawn before transmittal of the search copy to the International Searching Authority. The transmittal fee will not be refunded.
(e)
The handling fee (§ 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)).

[43 FR 20466, May 11, 1978; para. (b), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para.(b), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (d) amended and para. (e) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

PRIORITY

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

(a)
The claim for priority must 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 is claimed in an international application, the applicant may request in a letter of transmittal accompanying the international application upon filing with the United States Receiving Office or in a separate letter filed in the Receiving Office not later than 16 months after the priority date, that the Patent and Trademark Office prepare a certified copy of the national application for transmittal to the International Bureau (PCT Article 8 and PCT Rule 17). The fee for preparing a certified copy is stated in § 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).

[43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 1982, effective Oct. 1, 1982; para. (b), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; paras. (b) & (c), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985; para. (b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

REPRESENTATION

1.455 Representation in international applications.

(a)
Applicants of international applications may be represented by attorneys or agents registered to practice before the Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8 and 90 and § 10.10). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be considered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a common representative, revokes any earlier appointment unless otherwise indicated (PCT Rule 90.6(b) and (c)).
(b)
Appointment of an agent, attorney or common representative (PCT Rule 4.8) must be effected either in the Request form, signed by all applicants, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.
(c)
Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.
(d)
The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.

[43 FR 20466, May 11, 1978; 50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

TRANSMITTAL OF RECORD COPY

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.
(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; paras. (a) and (b), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985]

TIMING

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 cancelled under PCT Rule 4.10(d), or considered not to have been made under PCT Rule 4.10(b), the priority date for the purposes of computing time limits will be the date of the earliest valid remaining priority claim of the international application, or if none, the international filing date.
(c)
When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule 20.2(a)(i) or (iii) are timely submitted, and the date of receipt of such corrections falls later than one year from the claimed priority date or dates, the Receiving Office shall proceed under PCT Rule 4.10(d).



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 § 1.137.

AMENDMENTS

1.471 Corrections and amendments during international processing.

(a)
All corrections submitted to the United States Receiving Office must be in the form of replacement sheets and be accompanied by a letter that draws attention to the differences between the replaced sheets and the replacement sheets, except that 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 may be stated in a letter and the United States Receiving Office will make the deletion or transfer the correction to the international application, provided that such corrections do not adversely affect the clarity and direct reproducibility of the application (PCT Rule 26.4).
(b)
Amendments of claims submitted to the International Bureau shall be as prescribed by PCT Rule 46.



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 should 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

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 process of use of said product; or
(3)
A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4)
A process and an apparatus or means specifically designed for carrying out the said process; or
(5)
A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
(c)
If an application contains claims to more or less than one of the combinations of categories of invention set forth in paragraph (b) of this section, unity of invention might not be present.
(d)
If multiple products, processes of manufacture or uses are claimed, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the main invention in the claims, see PCT Article 17(3)(a) and § 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.

[Added 52 FR 20047, May 28, 1987, effective July 1,1987; paras. (a) - (e) amended and para. (f) deleted, 58 FR4335, Jan. 14, 1993, effective May 1, 1993]



1.476 Determination of unity of invention before the International Searching Authority.

(a)
Before establishing the international search report, the International Searching Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475.
(b)
If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention, it shall inform the applicant accordingly and invite the payment of additional fees (note § 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 20047, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]



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

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

[43 FR 20466, May 11, 1978; redesignated and amended at 52 FR 20047, May 28, 1987]

INTERNATIONAL PRELIMINARY EXAMINATION

1.480 Demand for international preliminary examination.

(a)
On the filing of a Demand and payment of the fees for international preliminary examination (§ 1.482), the international application shall be the subject of an international preliminary examination. The preliminary examination fee (§ 1.482(a)(1)) and the handling fee(§ 1.482(b)) shall be due at the time of filing of the Demand.
(b)
The Demand shall be made on a standardized form. Copies of the printed Demand forms are available from the Patent and Trademark Office. Letters requesting printed Demand forms should be marked “Box PCT.”
(c)
If the Demand is made prior to the expiration of the 19th month from the priority date and the United States of America is elected, the provisions of § 1.495 shall apply rather than § 1.494.
(d)
Withdrawal of a proper Demand prior to the start of the international preliminary examination will entitle applicant to a refund of the preliminary examination fee minus the amount of the transmittal fee set forth in § 1.445(a)(1).

[52 FR 20048, May 28, 1987; para. (d), 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; para. (b) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]



1.482 International preliminary examination fees.

(a)
The following fees and charges for international preliminary examination are established by the Commissioner under the authority of 35 U.S.C. 376:
(1)
A preliminary examination fee is due on filing the Demand:
(i)
Where an international search fee as set forth in § 1.445(a)(2) has been paid on the international application to the United States Patent and Trademark Office as an International Searching Authority, a preliminary examination fee of 490.00
(ii)
Where the International Searching Authority for the international application was an authority other than the United States Patent and Trademark Office, a preliminary examination fee of 750.00
(2)
An additional preliminary examination fee when required, per additional invention:
(i)
Where the international Searching Authority for the international application was the United States Patent and Trademark Office 140.00
(ii)
Where the International Searching Authority for the international application was an authority other than the United States Patent and Trademark Office 260.00
(b)
The handling fee is due on filing the Demand.
(35 U.S.C. 6, 376)
 

[52 FR 20048, May 28, 1987; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 1991, effective Dec. 27, 1991; paras. (a)(1) and (a)(2)(ii), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; paras. (a)(2)(i) and (b) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1) and (a)(2)(ii), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a)(1)(i), (a)(1)(ii), & (a)(2)(ii) amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997]



1.484 Conduct of international preliminary examination.

(a)
An international preliminary examination will be conducted to formulate a non-binding opinion as to whether the claimed invention has novelty, involves an inventive step (is non-obvious) and is industrially applicable.
(b)
International preliminary examination will begin promptly upon receipt of a Demand which requests examination based on the application as filed, or as amended by an amendment which has been received by the United States International Preliminary Examining Authority. Where a Demand requests examination based on a PCT Article 19 amendment which has not been received, examination may begin at 20 months without receipt of a PCT Article 19 amendment. Where a Demand requests examination based on a PCT Article 34 amendment which has not been received, applicant will be notified and given a time period within which to submit the amendment. Examination will begin after the earliest of:
(1)
Receipt of the amendment;
(2)
Receipt of applicant's statement that no amendment will be made; or
(3)
Expiration of the time period set in the notification.


No international preliminary examination report will be established prior to issuance of an international search report.

(c)
No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(d)
The International Preliminary Examining Authority will establish a written opinion if any defect exists or if the claimed invention lacks novelty, inventive step or industrial applicability and will set a non-extendable time limit in the written opinion for the applicant to reply.
(e)
If no written opinion under paragraph (d) of this section is necessary, or after any written opinion and the reply thereto or the expiration of the time limit for reply to such written opinion, an international preliminary examination report will be established by the International Preliminary Examining Authority. One copy will be submitted to the International Bureau and one copy will be submitted to the applicant.
(f)
An applicant will be permitted a personal or telephone interview with the examiner, which must be conducted during the non-extendable time limit for reply by the applicant to a written opinion. Additional interviews may be conducted where the examiner determines that such additional interviews may be helpful to advancing the international preliminary examination procedure. A summary of any such personal or telephone interview must be filed by the applicant as a part of the reply to the written opinion or, if applicant files no reply, be made of record in the file by the examiner.

[52 FR 20049, May 28, 1987; para. (b) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (d)-(f) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.485 Amendments by applicant during international preliminary examination.

(a)
The applicant may make amendments at the time of filing of the Demand and within the time limit set by the International Preliminary Examining Authority for reply to any notification under § 1.484(b) or to any written opinion. Any such amendments must:
(1)
Be made by submitting a replacement sheet for every sheet of the application which differs from the sheet it replaces unless an entire sheet is cancelled; and
(2)
Include a description of how the replacement sheet differs from the replaced sheet.
(b)
If an amendment cancels an entire sheet of the international application, that amendment shall be communicated in a letter.

[Added 52 FR 20049, May 28, 1987; amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.488 Determination of unity of invention before the International Preliminary Examining Authority.

(a)
Before establishing any written opinion or the international preliminary examination report, the International Preliminary Examining Authority will determine whether the international application complies with the requirement of unity of invention as set forth in § 1.475.
(b)
If the International Preliminary Examining Authority considers that the international application does not comply with the requirement of unity of invention, it may:
(1)
Issue a written opinion and/or an international preliminary examination report, in respect of the entire international application and indicate that unity of invention is lacking and specify the reasons therefor without extending an invitation to restrict or pay additional fees. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority.
(2)
Invite the applicant to restrict the claims or pay additional fees, pointing out the categories of invention found, within a set time limit which will not be extended. No international preliminary examination will be conducted on inventions not previously searched by an International Searching Authority, or
(3)
If applicant fails to restrict the claims or pay additional fees within the time limit set for reply, the International Preliminary Examining Authority will issue a written opinion and/or establish an international preliminary examination report on the main invention and shall indicate the relevant facts in the said report. In case of any doubt as to which invention is the main invention, the invention first mentioned in the claims and previously searched by an International Searching Authority shall be considered the main invention.
(c)
Lack of unity of invention may be directly evident before considering the claims in relation to any prior art, or after taking the prior art into consideration, as where a document discovered during the search shows the invention claimed in a generic or linking claim lacks novelty or is clearly obvious, leaving two or more claims joined thereby without a common inventive concept. In such a case the International Preliminary Examining Authority may raise the objection of lack of unity of invention.

[52 FR 20049, May 28, 1987; para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (b)(3) revised,62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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 fordisagreement or why the required additional fees are considered excessive, or both.
(b)
Protest under paragraph (a) of this section will be examined by the Commissioner or the Commissioner's designee. In the event that the applicant's protest is determined to be justified, the additional fees or a portion thereof will be refunded.
(c)
An applicant who desires that a copy of the protest and the decision thereon accompany the inter­national preliminary examination report when forwarded to the Elected Offices, may notify the International Preliminary Examining Authority to that effect any time prior to the issuance of the international preliminary examination report. Thereafter, such notification should be directed to the International Bureau.

[Added 52 FR 20050, May 28, 1987, effective July 1, 1987]

NATIONAL STAGE

1.491 Entry into the national stage.
An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the periods set in § 1.494 or § 1.495.

[Added, 52 FR 20050, May 28, 1987]



1.492 National stage fees.
The following fees and charges are established for international applications entering the national stage under 35 U.S.C. 371:

(a)
The basic national fee:
(1)
Where an international preliminary examination fee as set forth in § 1.482 has been paid on the international application to the United States Patent and Trademark Office:
By a small entity (§ 1.9(f)) 360.00
By other than a small entity 720.00
(2)
Where no international preliminary examination fee as set forth in § 1.482 has been paid to the United States Patent and Trademark Office, but an international search fee as set forth in § 1.445(a)(2) has been paid on the international application to the United States Patent and Trademark Office as an International Searching Authority:
By a small entity (§ 1.9(f)) 395.00
By other than a small entity 790.00
(3)
Where no international preliminary examination fee as set forth in § 1.482 has been paid and no international search fee as set forth in § 1.445(a)(2) has been paid on the international application to the United States Patent and Trademark Office:
By a small entity (§ 1.9(f)) 535.00
By other than a small entity 1
(4)
Where an international preliminary examination fee as set forth in § 1.482 has been paid to the United States Patent and Trademark Office and the international preliminary examination report states that the criteria of novelty, inventive step (non-obviousness), and industrial applicability, as defined in PCT Article 33(1) to (4) have been satisfied for all the claims presented in the application entering the national stage (see § 1.496(b)):
By a small entity (§ 1.9(f)) 49.00
By other than a small entity 98.00
(5)
Where a search report on the international application has been prepared by the European Patent Office or the Japanese Patent Office:
By a small entity (§ 1.9(f)) 465.00
By other than a small entity 930.00
(b)
In addition to the basic national fee, for filing or later presentation of each independent claim in excess of 3:
By a small entity (§ 1.9(f)) 41.00
By other than a small entity 82.00
(c)
In addition to the basic national fee, for filing or later presentation of each claim (whether independent or dependent) in excess of 20 (Note that § 1.75(c) indicates how multiple dependent claims are considered for fee calculation purposes.):
By a small entity (§ 1.9(f)) 11.00
By other than a small entity 22.00
(d)
In addition to the basic national fee, if the application contains, or is amended to contain, a multiple dependent claim(s), per application:
By a small entity (§ 1.9(f)) 135.00
By other than a small entity 270.00
(e)
Surcharge for filing the oath or declaration later than 20 months from the priority date pursuant to § 1.494(c) or later than 30 months from the priority date pursuant to § 1.495(c):
By a small entity (§ 1.9(f)) 65.00
By other than a small entity 130.00
(f)
For filing an English translation of an international application later than 20 months after the priority date (§ 1.494(c)) or filing an English translation of the international application or of any annexes to the international preliminary examination report later than 30 months after the priority date (§§ 1.495(c)and (e)) 130.00
(g)
If the additional fees required by paragraphs (b), (c), and (d) of this section are not paid on presentation of the claims for which the additional fees are due, they must be paid or the claims cancelled by amendment, prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency.
(35 U.S.C. 6, 376)
 

[52 FR 20050, May 28, 1987, effective July 1, 1987; paras. (a)(1) - (3), (b), (d)- (f), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a)(5) added, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1)-(a)(3), (a)(5) and (b)-(d), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (e) amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. (a), (b) and (d), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (a), (b), & (d) amended, 60 FR 41018, Aug. 11, 1995, effective, Oct. 1, 1995; paras. (a), (b), & (d) amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), & (d) amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 1997; para. (g) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.494 Entering the national stage in the United States of America as a Designated Office.

(a)
Where the United States of America has not been elected by the expiration of 19 months from the priority date (see § 1.495), the applicant must fulfill the requirements of PCT Article 22 and 35 U.S.C. 371 within the time periods set forth in paragraphs (b) and (c) of this section in order to prevent the abandonment of the international application as to the Unites States of America. International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the United States of America.
(b)
To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of20 months from the priority date:
(1)
A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
(2)
The basic national fee (see § 1.492(a)). The 20-month time limit may not be extended.
(c)
If applicant complies with paragraph (b) of this section before expiration of 20 months from the priority date but omits:
(1)
A translation of the international application, as filed, into the English language, if it was originally filed in another language (35 U.S.C. 371(c)(2)); and/or
(2)
The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see § 1.497), applicant will be so notified and given a period of time within which to file the translation and/or oath or declaration in order to prevent abandonment of the application. The payment of the processing fee set forth in § 1.492(f) is required for acceptance of an English translation later than the expiration of 20 months after the priority date. The payment of the surcharge set forth in § 1.492(e) is required for acceptance of the oath or declaration of the inventor later than the expiration of 20 months after the priority date. A copy of the notification mailed to applicant should accompany any reply thereto submitted to the Office.
(d)
A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of 20 months from the priority date. Amendments under PCT Article 19 which are not received by the expiration of 20 months from the priority date will be considered to be cancelled. The 20-month time limit may not be extended.
(e)
Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English.
(f)
The documents and fees submitted under paragraphs (b) and (c) of this section must be clearly identified as a submission to enter the national stage under 35 U.S.C. 371, otherwise the submission will be considered as being made under 35 U.S.C. 111.
(g)
An international application becomes abandoned as to the United States 20 months from the priority date if the requirements of paragraph (b) of this section have not been complied with within 20 months from the priority date where the United States has been designated but not elected by the expiration of19 months from the priority date. If the requirements of paragraph (b) of this section are complied with within20 months from the priority date but any required translation of the international application as filed and/or the oath or declaration are not timely filed, an international application will become abandoned as to the United States upon expiration of the time period set pursuant to paragraph (c) of this section.

[Added 52 FR 20050, May 28, 1987; paras. (a) - (d) and (g) amended and para. (h) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.495 Entering the national stage in the United States of America as an Elected Office

(a)
Where the United States of America has been elected by the expiration of 19 months from the priority date, the applicant must fulfill the requirements of35 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 Unites States of America. International applications for which those requirements are timely fulfilled will enter the national stage and obtain an examination as to the patentability of the invention in the Unites State of America.
(b)
To avoid abandonment of the application, the applicant shall furnish to the United States Patent and Trademark Office not later than the expiration of30 months from the priority date:
(1)
A copy of the international application, unless it has been previously communicated by the International Bureau or unless it was originally filed in the United States Patent and Trademark Office; and
(2)
The basic national fee (see § 1.492(a)). The 30-month time limit may not be extended.
(c)
If applicant complies with paragraph (b) of this section before expiration of 30 months from the priority date but omits:
(1)
A translation of the international application, as filed, into the English language, if it was originally filed in another language (35 U.S.C. 371(c)(2)); and/or
(2)
The oath or declaration of the inventor (35 U.S.C. 371(c)(4); see § 1.497), applicant will be so notified and given a period of time within which to file the translation and/or oath or declaration in order to prevent abandonment of the application. The payment of the processing fee set forth in § 1.492(f) is required for acceptance of an English translation later than the expiration of 30 months after the priority date. The payment of the surcharge set forth in § 1.492(e) is required for acceptance of the oath or declaration of the inventor later than the expiration of 30 months after the priority date. A copy of the notification mailed to applicant should accompany any reply thereto submitted to the Office.
(d)
A copy of any amendments to the claims made under PCT Article 19, and a translation of those amendments into English, if they were made in another language, must be furnished not later than the expiration of 30 months from the priority date. Amendments under PCT Article 19 which are not received by the expiration of 30 months from the priority date will be considered to be cancelled. The 30-month time limit may not be extended.
(e)
A translation into English of any annexes to the international preliminary examination report, if the annexes were made in another language, must be furnished not later than the expiration of 30 months from the priority date. Translations of the annexes which are not received by the expiration of 30 months from the priority date may be submitted within any period set pursuant to paragraph (c) of this section accompanied by the processing fee set forth in § 1.492(f). Annexes for which translations are not timely received will be considered cancelled. The 30-month time limit may not be extended.
(f)
Verification of the translation of the international application or any other document pertaining to an international application may be required where it is considered necessary, if the international application or other document was filed in a language other than English.
(g)
The documents submitted under paragraphs (b) and (c) of this section must be clearly identified asa submission to enter the national stage under35 U.S.C. 371, otherwise the submission will be considered as being made under 35 U.S.C. 111.
(h)
An international application becomes abandoned as to the United States 30 months from the priority date if the requirements of paragraph (b) of this section have not been complied with within 30 months from the priority date and the United States has been elected by the expiration of 19 months from the priority date. If the requirements of paragraph (b) of this section are complied with within 30 months from the priority date but any required translation of the international application as filed and/or the oath or declaration are not timely filed, an international application will become abandoned as to the United States upon expiration of the time period set pursuant to paragraph (c) of this section.

[Added 52 FR 20051, May 28, 1987, effective July 1, 1987; paras. (a) -(e) & (h) amended and para. (i) deleted, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.496 Examination of international applications in the national stage.

(a)
International applications which have complied with the requirements of 35 U.S.C. 371(c) will be taken up for action based on the date on which such requirements were met. However, unless an express request for early processing has been filed under35 U.S.C. 371(f), no action may be taken prior to one month after entry into the national stage.
(b)
A national stage application filed under35 U.S.C. 371 may have paid therein the basic national fee as set forth in § 1.492(a)(4) if it contains, or is amended to contain, at the time of entry into the national stage, only claims which have been indicated in an international preliminary examination report prepared by the United States Patent and Trademark Office as satisfying the criteria of PCT Article 33(1)-(4) as to novelty, inventive step and industrial applicability. Such national stage applications in which the basic national fee as set forth in § 1.492(a)(4) has been paid may be amended subsequent to the date of entry into the national stage only to the extent necessary to eliminate objections as to form or to cancel rejected claims. Such national stage applications in which the basic national fee as set forth in § 1.492(a)(4) has been paid will be taken up out of order.

[Added 52 FR 20051, May 28, 1987, effective July 1, 1987]



1.497 Oath or declaration under 35 U.S.C. 371(c)(4).

(a)
When an applicant of an international application desires to enter the national stage under 35 U.S.C. 371 pursuant to §§ 1.494 or 1.495, he or she must file an oath or declaration that:
(1)
Is executed in accordance with either §§ 1.66 or 1.68;
(2)
Identifies the specification to which it is directed;
(3)
Identifies each inventor and the country of citizenship of each inventor; and
(4)
States that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.
(b)
 
(1)
The oath or declaration must be made by all of the actual inventors except as provided for in §§ 1.42, 1.43 or 1.47.
(2)
If the person making the oath or declaration is not the inventor, the oath or declaration shall state the relationship of the person to the inventor, the facts required by §§ 1.42, 1.43 or 1.47, and, upon information and belief, the facts which the inventor would have been required to state.
(c)
If the oath or declaration meets the requirements of paragraphs (a) and (b) of this section, the oath or declaration will be accepted as complying with 35 U.S.C. 371(c)(4) and §§ 1.494(c) or 1.495(c). However, if the oath or declaration does not also meet the requirements of § 1.63, a supplemental oath or declaration in compliance with § 1.63 will be required in accordance with § 1.67.

[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; paras. (a) and (b) revised and para. (c) added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996]



1.499 Unity of invention during the national stage.
If the examiner finds that a national stage application lacks unity of invention under § 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 §§ 1.143 and 1.144.

[Added 52 FR 20052, May 28, 1987, effective July 1, 1987; amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

D Reexamination of Patents

CITATION OF PRIOR ART

1.501 Citation of prior art in patent files.

(a)
At any time during the period of enforceability of a patent, any person may cite to the Patent and Trademark Office in writing prior art consisting of patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability of any claim of a particular patent. If the citation is made by the patent owner, the explanation of pertinency and applicability may include an explanation of how the claims differ from the prior art. Citations by the patent owner under § 1.555 and by a reexamination requester under either § 1.510 or § 1.535 will be entered in the patent file during a reexamination proceeding. The entry in the patent file of citations submitted after the date of an order to reexamine pursuant to § 1.525 by persons other than the patent owner, or a reexamination requester under either § 1.510 or § 1.535, will be delayed until the reexamination proceedings have been terminated.
(b)
If the person making the citation wishes his or her identity to be excluded from the patent file and kept confidential, the citation papers must be submitted without any identification of the person making the submission.
(c)
Citation of patents or printed publications by the public in patent files should either: (1) Reflect that a copy of the same has been mailed to the patent owner at the address as provided for in § 1.33(c); or in the event service is not possible (2) Be filed with the Office in duplicate.

[46 FR 29185, May 29, 1981, effective July 1, 1981]

REQUEST FOR REEXAMINATION

1.510 Request for reexamination.

(a)
Any person may, at any time during the period of enforceability of a patent, file a request for reexamination by the Patent and Trademark Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501. The request must be accompanied by the fee for requesting reexamination set in § 1.20(c).
(b)
Any request for reexamination must include the following parts:
(1)
A statement pointing out each substantial new question of patentability based on prior patents and printed publications.
(2)
An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the citedprior art to every claim for which reexamination is requested. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.
(3)
A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.
(4)
The entire specification (including claims) and drawings of the patent for which reexamination is requested must be furnished in the form of cut-up copies of the original patent with only a single column of the printed patent securely mounted or reproduced in permanent form on one side of a separate paper. A copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent must also be included.
(5)
A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.
(c)
If the request does not include the fee for requesting reexamination or all of the parts required by paragraph (b) of this section, the person identified as requesting reexamination will be so notified and given an opportunity to complete the request within a specified time. If the fee for requesting reexamination has been paid but the defect in the request is not corrected within the specified time, the determination whether or not to institute reexamination will be made on the request as it then exists. If the fee for requesting reexamination has not been paid, no determination will be made and the request will be placed in the patent file as a citation if it complies with the requirements of§ 1.501(a).
(d)
The filing of the request is: (1) The date on which the request including the entire fee for requesting reexamination is received in the Patent and Trademark Office; or (2) The date on which the last portion of the fee for requesting reexamination is received.
(e)
A request filed by the patent owner may include a proposed amendment in accordance with § 1.530(d).
(f)
If a request is filed by an attorney or agent identifying another party on whose behalf the request is being filed, the attorney or agent must have a power of attorney from that party or be acting in a representative capacity pursuant to § 1.34(a).

[46 FR 29185, May 29, 1981, effective July 1, 1981; para. (a), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 1982; para. (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.515 Determination of the request for reexamination.

(a)
Within three months following the filing date of a request for reexamination, an examiner will consider the request and determine whether or not a substantial new question of patentability affecting any claim of the patent is raised by the request and the prior art cited therein, with or without consideration of other patents or printed publications. The examiner's determination will be based on the claims in effect at the time of the determination and will become a part of the officialfile of the patent and will be given or mailed to thepatent owner at the address as provided for in§ 1.33(c) and to the person requesting reexamination.
(b)
Where no substantial new question of patentability has been found, a refund of a portion of the fee for requesting reexamination will be made to the requester in accordance with § 1.26(c).
(c)
The requester may seek review by a petition to the Commissioner under § 1.181 within one month of the mailing date of the examiner's determination refusing reexamination. Any such petition must comply with § 1.181(b). If no petition is timely filed or if the decision on petition affirms that no substantial new question of patentability has been raised, the determination shall be final and nonappealable.

[46 FR 29185, May 29, 1981, effective July 1, 1981]



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

[46 FR 29186, May 29, 1981, effective July 1, 1981]

REEXAMINATION

1.525 Order to reexamine.

(a)
If a substantial new question of patentability is found pursuant to § 1.515 or § 1.520, the determination will include an order for reexamination of the patent for resolution of the question. If the order for reexamination resulted from a petition pursuant to § 1.515(c), the reexamination will ordinarily be conducted by an examiner other than the examiner responsible for the initial determination under § 1.515(a).
(b)
If the order for reexamination of the patent mailed to the patent owner at the address as provided for in § 1.33(c) is returned to the Office undelivered, the notice published in the Official Gazette under § 1.11(c) will be considered to be constructive notice and reexamination will proceed.

[46 FR 29186, May 29, 1981, effective July 1, 1981]



1.530 Statement; amendment by patent owner.

(a)
Except as provided in § 1.510(e), no statement or other response by the patent owner shall be filed prior to the determinations made in accordance with § 1.515 or 1.520. If a premature statement or other response is filed by the patent owner it will not be acknowledged or considered in making the determination.
(b)
The order for reexamination will set a period of not less than two months from the date of the order within which the patent owner may file a statement on the new question of patentability including any proposed amendments the patent owner wishes to make.
(c)
Any statement filed by the patent owner shall clearly point out why the subject matter as claimed is not anticipated or rendered obvious by the prior art patents or printed publications, either alone or in any reasonable combinations. Any statement filed must be served upon the reexamination requester in accordance with § 1.248.
(d)
Amendments in reexamination proceedings. Amendments in reexamination proceedings are made by filing a paper, in compliance with paragraph (d)(5) of this section, directing that specified amendments be made.
(1)
Specification other than the claims. Amendments to the specification, other than to the claims, may only be made as follows:
(i)
Amendments must be made by submission of the entire text of a newly added or rewritten paragraph(s) with markings pursuant to paragraph (d)(1)(iii) of this section, except that an entire paragraph may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
(ii)
The precise point in the specification must be indicated where the paragraph to be amended is located.
(iii)
Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made.
(2)
Claims. Amendments to the claims may only be made as follows:
(i)
(A) The amendment must be made relative to the patent claims in accordance with paragraph (d)(8) of this section and must include the entire text of each claim which is being proposed to be amended by the current amendment and each proposed new claim being added by the current amendment with markings pursuant to paragraph (d)(2)(i)(C) of this section, except that a patent claim or previously proposed new claim should be cancelled by a statement cancelling the patent claim or proposed new claim without presentation of the text of the patent claim or proposed new claim.
(B)
Patent claims must not be renumbered and the numbering of any new claims proposed to be added to the patent must follow the number of the highest numbered patent claim.
(C)
Underlining below the subject matter added to the patent and brackets around the subject matter deleted from the patent are to be used to mark the amendments being made. If a claim is amended pursuant to paragraph (d)(2)(i)(A) of this section, a parenthetical expression “amended,” “twice amended,” etc., should follow the original claim number.
(ii)
Each amendment submission must set forth the status (i.e., pending or cancelled) as of the date of the amendment, of all patent claims and of all new claims currently or previously proposed.
(iii)
Each amendment, when submitted for the first time, must be accompanied by an explanation of the support in the disclosure of the patent for the amendment along with any additional comments on page(s) separate from the page(s) containing the amendment.
(3)
No amendment may enlarge the scope of the claims of the patent or introduce new matter. No amendment may be proposed for entry in an expired patent. Moreover, no amendment will be incorporated into the patent by certificate issued after the expiration of the patent.
(4)
Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued.
(5)
The form of amendments other than to the patent drawings must be in accordance with the following requirements. All amendments must be in the English language and must be legibly written either by a typewriter or mechanical printer in at least 11 point type in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, white paper. All amendments must be presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronicreproduction by use of digital imaging or optical character recognition. If the amendments are not of the required quality, substitute typewritten or mechanically printed papers of suitable quality will be required. The papers, including the drawings, must have each page plainly written on only one side of a sheet of paper. The sheets of paper must be the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). Each sheet must include a top margin of at least 2.0 cm. (3/4 inch), a left side margin of at least 2.5 cm. (1 inch), a right side margin of at least 2.0 cm. (3/4 inch), and a bottom margin of at least 2.0 cm. (3/4 inch), and no holes should be made in the sheets as submitted. The lines must be double spaced, or one and one-half spaced. The pages must be numbered consecutively, starting with 1, the numbers being centrally located, preferably below the text, or above the text.
(6)
Drawings.
(i)
The original patent drawing sheets may not be altered. Any proposed change to the patent drawings must be by way of a new sheet of drawings with the amended figures identified as “amended” and with added figures identified as “new” for each sheet change submitted in compliance with § 1.84.
(ii)
Where a change to the drawings is desired, a sketch in permanent ink showing proposed changes in red, to become part of the record, must be filed for approval by the examiner and should be in a separate paper.
(7)
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(8)
All amendments to the patent must be made relative to the patent specification, including the claims, and drawings, which is in effect as of the date of filing of the request for reexamination.

[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (d) revised, para. (e) removed, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

[46 FR 29186, May 29, 1981, effective July 1, 1981]



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

[46 FR 29186, May 29, 1981, effective July 1, 1981]



1.550 Conduct of reexamination proceedings.

(a)
All reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the reexamination order and expiration of the time for submitting any responses thereto, the examination will be conducted in accordance with §§ 1.104, 1.110 through 1.113 and 1.116, and will result in the issuance of a reexamination certificate under § 1.570.
(b)
The patent owner will be given at least thirty days to respond to any Office action. Such response may include further statements in response to any rejections or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.
(c)
The time for taking any action by a patent owner in a reexamination proceeding will be extended only for sufficient cause, and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
(d)
If the patent owner fails to file a timely and appropriate response to any Office action, the reexamination proceeding will be terminated and the Commissioner will proceed to issue a certificate under § 1.570 in accordance with the last action of the Office.
(e)
The reexamination requester will be sent copies of Office actions issued during the reexamination proceeding. After filing of a request for reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
(1)
The active participation of the reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
(i)
In accordance with § 1.510; or
(ii)
Entered in the patent file prior to the date of the order to reexamine pursuant to § 1.525.
(2)
Submissions by third parties, filed after the date of the order to reexamine pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).

[46 FR 29186, May 29, 1981, effective July 1, 1981; para. (c), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (c), 54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras. (a), (b), & (e) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.552 Scope of reexamination in reexamination proceedings.

(a)
Patent claims will be reexamined on the basis of patents or printed publications.
(b)
Amended or new claims presented during a reexamination proceeding must not enlarge the scope of the claims of the patent and will be examined on the basis of patents or printed publications and also for compliance with the requirements of 35 U.S.C. 112 and the new matter prohibition of 35 U.S.C. 132.
(c)
Questions other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding. If such questions are discovered during a reexamination proceeding, the existence of such questions will be noted by the examiner in an Office action, in which case the patent owner may desire to consider the advisability of filing a reissue application to have such questions considered and resolved.

[46 FR 29186, May 29, 1981, effective July 1, 1981]



1.555 Information material to patentability in reexamination proceedings.

(a)
A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective reexamination occurs when, at the time a reexamination proceeding is being conducted, the Office is aware of and evaluates the teachings of all information material to patentability in a reexamination proceeding. Each individual associated with the patent owner in a reexamination proceeding has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability in a reexamination proceeding. The individuals who have a duty to disclose to the Office all information known to them to be material to patentability in a reexamination proceeding are the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding. The duty to disclose the information exists with respect to each claim pending in the reex­ amination proceeding until the claim is cancelled. Information material to the patentability of a cancelled claim need not be submitted if the information is not material to patentability of any claim remaining under consideration in the reexamination proceeding. The duty to disclose all information known to be material to patentability in a reexamination proceeding is deemed to be satisfied if all information known to be material to patentability of any claim in the patent after issuance of the reexamination certificate was cited by the Office or submitted to the Office in an information disclosure statement. However, the duties of candor, good faith, and disclosure have not been complied with if any fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct by, or on behalf of, the patent owner in the reexamination proceeding. Any information disclosure statement must be filed with the items listed in § 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 discovered during a reexamination proceeding, they will be noted as unresolved questions in accordance with § 1.552(c).

[46 FR 29187, May 29, 1981, effective July 1, 1981; 47 FR 21752, May 19, 1982, effective July 1, 1982; paras. (a) and (b), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; revised 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992]



1.560 Interviews in reexamination proceedings.

(a)
Interviews in reexamination proceedings pending before the Office between examiners and the owners of such patents or their attorneys or agents of record must be had 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 Commissioner. Interviews for the discussion of the patentability of claims in patents involved in reexamination proceedings will not be had prior to the first official action thereon. Interviews should be arranged for in advance. Requests that reexamination requesters participate in interviews with examiners will not be granted.
(b)
In every instance of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner. An interview does not remove the necessity for response to Office actions as specified in § 1.111.

[46 FR 29187, May 29, 1981, effective July 1, 1981]



1.565 Concurrent office proceedings.

(a)
In any reexamination proceeding before the Office, the patent owner shall call the attention of the Office to any prior or concurrent proceedings in which the patent is or was involved such as interferences, reissue, reexaminations, or litigation and the results of such proceedings.
(b)
If a patent in the process of reexamination is or becomes involved in litigation or a reissue application for the patent is filed or pending, the Commissioner shall determine whether or not to stay the reexamination or reissue proceeding.
(c)
If reexamination is ordered while a prior reexamination proceeding is pending, the reexamination proceedings will be consolidated and result in the issuance of a single certificate under § 1.570.
(d)
If a reissue application and a reexamination proceeding on which an order pursuant to § 1.525 has been mailed are pending concurrently on a patent, a decision will normally be made to merge the two proceedings or to stay one of the two proceedings. Where merger of a reissue application and a reexamination proceeding is ordered, the merged examination will be conducted in accordance with §§ 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 reexamination proceeding during the pendency of the merged proceeding. The examiner's actions and any responses by the patent owner in a merged proceeding will apply to both the reissue application and the reexamination proceeding and be physically entered into both files. Any reexamination proceeding merged with a reissue application shall be terminated by the grant of the reissued patent.
(e)
If a patent in the process of reexamination is or becomes involved in an interference, the Commissioner may stay reexamination or the interference. The Commissioner will not consider a request to stay an interference unless a motion (§ 1.635) to stay the interference has been presented to, and denied by, an examiner-in-chief and the request is filed within ten (10) days of a decision by an examiner-in-chief denying the motion for a stay or such other time as the examiner-in-chief may set.

[46 FR 29187, May 29, 1981, effective July 1, 1981; paras.(b) and (d), 47 FR 21753, May 19, 1982, effective July 1, 1982; paras. (b) & (e), 49 FR 48416, Dec. 12, 1984, 50 FR 23123,May 31, 1985, effective Feb. 11, 1985]

CERTIFICATE

1.570 Issuance of reexamination certificate after reexamination proceedings.

(a)
Upon the conclusion of reexamination proceedings, the Commissioner will issue a certificate in accordance with 35 U.S.C. 307 setting forth the results of the reexamination proceeding and the content of the patent following the reexamination proceeding.
(b)
A certificate will be issued in each patent in which a reexamination proceeding has been ordered under § 1.525. Any statutory disclaimer filed by the patent owner will be made part of the certificate.
(c)
The certificate will be mailed on the day of its date to the patent owner at the address as provided for in § 1.33(c). A copy of the certificate will also be mailed to the requester of the reexamination proceeding.
(d)
If a certificate has been issued which cancels all of the claims of the patent, no further Office proceedings will be conducted with regard to that patent or any reissue applications or reexamination requests relating thereto.
(e)
If the reexamination proceeding is terminated by the grant of a reissued patent as provided in § 1.565(d) the reissued patent will constitute the reexamination certificate required by this section and 35 U.S.C. 307.
(f)
A notice of the issuance of each certificate under this section will be published in the Official Gazette on its date of issuance.

[46 FR 29187, May 29, 1981, effective July 1, 1981; para. (e), 47 FR 21753, May 19, 1982, effective July 1, 1982]

E Interferences

1.601 Scope of rules, definitions.
This subpart governs the procedure in patent interferences in the Patent and Trademark Office. This subpart shall be construed to secure the just, speedy, and inexpensive determination of every interference. For the meaning of terms in the Federal Rules of Evidence as applied to interferences, see § 1.671(c). Unless otherwise clear from the context, the following definitions apply to this subpart:

(a)
Additional discovery is discovery to which a party may be entitled under § 1.687 in addition to discovery to which the party is entitled as a matter of right under § 1.673(a) and (b).
(b)
Affidavit means affidavit, declaration under § 1.68, or statutory declaration under 28 U.S.C. § 1746. A transcript of an ex parte deposition may be used as an affidavit.
(c)
Board means the Board of Patent Appeals and Interferences.
(d)
Case-in-chief means that portion of a party's case where the party has the burden of going forward with evidence.
(e)
Case-in-rebuttal means that portion of a party's case where the party presents evidence in rebuttal to the case-in-chief of another party.
(f)
A count defines the interfering subject matter between two or more applications or between one or more applications and one or more patents. At the time the interference is initially declared, a count should be broad enough to encompass all of the claims that are patentable over the prior art and designated to correspond to the count. When there is more than one count, each count shall define a separate patentable invention. Any claim of an application or patent that is designated to correspond to a count is a claim involved in the interference within the meaning of 35 U.S.C. 135(a). A claim of a patent or application that is designated to correspond to a count and is identical to the count is said to correspond exactly to the count. A claim of a patent or application that is designated to correspond to a count but is not identical to the count is said to correspond substantially to the count. When a count is broader in scope than all claims which correspond to the count, the count is a phantom count.
(g)
The effective filing date of an application is the filing date of an earlier application, benefit of which is accorded to the application under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is accorded, the filing date of the application. The effective filing date of a patent is the filing date of an earlier application, benefit of which is accorded to the patent under 35 U.S.C. 119, 120, 121, or 365 or, if no benefit is accorded, the filing date of the application which issued as the patent.
(h)
In the case of an application, filing date means the filing date assigned to the application. In the case of a patent, “filing date” means the filing date assigned to the application which issued as the patent.
(i)
An interference is a proceeding instituted in the Patent and Trademark Office before the Board to determine any question of patentability and priority of invention between two or more parties claiming the same patentable invention. An interference may be declared between two or more pending applications naming different inventors when, in the opinion of an examiner, the applications contain claims for the same patentable invention. An interference may be declared between one or more pending applications and one or more unexpired patents naming different inventors when, in the opinion of an examiner, any application and any unexpired patent contain claims for the same patentable invention.
(j)
An interference-in-fact exists when at least one claim of a party that is designated to correspond to a count and at least one claim of an opponent that is designated to correspond to the count define the same patentable invention.
(k)
A lead attorney or agent is a registered attorney or agent of record who is primarily responsible for prosecuting an interference on behalf of a party and is the attorney or agent whom an administrative patent judge may contact to set times and take other action in the interference.
(l)
A party is an applicant or patentee involved in the interference or a legal representative or an assignee of record in the Patent and Trademark Office of an applicant or patentee involved in an interference. Where acts of a party are normally performed by an attorney or agent, “party” may be construed to mean the attorney or agent. An inventor is the individual named as inventor in an application involved in an interference or the individual named as inventor in a patent involved in an interference.
(m)
A senior party is the party with the earliest effective filing date as to all counts or, if there is no party with the earliest effective filing date as to all counts, the party with the earliest filing date. A junior party is any other party.
(n)
Invention “A” is the same patentable invention as an invention “B” when invention “A” is the same as(35 U.S.C. 102) or is obvious (35 U.S.C. 103) in view of invention “B” assuming invention “B” is prior art with respect to invention “A”. Invention “A” is a separate patentable invention with respect to invention “B” when invention “A” is new (35 U.S.C. 102) and non-obvious (35 U.S.C. 103) in view of invention “B” assuming invention “B” is prior art with respect to invention “A”.
(o)
Sworn means sworn or affirmed.
(p)
United States means the United States of America, its territories and possessions.
(q)
A final decision is a decision awarding judgment as to all counts. An interlocutory order is any other action taken by an administrative patent judge or the Board in an interference, including the notice declaring an interference.
(r)
NAFTA country means NAFTA country as defined in section 2(4) of the North American Free Trade Agreement Implementation Act, Pub. L. 103-182, 107 Stat. 2060 (19 U.S.C. 3301).
(s)
WTO member country means WTO member country as defined in section 2(10) of the Uruguay Round Agreements Act, Pub. L. 103-465, 108 Stat. 4813 (19 U.S.C. 3501).

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, May 31, 1985; para. (q) added, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. (f), (g), (j)-(n), and (q) revised, paras. (r) and (s) added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.602 Interest in applications and patents involved in an interference.

(a)
Unless good cause is shown, an interference shall not be declared or continued between (1) applications owned by a single party or (2) applications and an unexpired patent owned by a single party.
(b)
The parties, within 20 days after an interference is declared, shall notify the Board of any and all right, title, and interest in any application or patent involved or relied upon in the interference unless the right, title, and interest is set forth in the notice declaring the interference.
(c)
If a change of any right, title, and interest in any application or patent involved or relied upon in the interference occurs after notice is given declaring the interference and before the time expires for seeking judicial review of a final decision of the Board, the parties shall notify the Board of the change within20 days after the change.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (c) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.603 Interference between applications; subject matter of the interference.
Before an interference is declared between two or more applications, the examiner must be of the opinion that there is interfering subject matter claimed in the applications which is patentable to each applicant subject to a judgment in the interference. The interfering subject matter shall be defined by one or more counts. Each application must contain, or be amended to contain, at least one claim that is patentable over the prior art and corresponds to each count. All claims in the applications which define the same patentable invention as a count shall be designated to correspond to the count.

[Added, 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.604 Request for interference between applications by an applicant.

(a)
An applicant may seek to have an interference declared with an application of another by,
(1)
Suggesting a proposed count and presenting at least one claim corresponding to the proposed count or identifying at least one claim in its application that corresponds to the proposed count,
(2)
Identifying the other application and, if known, a claim in the other application which corresponds to the proposed count, and
(3)
Explaining why an interference should be declared.
(b)
When an applicant presents a claim known to the applicant to define the same patentable invention claimed in a pending application of another, the applicant shall identify that pending application, unless the claim is presented in response to a suggestion by the examiner. The examiner shall notify the Commissioner of any instance where it appears an applicant may have failed to comply with the provisions of this paragraph.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a)(1) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.605 Suggestion of claim to applicant by examiner.

(a)
If no claim in an application is drawn to the same patentable invention claimed in another application or patent, the examiner may suggest that an applicant present a claim drawn to an invention claimed in another application or patent for the purpose of an interference with another application or a patent. The applicant to whom the claim is suggested shall amend the application by presenting the suggested claim within a time specified by the examiner, not less than one month. Failure or refusal of an applicant to timely present the suggested claim shall be taken without further action as a disclaimer by the applicant of the invention defined by the suggested claim. At the time the suggested claim is presented, the applicant may also call the examiner's attention to other claims already in the application or presented with the suggested claim and explain why the other claims would be more appropriate to be designated to correspond to a count in any interference which may be declared.
(b)
The suggestion of a claim by the examiner for the purpose of an interference will not stay the period for response to any outstanding Office action. When a suggested claim is timely presented, ex parte proceedings in the application will be stayed pending a determination of whether an interference will be declared.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.606 Interference between an application and a patent; subject matter of the interference.
Before an interference is declared between an application and an unexpired patent, an examiner must determine that there is interfering subject matter claimed in the application and the patent which is patentable to the applicant subject to a judgment in the interference. The interfering subject matter will be defined by one or more counts. The application must contain, or be amended to contain, at least one claim that is patentable over the prior art and corresponds to each count. The claim in the application need not be, and most often will not be, identical to a claim in the patent. All claims in the application and patent which define the same patentable invention as a count shall be designated to correspond to the count. At the time an interference is initially declared (§ 1.611), a count shall not be narrower in scope than any application claim that is patentable over the prior art and designated to correspond to the count or any patent claim designated to correspond to the count. Any single patent claim designated to correspond to the count will be presumed, subject to a motion under§ 1.633(c), not to contain separate patentable inventions.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.607 Request by applicant for interference with patent.

(a)
An applicant may seek to have an interference declared between an application and an unexpired patent by,
(1)
Identifying the patent,
(2)
Presenting a proposed count,
(3)
Identifying at least one claim in the patent corresponding to the proposed count,
(4)
Presenting at least one claim corresponding to the proposed count or identifying at least one claim already pending in its application that corresponds to the proposed count, and, if any claim of the patent or application identified as corresponding to the proposed count does not correspond exactly to the proposed count, explaining why each such claim corresponds to the proposed count, and
(5)
Applying the terms of any application claim,
(i)
Identified as corresponding to the count, and
(ii)
Not previously in the application to the disclosure of the application.
(6)
Explaining how the requirements of35 U.S.C. 135(b) are met, if the claim presented or identified under paragraph (a)(4) of this section was not present in the application until more than one year after the issue date of the patent.
(b)
When an applicant seeks an interference with a patent, examination of the application, including any appeal to the Board, shall be conducted with special dispatch within the Patent and Trademark Office. The examiner shall determine whether there is interfering subject matter claimed in the application and the patent which is patentable to the applicant subject to a judgment in an interference. If the examiner determines that there is any interfering subject matter, an interference will be declared. If the examiner determines that there is no interfering subject matter, the examiner shall state the reasons why an interference is not being declared and otherwise act on the application.
(c)
When an applicant presents a claim which corresponds exactly or substantially to a claim of a patent, the applicant shall identify the patent and the number of the patent claim, unless the claim is presented in response to a suggestion by the examiner. The examiner shall notify the Commissioner of any instance where an applicant fails to identify the patent.
(d)
A notice that an applicant is seeking to provoke an interference with a patent will be placed in the file of the patent and a copy of the notice will be sent to the patentee. The identity of the applicant will not be disclosed unless an interference is declared. If a final decision is made not to declare an interference, a notice to that effect will be placed in the patent file and will be sent to the patentee.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a) amended, 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (a)(5)(i) revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a)(4) revised, para. (a)(6) added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.608 Interference between an application and a patent; prima facie showing by applicant.

(a)
When the effective filing date of an application is three months or less after the effective filing date of a patent, before an interference will be declared, either the applicant or the applicant's attorney or agent of record shall file a statement alleging that there is a basis upon which the applicant is entitled to a judgment relative to the patentee.
(b)
When the effective filing date of an application is more than three months after the effective filingdate of a patent, the applicant, before an interference will be declared, shall file evidence which may consist of patents or printed publications, other documents, and one or more affidavits which demonstrate that applicant is prima facie entitled to a judgment relative to the patentee and an explanation stating with particularity the basis upon which the applicant is prima facie entitled to the judgment. Where the basis upon which an applicant is entitled to judgment relative to a patenteeis priority of invention, the evidence shall include affidavits by the applicant, if possible, and one or more corroborating witnesses, supported by documentary evidence, if available, each setting out a factual description of acts and circumstances performed or observed by the affiant, which collectively would prima facie entitle the applicant to judgment on priority with respect to the effective filing date of the patent. To facilitate preparation of a record (§ 1.653(g)) for final hearing, an applicant should file affidavits on paper which is 21.8 by 27.9 cm. (8 1/2 x 11 inches). The significance of any printed publication or other document which is self-authenticating within the meaning of Rule 902 of the Federal Rules of Evidence or § 1.671(d) and any patent shall be discussed in an affidavit or the explanation. Any printed publication or other document which is not self-authenticating shall be authenticated and discussed with particularity in an affidavit. Upon a showing of good cause, an affidavit may be based on information and belief. If an examiner finds an application to be in condition for declaration of an interference, the examiner will consider the evidence and explanation only to the extent of determining whether a basis upon which the application would be entitled to a judgment relative to the patentee is alleged and, if a basis is alleged, an interference may be declared.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.609 Preparation of interference papers by examiner.
When the examiner determines that an interference should be declared, the examiner shall forward to the Board:

(a)
All relevant application and patent files and
(b)
A statement identifying:
(1)
The proposed count or counts and, if there is more than one count proposed, explaining why the counts define different patentable inventions;
(2)
The claims of any application or patent which correspond to each count, explaining why each claim designated as corresponding to a count is directed to the same patentable invention as the count;
(3)
The claims in any application or patent which do not correspond to each count and explaining why each claim designated as not corresponding to any count is not directed to the same patentable invention as any count; and
(4)
Whether an applicant or patentee is entitled to the benefit of the filing date of an earlier application and, if so, sufficient information to identify the earlier application.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (b)(1)-(b)(3) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.610 Assignment of interference to administrative patent judge, time period for completing interference.

(a)
Each interference will be declared by an administrative patent judge who may enter all interlocutory orders in the interference, except that only the Board shall hear oral argument at final hearing, enter a decision under §1.617, 1.640(e), 1.652, 1.656(i) or 1.658, or enter any other order which terminates the interference.
(b)
As necessary, another administrative patent judge may act in place of the one who declared the interference. At the discretion of the administrative patent judge assigned to the interference, a panel consisting of two or more members of the Board may enter interlocutory orders.
(c)
Unless otherwise provided in this subpart, times for taking action by a party in the interference will be set on a case-by-case basis by the administrative patent judge assigned to the interference. Times for taking action shall be set and the administrative patent judge shall exercise control over the interference such that the pendency of the interference before the Board does not normally exceed two years.
(d)
An administrative patent judge may hold a conference with the parties to consider simplification of any issues, the necessity or desirability of amendments to counts, the possibility of obtaining admissions of fact and genuineness of documents which will avoid unnecessary proof, any limitations on the number of expert witnesses, the time and place for conducting a deposition(§ 1.673(g)), and any other matter as may aid in the disposition of the interference. After a conference, the administrative patent judge may enter any order which may be appropriate.
(e)
The administrative patent judge may determine a proper course of conduct in an interference for any situation not specifically covered by this part.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.611 Declaration of interference.

(a)
Notice of declaration of an interference will be sent to each party.
(b)
When a notice of declaration is returned to the Patent and Trademark Office undelivered, or in any other circumstance where appropriate, an administrative patent judge may send a copy of the notice to a patentee named in a patent involved in an interference or the patentee's assignee of record in the Patent and Trademark Office or order publication of an appropriate notice in the Official Gazette.
(c)
The notice of declaration shall specify:
(1)
The name and residence of each party involved in the interference;
(2)
The name and address of record of any attorney or agent of record in any application or patent involved in the interference;
(3)
The name of any assignee of record in the Patent and Trademark Office;
(4)
The identity of any application or patent involved in the interference;
(5)
Where a party is accorded the benefit of the filing date of an earlier application, the identity of the earlier application;
(6)
The count or counts and, if there is more than one count, the examiner's explanation why the counts define different patentable inventions;
(7)
The claim or claims of any application or any patent which correspond to each count;
(8)
The examiner's explanation as to why each claim designated as corresponding to a count is directed to the same patentable invention as the count and why each claim designated as not corresponding to any count is not directed to the same patentable invention as any count; and
(9)
The order of the parties.
(d)
The notice of declaration may also specify the time for:
(1)
Filing a preliminary statement as provided in § 1.621(a);
(2)
Serving notice that a preliminary statement has been filed as provided in § 1.621(b); and
(3)
Filing preliminary motions authorized by§ 1.633.
(e)
Notice may be given in the Official Gazette that an interference has been declared involving a patent.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23123, May 31, 1985; paras. (b), (c)(6), (c)(7), (c)(8), (c)(9) & (d) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.612 Access to applications.

(a)
After an interference is declared, each party shall have access to and may obtain copies of the files of any application set out in the notice declaring the interference, except for affidavits filed under § 1.131 and any evidence and explanation under § 1.608 filed separate from an amendment. A party seeking access to any abandoned or pending application referred to in the opponent's involved application or access to any pending application referred to in the opponent's patent must file a motion under § 1.635. See § 1.11(e) concerning public access to interference files.
(b)
After preliminary motions under § 1.633 are decided (§ 1.640(b)), each party shall have access to and may obtain copies of any affidavit filed under § 1.131 and any evidence and explanation filed under § 1.608 in any application set out in the notice declaring the interference.
(c)
Any evidence and explanation filed under§ 1.608 in the file of any application identified in the notice declaring the interference shall be served when required by § 1.617(b).
(d)
The parties at any time may agree to exchange copies of papers in the files of any application identified in the notice declaring the interference.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; para. (a) amended, 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (a) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.613 Lead attorney, same attorney representing different parties in an interference, withdrawal of attorney or agent.

(a)
Each party may be required to designate one attorney or agent of record as the lead attorney or agent.
(b)
The same attorney or agent or members of the same firm of attorneys or agents may not represent two or more parties in an interference except as may be permitted under this chapter.
(c)
An administrative patent judge may make necessary inquiry to determine whether an attorney or agent should be disqualified from representing a party in an interference. If an administrative patent judge is of the opinion that an attorney or agent should be disqualified, the administrative patent judge shall refer the matter to the Commissioner. The Commissioner will make a final decision as to whether any attorney or agent should be disqualified.
(d)
No attorney or agent of record in an interference may withdraw as attorney or agent of record except with the approval of an administrative patent judge and after reasonable notice to the party on whose behalf the attorney or agent has appeared. A request to withdraw as attorney or agent of record in an interference shall be made by motion (§ 1.635).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (c) & (d) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.614 Jurisdiction over interference.

(a)
The Board acquires jurisdiction over an interference when the interference is declared under § 1.611.
(b)
When the interference is declared the inter­ference is a contested case within the meaning of35 U.S.C. 24.
(c)
The examiner shall have jurisdiction over any pending application until the interference is declared. An administrative patent judge may for a limited purpose restore jurisdiction to the examiner over any application involved in the interference.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a) & (c) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.615 Suspension of ex parte prosecution.

(a)
When an interference is declared, ex parte prosecution of an application involved in the interference is suspended. Amendments and other papers related to the application received during pendency of the interference will not be entered or considered in the interference without the consent of an administrative patent judge.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.616 Sanctions for failure to comply with rules or order or for taking and maintaining a frivolous position.

(a)
An administrative patent judge or the Board may impose an appropriate sanction against a party who fails to comply with the regulations of this part or any order entered by an administrative patent judge or the Board. An appropriate sanction may include among others entry of an order:
(1)
Holding certain facts to have been established in the interference;
(2)
Precluding a party from filing a paper;
(3)
Precluding a party from presenting or contesting a particular issue;
(4)
Precluding a party from requesting, obtaining, or opposing discovery;
(5)
Awarding compensatory expenses and/or compensatory attorney fees; or
(6)
Granting judgment in the interference.
(b)
An administrative patent judge or the Board may impose a sanction, including a sanction in the form of compensatory expenses and/or compensatory attorney fees, against a party for taking and maintaining a frivolous position in papers filed in the interference.
(c)
To the extent that an administrative patent judge or the Board has authorized a party to compel the taking of testimony or the production of documents or things from an individual or entity located in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention (§ 1.671(h)), but the testimony, documents or things have not been produced for use in the interference to the same extent as such information could be made available in the United States, the administrative patent judge or the Board shall draw such adverse inferences as may be appropriate under the circumstances, or take such other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the interference, including imposition of appropriate sanctions under paragraph (a) of this section.
(d)
A party may file a motion (§ 1.635) for entry of an order imposing sanctions, the drawing of adverse inferences or other action under paragraph (a), (b) or (c) of this section. Where an administrative patent judge or the Board on its own initiative determines that a sanction, adverse inference or other action against a party may be appropriate under paragraph (a), (b) or (c) of this section, the administrative patent judge or the Board shall enter an order for the party to show cause why the sanction, adverse inference or other action is not appropriate. The Board shall take action in accordance with the order unless, within 20 days after the date of the order, the party files a paper which shows good cause why the sanction, adverse inference or other action would not be appropriate.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.617 Summary judgment against applicant.

(a)
An administrative patent judge shall review any evidence filed by an applicant under § 1.608(b) to determine if the applicant is prima facie entitled to a judgment relative to the patentee. If the administrative patent judge determines that the evidence shows the applicant is prima facie entitled to a judgment relative to the patentee, the interference shall proceed in the normal manner under the regulations of this part. If in the opinion of the administrative patent judge the evidence fails to show that the applicant is prima facie entitled to a judgment relative to the patentee, the administrative patent judge shall, concurrently with the notice declaring the interference, enter an order stating the reasons for the opinion and directing the applicant, within a time set in the order, to show cause why summary judgment should not be entered against the applicant.
(b)
The applicant may file a response to the order, which may include an appropriate preliminary motion under § 1.633(c), (f) or (g), and state any reasons why summary judgment should not be entered. Any request by the applicant for a hearing before the Board shall be made in the response. Additional evidence shall not be presented by the applicant or considered by the Board unless the applicant shows good cause why any additional evidence was not initially presented with the evidence filed under § 1.608(b). At the time an applicant files a response, the applicant shall serve a copy of any evidence filed under § 1.608(b) and this paragraph.
(c)
If a response is not timely filed by the applicant, the Board shall enter a final decision granting summary judgment against the applicant.
(d)
If a response is timely filed by the applicant, all opponents may file a statement and may oppose any preliminary motion filed under § 1.633(c), (f) or (g) by the applicant within a time set by the administrative patent judge. The statement may set forth views as to why summary judgment should be granted against the applicant, but the statement shall be limited to discussing why all the evidence presented by the applicant does not overcome the reasons given by the administrative patent judge for issuing the order to show cause. Except as required to oppose a motion under § 1.633(c), (f) or (g) by the applicant, evidence shall not be filed by any opponent. An opponent may not request a hearing.
(e)
Within a time authorized by the administrative patent judge, an applicant may file a reply to any statement or opposition filed by any opponent.
(f)
When more than two parties are involved in an interference, all parties may participate in summary judgment proceedings under this section.
(g)
If a response by the applicant is timely filed, the administrative patent judge or the Board shall decide whether the evidence submitted under § 1.608(b) and any additional evidence properly submitted under paragraphs (b) and (e) of this section shows that the applicant is prima facie entitled to a judgment relative to the patentee. If the applicant is not prima facie entitled to a judgment relative to the patentee, the Board shall enter a final decision granting summary judgment against the applicant. Otherwise, an interlocutory order shall be entered authorizing the interference to proceed in the normal manner under the regulations of this subpart.
(h)
Only an applicant who filed evidence under§ 1.608(b) may request a hearing. If that applicant requests a hearing, the Board may hold a hearing prior to entry of a decision under paragraph (g) of this section. The administrative patent judge shall set a date and time for the hearing. Unless otherwise ordered by the administrative patent judge or the Board, the applicant and any opponent will each be entitled to no more than 30 minutes of oral argument at the hearing.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; paras. (a), (b), (d), (e), (g), & (h) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.618 Return of unauthorized papers.

(a)
An administrative patent judge or the Board shall return to a party any paper presented by the party when the filing of the paper is not authorized by, or is not in compliance with the requirements of, this subpart. Any paper returned will not thereafter be considered in the interference. A party may be permitted to file a corrected paper under such conditions as may be deemed appropriate by an administrative patent judge or the Board.
(b)
When presenting a paper in an interference, a party shall not submit with the paper a copy of a paper previously filed in the interference.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; amended, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.621 Preliminary statement, time for filing, notice of filing.

(a)
Within the time set for filing preliminary motions under § 1.633, each party may file a preliminary statement. The preliminary statement may be signed by any individual having knowledge of the facts recited therein or by an attorney or agent of record.
(b)
When a party files a preliminary statement, the party shall also simultaneously file and serve on all opponents in the interference a notice stating that a preliminary statement has been filed. A copy of the preliminary statement need not be served until ordered by the administrative patent judge.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.622 Preliminary statement, who made invention, where invention made.

(a)
A party's preliminary statement must identify the inventor who made the invention defined by each count and must state on behalf of the inventor the facts required by paragraph (a) of §§ 1.623, 1.624, and 1.625 as may be appropriate. When an inventor identified in the preliminary statement is not an inventor named in the party's application or patent, the party shall file a motion under § 1.634 to correct inventorship.
(b)
The preliminary statement shall state whether the invention was made in the United States, a NAFTA country (and, if so, which NAFTA country), a WTO member country (and, if so, which WTO member country), or in a place other than the United States, a NAFTA country, or a WTO member country. If made in a place other than the United States, a NAFTA country, or a WTO member country, the preliminary statement shall state whether the party is entitled to the benefit of 35 U.S.C. 104(a)(2).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.623 Preliminary statement; invention made in United States, a NAFTA country, or a WTO member country.

(a)
When the invention was made in the United States, a NAFTA country, or a WTO member country, or a party is entitled to the benefit of 35 U.S.C. 104(a)(2), the preliminary statement must state the following facts as to the invention defined by each count:
(1)
The date on which the first drawing of the invention was made.
(2)
The date on which the first written description of the invention was made.
(3)
The date on which the invention was first disclosed by the inventor to another person.
(4)
The date on which the invention was first conceived by the inventor.
(5)
The date on which the invention was first actually reduced to practice. If the invention was not actually reduced to practice by or on behalf of the inventor prior to the party's filing date, the preliminary statement shall so state.
(6)
The date after the inventor's conception of the invention when active exercise of reasonable diligence toward reducing the invention to practice began.
(b)
If a party intends to prove derivation, the preliminary statement must also comply with § 1.625.
(c)
When a party alleges under paragraph (a)(1) of this section that a drawing was made, a copy of the first drawing shall be filed with and identified in the preliminary statement. When a party alleges under paragraph (a)(2) of this section that a written description of the invention was made, a copy of the first written description shall be filed with and identified in the preliminary statement. See § 1.628(b) when a copy of the first drawing or written description cannot be filed with the preliminary statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.624 Preliminary statement; invention made in a place other than the United States, a NAFTA country, or a WTO member country.

(a)
When the invention was made in a place other than the United States, a NAFTA country, or a WTO member country and a party intends to rely on introduction of the invention into the United States, a NAFTA country, or a WTO member country, the preliminary statement must state the following facts as to the invention defined by each count:
(1)
The date on which a drawing of the invention was first introduced into the United States, a NAFTA country, or a WTO member country.
(2)
The date on which a written description of the invention was first introduced into the United States, a NAFTA country, or a WTO member country.
(3)
The date on which the invention was first disclosed to another person in the United States, a NAFTA country, or a WTO member country.
(4)
The date on which the inventor's conception of the invention was first introduced into the United States, a NAFTA country, or a WTO member country.
(5)
The date on which an actual reduction to practice of the invention was first introduced into the United States, a NAFTA country, or a WTO member country. If an actual reduction to practice of the invention was not introduced into the United States, a NAFTA country, or a WTO member country, the preliminary amendment shall so state.
(6)
The date after introduction of the inventor's conception into the United States, a NAFTA country, or a WTO member country when active exercise of reasonable diligence in the United States, a NAFTA country, or a WTO member country toward reducing the invention to practice began.
(b)
If a party intends to prove derivation, the preliminary statement must also comply with § 1.625.
(c)
When a party alleges under paragraph (a)(1) of this section that a drawing was introduced into the United States, a NAFTA country, or a WTO member country, a copy of that drawing shall be filed with and identified in the preliminary statement. When a party alleges under paragraph (a)(2) of this section that a written description of the invention was introduced into the United States, a NAFTA country, or a WTO member country, a copy of that written description shall be filed with and identified in the preliminary statement. See§ 1.628(b) when a copy of the first drawing or first written description introduced in the United States, a NAFTA country, or a WTO member country cannot be filed with the preliminary statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; para. (a) & (c) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.625 Preliminary statement; derivation by an opponent

(a)
When a party intends to prove derivation by an opponent from the party, the preliminary statement must state the following as to the invention defined by each count:
(1)
The name of the opponent.
(2)
The date on which the first drawing of the invention was made.
(3)
The date on which the first written description of the invention was made.
(4)
The date on which the invention was first disclosed by the inventor to another person.
(5)
The date on which the invention was first conceived by the inventor.
(6)
The date on which the invention was first communicated to the opponent.
(b)
If a party intends to prove priority, the preliminary statement must also comply with § 1.623 or § 1.624.
(c)
When a party alleges under paragraph (a)(2) of this section that a drawing was made, a copy of the first drawing shall be filed with and identified in the preliminary statement. When a party alleges under paragraph (a)(3) of this section that a written description of the invention was made, a copy of the first written description shall be filed with and identified in the preliminary statement. See § 1.628(b) when a first drawing or first written description cannot be filed with the preliminary statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11,1985; para. (a) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.626 Preliminary statement; earlier application.
When a party does not intend to present evidence to prove a conception or an actual reduction to practice and the party intends to rely solely on the filing date of an earlier filed application to prove a constructive reduction to practice, the preliminary statement may so state and identify the earlier filed application with particularity.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.627 Preliminary statement; sealing before filing, opening of statement.

(a)
The preliminary statement and copies of any drawing or written description shall be filed in a sealed envelope bearing only the name of the party filing the statement and the style (e.g., Jones v. Smith) and number of the interference. The sealed envelope should contain only the preliminary statement and copies of any drawing or written description. If the preliminary statement is filed through the mail, the sealed envelope should be enclosed in an outer envelope addressed to the Commissioner of Patents and Trademarks in accordance with § 1.1(e).
(b)
A preliminary statement may be opened only at the direction of an administrative patent judge.

[49 FR48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.628 Preliminary statement; correction of error.

(a)
A material error arising through inadvertence or mistake in connection with a preliminary statement or drawings or a written description submitted therewith or omitted therefrom may be corrected by a motion(§ 1.635) for leave to file a corrected statement. The motion shall be supported by an affidavit stating the date the error was first discovered, shall be accompanied by the corrected statement and shall be filed as soon as practical after discovery of the error. If filed on or after the date set by the administrative patent judge for service of preliminary statements, the motion shall also show that correction of the error is essential to the interest of justice.
(b)
When a party cannot attach a copy of a drawing or a written description to the party's preliminary statement as required by § 1.623(c), § 1.624(c) or§ 1.625(c), the party shall show good cause and explain in the preliminary statement why a copy of the drawing or written description cannot be attached to the preliminary statement and shall attach to the preliminary statement the earliest drawing or written description made in or introduced into the United States, a NAFTA country, or a WTO member country which is available. The party shall file a motion (§ 1.635) to amend its preliminary statement promptly after the first drawing, first written description, or drawing or written description first introduced into the United States, a NAFTA country, or a WTO member country becomes available. A copy of the drawing or written description may be obtained, where appropriate, by a motion (§ 1.635) for additional discovery under § 1.687 or during a testimony period.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.629 Effect of preliminary statement.

(a)
A party shall be strictly held to any date alleged in the preliminary statement. Doubts as to definiteness or sufficiency of any allegation in a preliminary statement or compliance with formal requirements will be resolved against the party filing the statement by restricting the party to its effective filing date or to the latest date of a period alleged in the preliminary statement, as may be appropriate. A party may not correct a preliminary statement except as provided by§ 1.628.
(b)
Evidence which shows that an act alleged in the preliminary statement occurred prior to the date alleged in the statement shall establish only that the act occurred as early as the date alleged in the statement.
(c)
If a party does not file a preliminary statement, the party:
(1)
Shall be restricted to the party's effective filing date and
(2)
Will not be permitted to prove that:
(i)
The party made the invention prior to the party's filing date or
(ii)
Any opponent derived the invention from the party.
(d)
If a party files a preliminary statement which contains an allegation of a date of first drawing or first written description and the party does not file a copy of the first drawing or written description with the preliminary statement as required by § 1.623(c), § 1.624(c), or§ 1.625(c), the party will be restricted to the party's effective filing date as to that allegation unless the party complies with § 1.628(b). The content of any drawing or written description submitted with a preliminary statement will not normally be evaluated or considered by the Board.
(e)
A preliminary statement shall not be used as evidence on behalf of the party filing the statement.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a), (c)(1) & (d) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.630 Reliance on earlier application.
A party shall not be entitled to rely on the filing date of an earlier filed application unless the earlier application is identified (§ 1.611(c)(5)) in the notice declaring the interference or the party files a preliminary motion under§ 1.633 seeking the benefit of the filing date of the earlier application.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.631 Access to preliminary statement, service of preliminary statement.

(a)
Unless otherwise ordered by an administrative patent judge, concurrently with entry of a decision on preliminary motions filed under § 1.633 any preliminary statement filed under § 1.621(a) shall be opened to inspection by the senior party and any junior party who filed a preliminary statement. Within a time set by the administrative patent judge, a party shall serve a copy of its preliminary statement on each opponent who served a notice under § 1.621(b).
(b)
A junior party who does not file a preliminary statement shall not have access to the preliminary statement of any other party.
(c)
If an interference is terminated before the preliminary statements have been opened, the preliminary statements will remain sealed and will be returned to the respective parties who submitted the statements.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.632 Notice of intent to argue abandonment, suppression or concealment by opponent.
A notice shall be filed by a party who intends to argue that an opponent has abandoned, suppressed, or concealed an actual reduction to practice (35 U.S.C. 102(g)). A party will not be permitted to argue abandonment, suppression, or concealment by an opponent unless the notice is timely filed. Unless authorized otherwise by an administrative patent judge, a notice is timely when filed within ten (10) days after the close of the testimony-in-chief of the opponent.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.633 Preliminary motions.
A party may file the following preliminary motions:

(a)
A motion for judgment against an opponent's claim designated to correspond to a count on the ground that the claim is not patentable to the opponent. The motion shall separately address each claim alleged to be unpatentable. In deciding an issue raised in a motion filed under this paragraph (a), a claim will be construed in light of the specification of the application or patent in which it appears. A motion under this paragraph shall not be based on:
(1)
Priority of invention by the moving party as against any opponent or
(2)
Derivation of the invention by an opponent from the moving party. See § 1.637(a).
(b)
A motion for judgment on the ground that there is no interference-in-fact. A motion under this paragraph is proper only if the interference involves a design application or patent or a plant application or patent or no claim of a party which corresponds to a count is identical to any claim of an opponent which corresponds to that count. See § 1.637(a). When claims of different parties are presented in “means plus function” format, it may be possible for the claims of the different parties not to define the same patentable invention even though the claims contain the same literal wording.
(c)
A motion to redefine the interfering sub­ject matter by (1) adding or substituting a count,(2) amending an application claim corresponding to a count or adding a claim in the moving party's application to be designated to correspond to a count, (3) designating an application or patent claim to correspond to a count, (4) designating an application or patent claim as not corresponding to a count, or (5) requiring an opponent who is an applicant to add a claim and to designate the claim to correspond to a count. See§ 1.637(a) and (c).
(d)
A motion to substitute a different application owned by a party for an application involved in the interference. See § 1.637(a) and (d).
(e)
A motion to declare an additional interference (1) between an additional application not involved in the interference and owned by a party and an opponent's application or patent involved in the interference or (2) when an interference involves three or more parties, between less than all applications and any patent involved in the interference. See § 1.637 (a) and (e).
(f)
A motion to be accorded the benefit of the filing date of an earlier filed application. See § 1.637 (a) and (f).
(g)
A motion to attack the benefit accorded an opponent in the notice declaring the interference of the filing date of an earlier filed application. See § 1.637 (a) and (g).
(h)
When a patent is involved in an interference and the patentee has on file or files an application for reissue under § 1.171, a motion to add the application for reissue to the interference. See § 1.637(a) and (h).
(i)
When a motion is filed under paragraph (a), (b), or (g) of this section, an opponent, in addition to opposing the motion, may file a motion to redefine the interfering subject matter under paragraph (c) of this section, a motion to substitute a different application under paragraph (d) of this section, or a motion to add a reissue application to the interference under paragraph (h) of this section.
(j)
When a motion is filed under paragraph (c)(1) of this section an opponent, in addition to opposing the motion, may file a motion for benefit under paragraph (f) of this section as to the count to be added or substituted.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; paras. (a), (b), (f), (g), & (i) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.634 Motion to correct inventorship.
A party may file a motion to (a) amend its application involved in an interference to correct inventorship as provided by § 1.48 or (b) correct inventorship of its patent involved in an interference as provided in§ 1.324. See § 1.637(a).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.635 Miscellaneous motions.
A party seeking entry of an order relating to any matter other than a matter which may be raised under §§1.633 or 1.634 may file a motion requesting entry of the order. See § 1.637 (a) and (b).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.636 Motions, time for filing.

(a)
A preliminary motion under § 1.633 (a) through (h) shall be filed within a time period set by an administrative patent judge.
(b)
A preliminary motion under § 1.633 (i) or (j) shall be filed within 20 days of the service of the preliminary motion under § 1.633 (a), (b), (c)(1), or (g) unless otherwise ordered by an administrative patent judge.
(c)
A motion under § 1.634 shall be diligently filed after an error is discovered in the inventorship of an application or patent involved in an interference unless otherwise ordered by an administrative patent judge.
(d)
A motion under § 1.635 shall be filed as specified in this subpart or when appropriate unless otherwise ordered by an administrative patent judge.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.637 Content of motions.

(a)
A party filing a motion has the burden of proof to show that it is entitled to the relief sought in the motion. Each motion shall include a statement of the precise relief requested, a statement of the material facts in support of the motion, in numbered paragraphs, and a full statement of the reasons why the relief requested should be granted. If a party files a motion for judgment under § 1.633(a) against an opponent based on the ground of unpatentability over prior art, and the dates of the cited prior art are such that the prior art appears to be applicable to the party, it will be presumed, without regard to the dates alleged in the preliminary statement of the party, that the cited prior art is applicable to the party unless there is included with the motion an explanation, and evidence if appropriate, as to why the prior art does not apply to the party.
(b)
Unless otherwise ordered by an administrative patent judge or the Board, a motion under § 1.635 shall contain a certificate by the moving party stating that the moving party has conferred with all opponents in an effort in good faith to resolve by agreement the issues raised by the motion. The certificate shall indicate whether any opponent plans to oppose the motion. The provisions of this paragraph do not apply to a motion to suppress evidence (§ 1.656(h)).
(c)
A preliminary motion under § 1.633(c) shall explain why the interfering subject matter should be redefined.
(1)
A preliminary motion seeking to add or substitute a count shall:
(i)
Propose each count to be added or substituted.
(ii)
When the moving party is an applicant, show the patentability to the applicant of all claims in, or proposed to be added to, the party's application which correspond to each proposed count and apply the terms of the claims to the disclosure of the party's application; when necessary a moving party applicant shall file with the motion an amendment adding any proposed claim to the application.
(iii)
Identify all claims in an opponent's application which should be designated to correspond to each proposed count; if an opponent's application does not contain such a claim, the moving party shall propose a claim to be added to the opponent's application. The moving party shall show the patentability of any proposed claims to the opponent and apply the terms of the claims to the disclosure of the opponent's application.
(iv)
Designate the claims of any patent involved in the interference which define the same patentable invention as each proposed count.
(v)
Show that each proposed count defines a separate patentable invention from every other count proposed to remain in the interference.
(vi)
Be accompanied by a motion under§ 1.633(f) requesting the benefit of the filing date of any earlier filed application, if benefit of the earlier filed application is desired with respect to a proposed count.
(vii)
If an opponent is accorded the benefit of the filing date of an earlier filed application in the notice of declaration of the interference, show why the opponent is not also entitled to benefit of the earlier filed application with respect to the proposed count. Otherwise, the opponent will be presumed to be entitled to the benefit of the earlier filed application with respect to the proposed count.
(2)
A preliminary motion seeking to amend an application claim corresponding to a count or adding a claim to be designated to correspond to a count shall:
(i)
Propose an amended or added claim.
(ii)
Show that the claim proposed to be amended or added defines the same patentable invention as the count.
(iii)
Show the patentability to the applicant of each claim proposed to be amended or added and apply the terms of the claim proposed to be amended or added to the disclosure of the application; when necessary a moving party applicant shall file with the motion a proposed amendment to the application amending the claim corresponding to the count or adding the proposed additional claim to the application.
(3)
A preliminary motion seeking to designate an application or patent claim to correspond to a count shall:
(i)
Identify the claim and the count.
(ii)
Show the claim defines the same patentable invention as another claim whose designation as corresponding to the count the moving party does not dispute.
(4)
A preliminary motion seeking to designate an application or patent claim as not corresponding to a count shall:
(i)
Identify the claim and the count.
(ii)
Show that the claim does not define the same patentable invention as any other claim whose designation in the notice declaring the interference as corresponding to the count the party does not dispute.
(5)
A preliminary motion seeking to require an opponent who is an applicant to add a claim and designate the claim as corresponding to a count shall:
(i)
Propose a claim to be added by the opponent.
(ii)
Show the patentability to the opponent of the claim and apply the terms of the claim to the disclosure of the opponent's application.
(iii)
Identify the count to which the claim shall be designated to correspond.
(iv)
Show the claim defines the same patentable invention as the count to which it will be designated to correspond.
(d)
A preliminary motion under § 1.633(d) to substitute a different application of the moving party shall:
(1)
Identify the different application.
(2)
Certify that a complete copy of the file of the different application, except for documents filed under§ 1.131 or § 1.608, has been served on all opponents.
(3)
Show the patentability to the applicant of all claims in, or proposed to be added to, the different application which correspond to each count and apply the terms of the claims to the disclosure of the different application; when necessary the applicant shall file with the motion an amendment adding a claim to the different application.
(e)
A preliminary motion to declare an additional interference under § 1.633(e) shall explain why an additional interference is necessary.
(1)
When the preliminary motion seeks an additional interference under § 1.633(e)(1), the motion shall:
(i)
Identify the additional application.
(ii)
Certify that a complete copy of the file of the additional application, except for documents filed under § 1.131 or § 1.608, has been served on all opponents.
(iii)
Propose a count for the additional interference.
(iv)
Show the patentability to the applicant of all claims in, or proposed to be added to, the additional application which correspond to each proposed count for the additional interference and apply the terms of the claims to the disclosure of the additional application; when necessary the applicant shall file with the motion an amendment adding any claim to the additional application.
(v)
When the opponent is an applicant, show the patentability to the opponent of any claims in, or proposed to be added to, the opponent's application which correspond to the proposed count and apply the terms of the claims to the disclosure of the opponent's application.
(vi)
Identify all claims in the opponent's application or patent which should be designated to correspond to each proposed count; if the opponent's application does not contain any such claim, the motion shall propose a claim to be added to the opponent's application.
(vii)
Show that each proposed count for the additional interference defines a separate patentable invention from all counts of the interference in which the motion is filed.
(viii)
Be accompanied by a motion under§ 1.633(f) requesting the benefit of the filing date of an
earlier filed application, if benefit is desired with respect to a proposed count.
(ix)
If an opponent is accorded the benefit of the filing date of an earlier filed application in the notice of declaration of the interference, show why the opponent is not also entitled to benefit of the earlier filed application with respect to the proposed count. Otherwise, the opponent will be presumed to be entitled to the benefit of the earlier filed application with respect to the proposed count.
(2)
When the preliminary motion seeks an additional interference under § 1.633(e)(2), the motion shall:
(i)
Identify any application or patent to be involved in the additional interference.
(ii)
Propose a count for the additional interference.
(iii)
When the moving party is an applicant, show the patentability to the applicant of all claims in, or proposed to be added to, the party's application which correspond to each proposed count and apply the terms of the claims to the disclosure of the party's application; when necessary a moving party applicant shall file with the motion an amendment adding any proposed claim to the application.
(iv)
Identify all claims in any opponent's application which should be designated to correspond to each proposed count; if an opponent's application does not contain such a claim, the moving party shall propose a claim to be added to the opponent's application. The moving party shall show the patentability of any proposed claim to the opponent and apply the terms of the claim to the disclosure of the opponent's application.
(v)
Designate the claims of any patent involved in the interference which define the same patentable invention as each proposed count.
(vi)
Show that each proposed count for the additional interference defines a separate patentable invention from all counts in the interference in which the motion is filed.
(vii)
Be accompanied by a motion under§ 1.633(f) requesting the benefit of the filing date of an earlier filed application, if benefit is desired with respect to a proposed count.
(viii)
If an opponent is accorded the benefit of the filing date of an earlier filed application in the notice of declaration of the interference, show why the opponent is not also entitled to benefit of the earlier filed application with respect to the proposed count. Otherwise, the opponent will be presumed to be entitled to the benefit of the earlier filed application with respect to the proposed count.
(f)
A preliminary motion for benefit under§ 1.633(f) shall:
(1)
Identify the earlier application.
(2)
When the earlier application is an application filed in the United States, certify that a complete copy of the file of the earlier application, except for documents filed under § 1.131 or § 1.608, has been served on all opponents. When the earlier application is an application filed in a foreign country, certify that a copy of the application has been served on all opponents. If the earlier filed application is not in English, the requirements of § 1.647 must also be met.
(3)
Show that the earlier application constitutes a constructive reduction to practice of each count.
(g)
A preliminary motion to attack benefit under§ 1.633(g) shall explain, as to each count, why an opponent should not be accorded the benefit of the filing date of the earlier application.
(h)
A preliminary motion to add an application for reissue under § 1.633(h) shall:
(1)
Identify the application for reissue.
(2)
Certify that a complete copy of the file of the application for reissue has been served on all opponents.
(3)
Show the patentability of all claims in, or proposed to be added to, the application for reissue which correspond to each count and apply the terms of the claims to the disclosure of the application for reissue; when necessary a moving applicant for reissue shall file with the motion an amendment adding any proposed claim to the application for reissue.
(4)
Be accompanied by a motion under§ 1.633(f) requesting the benefit of the filing date of any earlier filed application, if benefit is desired.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; para. (e)(1)(vi) revised 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; para. (a) revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. (a), (b), (c)(1)(v), (c)(1)(vi), (c)(20(ii), (c)(2)(iii), (c)(3)(ii), (c)(4)(ii), (d), (e)(1)(viii), (e)(2)(vii), (f)(2), & (h)(4) revised, paras. (c)(2)(iv), (c)(3)(iii), & (d)(4) removed, paras. (c)(1)(vii), (e)(1)(ix), & (e)(2)(viii) added, 60 FR 14488. Mar. 17, 1995, effective Apr. 21, 1995]



1.638 Opposition and reply; time for filing opposition and reply.

(a)
Unless otherwise ordered by an administrative patent judge, any opposition to any motion shall be filed within 20 days after service of the motion. An opposition shall identify any material fact set forth in the motion which is in dispute and include an argument why the relief requested in the motion should be denied.
(b)
Unless otherwise ordered by an administrative patent judge, any reply shall be filed within 15 days after service of the opposition. A reply shall be directed only to new points raised in the opposition.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.639 Evidence in support of motion, opposition, or reply.

(a)
Except as provided in paragraphs (c) through (g) of this section, proof of any material fact alleged in a motion, opposition, or reply must be filed and served with the motion, opposition, or reply unless the proof relied upon is part of the interference file or the file of any patent or application involved in the interference or any earlier application filed in the United States of which a party has been accorded or seeks to be accorded benefit.
(b)
Proof may be in the form of patents, printed publications, and affidavits. The pages of any affidavits filed under this paragraph shall, to the extent possible, be given sequential numbers, which shall also serve as the record page numbers for the affidavits in the event they are included in the party's record (§ 1.653). Any patents and printed publications submitted under this paragraph and any exhibits identified in affidavits submitted under this paragraph shall, to the extent possible, be given sequential exhibit numbers, which shall also serve as the exhibit numbers in the event the patents, printed publications and exhibits are filed with the party's record (§ 1.653).
(c)
If a party believes that additional evidence in the form of testimony that is unavailable to the party is necessary to support or oppose a preliminary motion under § 1.633 or a motion to correct inventorship under§ 1.634, the party shall describe the nature of any proposed testimony as specified in paragraphs (d) through (g) of this section. If the administrative patent judge finds that testimony is needed to decide the motion, the administrative patent judge may grant appropriate interlocutory relief and enter an order authorizing the taking of testimony and deferring a decision on the motion to final hearing.
(d)
When additional evidence in the form of expert-witness testimony is needed in support of or opposition to a preliminary motion, the moving party or opponent should:
(1)
Identify the person whom it expects to use as an expert;
(2)
State the field in which the person is alleged to be an expert; and
(3)
State:
(i)
The subject matter on which the person is expected to testify;
(ii)
The facts and opinions to which the person is expected to testify; and
(iii)
A summary of the grounds and basis for each opinion.
(e)
When additional evidence in the form of fact-witness testimony is necessary, state the facts to which the witness is expected to testify.
(f)
If the opponent is to be called, or if evidence in the possession of the opponent is necessary, explain the evidence sought, what it will show, and why it is needed.
(g)
When inter partes tests are to be performed, describe the tests stating what they will be expected to show.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (c) revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. (d)-(g) added, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; paras. (a)-(d)(1) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.640 Motions, hearing and decision, redeclaration of interference, order to show cause.

(a)
A hearing on a motion may be held in the discretion of the administrative patent judge. The administrative patent judge shall set the date and time for any hearing. The length of oral argument at a hearing on a motion is a matter within the discretion of the administrative patent judge. An administrative patent judge may direct that a hearing take place by telephone.
(b)
Unless an administrative patent judge or the Board is of the opinion that an earlier decision on a preliminary motion would materially advance theresolution of the interference, decision on a preliminary motion shall be deferred to final hearing. Motionsnot deferred to final hearing will be decided by an administrative patent judge. An administrative patent judge may consult with an examiner in deciding motions. An administrative patent judge may take up motions for decisions in any order, may grant, deny, or dismiss any motion, and may take such other action which will secure the just, speedy, and inexpensive determination of the interference. A matter raised by a party in support of or in opposition to a motion that is deferred to final hearing will not be entitled to consideration at final hearing unless the matter is raised in the party's brief at final hearing. If the administrative patent judge determines that the interference shall proceed to final hearing on the issue of priority or derivation, a time shall be set for each party to file a paper identifying any decisions on motions or on matters raised sua sponte by the administrative patent judge that the party wishes to have reviewed at final hearing as well as identifying any deferred motions that the party wishes to have considered at final hearing. Any evidence that a party wishes to have considered with respect to the decisions and deferred motions identified by the party or by an opponent for consideration or review at final hearing shall be filed or, if appropriate, noticed under § 1.671(e) during the testimony-in-chief period of the party.
(1)
When appropriate after the time expires for filing replies to oppositions to preliminary motions, the administrative patent judge will set a time for filing any amendment to an application involved in the interference and for filing a supplemental preliminary statement as to any new counts which may become involved in the interference if a preliminary motion to amend or substitute a count has been filed. Failure or refusal of a party to timely present an amendment required by an administrative patent judge shall be taken without further action as a disclaimer by that party of the invention involved. A supplemental preliminary statement shall meet the requirements specified in § 1.623, 1.624, 1.625, or 1.626, but need not be filed if a party states that it intends to rely on a preliminary statement previously filed under § 1.621(a). At an appropriate time in the interference, and when necessary, an order will be entered redeclaring the interference.
(2)
After the time expires for filing preliminary motions, a further preliminary motion under § 1.633 will not be considered except as provided by § 1.645(b).
(c)
When a decision on any motion under§§ 1.633, 1.634, or 1.635 or on any matter raised sua sponte by an administrative patent judge is entered which does not result in the issuance of an order to show cause under paragraph (d) of this section, a party may file a request for reconsideration within 14 days after the date of the decision. The request for reconsideration shall be filed and served by hand or Express Mail. The filing of a request for reconsideration will not stay any time period set by the decision. The request for reconsideration shall specify with particularity the points believed to have been misapprehended or overlooked in rendering the decision. No opposition to a request for reconsideration shall be filed unless requested by an administrative patent judge or the Board. A decision ordinarily will not be modified unless an opposition has been requested by an administrative patent judge or the Board. The request for reconsideration normally will be acted on by the administrative patent judge or the panel of the Board which issued the decision.
(d)
An administrative patent judge may issue an order to show cause why judgment should not be entered against a party when:
(1)
A decision on a motion or on a matter raised sua sponte by an administrative patent judge is entered which is dispositive of the interference against the party as to any count;
(2)
The party is a junior party who fails to file a preliminary statement; or
(3)
The party is a junior party whose preliminary statement fails to overcome the effective filing date of another party.
(e)
When an order to show cause is issued under paragraph (d) of this section, the Board shall enter judgment in accordance with the order unless, within20 days after the date of the order, the party against whom the order issued files a paper which shows good cause why judgment should not be entered in accordance with the order.
(1)
If the order was issued under paragraph (d)(1) of this section, the paper may:
(i)
Request that final hearing be set to review any decision which is the basis for the order as well as any other decision of the administrative patent judge that the party wishes to have reviewed by the Board at final hearing or
(ii)
Fully explain why judgment should not be entered.
(2)
Any opponent may file a response to the paper within 20 days of the date of service of the paper. If the order was issued under paragraph (d)(1) of this section and the party's paper includes a request for final hearing, the opponent's response must identify every decision of the administrative patent judge that the opponent wishes to have reviewed by the Board at a final hearing. If the order was issued under paragraph (d)(1) of this section and the paper does not include a request for final hearing, the opponent's response may include a request for final hearing, which must identify every decision of the administrative patent judge that the opponent wishes to have reviewed by the Board at a final hearing. Where only the opponent's response includes a request for a final hearing, the party filing the paper shall, within 14 days from the date of service of the opponent's response, file a reply identifying any other decision of the administrative patent judge that the party wishes to have reviewed by the Board at a final hearing.
(3)
The paper or the response should be accompanied by a motion (§ 1.635) requesting a testimony period if either party wishes to introduce any evidence to be considered at final hearing (§ 1.671). Any evidence that a party wishes to have considered with respect to the decisions and deferred motions identified for consideration or review at final hearing shall be filed or, if appropriate, noticed under § 1.671(e) during the testimony period of the party. A request for a testimony period shall be construed as including a request for final hearing.
(4)
If the paper contains an explanation of why judgment should not be entered in accordance with the order, and if no party has requested a final hearing, the decision that is the basis for the order shall be reviewed based on the contents of the paper and the response. If the paper fails to show good cause, the Board shall enter judgment against the party against whom the order issued.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; paras. (a)-(e) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.641 Unpatentability discovered by administrative patent judge.

(a)
During the pendency of an interference, if the administrative patent judge becomes aware of a reason why a claim designated to correspond to a count may not be patentable, the administrative patent judge may enter an order notifying the parties of the reason and set a time within which each party may present its views, including any argument and any supporting evidence, and, in the case of the party whose claim may be unpatentable, any appropriate preliminary motions under §§ 1.633(c), (d) and (h).
(b)
If a party timely files a preliminary motion in response to the order of the administrative patent judge, any opponent may file an opposition (§ 1.638(a)). If an opponent files an opposition, the party may reply(§ 1.638(b)).
(c)
After considering any timely filed views, including any timely filed preliminary motions under§ 1.633, oppositions and replies, the administrative patent judge shall decide how the interference shall proceed.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.642 Addition of application or patent to interference.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised. 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.643 Prosecution of interference by assignee.

(a)
An assignee of record in the Patent and Trademark Office of the entire interest in an application or patent involved in an interference is entitled to conduct prosecution of the interference to the exclusion of the inventor.
(b)
An assignee of a part interest in an application or patent involved in an interference may file a motion(§ 1.635) for entry of an order authorizing it to prosecute the interference. The motion shall show the inability or refusal of the inventor to prosecute the interference or other cause why it is in the interest of justice to permit the assignee of a part interest to prosecute the interference. The administrative patent judge may allow the assignee of a part interest to prosecute the interference upon such terms as may be appropriate.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.644 Petitions in interferences.

(a)
There is no appeal to the Commissioner in an interference from a decision of an administrative patent judge or the Board. The Commissioner will not consider a petition in an interference unless:
(1)
The petition is from a decision of an administrative patent judge or the Board and the administrative patent judge or the Board shall be of the opinion that the decision involves a controlling question of procedure or an interpretation of a rule as to which there is a substantial ground for a difference of opinion and that an immediate decision on petition by the Commissioner may materially advance the ultimate termination of the interference;
(2)
The petition seeks to invoke the supervisory authority of the Commissioner and does not relate to the merits of priority of invention or patentability or the admissibility of evidence under the Federal Rules of Evidence; or
(3)
The petition seeks relief under § 1.183.
(b)
A petition under paragraph (a)(1) of this section filed more than 15 days after the date of the decision of the administrative patent judge or the Board may be dismissed as untimely. A petition under paragraph (a)(2) of this section shall not be filed prior to the party's brief for final hearing (see § 1.656). Any petition under paragraph (a)(3) of this section shall be timely if it is filed simultaneously with a proper motion under§ 1.633, 1.634, or 1.635 when granting the motion would require waiver of a rule. Any opposition to a petition under paragraphs (a)(1) or (a)(2) of this section shall be filed within 20 days of the date of service of the petition. Any opposition to a petition under paragraph (a)(3) of this section shall be filed within 20 days of the date of service of the petition or the date an opposition to the motion is due, whichever is earlier.
(c)
The filing of a petition shall not stay the proceeding unless a stay is granted in the discretion of the administrative patent judge, the Board, or the Commissioner.
(d)
Any petition must contain a statement of the facts involved, in numbered paragraphs, and the point or points to be reviewed and the action requested. The petition will be decided on the basis of the record made before the administrative patent judge or the Board, and no new evidence will be considered by the Commissioner in deciding the petition. Copies of documents already of record in the interference shall not be submitted with the petition or opposition.
(e)
Any petition under paragraph (a) of this section shall be accompanied by the petition fee set forth in § 1.17(h).
(f)
Any request for reconsideration of a decision by the Commissioner shall be filed within 14 days of the decision of the Commissioner and must be accompanied by the fee set forth in § 1.17(h). No opposition to a request for reconsideration shall be filed unless requested by the Commissioner. The decision will not ordinarily be modified unless such an opposition has been requested by the Commissioner.
(g)
Where reasonably possible, service of any petition, opposition, or request for reconsideration shall be such that delivery is accomplished within one working day. Service by hand or Express Mail complies with this paragraph.
(h)
An oral hearing on the petition will not be granted except when considered necessary by the Commissioner.
(i)
The Commissioner may delegate to appropriate Patent and Trademark Office employees the determination of petitions under this section.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; paras. (a)-(a)(2), (b)-(g) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.645 Extension of time, late papers, stay of proceedings.

(a)
Except to extend the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action, a party may file a motion (§ 1.635) seeking an extension of time to take action in an interference. See § 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. The motion shall be filed within sufficient time to actually reach the administrative patent judge before expiration of the time for taking action. A moving party should not assume that the motion will be granted even if there is no objection by any other party. The motion will be denied unless the moving party shows good cause why an extension should be granted. The press of other business arising after an administrative patent judge sets a time for taking action will not normally constitute good cause. A motion seeking additional time to take testimony because a party has not been able to procure the testimony of a witness shall set forth the name of the witness, any steps taken to procure the testimony of the witness, the dates on which the steps were taken, and the facts expected to be proved through the witness.
(b)
Any paper belatedly filed will not be considered except upon motion (§ 1.635) which shows good cause why the paper was not timely filed, or where an administrative patent judge or the Board, sua sponte, is of the opinion that it would be in the interest of justice to consider the paper. See § 1.304(a) for exclusive procedures relating to belated filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or belated commencement of a civil action.
(c)
The provisions of § 1.136 do not apply to time periods in interferences.
(d)
An administrative patent judge may stay proceedings in an interference.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; paras. (a) and (b), 54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras. (a), (b), & (d) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.646 Service of papers, proof of service.

(a)
A copy of every paper filed in the Patent and Trademark Office in an interference or an application or patent involved in the interference shall be served upon all other parties except:
(1)
Preliminary statements when filed under§ 1.621; preliminary statements shall be served when service is ordered by an administrative patent judge.
(2)
Certified transcripts and exhibits which accompany the transcripts filed under § 1.676; copies of transcripts shall be served as part of a party's record under § 1.653(c).
(b)
Service shall be on an attorney or agent for a party. If there is no attorney or agent for the party, service shall be on the party. An administrative patent judge may order additional service or waive service where appropriate.
(c)
Unless otherwise ordered by an administrative patent judge, or except as otherwise provided by this subpart, service of a paper shall be made as follows:
(1)
By handing a copy of the paper or causing a copy of the paper to be handed to the person served.
(2)
By leaving a copy of the paper with someone employed by the person at the person's usual place of business.
(3)
When the person served has no usual place of business, by leaving a copy of the paper at the person's residence with someone of suitable age and discretion then residing therein.
(4)
By mailing a copy of the paper by first class mail; when service is by first class mail the date of mailing is regarded as the date of service.
(5)
By mailing a copy of the paper by Express Mail; when service is by Express Mail the date of deposit with the U.S. Postal Service is regarded as the date of service.
(6)
When it is shown to the satisfaction of an administrative patent judge that none of the above methods of obtaining or serving the copy of the paper was successful, the administrative patent judge may order service by publication of an appropriate notice in the Official Gazette.
(d)
An administrative patent judge may order that a paper be served by hand or Express Mail.
(e)
The due date for serving a paper is the same as the due date for filing the paper in the Patent and Trademark Office. Proof of service must be made before a paper will be considered in an interference. Proof of service may appear on or be affixed to the paper. Proof of service shall include the date and manner of service. In the case of personal service under paragraphs (c)(1) through (c)(3) of this section, proof of service shall include the names of any person served and the person who made the service. Proof of service may be made by an acknowledgment of service by or on behalf of the person served or a statement signed by the party or the party's attorney or agent containing the information required by this section. A statement of an attorney or agent attached to, or appearing in, the paper stating the date and manner of service will be accepted as prima facie proof of service.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11,1985; 50 FR 23124, May 31, 1985; paras. (a)(1)-(c)(1), (c)(4)-(c)(5) revised, para. (c)(6) added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.647 Translation of document in foreign language.
When a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation shall be filed with the document.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a) and (d), 56 FR 42528, Aug. 28, 1991, effective Sept. 27, 1991; 56 FR 46823, Sept. 16, 1991; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.651 Setting times for discovery and taking testimony, parties entitled to take testimony.

(a)
At an appropriate stage in an interference, an administrative patent judge shall set a time for filing motions (§ 1.635) for additional discovery under§ 1.687(c) and testimony periods for taking any necessary testimony.
(b)
Where appropriate, testimony periods will be set to permit a party to:
(1)
Present its case-in-chief and/or case-in-rebuttal and/or
(2)
Cross-examine an opponent's case-in-chief and/or a case-in-rebuttal.
(c)
A party is not entitled to take testimony to present a case-in-chief unless:
(1)
The administrative patent judge orders the taking of testimony under § 1.639(c);
(2)
The party alleges in its preliminary statement a date of invention prior to the effective filing date of the senior party;
(3)
A testimony period has been set to permit an opponent to prove a date of invention prior to the effective filing date of the party and the party has filed a preliminary statement alleging a date of invention prior to that date; or
(4)
A motion (§ 1.635) is filed showing good cause why a testimony period should be set.
(d)
Testimony, including any testimony to be taken in a place outside the United States, shall be taken and completed during the testimony periods set under paragraph (a) of this section. A party seeking to extend the period for taking testimony must comply with§§ 1.635 and 1.645(a).

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a) and (d), 56 FR 42528, Aug. 28, 1991, effective Sept. 27, 1991; 56 FR 46823, Sept. 16, 1991; paras. (a) (c)(1)-(c)(3) & (d) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.652 Judgment for failure to take testimony or file record.
If a junior party fails to timely take testimony authorized under § 1.651, or file a record under § 1.653(c), an administrative patent judge, with or without a motion(§ 1.635) by another party, may issue an order to show cause why judgment should not be entered against the junior party. When an order is issued under this section, the Board shall enter judgment in accordance with the order unless, within 15 days after the date of the order, the junior party files a paper which shows good cause why judgment should not be entered in accordance with the order. Any other party may file a response to the paper within 15 days of the date of service of the paper. If the party against whom the order was issued fails to show good cause, the Board shall enter judgment against the party.

[49 FR 48416, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.653 Record and exhibits.

(a)
Testimony shall consist of affidavits under §§ 1.672(b), (c) and (g), 1.682(c), 1.683(b) and 1.688(b), transcripts of depositions under §§ 1.671(g) and 1.672(a) when a deposition is authorized by an administrative patent judge, transcripts of depositions under §§ 1.672(d), 1.682(d), 1.683(c) and 1.688(c), agreed statements under § 1.672(h), transcripts of interrogatories, cross-interrogatories, and recorded answers and copies of written interrogatories and answers and written requests for admissions and answers under § 1.688(a).
(b)
An affidavit shall be filed as set forth in § 1.677. A certified transcript of a deposition, including a deposition cross-examining an affiant, shall be filed as set forth in §§ 1.676, 1.677 and 1.678. An original agreed statement shall be filed as set forth in § 1.672(h).
(c)
In addition to the items specified in paragraph (b) of this section and within a time set by an administrative patent judge, each party shall file three copies and serve one copy of a record consisting of:
(1)
An index of the names of the witnesses for the party, giving the pages of the record where the direct testimony and cross-examination of each witnessbegins.
(2)
An index of exhibits briefly describing the nature of each exhibit and giving the page of the record where each exhibit is first identified and offered into evidence.
(3)
The count or counts.
(4)
Each affidavit by a witness for the party, transcript, including transcripts of cross-examination of any affiant who testified for the party and transcripts of compelled deposition testimony by a witness for the party, agreed statement relied upon by the party, and transcript of interrogatories, cross-interrogatories and recorded answers.
(5)
[Reserved]
(6)
Any evidence from another interference, proceeding, or action relied upon by the party under§ 1.683.
(7)
Each request for an admission and the admission and each written interrogatory and the answer upon which a party intends to rely under § 1.688.
(d)
The pages of the record shall be consecutively numbered to the extent possible.
(e)
The name of each witness shall appear at the top of each page of each affidavit or transcript.
(f)
[Reserved]
(g)
The record may be produced by standard typographical printing or by any other process capable of producing a clear black permanent image. All printed matter except on covers must appear in at least 11 point type on opaque, unglazed paper. Footnotes may not be printed in type smaller than 9 point. The page size shall be 21.8 by 27.9 cm. (8 1/2 by 11 inches) (letter size) with printed matter 16.5 by 24.1 cm. (6 1/2 by 9 1/2 inches). The record shall be bound with covers at their left edges in such manner as to lie flat when open to any page and in one or more volumes of convenient size (approximately 100 pages per volume is suggested). When there is more than one volume, the numbers of the pages contained in each volume shall appear at the top of the cover for each volume.
(h)
[Reserved]
(i)
Each party shall file its exhibits with the record specified in paragraph (c) of this section. Exhibits include documents and things identified in affidavits or on the record during the taking of oral depositions as well as official records and publications filed by the party under § 1.682(a). One copy of each documentary exhibit shall be served. Documentary exhibits shall be filed in an envelope or folder and shall not be bound as part of the record. Physical exhibits, if not filed by an officer under§ 1.676(d), shall be filed with the record. Each exhibit shall contain a label which identifies the party submitting the exhibit and an exhibit number, the style of the interference (e.g., Jones v. Smith), and the interference number. Where possible, the label should appear at the bottom right-hand corner of each documentary exhibit. Upon termination of an interference, an administrative patent judge may return an exhibit to the party filing the exhibit. When any exhibit is returned, an order shall be entered indicating that the exhibit has been returned.
(j)
Any testimony, record, or exhibit which does not comply with this section may be returned under § 1.618(a).

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a), (b), (c), (c)(1), (c)(4), (d), (g), & (i) revised, paras. (c)(5) (f) & (h) removed, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.654 Final hearing.

(a)
At an appropriate stage of the interference, the parties will be given an opportunity to appear before the Board to present oral argument at a final hearing. An administrative patent judge may set a date and time for final hearing. Unless otherwise ordered by an administrative patent judge or the Board, each party will be entitled to no more than 30 minutes of oral argument at final hearing. A party who does not file a brief for final hearing (§ 1.656(a)) shall not be entitled to appear at final hearing.
(b)
The opening argument of a junior party shall include a fair statement of the junior party's case and the junior party's position with respect to the case presented on behalf of any other party. A junior party may reserve a portion of its time for rebuttal.
(c)
A party shall not be entitled to argue that an opponent abandoned, suppressed, or concealed an actual reduction to practice unless a notice under § 1.632 was timely filed.
(d)
After final hearing, the interference shall be taken under advisement by the Board. No further paper shall be filed except under § 1.658(b) or as authorized by an administrative patent judge or the Board. No additional oral argument shall be had unless ordered by the Board.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a) & (d) revised, 60 FR 14488, Mar. 17, 1995, effective April 21, 1995]



1.655 Matters considered in rendering a final decision.

(a)
In rendering a final decision, the Board may consider any properly raised issue, including priority of invention, derivation by an opponent from a party who filed a preliminary statement under § 1.625, patentability of the invention, admissibility of evidence, any interlocutory matter deferred to final hearing, and any other matter necessary to resolve the interference. The Board may also consider whether entry of any interlocutory order was an abuse of discretion. All interlocutory orders shall be presumed to have been correct, and the burden of showing an abuse of discretion shall be on the party attacking the order. When two or more interlocutory orders involve the same issue, the last entered order shall be presumed to have been correct.
(b)
A party shall not be entitled to raise for consideration at final hearing any matter which properly could have been raised by a motion under § 1.633 or 1.634 unless the matter was properly raised in a motion that was timely filed by the party under § 1.633 or 1.634 and the motion was denied or deferred to final hearing, the matter was properly raised by the party in a timely filed opposition to a motion under § 1.633 or 1.634 and the motion was granted over the opposition or deferred to final hearing, or the party shows good cause why the issue was not properly raised by a timely filed motion or opposition. A party that fails to contest, by way of a timely filed preliminary motion under § 1.633(c), the designation of a claim as corresponding to a count, or fails to timely argue the separate patentability of a particular claim when the ground for unpatentability is first raised, may not subsequently argue to an administrative patent judge or the Board the separate patentability of claims designated to correspond to the count with respect to that ground.
(c)
In the interest of justice, the Board may exercise its discretion to consider an issue even though it would not otherwise be entitled to consideration under this section.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a) revised, 58 FR 49432, Sept. 23, 1993, effective Oct. 25, 1993; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.656 Briefs for final hearing.

(a)
Each party shall be entitled to file briefs for final hearing. The administrative patent judge shall determine the briefs needed and shall set the time and order for filing briefs.
(b)
The opening brief of a junior party shall contain under appropriate headings and in the order indicated:
(1)
A statement of interest indicating the full name of every party represented by the attorney in the interference and the name of the real party in interest if the party named in the caption is not the real party in interest.
(2)
A statement of related cases indicating whether the interference was previously before the Board for final hearing and the name and number of any related appeal or interference which is pending before, or which has been decided by, the Board, or which is pending before, or which has been decided by, the U.S. Court of Appeals for the Federal Circuit or a district court in a proceeding under 35 U.S.C. 146. A related appeal or interference is one which will directly affect or be directly affected by or have a bearing on the Board's decision in the pending interference.
(3)
A table of contents, with page references, and a table of cases (alphabetically arranged), statutes, and other authorities cited, with references to the pages of the brief where they are cited.
(4)
A statement of the issues presented for decision in the interference.
(5)
A statement of the facts, in numbered paragraphs, relevant to the issues presented for decision with appropriate references to the record.
(6)
An argument, which may be preceded by a summary, which shall contain the contentions of the party with respect to the issues it is raising for consideration at final hearing, and the reasons therefor, with citations to the cases, statutes, other authorities, and parts of the record relied on.
(7)
A short conclusion stating the precise relief requested.
(8)
An appendix containing a copy of the counts.
(c)
The opening brief of the senior party shall conform to the requirements of paragraph (b) of this section except:
(1)
A statement of the issues and of the facts need not be made unless the party is dissatisfied with the statement in the opening brief of the junior party and
(2)
An appendix containing a copy of the counts need not be included if the copy of the counts in the opening brief of the junior party is correct.
(d)
Unless ordered otherwise by an administrative patent judge, briefs shall be double-spaced (except for footnotes, which may be single-spaced) and shall comply with the requirements of § 1.653(g) for records except the requirement for binding.
(e)
An original and four copies of each brief must be filed.
(f)
Any brief which does not comply with the requirements of this section may be returned under§ 1.618(a).
(g)
Any party, separate from its opening brief, but filed concurrently therewith, may file an original and four copies of concise proposed findings of fact and conclusions of law. Any proposed findings of fact shall be in numbered paragraphs and shall be supported by specific references to the record. Any proposed conclusions of law shall be in numbered paragraphs and shall be supported by citation of cases, statutes, or other authority. Any opponent, separate from its opening or reply brief, but filed concurrently therewith, may file a paper accepting or objecting to any proposed findings of fact or conclusions of law; when objecting, a reason must be given. The Board may adopt the proposed findings of fact and conclusions of law in whole or in part.
(h)
If a party wants the Board in rendering its final decision to rule on the admissibility of any evidence, the party shall file with its opening brief an original and four copies of a motion (§ 1.635) to suppress the evidence. The provisions of § 1.637(b) do not apply to a motion to suppress under this paragraph. Any objection previously made to the admissibility of the evidence of an opponent is waived unless the motion required by this paragraph is filed. A party that failed to challenge the admissibility of the evidence of an opponent on a ground that could have been raised in a timely objection under § 1.672(c), 1.682(c), 1.683(b) or 1.688(b) may not move under this paragraph to suppress the evidence on that ground at final hearing. An original and four copies of an opposition to the motion may be filed with an opponent's opening brief or reply brief as may be appropriate.
(i)
When a junior party fails to timely file an opening brief, an order may issue requiring the junior party to show cause why the Board should not treat failure to file the brief as a concession of priority. If the junior party fails to show good cause within a time period set in the order, judgment may be entered against the junior party.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a), (b)(1)-(b)(8), (d), (e), (g), (h), & (i) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.657 Burden of proof as to date of invention.

(a)
A rebuttable presumption shall exist that, as to each count, the inventors made their invention in the chronological order of their effective filing dates. The burden of proof shall be upon a party who contends otherwise.
(b)
In an interference involving copending applications or involving a patent and an application having an effective filing date on or before the date the patent issued, a junior party shall have the burden of establishing priority by a preponderance of the evidence.
(c)
In an interference involving an application and a patent and where the effective filing date of the application is after the date the patent issued, a junior party shall have the burden of establishing priority by clear and convincing evidence.

[49 FR 48466, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.658 Final decision.

(a)
After final hearing, the Board shall enter a decision resolving the issues raised at final hearing. The decision may enter judgment, in whole or in part, remand the interference to an administrative patent judge for further proceedings, or take further action not inconsistent with law. A judgment as to a count shall state whether or not each party is entitled to a patent containing the claims in the party's patent or application which correspond to the count. When the Board enters a decision awarding judgment as to all counts, the decision shall be regarded as a final decision for the purpose of judicial review (35 U.S.C. 141-144, 146) unless a request for reconsideration under paragraph (b) of this section is timely filed.
(b)
Any request for reconsideration of a decision under paragraph (a) of this section shall be filed within one month after the date of the decision. The requestfor reconsideration shall specify with particularity the points believed to have been misapprehended or overlooked in rendering the decision. Any opposition to a request for reconsideration shall be filed within 14 days of the date of service of the request for reconsideration. Service of the request for reconsideration shall be by hand or Express Mail. The Board shall enter a decision on the request for reconsideration. If the Board shall be of the opinion that the decision on the request for reconsideration significantly modifies its original decision under paragraph (a) of this section, the Board may designate the decision on the request for reconsideration as a new decision. A decision on reconsideration is a final decision for the purpose of judicial review(35 U.S.C. 141-144, 146).
(c)
A judgment in an interference settles all issues which (1) were raised and decided in the interference, (2) could have been properly raised and decided in the interference by a motion under § 1.633 (a) through (d) and (f) through (j) or § 1.634, and (3) could have been properly raised and decided in an additional interference with a motion under § 1.633(e). A losing party who could have properly moved, but failed to move, under§ 1.633 or 1.634, shall be estopped to take ex parte or inter partes action in the Patent and Trademark Office after the interference which is inconsistent with that party's failure to properly move, except that a losing party shall not be estopped with respect to any claims which correspond, or properly could have corresponded, to a count as to which that party was awarded a favorable judgment.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b), 54 FR 29553, July 13, 1989, effective Aug. 20, 1989; paras. (a) & (b) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.659 Recommendation.

(a)
Should the Board have knowledge of any ground for rejecting any application claim not involved in the judgment of the interference, it may include in its decision a recommended rejection of the claim. Upon resumption of ex parte prosecution of the application, the examiner shall be bound by the recommendation and shall enter and maintain the recommended rejection unless an amendment or showing of facts not previously of record is filed which, in the opinion of the examiner, overcomes the recommended rejection.
(b)
Should the Board have knowledge of any ground for reexamination of a patent involved in the interference as to a patent claim not involved in the judgment of the interference, it may include in its decision a recommendation to the Commissioner that the patent be reexamined. The Commissioner will determine whether reexamination will be ordered.
(c)
The Board may make any other recommendation to the examiner or the Commissioner as may be appropriate.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985]



1.660 Notice of reexamination, reissue, protest, or litigation.

(a)
When a request for reexamination of a patent involved in an interference is filed, the patent owner shall notify the Board within 10 days of receiving notice that the request was filed.
(b)
When an application for reissue is filed by a patentee involved in an interference, the patentee shall notify the Board within 10 days of the day the application for reissue is filed.
(c)
When a protest under § 1.291 is filed against an application involved in an interference, the applicant shall notify the Board within 10 days of receiving notice that the protest was filed.
(d)
A party in an interference shall notify the Board promptly of any litigation related to any patent or application involved in an interference, including any civil action commenced under 35 U.S.C. 146.
(e)
The notice required by this section is designed to assist the administrative patent judge and the Board in efficiently handling interference cases. Failure of a party to comply with the provisions of this section may result in sanctions under § 1.616. Knowledge by, or notice to, an employee of the Office other than an employee of the Board, of the existence of the reexamination, application for reissue, protest, or litigation shall not be sufficient. The notice contemplated by this section is notice addressed to the administrative patent judge in charge of the interference in which the application or patent is involved.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. (e) added, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.661 Termination of interference after judgment.
After a final decision is entered by the Board, an interference is considered terminated when no appeal (35 U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken or had.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985]



1.662 Request for entry of adverse judgment; reissue filed by patentee.

(a)
A party may, at any time during an interference, request and agree to entry of an adverse judgment. The filing by a party of a written disclaimer of the invention defined by a count, concession of priority or unpatentability of the subject matter of a count, abandonment of the invention defined by a count, or abandonment of the contest as to a count will be treated as a request for entry of an adverse judgment against the applicant or patentee as to all claims which correspond to the count. Abandonment of an application, other than an application for reissue having a claim of the patent sought to be reissued involved in the interference, will be treated as a request for entry of an adverse judgment against the applicant as to all claims corresponding to all counts. Upon the filing by a party of a request for entry of an adverse judgment, the Board may enter judgment against the party.
(b)
If a patentee involved in an interference files an application for reissue during the interference and the reissue application does not include a claim that corresponds to a count, judgment may be entered against the patentee. A patentee who files an application for reissue which includes a claim that corresponds to a count shall, in addition to complying with the provisions of § 1.660(b), timely file a preliminary motion under§ 1.633(h) or show good cause why the motion could not have been timely filed or would not be appropriate.
(c)
The filing of a statutory disclaimer under35 U.S.C. 253 by a patentee will delete any statutorily disclaimed claims from being involved in the interference. A statutory disclaimer will not be treated as a request for entry of an adverse judgment against the patentee unless it results in the deletion of all patent claims corresponding to a count.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985; para. (b) amended, 53 FR 23735, June 23, 1988, effective Sept. 12, 1988; paras. (a) & (e) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.663 Status of claim of defeated applicant after interference.
Whenever an adverse judgment is entered as to a count against an applicant from which no appeal(35 U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken or had, the claims of the application corresponding to the count stand finally disposed of without further action by the examiner. Such claims are not open to further ex parte prosecution.

[49 FR 48467, Dec. 12, 1984, added effective Feb. 11, 1985]



1.664 Action after interference.

(a)
After termination of an interference, the examiner will promptly take such action in any application previously involved in the interference as may be necessary. Unless entered by order of an administrative patent judge, amendments presented during the interference shall not be entered, but may be subsequently presented by the applicant subject to the provisions of this subpart provided prosecution of the application is not otherwise closed.
(b)
After judgment, the application of any party may be held subject to further examination, including an interference with another application.

[49 FR 48467, Dec. 12, 1984; 50 FR 23124, May 31, 1985, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.665 Second interference.
A second interference between the same parties will not be declared upon an application not involved in an earlier interference for an invention defined by a count of the earlier interference. See § 1.658(c).

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985]



1.666 Filing of interference settlement agreements.

(a)
Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the interference, must be in writing and a true copy thereof must be filed before the termination of the interference (§ 1.661) as between the parties to the agreement or understanding.
(b)
If any party filing the agreement or understanding under paragraph (a) of this section so requests, the copy will be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person upon petition accompanied by the fee set forth in § 1.17(i) and on a showing of good cause.
(c)
Failure to file the copy of the agreement or understanding under paragraph (a) of this section will render permanently unenforceable such agreement or understanding and any patent of the parties involved in the interference or any patent subsequently issued on any application of the parties so involved. The Commissioner may, however, upon petition accompanied by the fee set forth in § 1.17(h) and on a showing of good cause for failure to file within the time prescribed, permit the filing of the agreement or understanding during the six month period subsequent to the termination of the interference as between the parties to the agreement or understanding.

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; para. (b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; amended 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995; paras. (a) & (b) amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]



1.671 Evidence must comply with rules.

(a)
Evidence consists of testimony and referenced exhibits, official records and publications filed under§ 1.682, testimony and referenced exhibits from another interference, proceeding, or action filed under § 1.683, discovery relied upon under § 1.688, and the specification (including claims) and drawings of any application or patent:
(1)
Involved in the interference.
(2)
To which a party has been accorded benefit in the notice declaring the interference or by a preliminary motion granted under § 1.633.
(3)
For which a party has sought, but has been denied, benefit by a preliminary motion under § 1.633.
(4)
For which benefit was rescinded by a preliminary motion granted under § 1.633.
(b)
Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to interference proceedings. Those portions of the Federal Rules of Evidence relating to criminal actions, juries, and other matters not relevant to interferences shall not apply.
(c)
Unless the context is otherwise clear, the following terms of the Federal Rules of Evidence shall be construed as follows:
(1)
Courts of the United States, U.S. Magistrate, court, trial court, or trier of fact means administrative patent judge or Board as may be appropriate.
(2)
Judge means administrative patent judge.
(3)
Judicial notice means official notice.
(4)
Civil action, civil proceeding, action, or trial mean interference.
(5)
Appellate court means United States Court of Appeals for the Federal Circuit or a United States district court when judicial review is under 35 U.S.C. 146.
(6)
Before the hearing in Rule 703 of the Federal Rules of Evidence means before giving testimony by affidavit or oral deposition.
(7)
The trial or hearing in Rules 803(24) and 804(5) of the Federal Rules of Evidence means the taking of testimony by affidavit or oral deposition.
(d)
Certification is not necessary as a condition to admissibility when the record is a record of the Patent and Trademark Office to which all parties have access.
(e)
A party may not rely on an affidavit (including any exhibits), patent or printed publication previously submitted by the party under § 1.639(b) unless a copy of the affidavit, patent or printed publication has been served and a written notice is filed prior to the close of the party's relevant testimony period stating that the party intends to rely on the affidavit, patent or printed publication. When proper notice is given under this paragraph, the affidavit, patent or printed publication shall be deemed as filed under § 1.640(b), 1.640(e)(3), 1.672(b) or 1.682(a), as appropriate.
(f)
The significance of documentary and other exhibits identified by a witness in an affidavit or during oral deposition shall be discussed with particularity by a witness.
(g)
A party must file a motion (§ 1.635) seeking permission from an administrative patent judge prior to compelling testimony or production of documents or things under 35 U.S.C. 24 or from an opposing party. The motion shall describe the general nature and the relevance of the testimony, document, or thing. If permission is granted, the party shall notice a deposition under § 1.673 and may proceed to take testimony.
(h)
A party must file a motion (§ 1.635) seeking permission from an administrative patent judge prior to compelling testimony or production of documents or things in a foreign country.
(1)
In the case of testimony, the motion shall:
(i)
Describe the general nature and relevance of the testimony;
(ii)
Identify the witness by name or title;
(iii)
Identify the foreign country and explain why the party believes the witness can be compelled to testify in the foreign country, including a description of the procedures that will be used to compel the testimony in the foreign country and an estimate of the time it is expected to take to obtain the testimony; and
(iv)
Demonstrate that the party has made reasonable efforts to secure the agreement of the witness to testify in the United States but has been unsuccessful in obtaining the agreement, even though the party has offered to pay the expenses of the witness to travel to and testify in the United States.
(2)
In the case of production of a document or thing, the motion shall:
(i)
Describe the general nature and relevance of the document or thing;
(ii)
Identify the foreign country and explain why the party believes production of the document or thing can be compelled in the foreign country, including a description of the procedures that will be used to compel production of the document or thing in the foreign country and an estimate of the time it is expected to take to obtain production of the document or thing; and
(iii)
Demonstrate that the party has made reasonable efforts to obtain the agreement of the individual or entity having possession, custody, or control of the document to produce the document or thing in the United States but has been unsuccessful in obtaining that agreement, even though the party has offered to pay the expenses of producing the document or thing in the United States.
(i)
Evidence which is not taken or sought and filed in accordance with this subpart shall not be admissible.
(j)
The weight to be given deposition testimony taken in a foreign country will be determined in view of all the circumstances, including the laws of the foreign country governing the testimony. Little, if any, weight may be given to deposition testimony taken in a foreign country unless the party taking the testimony proves by clear and convincing evidence, as a matter of fact, that knowingly giving false testimony in that country in connection with an interference proceeding in the United States Patent and Trademark Office is punishable under the laws of that country and that the punishment in that country for such false testimony is comparable to or greater than the punishment for perjury committed in the United States. The administrative patent judge and the Board, in determining foreign law, may consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence.

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; paras. (a), (c)(1), (c)(2), (c)(6), (c)(7), (e)-(j) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.672 Manner of taking testimony.

(a)
Unless testimony must be compelled under35 U.S.C. 24, compelled from a party, or compelled in a foreign country, testimony of a witness shall be taken by affidavit in accordance with this subpart. Testimony which must be compelled under 35 U.S.C. 24, compelled from a party, or compelled in a foreign country shall be taken by oral deposition.
(b)
A party presenting testimony of a witness by affidavit shall, within the time set by the administrative patent judge for serving affidavits, file a copy of the affidavit or, if appropriate, notice under § 1.671(e). If the affidavit relates to a party's case-in-chief, it shall be filed or noticed no later than the date set by an administrative patent judge for the party to file affidavits for its case-in-chief. If the affidavit relates to a party's case-in-rebuttal, it shall be filed or noticed no later than the date set by an administrative patent judge for the party to file affidavits for its case-in-rebuttal. A party shall not be entitled to rely on any document referred to in the affidavit unless a copy of the document is filed with the affidavit. A party shall not be entitled to rely on any thing mentioned in the affidavit unless the opponent is given reasonable access to the thing. A thing is something other than a document. The pages of affidavits filed under this paragraph and of any other testimony filed therewith under §§ 1.683(a) and 1.688(a) shall, to the extent possible, be given sequential numbers which shall also serve as the record page numbers for the affidavits and other testimony in the party's record to be filed under § 1.653. Exhibits identified in the affidavits or in any other testimony filed under §§ 1.683(a) and 1.688(a) and any official records and printed publica­ tions filed under § 1.682(a) shall, to the extent possible, be given sequential exhibit numbers, which shall also serve as the exhibit numbers when the exhibits are filed with the party's record. The affidavits, testimony filed under §§ 1.683(a) and 1.688(a) and exhibits shall be accompanied by an index of the names of the witnesses, giving the number of the page where the testimony of each witness begins, and by an index of the exhibits briefly describing the nature of each exhibit and giving the number of the page where each exhibit is first identified and offered into evidence.
(c)
If an opponent objects to the admissibility of any evidence contained in or submitted with an affidavit filed under paragraph (b) of this section, the opponent must, no later than the date set by the administrative patent judge for filing objections under this paragraph, file objections stating with particularity the nature of each objection. An opponent that fails to object to the admissibility of the evidence contained in or submitted with an affidavit on a ground that could have been raised in a timely objection under this paragraph will not be entitled to move under § 1.656(h) to suppress the evidence on that ground. If an opponent timely files objections, the party may, within 20 days of the due date for filing objections, file one or more supplemental affidavits, official records or printed publications to overcome the objections. No objection to the admissibility of the supplemental evidence shall be made, except as provided by § 1.656(h). The pages of supplemental affidavits filed under this paragraph shall, to the extent possible, be sequentially numbered beginning with the number following the last page number of the party's testimony submitted under paragraph (b) of this section. The page numbers assigned to the supplemental affidavits shall also serve as the record page numbers for the supplemental affidavits in the party's record filed under § 1.653. Additional exhibits identified in supplemental affidavits and any supplemental official records and printed publications shall, to the extent possible, be given sequential numbers beginning with the number following the last number of the exhibits submitted under paragraph (b) of this section. The exhibit numbers shall also serve as the exhibit numbers when the exhibits are filed with the party's record. The supplemental affidavits shall be accompanied by an index of the names of the witnesses and an index of exhibits of the type specified in paragraph (b) of this section.
(d)
After the time expires for filing objections and supplemental affidavits, or earlier when appropriate, the administrative patent judge shall set a time within which any opponent may file a request to cross-examine an affiant on oral deposition. If any opponent requests cross-examination of an affiant, the party shall notice a deposition at a reasonable location within the United States under § 1.673(e) for the purpose of cross-examination by any opponent. Any redirect and recross shall take place at the deposition. At any deposition for the purpose of cross-examination of a witness, the party shall not be entitled to rely on any document or thing not mentioned in one or more of the affidavits filed under paragraphs (b) and (c) of this section, except to the extent necessary to conduct proper redirect. The party who gives notice of a deposition shall be responsible for providing a translator if the witness does not testify in English, for obtaining a court reporter, and for filing a certified transcript of the deposition as required by§ 1.676. Within 45 days of the close of the period for taking cross-examination, the party shall serve (but not file) a copy of each transcript on each opponent together with copies of any additional documentary exhibits identified by the witness during the deposition. The pages of the transcripts served under this paragraph shall, to the extent possible, be sequentially numbered beginning with the number following the last page number of the party's supplemental affidavits submitted under paragraph (c) of this section. The numbers assigned to the transcript pages shall also serve as the record page numbers for the transcripts in the party's record filed under § 1.653. Additional exhibits identified in the transcripts, shall, to the extent possible, be given sequential numbers beginning with the number following the last number of the exhibits submitted under paragraphs (b) and (c) of this section. The exhibit numbers assigned to the additional exhibits shall also serve as the exhibit numbers when those exhibits are filed with the party's record. The deposition transcripts shall be accompanied by an index of the names of the witnesses, giving the number of the page where cross-examination, redirect and recross of each witness begins, and an index of exhibits of the type specified in paragraph (b) of this section.
(e)
[Reserved]
(f)
When a deposition is authorized to be taken within the United States under this subpart and if the parties agree in writing, the deposition may be taken in any place within the United States, before any person authorized to administer oaths, upon any notice, and in any manner, and when so taken may be used like other depositions.
(g)
If the parties agree in writing, the affidavit testimony of any witness may be submitted without opportunity for cross-examination.
(h)
If the parties agree in writing, testimony may be submitted in the form of an agreed statement setting forth how a particular witness would testify, if called, or the facts in the case of one or more of the parties. The agreed statement shall be filed in the Patent and Trademark Office. See § 1.653(a).
(i)
In an unusual circumstance and upon a showing that testimony cannot be taken in accordance with the provisions of this subpart, an administrative patent judge upon motion (§ 1.635) may authorize testimony to be taken in another manner.

[49 FR 48468, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.673 Notice of examination of witness.

(a)
A party authorized to take testimony of a witness by deposition shall, after complying with para­graphs (b) and (g) of this section, file and serve a single notice of deposition stating the time and place of each deposition to be taken. Depositions to be taken in the United States may be noticed for a reasonable time and place in the United States. A deposition may not be noticed for any other place without approval of an administrative patent judge. The notice shall specify the name and address of each witness and the general nature of the testimony to be given by the witness. If the name of a witness is not known, a general description sufficient to identify the witness or a particular class or group to which the witness belongs may be given instead.
(b)
Unless the parties agree or an administrative patent judge or the Board determine otherwise, a party shall serve, but not file, at least three working days prior to the conference required by paragraph (g) of this section, if service is made by hand or Express Mail, or at least 14 days prior to the conference if service is made by any other means, the following:
(1)
A list and copy of each document in the party's possession, custody, or control and upon which the party intends to rely at any deposition and
(2)
A list of and a proffer of reasonable access to things in the party's possession, custody, or control and upon which the party intends to rely at any deposition.
(c)
A party shall not be permitted to rely on any witness not listed in the notice, or any document not served or any thing not listed as required by paragraph (b) of this section:
(1)
Unless all opponents agree in writing or on the record to permit the party to rely on the witness, document or thing, or
(2)
Except upon a motion (§ 1.635) promptly filed which is accompanied by any proposed notice, additional documents, or lists and which shows good cause why the notice, documents, or lists were not served in accordance with this section.
(d)
Each opponent shall have a full opportunity to attend a deposition and cross-examine.
(e)
A party who has presented testimony by affidavit and is required to notice depositions for the purpose of cross-examination under § 1.672(b), shall, after complying with paragraph (g) of this section, file and serve a single notice of deposition stating the time and place of each cross-examination deposition to be taken.
(f)
The parties shall not take depositions in more than one place at the same time or so nearly at the same time that reasonable opportunity to travel from one place of deposition to another cannot be had.
(g)
Before serving a notice of deposition and after complying with paragraph (b) of this section, a party shall have an oral conference with all opponents to attempt to agree on a mutually acceptable time and place for conducting the deposition. A certificate shall appear inthe notice stating that the oral conference took place or explaining why the conference could not be had. If the parties cannot agree to a mutually acceptable place and time for conducting the deposition at the conference, the parties shall contact an administrative patent judge who shall then designate the time and place for conducting the deposition.
(h)
A copy of the notice of deposition shall be attached to the certified transcript of the deposition filed under § 1.676(a).

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (a)-(e) & (g) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.674 Persons before whom depositions may be taken.

(a)
A deposition shall be taken before an officer authorized to administer oaths by the laws of the United States or of the place where the examination is held.
(b)
Unless the parties agree in writing, the following persons shall not be competent to serve as an officer:
(1)
A relative or employee of a party,
(2)
a relative or employee of an attorney or agent of a party, or
(3)
a person interested, directly or indirectly, in the interference either as counsel, attorney, agent, or otherwise.

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; para. (a) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.675 Examination of witness, reading and signing transcript of deposition.

(a)
Each witness before giving an oral deposition shall be duly sworn according to law by the officer before whom the deposition is to be taken.
(b)
The testimony shall be taken in answer to interrogatories with any questions and answers recorded in their regular order by the officer or by some other person, who shall be subject to the provisions of § 1.674(b), in the presence of the officer unless the presence of the officer is waived on the record by agreement of all parties.
(c)
All objections made at the time of the deposition to the qualifications of the officer taking the deposition, the manner of taking it, the evidence presented, the conduct of any party, and any other objection to the proceeding shall be noted on the record by the officer. Evidence objected to shall be taken subject to any objection.
(d)
Unless the parties agree in writing or waive reading and signature by the witness on the record at the deposition, when the testimony has been transcribed a transcript of the deposition shall, unless the witness refuses to read and/or sign the transcript of the deposition, be read by the witness and then signed by the witness in the form of:
(1)
An affidavit in the presence of any notary or
(2)
A declaration.

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; para. (d) revised, 60 FR 14488, Mar 17, 1995, effective Apr. 21, 1995]



1.676 Certification and filing by officer, marking exhibits.

(a)
The officer shall prepare a certified transcript of the deposition by attaching to a transcript of the deposition a copy of the notice of deposition, any exhibits to be annexed to the certified transcript, and a certificate signed and sealed by the officer and showing:
(1)
The witness was duly sworn by the officer before commencement of testimony by the witness.
(2)
The transcript is a true record of the testimony given by the witness.
(3)
The name of the person by whom the testimony was recorded and, if not recorded by the officer, whether the testimony was recorded in the presence of the officer.
(4)
The presence or absence of any opponent.
(5)
The place where the deposition was taken and the day and hour when the deposition began and ended.
(6)
The officer is not disqualified under § 1.674.
(b)
If the parties waived any of the requirements of paragraph (a) of this section, the certificate shall so state.
(c)
The officer shall note on the certificate the circumstances under which a witness refuses to sign a transcript.
(d)
Unless the parties agree otherwise in writing or on the record at the deposition, the officer shall securely seal the certified transcript in an envelope endorsed with the style of the interference (e.g., Smith v. Jones), the interference number, the name of the witness, and the date of sealing and shall promptly forward the envelope to BOX INTERFERENCE, Commissioner of Patents and Trademarks, Washington, D.C. 20231. Documents and things produced for inspection during the examination of a witness, shall, upon request of a party, be marked for identification and annexed to the certified transcript, and may be inspected and copied by any party, except that if the person producing the documents and things desires to retain them, the person may: (1) Offer copies to be marked for identification and annexed to the certified transcript and to serve thereafter as originals if the person affords to all parties fair opportunity to verify the copies by comparison with the originals or (2) Offer the originals to be marked for identification, after giving each party an opportunity to inspect and copy them, in which event the documents and things may be used in the same manner as if annexed to the certified transcript. The exhibits shall then be filed as specified in § 1.653(i). If the weight or bulk of a document or thing shall reasonably prevent the document or thing from being annexed to the certified transcript, it shall, unless waived on the record at the deposition of all parties, be authenticated by the officer and forwarded to the Commissioner in a separate package marked and addressed as provided in this paragraph.

[49 FR 48469, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; para. (a)(4) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.677 Form of an affidavit or a transcript of deposition.

(a)
An affidavit or a transcript of a deposition must be on opaque, unglazed, durable paper approximately 21.8 by 27.9 cm. (8 1/2 by 11 inches) in size (letter size). The printed matter shall be double-spaced on one side of the paper in not smaller than 11 point type with a margin of 3.8 cm. (1 1/2 inches) on the left-hand side of the page. The pages of each transcript must be consecutively numbered and the name of the witness shall appear at the top of each page (§ 1.653(e)). In transcripts of depositions, the questions propounded to each witness must be consecutively numbered unless paper with numbered lines is used and each question must be followed by its answer.
(b)
Exhibits must be numbered consecutively to the extent possible and each must be marked as required by § 1.653(i).

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.678 Time for filing transcript of deposition.
Unless otherwise ordered by an administrative patent judge, a certified transcript of a deposition must be filed in the Patent and Trademark Office within one month after the date of deposition. If a party refuses to file a certified transcript, the administrative patent judge or the Board may take appropriate action under § 1.616. If a party refuses to file a certified transcript, any opponent may move for leave to file the certified transcript and include a copy of the transcript as part of the opponent's record.

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.679 Inspection of transcript.
A certified transcript of a deposition filed in the Patent and Trademark Office may be inspected by any party. The certified transcript may not be removed from the Patent and Trademark Office unless authorized by an administrative patent judge upon such terms as may be appropriate.

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.682 Official records and printed publications.

(a)
A party may introduce into evidence, if otherwise admissible, an official record or printed publication not identified in an affidavit or on the record during an oral deposition of a witness, by filing a copy of the official record or printed publication or, if appropriate, a notice under § 1.671(e). If the official record or printed publication relates to the party's case-in-chief, it shall be filed or noticed together with any affidavits filed by the party under § 1.672(b) for its case-in-chief or, if the party does not serve any affidavits under§ 1.672(b) for its case-in-chief, no later than the date set by an administrative patent judge for the party to file affidavits under § 1.672(b) for its case-in-chief. If the official record or printed publication relates to rebuttal, it shall be filed or noticed together with any affidavits filed by the party under § 1.672(b) for the its case-in-rebuttal or, if the party does not file any affidavits under§ 1.672(b) for its case-in-rebuttal, no later than the date set by an administrative patent judge for the party to file affidavits under § 1.672(b) for its case-in-rebuttal. Official records and printed publications filed under this paragraph shall be assigned sequential exhibit numbers by the party in the manner set forth in § 1.672(b). The official record and printed publications shall be accompanied by a paper which shall:
(1)
Identify the official record or printed publication;
(2)
Identify the portion thereof to be introduced in evidence; and
(3)
Indicate generally the relevance of the portion sought to be introduced in evidence.
(b)
[Reserved]
(c)
Unless otherwise ordered by an administrative patent judge, any written objection by an opponent to the paper or to the admissibility of the official record or printed publication shall be filed no later than the date set by the administrative patent judge for the opponent to file objections under § 1.672(c) to affidavits submitted by the party under § 1.672(b). An opponent who fails to object to the admissibility of the official record or printed publication on a ground that could have been raised in a timely objection under this paragraph will not be entitled to move under § 1.656(h) to suppress the evidence on that ground. If an opponent timely files an objection, the party may respond by filing one or more supplemental affidavits, official records or printed publications, which must be filed together with any supplemental evidence filed by the party under§ 1.672(c) or, if the party does not file any supplemental evidence under § 1.672(c), no later than the date set by an administrative patent judge for the party to file supplemental affidavits under § 1.672(c). No objection to the admissibility of the supplemental evidence shall be made, except as provided by § 1.656(h). The pages of supplemental affidavits and the exhibits filed under this section shall be sequentially numbered by the party in the manner set forth in § 1.672(c). The supplemental affidavits and exhibits shall be accompanied by an index of witnesses and an index of exhibits of the type required by § 1.672(b).
(d)
Any request by an opponent to cross-examine on oral deposition the affiant of a supplemental affidavit submitted under paragraph (c) of this section shall be filed no later than the date set by the administrative patent judge for the opponent to file a request to cross-examine an affiant with respect to an affidavit served by the party under § 1.672(b) or (c). If any opponent requests cross-examination of an affiant, the party shall file notice of a deposition for a reasonable location within the United States under § 1.673(e) for the purpose of cross-examination by any opponent. Any redirect and recross shall take place at the deposition. At any deposition for the purpose of cross-examination of a witness, the party shall not be entitled to rely on any document or thing not mentioned in one or more of the affidavits filed under this paragraph, except to the extent necessary to conduct proper redirect. The party who gives notice of a deposition shall be responsible for providing a translator if the witness does not testify in English, for obtaining a court reporter, and for filing a certified transcript of the deposition as required by § 1.676. Within 45 days of the close of the period for taking cross-examination, the party shall serve (but not file) a copy of each deposition transcript on each opponent together with copies of any additional documentary exhibits identified by the witness during the deposition. The pages of deposition transcripts and exhibits served under this paragraph shall be sequentially numbered by the party in the manner set forth in § 1.672(d). The deposition transcripts shall be accompanied by an index of the names of the witnesses, giving the number of the page where cross-examination, redirect and recross of each witness begins, and an index of exhibits of the type specified in § 1.672(b).

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.683 Testimony in another interference, proceeding, or action.

(a)
A party may introduce into evidence, if otherwise admissible, testimony by affidavit or oral deposition and referenced exhibits from another interference, proceeding, or action involving the same parties by filing a copy of the affidavit or a copy of the transcript of the oral deposition and the referenced exhibits. If the testimony and referenced exhibits relate to the party's case-in-chief, they shall be filed together with any affidavits served by the party under § 1.672(b) for its case-in-chief or, if the party does not file any affidavits under § 1.672(b) for its case-in-chief, no later than the date set by an administrative patent judge for the party to file affidavits under § 1.672(b) for its case-in-chief. If the testimony and referenced exhibits relate to rebuttal, they shall be filed together with any affidavits served by the party under § 1.672(b) for its case-in-rebuttal or, if the party does not file any affidavits under § 1.672(b) for its case-in-rebuttal, no later than the date set by an administrative patent judge for the party to file affidavits under § 1.672(b) for its case-in-rebuttal. Pages of affidavits and deposition transcripts served under this paragraph and any new exhibits served therewith shall be assigned sequential numbers by the party in the manner set forth in § 1.672(b). The testimony shall be accompanied by a paper which specifies with particularity the exact testimony to be used and demonstrates its relevance.
(b)
Unless otherwise ordered by an administrative patent judge, any written objection by an opponent to the paper or the admissibility of the testimony and referenced exhibits filed under this section shall be filed no later than the date set by the administrative patent judge for the opponent to file any objections under§ 1.672(c) to affidavits submitted by the party under§ 1.672(b). An opponent who fails to challenge the admissibility of the testimony or referenced exhibits on a ground that could have been raised in a timely objection under this paragraph will not be entitled to move under§ 1.656(h) to suppress the evidence on that ground. If an opponent timely files an objection, the party may respond with one or more supplemental affidavits, official records or printed publications, which must be filed together with any supplemental evidence filed by the party under § 1.672(c) or, if the party does not file any supplemental evidence under § 1.672(c), no later than the date set by an administrative patent judge for the party to file supplemental evidence under § 1.672(c). No objection to the admissibility of the evidence contained in or submitted with a supplemental affidavit shall be made, except as provided by § 1.656(h). The pages of supplemental affidavits and the exhibits filed under this section shall be sequentially numbered by the party in the manner set forth in § 1.672(c). The supplemental affidavits and exhibits shall be accompanied by an index of witnesses and an index of exhibits of the type required by § 1.672(b).
(c)
Any request by an opponent to cross-examine on oral deposition the affiant of an affidavit or supplemental affidavit submitted under paragraph (a) or (b) of this section shall be filed no later than the date set by the administrative patent judge for the opponent to file a request to cross-examine an affiant with respect to an affidavit filed by the party under § 1.672(b) or (c). If any opponent requests cross-examination of an affiant, the party shall file a notice of deposition for a reasonable location within the United States under § 1.673(e) for the purpose of cross-examination by any opponent. Any redirect and recross shall take place at the deposition. At any deposition for the purpose of cross-examination of a witness, the party shall not be entitled to rely on any document or thing not mentioned in one or more of the affidavits filed under this paragraph, except to the extent necessary to conduct proper redirect. The party who gives notice of a deposition shall be responsible for providing a translator if the witness does not testify in English, for obtaining a court reporter, and for filing a certified transcript of the deposition as required by § 1.676. Within 45 days of the close of the period for taking cross-examination, the party shall serve (but not file) a copy of each deposition transcript on each opponent together with copies of any additional documentary exhibits identified by the witness during the deposition. The pages of deposition transcripts and exhibits served under this paragraph shall be sequentially numbered by the party in the manner set forth in§ 1.672(d). The deposition transcripts shall be accompanied by an index of the names of the witnesses, giving the number of the page where cross-examination, redirect and recross of each witness begins, and an index of exhibits of the type specified in § 1.672(b).

[49 FR 48470, Dec. 12, 1984, added effective Feb. 11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.684 [Reserved]

1.685 Errors and irregularities in depositions.

(a)
An error in a notice for taking a deposition is waived unless a motion (§ 1.635) to quash the notice is filed as soon as the error is, or could have been, discovered.
(b)
An objection to a qualification of an officer taking a deposition is waived unless:
(1)
The objection is made on the record of the deposition before a witness begins to testify.
(2)
If discovered after the deposition, a motion(§ 1.635) to suppress the deposition is filed as soon as the objection is, or could have been, discovered.
(c)
An error or irregularity in the manner in which testimony is transcribed, a certified transcript is signed by a witness, or a certified transcript is prepared, signed, certified, sealed, endorsed, forwarded, filed, or otherwise handled by the officer is waived unless a motion(§ 1.635) to suppress the deposition is filed as soon as the error of irregularity is, or could have been, discovered.
(d)
An objection to the deposition on any grounds, such as the competency of a witness, admissibility of evidence, manner of taking the deposition, the form of questions and answers, any oath or affirmation, or conduct of any party at the deposition, is waived unless an objection is made on the record at the deposition stating the specific ground of objection. Any objection which a party wishes considered by the Board at final hearing shall be included in a motion to suppress under§ 1.656(h).
(e)
Nothing in this section precludes taking notice of plain errors affecting substantial rights although they were not brought to the attention of an administrative patent judge or the Board.

[49FR 48471, Dec. 12, 1984, added effective Feb. 11, 1985; 50 FR 23124, May 31, 1985; amended, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.687 Additional discovery.

(a)
A party is not entitled to discovery except as authorized in this subpart.
(b)
Where appropriate, a party may obtain production of documents and things during cross-examination of an opponent's witness or during the testimony period of the party's case-in-rebuttal.
(c)
Upon a motion (§ 1.635) brought by a party within the time set by an administrative patent judge under § 1.651 or thereafter as authorized by § 1.645 and upon a showing that the interest of justice so requires, an administrative patent judge may order additional discovery, as to matters under the control of a party within the scope of the Federal Rules of Civil Procedure, specifying the terms and conditions of such additional discovery. See § 1.647 concerning translations of documents in a foreign language.
(d)
The parties may agree to discovery among themselves at any time. In the absence of an agreement, a motion for additional discovery shall not be filed except as authorized by this subpart.

[49 FR 48471, Dec. 12, 1984, added effective Feb. 11, 1985; paras. (d) & (e) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.688 Use of discovery.

(a)
If otherwise admissible, a party may introduce into evidence an answer to a written request for an admission or an answer to a written interrogatory obtained by discovery under § 1.687 by filing a copy of the request for admission or the written interrogatory and the answer. If the answer relates to a party's case-in-chief, the answer shall be served together with any affidavits served by the party under § 1.672(b) for its case-in-chief or, if the party does not serve any affidavits under § 1.672(b) for its case-in-chief, no later than the date set by an administrative patent judge for the party to serve affidavits under § 1.672(b) for its case-in-chief. If the answer relates to the party's rebuttal, the answer shall be served together with any affidavits served by the party under § 1.672(b) for its case-in-rebuttal or, if the party does not serve any affidavits under § 1.672(b) for its case-in-rebuttal, no later than the date set by an administrative patent judge for the party to serve affidavits under § 1.672(b) for its case-in-rebuttal.
(b)
Unless otherwise ordered by an administrative patent judge, any written objection to the admissibility of an answer shall be filed no later than the date set by the administrative patent judge for the opponent to file any objections under § 1.672(c) to affidavits submitted by the party under § 1.672(b). An opponent who fails to challenge the admissibility of an answer on a ground that could have been raised in a timely objection under this paragraph will not be entitled to move under § 1.656(h) to suppress the evidence on that ground. If an opponent timely files an objection, the party may respond with one or more supplemental affidavits, which must be filed together with any supplemental evidence filed by the party under § 1.672(c) or, if the party does not file any supplemental evidence under § 1.672(c), no later than the date set by an administrative patent judge for the party to file supplemental affidavits under § 1.672(c). No objection to the admissibility of the evidence contained in or submitted with a supplemental affidavit shall be made, except as provided by § 1.656(h). The pages of supplemental affidavits and the exhibits filed under this section shall be sequentially numbered by the party in the manner set forth in § 1.672(c). The supplemental affidavits and exhibits shall be accompanied by an index of witnesses and an index of exhibits of the type required by § 1.672(b).
(c)
Any request by an opponent to cross-examine on oral deposition the affiant of a supplemental affidavit submitted under paragraph (b) of this section shall be filed no later than the date set by the administrative patent judge for the opponent to file a request to cross-examine an affiant with respect to an affidavit filed by the party under § 1.672(b) or (c). If any opponent requests cross-examination of an affiant, the party shall file a notice of deposition for a reasonable location within the United States under § 1.673(e) for the purpose of cross-examination by any opponent. Any redirect and recross shall take place at the deposition. At any deposition for the purpose of cross-examination of a witness, the party shall not be entitled to rely on any document or thing not mentioned in one or more of the affidavits filed under this paragraph, except to the extent necessary to conduct proper redirect. The party who gives notice of a deposition shall be responsible for providing a translator if the witness does not testify in English, for obtaining a court reporter, and for filing a certified transcript of the deposition as required by § 1.676. Within 45 days of the close of the period for taking cross-examination, the party shall serve (but not file) a copy of each deposition transcript on each opponent together with copies of any additional documentary exhibits identified by the witness during the deposition. The pages of deposition transcripts and exhibits served under this paragraph shall be sequentially numbered by the party in the manner set forth in§ 1.672(d). The deposition transcripts shall be accompanied by an index of the names of the witnesses, giving the number of the page where cross-examination, redirect and recross of each witness begins, and an index of exhibits of the type specified in § 1.672(b).
(d)
A party may not rely upon any other matter obtained by discovery unless it is introduced into evidence under this subpart.

[49 FR 48471, Dec. 12, 1984, added effective Feb.11, 1985; revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]



1.690 Arbitration of interferences.

(a)
Parties to a patent interference may determine the interference or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of Title 9, United States Code. The parties must notify the Board in writing of their intention to arbitrate. An agreement to arbitrate must be in writing, specify the issues to be arbitrated, the name of the arbitrator or a date not more than thirty (30) days after the execution of the agreement for the selection of the arbitrator, and provide that the arbitrator's award shall be binding on the parties and that judgment thereon can be entered by the Board. A copy of the agreement must be filed within twenty (20) days after its execution. The parties shall be solely responsible for the selection of the arbitrator and the rules for conducting proceedings before the arbitrator. Issues not disposed of by the arbitration will be resolved in accordance with the procedures established in this subpart, as determined by the administrative patent judge.
(b)
An arbitration proceeding under this section shall be conducted within such time as may be authorized on a case-by-case basis by an administrative patent judge.
(c)
An arbitration award will be given no consideration unless it is binding on the parties, is in writing and states in a clear and definite manner the issue or issues arbitrated and the disposition of each issue The award may include a statement of the grounds and reasoning in support thereof. Unless otherwise ordered by an administrative patent judge, the parties shall give notice to the Board of an arbitration award by filing within twenty (20) days from the date of the award a copy of the award signed by the arbitrator or arbitrators. When an award is timely filed, the award shall, as to the parties to the arbitration, be dispositive of the issue or issues to which it relates.
(d)
An arbitration award shall not preclude the Office from determining patentability of any invention involved in the interference.

[Added, 52 FR 13838, Apr. 27, 1987; paras. (a)-(c) revised, 60 FR 14488, Mar. 17, 1995, effective Apr. 21, 1995]

F Extension of Patent Term

1.701 Extension of patent term due to prosecution delay.

(a)
A patent, other than for designs, issued on an application filed on or after June 8, 1995, is entitled to extension of the patent term if the issuance of the patent was delayed due to:
(1)
Interference proceedings under 35 U.S.C. 135(a); and/or
(2)
The application being placed under a secrecy order under 35 U.S.C. 181; and/or
(3)
Appellate review by the Board of Patent Appeals and Interferences or by a Federal court under 35 U.S.C. 141 or 145, if the patent was issued pursuant to a decision 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.
(b)
The term of a patent entitled to extension under paragraph (a) of this section shall be extended for the sum of the periods of delay calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, to the extent that these periods are not overlapping, up to a maximum of five years. The extension will run from the expiration date of the patent.
(c)
 
(1)
The period of delay under paragraph (a)(1) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
(i)
With respect to each interference in which the application was involved, the number of days, if any, in the period beginning on the date the interference was declared or redeclared to involve the application in the interference and ending on the date that the interference was terminated with respect to the application; and
(ii)
The number of days, if any, in the period beginning on the date prosecution in the application was suspended by the Patent and Trademark Office due to interference proceedings under 35 U.S.C. 135(a) not involving the application and ending on the date of the termination of the suspension.
(2)
The period of delay under paragraph (a)(2) of this section for an application is the sum of the following periods, to the extent that the periods are not overlapping:
(i)
The number of days, if any, the application was maintained in a sealed condition under 35 U.S.C. 181;
(ii)
The number of days, if any, in the period beginning on the date of mailing of an examiner's answer under § 1.193 in the application under secrecy order and ending on the date the secrecy order and any renewal thereof was removed;
(iii)
The member of days, if any, in the period beginning on the date applicant was notified that an interference would be declared but for the secrecy order and ending on the date the secrecy order and any renewal thereof was removed; and
(iv)
The number of days, if any, in the period beginning on the date of notification under § 5.3(c) and ending on the date of mailing of the notice of allowance under § 1.311.
(3)
The period of delay under paragraph (a)(3) of this section is the sum of the number of days, if any, in the period beginning on the date on which an appeal to the Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and ending on the date of a final decision in favor of the applicant by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
(d)
The period of delay set forth in paragraph (c)(3) shall be reduced by:
(1)
Any time during the period of appellate review that occurred before three years from the filing of the first national application for patent presented for examination; and
(2)
Any time during the period of appellate review, as determined by the Commissioner, during which the applicant for patent did not act with due diligence. In determining the due diligence of an applicant, the Commissioner 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.

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]



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 --   
(l)
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.

[Added 52 FR 9394, Mar. 24, 1987, effective May 26, 1987; amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]



1.720 Conditions for extension of patent term.
The term of a patent may be extended if:

(a)
The patent claims a product or a method of using or manufacturing a product as defined in § 1.710;
(b)
The term of the patent has never been previously extended except for any interim extension issued pursuant to § l.760;
(c)
An application for extension is submitted in compliance with § 1.740;
(d)
The product has been subject to a regulatory review period as defined in 35 U.S.C. 156(g) before its commercial marketing or use;
(e)
The product has received permission for commercial marketing or use and --
(1)
The permission for the commercial marketing or use of the product is the first received permission for commercial marketing or use under the provision of law under which the applicable regulatory review occurred, or
(2)
In the case of a patent other than one directed to subject matter within § 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 has not expired before the submission of an application in compliance with§ 1.741; and
(h)
No other patent term has been extended for the same regulatory review period for the product.

[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; paras. (e) & (f) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]



1.730 Applicant for extension of patent term.
Any application for extension of a patent term must be submitted by the owner of record of the patent or its agent and must comply with the requirements of § 1.740.

[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987]



1.740 Application for extension of patent term.

(a)
An application for extension of patent term must be made in writing to the Commissioner of Patents and Trademarks. A formal application for the extension of patent term shall include:
(1)
A complete identification of the approved product as by appropriate chemical and generic name, physical structure or characteristics;
(2)
A complete identification of the Federal statute including the applicable provision of law under which the regulatory review occurred;
(3)
An identification of the date on which the product received permission for commercial marketing or use under the provision of law under which the applicable regulatory review period occurred;
(4)
In the case of a drug product, an identification of each active ingredient in the product and as to each active ingredient, a statement that it has not been previously approved for commercial marketing or use under the Federal Food, Drug, and Cosmetic Act, the Public Health Service Act, or the Virus-Serum-Toxin Act, or a statement of when the active ingredient was approved for commercial marketing or use (either alone or in combination with other active ingredients), the use for which it was approved, and the provision of law under which it was approved.
(5)
A statement that the application is being submitted within the sixty day period permitted for submission pursuant to § l.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 each applicable patent claim reads on the approved product or method of using or 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, the effective date of the investigational new drug (IND) application and the IND number; 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 the date on which the NDA was approved or the Product License issued;
(ii)
For a patent claiming a new animal drug, the date a major health or environmental effects test on the drug was initiated and any available substantiation of the 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; the date on which a new animal drug application (NADA) was initially submitted and the NADA number; and the date on which the NADA was approved;
(iii)
For a patent claiming a veterinary biological product, the date the authority to prepare an experimental biological product under the Virus-Serum-Toxin Act became effective; the date an application for a license was submitted under the Virus-Serum-Toxin Act; and the date the license issued;
(iv)
For a patent claiming a food or color additive, the date a major health or environmental effects test on the additive was initiated and any available substantiation of that date; 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 the date on which the FDA published a Federal Register notice listing the additive for use;
(v)
For a patent claiming a medical device, 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; 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 or protocol; and 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 Commissioner of Patents and Trademarks and the Secretary of Health and Human Services or the Secretary of Agriculture any information which is material to the determination of entitlement to the extension sought (see § 1.765);
(14)
The prescribed fee for receiving and acting upon the application for extension (see § 1.20(j));
(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;
(16)
A duplicate of the application papers, certified as such; and
(17)
An oath or declaration as set forth in paragraph (b) of this section.
(b)
Any oath or declaration submitted in compliance with paragraph (a) of this section must be signed by the owner of record of the patent or its agent, specifically identify the papers and the patent for which an extension is sought and aver that the person signing the oath or declaration:
(l)
Is the owner, an official of a corporate owner authorized to obligate the corporation, or a patent attorney or agent authorized to practice before the Patent and Trademark Office and who has general authority from the owner to act on behalf of the owner in patent matters.
(2)
Has reviewed and understands the contents of the application being submitted pursuant to this section;
(3)
Believes the patent is subject to extension pursuant to § 1.710;
(4)
Believes an extension of the length claimed is justified under 35 U.S.C. 156 and the applicable regulations; and
(5)
Believes the patent for which the extension is being sought meets the conditions for extension of the term of a patent as set forth in § 1.720.
(c)
If any application for extension of patent term submitted pursuant to this section is held to be informal, applicant may seek to have that holding reviewed by filing a petition with the required fee, as necessary, pursuant to § 1.181, § l.182 or § l.183, as appropriate, within such time as may be set in the notice that the application has been held to be informal, or if no time is set, within one month of the date on which the application was held informal. The time periods set forth herein are subject to the provisions of 37 CFR 1.136.

[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 1987; para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a)(14), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991]



1.741 Filing date of application.

(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 Patent and Trademark Office or filed pursuant to the “Certificate of Mailing or Transmission” procedures of 37 CFR 1.8 or “Express Mail” provisions of 37 CFR 1.10. A complete application shall 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 Commissioner to determine under 35 U.S.C. 156 subsections (a) and (b) the eligibility of a patent for extension and the rights that will be derived from the extension and information to enable the Commissioner and the Secretary of Health and Human Services or the Secretary of Agriculture to determine the length of the regulatory review period; and
(6)
A brief description of the activities undertaken by the marketing applicant during the applicable regulatory review period with respect to the approved product and the significant dates applicable to such activities.
(b)
If any application submitted pursuant to this section is held to be incomplete, applicant may seek to have this holding reviewed under § 1.181.

[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a) amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a) correcting amendment, 61 FR 64027, Dec. 3, 1996]



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 Commissioner solely on the basis of the representations contained in the application for extension filed in compliance with § 1.740 or§ 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 Commissioner 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 with § 1.740, a notice will be mailed to applicant containing the determination as to the eligibility of the patent for extension and the period of time of the extension, if any. This notice shall constitute the final determination as to the eligibility and any period of extension of the patent. A single request for reconsideration of a final determination may be made if filed by the applicant within such time as may be set in the notice of final determination or, if no time is set, within one month from the date of the final determination. The time periods set forth herein are subject to the provisions of § 1.136.

[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]



1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
An applicant who has filed a formal application for extension in compliance with § 1.740 may request one or more interim extensions for periods of up to one year each pending a final determination on the application pursuant to § 1.750. Any such request should be filed at least three months prior to the expiration date of the patent. The Commissioner 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 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 of extension to which the applicant would be eligible.

[Added, 52 FR 9396, Mar. 24, 1987, effective May 26, 1987; heading revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]



1.765 Duty of disclosure in patent term extension proceedings.

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

[Added, 52 FR 9396, Mar. 24 1987, effective May 26, 1987, para. (a) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; para. (a) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]



1.770 Express withdrawal of application for extension of patent term.
An application for extension of patent term may be expressly withdrawn before a determination is made pursuant to § 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 (§ 1.20(j)) or any portion thereof.

[Added 52 FR 9397, Mar. 24 1987, effective May 26, 1987; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised,62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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

(a)
If a determination is made pursuant to § 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 (§ 1.321).
(b)
The term of the patent for a human drug, antibiotic drug or human biological product will be extended by the length of the regulatory review period for the product as determined by the Secretary of Health and Human Services, reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c)
The length of the regulatory review period for a human drug, antibiotic drug or human biological product will be determined by the Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it is the sum of --
(1)
The number of days in the period beginning on the date an exemption under subsection (i) of section 505 or subsection (d) of section 507 of the Federal Food, Drug, and Cosmetic Act became effective for the approved product and ending on the date an 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 para­ graphs (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 filing date.

[Added, 52 FR 9397, Mar. 24 1987, effective May 26, 1987]



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

(a)
If a determination is made pursuant to § 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 (§ 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. Under35 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 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.

[Added, 52 FR 9397, Mar. 24, 1987, effective May 26, 1987]



1.777 Calculation of patent term extension for a medical device.

(a)
If a determination is made pursuant to § 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 (§ 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 fora medical device will be determined by the Secretaryof 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)
Subtracting 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 approvalof the application under section 515 of the FederalFood, Drug, and Cosmetic Act or the date a product development protocol was declared completed under section 515(f)(6) of the Act;
(4)
By comparing the dates for the ends of the periods obtained pursuant to paragraphs (d)(2) and (d)(3) of this section with each other and selecting the earlier date;
(5)
If the original patent was issued after September 24, 1984,
(i)
By adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer; and
(ii)
By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(5)(i) of this section with each other and selecting the earlier date;
(6)
If the original patent was issued before September 24, 1984, and
(i)
If no clinical investigation on humans involving the device was begun or no product development protocol was submitted under section 515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 24, 1984, by --
(A)
Adding 5 years to the original expiration date of the patent or earlier date set by terminal disclaimer and
(B)
By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this section with each other and selecting the earlier date; or
(ii)
If a clinical investigation on humans involving the device was begun or a product development protocol was submitted under section 515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September 24, 1984 and the commercial marketing or use of the product was not approved before September 24, 1984, by
(A)
Adding 2 years to the original expiration date of the patent or earlier date set by terminal disclaimer, and
(B)
By comparing the dates obtained pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this section with each other and selecting the earlier date.

[Added, 52 FR 9398, Mar. 24 1987, effective May 26, 1987]



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

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

[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]



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

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

[Added, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989]



1.780 Certificate of extension of patent term.
If a determination is made pursuant to § 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 certificate of 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 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 of extension will be published in the Official Gazette of the Patent and Trademark Office. Notification of the issuance of the certificate of 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 Patent and Trademark Office and in the Federal Register. No certificate of extension will be issued if the term of the patent cannot be extended, even though the patent is otherwise determined to be eligible for extension. In such situations the final determination made pursuant to § 1.750 will indicate that no certificate will issue.

[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (a) revised, 60 FR 25615, May 12, 1995, effective July 11, 1995]



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

[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 1987; para. (b) amended, 54 FR 30375, July 20, 1989, effective Aug. 22, 1989; revised, 60 FR 25615, May 12, 1995, effective July 11, 1995; para. (d) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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 under § 1.740 and a complete application under § 1.741. Sections (a)(1), (a)(2), (a)(4), and (a)(6) - (a)(17) of § 1.740 and § 1.741 shall be read in the context of a product currently undergoing regulatory review. Sections (a)(3) and (a)(5) of § 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 §§ 1.740 and 1.741 that are not present in the preceding interim extension application.

[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]



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 §§ 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.

[Added, 60 FR 25615, May 12, 1995, effective July 11, 1995]

G Biotechnology Invention Disclosures

DEPOSIT OF BIOLOGICAL MATERIAL

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 biologicalmaterial 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.

[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]



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 available 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.

[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 1990]



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 Micro-organisms for the Purposes of Patent Procedure, or
(2)
Any other depository recognized to be suitable by the Office. Suitability will be determined by the Commissioner 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 Commissioner 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 depositedwith 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 Commissioner which shall:
(1)
Indicate the name and address of the depository to which the communication relates;
(2)
Contain detailed information as to the capacity of the depository to comply with the requirements of paragraph (a)(2) of this section, including information on its legal status, scientific standing, staff, and facilities;
(3)
Indicate that the depository intends to be available, for the purposes of deposit, to any depositor under these same conditions;
(4)
Where the depository intends to accept for deposit only certain kinds of biological material, specify such kinds;
(5)
Indicate the amount of any fees that the depository will, upon acquiring the status of suitable depository under paragraph (a)(2) of this section, charge for storage, viability statements and furnishings of samples of the deposit.
(c)
A depository having status under paragraph (a)(2) of this section limited to certain kinds of biological material may extend such status to additional kinds of biological material by directing a communication to the Commissioner 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 Commissioner or has defaulted or discontinued its performance under this section, notice thereof will be published in the Official Gazette of the Patent and Trademark Office.

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990]



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 § 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.

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



1.805 Replacement or supplement of deposit.

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

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 1990; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]



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.

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]



1.807 Viability of deposit.

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

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]



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 Commissioner to be entitled thereto under § 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.

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]



1.809 Examination procedures.

(a)
The examiner shall determine pursuant to § 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 respond to a rejection under paragraph (a) of this section by --
(1)
In the case of an applicant for patent, making an acceptable original or replacement or supplemental deposit or assuring the Office in writing that an acceptable deposit will be made on or before the date of payment of the issue fee, or, in the case of a patent owner, requesting a certificate of correction of the patent which meets the terms of paragraphs (b) and (c) of § 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 on or before payment of the issue fee, the Office will mail to the applicant a Notice of Allowance and Issue Fee Due together with a requirement that the needed deposit be made within three months. The period for satisfying this requirement is extendable under § 1.136. Failure to make the needed deposit in accordance with this requirement will result in abandonment of the application for failure to prosecute.
(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.

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 1990]

APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES

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

(a)
Nucleotide and/or amino acid sequences as used in §§ 1.821 through 1.825 is 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. Nucleotides and amino acids are further defined as follows:
(1)
Nucleotides are intended to embrace only those nucleotides that can be represented using the symbols set forth in § 1.822(b)(1). Modifications, e.g., methylated bases, may be described as set forth in§ 1.822(b), but shall not be shown explicitly in the nucleotide sequence.
(2)
Amino acids are those L-amino acids commonly found in naturally occurring proteins andare listed in § 1.822(b)(2). 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§ 1.822(b)(2) with the modified positions, e.g., hydroxylations or glycosylations, being described as set forth in § 1. 822(b), 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 § 1.822(b)(2) in conjunction with a description elsewhere in the “Sequence Listing” to describe, for example, modified linkages, cross links and end caps, non-peptidyl bonds, etc., is embraced by this definition.
(b)
Patent applications which contain disclosures of nucleotide and/or amino acid sequences, in accordance with the definition in paragraph (a) of this section, shall, with regard to the manner in which the nucleotide and/or amino acid sequences are presented and described, conform exclusively to the requirements of§§ 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 on paper copy, hereinafter referred to as the “Sequence Listing,” a disclosure of the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of §§ 1.822 and 1.823. Each sequence disclosed must appear separately in the “Sequence Listing.” Each sequence set forth in the “Sequence Listing” shall be assigned a separate identifier written as SEQ ID NO:1, SEQ ID NO:2, SEQ ID NO:3, etc.
(d)
Where the description or claims of a patent application discuss a sequence listing 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 assigned identifier, 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 in accordance with the requirements of § 1.824. The computer readable form is a copy of the “Sequence Listing” and will not necessarily be retained as 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. The new application shall be accompanied by a letter making such reference to the other application and computer readable form, both of which shall be completely identified.
(f)
In addition to the paper copy required by paragraph (c) of this section and the computer readable form required by paragraph (e) of this section, a statement that the content of the paper and computer readable copies are the same must be submitted with the computer readable form. Such a statement must be a verified statement if made by a person not registered to practice before the Office.
(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 or at the time of entering the national stage under 35 U.S.C. 371, applicant has one month from the date of a notice which will be sent requiring compliance with the requirements in order to prevent abandonment of the application. Any submis­ sion in response to a requirement under this paragraph must be accompanied by a statement that the submission includes no new matter. Such a statement must be a verified statement if made by a person not registered to practice before the Office.
(h)
If any of the requirements of paragraphs (b) through (f) of this section are not satisfied at the time of filing, in the United States Receiving Office, an international application under the Patent Cooperation Treaty (PCT), applicant has one month from the date of a notice which will be sent requiring compliance with the requirements, or such other time as may be set by the Commissioner, in which to comply. Any submission in response to a requirement under this paragraph must be accompanied by a statement that the submission does not include new matter or go beyond the disclosure in the international application as filed. Such a statement must be a verified statement if made by a person not registered to practice before the Office. 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.
(i)
Neither the presence nor the absence of information which is not required under §§ 1.821 through 1.825, in an application shall create any presumption that such information is necessary to satisfy one or more of the requirements of 35 U.S.C. 112. Further, the grant of a patent on an application that is subject to the requirements of §§ 1.821 through 1.825 shall constitute a conclusive presumption that said patent complies with the requirements of §§ 1.821 through 1.825.

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990; para. (h) amended, 58 FR 9335, Jan. 14, 1993, effective May 1, 1993]



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 (p) 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 paragraphs (b)(1) and (b)(2) of this section. No code other than that specified in this section shall be used in nucleotide and amino acid sequences. A modified base or amino acid may be presented in a given sequence as the corresponding unmodified base or amino acid if the modified base or amino acid is one of those listed in paragraphs (p)(1) or (p)(2) of this section and the modification is also set forth elsewhere in the Sequence Listing (for example, FEATURES § 1.823(b)(2)(ix)). Otherwise, all bases or amino acids not appearing in paragraphs (b)(1) or (b)(2) of this section shall be listed in a given sequence as “N” or “Xaa,” respectively, with further information, as appropriate, given elsewhere in the Sequence Listing.
(1)
Base codes:
Symbol Meaning
A A; adenine
C C; cytosine
G G; guanine
T T; thymine
U U; uracil
M A or C
R A or G
W A or T/U
S C or G
Y C or T/U
K G or T/U
V A or C or G; not T/U
H A or C or T/U; not G
D A or G or T/U; not C
B C or G or T/U; not A
N (A or C or G or T/U) or (unknown or other)


(2)
Amino acid three-letter abbreviations:
Abbreviation Amino acid name
Ala Alanine
Arg Arginine
Asn Asparagine
Asp Aspartic Acid
Asx Aspartic Acid or Asparagine
Cys Cysteine
Glu Glutamic Acid
Gln Glutamine
Glx Glutamine or Glutamic Acid
Gly Glycine
His Histidine
Ile Isoleucine
Leu Leucine
Lys Lysine
Met Methionine
Phe Phenylalanine
Pro Proline
Ser Serine
Thr Threonine
Trp Tryptophan
Tyr Tyrosine
Val Valine
Xaa Unknown or other


(c)
A nucleotide sequence shall be listed using the one-letter code for the nucleotide bases, as in paragraph (b)(1) of this section.
(d)
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.
(e)
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 paragraph (b)(2) of this section.
(f)
The bases in a nucleotide sequence (including introns) shall be listed in groups of 10 bases except in the coding parts of a 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.
(g)
The bases in the coding parts of a nucleotidesequence shall be listed as triplets (codons).
(h)
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.
(i)
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.
(j)
A nucleotide sequence shall be presented, only by a single strand, in the 5' to 3' direction, from left to right.
(k)
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.
(l)
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.
(m)
The enumeration of amino acids may start at the first amino acid of the first mature protein, with number 1. The amino acids preceding the mature protein, e.g., pre-sequences, pro-sequences, pre-pro-sequences and signal sequences, when presented, 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.
(n)
For those nucleotide sequences that are circular in configuration, the enumeration method set forth in paragraph (l) 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. The enumeration method for amino acid sequences that is set forth in paragraph (m) of this section remains applicable for amino acid sequences that are circular in configuration.
(o)
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 non-contiguous segments of a larger sequence or segments from different sequences shall be presented as a separate sequence.
(p)
The code for representing modified nucleotide bases and modified and unusual amino acids shall conform to the code set forth in the tables in paragraphs (p)(1) and (p)(2) of this section. The modified base controlled vocabulary in paragraph (p)(1) of this section and the modified and unusual amino acids in paragraph (p)(2) of this section shall not be used in the nucleotide and/or amino acid sequences; but may be used in the description and/or the “Sequence Listing” corresponding to, but not including, the nucleotide and/or amino acid sequence.
(1)
Modified base controlled vocabulary:
Abbreviation Modified base description
ac4c 4-acetylcytidine.
chm5u 5-(carboxyhydroxylmethyl)uridine.
cm 2'-O-methylcytidine.
cmnm5s2u 5-carboxymethylaminomethyl-2-thioridine.
cmnm5u 5- carboxymethylaminomethyluridine.
d dihydrouridine.
fm 2'-O-methylpseudouridine.
galq beta,D-galactosylqueosine.
gm 2'-O-methylguanosine.
i inosine.
i6a N6-isopentenyladenosine.
m1a 1-methyladenosine.
m1f 1-methylpseudouridine.
m1g 1-methylguanosine.
ml1 1-methylinosine.
m22g 2,2-dimethylguanosine.
m2a 2-methyladenosine.
m2g 2-methylguanosine.
m3c 3-methylcytidine.
m5c 5-methylcytidine.
m6a N6-methyladenosine.
m7g 7-methylguanosine.
mam5u 5-methylaminomethyluridine.
mam5s2u 5-methoxyaminomethyl-2-thiouridine.
manq beta,D-mannosylqueosine.
mcm5s2u 5-methoxycarbonylmethyluridine.
mo5u 5-methoxyuridine.
ms2i6a 2-methylthio-N6-isopentenyladenosine.
ms2t6a N-((9-beta-D-ribofuranosyl-2-methylthiopurine-6-yl)carbamoyl)threonine.
mt6a N-((9-beta-D-ribofuranosylpurine-6-yl)N-methyl-carbamoyl)threonine.
mv uridine-5-oxyacetic acid methylester.
o5u uridine-5-oxyacetic acid (v).
osyw wybutoxosine.
p pseudouridine.
q queosine.
s2c 2-thiocytidine.
s2t 5-methyl-2-thiouridine.
s2u 2-thiouridine.
s4u 4-thiouridine.
t 5-methyluridine.
t6a N-((9-beta-D-ribofuranosylpurine-6-yl)carbamoyl)threonine.
tm 2'-O-methyl-5-methyluridine.
um 2'-O-methyluridine.
yw wybutosine.
x 3-(3-amino-3-carboxypro­pyl)uridine, (acp3)u.


(2)
Modified and unusual amino acids:
Abbreviation Modified and unusual amino acid
Aad 2-Aminoadipic acid.
bAad 3-aminoadipic acid.
bAla beta-Alanine,beta-
  Aminopropionic acid.
Abu 2-Aminobutyric acid.
4Abu 4-Aminobutyric acid, piperidinic acid.
Acp 6-Aminocaproic acid.
Ahe 2-Aminoheptanoic acid.
Aib 2-Aminoisobutyric acid.
bAib 3-Aminoisobutyric acid.
Apm 2-Aminopimelic acid.
Dbu 2,4-Diaminobutyric acid.
Des Desmosine.
Dpm 2,2'-Diaminopimelic acid.
Dpr 2,3-Diaminopropionic acid.
EtGly N-Ethylglycine.
EtAsn N-Ethylasparagine.
Hyl Hydroxylysine.
aHyl allo-Hydroxylysine.
3Hyp 3-Hydroxyproline.
4Hyp 4-Hydroxyproline.
Ide Isodesmosine.
aIle allo-Isoleucine.
MeGly N-Methylglycine, sarcosine.
MeIle N-Methylisoleucine.
MeLys N-Methylvaline.
Nva Norvaline.
Nle Norleucine.
Orn Ornithine.


[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]



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

(a)
The “Sequence Listing,” required by § 1.821(c), setting forth the nucleotide and/or amino acid sequences, and associated information in accordance with paragraph (b) of this section, must begin on a new page and be titled “Sequence Listing” and appear immediately prior to the claims. Each page of the “Sequence Listing” shall contain no more than 66 lines and each line shall contain no more than 72 characters. A fixed-width font shall be used exclusively throughout the “Sequence Listing.”
(b)
The “Sequence Listing” shall, except as otherwise indicated, include, in addition to and immediately preceding the actual nucleotide and/or amino acid sequence, the following items of information. The order and presentation of the items of information in the “Sequence Listing” shall conform to the arrangement given below, except that parenthetical explanatory information following the headings (identifiers) is to be omitted. Each item of information shall begin on a new line, enumerated with the number/numeral/letter in parentheses as shown below, with the heading (identifier) in upper case characters, followed by a colon, and then followed by the information provided. Except as allowed below, no item of information shall occupy more than one line. Those items of information that are applicable for all sequences shall only be set forth once in the “Sequence Listing.” The submission of those items of information designated with an “M” is mandatory. The submission of those items of information designated with an “R” is recommended, but not required. The submission of those items of information designated with an “O” is optional. Those items designated with “rep” may have multiple responses and, as such, the item may be repeated in the “Sequence Listing.”
(1)
GENERAL INFORMATION (Application, diskette/tape and publication information):
(i)
APPLICANT (maximum of first ten named applicants; specify one name per line: SURNAME comma OTHER NAMES and/or INITIALS - M/rep):
(ii)
TITLE OF INVENTION (title of the invention, as elsewhere in application, four lines maximum - M)
(iii)
NUMBER OF SEQUENCES (number of sequences in the “Sequence Listing” - M):
(iv)
CORRESPONDENCE ADDRESS (M):
(A)
ADDRESSEE (name of applicant, firm, company or institution, as may be appropriate):
(B)
STREET (correspondence street address, as elsewhere in application, four lines maximum):
(C)
CITY (correspondence city address, as elsewhere in application):
(D)
STATE (correspondence state, as elsewhere in application):
(E)
COUNTRY (correspondence country, as elsewhere in application):
(F)
ZIP (correspondence zip or postal code, as elsewhere in application):
(v)
COMPUTER READABLE FORM (M):
(A)
MEDIUM TYPE (type of diskette/tape submitted):
(B)
COMPUTER (type of computer used with diskette/tape submitted):
(C)
OPERATING SYSTEM (type of operating system used):
(D)
SOFTWARE (type of software used to create computer readable form):
(vi)
CURRENT APPLICATION DATA (M, if available):
(A)
APPLICATION NUMBER (U.S application number, including a series code, a slash and a serial number, or U.S. PCT application number, including the letters PCT, a slash, a two letter code indicating the U.S. as the Receiving Office, a two digit indication of the year, a slash and a five digit number, if available):
(B)
FILING DATE (U.S. or PCT application filing date, if available; specify as dd-MMM-yyyy):
(C)
CLASSIFICATION (IPC/US classification or F-term designation, where F-terms have been developed, if assigned, specify each designation, left justified, within an eighteen position alpha numeric field - rep, to a maximum of ten classification designations):
(vii)
PRIOR APPLICATION DATA (prior domestic, foreign priority or international application data, if applicable - M/rep):
(A)
APPLICATION NUMBER (application number; specify as two letter country code and an eight digit application number; or if a PCT application, specify as the letters PCT, a slash, a two letter code indicating the Receiving Office, a two digit indication of the year, a slash and a five digit number):
(B)
FILING DATE (document filing date, specify as dd-MMM-yyyy):
(viii)
ATTORNEY/AGENT INFORMATION (O):
(A)
NAME (attorney/agent name; SURNAME comma OTHER NAMES and/or INITIALS):
(B)
REGISTRATION NUMBER (attorney/agent registration number):
(C)
REFERENCE/DOCKET NUMBER (attorney/agent reference or docket number):
(ix)
TELECOMMUNICATION INFOR­MATION (O):
(A)
TELEPHONE (telephone number of applicant or attorney/agent):
(B)
TELEFAX (telefax number of applicant or attorney/agent):
(C)
TELEX (telex number of applicant or attorney/ agent):
(2)
INFORMATION FOR SEQ ID NO: X (rep):
(i)
SEQUENCE CHARACTERISTICS (M):
(A)
LENGTH (sequence length, expressed as number of base pairs or amino acid residues):
(B)
TYPE (sequence type, i.e., whether nucleic acid or amino acid):
(C)
STRANDEDNESS (if nucleic acid, number of strands of source organism molecule, i.e., whether single stranded, double stranded, both or unknown to applicant):
(D)
TOPOLOGY (whether source organism molecule is circular, linear, both or unknown to applicant):
(ii)
MOLECULE TYPE (type of molecule sequenced in SEQ ID NO:X (at least one of the following should be included with subheadings, if any, in Sequence Listing - R)):
  • Genomic RNA;
  • Genomic DNA;
  • mRNA
  • tRNA;
  • rRNA;
  • snRNA;
  • scRNA;
  • preRNA;
  • cDNA to genomic RNA;
  • cDNA to mRNA;
  • cDNA to tRNA;
  • cDNA to rRNA;
  • cDNA to snRNA;
  • cDNA to scRNA;
  • Other nucleic acid;
(A)
DESCRIPTION (four lines maximum):
  • protein and
  • peptide.
(iii)
HYPOTHETICAL (yes/no - R):
(iv)
ANTI-SENSE (yes/no - R):
(v)
FRAGMENT TYPE (for proteins and peptides only, at least one of the following should be included in the Sequence Listing - R):
  • N-terminal fragment;
  • C-terminal fragment and
  • internal fragment.
(vi)
ORIGINAL SOURCE (original source of molecule sequenced in SEQ ID NO:X - R):
(A)
ORGANISM (scientific name of source organism):
(B)
STRAIN:
(C)
INDIVIDUAL ISOLATE (name/number of individual/isolate):
(D)
DEVELOPMENTAL STAGE (give developmental stage of source organism and indicate whether derived from germ-line or rearranged developmental pattern):
(E)
HAPLOTYPE:
(F)
TISSUE TYPE:
(G)
CELL TYPE:
(H)
CELL LINE:
(I)
ORGANELLE:
(vii)
IMMEDIATE SOURCE (immediate experimental source of the sequence in SEQ ID NO:X - R):
(A)
LIBRARY (library -type,name):
(B)
CLONE (clone(s)):
(viii)
POSITION IN GENOME (position of sequence in SEQ ID NO:X in genome - R):
(A)
CHROMOSOME/SEGMENT (chromosome/segment-name/number):
(B)
MAP POSITION:
(C)
UNITS (units for map position, i.e., whether units are genome percent, nucleotide number or other/specify):
(ix)
FEATURE (description of points of biological significance in the sequence in SEQ ID NO:X -R/rep):
(A)
NAME/KEY (provide appropriate identifier for feature - four lines maximum):
(B)
LOCATION (specify location according to syntax of DDBJ/EMBL/GenBank Feature Tables Definition, including whether feature is on complement of presented sequence; where appropriate state number of first and last bases/amino acids in feature - four lines maximum):
(C)
IDENTIFICATION METHOD (method by which the feature was identified, i.e., by experiment, by similarity with known sequence or to an established consensus sequence, or by similarity to some other pattern - four lines maximum):
(D)
OTHER INFORMATION (include information on phenotype conferred, biological activity of sequence or its product, macromolecules which bind to sequence or its product, or other relevant information - four lines maximum):
(x)
PUBLICATION INFORMATION (Repeat section for each relevant publication - O/rep):
(A)
AUTHORS (maximum of first ten named authors of publication; specify one name per line: SURNAME comma OTHER NAMES and/or INITIALS - rep):
(B)
TITLE (title of publication):
(C)
JOURNAL (journal name in which data published):
(D)
VOLUME (journal volume in which data published):
(E)
ISSUE (journal issue number in which data published):
(F)
PAGES (journal page numbers in which data published):
(G)
DATE (journal date in which data published; specify as dd-MMM-yyyy, MMM-yyyy or Season-yyyy):
(H)
DOCUMENT NUMBER (document number, for patent type citations only; specify as two letter country code, eight digit document number (right justified), one letter and, as appropriate, one number or a space as a document type code; or if a PCT application, specify as the letters PCT, a slash, a two letter code indicating the Receiving Office, a two digit indication of the year, a slash and a five digit number; or if a PCT publication, specify as the two letters WO, a two digit indication of the year, a slash and a five digit publication number):
(I)
FILING DATE (document filing date, for patent-type citations only; specify as dd-MMM-yyyy):
(J)
PUBLICATION DATE (document publication date; for patent-type citations only, specify as dd-MMM-yyyy):
(K)
RELEVANT RESIDUES IN SEQ ID NO:X (rep): FROM (position) TO (position)
(xi)
SEQUENCE DESCRIPTION: SEQ ID NO:X:

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]



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

(a)
The computer readable form required by§ 1.821(e) shall contain a printable copy of the “Sequence Listing,” as defined in §§ 1.821(c), 1.822 and 1.823, recorded as a single file on either a diskette or a magnetic tape. The computer readable form shall be encoded and formatted such that a printed copy of the “Sequence Listing” may be recreated using the print commands of the computer/operating-system configurations specified in paragraph (f) of this section.
(b)
The file in paragraph (a) of this section shall be encoded in a subset of the American Standard Code for Information Interchange (ASCII). This subset shall consist of all the printable ASCII characters including the ASCII space character plus line-termination, pagination and end-of-file characters associated with the computer/operating-system configurations specified in paragraph (f) of this sec­ tion. No other characters shall be allowed.
(c)
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 be readable by one of the computer/operating-system configurations specified in paragraph (f) of this section, and shall conform to the specifications in paragraphs (a) and (b) of this section.
(d)
The entire printable copy of the “Sequence Listing” shall be contained within one file on a single diskette or magnetic tape unless it is shown to the satisfaction of the Commissioner that it is not practical or possible to submit the entire printable copy of the “Sequence Listing” within one file on a single diskette or magnetic tape.
(e)
The submitted diskette or tape shall be write-protected such as by covering or uncovering diskette holes, removing diskette write tabs or removing tape write rings.
(1)
Computer: IBM PC/XT/AT, IBM PS/2 or compatibles;
(i)
Operating system: PC-DOS or MS-DOS (Versions 2.1 or above);
(ii)
Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
(iii)
Pagination: ASCII Form Feed or Series of Line Terminators;
(iv)
End-of-File: ASCII SUB (Ctrl-Z);
(v)
Media:
(A)
Diskette - 5.25 inch, 360 Kb storage;
(B)
Diskette - 5.25 inch, 1.2 Mb storage;
(C)
Diskette - 3.50 inch, 720 Kb storage;
(D)
Diskette - 3.50 inch, 1.44 Mb storage;
(vi)
Print Command: PRINT filename.extension;
(2)
Computer: IBM PC/XT/AT, IBM PS/2 or compatibles;
(i)
Operating system: Xenix;
(ii)
Line Terminator: ASCII Carriage Return;
(iii)
Pagination: ASCII Form Feed or Series of Line Terminators;
(iv)
End-of-File: None;
(v)
Media:
(A)
Diskette - 5.25 inch, 360 Kb storage;
(B)
Diskette - 5.25 inch, 1.2 Mb storage;
(C)
Diskette - 3.50 inch, 720 Kb storage;
(D)
Diskette - 3.50 inch, 1.44 Mb storage;
(vi)
Print Command: lpr filename;
(3)
Computer: Apple Macintosh;
(i)
Operating System: Macintosh;
(ii)
Macintosh File Type: text with line termination
(iii)
Line Terminator: Pre-defined by text type file;
(iv)
Pagination: Pre-defined by text type file;
(v)
End-of-file: Pre-defined by text type file;
(vi)
Media:
(A)
Diskette - 3.50 inch, 400 Kb storage;
(B)
Diskette - 3.50 inch, 800 Kb storage;
(C)
Diskette - 3.50 inch, 1.4 Mb storage;
(vii)
Print Command: Use PRINT command from any Macintosh Application that processes text files, such as MacWrite or TeachText;
(4)
Magnetic tape: 0.5 inch, up to 2400 feet;
(i)
Density: 1600 or 6250 bits per inch, 9 track;
(ii)
Format: raw, unblocked;
(iii)
Line Terminator: ASCII Carriage Return plus optional ASCII Line Feed;
(iv)
Pagination: ASCII Form Feed or Series of Line Terminators;
(v)
Print Command (Unix shell version given here as sample response -mt/dev/rmt0; lpr/dev/rmt0):
(g)
Computer readable forms that are submitted to the Office will not be returned to the applicant.
(h)
All computer readable forms shall have a label permanently affixed thereto on which has been hand printed or typed, a description of the format of the computer readable form as well as the name of the applicant, the title of the invention, the date on which the data were recorded on the computer readable form and the name and type of computer and operating system which generated the files on the computer readable form. If all of this information can not be printed on a label affixed to the computer readable form, by reason of size or otherwise, the label shall include the name of the applicant and the title of the invention and a reference number, and the additional information may be provided on a container for the computer readable form with the name of the applicant, the title of the invention, the reference number and the additional information affixed to the container. If the computer readable form is submitted after the date of filing under 35 U.S.C. 111, after the date of entry in the national stage under 35 U.S.C. 371 or after the time of filing, in the United States Receiving Office, an international application under the PCT, the labels mentioned herein must also include the date of the application and the application number, including series code and serial number.

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]



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

(a)
Any amendment to the paper copy of the “Sequence Listing” (§ 1.821(c)) must be made by the submission of substitute sheets. Amendments must be accompanied by a statement that indicates support for the amendment in the application, as filed, and a statement that the substitute sheets include no new matter. Such a statement must be a verified statement if made by a person not registered to practice before the Office.
(b)
Any amendment to the paper 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 (§ 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.” Such a statement must be a verified statement if made by a person not registered to practice before the Office.
(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 is found to be damaged or unreadable, applicant must provide, within such time as set by the Commissioner, a substitute copy of the data in computer readable form accompanied by a statement that the substitute data is identical to that originally filed. Such a statement must be a verified statement if made by a person not registered to practice before the Office.

[Added 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]

(1)
GENERAL INFORMATION:
(i)
APPLICANT: Doe, Joan X; Doe, John Q
(ii)
TITLE OF INVENTION: Isolation and Characterization of a Gene Encoding a Protease from Paramecium sp.
(iii)
NUMBER OF SEQUENCES: 2
(iv)
CORRESPONDENCE ADDRESS:
(A)
ADDRESSEE: Smith and Jones
(B)
STREET: 123 Main Street
(C)
CITY: Smalltown
(D)
STATE: Any state
(E)
COUNTRY: USA
(F)
ZIP: 12345
(v)
COMPUTER READABLE FORM:
(A)
MEDIUM TYPE: Diskette, 3.50 inch, 800 Kb storage
(B)
COMPUTER: Apple Macintosh
(C)
OPERATING SYSTEM: Macintosh 5.0
(D)
SOFTWARE: MacWrite
(vi)
CURRENT APPLICATION DATA:
(A)
APPLICATION NUMBER: 09/999,999
(B)
FILING DATE: 28-FEB-1989
(C)
CLASSIFICATION: 999/99
(vii)
PRIOR APPLICATION DATA:
(A)
APPLICATION NUMBER: PCT/US88/99999
(B)
FILING DATE: 01-MAR-1988
(viii)
ATTORNEY/AGENT INFORMATION:
(A)
NAME: Smith, John A
(B)
REGISTRATION NUMBER: 00001
(C)
REFERENCE/DOCKET NUMBER: 01-0001
(ix)
TELECOMMUNICATION INFORMATION:
(A)
TELEPHONE: (909) 999-0001
(B)
TELEFAX: (909) 999-0002
(2)
INFORMATION FOR SEQ ID NO:1:
(i)
SEQUENCE CHARACTERISTICS:
(A)
LENGTH: 954 base pairs
(B)
TYPE: nucleic acid
(C)
STRANDEDNESS: single
(D)
TOPOLOGY: linear
(ii)
MOLECULE TYPE: genomic DNA
(iii)
HYPOTHETICAL: yes
(iv)
ANTI-SENSE: no
(vi)
ORIGINAL SOURCE:
(A)
ORGANISM: Paramecium sp
(C)
INDIVIDUAL/ISOLATE: XYZ2
(G)
CELL TYPE: unicellular organism
(vii)
IMMEDIATE SOURCE:
(A)
LIBRARY: genomic
(B)
CLONE: Para-XYZ2/36
(x)
PUBLICATION INFORMATION:
(A)
AUTHORS: Doe, Joan X; Doe, John Q
(B)
TITLE: Isolation and Characterization of a Gene Encoding a Protease from Paramecium sp.
(C)
JOURNAL: Fictional Genes
(D)
VOLUME: I
(E)
ISSUE: 1
(F)
PAGES: 1-20
(G)
DATE: 02-MAR-1988
(K)
RELEVANT RESIDUES IN SEQ ID NO:1: FROM 1 TO 954
(xi)
SEQUENCE DESCRIPTION: SEQ ID NO:1:
ATCGGGATAG TACTGGTCAA GACCGGTGGA CACCGGTTAA CCCCGGTTAA GTACCGGTTA 60
TAGGCCATTT CAGGCCAAAT GTGCCCAACT ACGCCAATTG TTTTGCCAAC GGCCAACGTT 120
ACGTTCGTAC GCACGTATGT ACCTAGGTAC TTACGGACGT GACTACGGAC ACTTCCGTAC 180
GTACGTACGT TTACGTACCC ATCCCAACGT AACCACAGTG TGGTCGCAGT GTCCCAGTGT 240
ACACAGACTG CCAGACATTC TTCACAGACA CCCC ATG ACA CCA CCT GAA CGC CTC 295
Met Thr Pro Pro Glu Arg Leu
-30
TTC CTC CCA AGG GTG TGT GGC ACC ACC CTA CAC CTC CTC CTT CTG GGG 343
Phe Leu Pro Arg Val Cys Gly Thr Thr Leu His Leu Leu Leu Leu Gly
-25 -20 -15
CTG CTG CTG GTT CTG CTG CCT GGG GCC CAT GTGAGGCAGC AGGAGAATGG 393
Leu Leu Leu Val Leu Leu Pro Gly Ala His
-10 -5
GGTGGCTCAG CCAAACCTTG AGCCCTAGAG CCCCCCTCAA CTCTGTTCTC CTAG GGG 450
Gly
CTC ATG CAT CTT GCC CAC AGC AAC CTC AAA CCT GCT GCT CAC CTC ATT 498
Leu Met His Leu Ala His Ser Asn Leu Lys Pro Ala Ala His Leu Ile
1 5 10 15
GTAAACATCC ACCTGACCTC CCAGACATGT CCCCACCAGC TCTCCTCCTA CCCCTGCCTC 558
AGGAACCCAA GCATCCACCC CTCTCCCCCA ACTTCCCCCA CGCTAAAAAA AACAGAGGGA 618
GCCCACTCCT ATGCCTCCCC CTGCCATCCC CCAGGAACTC AGTTGTTCAG TGCCCACTTC 678
TAC CCC AGC AAG CAG AAC TCA CTG CTC TGG AGA GCA AAC ACG GAC CGT 726
Tyr Pro Ser Lys Gln Asn Ser Leu Leu Trp Arg Ala Asn Thr Asp Arg
20 25 30
GCC TTC CTC CAG GAT GGT TTC TCC TTG AGC AAC AAT TCT CTC CTG GTC 774
Ala Phe Leu Gln Asp Gly Phe Ser Leu Ser Asn Asn Ser Leu Leu Val
35 40 45
TAGAAAAAAT AATTGATTTC AAGACCTTCT CCCCATTCTG CCTCCATTCT GACCATTTCA 834
GGGGTCGTCA CCACCTCTCC TTTGGCCATT CCAACAGCTC AAGTCTTCCC TGATCAAGTC 894
ACCGGAGCTT TCAAAGAAGG AATTCTAGGC ATCCCAGGGG ACCCACACCT CCCTGAACCA 954
(2)
INFORMATION FOR SEQ ID NO:2:
(i)
SEQUENCE CHARACTERISTICS:
(A)
LENGTH: 82 amino acids
(B)
TYPE: amino acid
(D)
TOPOLOGY: linear
(ii)
MOLECULE TYPE: protein
(ix)
FEATURE:
(A)
NAME/KEY: signal sequence
(B)
LOCATION: -34 to -1
(C)
IDENTIFICATION METHOD: similarity to other signal sequences, hydrophobic
(D)
OTHER INFORMATION: expresses protease
(x)
PUBLICATION INFORMATION:
(A)
AUTHORS: Doe, Joan X; Doe, John Q
(B)
TITLE: Isolation and Characterization of a Gene Encoding a Protease from Paramecium sp.
(C)
JOURNAL: Fictional Genes
(D)
VOLUME: I
(E)
ISSUE: 1
(F)
PAGES: 1-20
(G)
DATE: 02-MAR-1988
(K)
RELEVANT RESIDUES IN SEQ ID NO:2: FROM -34 TO 48
(xi)
SEQUENCE DESCRIPTION: SEQ ID NO:2:
Met Thr Pro Pro Glu Arg Leu Phe Leu Pro Arg Val Cys Gly Thr Thr
-30 -25 -20
Leu His Leu Leu Leu Leu Gly Leu Leu Leu Val Leu Leu Pro Gly Ala
-15 -10 -5
His Gly Leu Met His Leu Ala His Ser Asn Leu Lys Pro Ala Ala His
1 5 10
Leu Ile Tyr Pro Ser Lys Gln Asn Ser Leu Leu Trp Arg Ala Asn Thr
15 20 25 30
Asp Arg Ala Phe Leu Gln Asp Gly Phe Ser Leu Ser Asn Asn Ser Leu
35 40 45
Leu Val
(1)
GENERAL INFORMATION:
(i)
APPLICANT:
(ii)
TITLE OF INVENTION:
(iii)
NUMBER OF SEQUENCES:
(iv)
CORRESPONDENCE ADDRESS:
(A)
ADDRESSEE:
(B)
STREET:
(C)
CITY:
(D)
STATE:
(E)
COUNTRY:
(F)
ZIP:
(v)
COMPUTER READABLE FORM:
(A)
MEDIUM TYPE:
(B)
COMPUTER:
(C)
OPERATING SYSTEM:
(D)
SOFTWARE:
(vi)
CURRENT APPLICATION DATA :
(A)
APPLICATION NUMBER:
(B)
FILING DATE:
(C)
CLASSIFICATION:
(vii)
PRIOR APPLICATION DATA:
(A)
APPLICATION NUMBER:
(B)
FILING DATE:
(viii)
ATTORNEY/AGENT INFORMATION :
(A)
NAME:
(B)
REGISTRATION NUMBER:
(C)
REFERENCE/DOCKET NUMBER:
(ix)
TELECOMMUNICATION INFORMATION:
(A)
TELEPHONE:
(B)
TELEFAX:
(C)
TELEX:
(2)
INFORMATION FOR SEQ ID NO: X:
(i)
SEQUENCE CHARACTERISTICS:
(A)
LENGTH:
(B)
TYPE:
(C)
STRANDEDNESSS:
(D)
TOPOLOGY:
(ii)
MOLECULE TYPE:
  • Genomic RNA;
  • Genomic DNA;
  • mRNA
  • tRNA;
  • rRNA;
  • snRNA;
  • scRNA;
  • preRNA;
  • cDNA to genomic RNA;
  • cDNA to mRNA;
  • cDNA to tRNA;
  • cDNA to rRNA;
  • cDNA to snRNA;
  • cDNA to scRNA;
  • Other nucleic acid;
(A)
DESCRIPTION:
  • protein and
  • peptide.
(iii)
HYPOTHETICAL:
(iv)
ANTI-SENSE:
(v)
FRAGMENT TYPE:
(vi)
ORIGINAL SOURCE:
(A)
ORGANISM:
(B)
STRAIN:
(C)
INDIVIDUAL ISOLATE:
(D)
DEVELOPMENTAL STAGE:
(E)
HAPLOTYPE:
(F)
TISSUE TYPE:
(G)
CELL TYPE:
(H)
CELL LINE:
(I)
ORGANELLE:
(vii)
IMMEDIATE SOURCE:
(A)
LIBRARY:
(B)
CLONE:
(viii)
POSITION IN GENOME:
(A)
CHROMOSOME/SEGMENT:
(B)
MAP POSITION:
(C)
UNITS:
(ix)
FEATURE:
(A)
NAME/KEY:
(B)
LOCATION:
(C)
IDENTIFICATION METHOD:
(D)
OTHER INFORMATION:
(x)
PUBLICATION INFORMATION:
(A)
AUTHORS:
(B)
TITLE:
(C)
JOURNAL:
(D)
VOLUME:
(E)
ISSUE:
(F)
PAGES:
(G)
DATE:
(H)
DOCUMENT NUMBER:
(I)
FILING DATE:
(J)
PUBLICATION DATE:
(K)
RELEVANT RESIDUES :
(xi)
SEQUENCE DESCRIPTION: SEQ ID NO:X:

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 1990]

3 ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an international application that designates the United States of America, or an application to register a trademark unless otherwise indicated.
Assignment means a transfer by a party of all or part of its right, title and interest in a patent or patent application, or a transfer of its entire right, title and interest in a registered mark or a mark for which an application to register has been filed.
Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.
Office means the Patent and Trademark Office.
Recorded document means a document which has been recorded in the Office pursuant to § 3.11.
Registration means a trademark regi