Changes to Implement 20-Year Patent Term and Provisional Applications

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 3

[Docket No. 941120-4320]

RIN 0651-AA76

Changes to Implement 20-Year Patent Term and Provisional

Applications

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend

the rules of practice in patent cases to implement the changes related

to patent term in title 35, United States Code, contained in the

Uruguay Round Agreements Act (S. 2467 and H.R. 5110), which was

recently passed by Congress, and to simplify the rules. Among the

changes that are contained in S. 2467 and H.R. 5110 are the conversion

to a 20-year patent term measured from the date of filing an

application in the U.S., and the introduction of provisional

applications. The changes apply to utility and plant patents. They do

not apply to design patents. S. 2467 was passed by the Senate on

December 1, 1994, and the House passed H.R. 5110 on November 29, 1994.

The President has indicated that he will sign the bills. Since a Public

Law number is not available, the rule package refers to the Senate and

House bill numbers for convenience. The amendments to title 35 relating

to 20-year patent term and provisional applications will be effective

on the date which is 6 months after the date of enactment.

DATES: Written comments must be submitted on or before February 17,

1995. A public hearing will be held Thursday, February 16, 1995, at

9:30 a.m., in the Commissioner's Conference Room 912, Crystal Park 2,

2121 Crystal Drive, Arlington, Virginia. Requests to present oral

testimony should be received on or before February 14, 1995.

ADDRESSES: Address written comments and requests to present oral

testimony to the Commissioner of Patents and Trademarks, Washington, DC

20231, Attention: Stephen G. Kunin, Deputy Assistant Commissioner for

Patent Policy and Projects, Crystal Park 2, Suite 919, or by fax to

(703) 305-8825.

FOR FURTHER INFORMATION CONTACT: Magdalen Y. Greenlief or John F.

Gonzales, Special Program Examiners, Office of the Deputy Assistant

Commissioner for Patent Policy and Projects, at (703) 305-9285 or by

mail marked to their attention and addressed to the Commissioner of

Patents and Trademarks, Washington, DC 20231.

SUPPLEMENTARY INFORMATION: This proposed rule change is designed

primarily to implement the changes in practice related to patent term

provided for in S. 2467 and H.R. 5110. In addition, it is proposed to

simplify the procedures for filing continuation and divisional

applications which will benefit both the Office and the public.

Section 154 of title 35, United States Code, currently provides

that every patent (other than a design patent) shall be granted for a

term of seventeen years from the patent issue date, subject to the

payment of maintenance fees as provided for in title 35. S. 2467 and

H.R. 5110 amend 35 U.S.C. 154 by establishing a 20-year patent term

from the date of filing of the application. Specifically, the

legislation provides that the patent term will begin on the date on

which the patent issues and will end twenty years from the date on

which the application was filed in the United States. If the

application contains a specific reference to an earlier application

under 35 U.S.C. 120, 121 or 365(c), the patent term will end twenty

years from the date on which the earliest application relied on was

filed. As amended by S. 2467 and H.R. 5110, 35 U.S.C. 154 excludes from

determination of the patent term any application on which priority is

claimed under 35 U.S.C. 119, 365(a) or 365(b).

S. 2467 and H.R. 5110 further provide that the term of a patent may

be extended, for a maximum of five years, where the issuance of a

patent is delayed because of (1) proceedings under 35 U.S.C. 135(a),

(2) placement of the application under a secrecy order pursuant to 35

U.S.C. 181, and/or, under certain circumstances, (3) appellate review

by the Board of Patent Appeals and Interferences or by a federal court.

The total extension available is limited to five years regardless of

whether there were delays due to more than one of the reasons covered

by the legislation. This extension is separate from and in addition to

the patent term extension available under 35 U.S.C. 156.

In addition, S. 2467 and H.R. 5110 establish a domestic priority

system. In accordance with the provisions of the Paris Convention for

the Protection of Industrial Property, the term of a patent cannot

include the Paris Convention priority period. The legislation provides

a mechanism to enable domestic applicants to quickly and expensively

file provisional applications. Applicants will be entitled to claim the

benefit of priority in a given application based upon the previously

filed provisional application in the United States. The domestic

priority period will not count in the measurement of the term. Thus,

under the legislation, domestic applicants will be placed on an equal

footing with foreign applicants with respect to the patent term.

35 U.S.C. 111 is amended by S. 2467 and H.R. 5110 to provide for

the filing of a provisional application. 35 U.S.C. 41(a)(1) is amended

to provide a $150.00 filing fee for each provisional application,

subject to a 50 percent reduction for a small entity. The requirements

for obtaining a filing date for a provisional application are the same

as those which previously existed for an application filed under 35

U.S.C. 111, except that no claim or claims as set forth in 35 U.S.C.

112, second paragraph, is required. Moreover, no oath/declaration as

set forth in 35 U.S.C. 115 is required. The provisional application is

also not subject to the provisions of 35 U.S.C. 131, 135 and 157, i.e.,

a provisional application will not be examined for patentability,

placed in interference or made the subject of a statutory invention

registration. Further, the provisional application will automatically

be abandoned twelve (12) months after its filing date and will not be

subject to revival to restore it to pending status thereafter. Benefit

of the filing date of the copending provisional application may be

claimed pursuant to 35 U.S.C. 119(e), as contained in S. 2467 and H.R.

5110, in a continuing application during these 12 months. A provisonal

application will not be entitled to claim priority benefits based on

any other application under 35 U.S.C. 119, 120, 121 or 365.

Also, S. 2467 and H.R. 5110 amend 35 U.S.C. 119 to allow an

applicant to claim benefits of the filing date of the provisional

application in a later filed U.S. application. However, since 35 U.S.C.

154 excludes from the determination of the patent term any application

on which priority is claimed under 35 U.S.C. 119, 365(a) or 365(b), the

filing date of a provisional application will not be considered in

determining the term of any patent.

S. 2467 and H.R. 5110 further include transitional provisions for

limited reexamination in certain applications pending for 2 years or

longer as of the effective date of 35 U.S.C. 154(a)(2), taking into

account any reference to any earlier application under 35 U.S.C. 120,

121 or 365(c). The transitional provisions also permit examination of

more than one independent and distinct invention in certain

applications pending for 3 years or longer as of the effective date of

35 U.S.C. 154(a)(2), taking into account any reference to any earlier

application under 35 U.S.C. 120, 121 or 365(c). These transitional

provisions are not applicable to any application which is filed on or

after the effective date of 35 U.S.C. 154(a)(2), regardless of whether

the application is a continuing application.

In addition, this proposed rule change will simplify the procedures

by eliminating the processing and retention fee practice set forth in

existing Secs. 1.53(d) and 1.78(a)(1). The processing and retention fee

practice allows applicants to file an application without the filing

fee and to pay the processing and retention fee of $130.00 in order for

the application to be used as a basis for foreign filing and for

priority under 35 U.S.C. 120. The processing and retention fee practice

is seldom used and will be unnecessary in view of the legislation which

provides for the filing of a provisional application with a filing fee

of $150.00/$75.00. The result achieved by the use of the processing and

retention fee practice can be achieved by the use of the provisional

application practice at about the same fee level.

In order to simplify the procedures for filing continuation and

divisional applications, it is proposed that Sec. 1.60 be deleted. The

procedures set forth in Sec. 1.60 are unnecessary in view of the recent

rule change to Sec. 1.6(d) which permits the filing of a copy of an

oath or declaration. Applicants may use the procedures set forth in

Sec. 1.53 to file a continuation or divisional application under 35

U.S.C. 111(a), as contained in S. 2467 and H.R. 5110, by providing the

Office with a copy of the prior application as filed. The issue of a

stale oath or declaration would be eliminated by amending Office

practice since neither the statute nor the rules require a recent date

of execution to appear on the oath or declaration. The subject matter

of the application would have been executed by the inventor(s) and the

duty of candor and good faith including the duty of disclosure

requirements of Sec. 1.56 would be continuous and would apply to the

continuing application.

Clarifying amendments are proposed to be made to Secs. 1.16,

paragraphs (a) and (f); and 1.17, paragraphs (h) and (i). These

proposed amendments do not affect the substance of the rules.

The fees set forth in current Sec. 1.17, paragraphs (i)(1) and

(i)(2), are proposed to be consolidated into a new paragraph (i).

Discussion of Specific Rules

If Title 37 of the Code of Federal Regulations, Parts 1 and 3, are

amended as proposed:

Section 1.1 would provide a special ``Box Provisional Patent

Application'' address to assist the Mail Room in separating and

processing provisional applications and mail relating thereto.

Section 1.9 would have current paragraph (a) redesignated as

subparagraph (a)(1). A new subparagraph (a)(2) would be added to define

the term ``provisional application'' as a U.S. national application

filed under 35 U.S.C. 111(b).

Sections 1.12 and 1.14 would have the reference to 37 CFR

1.17(i)(1) replaced with a reference to 37 CFR 1.17(i) because it is

proposed that 37 CFR 1.17(i)(1) and (i)(2) be consolidated into a new

paragraph (i) since the petition fees provided in existing paragraphs

(i)(1) and (i)(2) are the same.

Section 1.16 would list the basic filing fee for a provisional

application as $75.00 for a small entity (see Sec. 1.19(c)-(f)) or

$150.00 for other than a small entity as contained in S. 2467 and H.R.

5110. Since the filing fee for a provisional application is established

by S. 2467 and H.R. 5110 as a 35 U.S.C. 41(a) fee, the filing fee for a

provisional application will be subject to the 50 percent reduction

provided for in 35 U.S.C. 41(h). A complete provisional application

does not require claims since no examination on the merits will be

given to a provisional application. However, provisional applications

may be filed with one or more claims as part of the application.

Nevertheless, no additional claim fee or multiple dependent claim fee

will be required in a provisional application.

Also, proposed Sec. 1.16 paragraph (l), would establish the

surcharge required by proposed Sec. 1.53(d)(2) for filing the basic

filing fee or the cover sheet required by proposed Sec. 1.51(a)(2) for

a provisional application at a time later than the provisional

application filing date as $25.00 for a small entity or $50.00 for

other than a small entity. The $50.00/$25.00 surcharge set forth in

proposed paragraph (1) for a provisional application is less than the

$130.00/$65.00 surcharge set forth in paragraph (e) for all other types

of patent applications. A reduced surcharge for a provisional

application is proposed in view of the lower filing fee required for a

provisional application and in an attempt to minimize applicant's

overall cost of filing a provisional application.

Clarifying changes would be made to Sec. 1.16. These changes do not

affect the substance of the rule. It is proposed to insert the words

``basic fee'' in paragraph (f) of Sec. 1.16. Paragraph (e) currently

refers to ``the basic filing fee''. Current Office practice allows a

design application to be filed without the design filing fee or the

oath/declaration as set forth in current Sec. 1.53(d). The change to

Sec. 1.16(f) is merely for clarification. In addition, it is proposed

to replace the word ``cases'' found in paragraph (a) with the word

``applications'', since the word ``applications'' is used elsewhere in

the rule.

Section 1.17 would amend paragraph (h) to provide that the $130.00

petition fee for filing a petition for correction of inventorship under

37 CFR 1.48 applies to all patent applications, except provisional

applications which would be covered by new paragraph (q).

The reference to Sec. 1.60 in Sec. 1.17(i)(1) would be deleted,

since it is proposed that Sec. 1.60 be removed.

The words ``of this part'', in Sec. 1.17, paragraphs (h) and (i),

would be deleted, since the paragraphs currently refer to sections in

parts other than part 1. No substantive change is intended by this

proposal.

Section 1.17(i) would be amended to clarify that petitions relating

to the grant of a filing date under Sec. 1.53 are for applications

other than provisional applications. Proposed paragraph (q) would

address petitions relating to provisional applications.

In addition, the rules would be simplified by combining current

Sec. 1.17(i)(1) and (i)(2) into new paragraph (i), since the petition

fees provided in current paragraphs (i)(1) and (i)(2) are the same. No

substantive change is intended by this proposal.

A new Sec. 1.17(q) would be added to establish the fee for filing a

petition for correction of inventorship under Sec. 1.48 in a

provisional application as $25.00 for a small entity or $50.00 for

other than a small entity. The $50.00/$25.00 petition fee would also be

required by proposed Sec. 1.53 for filing a petition to accord a

provisional application a filing date or to convert an application

filed under proposed Sec. 1.53(b)(1) to a provisional application.

New Secs. 1.17(r) and (s) would be added to establish the fee for

filing a submission after final rejection under Sec. 1.129(a) and for

each additional invention requested to be examined under Sec. 1.129(b),

respectively. These fees have been set at $730.00 to cover the costs of

processing the submission after final rejection and each additional

invention requested to be examined.

Paragraph (l) would be deleted from Sec. 1.21 since the processing

and retention fee required in existing Sec. 1.53(d) would be eliminated

and the reference to Sec. 1.60 in paragraph (n) would be deleted since

Sec. 1.60 would be removed.

Section 1.28(a) would have the references to Sec. 1.60 deleted

since Sec. 1.60 would be removed. Section 1.28(a) would be amended to

delete the references to Sec. 1.62 and to specify the procedure for

establishing small entity status in continuation, divisional and

continuation-in-part applications where small entity status has been

established in a parent application. Where the status as a small entity

has been established in a parent application and is still proper,

applicant could include, in a continuation, divisional or continuation-

in-part application, either a reference to a verified statement

claiming small entity status in the parent application or a copy of the

verified statement filed in the parent application.

Section 1.45(c) would state that each inventor named in a joint

provisional application must have made a contribution to the subject

matter disclosed in the application. The existing language of paragraph

(c) refers to ``the subject matter of at least one claim'' which would

be inappropriate for provisional applications, since provisional

applications may be filed without claims.

Section 1.48, paragraphs (a)-(c), would specify that the procedures

for correcting an error in inventorship set forth in those paragraphs

relate to applications other than provisional applications. A new

paragraph (d) would establish a simplified procedure for adding the

name of an inventor in a provisional application, where the name was

originally omitted without deceptive intent. Proposed paragraph (d)

would not require the verified statement of facts by the original

inventor or inventors, the oath or declaration by each actual inventor

in compliance with Sec. 1.63 or the consent of any assignee as

currently required in paragraph (a). The procedure would require the

filing of a petition identifying the name or names of the inventors to

be added and including a statement that the name or names of the

inventors were omitted through error without deceptive intention on the

part of the actual inventor(s). The statement would be required to be

verified if made by a person not registered to practice before the

Office. The statement could be signed by a registered practitioner

acting in a representative capacity under Sec. 1.34(a). The $50.00/

$25.00 petition fee set forth in proposed Sec. 1.17(q) would also be

required.

Under 35 U.S.C. 119(e), as contained in S. 2467 and H.R. 5110, a

later filed complete application may claim priority benefits based on a

copending provisional application so long as the applications have at

least one inventor in common. An error in naming a person as an

inventor in a provisional application would not require correction by

deleting the erroneously named inventor from the provisional

application since this would have no effect upon the ability of the

provisional application to serve as a basis for a priority claim.

Therefore, proposed Sec. 1.48(d) would not provide a procedure for

deleting a named inventory. Any request to delete a named inventor

filed in a provisional application would be properly treated as a

petition under Sec. 1.182. As a condition to granting any petition to

delete a named inventor in a provisional application and in order to

protect the rights of the inventors/assignees involved, the Office may

require a statement from all of the named inventors and/or the written

consent of any assignee.

Section 1.51 would include a new subparagraph (a)(2) identifying

the required parts of a complete provisional application. The complete

provisional application would include a cover sheet, a specification as

prescribed in 35 U.S.C. 112, first paragraph, any necessary drawings

and the provisional application filing fee. A suggested cover sheet

format for a provisional application will be available from the Office

free of charge to the public. The cover sheet as set forth by proposed

subparagraph (a)(2)(i) would identify (1) the application as a

provisional application, (2) the name or names of the inventor or

inventors, (3) the title of the invention, (4) the name and

registration number of the attorney or agent (if applicable), (5) the

docket number used by the person filing the application to identify the

application (if applicable), and (6) the correspondence address, all of

which is information required in order to properly prepare the

provisional application filing receipt.

The Office currently receives thousands of papers and fees every

work day. Most papers filed in the Office are received in the

Correspondence and Mail Division which must identify and route each

paper to the appropriate area for consideration. Among the papers which

may currently be filed in the Office are disclosure documents, which

may comprise a written description and drawings, and applications for

patent, some of which may be incomplete because claims are omitted.

Further, applications for patent are frequently received in the Office

without the filing fee or the oath/declaration required by Sec. 1.63.

With the inception of provisional application practice, the Office will

begin receiving another type of document resembling either a disclosure

document or an incomplete application for patent and which may comprise

nothing more than a written description and drawings. The potential for

Office error, e.g., misinterpreting a paper intended as a provisional

application as some other type of document, will obviously increase.

Further, with the inception of a twenty-year patent term, it will be

highly desirable for the Office to process applications, as well as all

other papers which the Office receives, quickly and correctly.

While the name or names of the inventors are required in order to

accord a provisional application a filing date, a provisional

application is not required to be signed by the inventor or the

assignee. No oath or declaration is required. Presumably, most

provisional applications will be filed by a registered practitioner

without a power of attorney being filed. If an essential part, e.g.,

the drawings, of the provisional application is omitted or if the

filing fee did not accompany the application, the Office will need a

correspondence address to notify the applicant of the omission.

The cover sheet required in Sec. 1.51 would provide the

Correspondence and Mail Division with a paper specifically identifying

the document as a provisional application and would provide the

Application Processing Division with most of the information it will

need to promptly and properly process the provisional application and

to prepare the official filing receipt. The cover sheet would also

provide applicants and practitioners with a checklist prior to the

filing of the provisional application.

Since no substantive examination would be given to any provisional

application, the filing of an information disclosure statement in a

provisional application is unnecessary and will not be permitted.

Therefore, paragraph (b) of Sec. 1.51 would make it clear that the

Office will not accept an information disclosure statement in a

provisional application. Any information disclosure statements filed in

a provisional application would either be returned or disposed of at

the convenience of the Office.

Section 1.53 would have the title and paragraph (a) revised to

refer to application number, rather than application serial number. The

term ``application number'' is found in current Sec. 1.5(a).

A new paragraph (b)(2) would be added to Sec. 1.53 setting forth

the requirements for obtaining a filing date for a provisional

application. Existing paragraph (b) would be redesignated as paragraph

(b)(1) and would be amended to: (1) Refer to Sec. 1.17(i) rather than

1.17(i)(1) to conform to the proposed change therein; (2) delete the

reference to Sec. 1.60 which is proposed to be removed; and (3) clarify

that continuations, divisions and continuations-in-part may be filed

under either Sec. 1.53 or Sec. 1.62. Paragraph (b)(2) would state that

a filing date would be accorded to a provisional application as of the

date the written description, any necessary drawings and the names of

all inventors are filed in the Office. The filing date requirements for

a provisional application set forth in new paragraph (b)(2) parallel

the existing requirements set forth in current paragraph (b), except

that no claim would be required. In order to keep the cost of

processing provisional applications down and to reduce the handling of

the provisional applications, amendments, other than those required to

make the provisional application comply with applicable regulations,

would not be permitted after the filing date of the provisional

application.

New Sec. 1.53(b)(2)(i) would require all provisional applications

to be filed with a cover sheet identifying the application as a

provisional application. The paragraph would also indicate that the

Office will treat an application as having been filed under paragraph

(b)(1), unless the application is identified as a provisional

application. This proposal is similar to the current requirement in

Sec. 1.62 that the application include a specific request for an

application under Sec. 1.62. The cover sheet with identification that a

provisional application is intended should greatly assist the

Correspondence and Mail Division in distinguishing provisional

applications from other types of applications. A provisional

application, which is identified as such, but which does not have a

complete cover sheet as required by Sec. 1.51(a)(2)(i) would be treated

as a provisional application. The complete cover sheet and a surcharge

would be required to be submitted at a later date.

Section 1.53(b)(2)(ii) would establish a procedure for converting

an application filed under Sec. 1.53(b)(1) to a provisional

application. The procedure would require the filing of a petition

requesting the conversion and the $50.00/$25.00 petition fee set forth

in Sec. 1.17(q). Filing of the petition in the application would be

required prior to the payment of the issue fee or prior to 12 months

after its filing date, whichever event is earlier. The grant of any

such petition would not entitle applicant to a refund of the fees

properly paid in the application filed under Sec. 1.53(b)(1).

Section 1.53(b)(2)(iii) is intended to call attention to the

provisions of S. 2467 and H.R. 5110 which prohibit any provisional

application from claiming a right of priority under 35 U.S.C. 119 or

365(a) or the benefit of an earlier filing date under 35 U.S.C. 120,

121 or 365(c) of any other application. Attention would be called to

the provisions of the legislation which provide that no claim for

benefit of an earlier filing date may be made in a design application

based on a provisional application and that no request for a statutory

invention registration may be filed in a provisional application.

Section 1.53(b)(2)(iii) would specify that the requirements of

Sec. 1.821(e), relating to the filing of a copy of the ``Sequence

Listing'' in computer readable form, are not applicable to a

provisional application. It is noted that all other sequence

requirements as set forth in Sec. 1.821 through 1.823 and 1.825 are

applicable to a provisional application.

Section 1.53(c) would require that any request for review of a

refusal to accord an application a filing date be made by way of a

petition accompanied by the fee set forth in Sec. 1.17(i), i.e.,

$130.00, if the application was filed under Sec. 1.53(b)(1), or by the

fee set forth in Sec. 1.17(q), i.e., $50.00/$25.00, if the application

was filed under Sec. 1.53(b)(2). This reflects the current practice set

forth in section 506.02 of the Manual of Patent Examining Procedure

(MPEP) with regard to any request for review of a refusal to accord a

filing date for an application. The Office would continue its current

practice of refunding the petition fee, if the refusal to accord the

requested filing date is found to have been an Office error.

Current paragraph (d) of Sec. 1.53 would be redesignated as

paragraph (d)(1) and would be amended to delete the references to the

processing and retention fee practice which would be eliminated by this

proposal in view of the proposed provisional application practice.

Under proposed paragraph (d)(2), the provisional application could be

filed without the basic filing fee (set by S. 2467 and H.R. 5110 as

$150.00 for other than a small entity, subject to a 50 percent

reduction for small entity) and without the complete cover sheet

required by proposed Sec. 1.51(a)(2). In such a case, the proposed rule

provides that the applicant will be notified and be given a period of

time in which to file the missing fee, and/or cover sheet and to pay

the surcharge set forth in proposed Sec. 1.16(1).

Section 1.53(e)(2) would be added to indicate that a provisional

application would not be given a substantive examination and would be

abandoned no later than twelve (12) months after its filing date as set

forth in S. 2467 and H.R. 5110.

Section 1.55 would have the reference to 35 U.S.C. 119 replaced

with a reference to 35 U.S.C. 119(a)-(d) and would specify that a

provisional application is not entitled to the right of foreign

priority under proposed 35 U.S.C. 119(a)(-(d). S. 2467 and H.R. 5110

amend 35 U.S.C. 119 by assigning letters (a), (b), (c) and (d) to the

existing paragraphs of 35 U.S.C. 119. These paragraphs are directed to

claims for foreign priority. In addition, 35 U.S.C. 111 is amended to

provide that a provisional application may not claim or be entitled to

the right of foreign priority of any other application under 35 U.S.C.

119. Therefore, provisional applications are not included in Sec. 1.55.

In addition, the reference to 37 CFR 1.17(i)(1) would be replaced by 37

CFR 1.17(i) to be consistent with the proposed change to Sec. 1.17. No

substantive change is intended by this proposal.

Section 1.59 would delete the reference to the processing and

retention fee which is proposed to be eliminated from Sec. 1.53(d).

Section 1.60 would be removed and reserved. The procedures set

forth in Sec. 1.60 for filing a continuation or divisional application

are unnecessary in view of the recent rule change to Sec. 1.6(d) which

permits the filing of a copy of the signed oath or declaration. This is

appropriate since neither the statute nor the rules require a recent

date of execution to appear on the oath or declaration and the duty of

disclosure requirements under Sec. 1.56 would apply to the continuing

application. The issue of a stale oath or declaration would be

eliminated by appropriately amending the procedures set forth in the

Manual of Patent Examining Procedure.

The Office currently receives a number of petitions requesting that

an application filed under Sec. 1.60 be accepted even though at the

time of filing of the application, applicant failed to comply with all

the requirements of Sec. 1.60 due to inadvertent error on the part of

the applicant. The deletion of Sec. 1.60 will help reduce the number of

petitions and will simplify the procedures for filing an application

for both the Office and patent practitioners. Applicants may use the

procedures set forth in Sec. 1.53 to file a continuation or divisional

application under 35 U.S.C. 111(a) by providing the Office with a copy

of the prior application. Failure to submit a complete copy of the

prior application may be corrected by way of a petition under

Sec. 1.182.

Section 1.62 would state that the procedure could be used for

filing a continuation, division or continuation-in-part of a complete

application filed under Sec. 1.53(b)(1) but not a provisional

application under Sec. 1.53(b)(2). The section would specifically

preclude the use of the file wrapper continuing procedures set forth in

Sec. 1.62 for filing the first complete application under 35 U.S.C.

111(a) which claims the benefit of an earlier filing date of a

provisional application. In view of the relatively small filing fee for

a provisional application and the fact that the provisional application

will not be examined, Office handling must be kept to a minimum and

these provisional applications, once complete, will be sent to the

Files Repository for storage rather than being kept in the examination

area of the Office. It would be burdensome for the Office to retrieve

these provisional applications so that an applicant could use the

procedures set forth in Sec. 1.62. Furthermore, since claims and an

oath or declaration are not required in a provisional application and

the first complete application would most likely contain additional

subject matter not disclosed in the provisional application, the

procedures set forth in Sec. 1.53 for filing an application will meet

applicants' needs.

Reference to 37 CFR 1.17(i)(1) in Sec. 1.62 would be replaced by 37

CFR 1.17(i) to be consistent with the proposed change to Sec. 1.17.

Furthermore, the phrase ``Serial number, filing date'' in Sec. 1.62(a)

and the term ``application serial number'' in Sec. 1.62(e) would be

changed to ``application number.'' The term ``application number'' is

found in current Sec. 1.5(a).

Section 1.63(a) would have the reference to Sec. 1.51(a)(2)

replaced with a reference to Sec. 1.51(a)(1)(ii) in order to conform

with the proposed changes in Sec. 1.51.

Section 1.67(b) would have the reference to Sec. 1.53(d) replaced

with a reference to Sec. 1.53(d)(1) in order to conform with the

proposed changes in Sec. 1.53. Furthermore, the references to

Secs. 1.53(b) and 1.118 would be deleted to make clear that the new

matter exclusion applies to all applications including those filed

under Sec. 1.62.

Section 1.78(a)(1) and (a)(2) would specifically preclude a

provisional application from claiming the benefit of an earlier filing

date of a prior copending application filed in the United States under

Sec. 1.53(b)(1) or Sec. 1.62. S. 2467 and H.R. 5110 amend 35 U.S.C. 111

to provide that a provisional application is not entitled to the

benefit of an earlier filing date in the United States under 35 U.S.C.

120, 121 or 365(c). Furthermore, the reference in Sec. 1.78(a)(1) to

the processing and retention fee required in existing Sec. 1.53(d)

would be deleted. The use of serial number and filing date in

Sec. 1.78(a)(2) as an identifier for a prior application would be

eliminated to avoid any confusion as to whether an application

identified by its serial number and filing date is an application filed

under proposed Sec. 1.53(b)(1) or Sec. 1.62 or a design application

since there is a different series code assigned to each of these types

of applications.

In addition, new subparagraphs (a)(3) and (a)(4) would be added to

Sec. 1.78 to set forth the procedures for claiming the benefit of an

earlier filing date based on a prior filed copending provisional

application. The later filed application must be an application other

than for a design patent and must be copending with the provisional

application, which will be abandoned by operation of law no later than

12 months after filing. There must be a common inventor named in both

the prior provisional application and the later filed application. The

prior provisional application must be complete as set forth in proposed

Sec. 1.51(a)(2), or entitled to a filing date as set forth in proposed

Sec. 1.53(b)(2) and include the basic filing fee. Newly added

subparagraphs (a)(3) and (a)(4) parallel the existing requirements set

forth in subparagraphs (a)(1) and (a)(2) for other than a provisional

application.

Section 1.83 would have current paragraph (a) redesignated as

subparagraph (a)(1) and would clarify that this paragraph relates to

the content of the drawings in applications other than provisional

applications. A new subparagraph (a)(2) would set forth the required

content of the drawings filed in a provisional application. Since

claims would not be required in a provisional application, the drawings

filed in a provisional application would be required to show every

feature of the invention disclosed in the description, rather than

specified in the claims as in subparagraph (a)(1), where necessary to

understand the subject matter of the invention. In addition, the

reference to paragraph (a) in Sec. 1.83(c) would be replaced by a

reference to paragraph (a)(1).

Section 1.97(d) would have the reference to Sec. 1.17(i)(1)

replaced with a reference to Sec. 1.17(i) to be consistent with the

proposed change to Sec. 1.17. No substantive change is intended by this

proposal.

Section 1.101(a) would indicate that provisional applications filed

under Sec. 1.53(b)(2) would not be examined.

Section 1.102(d) would have the reference to Sec. 1.17(i)(2)

replaced with a reference to Sec. 1.17(i) to be consistent with the

proposed change to Sec. 1.17. No substantive change is intended by this

proposal.

Section 1.103(a) would have the reference to Sec. 1.17(i)(1)

replaced with a reference to Sec. 1.17(i) to be consistent with the

proposed changed to Sec. 1.17. No substantive change is intended by

this proposal.

Section 1.129 would be added to set forth the procedure for

implementing certain transitional provisions contained in S. 2467 and

H.R. 5110. These transitional provisions are not applicable to any

application which is filed on or after the effective date of 35 U.S.C.

154(a)(2) or to any design or reissue application. Paragraph (a) of

proposed Sec. 1.129 would provide for limited reexamination in certain

applications pending for 2 years or longer as of the effective date of

35 U.S.C. 154(a)(2), taking into account any reference to any earlier

application under 35 U.S.C. 120, 121 or 365(c). Under the proposed

procedure, an applicant would be entitled to have a first submission

entered and considered on the merits after final rejection if (1) the

submission is filed prior to or simultaneously with the filing of a

notice of appeal and prior to abandonment of the application and (2)

the $730.00 feet set forth in proposed Sec. 1.17(r) is paid within one

month of any written notification from the Office refusing entry of the

first submission and prior to abandonment of the application. If

applicant complies with the requirements of the proposed rule, the

finality of the previous rejection would be withdrawn and the

submission would be entered and considered on the merits to the extent

that the submission would have been considered if made prior to final

rejection. The subsequent Office action could be made final under

existing Office practice. If a subsequent final rejection is made in

the application, applicant would be entitled to have a second

submission entered and considered on the merits under the same

conditions set forth for consideration of the first submission.

Paragraph (a) would also define the term ``submission'' as including,

but not limited to, an information disclosure statement, an amendment

to the written description, claims or drawings and a new substantive

argument or new evidence in support of patentability. For example, the

submission may include an amendment, a new substantive argument and an

information disclosure statement. In view of the $730.00 fee required

in proposed Sec. 1.17(r), any information disclosure statement

previously refused consideration in the application because of

applicant's failure to provide the certification under Sec. 1.97(e) or

to pay the fee set forth in Sec. 1.17(p) or which is filed as part of

either the first or second submission would be treated as though it had

been filed within one of the time periods set forth in Sec. 1.97(b) and

would be considered without the petition and petition fee required in

Sec. 1.97(d), if it complies with the requirements of Sec. 1.98.

Paragraph (b) of proposed Sec. 1.129 would provide for examination

of more than one independent and distinct invention in certain

applications pending for 3 years or longer as of the effective date of

35 U.S.C. 154(a)(2), taking into account any reference to any earlier

application under 35 U.S.C. 120, 121 or 365(c). Under the proposed

procedure, a requirement for restriction or for the filing of

divisional applications would only be made or maintained in the

application after the effective date of 35 U.S.C. 154(a)(2) if: (1) The

requirement was made in the application or in an earlier application

relied on under 35 U.S.C. 120, 121 or 365(c) more than two months prior

to the effective date; (2) the examiner has not issued any Office

action in the application due to actions by the applicant; or (3) the

required fee for examination of each additional invention was not paid.

If the application contains claims to more than one independent and

distinct invention, and no requirement for restriction or for the

filing of divisional applications can be made or maintained as a result

of proposed Sec. 1.129(b), applicant will be notified and given a one

month time period to pay the $730.00 fee set forth in proposed

Sec. 1.17(s) for each independent and distinct invention claimed in the

application in excess of one. The fee set forth in proposed

Sec. 1.17(s) would not be subject to the 50 percent reduction for a

small entity. The additional inventions for which the required fee

under Sec. 1.17(s) has not been paid would be withdrawn from

consideration under Sec. 1.142(b). An applicant who desires examination

of an invention so withdrawn from consideration can file a divisional

application under 35 U.S.C. 121.

Section 1.139 would be added to set forth the procedures for

reviving a provisional application where the delay was unavoidable or

unintentional. Paragraph (a) would address the revival of a provisional

application where the delay was unavoidable and paragraph (b) would

address the revival of a provisional application where the delay was

unintentional.

Applicant may petition to have an abandoned provisional application

revived as a pending provisional application for a period of no longer

than twelve months from the filing date of the provisional application

where the delay was unavoidable or unintentional. It would be

permissible to file a petition for revival later than twelve months

from the filing date of the provisional application but only to revive

the application for the twelve-month period following filing. Thus,

even if the petition were granted to reestablish the pendency up to the

end of the twelve-month period, the provisional application would not

be considered pending after twelve months from its filing date. The

requirements for reviving an abandoned provisional application set

forth in this new rule parallel the existing requirements set forth in

Sec. 1.137.

Sections 1.177, 1.312(b), 1.313(a), 1.314 and 1.666 would have the

reference to Sec. 1.17(i)(1) replaced with a reference to Sec. 1.17(i)

to be consistent with the proposed change to Sec. 1.17. No substantive

change is intended by these proposals.

Section 1.701 would be added to provide for the extension of patent

term where the issuance of a patent on an application filed after the

implementation date of the 20-year patent term provisions of S. 2467

and H.R. 5110, other than for designs, was delayed due to certain

causes of prosecution delay. By virtue of 35 U.S.C. 173, the term of a

patent and patent term extension under proposed 35 U.S.C. 154 do not

apply to patents for designs.

The provisions for patent term extension under proposed Sec. 1.701

are separate from and in addition to the patent term extension

provisions of 35 U.S.C. 156. The patent term extension provisions of S.

2467 and H.R. 5110 are designed to compensate the patent owner for

delays in issuing a patent, whereas the patent term extension

provisions of 35 U.S.C. 156 are designed to restore term lost to

premarket regulatory review after the grant of a patent. In order to

prevent a term extension under proposed section 1.701 from precluding a

term extension under 35 U.S.C. 156, S. 2467 and H.R. 5110 amend 35

U.S.C. 156(a)(2) to provide that the term has never been extended under

35 U.S.C. 156(e)(1).

Under proposed 35 U.S.C. 154(b)(1), if the issuance of a patent is

delayed due to proceedings under 35 U.S.C. 135(a) and/or the

application is placed under a secrecy order under 35 U.S.C. 181, the

term of a patent could be extended for the period of delay up to five

years. Proceedings under 35 U.S.C. 135(a) include any appeal to federal

court. Under proposed 35 U.S.C. 154(b)(2), if the issuance of a patent

is delayed due to appellate review by the Board of Patent Appeals and

Interferences or by a federal court and the patent was issued pursuant

to a decision reversing an adverse determination of patentability and

if the patent is not subject to a terminal disclaimer due to the

issuance of another patent claiming subject matter that is not

patentably distinct from that under appellate review, the term of the

patent could be extended for the period of delay up to five years.

Pursuant to 35 U.S.C. 154(b)(4), as contained in S. 2467 and H.R. 5110,

the term of a patent could only be extended under 35 U.S.C. 154(b)(1)

and (b)(2) for a maximum of five years regardless of whether there were

delays due to more than one of the reasons covered under 35 U.S.C.

154(b) (1) and (2). Proposed subparagraph (c)(1) of Sec. 1.701 sets

forth the method for calculating the period of delay where the delay

was a result of proceedings under 35 U.S.C. 135(a). Proposed

subparagraph (c)(2) sets forth the method for calculating the period of

delay where the delay was a result of the application being placed

under a secrecy order. Proposed subparagraph (c)(3) sets forth the

method of calculating the period of delay where the delay was a result

of appellate review. Pursuant to proposed Sec. 1.701(d)(1), the period

of delay set forth in subparagraph (c)(3) shall be reduced by any time

calculated under subparagraph (c)(3) before the expiration of three

years from the filing date of the first national patent application

presented for examination. The filing date for the purpose of

Sec. 1.701(d)(1) would be the earliest effective U.S. filing date but

not including the filing date of a provisional application or the

international filing date of a PCT application. For PCT applications

entering the national stage, the filing date for the purpose of

Sec. 1.701(d)(1) would be the date on which applicant has complied with

the requirements of Sec. 1.494(b), or Sec. 1.495(b) if applicable.

Pursuant to proposed Sec. 1.701(d)(2), the period of delay set forth in

subparagraph (c)(3) shall also be reduced by any time, as determined by

the Commission, during which the applicant did not act with due

diligence. The standard for determining due diligence is whether the

applicant exhibited that degree of timeliness as may reasonably be

expected from, and which is ordinarily exercised by, a person during

the pendency period of the application. Examples of what may constitute

lack of due diligence for this purpose include requests for extensions

of time to respond to Office communications, submission of a response

which is not fully responsive to an Office communication, and filing of

informal applications. Applicants need not file a request for the

extension of patent term under proposed Sec. 1.701. The extension of

patent term is automatic by operation of law. It is currently

anticipated that applicant would be advised as to the length of any

patent term extension at the time of receiving the Notice of Allowance

and Issue Fee Due. Review of any determination as to the length of

patent term extension would be by way of petition under Sec. 1.181.

Section 3.21 would eliminate the use of serial number and filing

date as an identifier for national patent applications in assignment

documents. This proposal would eliminate any confusion as to whether an

application identified by its serial number and filing date in an

assignment document is an application filed under proposed

Sec. 1.53(b)(1) or Sec. 1.62 or a design application or a provisional

application since there is a different series code assigned to each of

these types of applications. If an assignment was executed after the

filing of the national application, the assignment would be required to

identify the application by the application number, consisting of the

series code and serial number, e.g., 07/123,456 (for applications filed

under proposed Sec. 1.53(b)(1) or 1.62), 29/123,456 (for design

applications) or 59/123,456 (for provisional applications filed under

proposed Sec. 1.53 (b)(2)). The series code would be required since it

would clearly identify the application to which the assignment document

is directed.

Section 3.21 would be further clarified to indicate that existing

requirements relating to assignments executed before the filing of the

application refer to applications other than provisional applications.

Section 3.21 would be further amended to specify the requirements for

identifying a provisional application in an assignment executed before

the filing of the provisional application. The assignment would be

required to identify the provisional application by name of each

inventor and the title of the invention. The date of the execution of

the provisional application would not be required since a provisional

application need not be executed by the inventors.

Section 3.81 would have the reference to Sec. 1.17(i)(1) replaced

with a reference to Sec. 1.17(i) to be consistent with the proposed

change to Sec. 1.17. No substantive change is intended by this

proposal.

Other Considerations

The proposed rule changes are in conformity with the requirements

of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive

Order 12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et

seq. This proposed rule has been determined to be not significant for

the purposes of E.O. 12866.

The Assistant General Counsel for Legislation and Regulation of the

Department of Commerce has certified to the Chief Counsel for Advocacy,

Small Business Administration, that the proposed rule changes will not

have a significant economic impact on a substantial number of small

entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal

impact of these changes is to provide a procedure for domestic

applicants to quickly and inexpensively file a provisional application.

The filing date of the provisional application will not be used to

measure the term of a patent granted on an application which claims the

earlier filing date of the provisional application.

The Patent and Trademark Office has also determined that this

notice has no Federalism implications affecting the relationship

between the National Government and the States as outlined in E.O.

12612.

These proposed rules contain collections of information subject to

the requirements of the Paperwork Reduction Act (Act). The provisional

application has been approved by the Office of Management and Budget

under control numbers 0651-0031 and 0651-0032. The cover sheet is

necessary to expedite the processing of a provisional application and

improve quality. Public reporting burden for the collection of

information on the cover sheet is estimated to average 12 minutes per

response, including the time for reviewing instructions, searching

existing data sources, gathering and maintaining the data needed, and

completing and reviewing the collection of information. Send comments

regarding this burden estimate or any other aspect of this collection

of information, including suggestions for reducing the burden to the

Office of Assistance Quality and Enhancement Division, Patent and

Trademark Office Washington, DC 20231, and to the Office of Information

and Regulatory Affairs, Office of Management and Budget, Washington, DC

20503.

Notice is hereby given that pursuant to the authority granted to

the Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent

and Trademark Office proposes to amend Title 37 of the Code of Federal

Regulations as set forth below.

List of Subjects

37 CFR Part 1

Administrative practice and procedure, Courts, Freedom of

Information, Inventions and patents, Reporting and record keeping

requirements, Small businesses.

37 CFR Part 3

Administrative practice and procedure, Inventions and patents,

Reporting and record keeping requirements.

For the reasons set forth in the preamble, 37 CFR parts 1 and 3 are

proposed to be amended as follows, with removals (other than Sec. 1.60

which is proposed to be removed and reserved) indicated by brackets

([]) and additions by arrows (>(i) The filing of all provisional applications and any

communications relating thereto should be additionally marked ``Box

Provisional Patent Application.''(1)(2) A provisional application as used in this chapter means a U.S.

national application for patent filed in the Office under 35 U.S.C.

111(b).provisional,applicationsexcept provisional applications,except provisional applications,except provisional applications,,

except provisional applicationsBasic fee, except

provisional applications,(k) Basic fee for filing each provisional application:

By a small entity (Sec. 1.9(f))................................ 75.00

By other than a small entity................................... 150.00

(l) Surcharge for filing the basic filing fee or cover sheet

(Sec. 1.51(a)(2)(i)) on a date later than the filing date of the

provisional application:

By a small entity (Sec. 1.9(f))................................ 25.00

By other than a small entity................................... 50.00, except in

provisional applications, except in provisional

applicationsSec. 1.102--to make application special.(q) For filing a petition to the Commissioner under a section

listed below which refers to this paragraph:

By a small entity (Sec. 1.9(f)).............................. 25.00

By other than a small entity................................. 50.00

Sec. 1.48--for correction of inventorship in a provisional

application.

Sec. 1.53--to accord a provisional application a filing date or

to convert an application filed under Sec. 1.53(b)(1) to a

provisional application.

(r) For filing a submission after final rejection under Sec.

1.129(a).................................................... 730.00

(s) For each additional invention requested to be examined

under Sec. 1.129(b)......................................... 730.00[Reserved]Status as a small entity in

one application or patent does not affect any other application or

patent, including applications or patents which are directly or

indirectly dependent upon the application or patent in which the status

has been established. Applications filed as continuations, divisions or

continuations-in-part of a parent application must include a reference

to a verified statement in the parent application or include a copy of

the verified statement filed in the parent application if status as a

small entity is still proper and desired.other than

a provisional application under Sec. 1.53(b)(2),If

multiple inventors are named in a provisional application, each named

inventor must have made a contribution, individually or jointly, to the

subject matter disclosed in the provisional application and the

provisional application will be considered to be a joint application

under 35 U.S.C. 116., other than a provisional application,,other

than a provisional application,,other than a provisional application(d) If the name or names of an inventor or inventors were omitted

in a provisional application for patent filed under Sec. 1.53(b)(2)

through error without any deceptive intention on the part of the actual

inventor or inventors, the provisional application may be amended to

add the name or names of the actual inventor or inventors. Such

amendment must be accompanied by:

(1) A petition including a statement that the error occurred

without deceptive intention on the part of the actual inventor or

inventors, which statement must be a verified statement if made by a

person not registered to practice before the Patent and Trademark

Office; and

(2) The fee set forth in Sec. 1.17(q)(1)filed under Sec. 1.53(b)(1)(i);(ii);(iii)1.85; and (iv)(2)in national applications other than provisional

applications.No information disclosure

statement may be filed in a provisional application filed under

Sec. 1.53(b)(2).Applicationan application(1), except for a provisional application,,or continuation-in-partunder(2) The filing date of a provisional application is the date on

which: A specification as prescribed by 35 U.S.C. 112, first paragraph;

and any drawing required by Sec. 1.81(a), are filed in the Patent and

Trademark Office in the name of the actual inventor or inventors as

required by Sec. 1.41. No amendment, other than to make the provisional

application comply with all applicable regulations, may be made to the

provisional application after the filing date of the provisional

application. If all the names of the actual inventor or inventors are

not supplied when the specification and any required drawing are filed,

the provisional application will not be given a filing date earlier

than the date upon which the names are supplied unless a petition with

the fee set forth in Sec. 1.17(q) is filed which sets forth the reasons

the delay in supplying the names should be excused.

(i) A provisional application must also include a cover sheet

identifying the application as a provisional application. Otherwise,

the application will be treated as an application filed under

Sec. 1.53(b)(1).

(ii) An application for patent filed under Sec. 1.53(b)(1) may be

treated as a provisional application and be accorded the original

filing date provided that a petition requesting the conversion, with

the fee set forth in Sec. 1.17(q), is filed prior to the earlier of

either the payment of the issue fee or the expiration of 12 months

after the filing date of the provisional application. The grant of any

such petition will not entitle applicant to a refund of the fees which

are properly paid in the application filed under Sec. 1.53(b)(1).

(iii) A provisional application shall not be entitled to the right

of priority under Sec. 1.55 or 35 U.S.C. 119 or 365(a) or to the

benefit of an earlier filing date under Sec. 1.78 or 35 U.S.C. 120, 121

or 365(c) of any other application. No claim for priority under

Sec. 1.78(a)(3) may be made in a design application based on a

provisional application. No request under Sec. 1.293 for a statutory

invention registration may be filed in a provisional application. The

requirements of Sec. 1.821(e) regarding sequence listings in computer

readable form are not applicable to a provisional application.(1) or (b)(2)Any request for review of a refusal to accord

an application a filing date must be by way of a petition accompanied

by the fee set forth in Sec. 1.17(i), if the application was filed

under Sec. 1.53(b)(1), or by the fee set forth in Sec. 1.17(q), if the

application was filed under Sec. 1.53(b)(2).(1)(1)not(2) If a provisional application which has been accorded a filing

date pursuant to paragraph (b)(2) of this section does not include the

appropriate filing fee or the cover sheet required by Sec. 1.51(a)(2),

applicant will be so notified if a correspondence address has been

provided and given a period of time within which to file the fee, cover

sheet and to pay the surcharge as set forth in Sec. 1.16(l) in order to

prevent abandonment of the application. A copy of the ``Notice to File

Missing Parts'' form mailed to applicant should accompany any response

thereto submitted to the Office. If the required filing fee is not

timely paid, the application will be disposed of. No copies will be

provided or certified by the Office of an application which has been

disposed of or in which the required basic filing fee has not been

paid. The notification pursuant to this paragraph may be made

simultaneously with any notification pursuant to paragraph (c) of this

section. If no correspondence address is included in the application,

applicant has two months from the filing date to file the basic filing

fee, cover sheet and to pay the surcharge as set forth in Sec. 1.16(l)

in order to prevent abandonment of the application.(1)filed under paragraph (b)(1)

of this section(2) A provisional application for a patent filed under paragraph

(b)(2) of this section will not be placed upon the files for

examination and will become abandoned no later than twelve months after

its filing date pursuant to 35 U.S.C. 111(b)(1).in an application other than a provisional

application(a)-(d)(b)(d)[Reserved] as

defined by Sec. 1.51(a)(1) (not a prior complete provisional

application as defined by Sec. 1.51(a)(2)), andunder this sectionapplication number(1)(ii)(1)other than a provisional applicationfiled under Sec. 1.53(b)(1) or Sec. 1.62 (not a

provisional application (see paragraph (a)(3) of this section))(1) or

Sec. 1.62other than a provisional

application(3) An application other than for a design patent may claim an

invention disclosed in a prior filed copending provisional application

filed under Sec. 1.53(b)(2). A provisional application can be pending

for no more than twelve months. In order for an application to claim

the benefit of a prior filed copending provisional application, the

prior provisional application must name as an inventor at least one

inventor named in the later filed application and disclose the named

inventor's invention claimed in at least one claim of the later filed

application in the manner provided by the first paragraph of 35 U.S.C.

112. In addition, the prior provisional application must be

(i) Complete as set forth in Sec. 1.51(a)(2); or

(ii) Entitled to a filing date as set forth in Sec. 1.53(b)(2) and

include the basic filing fee set forth in Sec. 1.16(k).

(4) Any application claiming the benefit of a prior filed copending

provisional application must contain or be amended to contain in the

first sentence of the specification following the title a reference to

such prior provisional application, identifying it as a provisional

application, and including the provisional application number

(consisting of series code and serial number) and indicating the

relationship of the applications.(1)in an application other than a provisional

application(2) The drawing in a provisional application filed under

Sec. 1.53(b)(2) must show every feature of the invention disclosed in

the description where necessary to understand the subject matter of

that invention. However, conventional features disclosed in the

description, where their detailed illustration is not essential for a

proper understanding of the invention, should be illustrated in the

drawing in the form of a graphical drawing symbol or a labeled

representation (e.g. a labeled rectangular box).(1), except for provisional applications

filed under Sec. 1.53(b)(2) which are not examined,Transitional Provisions

Sec. 1.129 Transitional procedures for limited examination after final

rejection and restriction practice.

(a) An applicant in an application, other than for reissue or a

design patent, that has been pending for at least two years as of the

effective date of 35 U.S.C. 154(a)(2), taking into account any

reference made in such application to any earlier filed application

under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first

submission entered and considered on the merits after final rejection

under the following circumstances: The Office will consider such a

submission, to the extent that it would have been entered and

considered if made prior to final rejection, if the first submission is

filed prior to or simultaneously with the filing of a notice of appeal

and prior to abandonment of the application and the fee set forth in

Sec. 1.17(r) is paid within one month of any written notification from

the Office refusing entry of the first submission and prior to

abandonment of the application. If a subsequent final rejection is made

in the application, applicant is entitled to have a second submission

entered and considered on the merits after the subsequent final

rejection under the following circumstances: The Office will consider

such a submission, to the extent that it would have been entered and

considered if made prior to final rejection, if the second submission

is filed prior to or simultaneously with the filing of a notice of

appeal of the subsequent final rejection and prior to abandonment of

the application and a second fee set forth in Sec. 1.17(r) is paid

within one month of any written notification from the Office refusing

entry of the second submission and prior to abandonment of the

application. Any submission filed after a final rejection made in an

application subsequent to the fee set forth in Sec. 1.17(r) having been

twice paid will be treated as set forth in Sec. 1.116. A submission as

used in this paragraph includes, but is not limited to, an information

disclosure statement, an amendment to the written description, claims

or drawings and a new substantive argument or new evidence in support

of patentability.

(b)(1) In an application, other than for reissue or a design

patent, that has been pending for at least three years as of the

effective date of 35 U.S.C. 154(a)(2), taking into account any

reference made in the application to any earlier filed application

under 35 U.S.C. 120, 121 and 365(c), no requirement for restriction or

for the filing of divisional applications shall be made or maintained

in the application after the effective date, except where:

(i) The requirement was first made in the application or any

earlier filed application under 35 U.S.C. 120, 121 and 365(c) more than

two months prior to the effective date;

(ii) The examiner has not issued any Office action in the

application due to actions by the applicant; or

(iii) The required fee for examination of each additional invention

was not paid.

(2) If the application contains more than one independent and

distinct invention and a requirement for restriction or for the filing

of divisional applications cannot be made or is withdrawn pursuant to

this paragraph, applicant will be so notified and given a time period

of one month from the notice to pay the fee set forth in Sec. 1.17(s)

for each independent and distinct invention claimed in the application

in excess of one. If applicant does not pay the required fee for each

additional invention in a timely manner, only the first claimed

invention and those additional inventions for which the fee has been

paid will be searched and examined. The additional inventions for which

the required fee has not been paid will be withdrawn from consideration

under Sec. 1.142(b). An applicant who desires examination of an

invention so withdrawn from consideration can file a divisional

application under 35 U.S.C. 121.

(c) The provisions of this section shall not be applicable to any

application filed on or after the effective date of 35 U.S.C.

154(a)(2).Sec. 1.139 Revival of provisional application.

(a) A provisional application which has been accorded a filing date

and abandoned for failure to timely respond to an Office requirement

may be revived so as to be pending for a period of no longer than

twelve months from its filing date if it is shown to the satisfaction

of the Commissioner that the delay was unavoidable. Under no

circumstances will the provisional application be pending after twelve

months from its filing date. A petition to revive an abandoned

provisional application must be promptly filed after the applicant is

notified of, or otherwise becomes aware of, the abandonment, and must

be accompanied by:

(1) The required response unless it has been previously filed;

(2) The petition fee as set forth in Sec. 1.17(l); and

(3) A showing that the delay was unavoidable. The showing must be a

verified showing if made by a person not registered to practice before

the Patent and Trademark Office.

(b) A provisional application which has been accorded a filing date

and abandoned for failure to timely respond to an Office requirement

may be revived so as to be pending for a period of no longer than

twelve months from its filing date if the delay was unintentional.

Under no circumstances will the provisional application be pending

after twelve months from its filing date. A petition to revive an

abandoned provisional application must be:

(1) Accompanied by the required response unless it has been

previously filed;

(2) Accompanied by the petition fee as set forth in Sec. 1.17(m);

(3) Accompanied by a statement that the delay was unintentional.

The statement must be a verified statement if made by a person not

registered to practice before the Patent and Trademark Office. The

Commissioner may require additional information where there is a

question whether the delay was unintentional; and

(4) Filed either:

(i) Within one year of the date on which the provisional

application became abandoned; or

(ii) Within three months of the date of the first decision on a

petition to revive under paragraph (a) of this section which was filed

within one year of the date on which the provisional application became

abandoned.

(c) Any request for reconsideration or review of a decision

refusing to revive a provisional application upon petition filed

pursuant to paragraph (a) or (b) of this section, to be considered

timely, must be filed within two months of the decision refusing to

revive or within such time as set in the decision.

(d) The time periods set forth in this section cannot be extended,

except that the three-month period set forth in paragraph (b)(4)(ii) of

this section and the time period set forth in paragraph (c) of this

section may be extended under the provisions of Sec. 1.136.Sec. 1.701 Extension of patent term due to prosecution delay.

(a) A patent, other than for designs, issued on an application

filed on or after [the implementation date] is entitled to extension of

the patent term if the issuance of the patent was delayed due to:

(1) Proceedings under 35 U.S.C. 135(a), and/or

(2) The application being placed under a secrecy order under 35

U.S.C. 181, and/or

(3) Appellate review by the Board of Patent Appeals and

Interferences or by a federal court under 35 U.S.C. 141 or 145, if the

patent was issued pursuant to a decision reversing an adverse

determination of patentability and if the patent is not subject to a

terminal disclaimer due to the issuance of another patent claiming

subject matter that is not patentably distinct from that under

appellate review.

(b) The term of a patent entitled to extension under paragraph (a)

of this section shall be extended for the sum of the periods of delay

calculated under paragraphs (c)(1), (c)(2) and (c)(3) of this section,

to the extent that these periods are not overlapping, up to a maximum

of five years. The extension will run from the original expiration date

of the patent unless an earlier expiration date is set by terminal

disclaimer (Sec. 1.321).

(c)(1) The period of delay under paragraph (a)(1) of this section

for an application is the sum of the following periods, to the extent

that the periods are not overlapping:

(i) With respect to each interference, if any, in which the

application was involved, the number of days in the period beginning on

the date the interference was declared or redeclared to involve the

application in the interference and ending on the date that the

interference was terminated with respect to the application; and

(ii) The number of days, if any, in the period beginning on the

date prosecution in the application is suspended by the Patent and

Trademark Office due to interference proceedings under 35 U.S.C. 135(a)

not involving the application and ending on the date of the next Office

communication reopening prosecution.

(2) The period of delay under paragraph (a)(2) of this section for

an application is the sum of the following periods, to the extent that

the periods are not overlapping:

(i) The number of days, if any, the application is maintained in a

sealed condition under 35 U.S.C. 181;

(ii) The number of days, if any, in the period beginning on the

date of mailing of an examiner's answer under Sec. 1.193 in the

application under secrecy order and ending on the date the secrecy

order and any renewal thereof is removed;

(iii) The number of days, if any, in the period beginning on the

date applicant is notified that an interference would be declared but

for the secrecy order and ending on the date the secrecy order and any

renewal thereof is removed; and

(iv) The number of days, if any, in the period beginning on the

date of notification under Sec. 5.3(c) and ending on the date of

mailing of the notice of allowance under Sec. 1.311.

(3) The period of delay under paragraph (a)(3) of this section is

the sum of the number of days, if any, in the period beginning on the

date on which an appeal to the Board of Patent Appeals and

Interferences was filed under 35 U.S.C. 134 and ending on the date of a

final decision in favor of the applicant by the Board of Patent Appeals

and Interferences or by a federal court in an appeal under 35 U.S.C.

141 or a civil action under 35 U.S.C. 145.

(d) The period of delay set forth in paragraph (c)(3) of this

section shall be reduced by:

(1) Any time calculated pursuant to paragraph (c)(3) of this

section before the expiration of three years from the filing date of

the first national application for patent presented for examination,

and

(2) Any time, as determined by the Commissioner, during which the

applicant for patent did not act with due diligence. In determining the

due diligence of an applicant, the Commissioner will examine the facts

and circumstances of the applicant's actions during the pendency period

of the application to determine whether the applicant exhibited that

degree of timeliness as may reasonably be expected from, and which is

ordinarily exercised by, a person during the pendency period of an

application.of a patent application filed under Sec. 1.53(b)(1) or

Sec. 1.62If an

assignment of a provisional application is executed before the

provisional application is filed, it must identify the provisional

application by name of each inventor and title of the invention so that

there can be no mistake as to the provisional application intended.<

36. Section 3.81 is proposed to be amended by revising paragraph

(b) to read as follows:

Sec. 3.81 Issue of patent to assignee.

* * * * *

(b) If the assignment is submitted for recording after the date of

payment of the issue fee, but prior to issuance of the patent, the

assignee may petition that the patent issue to the assignee. Any such

petition must be accompanied by the fee set forth in Sec. 1.17(i) [(1)]

of this chapter.

Dated: December 5, 1994.

Michael K. Kirk,

Deputy Assistant Secretary of Commerce and Deputy Commissioner of

Patents and Trademarks.

[FR Doc. 94-30312 Filed 12-9-94; 8:45 am]

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