Changes To Implement the Patent Business Goals

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 3, 5, and 10

[Docket No.: 980826226-0202-03]

RIN 0651-AA98

Changes To Implement the Patent Business Goals

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (Office) has established business goals for the organizations reporting to the Commissioner for Patents (Patent Business Goals). The focus of the Patent Business Goals is to increase the level of service to the public by raising the efficiency and effectiveness of the Office's business processes. In furtherance of the Patent Business Goals, the Office is changing the rules of practice to eliminate unnecessary formal requirements, streamline the patent application process, and simplify and clarify the provisions of the rules of practice.

DATES:

Effective Dates:

This rule is effective November 7, 2000, except that the changes to §§ 1.27, 1.78, 1.131, 1.132, 1.137, 1.152, 1.155, 1.324, 1.366, 1.740, and 1.760, and the removal of § 1.44 are effective September 8, 2000.

Applicability Dates:

Computer program listings in compliance with former § 1.96 will be accepted until March 1, 2001. After that date, computer program listings must comply with revised § 1.96. Amendments in compliance with former § 1.121 will be accepted until March 1, 2001. After that date, amendments must comply with revised § 1.121.

The new two-year limit for requesting refunds under § 1.26 will be applied to any fee paid regardless of when it was paid. For previously paid fees, the two-year time period for requesting a refund will expire on the later of November 7, 2000 or the date that is two years from the date the fee was paid.

FOR FURTHER INFORMATION CONTACT:

Hiram H. Bernstein ((703) 305-8713) or Robert W. Bahr ((703) 308-6906), Senior Legal Advisors, or Robert J. Spar, Director ((703) 308-5107), Office of Patent Legal Administration (OPLA), directly by phone, or by facsimile to (703) 305-1013, marked to the attention of Mr. Bernstein, or by mail addressed to: Box Comments—Patents, Commissioner for Patents, Washington, D.C. 20231.

Additionally, the following members of OPLA may be called directly for the matters indicated:

Robert Bahr ((703) 308-6906): §§ 1.22, 1.25, 1.26, 1.53, 1.55, 1.72, 1.76, 1.78, 1.112, 1.131, 1.132, 1.137, 1.138, 1.193, 1.311 through 1.313, 1.366, Part 5, and Part 10.

Hiram Bernstein ((703) 305-8713): §§ 1.9, 1.22, 1.26 through 1.28, 1.41, 1.48, 1.56, 1.85(c), 1.97, 1.98, 1.105, 1.111, 1.115, 1.133, 1.136, 1.322 through 1.324, and Part 3.

Robert Clarke ((703) 305-9177): Processing and petition fees, and § 1.52(b)(2).

James Engel ((703) 308-5106): §§ 1.152

et seq.

Eugenia Jones ((703) 306-5586): §§ 1.9, 1.27, and 1.28.

Jay Lucas ((703) 308-6868) or Anton Fetting ((703) 305-8449): §§ 1.96, and 1.821

et seq.

Joe Narcavage ((703) 305-1795): §§ 1.52(b)(6), 1.121, 1.125, and 1.173

et seq.

Kenneth Schor ((703) 308-6710): §§ 1.97, 1.98, 1.173

et seq.

, 1.510

et seq.

, and Part 3.

Fred Silverberg ((703) 305-8986): § 1.63 (oath or declaration) form.

Karin Tyson ((703) 306-3159): §§ 1.14, 1.33, 1.44, 1.47, 1.51, 1.52 (except (b)(2) and (b)(6)), 1.59, 1.63, 1.64, 1.67, 1.77, 1.84, 1.85 (except (c)), 1.163, and 1.720

et seq.

SUPPLEMENTARY INFORMATION:

The organizations reporting to the Commissioner for Patents have established five business goals (Patent Business Goals) to meet the Office's Year 2000 commitments. The Patent Business Goals have been adopted as part of the Fiscal Year 1999 Corporate Plan Submission to the President. The five Patent Business Goals are:

Goal 1: Reduce Office processing time (cycle time) to twelve months or less for all inventions.

Goal 2: Establish fully-supported and integrated Industry Sectors.

Goal 3: Receive applications and publish patents electronically.

Goal 4: Exceed our customers' quality expectations, through the competencies and empowerment of our employees.

Goal 5: Align fees commensurate with resource utilization and customer efficiency.

This final rule makes changes to the regulations to support the Patent Business Goals. A properly reengineered or reinvented system eliminates the redundant or unnecessary steps that slow down processing and frustrate customers. In furtherance of the Patent Business Goals, these changes to the rules of practice take a fresh view of the business end of issuing patents, and continue a process of simplification. Formal requirements of rules that are no longer useful are eliminated. Once the intent of an applicant is understood, the Office will simply go forward with the processing. The essentials are maintained, while formalities are greatly reduced. The object is to focus on the substance of examination and decrease the time that an application for patent is sidelined with unnecessary procedural issues.

In streamlining this process, the Office will be able to issue a patent in a shorter time by eliminating formal requirements that must be performed by the applicant, his or her representatives and the Office itself. Applicants will benefit from a reduced overall cost to them for receiving patent protection and from a faster receipt of their patents.

The Office initially published an advance notice of proposed rulemaking containing twenty-one initiatives.

See Changes to Implement the Patent Business Goals

, Advance Notice of Proposed Rulemaking, 63 FR 53497 (October 5, 1998), 1215

Off. Gaz. Pat. Office

(October 27, 1998) (Advance Notice). The Office published a notice of proposed rulemaking, proposing a number of changes to the rules of practice to implement the Patent Business Goals that contained about half of the topics set forth in the advance notice plus additional items.

See Changes to Implement the Patent Business Goals

, Notice of Proposed Rulemaking, 64 FR 53771 (October 4, 1999), 1228

Off. Gaz. Pat. Office

15 (November 2, 1999). This final rule contains a number of changes to the text of the rules as proposed for comment. The significant changes (as opposed to additional grammatical corrections) are discussed below. Familiarity with the Advance Notice and Notice of Proposed Rulemaking is assumed.

The title “Commissioner of Patents and Trademarks” was changed to “Director of the United States Patent and Trademark Office” by § 4732 of the “American Inventors Protection Act of 1999” (Title IV of the “Intellectual Property and Communications Omnibus Reform Act of 1999”) that was incorporated and enacted into law on November 29, 1999, by § 1000(a)(9), Division B, of Public Law 106-113, 113 Stat. 1501 (1999). To avoid inconsistent use of the title “Commissioner” and “Director” in the rules of practice, the Office plans to change the title “Commissioner” wherever it appears in the rules of practice to “Director” in a separate rule change.

Discussion of Specific Rules and Response to Comments

The Office received forty-eight written comments (from Intellectual Property Organizations, Law Firms, Businesses, Patent Practitioners, and others) in response to the Notice of Proposed Rulemaking. The written comments have been analyzed. For contextual purposes, the comment on a specific rule and response to the comment are provided with the discussion of the specific rule. Comments in support of proposed rule changes generally have not been reported in the responses to comments sections.

Two general comments were received that the Office should conduct a public hearing for every major rulemaking, and that in a proposed notice of rulemaking the Office should use markings to indicate the proposed changes in the rules.

Response:

The suggestions are not adopted. The Office determined that a public hearing was not warranted for this rulemaking. Further, while markings to indicate the proposed changes might be helpful, on balance, the additional delay in preparing the rulemaking with markings outweighed the helpfulness of providing the markings.

Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, and 10, are amended as follows:

Part 1

Section 1.4:

Section 1.4(b) is amended to refer to a patent or trademark application, patent file, trademark registration file, or other proceeding, rather than only an application file. Section 1.4(b) is also amended to provide that the filing of duplicate copies of correspondence in a patent or trademark application, patent file, trademark registration file, or other proceeding should be avoided (except in situations in which the Office requires the filing of duplicate copies), and that the Office may dispose of duplicate copies of correspondence in a patent or trademark application, patent file, trademark registration file, or other proceeding. Finally, §§ 1.4(b) and 1.4(c) are also amended to change “should” to “must” because the Office needs separate copies of papers directed to two or more files, or of papers dealing with different subjects.

The explicit ability under § 1.4 to dispose of duplicate correspondence papers will be effective retroactively to any present duplicate correspondence.

Section 1.6:

Section 1.6(d)(9) is amended to delete the reference to recorded answers under § 1.684(c), as § 1.684(c) has been removed and reserved.

Section 1.9:

Sections 1.9(c) through (f) relating to small entities are removed and reserved with that subject matter transferred to amended § 1.27(a).

For additional changes to small entity requirements see §§ 1.27 and 1.28.

Section 1.9(i) is added to define “national security classified” as used in 37 CFR Chapter 1 as meaning “specifically authorized under criteria established by an Act of Congress or Executive order to be kept secret in the interest of national defense or foreign policy and, in fact, properly classified pursuant to such Act of Congress or Executive order.”

Comment 1:

One comment requested that the definitions in § 1.9(f) pertaining to small entity status be moved to the small entity provisions found in § 1.27 to provide a more cohesive policy statement, and to provide a consolidated location, which would be helpful to small entities.

Response:

The comment has been adopted. Other comments related to § 1.9(f) are treated in the context of § 1.27(a) to which the subject matter has been transferred.

Comment 2:

The remaining comments confirmed the Office's analysis that the proposed changes would be beneficial.

Section 1.12:

Section 1.12(c)(1) is amended to change the reference to the fee set forth in “§ 1.17(i)” to the fee set forth in “§ 1.17(h).” This change is for consistency with the changes to §§ 1.17(h) and 1.17(i). See discussion of changes to §§ 1.17(h) and 1.17(i).

Section 1.14:

Section 1.14 was proposed to be amended to eliminate the provisions making continuity data of an application identified in a patent available because such liberal public access to patent application information was inconsistent with patent applications being generally maintained in confidence. Since patent applications that are also filed abroad are subject to the eighteen-month publication provisions of the “American Inventors Protection Act of 1999” (Subtitle E—Domestic Publication of Patent Applications Published Abroad), any application that claims priority to a U.S. patent is likely to be published. Accordingly, continuity data for applications that rely upon the filing date of a U.S. patent should continue to be released and the provision for doing so is retained in § 1.14(b)(4).

Section 1.14 has been reformatted and amended to make it easier to understand.

Section 1.14(a) is amended to define “status information” and “access.” “Status information” is defined as information that the application is pending, abandoned, or patented, as well as the application's numeric identifier. An application's numeric identifier is (1) the eight digit application number, or (2) the six digit serial number and the filing date, or the date of entry into the national stage. “Access” is defined as providing the application file for review and copying of any material in the file.

Section 1.14(b) is amended to state when status information may be supplied, retaining the reasons set forth in prior § 1.14(a)(1)(i). Section 1.14(b)(3) is simplified so as to indicate that status information will be given for international applications in which the United States is designated, even if that application has not yet entered the national stage. If, however, an international application has not yet been assigned a U.S. application number, no such application number can be provided by the Office. The material in former § 1.14(b) (timing of destruction) was proposed to be revised and was set forth as proposed § 1.14(f), but the material has been deleted instead. The timing of any destruction of patent files and papers is governed by 44 U.S.C. 33 and 36 CFR 12, which require that records be retained in accordance with the agency records schedules approved by the National Archives and Records Administration (NARA) or the General Records Schedule issued by NARA. The law also requires that the Office generate a list of records and the dispositions of those records, and the Comprehensive Records Schedule is such a list. According to this schedule, an abandoned national patent application filed before June 8, 1995, will be destroyed after twenty years from the date of abandonment unless it is referenced in a U.S. patent. Furthermore, the schedule provides that national applications filed on or after June 8, 1995, will be destroyed twenty-three years after the date of abandonment unless referenced in a U.S. patent. In addition, the records schedule provides that International application (home and search copy) files are destroyed 20 years after their filing or deposit date. Since former § 1.14(b) could not change any records retention schedule, it was decided to delete former § 1.14(b) (proposed as § 1.14(f)) and to redesignate proposed §§ 1.14(g) through (k) as (f) through (j). For additional information about the Office's Comprehensive Records Schedule or the Office's records management program in general, the Office's Records Officer should be

contacted by telephone at (703) 308-7400, or by facsimile at (703) 308-7407.

Section 1.14(c) is amended to state that a copy of an application-as-filed may be obtained, upon payment of the appropriate fee, when a U.S. patent incorporates the application by reference.

Section 1.14(d) is amended to correspond to prior § 1.14(a)(3)(iii) with additional text from prior § 1.14(e)(2). Section 1.14(d) is revised to state that an applicant, an attorney or agent of record, or an applicant's assignee may authorize access to an application by filing a power to inspect. In addition, § 1.14(d) provides that if an executed oath or declaration has not been filed, a registered attorney or agent named in the papers filed with the application may have access, or authorize another person to have access, to an application by filing a power to inspect. A registered practitioner named in a letterhead would not be sufficient, but rather a clear identification of the individual as being a representative would be required. The form for a power to inspect is PTO/SB/67.

Section 1.14(e) is amended to correspond to prior § 1.14(a)(3) and states that any person may obtain access to an application by submitting a request for access if certain conditions apply. The form for a request for access to an abandoned application is PTO/SB/68. Access to international phase application files is governed by the provisions of the PCT and not by § 1.14. Section 1.14(e)(1), as amended, corresponds to prior § 1.14(a)(3)(ii). Section 1.14(e)(2)(i) corresponds to prior § 1.14(a)(3)(iv)(A). Section 1.14(e)(2)(ii), as revised, corresponds to prior § 1.14(a)(3)(iv)(B). Section 1.14(e) does not include the provisions of prior § 1.14(a)(3)(iv)(C). This will now enable an abandoned application that claims benefit of the filing date of an application that is open to public inspection to be maintained in confidence unless the abandoned application is open to public inspection for some other reason.

Sections 1.14(f), (g), (h), and (i) contain the material of prior §§ 1.14(c), (d), (f), and (g), respectively.

Section 1.14(j) is added to contain the material of prior § 1.14(e) and amendment is made to explain the requirements of a petition for access and include the provisions of former § 1.14(e)(1). Section 1.14(j) is also revised to indicate that the Office, either sua sponte or on petition, may provide access or copies of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. The Office may, for example, provide access to, or copies of, applications to another Federal Government agency, such as a law enforcement agency, whether the Office is acting on its own initiative or in response to a petition from the other agency when access is needed for a criminal investigation.

Comment 3:

Two comments urged the Office to continue to provide status information on applications that claim the benefit of the filing date of an application for which status information is available. The information was said to be very useful to the public and to provide some measure of certainty as to whether any continuing applications have been filed.

Response:

The comments are adopted. The Office will continue to release continuity data for all applications for which status information may be given.

Comment 4:

Several comments supported proposed § 1.14, but addressed proposed § 1.14(d)(4), arguing that the filing of a power of attorney, not an executed oath or declaration, should control whether the registered attorney or agent named in the application papers under § 1.53 or the national stage documents under § 1.494 or § 1.495 can sign a power to inspect. The comments noted that the power of attorney need not be filed with the oath or declaration, and that the attorney who filed the application should be able to sign a power to inspect until a power of attorney is filed wherein he is not named as an attorney.

Response:

The suggestion is not adopted. Once an executed oath or declaration is filed, the omission of a power of attorney may be intentional on the part of the applicant and the attorney who filed the application should not continue to be allowed to sign a power to inspect. Provision has been made for the attorney who filed the application to sign a power to inspect because an application without an executed oath or declaration would not otherwise have anyone entitled to inspect the application. Inventorship is not set until an executed oath or declaration is filed (see § 1.41(a)(1)). An attorney or agent is not of record until an executed oath or declaration and a power of attorney are filed (see § 1.34(b)). An assignee is not permitted to take action until an executed oath or declaration and an assignment are filed (see § 3.73(b)). Accordingly, without an executed oath or declaration, an executed power of attorney would be insufficient to make an attorney of record. Furthermore, once an executed oath or declaration is filed, any one of the named inventors may execute a power of attorney and it is no longer necessary to have the attorney or agent who filed the application be permitted to execute a power to inspect.

Comment 5:

Two comments suggested allowing public inspection of all applications relied upon for priority without a petition for access, and not just those that are abandoned.

Response:

Applications are normally maintained in confidence pursuant to 35 U.S.C. 122 and public access to any application relied upon for priority in a U.S. Patent is not appropriate. An application that issues as a patent may be a divisional application of a pending application and the prosecution of the parent application may have little, if any, subject matter in common with the patent. Accordingly, if a petition for access is filed, only that part of the prosecution history and application that relates to the subject matter claimed in the patent is released to petitioner.

Comment 6:

One comment suggested that the term “special circumstances” be defined in the rule.

Response:

The suggestion is not adopted. How the Office defines the term “special circumstances” as used in 35 U.S.C. 122 and § 1.14(j) is addressed in the Manual of Patent Examining Procedure (MPEP)(February 2000) in § 103 under the subsection titled “Petition for Access,” and whether “special circumstances” are present depends upon the particular facts involved, which facts may be varied.

Section 1.17:

Sections 1.17(h) and 1.17(i) are amended to restate the introductory reference to the sections referring to §§ 1.17(h) and (i). Sections 1.17(h) and (i) are also amended to characterize the fee set forth in § 1.17(h) as a petition fee, and the fee set forth in § 1.17(i) as a processing fee. Section 1.17(h) is amended to list only those matters that require the exercise of judgment or discretion in determining whether the request/petition will be granted or denied (

e.g.

, 1.47, 1.53, 1.182, 1.183, 1.313). Section 1.17(i) is amended to list those matters that do not require the exercise of judgment or discretion, but which are routinely granted once the applicant has complied with the stated requirements (

e.g.

, 1.41, 1.48, 1.55). Thus, the Office is amending § 1.17(h) and § 1.17(i) to locate matters requiring a petition in § 1.17(h), and those matters that do not require a petition, but only a processing fee, in § 1.17(i). Section 1.17(i) is also amended to provide a processing fee for: (1) Filing a nonprovisional application in a language other than English (§ 1.52(d)), previously in § 1.17(k); and (2) filing an oath or declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity different from the inventive entity

set forth in the international stage (§ 1.497(d)).

Section 1.17(k) provides a fee for filing a request for expedited examination under § 1.155(a).

Sections 1.17(l) and (m) are amended for clarity, to eliminate unassociated text, and to reflect fiscal year 2001 fee amounts.

Section 1.17(p) is amended to include a reference to § 1.97(d) as well as to § 1.97(c) in view of the amendment to § 1.97(d) referencing § 1.17(p) rather than § 1.17(i). The fee set forth in § 1.17(p) is also changed from $240 to $180.

Section 1.17(q) is amended for consistency with §§ 1.17(h) and 1.17(i), as the matters listed therein apply to provisional applications.

Comment 7:

Comments were received opposing the change to § 1.17(p).

Response:

See the discussion thereof in § 1.97(d).

Section 1.19:

Section 1.19(a) is amended to clarify that the fees set forth in § 1.19(a)(1) do not apply to patents containing a color photograph or drawing, that the fee in § 1.19(a)(2) applies to plant patents in color, and that the fee in § 1.19(a)(3) applies to patents (other than plant patents) containing a color drawing.

Former sections 1.19(b)(1) and (b)(2) are divided into three sections (§§ 1.19(b)(1), 1.19(b)(2), and 1.19(b)(3)), with the former provisions of §§ 1.19(b)(3) and 1.19(b)(4) being redesignated as §§ 1.19(b)(4) and 1.19(b)(5). Section 1.19(b)(1) refers to the application as filed. Section 1.19(b)(2) is limited to charges for the paper portion of the complete patent application file wrapper, namely: $200 for copies of the first 400 pages of a patent application file wrapper and contents and $40 for each additional one hundred pages, or fraction thereof. Section 1.19(b)(3) provides for a charge of $55 for a copy of a compact disc in a patent application file wrapper, and $15 for each additional compact disc when it is part of the same order. The submission of application information on compact disc is now provided for in §§ 1.52(e), 1.96 and 1.821

et seq.

Section 1.19(g) is removed and reserved. The practice of comparing and certifying documents not produced by the Office is being eliminated. The Office considers it appropriate to certify copies of documents only when the copy of the document has been prepared by the Office.

Section 1.19(h) is also removed and reserved. The $25 fee under § 1.19(h) for obtaining a corrected or duplicate filing receipt is no longer necessary as the Office is now performing that service without charge. Consequently, where there is an error in a filing receipt, applicants need no longer provide a showing that the error was due to Office mistake or pay a $25 fee for the corrected receipt.

See Changes In Practice In Supplying Certified Copies And Filing Receipts

, 1199

Off. Gaz. Pat. Office

38 (June 10, 1997).

Comment 8:

One comment stated that the proposed fee of $250 for copies of certified and uncertified patent-related file wrappers and contents of 400 or fewer pages was excessive, and that $100 for the first 400 pages would be more reasonable, if it costs 25 cents a page for copying. In addition, the comment stated that there should be no reason why a flat page charge cannot be used; that with the proposed rule, the number of pages would have to be counted to see whether the initial 400-page limit has been reached, and that it should not be a burden to determine the number of pages that have been copied.

Response:

The comment is adopted to the extent that the cost for the first 400 pages has been reduced to $200. Much of the cost per page for copying a given application depends upon the difficulty in obtaining the application, the time required putting the papers in condition for copying and returning those same papers to the file in their original condition, and the number of pages being fed instead of copied as a single sheet. A fee of $200 has been determined to be the appropriate price for locating, preparing, copying and mailing the average application. As to charging based upon the number of pages, this suggestion has been carefully considered but has not been adopted. In order to improve efficiency, the Office needs to have a procedure which will generally require the least communications between the requester and the Office. If a flat $200 fee is charged for file wrappers with fewer than 400 pages, then most requesters of file wrappers can pay the set fee and receive their order without any additional communication with the Office. When the file wrapper is larger than 400 pages, then the Office either will have to receive a deposit account authorization for any fees due which can be debited or request the additional money from the requester. Since many requesters do not have deposit accounts and others will be reluctant to allow any charge to be made to their deposit account or credit card, having a system where the Office charges a set fee for most orders and possibly contacting the requester to obtain additional fees when the order is very large will assist requesters in minimizing the risk of unexpectedly large charges.

Section 1.22:

Section 1.22(b) is amended to change “should” to “must” because the Office needs fees to be submitted in such a manner that it is clear for which purpose the fees are paid. Section 1.22(b) is also amended to provide that the Office may return fees that are not itemized as required by § 1.22(b), and that the provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to § 1.22.

Section 1.22 was proposed to be amended to add §§ 1.22(c)(1) and (2) to define by rule when a fee had been paid, such as when payment is made by authorization to charge a deposit account, or by submission of a check. An effect of the rule change would have been to change the treatment for refund purposes of payments made by authorization to charge a deposit account. The proposed amendment will not be made as amendment is unnecessary in view of payment receipt dates already being governed by other rules (

e.g.

, §§ 1.6, 1.8 and 1.10). Notwithstanding the lack of amendment to § 1.22, the Office is changing in one aspect its treatment of authorizations to charge deposit accounts for refund purposes, which aspect is not explicitly governed by other rules. The Office will no longer treat authorizations to charge a deposit account as being received by the Office as of the date that the deposit account is actually debited for purposes of refund payments under §§ 1.26 and 1.28. As of the effective date of this final rule, payment by authorization to charge a deposit account will be treated for refund purposes the same as payments by other means (

e.g.

, check or credit card charge authorization), with each being treated as paid (for refund purposes) on the date of receipt in the Office as defined by § 1.6 (Example 1). The advantage of using a certificate of mailing under § 1.8 for timely reply to an Office action, while using the date of receipt by the Office (§ 1.6) of the payment for refund purposes, will be retained (Example 2). The MPEP will be revised to contain the substance of the formerly proposed amendment to § 1.22(c).

Example 1:

Payment of a large entity basic filing fee by authorization to charge a deposit account is hand-carried to the Office on October 2, 2000. The deposit account is debited by the Office on February 2, 2001. A request for refund of a portion of the filing fee, based on a request for small entity status, is hand-carried to the Office on March 30, 2001. Under prior practice, the request for refund would be granted as timely submitted within two months of debiting of the deposit account. Under the new practice, the request for refund would be denied as untimely made. Applicant would, however, under the amended rule, have three months (rather

than two) from the October 2, 2000 payment date to submit the refund request.

Example 2:

A Notice to File Missing Parts of Application was mailed on November 10, 2000, requiring a large entity basic filing fee with the standard period for reply of two months. A check for payment of the large entity basic filing fee is mailed with a § 1.8 certificate of mailing date of January 10, 2001, and is actually received in the Office on January 15, 2001. Under prior and current practice, the January 10, 2001 reply to the November 10, 2000 Notice to File Missing Parts of Application, which was received in the Office on January 15, 2001, is a timely reply without the need for an extension of time under § 1.136(a), and the (new) three-month period for submission of a request for refund based on small entity status under amended § 1.28(a) would expire on April 16, 2001 (April 15, 2001 being a Sunday). For a fee payment made by authorization to charge a deposit account, the payment is also timely and results in the same expiration for the refund period. For express mail fee payments under § 1.10, the express mail date is the receipt date for the payment and calculating the three month refund period and not the actual date of receipt of the payment in the Office.

Comment 9:

One comment requested that explicit guidance be provided in the MPEP as to what would constitute a sufficiently clear statement of the purpose for which fees are being paid under § 1.22(b). In particular, the example was raised as to whether a statement that “filing fees were being paid” would be sufficient if the fees being paid included both a basic filing fee and an additional independent claim fee.

Response:

The comment is adopted. The MPEP will be revised to provide examples that will clarify what constitutes a sufficiently clear statement. The intent of the amendment is to encourage a better explanation by applicants so that Office employees can properly account for the payments being made by applicants and not to find ways to hold a statement deficient. Specifically, the reference to filing fees would be sufficient to cover filing fees of all different types of applications and all types of claims fees.

Comment 10:

One comment opposed the addition of § 1.22(c), as the addition was confusing, particularly in regard to §§ 1.8 and 1.10 payments, and the addition was not necessary to support the proposed amendment to § 1.26(b) for a two-year period for refunds from a date certain.

Response:

The comment is adopted and the proposed addition of § 1.22(c) will not be made. The amendment is not in fact necessary to define when a fee has been paid, in view of the change in practice regarding treatment of deposit account practices, supra, §§ 1.8, or § 1.10, and the actual date of receipt (in the absence of §§ 1.8 or 1.10 being utilized). The MPEP will be modified to better clarify date of payments, particularly as refund time periods are impacted.

Section 1.25:

Section 1.25(b) is amended to provide that an authorization to charge fees under § 1.16 (which relates to national application filing fees) in an application filed under 35 U.S.C. 371 will be treated as an authorization to charge fees under § 1.492 (which relates to national stage fees). There are many instances in which papers filed for the purpose of entering the national stage under 35 U.S.C. 371 and § 1.494 or § 1.495 include an authorization to charge fees under § 1.16 (rather than fees under § 1.492) which relates to national applications under 35 U.S.C. 111. In such instances, the Office treats the authorization as an authorization to charge fees under § 1.492 since: (1) timely payment of the appropriate national fee under § 1.492 is necessary to avoid abandonment of the application as to the United States; and (2) the basic filing fee under § 1.16 is not applicable to such papers or applications. Therefore, the Office is changing § 1.25(b) to place persons filing papers to enter the national stage under 35 U.S.C. 371 and § 1.494 or § 1.495 on notice as to how an authorization to charge fees under § 1.16 will be treated.

Section 1.25(b) is also amended to provide that an authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b), and to bring together the two sentences relating to sufficient funds.

Comment 11:

See comment for § 1.311.

Section 1.26:

The Office is amending the rules of practice to provide that all requests for refund must be filed within specified time periods. The rules of practice do not (other than in the situation in which a request for refund is based upon subsequent entitlement to small entity status) set any time period (other than “a reasonable time”) within which a request for refund must be filed. In the absence of such a time period, Office fee record keeping systems and business planning must account for the possibility that a request for refund may be filed at any time, including many years after payment of the fee at issue.

The new two year limit for requesting refunds under § 1.26 will be applied to any fee paid regardless of when it was paid. The two year time period for requesting a refund will end two years and sixty days from the date of publication in the

Federal Register

for fees paid prior to sixty days from the date of publication in the

Federal Register

, or two years from payment of the fee for fees paid on or after sixty days from the date of publication in the

Federal Register

.

It is a severe burden on the Office to treat a request for refund filed years after payment of the fee at issue. Since Office fee record keeping systems change over time, the Office must check any system on which fees for the application, patent, or trademark registration have been posted to determine what fees were in fact paid. In addition, changes in fee amounts, which usually occur on October 1 of each year, make it difficult to determine with certainty whether a fee paid years ago was the correct fee at the time and under the condition it was paid.

Accounting for the possibility that a request for refund may be filed years after payment of the fee at issue causes business planning problems. Without any set time period within which a request for refund must be filed, the Office must maintain fee records, in any automated fee record keeping system ever used by the Office, in perpetuity. Finally, as the Office can never be absolutely certain that a submitted fee was not paid by mistake or in excess of that required, the absence of such a time period subjects the Office to unending and uncertain financial obligations.

Accordingly, the Office is amending § 1.26 to provide non-extendable time periods within which any request for refund must be filed to be timely.

Section 1.26(a) is amended by dividing its first sentence into two sentences. Section 1.26(a) is further amended for consistency with 35 U.S.C. 42(d) (the Office “may refund any fee paid by mistake or any amount paid in excess of that required”). Under 35 U.S.C. 42(d), the Office may refund: (1) A fee paid when no fee is required (a fee paid by mistake); or (2) any fee paid in excess of the amount of fee that is required.

See Ex parte Grady

, 59 USPQ 276, 277 (Comm'r Pat. 1943) (the statutory authorization for the refund of fees under the “by mistake” clause is applicable only to a mistake relating to the fee payment). In the situation in which an applicant or patentee takes an action “by mistake” (

e.g.

, files an application or maintains a patent in force “by mistake”), the submission of fees required to take that action (

e.g.

, a filing fee submitted with such application or a maintenance fee submitted for such patent) is not a “fee paid by mistake” within the meaning of 35 U.S.C. 42(d). Section 1.26(a) is also amended to revise the “change of purpose” provisions to read “[a] change of purpose after the payment of a fee, as

when a party desires to withdraw a patent or trademark filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee.”

Section 1.26(a) is also amended to change the sentence “[a]mounts of twenty-five dollars or less will not be returned unless specifically requested within a reasonable time, nor will the payor be notified of such amount; amounts over twenty-five dollars may be returned by check or, if requested, by credit to a deposit account” to “[t]he Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts.” Except as discussed below, the Office intends to continue to review submitted fees to determine that they have not been paid by mistake or in excess of that required, and to

sua sponte

refund fees (of amounts over twenty-five dollars) determined to have been paid by mistake or in excess of that required. Section 1.26(a), however, is amended to eliminate language that appears to obligate the Office to

sua sponte

refund fees to be consistent with the provisions of § 1.26(b) which requires that any request for refund be filed within a specified time period.

Section 1.26(a) is also amended to facilitate refunds by electronic funds transfer. Section 31001(x) of the Omnibus Consolidated Rescissions and Appropriations Act of 1996, Pub. L. 104-134, 110 Stat. 1321 (1996) (the Debt Collection Improvement Act of 1996), amended 31 U.S.C. 3332 to require that all disbursements by Federal agencies (subject to certain exceptions and waivers) be made by electronic funds transfer. The Department of the Treasury has implemented this legislation at 31 CFR part 208.

See Management of Federal Agency Disbursements

, Final Rule Notice, 63 FR 51489 (September 25, 1998). Thus, § 1.26(a) is amended to enable the Office to: Obtain the banking information necessary for making refunds by electronic funds transfer in accordance with 31 U.S.C. 3332 and 31 CFR part 208, or obtain the deposit account information to make the refund to the deposit account, or to have the option of refunding by treasury check.

Specifically, § 1.26(a) is also amended such that if a party paying a fee or requesting a refund does not instruct that refunds be credited to a deposit account, the Office will attempt to make the refund by electronic funds transfer. If such party does not provide the banking information necessary for making refunds by electronic funds transfer, or instruct the Office that refunds are to be credited to a deposit account, the Commissioner may either require such banking information or use the banking information on the payment instrument to make a refund. This provision will authorize the Office to: (1) Use the banking information on the payment instrument (

e.g.

, a personal check is submitted to pay the fee) when making a refund due to an excess payment; or (2) require such banking information including the existence of a deposit account in other situations (

e.g.

, a refund is requested or a money order or certified bank check is submitted containing an excess payment). The purpose of this change to § 1.26(a) is to encourage parties to submit the banking information necessary for making refunds by electronic funds transfer (if not on the payment instrument) up-front, and not to add a step (requiring such banking information) to the refund process. If it is not cost-effective to require the banking information necessary for making refunds by electronic funds transfer, the Office may either: Obtain the deposit account information, or simply issue any refund by treasury check.

See

31 CFR 208.4(f).

Section 1.26(a) also provides that any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. The Office will not refund a fee paid by credit card by Treasury check, electronic funds transfer, or credit to a deposit account (§ 1.25).

Section 1.26(b) provides that any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in § 1.26(b) or in § 1.28(a).

Section 1.26(b) also provides that if the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and that such request must be accompanied by a copy of that deposit account statement. This provision of § 1.26(b) will apply, for example, in the following types of situations: (1) A deposit account is charged for an extension of time as a result of there being a prior general authorization in the application (§ 1.136(a)(3)); or (2) a deposit account is charged for the outstanding balance of a fee as a result of an insufficient fee being submitted with an authorization to charge the deposit account for any additional fees that are due. In these situations, the party providing the authorization is not in a position to know the exact amount by which the deposit account will be charged until the date of the deposit account statement indicating the amount of the charge.

Finally, § 1.26(b) provides that the time periods set forth in § 1.26(b) are not extendable.

Section 1.27:

The Office is simplifying applicant's request for small entity status under § 1.27. The currently used small entity statement forms are eliminated as they are no longer needed. Some material in §§ 1.9 and 1.28 is reorganized into § 1.27.

The new standard for asserting a claim for small entity status under § 1.27 will be effective on the date of publication in the

Federal Register

.

Small entity status is established at any time by a simple assertion of entitlement to small entity status. The previously required statements, which include a formalistic reference to § 1.9, are no longer required. Payment of an exact small entity basic filing (§§ 1.16(a), (f), (g), (h), or (k)) or national stage (§§ 1.492(a)(1), (a)(2), (a)(3), (a)(4), or (a)(5)) fee is also considered an assertion of small entity status. This is so even if the wrong exact basic filing or national fee was selected. To establish small entity status after payment of the basic filing or national stage fee as a non-small entity, a written assertion of small entity status is required to be submitted.

The parties who can assert small entity status have been expanded/liberalized to include one of several inventors (rather than all the inventors), a partial assignee (rather than all the assignees), or any attorney or agent identified in § 1.33. Written assertion of small entity status and the filing of a written assertion are not necessarily performed by the same party.

Compare

§ 1.27(c)(2)(ii) with § 1.27(c)(2)(iii).

Other clarifying changes are made including a transfer of material into § 1.27 from § 1.9 drawn towards definitions of a small entity and from § 1.28 drawn towards: (1) Assertions in related, continuing and reissue applications; (2) notification of loss of entitlement to small entity status; and (3) fraud on the Office in regard to establishing small entity status or paying small entity fees.

While there is no change in the current requirement to make an investigation in order to determine entitlement to small entity status, a recitation is added noting the need for a determination of entitlement prior to an assertion of status; the Office is only changing the ease with which small entity status could be claimed once it

has been determined that a claim to such status is appropriate.

For additional changes to small entity requirements see § 1.28.

Problem and Background:

Section 1.27 formerly required that a request for small entity status be accompanied by submission of an appropriate statement that the party seeking small entity status qualified in accordance with former § 1.9. Either a reference to former § 1.9 or a specific statement relating to the former provisions of § 1.9 was mandatory. For a small business concern, the small business concern had to either state that exclusive rights remain with the small business concern, or if not, had to identify the party to which some rights had been transferred so that the party to which rights have been transferred could submit its own small entity statement (former § 1.27(c)(1)(iii)). This led to the submission of multiple small entity statements for each request for small entity status where rights in the invention were split. In part, to ensure that at least the reference to § 1.9 was complied with, the Office produced four types of small entity statement forms (for inventors, small business concerns, non-profit organizations, and non-inventor supporting a claim by another) that included the required reference to § 1.9 and specific statements as to exclusive rights in the invention. Where an application had not been assigned and there were multiple inventors, each inventor had to actually sign a small entity statement, the execution of which must have all been coordinated and submitted concurrently. Similarly, coordination of execution and submission of statements were needed where there was more than one assignee. Additionally, the statement forms relating to small business concerns and non-profit organizations had to be signed by an appropriate official empowered to act on behalf of the small business concern or non-profit organizations. Refunds of non-small entity fees could only be obtained if a refund was specifically requested within two months of the payment of the full (non-small entity) fee and was supported by all required small entity statements. See former § 1.28(a)(1). The former two-month refund window under § 1.28 was not extendable.

The rigid requirements of §§ 1.27 and 1.28 led to a substantial number of problems. Applicants, particularly

pro se

applicants, did not always recognize that a particular reference to former § 1.9 was required in their request to establish small entity status. They believed that all they had to do was pay the small entity fee and state that they were a small entity. Further, the time required to ascertain who were the appropriate officials to sign the statement and to have the statements (referring to former § 1.9) signed and collected (where more than one was necessary), resulted, in many instances, in small entities having to pay the higher non-small entity fees and then seek a refund. These situations resulted in: (1) Small entity applicants also having to pay additional fees (

e.g.

, surcharges and extension(s) of time fees for the delayed submission of the small entity statement form); (2) additional correspondence with the Office to perfect a claim for small entity status; and (3) the filing of petitions with petition fees to revive abandoned applications. This increased the pendency of the prosecution of the application in the Office and, in some cases, resulted in the loss of patent term. For example, under former procedures, if a

pro se

applicant filed a new application with small entity fees but without a small entity statement, the Office mailed a notice to the

pro se

applicant requiring the full basic filing fee of a non-small entity. Even if the applicant timely filed a small entity statement, the applicant needed to timely pay the small entity surcharge for the delayed submission of the small entity statement to avoid abandonment of the application. A second example was a non-profit organization paying the basic filing fee as a non-small entity because of difficulty in obtaining the non-profit small entity statement form signed by an appropriate official. In this situation, a refund pursuant to § 1.26, based on establishing status as a small entity, could only be obtained if a statement under § 1.27 and the request for a refund of the excess amount were filed within the non-extendable two-month period from the date of the timely payment of the full fee. A third example was an application filed without the basic filing fee on behalf of a small business concern by a practitioner who included the standard authorization to pay additional fees. The Office would have immediately charged the non-small entity basic filing fee without specific notification thereof at the time of the charge. By the time the deposit account statement was received and reviewed, the two-month period for refund could have expired.

Accordingly, a simpler procedure to establish small entity status will reduce processing time within the Office and will be a tremendous benefit to small entity applicants as it will eliminate the time-consuming and aggravating processing requirements that were mandated by the former rules. Thus, the instant simplification will help small entity applicants to receive patents sooner with fewer expenditures in fees and resources and the Office can issue the patent with fewer resources.

Assertion as to entitlement to small entity status; assertion by writing:

The Office will now allow small entity status to be established by the submission of a simple written assertion of entitlement to small entity status. The former formal requirements of § 1.27, which included a reference to either former § 1.9, or to the exclusive rights in the invention, are eliminated.

The written assertion is not required to be presented in any particular form. Written assertions of small entity status or references to small entity fees will be liberally interpreted to represent the required assertion. The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter or reply cover sheet. It is the intent of the Office to modify its application transmittal forms to provide for such a check box. Accordingly, small entity status can be established without submission of any of the former small entity statement forms (PTO/SB/09-12) that embody and comply with the former requirements of § 1.27 and which were previously used to establish small entity status. Practitioners may, of course, continue to use such forms or similar forms if they believe small entity forms serve an educational purpose for their clients.

Assertion by Payment of Small Entity Basic Filing or Basic National Fee:

The payment of an exact small entity basic filing (§§ 1.16(a), (f), (g), (h), or (k)) or basic national fee (§§ 1.492(a)(1), (a)(2), (a)(3), (a)(4), or (a)(5)) is also considered to be a sufficient assertion of entitlement to small entity status. An applicant filing a patent application and paying an exact small entity basic filing or basic national fee automatically establishes small entity status for the application even without any further written assertion of small entity status. This is so even if an applicant inadvertently selects the wrong type of small entity basic filing or basic national fee for the application being filed. If small entity status was not established when the basic filing or basic national fee was paid, such as by payment of a large entity basic filing or basic national fee, a later claim to small entity status requires an (actual) written assertion. Payment of a small entity fee other than a small entity basic filing or basic national fee (

e.g.

, extension of time, or

issue fee) without inclusion of a written assertion is not sufficient.

Even though applicants can assert small entity status only by payment of an exact small entity basic filing or basic national fee, the Office encourages applicants to also file a written assertion of small entity status as well as pay the exact amount of the small entity basic filing or basic national fee. To that end, the Office intends to amend the application transmittal forms (PTO/SB/05, PTO/SB/18, PTO/SB/19) to include a check box that can be used as a written assertion of small entity status. A written assertion will provide small entity status should applicant fail to pay the exact small entity basic filing or basic national fee. The limited provision providing for small entity status by payment of an exact small entity basic filing or basic national fee is only intended to act as a safety net to avoid possible financial loss to inventors or small businesses that qualify for small entity status. As noted in the discussion relating to § 1.33(a), one may not wish to solely rely upon use of a written assertion and pay the exact amount of the basic filing or basic national fee, particularly for assignees and submissions by one of the inventors, after an executed oath or declaration under § 1.63 has been submitted.

Caution:

Even though small entity status is accorded where the wrong type of small entity basic filing fee or basic national fee is selected but the exact amount of the fee is paid, applicant still needs to pay the correct small entity amount for the basic filing or basic national fee where selection of the wrong type of fee results in a deficiency. While an accompanying general authorization to charge any additional fees suffices to pay the balance due of the proper small entity basic filing or basic national fee, specific authorizations to charge fees under § 1.17 or extension of time fees do not suffice to pay any balance due of the proper small entity basic filing or basic national fee because they do not actually authorize payment of small entity amounts.

Examples: Applications under 35 U.S.C. 111(a):

If an applicant were to file a utility application under 35 U.S.C. 111(a), yet only pay the exact small entity amount for a design application (currently the small entity filing fees for utility and design applications are $345 and $155, respectively), small entity status for the utility application would be accorded. See the following examples:

(1) Where the utility application under 35 U.S.C. 111(a) was filed inadvertently with the exact small entity basic filing fee for a design application rather than for a utility application and an authorization to charge the filing fee was not present, the Office would accord small entity status and mail a Notice to File Missing Parts of Application, requiring the $190 difference between the small entity utility application filing fee owed and the small entity design application filing fee actually paid plus a small entity surcharge (of $65) for the late submission of the correct filing fee.

(2) Where the utility application under 35 U.S.C. 111(a) was filed without any filing fee but the $155 exact small entity filing fee for a design application was inadvertently paid in reply to a Notice to File Missing Parts of Application, small entity status would be established even though the correct small entity filing fee for a utility application was not fully paid. While the Office would notify applicant of the remaining amount due, including the need for a small entity surcharge in view of the deficiency in the filing fee, the period for reply to pay the correct small entity utility basic filing fee and surcharge would, however, continue to run. Small entity extensions of time under § 1.136(a) would be needed for the later submission of the $190 difference between the $345 small entity utility basic filing fee owed and the $155 small entity design filing fee inadvertently paid as well as the small entity surcharge. If there was an authorization to charge a deposit account in the reply to the Notice, the $190 difference would have been charged along with the small entity $65 surcharge and the period for reply to the Notice to File Missing Parts of Application would not continue to run.

Applications entering the national stage under 35 U.S.C. 371:

Section 1.492(a) sets forth five (5) different basic national fee amounts which apply to different situations. If an applicant pays a basic national fee which is the exact small entity amount for one of the fees set forth in § 1.492(a), but not the particular fee which applies to that application, the applicant will be considered to have made an assertion of small entity status. This is true whether the fee paid is higher or lower than the actual fee required. See the following examples.

(1) An applicant pays $485 (the small entity amount due under § 1.492(a)(3), where the United States was neither the International Searching Authority (ISA) nor the International Preliminary Examining Authority (IPEA) and the search report was not prepared by the European Patent Office (EPO) or Japanese Patent Office (JPO)) when in fact the required small entity fee is $420 under § 1.492(a)(5), because the JPO or EPO prepared the search report. The applicant will be considered to have made the assertion of small entity status. The office will apply $420 to the payment of the basic national stage fee and refund the overpayment of $65.

(2) An applicant pays $420 (the small entity fee due under § 1.492(a)(5) where the search report was prepared by the EPO or JPO). In fact, the search report was prepared by the Australian Patent Office and no preliminary examination fee was paid to the United States Patent and Trademark Office. Thus, the required small entity fee is $485 under § 1.492(a)(3). The applicant will be considered to have made the assertion of small entity status. If the applicant has authorized payment of fee deficiencies to a deposit account, the Office will charge the $65 to the deposit account and apply it and the $420 to the basic national fee. If there is no authorization or there are insufficient funds in the deposit account, the basic national fee payment is insufficient and the balance is due. If the balance is not provided before 20 or 30 months from the priority date has expired, the application will be abandoned.

If payment is attempted of the proper type of basic filing or basic national fee (applicant correctly identifies the type of fee for the type of application being filed), but the amount of the fee paid is not the exact small entity fee required (an incorrect fee amount is supplied) and a written assertion of small entity status is not present, small entity status will not be accorded. The Office will mail a notice of insufficient basic filing or basic national fee with a surcharge due as in prior practice if an authorization to charge the basic filing or basic national fee is not present. The Office does not consider a basic filing or basic national fee submitted in an amount above the correct fee amount, but below the non-small entity fee amount, as a request to establish small entity status unless an additional written assertion is also present. The submission of a basic filing or basic national fee below the correct fee amount also does not serve to establish small entity status.

Where an application is originally filed by a party, who is in fact a small entity, with an authorization to charge fees (including basic filing or national fees) and there is no indication (assertion) of entitlement to small entity status present, that authorization is not sufficient to establish small entity status unless the authorization is specifically directed to small entity basic filing or basic national fees. The general

authorization to charge fees will continue to be acted upon immediately and the full (not small entity) basic filing or basic national fees will be charged. Applicant will have three months to request a refund by asserting entitlement to small entity status. This is so even if the application is a continuing application where small entity status had been established in the prior application.

Parties who can assert entitlement to small entity status by writing:

The parties who can assert entitlement to small entity status by writing includes all parties permitted by § 1.33(b) to file a paper in an application. This eliminates the additional requirement of obtaining the signature of an appropriate party other than the party prosecuting the application. By way of example, in the case of three

pro se

inventors for a particular application, the three inventors upon filing the application can submit a written assertion of entitlement to small entity status and thereby establish small entity status for the application. For small business concerns and non-profit organizations, the practitioner can supply the assertion rather than require an appropriate official of the small business concern or organization to execute a small entity statement form. In addition, a written assertion of entitlement to small entity status can be made by one of several inventors or a partial assignee. Former practice did not require an assignee asserting small entity status to submit a § 3.73(b) certification, and such certification is not now required under the current revision either for partial assignees or for an assignee of the entire right, title, and interest.

Inventors asserting small entity status:

Any inventor (of record) is permitted to submit a written assertion of small entity status, including individuals identified as inventors but who are not officially named of record as an executed § 1.63 oath/declaration has not yet been submitted. See § 1.41(a)(1). Where an application is filed without an executed oath/declaration pursuant to § 1.53(f), the Office will accept the written assertion of an individual who has merely been identified as an inventor on filing of the application (

e.g.

, application transmittal letter) as opposed to having to be named as an inventor by the filing of an executed § 1.63 oath or declaration (§§ 1.41(a)(1)). Sections 1.4(d)(2) and 10.18(b) are seen as sufficient basis to permit any individual to provide a written assertion so long as the individual identifies himself or herself as an inventor. An actual inventor who has not been identified as an inventor (

e.g.

, by way of application transmittal letter) or named as an inventor (

i.e.

, executed § 1.63 oath or declaration) in the file record may not file a written assertion as to small entity entitlement.

Where a § 1.63 oath or declaration is later filed, any original written assertion as to small entity status (which has been submitted to the Office by an appropriate party under § 1.33(b)) will remain unless changed by an appropriate party under § 1.27(f)(2). Where a later-filed § 1.63 oath or declaration sets forth an inventive entity that does not include the person who initially was identified as an inventor and who asserted small entity status, small entity status will also remain.

A distinction exists, however, as to who can file a written assertion of entitlement to small entity status once the written assertion is signed. Sections 1.27(c)(2)(ii) and 1.33(b) permit one of several inventors to file as well as sign a written assertion. The same is not true for a partial assignee. Section 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under § 1.33(b).

Parties who can assert entitlement to small entity status by payment of basic filing or national fee:

Where small entity status is sought by way of payment of the basic filing or basic national fee, any party, such as a partial assignee, may submit payment, such as by check, and small entity status will be accorded.

Policy Considerations:

Office policy and procedures already permit establishment of small entity status in certain applications through simplified procedures. For example, small entity status previously could be established in a continuing or reissue application simply by payment of the small entity basic filing fee if the prior application/patent had small entity status. See former § 1.28(a)(2). The instant concept of payment of the small entity basic statutory filing fee to establish small entity status in a new application is merely a logical extension of that practice.

There may be some concern that elimination of the small entity statement forms will result in applicants who are not actually entitled to small entity status requesting such status. On balance, it seems that the requirements produce more errors where small entity applicants who are entitled to such status run afoul of procedural hurdles created by the former requirements of § 1.27 than the requirements prevent status claims for those who are not in fact entitled to such status.

Continued Obligations for Thorough Investigation of Small Entity Status:

Applicants should not confuse the fact that the Office is making it easier to assert small entity status with the need to do a complete and thorough investigation before an assertion is made that they do, in fact, qualify for small entity status. It should be clearly understood that, even though it is much easier to assert and thereby establish small entity status, applicants will continue to need to make a full and complete investigation of all facts and circumstances before making a determination of actual entitlement to small entity status. Where entitlement to small entity status is uncertain, it should not be claimed.

See

MPEP 509.03. The assertion of small entity status (even by mere payment of the exact small entity basic filing fee) is not appropriate until such an investigation has been completed. Thus, in the previous example of the three pro se inventors, before one of the inventors pays the small entity basic filing or basic national fee to establish small entity status, the single inventor asserting entitlement to small entity status needs to check with the other two inventors to determine whether small entity status is appropriate.

If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act (Public Law 85-536 as amended by Public Law 106-50). Review of whether the business is a “concern” as the term is used in the regulations promulgated by the Small Business Administration at 13 CFR 121 is also appropriate. Applicants should recognize that more is involved than merely determining that the number of employees of the business does not exceed a numerical cap. While 13 CFR 121.802 specifically addresses the size standards for paying reduced patent fees, it is emphasized that the provisions of general applicability set forth in 13 CFR 121 also apply. Thus, the definition of “business concern” set forth in 13 CFR 121.105, the provisions regarding what is an affiliation as set forth in 13 CFR 121.103, and the provisions on the manner in which the number of employees should be calculated as set forth in 13 CFR 121.106 are all read into 13 CFR 121.802. Additionally, if the business has assigned, granted, conveyed or licensed (or is under an obligation to do so) any rights in the invention to others directly or indirectly, the same review

for each other entity would also be appropriate.

Furthermore, once status as a small entity has been established in an application, a new determination of entitlement to small entity status is needed when the issue fee is due and when any maintenance fee is due. It should be appreciated that the costs incurred in appropriately conducting the initial and subsequent investigations may outweigh the benefit of claiming small entity status. For some applicants it may be desirable to file as a large entity (by not filing a small entity statement and by submitting large entity fees) rather than undertaking the appropriate investigations which may be both difficult and time-consuming.

The intent of § 1.27 is that the person making the assertion of entitlement to small entity status is the person in a position to know the facts about whether or not status as a small entity can be properly established. That person, thus, has a duty to investigate the circumstances surrounding entitlement to small entity status to the fullest extent. Therefore, while the Office is interested in making it easier to claim small entity status, it is important to note that small entity status must not be claimed unless the person or persons can unequivocally make the required self-certification. Sections 1.27(h)(1) and (2) recite former provisions in §§ 1.28(d)(1) and (2) relating to fraud practiced on the Office.

Consistent with § 1.4(d)(2), the payment of a small entity basic filing or national fee constitutes a certification under § 10.18(b). Thus, a simple payment of the small entity basic filing or basic national fee, without a specific written assertion, activates the provisions of § 1.4(d)(2) and, by that, invokes the self-certification requirement set forth in § 10.18(b), regardless of whether the party is a practitioner or non-practitioner.

Clarification of Need for Investigation:

Section 1.27(f) is clarified by explicitly providing that a determination “should” be made of entitlement to small entity status according to the requirement set forth in § 1.27(a) prior to asserting small entity status. The need for such a determination of entitlement to small entity status prior to assertion of small entity status is set forth in terms of that there “should” be such a determination, rather than that there “must” be such a determination. In view of the ease with which small entity status will now be obtainable, it is deemed advisable to provide an explicit direction that a determination of entitlement to small entity status, pursuant to § 1.27(a), should be made before its assertion. Consideration was given to making the need for a determination a requirement rather than advisory; however, the decision was made to make it advisory, particularly in view of the following possible scenario: One of three inventors submits a written assertion of entitlement to small entity status without making any determination of entitlement to such status, such as by checking with the other two inventors to see if they have assigned any rights in the invention. Small entity status is proper at the time asserted notwithstanding the lack of a proper determination. If the determination is set forth as a requirement (“must”), the lack of such a determination might act to cause an unduly harsh result where small entity status was in fact appropriate and the failure to check prior to assertion is innocent. It is recognized that the use of “should” may cause concern that a cavalier approach to asserting entitlement to small entity status may be taken by encouraging some who are asserting status not to make a complete determination as the determination is not set forth as being mandatory. On balance, it is thought that the use of “should” will lead to more equitable results. The danger of encouraging the assertion of small entity status without a prior determination as to qualification for small entity status is thought to be small, because if the status turns out to be improper, the lack of a prior determination may result in a failure to meet the lack of deceptive intent requirements under § 1.27(h) or § 1.28(c). The Office has noted that any attempt to improperly establish status as a small entity will be viewed as a serious matter. See MPEP 509.03.

Removal of Status:

Section 1.27(g)(2) is also clarified by providing that once small entity status is established in an application, any change in status from small to large entity also requires a specific written assertion to that extent, rather than only payment of a large entity fee, similar to current practice. For example, when paying the issue fee in an application that has previously been accorded small entity status and the required new determination of continued entitlement to small entity status reveals that status has been lost, applicant should not just simply pay the large issue fee or cross out the recitation of small entity status on the returned copy of the notice of allowance (PTOL-85(b)), but should submit a separate paper requesting removal of small entity status pursuant to § 1.27(g)(2).

Correction of any inadvertent and incorrect establishment of small entity status is by way of a paper under § 1.28(c) as in former practice.

Paragraph by paragraph analysis:

Section 1.27 is amended: (1) in its title to reflect placement of the definitions for small entities in the section (transferred from former § 1.9(f)), (2) to indicate that an establishment of small entity status permits the payment of small entity fees, and (3) to reflect transfer of subject matter from § 1.28 relating to determination of entitlement to and notification of loss of entitlement to small entity status, and fraud on the Office.

Section 1.27 is amended to provide the definition of who can qualify to pay small entity fees: the amendments (1) define a “person” to include inventors and also noninventors holding rights in the invention; (2) explain that qualification depends on whether any rights in the invention were transferred and to whom; (3) provide that a license by a person to the Government under certain situations does not bar entitlement to small entity status.

Section 1.27(a) contains the subject matter relating to definitions of small entities: (1) Persons, (2) small business concerns; and (3) nonprofit organizations, in one paragraph rather than previously in §§ 1.9(c) through (e). The expression “independent inventor” of former § 1.9(c) is replaced with the term “person” in current § 1.27(a)(1) (and other paragraphs of this section). The term “person” in § 1.27(a) includes individuals who are inventors and also individuals who are not inventors but who have been transferred some right or rights in the invention. This clarifies that individuals who are not inventors but who have rights in the invention are covered by the provisions of § 1.27.

Sections 1.27(a)(2)(i) and (a)(3)(i) retain the requirement of former § 1.27 that in order for small entity businesses and nonprofit organizations to remain entitled to small entity status, they must not in some manner transfer or be under an obligation to transfer any rights in the invention to any party that would not qualify for small entity status. The absence of this requirement from former §§ 1.9(d) and (e) (small business concern and nonprofit organization, respectively), notwithstanding its presence in former § 1.9(c) (independent inventor), led to confusion as to the existence of such a requirement for small businesses concerns and nonprofit organizations. Former §§ 1.9(d) and (e), where this requirement was absent, have been deleted and it is now made clear that these rights transfer requirement applies to all parties (independent inventors, small business concerns and nonprofit organizations, respectively).

Section 1.27(a)(2)(ii) has the term “size” removed from the reference to standards set by the SBA as possibly misleading as the SBA standards for entitlement to small entity status for small businesses require more than a size determination.

Section 1.27(a)(4)(i) provides a new exception, relating to the granting of a license to the U.S. Government by a person, that results from a particular rights determination. Such a license would not bar entitlement to small entity status. Similarly, § 1.27 (a)(4)(ii) has transferred to it (from former §§ 1.27(c)(2) and (d)(2)) the current exceptions relating to a licence to a Federal agency by a small business or a nonprofit organization resulting from a particular funding agreement.

Sections 1.27(b) through (e) are reformatted and amended to recite “assertion” as a new means for establishing small entity status to replace “statement,” and new Sections 1.27 (f), (g)(1) and (g)(2), and (h) are added.

Section 1.27(c) is reformatted to add §§ 1.27(c)(1) through (c)(4).

Section 1.27(c)(1) permits assertion of small entity status by a writing that is clearly identifiable (§ 1.27(c)(1)(i)), is signed (§ 1.27(c)(1)(ii)), and conveys the concept of small entity status without the need for specific words but with a clear indication of an intent to assert entitlement to small entity status (§ 1.27(c)(1)(iii)).

Section 1.27(c)(2) makes submission of a written assertion to obtain small entity status easier in view of increased categories of parties who could sign and file such a paper. The parties who can

sign

the written assertion are identified as: one of the parties who can currently submit a paper under § 1.33(b) (§ 1.27(c)(2)(i)), at least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been filed) (§ 1.27(c)(2)(ii)) rather than all the inventors (applicants) as required by § 1.33(b)(4) for other types of papers, or a partial assignee (§ 1.27(c)(2)(iii)) rather than all the partial assignees and any applicant retaining an interest as required by § 1.33(b)(3) for other types of papers. A § 3.73(b) certification is not required for an assignee under either §§ 1.27(c)(2)(i) or (iii). The parties who can file the signed written assertion include any one of the identified inventors (§ 1.27(c)(2)(ii)), but not a partial assignee (§ 1.27(c)(2)(iii)) unless resort is made to a party identified under § 1.33(b).

Section 1.27(c)(3) permits the payment, by any party, of an exact amount of one of the small entity basic filing (§§ 1.16(a), (f), (g), (h), or (k)) or basic national (§§ 1.492(a)(1) through (a)(5)) fees to be treated as a written assertion of entitlement to small entity status even where an incorrect type of basic filing or basic national fee is inadvertently selected in error. Section 1.27(c)(3)(i) provides that where small entity status was accorded based on the payment of a wrong type of small entity basic filing or basic national fee, the correct small entity amount would still be owed along with the surcharge set forth in §§ 1.16(e) or (l) for the basic filing fee (there is no surcharge for the basic national fee). Section 1.27(c)(3)(ii) provides that payment of a small entity fee in its exact amount for a fee other than what is provided for in § 1.27(c)(3) is not sufficient to establish small entity status absent a concomitant written assertion of entitlement to small entity status. After a basic filing or basic national fee is paid as a large entity, a refund under § 1.28(a) of the large entity portion can only be obtained by establishing small entity status by a written assertion and not by paying a second basic filing or basic national fee in a small entity amount. Payment of a large entity basic filing or basic national fee precludes paying a second basic filing or national fee in a small entity amount to establish small entity status.

Section 1.27(c)(4) recites material transferred from former § 1.28(a)(2).

Section 1.27(d) is amended to provide that fees other than the basic filing and basic national fees can only be paid in small entity amounts if submitted with or subsequent to a written assertion of entitlement to small entity status. For refunds, where the small entity assertion is submitted after payment of a large entity fee (rather than with or subsequent to payment of a small entity fee), the paragraph clarifies that an exception exists for § 1.28(a) refunds (of the large entity portion of a fee within three months of payment thereof if the refund request is accompanied by a written assertion of entitlement to small entity status).

Section 1.27(e)(1) is added to reference § 1.27(g)(1) as the means of changing small entity status. It is clarified that where rights in an invention are assigned, or where there is an obligation to assign, to a small entity subsequent to an assertion of entitlement to small entity status, a second assertion is not required. Section 1.27(e)(2) clarifies that once small entity status is withdrawn a new written assertion is required to again obtain small entity status.

Section 1.27(f) is added to clarify the need to determine entitlement to small entity status prior to asserting small entity status, and that the Office generally does not question assertions of entitlement to small entity status.

Section 1.27(g)(1) is added to contain material transferred from former § 1.28. Section 1.27(g)(2) is added to revise the current reference to the party who can sign a notification of loss of entitlement to small entity status to require a party identified in § 1.33(b).

Sections 1.27(h)(1) and (2) are added to contain material transferred from former §§ 1.28(d)(1) and (d)(2) relating to fraud attempted or committed on the Office in regard to paying small entity fees. The material has been reformatted slightly to create §§ 1.27(h)(1)(i) and (ii), and §§ 1.27(h)(2)(i) and (ii).

Comment 12:

Two comments state that the term “person” as proposed in § 1.9(f) (now transferred to § 1.27(a)(1)) is confusing. While person is defined in the first sentence as an inventor or other individual, the second sentence rather than using person uses inventor or other individual as if to imply that an inventor or individual who has transferred some rights is not a person within the meaning of § 1.27. This seems to be inconsistent with § 1.27(c) that qualifies “person” as a party entitled to small entity status even if an inventor has agreed to license rights in the invention to another small entity. It was suggested that the second sentence be deleted and combined with the first sentence. An additional argument was made that while it is understood that “person” was being used in the context of § 1.27 small entity rights, the normal legal definition of “person” includes corporations and the term is therefore broader than the use made of it in § 1.27. It was suggested that another word be used or the term “natural” be used as a modifier.

Response:

The comments are not adopted. The use of “person” in the first sentence of § 1.27(a)(1) is intended to refer to those who can qualify for small entity status. That the second sentence starts with “[a]n inventor or other individual who has transferred some rights” is intentional in that it may be that such inventor or individual cannot qualify for small entity status if rights have been transferred to a party who cannot qualify for small entity status. It is intended under § 1.27(c) that an inventor who has transferred rights to another who can qualify shall not be disqualified from claiming small entity status whether an individual, small business or nonprofit organization. The use of two sentences enables the separation of two different concepts—where no transfer of rights has occurred, and where some transfer of rights has occurred. Use of the suggested

combined sentence may not make it clear to small entities that circumstances where there is no transfer of rights are included. Similarly, it is believed that the use of the term “person” without a modifier of “natural” would have the best opportunity for being understood by the target audience of § 1.27.

Comment 13:

Several comments supported the proposed change to § 1.27, as well as to §§ 1.9 and 1.28.

Comment 14:

Two comments opposed the ability to obtain small entity status based on payment of a small entity filing fee in § 1.27(c)(3) (proposed as § 1.27(b)(3)) maintaining that the entire procedure is now very complex and would not be understood by the great majority of practitioners and their support staffs and the Office support staff that must administer the program. It is believed that it is not too much to ask that someone seeking to claim small entity status make an affirmative statement regarding eligibility for such status. Although these procedures affect small entities to a greater extent, large entities are affected by the costs that would be associated with trying to implement a complex scheme of which small entities could not properly avail themselves.

Response:

The comments are not adopted. Sixty percent of all refund requests that the Office handles are related to small entity status. As outlined in the proposed rulemaking and again in this final rule, small entities are having a very difficult time obtaining, in a timely manner, a benefit that they are clearly entitled to, particularly for

pro se

inventors. The amended rule will obviate many of the difficulties now encountered by small entities. The payment of an exact amount of small entity filing fee is seen to be just as much an affirmative act as the submission of a statement of entitlement, and is probably far clearer an act of intention to claim small entity status than resort only to wide variants of language inevitably submitted by

pro se

applicants that must then be interpreted by the Office. The Office will, however, endeavor to have applicants supply an actual statement of entitlement to small entity status by providing a check box for such (with a clear easily understood statement) on application transmittal forms.

Comment 15:

One comment states that § 1.27(a)(4)(ii) (formerly § 1.9(f)(4)(ii)) is confusing because it states that a “license” to a Federal agency is not a “license”

per se.

Alternative language is suggested to clarify the section.

Response:

The comment is adopted.

Comment 16:

One comment suggested a further simplification by permitting any person authorized to act on behalf of the inventor/applicant to make an assertion of entitlement to small entity status. The Office should have an announced policy of not verifying whether the person making the assertion is in fact authorized with the burden resting with applicant that the person making the assertion is authorized to do so. The situations where a person would not be authorized are thought to be so rare as to justify the Office removing itself from determining proper authorization.

Response:

The comment is not adopted. Sections 1.27(c)(2)(i) through (c)(2)(iii) identifies certain parties who can sign a written assertion of entitlement to small entity status. The parties, while not all encompassing, are nevertheless broadly defined and include all the parties who can reasonably be expected to desire to submit a written assertion. It is not seen that the Office should accept a written paper from a party not so included. Section 1.27(c)(3), as made final, permits any party (in addition to those parties defined in § 1.27(c)(2)) to pay the basic small entity filing fee and thereby assert entitlement to small entity status. If a need were to arise for some party other than those defined in § 1.27(c)(2) to assert small entity status, it would be expected to be close to the time of filing the application and when the filing fee needs to be paid. In such circumstances, any party could pay the small entity filing fee. To permit the acceptance of a paper by a third party with whatever statements both germane to small entity entitlement and whatever other matters might be raised therein would seem to be burdening applicants with unnecessary problems.

Section 1.28:

Section 1.28 is amended to be entirely reformatted with some material transferred to § 1.27.

Section 1.28(a) is amended to allow a three-month period (formerly a two-month period) for refunds based on later establishment of small entity status. See further discussion in § 1.28(b)(1).

Section 1.28(b) is amended to set forth § 1.28(b)(1), defining the start date of the three-month refund period of § 1.28(a) to be the date that the full fee has been paid (transferred from former § 1.28(a)(1)), and § 1.28(b)(2), stating that the deficiency amount owed under § 1.28(c) is calculated by using the date on which the deficiency was paid in full (transferred from former § 1.28(c)).

Sections 1.28(b)(1) and (2) were proposed to be amended to refer to § 1.22(c) setting forth a definition of when a fee has been paid by the means used to pay the fee, but will not be so amended as the proposed amendment to § 1.22(c) will not be made. The subject matter of proposed § 1.22(c), which proposed to set forth that the filing date for an authorization to charge fees starts the period for refunds under § 1.28(a) will, however, be given effect by internal instruction as of the effective date of the instant final rule and will be reflected in the MPEP. See the discussion of § 1.22, above. The previous time period for a refund request was two months from payment of the full fee. The date of payment for refund purposes varied depending on the means the applicant used to pay the required fee. For example, if the applicant paid the required fee by check, the date of payment was the date on which the fee paper, including the check, was filed in the Office. If the applicant authorized a charge to a deposit account, however, the date of payment was the date the Office debited the deposit account. In view of the change in practice that results in § 1.28(b)(1) according the same date of payment for checks and authorizations to charge deposit accounts, the refund period of § 1.28(a) is extended to three months. This will in part offset any shortening of the refund time period that may result from starting the time period as of the receipt (or §§ 1.8 or 1.10) date of the fee paper instead of the debit date for an authorization to charge a deposit account. Additionally, in view of changes in practice under § 1.27 to ease the claiming of small entity status, the need for refunds should diminish, and the different payment date of an authorization to charge a deposit account for small entity refund purposes should not cause much inconvenience to applicants.

Section 1.28(c) is amended to require that deficiency payments must be submitted separately for each file (§ 1.28(c)(1)) and must include the itemization of the deficiency payment by identifying: the type of fee along with the current fee amount (§ 1.28(c)(2)(ii)(A)), the small entity amount paid and when (§ 1.28(c)(2)(ii)(B)), the deficiency owed for each individual fee paid in error (§ 1.28(c)(2)(ii)(C)), and the total deficiency payment owed (§ 1.28(c)(2)(ii)(D)), and is amended to provide that any failure to comply with the separate payment and itemization requirements will allow the Office at its option to charge a processing fee or set a non-extendable one-month period for compliance to avoid return of the paper (§ 1.28(c)(3)).

In each of Fiscal Years 1999 and 2000, certain patent fees were reduced.

See

Revision of Patent and Trademark Fees for Fiscal Year 2000

, Final Rule, 64 FR 67774 (December 3, 1999), and

Revision of Patent Fees for Fiscal Year 1999

, Final Rule, 63 FR 67578 (December 8, 1998). Thus, a sentence was added in § 1.28(c)(2)(i) that requires a deficiency payment to be at least equal to the amount paid in error as a small entity and is also calculated as of the date the deficiency is paid in full. For example, the basic filing fee for a utility application was reduced from $760 to $690. Where the small entity basic filing fee had been improperly paid by submission of $380 under the prior fee amount, if the error was determined and paid in full when the new amount is in effect, the balance owed at the date of payment in full would be $380 (the amount that is at least equal to the amount paid in error and not $310 (the new large entity amount of $690—the small entity amount paid in error of $380). (Note, for revival under § 1.137, if abandonment occurred for failure to pay a basic filing fee, the amount owed would be the fee in effect when the § 1.137 petition was filed and not the fee previously owed causing abandonment.).

Paragraph by Paragraph Analysis:

The title of § 1.28 is revised in view of transfer of material to § 1.27 to focus on refunds and on how errors in status are excused.

Sections 1.28(a) through (c) are reformatted.

Section 1.28(a)(1) is amended as § 1.28(a).

Section 1.28(a) is amended to clarify that the period for a refund runs from payment of the “full fee,” and that it is the payment of the full fee that is considered the significant event relative to establishing status for a particular fee. Additionally, § 1.28(a) amends the time period for requesting a refund based upon later establishment of small entity status. The time period is three months measured from the date of the timely payment of the full fee.

Some subject matter in former § 1.28(a)(2) has been transferred to § 1.27(c)(4). The next to last sentence, relating to filing a continuing or reissue application and referencing a small entity statement in the prior application or patent, has been deleted as unnecessary. The formerly required reference to status in the prior application or patent is replaced by the equally easily written assertion of § 1.27(c)(4) in the related, continuing or reissue application. Written references to small entity status in a prior application, including submission of a copy of the small entity statement in a prior application, submitted in a continuing application subsequent to the effective date of any final rule, will be liberally construed under § 1.27(c)(1)(iii). Similarly, the last sentence of current § 1.28(a)(2) is deleted as the payment option for establishing small entity status in continuing or reissue applications has been expanded in § 1.27(c)(3) to include all applications.

Caution:

Although the Office intends to liberally construe what is deemed to be an assertion of small entity status, the concept of entitlement must be clearly conveyed.

Example 1:

A prior application has been accorded small entity status. A continued prosecution application (CPA) under § 1.53(d) is filed with a general authorization to charge fees that does not state that the fees to be charged are small entity fees. Even though the CPA contains the same application number as its prior application (and the small entity statement), it would not be accorded small entity status and large entity filing fees would be immediately charged. This would be so because a new determination of entitlement to small entity status must be made upon filing of a new application, such as a CPA. Accordingly, in filing the CPA there must be some affirmative act to indicate that the determination has been done anew and small entity status is still appropriate. Where a copy of the small entity statement from the prior application, or a written assertion in the CPA application transmittal letter, or an authorization to charge small entity fees was present, the result would be reversed and small entity status would be accorded the CPA application on filing.

Example 2:

A request for continued examination under § 1.114 is not the filing of a new application and the application would retain any small entity status previously accorded without the need to do a new investigation or request status by written assertion or payment of an exact small entity § 1.17(e) fee.

The subject matter in former § 1.28(a)(3) has been transferred to § 1.27(e)(1).

Section 1.28(b) is amended to have its subject matter transferred to §§ 1.27(g)(1) and (2). New §§ 1.28(b)(1) and (b)(2) are added. Sections 1.28(b)(1) and (b)(2) were proposed to reference § 1.22(c) which was proposed to define the date that a fee was considered paid. In view of the decision not to go forward with the proposed change to § 1.22(c), the references to § 1.22(c) in §§ 1.28(b)(1) and (2) will not proceed.

Section 1.28(b)(1) defines the date a fee is paid for the purpose of starting the three-month period for refund. Former practice for authorizations to charge deposit accounts was to give benefit of the date that the deposit account was actually debited by the Office, which was a later time than when the paper authorizing charge of the fee to a deposit account was filed with the Office. That practice is now changed, see discussion re § 1.22, and the change will be reflected in the MPEP. It is the date the fee paper is considered received in the Office, not the date of debit of the fee to a deposit account, that will start the three-month refund period.

Section 1.28(b)(2) states that the date when a deficiency payment, pursuant to § 1.28(c), is paid in full determines the amount of deficiency that is due.

Example:

A small entity issue fee has been paid in error in January and a paper under § 1.28(c) was submitted the following June with the deficiency payment calculated based on the fees in effect as of June. The deficiency payment was incorrectly determined so that the full amount owed (for the issue fee) was not submitted in June. If the mistake in the June payment is not discovered until the following November, the extra amount owed must be recalculated to take into account any (later legislation, October 1) increase in the issue fee.

Section 1.28(c) is amended to recite that separate submissions, including separate payments and itemizations, are required for any deficiency payment.

Section 1.28(c)(1) requires that a deficiency paper/itemization/submission be limited to one application or one patent file. Where, for example, the same set of facts has caused errors in payment in more than one application and/or patent file, a separate paper would need to be submitted in each file for which an error is to be excused.

Section 1.28(c)(2) requires that for each fee that was erroneously paid as a small entity, the deficiencies owed must be paid, and the payment of the deficiencies must be itemized. Section 1.28(c)(2)(i) provides in part where there has been a fee decrease, the deficiency owed is equal to the amount (previously) paid in error and not the difference between the amount (previously) paid in error and the new lower large entity fee. Section 1.28(c)(2)(ii) requires the following itemizations: the particular fee involved (

e.g.

, basic filing fee, extension of time fee) (§ 1.28(c)(2)(ii)(A)), the small entity fee amount actually paid and when (for example, distinguishing between two one-month extension of time fees erroneously paid on two different dates) (§ 1.28(c)(2)(ii)(B)), the actual deficiency owed for each fee previously paid in error (§ 1.28(c)(2)(ii)(C)), and the total deficiency owed that is the sum of the individual deficiencies owed (§ 1.28(c)(2)(ii)(D)).

Section 1.28(c)(3) addresses the failure to comply with the separate submission, including separate payment

and itemization requirements of §§ 1.28(c)(1) and (c)(2). Section 1.28(c)(3), upon failure to comply, permits the Office at its option either to charge a processing fee (§ 1.17(i) is suitably amended) to process the paper or require compliance within a one-month non-extendable time period to avoid return of the paper.

Former §§ 1.28(d)(1) and (d)(2) are amended to have the material relating to fraud attempted or committed on the Office as to paying of small entity fees, transferred to §§ 1.27(h)(1) and (2). New § 1.28(d) is added to clarify that any paper submitted under § 1.28(c) is also treated as a notification of loss of small entity status under § 1.27(g)(2).

Section 1.33:

Section 1.33(a) is reformatted to create additional §§ 1.33(a)(1) and (a)(2) to separately identify the parties who can change a correspondence address depending upon the presence or absence of a § 1.63 oath/declaration. The revision is intended to make clear what may be a confusing practice to applicants as to which parties can set forth or change a correspondence address when an application does not yet have an executed § 1.63 oath or declaration by any of the inventors. See § 1.14(d)(4) for a similar change regarding status and access information. In this section references to a § 1.63 oath/declaration are intended to mean an executed oath/declaration by any inventor, but not necessarily all the inventors.

Section 1.33(a) is amended to provide that in a patent application the applicant must, either in an application data sheet (§ 1.76), or in a clearly identifiable manner elsewhere, in any papers submitted with an application filing, specify a correspondence address to which the Office will send notices, letters and other communications relating to the application. It is now stated that where more than one correspondence address is specified, the Office would determine which one to establish as the correspondence address. This is intended to cover the situation where an unexecuted application is submitted with conflicting addresses, such as one correspondence address being given in the application transmittal letter, and a different one in an accompanying unexecuted § 1.63, or other similar situations. The determination of which of the conflicting correspondence addresses to use will be made on a case by case basis, to include such factors as: use of the correspondence address in the earliest of two unexecuted declarations submitted at different times, or if conflicting addresses appear in the same declaration, use of the first correspondence address.

Section 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written record (§ 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to a writing. The phone number would be changeable by any party who could change the correspondence address. The term “registered” has been placed before the expression “attorney or agent” for clarification purposes. See also § 1.33(b) of this section and sections 1.34 and 1.36.

Section 1.33(a)(1) provides that any party filing the application and setting forth a correspondence address could later change the correspondence address provided that a § 1.63 oath/declaration by any of the inventors has not been submitted. The parties who may so change the correspondence address would include only the one inventor filing the application, even if more than one inventor was identified on the application transmittal letter. If two of three inventors filed the application, the two inventors filing the application would be needed to change the correspondence address. Additionally, any registered practitioner named in the application transmittal letter, or a person who has the authority to act on behalf of the party that will be the assignee (if the application was filed by the party that will be the assignee), could change the correspondence address. A registered practitioner named in a letterhead would not be sufficient, but rather a clear identification of the individual as being a representative would be required. A company (to whom the invention has been assigned, or to whom there is an obligation to assign the invention) who files an application, is permitted to designate the correspondence address, and to change the correspondence address, until such time as a (first) § 1.63 oath/declaration is filed. The mere filing of a § 1.63 oath/declaration that does not include a correspondence address does not affect any correspondence address previously established on filing of the application, or changed per § 1.63(a)(1), even if the application was filed by a company that is only a partial assignee. The expression “party that will be the assignee,” rather than assignee, is used in that until a declaration is submitted, inventors have only been identified, and any attempted assignment, or partial assignment, cannot operate for Office purposes until the declaration is supplied. Hence, if the application transmittal letter indicates that the application is being filed on behalf of XYZ company, with an assignment to be filed later, XYZ company would be allowed to change the correspondence address without resort to § 3.73(b) until an executed oath or declaration is filed, and with resort to § 3.73(b) after the oath or declaration is filed.

Section 1.33(a)(2) retains the current requirements for changing a correspondence address when a § 1.63 oath/declaration by any of the inventors has been filed. Where a correspondence address was set forth or changed pursuant to § 1.33(a)(1) (prior to the filing of a § 1.63 oath or declaration), that correspondence address remains in effect upon filing of a § 1.63 declaration and can then only be changed pursuant to § 1.33(a)(2).

Section 1.33(b) has been simplified to make it easier to understand who are appropriate parties to file papers, particularly in view of the change to § 3.71(b). The paragraph has also been amended to provide an exception for the filing of a written assertion of small entity status under § 1.27(c)(2)(ii). One of several inventors will now be able to sign a written assertion of small entity status and be an appropriate party to file such assertion/paper.

Section 1.33(b)(1) has the term “registered” placed before the expression “attorney or agent” for clarification purposes. See also § 1.33(a) and §§ 1.34 and 1.36.

Section 1.33(b)(3) is amended to add a reference to § 3.71.

Comment 17:

One comment was received requesting that the ability to change the correspondence address not be keyed to the filing of a § 1.63 oath/declaration, especially when such oath/declaration is signed by less than all the inventors and when it may in no way involve the correspondence address. The flexibility to change the correspondence address established by § 1.33(a)(1) should remain until a party set forth in § 1.33(b), except § 1.33(b)(2), establishes a correspondence address.

Response:

The comment is not adopted. Section 1.33(a)(1) increases the flexibility in changing a correspondence address. Such increased flexibility, however, should not extend past the time that applicants can reasonably be expected to set forth a correspondence address, such as when the inventors are named by the submission of an oath/declaration. The submission of the oath/declaration will not alter the current correspondence address of record unless the oath/declaration intentionally does so by identifying a correspondence address, or an accompanying paper to the oath/declaration does so. Upon

submission of the oath/declaration, the inventors are known for the first time and it is now their call as to the appropriate correspondence address absent intervention by the assignee of the entire right, title, and interest. It is inappropriate that once an oath/declaration is submitted, a practitioner without power of attorney or only one of the inventors can continue to change the correspondence address.

Section 1.34:

Sections 1.34(a) and (b) are amended to incorporate a reference to § 1.31. Section 1.34(b) is amended to place the term “registered” before the expression “attorney or agent.” Unlike § 1.31, which provides for an applicant being represented by registered patent attorney or agent, former § 1.34(b) (and § 1.36) refers to an attorney or agent who represents an applicant. The Office of Enrollment and Discipline receives calls inquiring if § 1.34(b) (and § 1.36) explicitly or implicitly authorize unregistered attorneys to practice before the Office in view of the absence of the term “registered” in these sections, which is not the case. The amendments to §§ 1.34(a) and (b) (and § 1.36) bring §§ 1.34(a) and (b) (and § 1.36) into conformity with § 1.31, which permits an applicant to be represented by a registered attorney, or a registered agent, and clarifies that the attorney or agent referenced in §§ 1.34(a) and (b) (and § 1.36) is only the registered attorney or registered agent referenced in § 1.31. See also §§ 1.33(a) and (a)(1), and § 1.36.

Section 1.36:

See the discussion relating to § 1.34.

Section 1.41:

Section 1.41(a)(1) is amended to indicate that a paper including the processing fee set forth in § 1.17(i) is required for supplying or changing the name(s) of the inventor(s) where an oath or declaration prescribed in § 1.63 is not filed during pendency of a nonprovisional application, rather than a petition including a petition fee, for consistency with the amendment to § 1.17(i).

Section 1.41(a)(2) is amended to indicate that a paper including the processing fee set forth in § 1.17(q) is required for supplying or changing the name(s) of the inventor(s) where a cover sheet prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, rather than a petition including a petition fee, for consistency with the amendment to § 1.17(q).

Section 1.41(a)(3) is amended to delete the language concerning an alphanumeric identifier, and to provide that the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) are filed without an oath or declaration, or the application papers pursuant to § 1.53(c) are filed without a cover sheet.

Section 1.41(a)(4) is added to set forth that the inventors who submitted an application under § 1.494 or § 1.495 are the inventors in the international application designating the United States and that the provisions of § 1.48(f)(1), whereby submission of an executed oath/declaration operates to change the inventorship, do not apply to applications entering the national stage.

Section 1.41(c) is amended by replacement of the term “file” with a recitation of physical or electronic delivery of the application to the Office. Section 1.41(c) permits any person authorized by the applicant to file a patent application in order to receive a filing date. The amendment clarifies that § 1.41(c) is intended to apply solely to the (physical or electronic) delivery of a patent application to the Office as opposed to being inclusive of acts preceding delivery of the application relating to drafting or otherwise preparing an application.

Comment 18:

One comment opposed the change to § 1.41(a)(3). The comment noted that the Office gave no justification for the change deleting the instruction that an alphanumeric identifier should be supplied where no inventor's name is being given. The change is believed to give the impression of reversing the practice of not requiring identification of inventors on filing of the application.

Response:

The comment is not adopted. The availability of an alphanumeric identifier is no longer explicitly set forth as the Office much prefers that at least one inventor be identified, particularly to aid in the national security screening of applications. To the extent that the presence of the instruction would seem to encourage use of an identifier other than the inventors, it is desirable to eliminate it. There is, however, no intent on the part of the Office to reverse the current practice and ban the use of an identifier other than an inventor's name. It is noted that where an inventor's name is not supplied, some other identifier is usually present, such as an attorney docket number, and that may continue to be used as an identifier in the absence of an inventor's name.

Comment 19:

One comment opposed the change to § 1.41(a)(4) stating that it is unclear as to what the change means and that it would seem to preclude correction of the inventorship after an international application is filed.

Response:

The comment is adopted in part as a clarifying parenthesis has been added to the paragraph stating that § 1.48(f) does not apply. The intent of the change is not to preclude correction of inventorship in a 35 U.S.C. 371 national stage application, but to reflect that filing an international application signed by all applicants and publishing it locks in the naming of the inventors. Filing of a declaration does not reset the inventors as it does in national 35 U.S.C. 111 practice. Correction of inventorship for a national stage application can be done under the provisions of §§ 1.48(a) through (c).

Section 1.44:

Section 1.44 is removed and reserved to eliminate the requirement that proof of the power or authority of the legal representative be recorded in the Office or filed in an application under §§ 1.42 or 1.43. Although proof of authority is no longer required to be submitted to the Office, applicants may wish to consider obtaining proof of authority of the legal representative and recording such a document with any assignment documents for record-keeping purposes. In order to make a patent application on behalf of a deceased or incapacitated inventor, the legal representative may now simply sign the § 1.63 oath or declaration (which includes the full name and citizenship of the deceased inventor as well as the residence and mailing address, if not provided on an application data sheet) as the legal representative of the particular inventor with the title “Legal Representative” placed under the signature. In other words, in a signature block containing the deceased or incapacitated inventor's name, the legal representative will sign “for” the deceased or incapacitated inventor supplying the representative's name and stating that he or she is the legal representative. In addition, the legal representative should provide his or her mailing address so that the Office can directly communicate with the legal representative if necessary. See § 1.64(b).

The deletion of the § 1.44 proof requirement for the legal representative of §§ 1.42 and 1.43 will be effective on the date of publication in the

Federal Register

with § 1.64 as to all pending papers under §§ 1.42 and 1.43 that have not had the proof requirement satisfied. If a requirement for proof of authority has been made by an examiner, the requirement can be satisfied by a reply referencing this final rule.

Section 1.47:

Section 1.47 is amended to refer to “the fee set forth in § 1.17(h)” for consistency with the amendment to § 1.17(h) and (i). See discussion of the amendment to § 1.17. Section 1.47 is also amended to add a new § 1.47(c) providing that the Office will send

notice of the filing of the application to all inventors who have not joined in the application at the address(es) provided in the petition under § 1.47, and will publish notice of the filing of the application in the

Official Gazette.

This provision is currently included in each of §§ 1.47(a) and 1.47(b). Section 1.47(c) also provides that the Office may dispense with such notice provisions in a continuation or divisional application where notice regarding the filing of the prior application has already been sent to the nonsigning inventor(s). The patent statute gives the Office great latitude as to the notice that must be given to an inventor who has not joined in an application for patent.

See

35 U.S.C. 116, ¶ 2 (“after such notice to the omitted inventor as [the Commissioner] prescribes”), and 118 (“upon such notice to [the inventor as the Commissioner] deems sufficient”). Providing notice to a nonjoined inventor in a continuation or divisional application places a significant burden on the Office, especially when such continuation or divisional application is filed using a copy of the oath or declaration from a prior application under § 1.63(d). In addition, providing additional notice to the nonjoined inventor in the continuation or divisional application provides little actual benefit to the nonjoined inventor, as a similar notice was previously given during the processing of the prior application. Thus, the Office considers it appropriate to dispense with notice under § 1.47 in situations (continuations or divisionals of an application accorded status under § 1.47) in which the nonjoined inventor was previously given such notice in a prior application.

Section 1.48:

Section 1.48 is amended to have the title revised to reference the statutory basis for the rule, 35 U.S.C. 116.

Sections 1.48(a) through (c) are amended to: Delete the recitation of “other than a reissue application” as such words are unnecessary in view of the indication in the title of the section that the section does not apply to reissue applications and the revision to § 1.48(a) (discussed below), to change “When” to “If,” and to add “nonprovisional” before “application” where it does not already appear.

Sections 1.48(a)(1) through (e)(1) are revised to replace the reference to a “petition” with a reference to a “request.” What is meant to be encompassed by the term “petition,” as it was used in the sections, may be better defined by the term “request.” The presence of “petition” formerly in the sections was misleading to the extent that it may indicate to applicants that papers under this section have to be filed with the Office of Petitions when in fact amendments to correct the inventorship under § 1.48 are to be decided by the primary examiners in the Technology Centers and should be submitted there.

See

MPEP 1002.02(e). Where, however, the § 1.48 request is accompanied by a petition under § 1.183 seeking waiver of a requirement under § 1.48, both papers should be directed to the Office of Petitions.

The requirements for a statement formerly in §§ 1.48(a)(1), (c)(1), and (e)(1) are placed in §§ 1.48(a)(2), (c)(2), and (e)(2) and corresponding changes made in subsequent paragraphs.

Sections 1.48(b) and (d) are revised to indicate that a request to correct the inventorship thereunder must be signed by a party as set forth in § 1.33(b) (which would enable a practitioner alone to sign all the needed papers). The inventors, whether being added, deleted, or retained, are not required to participate in a correction under these paragraphs. Thus, the inventor(s) to be deleted pursuant to § 1.48(b) in a nonprovisional application, or added pursuant to § 1.48(d) in a provisional application, and those inventors that are retained in either situation, are not required to participate in the inventorship correction, such as by signing a statement of facts, or an oath or declaration under § 1.63.

Sections 1.48(a) through (e) are revised to define the fee required as a “processing” fee, to delete the reference to a “petition,” and to indicate that amendment of the application to correct the inventorship would require the filing of a request to correct the inventorship along with other items, as set forth in the respective paragraphs of this . The latter change is not one of substance but a clarification that the amendment requirement of the statute, 35 U.S.C. 116, merely refers to the change in Office records (face of the application file wrapper corrected, notation on a previously submitted § 1.63 oath/declaration, change in Patent Application Location and Monitoring (PALM) data, and a corrected filing receipt issued) that would be made upon the grant of a § 1.48 request. Thus, amendment of the inventorship in an application is not made as an amendment under § 1.121. Where there is a need to make an actual amendment under § 1.121, such as when a cover page of the specification recites the inventive entity, an amendment should also be submitted. In the absence of such an amendment, the Office may, at its option, correct the inventor's names on the cover sheet or in the specification. Where an application needs a correction of inventorship under § 1.48 and a paper is submitted with a title that does not set forth the paper as a request under § 1.48, but it is clear from the paper submitted that an inventorship correction is desired, a request for a correction of inventorship under § 1.48 will be inferred from the paper submitted and will be treated under § 1.48.

A request for a corrected filing receipt correcting a typing or office error in the names of the inventors will not ordinarily be treated under § 1.48. Any request to correct inventorship should be presented as a separate paper. For example, placing a request under § 1.48(b) to correct the inventorship in the remarks section of an amendment may cause the Office to overlook the request and not act on it.

Section 1.48(f)(1) is clarified to recite that its provision for changing the inventorship only applies if an oath or declaration under § 1.63 has not been submitted by any of the inventors, and that submission of an oath or declaration under § 1.63 by any of the inventors is sufficient to correct an earlier identification of the inventorship.

Example 1:

An unexecuted application is filed identifying A, B, and C as the inventors. A § 1.63 declaration is also submitted signed only by A and naming A, B, and C as the inventors. To complete the application (§ 1.53(f)), a § 1.63 oath or declaration by B and C identifying the inventors as A, B, and C is needed. In attempting to reply to a Notice to File Missing Parts of Application requiring the missing oath or declaration by B and C, it is discovered that D is also an inventor. A declaration by A, B, C, and D, if submitted without a request under § 1.48(a) to correct the inventorship to A-D from A-C, will not be accepted as a reply to the Notice to File Missing Parts of Application.

Thus, it should be clear that a first oath or declaration under § 1.63 completed by less than all the inventors initially identified (whether the oath or declaration is submitted at the time of filing of the application or thereafter), will, under § 1.48(f)(1), lock in the inventorship, and the later filing of another declaration by a different but, the actual entire inventive entity, will not be effective under § 1.48(f)(1) to correct the inventorship.

Example 2:

An application is filed identifying A, B, and C as the inventors in the application transmittal letter, and a § 1.63 declaration is concomitantly submitted only by A, naming only A, as the sole inventor. The inventorship of the application is A (because of the declaration of A). A later submitted § 1.63 declaration by A, B, and C would require a request under § 1.48(a) to correct the inventorship to A, B, and C before the declaration by A, B, and C could be accepted.

Section 1.48(f)(1) is amended to reference § 1.497(d) for submission of an executed oath or declaration naming an inventive entity different from the inventive entity set forth in the international stage when entering the national stage under 35 U.S.C. 371 and § 1.494 or § 1.495.

Section 1.48(h) is added to indicate that the provisions of this section do not apply to reissue applications, and to reference §§ 1.171 and 1.175 for correction of inventorship in reissue applications.

Section 1.48(i) is added to reference §§ 1.324 and 1.634 for corrections of inventorship in patents and interference proceedings, respectively.

Sections 1.48(a) through (i) are amended to have titles added to make locating the appropriate paragraph easier.

Section 1.51:

Section 1.51(b) is amended to include a reference to § 1.53(d), as a proper continued prosecution application under § 1.53(d) in which the basic filing fee has been paid is a complete application under § 1.51(b).

Section 1.52:

The title of § 1.52 is amended to reflect the addition of § 1.52(e).

Sections 1.52(a) and (b) are amended to clarify the paper standard requirements for papers submitted as part of the record of a patent application or a reexamination proceeding. Section 1.52(a) sets forth the paper standard requirements for all papers that are to become a part of the permanent records of the Office, and § 1.52(b) sets forth the paper standard requirements for the application (specification, including the claims, drawings, and oath or declaration) or a reexamination proceeding where applicable and any amendments or corrections to the application or proceeding. Papers making up the application or proceeding where applicable or an amendment or correction to the application or proceeding must meet the requirements of §§ 1.52(a) and (b), but papers submitted for the record that do not make up the application (

e.g.,

a declaration under § 1.132) or proceeding need not meet the requirements of § 1.52(b).

Section 1.52(a)(5) provides that for papers not in compliance with § 1.52(a)(1), that applicant must, within a set time period, provide appropriate substitute papers.

Section 1.52(b)(6) is being added to include optional paragraph numbering as a basis for the new amendment practice in § 1.121 and as an aid to transitioning into total electronic filing. The amended rule language sets forth a procedure for numbering the paragraphs of the specification at the time of filing. This procedure will facilitate the entry of amendments by providing a more uniform method for identifying paragraphs in the specification to be amended, thus overcoming any differences created by word processor formatting and pagination variations.

The paragraph numbering procedure, in the interest of uniformity, encourages applicants to use four digit Arabic numerals enclosed within square brackets and including leading zeroes as the first element of the paragraph. The numbers and brackets should be highlighted in bold (

e.g.,

[

0001

]), and should appear as the first part of the paragraph immediately to the right of the left margin. Approximately four character spaces should follow the bracketed number before the beginning of the actual text of the paragraph.

A paragraph is defined as a distinct passage, or section, of the specification which has unity of meaning. A paragraph shall not contain headers or drawings, but may contain nontext elements such as tables, mathematical formulae, chemical structures,

etc.

The nontext elements shall not normally, by themselves, be considered as paragraphs but must always form part of the paragraph, either above, or around, the nontext elements, and should not be independently numbered. Any type of list,

e.g.,

a bulleted or numbered list, should be treated as part of the paragraph around or preceding the list, and should not be independently numbered. Paragraph (or section) headers, such as “Description of the Invention” or “Example 3,” are not considered part of any paragraph and should not be numbered.

The procedure for paragraph numbering encourages applicants to use any method provided by existing word processing software to provide a number as the first element of the paragraph. Handwriting of paragraphs numbers while not encouraged will be permitted.

The Office will neither number the paragraphs or sections of the specification, nor accept any instructions from applicants to do the same.

Section 1.52(b)(7) provides that where papers not in compliance with §§ 1.52(b)(1) through (b)(5) are submitted, the applicant, patent owner, or requester in a reexamination proceeding, after notice by the Office, must provide papers that do comply (§§ 1.52(b)(1) through (b)(5)) within a set time period in the notice.

Section 1.52(c) is amended to provide that: (1) alterations to the application papers must (rather than “should”) be made before the oath or declaration is signed; (2) a substitute specification (§ 1.125) is required if the application papers do not comply with § 1.52(a) and (b) due to interlineations, erasures, cancellations or other alterations of the application papers; and (3) if an oath or declaration is a copy of the oath or declaration from a prior application, the application for which such copy is submitted may contain alterations that do not introduce matter that would have been new matter in the prior application.

Section 1.52(d) was proposed to provide separately for nonprovisional applications and provisional applications filed in a language other than English. The proposal was not carried forward in the instant rulemaking but will be treated in rulemaking relating to implementation of the eighteen-month publication provisions of the “American Inventors Protection Act of 1999.”

See Changes to Implement Eighteen-Month Publication of Patent Applications,

Notice of Proposed Rulemaking, 65 FR 17046, 17964 (April 5, 2000), 1233

Off. Gaz. Pat. Office

121 (April 25, 2000).

Section 1.52(e) is amended to itemize the parts of the specification that may be submitted on a compact disc, and to specify that a compact disc (CD-ROM or CD-R) meeting ISO 9660 format standards with ASCII data files is the only acceptable archival electronic media for submissions. The Office indicated in the Notice of Proposed Rulemaking that submissions on microfiche placed a burden on the Office and the applicant. The Office indicated that it intended to accept archival electronic media. The burden of submitting and processing large biotechnology “Sequence Listing” submissions in paper form can also be avoided using archival electronic media. Large tables, common in the biotechnology arts but sometimes received in other technologies, are now also included among the items that may be submitted on acceptable compact discs. Note that these specifications do not apply to the computer readable form of Section 1.821(e), which is specified therein.

Section 1.52(e)(1) recites the three types of submissions that are acceptable on the compact disc format: (1) Computer listings; (2) nucleotide and/or amino acid “Sequence Listings'; and (3) large tables.

Section 1.52(e)(2) defines which compact disc formatted media the Office will accept for the listed submissions: compact disc—recordable (CD-Rs) and compact disc—read only memory (CD-ROMs).

Section 1.52(e)(3) set forth the standards that must be used in formatting the information on the compacts discs: ASCII and ISO 9660. Section 1.52(e)(3) also discusses the packaging of the compact discs for submission to the Office, and the contents of the associated transmittal letter.

Section 1.52(e)(4) specifies that the two copies of each compact disc are required, how the two copies must be labeled, and how the Office will treat the compact discs if they are not indeed identical (Copy 1 will be used for processing.). Replacement copies are also discussed.

Section 1.52(e)(5) indicates how the material on the compact discs will be incorporated by reference into the specification, by way of a statement under § 1.77(b)(4). Section 1.52(e)(5) also provides that the Office may require that parts of the specification that were submitted on compact disc be resubmitted on paper. Only the paper portions of the application will, under our current procedures, be published, either as published applications or patents. The Office can thus require that certain information, such as related to an elected species, be submitted in the proper form (paper) to be printed.

Section 1.52(e)(6) indicates the information that shall be placed on the labels of the compact discs to help identify them.

Section 1.52(e)(7) indicates that if a file is unreadable, on the compact discs that we have received, the Office will treat that information as not having been received. Examples of the types of difficulties that render a file unreadable are given: non-standard formatting, computer viruses and defective media. The applicant is well advised to test that the compact disc can be read by a standard office computer and is compliant with Office requirements before submission.

Comment 20:

One comment opposed §§ 1.52(a)(5) and (b)(7) as proposed in that the Office would be providing a service that was not requested and charging an open-ended fee.

Response:

The comment has been adopted. The rule language has been modified to provide for the mailing of a notice of the noncompliance, which notice will require the applicant, patent owner, or requester in a reexamination proceeding to submit compliant papers in reply to the notice within the time period set in the notice. The proposed option, allowing the Office to prepare compliant papers for a fee, has not been adopted as final.

Comment 21:

One comment suggested that sequence listing be exempted from the requirements of § 1.52(b)(2).

Response:

The comment has been adopted. The computer readable form requirements of § 1.821(e) have not been modified and an exclusion placed in § 1.52(b)(2) for §§ 1.821-1.825.

Comment 22:

The proposal to encourage the use of paragraph numbering first appeared in the Advance Notice in conjunction with the replacement paragraph concept as part of Topic 13, and was later carried forward in the Notice of Proposed Rulemaking as §§ 1.52(b)(6) and 1.121. Strenuous opposition was received to paragraph numbering as proposed where a substitute specification would be required for amendments to the specification in the absence of paragraph numbering. The proposal for paragraph numbering is viewed as burdensome and inconsistent with the requirements of other countries.

Response:

The comments have been adopted in that the linkage to substitute specifications for amendments where paragraph numbering has not been utilized is dropped. Paragraph numbering has been retained as an option with no negative consequences if not utilized.

Comment 23:

Some of the comments suggested identification of paragraphs under § 1.52(b)(6) by page and line number, rather than by paragraph numbering.

Response:

This suggestion of requiring identification by page and line number could not be adopted and would, in fact, be unworkable as a transition into electronic filing since fixed pages do not exist in documents created on a computer. Page and line numbering are affected by font size, line spacing and formatting and can vary between different hardware and software components. Once each paragraph has been individually identified and tagged with a number, however, all future processing of the application, whether by paper or electronic version, may be done uniformly and accurately by both the Office and the applicant. For the time being, the concept of having applicants provide numbered paragraphs will be encouraged, although still optional.

Comment 24:

One comment suggested that the paragraph numbering should be modified with the left digit in the first paragraph number being a “1.”

Response:

While it was not stated why use of a “1” would be superior to the format suggested, the rule permits applicants to use any numbering system and does not require use of the form suggested in § 1.52(b)(6).

Comment 25:

One comment, in addition to opposing the proposal under § 1.52(b)(6), suggested that implementation apply only to applications filed after publication of the final rule.

Response:

The suggestion is inherently incorporated in the rule, in that paragraph numbering is both optional and can only be used when an application is first filed.

Comment 26:

The comments regarding § 1.52(e), which were generally supportive of the rule, were concerned with the issues of alteration of the data and future readability of the electronic media.

Response:

The issue of alteration and changes to the data are of great concern to the Office. Accordingly, the only electronic media that are permitted under the rule are limited to those that cannot be changed or erased. Compact Disc-Read-Write (CD-RW) media which can be erased and rewritten are not allowed under the amended rule since they do not satisfy this concern. Another concern with CD-RW media is compatibility with existing Office hardware since older CD-ROM drives may not be able to read CD-RW media. Similarly, the Office is limiting the data format to the International Standard ISO 9660 format containing ASCII data files which is supported by all of the major computer operating systems and hardware makers. In view of the media types and data formats selected, it is expected that the authenticity and reliability of Office records should be incontrovertible well into the future.

Section 1.53:

Section 1.53(c)(1) is amended to clearly provide that the cover sheet required by § 1.51(c)(1) may be an application data sheet (§ 1.76).

Section 1.53(c)(2) is amended for clarity and to refer to “the processing fee set forth in § 1.17(q)” for consistency with the amendment to § 1.17(q).

Section 1.53(d)(4) is amended to eliminate the reference to a “petition” under § 1.48 for consistency with the amendment to § 1.48. Section 1.53(d) is also amended to add a new § 1.53(d)(10) to provide a reference to § 1.103(b) for requesting a limited suspension of action in a continued prosecution application (CPA) under § 1.53(d).

Section 1.53(e)(2) is also amended to require that a petition under § 1.53(e) be accompanied by the fee set forth in § 1.17(h), regardless of whether the application is filed under §§ 1.53(b), 1.53(c), or § 1.53(d). While provisional applications filed under § 1.53(c) are not subject to examination under 35 U.S.C. 131 (35 U.S.C. 111(b)(8)), petitions under § 1.53(e) in provisional applications filed under § 1.53(c) are as

burdensome as petitions under § 1.53(e) in nonprovisional applications filed under § 1.53(b) or § 1.53(d). Therefore, it is appropriate to charge the petition fee set forth in § 1.17(h) for petitions under § 1.53(e) in applications filed under § 1.53(c), as well as for applications filed under § 1.53(b), or § 1.53(d).

Sections 1.53(f) and (g) are amended for clarity and to include a reference to “or reissue” in the paragraph heading to clarify that the provisions of § 1.53(f) apply to all nonprovisional applications, which include continuation, divisional, and continuation-in-part applications, as well as reissue applications and continued prosecution applications.

Section 1.53(f) is also amended to provide that if applicant does not pay one of either the basic filing fee or the processing and retention fee set forth in § 1.21(l) during the pendency of the application (rather than within one year of the mailing of a Notice to File Missing Parts of Application), the Office may dispose of the application. The former one-year period in § 1.53(f) for submitting the processing and retention fee confused applicants into believing that a continuing application could be filed anytime within that one-year period. This resulted in a lack of copendency (and the loss of benefits under 35 U.S.C. 120) when the prior application became abandoned for failure to timely reply to a Notice to File Missing Parts of Application and a “continuing” application was not filed until the end of the former one-year period in § 1.53(f) and after the expiration of the period for reply to the Notice to File Missing Parts of Application.

The new timeframe for submission of an application retention fee under § 1.53(f)(5) will be applicable to all applications filed on or after sixty days after the date of publication in the

Federal Register

.

Section 1.55:

Section 1.55(a)(2)(iv) is amended to refer to “the processing fee set forth in § 1.17(i)” for consistency with the amendment to § 1.17(h) and (i). See discussion of the amendment to § 1.17.

Sections 1.55(a)(2)(i) through (iii) clarify the current Office practice concerning when the claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) must be filed. Specifically, § 1.55(a)(2)(i) clarifies current Office practice. In an application filed under 35 U.S.C. 111(a), the Office requires the claim for priority and the certified copy of the foreign application to be filed before a patent is granted. Section 1.55(a)(2)(ii) clarifies current Office practice. In an application that entered the national stage of an international application after compliance with 35 U.S.C. 371, the time limits set in the PCT and the Regulations under the PCT control the time limit for making the claim for priority, while the certified copy of the foreign application must be filed before the patent is granted if the certified copy was not filed in accordance with the PCT and the Regulation under the PCT. Section 1.55(a)(2)(iii) clarifies current Office practice. The Office may require both the claim for priority and certified copy of the foreign application be filed at an earlier time than in §§ 1.55(a)(2)(i) or 1.55(a)(2)(ii) under certain enumerated circumstances.

Section 1.55(a)(2)(iv) provides that priority claims and documents may be submitted after payment of the issue fee but before the patent is granted (published), however, no further review by the Office other than placement in the application file will occur at that time.

Thus, it is now difficult for the Office to match a petition containing a priority claim or certified priority document filed after payment of the issue fee with an application file, and determine whether the applicant has met the conditions of 35 U.S.C. 119(a)-(d) to make the priority claim, before the date the application will issue as a patent. Nevertheless, it is also undesirable to prohibit applicants from filing a priority claim or certified priority document between the date the issue fee is paid and the date a patent is issued. Therefore, the Office will permit applicants to file a priority claim or certified priority document (with the processing fee set forth in § 1.17(i)) between the date the issue fee is paid and the date a patent is issued. The Office will, however, merely place such submission in the application file but will not attempt to determine whether the applicant has met the conditions of 35 U.S.C. 119(a)-(d) to make the priority claim nor include the priority claim information in the text of the patent. In such a situation, the patent will not contain the priority claim information. The patentee may request a certificate of correction under 35 U.S.C. 255 and § 1.323 and a determination of entitlement for such priority will be made after the patent is granted.

Comment 27:

One comment requested that it be clarified that a claim of priority and documents filed after payment of the issue fee, but before the patent issues, will not be reviewed by the Office, and that a determination of priority entitlement will be made upon issuing a certificate of correction.

Response:

The comment has been adopted and the proposed language of § 1.55(a)(2)(iv) modified.

Comment 28:

Two comments have suggested that one fee of $130 rather than two fees, one under § 1.55(a) and one under § 1.323, would be more appropriate. At least the Office should propose to reduce the § 1.55(a) fee in that the Office is no longer doing a substantive review. One of the comments suggested that a procedure should be set up to issue the certificate of correction (automatically) after the patent issues based on the previously received § 1.55(a) submission (rather than require patentee to send in a subsequent request for a certificate of correction).

Response:

The comments are not adopted. Applicants may of course submit a § 1.323 certificate of correction at the same time the § 1.55(a) submission is submitted, but any procedure that would have the Office automatically later treat a § 1.55(a) submission as a certificate of correction is not workable. It is unlikely that a § 1.55(a) submission would be routinely recognized as triggering a need for the Office to issue a certificate of correction. Moreover, even if such recognition initially occurred when the § 1.55(a) submission were received, the required lapse of time between the § 1.55(a) submission and whatever time after publication that the certificate of correction would then be acted upon may cause the need to issue a certificate of correction to be overlooked. Both the processing of the § 1.55(a) submission and the § 1.323 submission generate significant costs for the Office, which costs must be recovered. A single fee would not be sufficient to recover the total cost for both treatment of the § 1.55(a) submission and the issuance of the § 1.323 certificate of correction. It should be recognized that “just placing” a paper in a file that is in line for printing is not as simple a process as the comments would indicate. Associating the paper with the file and replacing of the file in the printing queue for the contractor requires many steps by many individuals. The actual processing of the paper represents the most significant portion of the cost of the prior review process to evaluate the priority claim.

Comment 29:

One comment suggested that the proposed change would negatively impact predictability of the effective filing date of issued patents where a request for a certificate of correction is not submitted. It is believed that it is better for the Office to continue to review the claims for priority submitted after payment of the issue fee rather than shift the burden to

anyone reviewing the file history where a certificate of correction has not been requested.

Response:

The comment is not adopted. Absent issuance by the Office of a certificate of correction, patentee cannot rely upon a foreign priority date. While it is true that the public would not know whether patentee will ever file a certificate of correction to obtain a priority claim (there is no time limit under § 1.323), that was also true under previous practice. Even though previous practice permitted a determination of the right to priority before issuance, a patentee could request and the Office would issue a certificate of correction after issuance (recourse via reissue to correct the lack of a priority claim pursuant to

Brenner

v.

State of Israel

, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968) was not required).

Comment 30:

Two comments suggested that the Office consider a further rule change in regard to bypass applications (continuations of international applications filed under 35 U.S.C. 111(a) and claiming benefit of the international application under 35 U.S.C. 365(c), rather than as national stage applications) that would permit the use of a photocopy of the foreign priority document that has been sent by the International Bureau to the Office as a Designated or Elected Office under the PCT. It is argued that the statute does not specify who must make the certification and that therefore the certification can be made and was in fact made when the copy of the foreign application was prepared by WIPO (rather than the certification being made by country).

Response:

The comments are not adopted. The photocopy received from the International Bureau does not constitute a certified copy (it is merely a photocopy of the priority application and is not certified by WIPO), and would not satisfy the provision that a certified copy be provided in applications filed under 35 U.S.C. 111(a). 35 U.S.C. 119(b) defines how a certified copy must be made, which requires that a statement be made by the foreign intellectual property authority in which the foreign application was filed. The procedure suggested by the comment would not meet this definition. In addition, the copy of the priority application communicated by the International Bureau is placed in a folder and is not assigned a U.S. application number unless the national stage is entered. Such folders are disposed of if the national stage is not entered. Therefore, such copies may not be available if needed later in the prosecution of a continuing application. Accordingly, the priority documents in folders of international applications which have not entered the national stage may not be relied on.

Section 1.56:

Section 1.56 is amended to add a new § 1.56(e) to provide that in any continuation-in-part application, the duty under § 1.56 includes the duty to disclose to the Office all information known to the person to be material to patentability 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. Section 1.63(e) (second sentence) formerly required that the oath or declaration in a continuation-in-part application acknowledge that the duty under § 1.56 includes the duty to disclose to the Office all information known to the person to be material to patentability (as defined in § 1.56(b)) 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. Thus, the examiner must object to an oath or declaration in a continuation-in-part that does not contain this statement. By amending § 1.56 to expressly provide that the duty under § 1.56 includes this duty, an acknowledgment of the duty of disclosure under § 1.56 is an acknowledgment of this duty in a continuation-in-part application, and an express statement to that effect in the oath or declaration will no longer be required (§ 1.63(e) is also amended by deletion of the second sentence).

Comment 31:

Two comments stated that the purpose of the language, proposed to no longer be required in the § 1.63 oath/declaration, is to remind inventors who must sign the document of their duty in regard to continuation-in-part applications. The presence of such information in § 1.56 would not put on notice an inventor in the same manner as if it appeared in the oath/declaration.

Additionally, there does not appear to be more reason to add such a provision to § 1.56 since § 1.56 does not include other reminders about the duty of disclosure such as public use or sale, or, indeed, every other provision regarding a form of prior art.

Response:

The comments are adopted to the limited extent indicated. Where a practitioner believes that there is an educational purpose to be served from the appearance of such language in an oath/declaration, the practitioner is free to provide the inventors an oath/declaration form that contains such language. Declarations that do not contain such an informational reminder, however, will no longer be treated as informal with a new declaration required. In view of the expressed concern that the language should be present in a declaration, the Office will continue to supply § 1.63 forms containing the language being deleted as a § 1.63(e) requirement. The Office's Standard Declaration form (PTO/SB/01) will be modified to move the continuation-in-part language relating to information that became available between the filing date of a prior application and the filing date of an instant (continuing) application from page 2 to page 1. (The current placement of the continuation-in-part language on page 2 is in a portion of the Standard Declaration form that requires completion by the applicant as to continuing data. If such portion were not completed, it is unclear whether the averment concerning continuation-in-part applications actually serves any purpose. By placing the continuation-in-part language on page 1, where it would not be dependent on completion of a portion of the form relating to continuing date, the averment will automatically be made upon execution of the form).

Section 1.58:

Section 1.58(b) is specifically added to provide for placing very large tables on archival electronic media rather than in a paper specification, with the additional requirement that the information, including chemical and mathematical symbols, be positioned to maintain their intended meaning. See, for example, §§ 1.96(c) and 1.821(c). Tables convey information by the arrangement of the data in the table: rows and columns must line up. Formulae also rely on character position for their meaning. Data must be submitted under the amended rule properly positioned, in ASCII encoding, with no proprietary formats allowed. Very limited special formatting characters are found in ASCII so that it is necessary for the information to be arranged using only ASCII characters in a manner that retains the spatial arrangement of the data. The intent is that the tables and formulae will display properly when viewed with a text viewer. Great care must be exercised in preparing any such tables since any amendments to correct lost formatting may convey previously undisclosed subject matter and be considered new matter.

Section 1.59:

Section 1.59(b) is amended to refer to “the fee set forth in § 1.17(h)” for consistency with the amendment to §§ 1.17(h) and (i). See discussion of the amendment to § 1.17.

Section 1.63:

Section 1.63 is amended for clarity and simplicity. Specifically,

§ 1.63(a) is amended to provide that an oath or declaration filed under § 1.51(b)(2) as a part of a nonprovisional application must: (1) be executed (

i.e.

, signed) in accordance with either § 1.66 or § 1.68 (§ 1.63(a)(1)); (2) identify each inventor by full name (§ 1.63(a)(2)); (3) identify the country of citizenship of each inventor (§ 1.63(a)(3)); and (4) state that the person making the oath or declaration believes the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought (§ 1.63(a)(4)). Section 1.63(a)(1) clarifies that there is no minimum age requirement for the person signing the oath or declaration, but rather that the person signing must be competent to understand what is being signed.

Section 1.63(b) is amended to provide that in addition to meeting the requirements of § 1.63(a), the oath or declaration must also: (1) identify the application to which it is directed; (2) state that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration; and (3) state that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. These requirements were formerly located at §§ 1.63(a)(2), (b)(1), and (b)(3).

Section 1.63(c) provides that an applicant may provide identifying information either in an application data sheet (§ 1.76) or in the oath or declaration. Permitting applicants to provide such identifying information in an application data sheet (rather than in the oath or declaration) should result in: (1) an increase in the use of application data sheets; and (2) a decrease in the need for supplemental oaths or declarations (providing omitted information) for applications in which an application data sheet was submitted. Note: when one of the inventors needs to update information, such as residence, the single inventor is not a party authorized by § 1.33(b) to submit a paper. The inventor may complete a new data sheet relating only to information concerning that inventor, but it must be submitted by an appropriate party according to § 1.33(b). The amendment to § 1.63(c)(1) has replaced “post office address” with “mailing address” to avoid the confusion of some applicants who do not understand that the use of “post office address” was intended to mean the “mailing address” (instead believing a post office box was required), which is seen as a plainer way of stating the requirement. The requirement for a mailing address is equivalent to the requirement for post office address, and therefore the same information supplied for the post office address may continue to be supplied for the mailing address (see also the discussion of § 1.76(a)(3)). Accordingly, information relating to where applicant normally receives mail is acceptable if identified under the prior § 1.63(a)(3) (that used the expression post office address) as the mailing address, or if identified under the current § 1.63(c)(1) (reciting mailing address) as the post office address.

Section 1.63(e) is amended to eliminate the requirement that an oath or declaration in a continuation-in-part application state that the person making the oath or declaration also acknowledge that the duty under § 1.56 includes the duty to disclose to the Office all information known to the person to be material to patentability (as defined in § 1.56(b)) 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. See discussion of the amendment to § 1.56(e).

Comment 32:

One comment appears to object to a change made in § 1.63(c)(2) (replacing “post office address” with “mailing address”) and apparently wishes to have “residence” further defined in the rule either in terms of city, and state, or foreign country, or not required at all. It is argued that terms such as residence are confusing to inventors based on the different types of geographic areas that exist throughout the world.

Response:

The comments are not adopted. The change from “post office address” to “mailing address” was made in view of many queries relating that an inventor does not have a “post office box.” As is recognized in the comment, residence has a variable identity depending on where one resides. It is not practical to attempt to identify the residence by rule language. Rather, the MPEP will continue to be relied upon for further definition, particularly as the Office believes it is desirable to retain a requirement that the inventor's residence be identified.

Section 1.64:

Section 1.64 is amended to also refer to any supplemental oath or declaration (§ 1.67). In addition, § 1.64(b) is amended to provide that if the person making the oath or declaration is the legal representative, the oath or declaration shall state that the person is the legal representative and shall also state the citizenship (pursuant to 35 U.S.C. 115 and 117), residence and mailing address of the legal representative.

The deletion of the § 1.44 proof requirement for the legal representative of §§ 1.42 and 1.43 will be effective on the date of publication in the

Federal Register

with § 1.64 as to all pending papers under §§ 1.42 and 1.43 that have not had the proof requirement satisfied.

Section 1.67:

Section 1.67(a) is amended to create §§ 1.67(a)(1) through (a)(4). Section 1.67(a) is amended to refer to § 1.162. Deficiencies or inaccuracies in an oath or declaration may be corrected by a supplemental oath or decla

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