Changes to Implement 18-Month Publication of Patent Applications

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3 and 5

[Docket No. 950620162-5162-01]

RIN 0651-AA75

Changes to Implement 18-Month Publication of Patent 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 primarily to implement changes

related to the 18-month publication of patent applications in title 35,

United States Code, contained in the Patent Application Publication Act

of 1995 (H.R. 1733). Among the changes that are contained in H.R. 1733

would be the publication of patent applications after 18 months from

the earliest filing date for which a benefit is sought, and the

addition of provisional rights to the rights provided in a patent.

These changes would apply to utility and plant applications other than

provisional applications, but not to design applications.

DATES: Written comments must be submitted on or before September 19,

1995. A public hearing will be held on Tuesday, September 19, 1995, at

9:30 a.m. Those wishing to present oral testimony must request an

opportunity to do so no later than September 14, 1995. Written comments

and transcripts of the hearings will be available for public inspection

on or about October 2, 1995, and will be available on or about October

2, 1995, through anonymous file transfer protocol (ftp) via the

Internet (address: ftp.uspto.gov).

ADDRESSES: Address written comments and requests to present oral

testimony to the Commissioner of Patents and Trademarks, Washington,

D.C. 20231, Attention: Stephen G. Kunin, Deputy Assistant Commissioner

for Patent Policy and Projects. In addition, written comments may also

be sent by facsimile transmission to (703) 305-8825, with a

confirmation copy mailed to the above address, or by electronic mail

messages over the Internet to [email protected]. The public hearing

will be held at the Holiday Inn--National Airport, 15th Street and

Jefferson Davis Highway, Arlington, Virginia. The written comments and

transcripts of the hearings will be available in Room 520 of Crystal

Park One, 2011 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT: Stephen G. Kunin by telephone at (703)

305-8850, by facsimile at (703) 305-8825, by electronic mail at

[email protected], or Jeffrey V. Nase by telephone at (703) 305-9285, or

by mail marked to the attention of Stephen G. Kunin, addressed to the

Commissioner of Patents and Trademarks, Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION: This proposed rule change is designed

primarily to implement the changes in practice related to the

publication of patent applications provided for in H.R. 1733. H.R. 1733

was introduced in the House of Representatives on May 25, 1995. The

amendments to title 35 relating to 18-month publication, if enacted as

proposed, would be effective on January 1, 1996. A copy of this

legislation may be obtained from the individuals identified in the For

Further Information Contact section of the notice.

Section 122 of title 35, United States Code, currently provides

that patent applications are maintained in confidence until a patent is

granted. H.R. 1733, if enacted, would amend 35 U.S.C. 122 to provide

that each application for patent, except for design applications filed

under 35 U.S.C. 171 and provisional applications filed under 35 U.S.C.

111(b), shall be published ``as soon as possible after the expiration

of a period of 18 months from the earliest filing date for which a

benefit is sought,'' but provides that applications that are no longer

pending and applications that are subject to a secrecy order under 35

U.S.C. 181 shall not be published.

H.R. 1733 includes a provision (35 U.S.C. 122(b)(2)) that, upon

request, an application of an independent inventor who has been

accorded status under 35 U.S.C. 41(h) will not be published until three

months after an Office action under 35 U.S.C. 132; however,

applications filed under 35 U.S.C. 363 and applications claiming the

benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 365(a)

or 365(c) are not eligible for such a request. In addition, H.R. 1733

provides that an applicant making such a request must certify that the

invention disclosed in the application was not or will not be the

subject of an application filed in a foreign country. H.R. 1733

provides that the Commissioner may establish appropriate procedures and

fees for such a request.

H.R. 1733, if enacted, would further amend 35 U.S.C. 119 to provide

that the claim and certified copy of the original foreign application

must be filed in the Office at such time during the pendency of the

application as required by the Commissioner, and that the Commissioner

may consider the failure of the applicant to file a timely claim for

priority as a waiver of any such claim. H.R. 1733, if enacted, would

likewise amend 35 U.S.C. 120 to provide that the Commissioner may

determine the time period during the pendency of the application within

which an amendment containing the specific reference to the earlier

filed application shall be submitted, and that the Commissioner may

consider the failure of the applicant to file a timely claim for

priority as a waiver of any such claim.

H.R. 1733, if enacted, would further amend 35 U.S.C. 102(e) to

include applications published pursuant to 35 U.S.C. 122(b) within its

scope. H.R. 1733, if enacted, would provide that the costs of early

publication shall be recovered by adjusting the filing, issue and

maintenance fees, by charging a separate publication fee, or by any

combination of these methods. H.R. 1733, if enacted, would also provide

that, upon issuance of the application as a patent, the patent shall,

where the invention claimed in the patent is identical to the invention

claimed in the published application, include provisional rights during

the period from publication until issuance of the patent.

H.R. 1733 also includes amendments relating to 20-year patent term

and provisional applications. Specifically, H.R. 1733 includes an

amendment to 35 U.S.C. 119(e) to provide that if the day that is twelve

months after the filing date of a provisional application falls on a

Saturday, Sunday, or Federal holiday within the District of Columbia,

the period of pendency of the provisional application shall be extended

to the next succeeding secular or business day. H.R. 1733 also includes

an amendment to 35 U.S.C. 154(b) to: (1) Include an unusual

administrative delay by the Office in issuing the patent as a basis for

patent term extension; (2) provide that the total duration of all

extensions under 35 U.S.C. 154(b) shall not exceed ten years, as

opposed to the five year limit currently provided in Public Law 103-

465; (3) provide that no patent that has issued before the expiration

of three years after the filing date of the application or entry of the

application into the national stage under 35 U.S.C. 371 shall be

extended under 35 U.S.C. 154(b); (4) provide that no patent whose term

has been disclaimed beyond a specified date shall be extended under 35

U.S.C. 154(b) beyond the expiration date specified in the terminal

disclaimer, and (5) provide that any

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period of extension under 35 U.S.C. 154(b) shall be reduced by the

period during which the applicant for patent did not engage in

reasonable efforts to conclude processing or examination of the

application, rather than the ``due diligence'' provision applicable to

extensions under 35 U.S.C. 154(b)(2) in Public Law 103-465.

The current planning approach to the implementation of early

publication is to create an electronic data base which captures the

technical content, i.e., the specification, abstract, claims and

drawings, of the application-as-filed. A data capturing operation will

enable the creation of a data base containing image and text equivalent

of the technical contents of the application-as-filed. Application

materials will be digital image and/or optical character recognition

(OCR) scanned by the Office for entry into this electronic data base.

This electronic data base will be used to provide a source for (a)

meeting publication requirements for the applications, (b) providing a

basis for electronic searching and retrieval of applications, and (c)

providing a basis for producing copies of the technical contents of the

application-as-filed. The publication of an application will take the

form of publishing information necessary to identify the applicant and

the technical subject matter of the application, i.e., a Gazette Entry,

in a separate Gazette of Patent Application Notices, with a one-page

printed publication, i.e., a Patent Application Notice or PAN,

containing similar information for placement in the paper search files.

Published applications will be assigned a sequential Patent Application

Notice (PAN) number in the manner that issued patents are assigned a

sequential patent number. In addition, a document including the Patent

Application Notice and the technical contents of the application-as-

filed, designated as the Technical Contents Publication, will be

available to the public upon publication.

The digital images of the technical contents of the application-as-

filed, i.e., the Technical Contents Publication, will be available for

public review. Paper copies of the Patent Application Notice and

Technical Contents Publication will also be available for purchase

similar to the way paper copies of patents are currently available for

purchase. When budgetary and process considerations permit, text

searching of the Patent Application Notice and Technical Contents

Publication will be implemented.

The information provided to Patent and Trademark Depository

Libraries will be expanded to include weekly issues of the Gazette of

Patent Application Notices (provided by the Government Printing

Office), and a CD-ROM collection of facsimile images of the Patent

Application Notices and Technical Contents Publications. The public

would also be able to place subscription orders to receive weekly paper

copies of the Patent Application Notices and Technical Contents

Publications published in specific classes and subclasses similar to

the way such orders are currently placed for issued patents, as well as

subscription orders to receive the CD-ROM collection of facsimile

images of the Patent Application Notices and Technical Contents

Publications.

H.R. 1733, as proposed, does not specifically exclude applications

that are national security classified from those applications to be

published. Executive Order 12356 and a number of statutes, e.g., 42

U.S.C. 2011 et seq. (the Atomic Energy Act of 1954), 15 U.S.C. 1155

(provides that the Secretary of Commerce shall respect and preserve the

security classification of inventions in the possession or control of

the Department of Commerce), and 18 U.S.C. 798 (provides criminal

sanctions for the disclosure of classified information) preclude the

publication of a national security classified application. Further, the

publication requirement in H.R. 1733, as proposed, provides some

latitude to the Commissioner to publish applications later than 18

months from the earliest filing date for which a benefit is sought.

Therefore, the publication of a national security classified

application will be delayed until such application is either

declassified, which will permit publication of the application, or

subjected to a secrecy order pursuant to 35 U.S.C. 181, which will

exclude the application from publication by the express terms of H.R.

1733, as proposed. In view of national security considerations, and the

current statutory prohibitions on the disclosure of classified

information, it is appropriate to specifically exclude those

applications that are national security classified from publication

under the provisions of H.R. 1733.

While H.R. 1733, if enacted, would not directly affect design

applications, this notice of proposed rulemaking includes a proposed

amendment to Sec. 1.154 such that the arrangement for a design

application will be consistent with the arrangements for a utility

(Sec. 1.77) or plant (Sec. 1.163) application, as well as a proposed

amendment to Sec. 1.5 to provide that a paper concerning a provisional

application must identify the provisional application as such and by

application number. In addition, while this proposed rule change is

designed primarily to implement the changes in practice related to the

publication of patent applications provided for in H.R. 1733, a number

of proposed rule changes set forth in this notice of proposed

rulemaking would be desirable even in the absence of an 18-month

publication system. Specifically, this proposed rule change is also

designed to: (1) clarify which applications claiming the benefit of

prior applications or prior applications for which a benefit is claimed

in a later application will be preserved in confidence; (2) amend the

rules pertaining to the format and standards for application papers and

drawings to improve the standardization of patent applications; (3)

broaden the application of Sec. 1.131 to instances in which inventions

of a pending application or patent under reexamination and a patent

held by a single party are not identical, but not patentably distinct;

(4) broaden the application of Secs. 1.78(c) and (d) to patents under

reexamination, (5) clarify the practice for the delivery or mailing of

patents; (6) provide for the treatment of national security classified

applications; (7) expedite the entry of international applications into

the national stage; and (8) amend a number of rules for consistency and

clarity. Since these proposed rule changes may be adopted as final

rules even in the absence of an 18-month publication system, interested

persons are advised to comment on any proposed rule change, regardless

of whether H.R. 1733 is enacted.

If H.R. 1733 is amended during the legislative process, the final

rules will comply with this legislation as enacted. If H.R. 1733 is not

enacted, the proposed rules that would implement publication of patent

applications would be withdrawn.

In a Notice of Public Hearing and Request for Comments on 18-Month

Publication of Patent Applications (18-Month Publication Notice)

published in the Federal Register at 59 FR 63966 (December 12, 1994)

and in the Patent and Trademark Office Official Gazette at 1170 Off.

Gaz. Pat Office 390-94 (January 3, 1995), the Office requested public

comment on the procedures the Office should adopt if an 18-month

publication system was enacted. The 18-Month Publication Notice set

forth the Office's planning approach for the implementation of 18-month

(pre-grant) publication of patent applications, and specifically

presented fourteen (14) questions on which comment was invited. An oral

hearing was conducted on February 15, 1995.

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Sixty-five (65) written comments, as well as two (2) Law Review

articles concerning the pre-grant publication of pending patent

applications, were submitted. Of the sixty-five (65) comments, forty

(40) submitted comments directed to at least one of the questions

presented in the 18-Month Publication Notice. Sixteen (16) persons

testified at the public hearing conducted on February 15, 1995.

Response to Comments on the 18-Month Publication Notice

The following questions were presented in the 18-Month Publication

Notice. Each question is followed by a summary of the comments

submitted in response to the question, and the proposed disposition of

the issue presented in the question.

1. Should the PTO require that all official application-related

materials be delivered to a central location? Specifically, what

problems would a requirement that all official application-related

materials be delivered to a central location cause?

Summary: A slight majority of the comments opposed a requirement

that all official application-related materials be delivered to a

central location.

Response: As the Office currently considers the delivery of all

official application-related materials to a central location to be

unnecessary to the currently planned approach to implementation of 18-

month publication, no change to the rules of practice to require that

all official application-related materials be delivered to a central

location will be proposed.

2. Should the PTO adopt a standard application format? If so, what

portions of the application papers should the PTO require be submitted

in a standard size and/or format, and what sanction (e.g., surcharge)

should be established for the failure to comply with these

requirements?

Summary: A majority of the comments favored the implementation of a

standard application format, so long as an applicant was given a time

period in which to comply with this format, i.e., failure to comply

with the standard application format did not deprive the application of

a filing date. In addition, a number of comments indicated that any

additional requirements should not be inconsistent with European Patent

Office (EPO) or Patent Cooperation Treaty (PCT) requirements, or in

excess of those requirements necessary for the implementation of 18-

month publication.

Response: The Office is proposing to change the rules of practice

to institute only those additional standardizations which are

consistent with the requirements set forth in PCT Rule 11, and are

considered necessary for the digital image and OCR scanning of

application materials into an electronic data base. Those additional

standardizations are that: (1) applications be submitted on flexible,

strong, smooth, non-shiny, durable and white paper (PCT Rule 11.3); (2)

the papers be typewritten by a typewriter or word-processor, i.e.,

hand-written application materials would no longer be acceptable, with

1\1/2\ or double spaced lines (PCT Rule 11.9(c)), and in permanent

``dark'' ink (PCT Rule 11.9(d)) and portrait orientation, i.e., with

the shorter sides of the paper on the top and bottom (PCT Rule

11.2(d)); (3) the sheets of papers be the same size and either 21.0 cm.

by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches)

(PCT Rule 11.5), with a top margin of at least 2.0 cm. (\3/4\ inch), a

left side margin of at least 2.5 cm. (1 inch), a right side margin of

at least 2.0 cm. (\3/4\ inch), and a bottom margin of at least 2.0 cm.

(\3/4\ inch) (PCT Rule 11.6(a)); (4) the pages of the application be

numbered consecutively, with the numbers being centrally located above

or below the text (PCT Rule 11.7); and (5) the claims be on a separate

sheet (PCT Rule 11.4). Finally, Secs. 1.52(b) and 1.84(x) are proposed

to be amended to provide that no holes should be provided in the paper

or drawing sheets due to the potential for their interference with the

scanning operation.

Section 1.52(b) currently requires that application papers be

written on but one side, and Sec. 1.72(b) currently requires that the

abstract be on a separate sheet. In an application filed without: (1)

typewritten application papers on flexible, strong, smooth, non-shiny,

durable and white paper; (2) 1\1/2\ or double spaced lines in portrait

orientation; (3) permanent ``dark'' ink typing; (4) sheets of papers of

the same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm.

by 27.9 cm. (8\1/2\ by 11 inches), with a top margin of at least 2.0

cm. (\3/4\ inch), a left side margin of at least 2.5 cm. (1 inch), a

right side margin of at least 2.0 cm. (\3/4\ inch), and a bottom margin

of at least 2.0 cm. (\3/4\ inch); (5) the pages of the application

including claims and abstract be numbered consecutively, starting with

page one, with the numbers being centrally located above or below the

text; (6) application papers typed on but one side; and (7) an abstract

and claims on a separate sheet, the applicant will be given a time

period, non-extendable under Sec. 1.136(a), in which to file a

substitute specification in compliance with Sec. 1.125 on application

papers in compliance with Secs. 1.52(a) and (b). The Office, however,

does not propose to require a surcharge for the failure to comply with

these standardizations on filing.

Additional standardizations to the rules of practice concerning

drawings requirements are also being proposed. Currently, Sec. 1.84(f)

permits paper sizes of 21.6 cm. by 35.6 cm. (8\1/2\ by 14 inches), 21.6

cm. by 33.1 cm. (8\1/2\ by 13 inches), 21.6 cm. by 27.9 cm. (8\1/2\ by

11 inches), and 21.0 cm. by 29.7 cm. (DIN size A4). Section 1.84(f), as

proposed, would permit paper sizes of only 21.0 cm. by 29.7 cm. (DIN

size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches). The use of

these paper sizes, which correspond to the paper sizes required under

Sec. 1.52(b), as proposed, would not impact the current Automated

Patent System (APS) database, and would permit a fully automatic

scanning operation due to their similar size. To electronically store,

display, and print drawings paper sheet sizes up to 21.6 cm. by 35.6

cm. (8\1/2\ by 14 inches) would require modifications of the APS system

hardware, software, displays, and printers. In addition, the digital

image scanning of drawing paper sheet sizes up to 21.6 cm. by 35.6 cm.

(8\1/2\ by 14 inches) would require a semi-automatic scanning

operation, thus increasing scanning costs significantly. Therefore,

Sec. 1.84(f), as proposed, would permit paper sheet sizes of only 21.0

cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11

inches), with a top margin of at least 2.5 cm. (1 inch), a left side

margin of at least 2.5 cm. (1 inch), a right side margin of at least

1.5 cm. (\9/16\ inch), and a bottom margin of at least 1.0 cm. (\3/8\

inch), thereby leaving a sight no greater than 17.0 cm. by 26.2 on 21.0

cm. by 29.7 cm. (DIN size A4) sheets, and a sight no greater than 17.6

cm. by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm.

(8\1/2\ by 11 inch) sheets (PCT Rule 11.6(c)). As PCT Rule 11.6(d)

provides that the margin requirements apply to 21.0 cm. by 29.7 cm.

(DIN size A4) sheets such that a copy of the drawings sheet on a 21.0

cm. by 29.7 cm. (DIN size A4) sheet leaves the required margin, the

requirement for drawing sheet sizes of only 21.6 cm. by 27.9 cm. (8\1/

2\ by 11 inches) or 21.0 cm. by 29.7 cm. (DIN size A4) is not a

substantive drawing limitation in excess of PCT Rule 11.

Currently, formal drawings are not required until an application

has been allowed. As a drawing figure will be included in the Gazette

Entry in the Gazette of Patent Application Notices,

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as well as the Patent Application Notice, drawings of sufficient

quality for digital image scanning into an electronic data base will be

necessary for the initial processing of the application. In instances

in which an application is filed with drawings of such poor quality as

to preclude their digital image scanning into the electronic data base,

it will be necessary to set a time period, non-extendable under

Sec. 1.136(a), in which to file drawings of sufficient clarity,

contrast, and quality and in the proper size and format for electronic

reproduction by digital imaging.

Currently, a complete application under Sec. 1.51(a) does not

require an abstract on a separate sheet, claims on a separate sheet,

application papers typed on but one side of the paper, or application

papers or drawings of sufficient clarity, contrast, or quality or in

the proper size or format for electronic reproduction, and, as such, an

application may be filed under Sec. 1.60 from a prior application not

in a format necessary for the image and/or OCR scanning of the

application materials into an electronic data base. Therefore, an

amendment to Sec. 1.60(d) is necessary to assure the prompt filing of

application papers including an abstract and claims on a separate

sheet, application papers typed on but one side of the paper, and

application papers and drawings of sufficient clarity, contrast, and

quality and in the proper size and format for electronic reproduction.

Currently, the filing of the copy of the specification from the

prior application, or a new specification, in an application filed

under Sec. 1.62 is considered improper. As applications filed prior to

January 1, 1996, will not have been image- or OCR-scanned into the

electronic data base, the technical contents of an application filed

under Sec. 1.62 in which the prior application was itself filed prior

to January 1, 1996, will not be contained in the electronic data base.

For applications under Sec. 1.62 which do not add additional

disclosure, i.e., continuation or divisional applications, the Office

will obtain the microfiche copy of the prior application and image or

OCR scan it into the electronic data base. For applications under

Sec. 1.62 which add additional disclosure, i.e., continuation-in-part

applications, a substitute specification and drawings will be necessary

for image or OCR scanning into the electronic data base. Therefore, an

amendment has been proposed to Sec. 1.62 to provide that, where the

application is a continuation-in-part application, a substitute

specification in compliance with Sec. 1.125 and drawings will be

required.

Section 1.62 currently provides that no copy of the prior

application or new specification is required, and further provides that

the filing of such a copy or specification will be considered improper,

and a petition is necessary to obtain the date of deposit of the

request for an application under Sec. 1.62 as the filing date. Section

1.62, as proposed, would provide that the failure to provide any

required substitute specification would not affect the filing date of

the application, but a time period, non-extendable under Sec. 1.136(a),

would be set for its filing. Section 1.62, as proposed, would further

provide that any new specification filed in an application under

Sec. 1.62 would not be considered part of the original application

papers, but would be treated as a substitute specification under

Sec. 1.125. Any request to treat a new specification filed in an

application under Sec. 1.62 as part of the original application papers

may be by way of petition under Sec. 1.182.

Finally, amendments to Secs. 1.77, 1.154, and 1.163 have been

proposed to provide a standard arrangement for utility, design, and

plant applications, respectively. This standard arrangement will

include, inter alia, a Fee Transmittal form for utility, design, and

plant applications, a Utility Patent Application Transmittal form, a

Design Patent Application Transmittal form, a Plant Patent Application

Transmittal form, and a Plant Color Coding Sheet for plant

applications. Standardized versions of the Fee Transmittal form,

Utility Patent Application Transmittal form, Design Patent Application

Transmittal form, Plant Patent Application Transmittal form, Plant

Color Coding Sheet, as well as a standard Declaration form and Plant

Patent Application Declaration form, are included as an Appendix A to

this notice of proposed rulemaking.

3. Assuming that the entire application is not published, what

information concerning the application should be published in the

Gazette of Patent Application Notices?

Summary: A slight majority of the comments indicated that the

printed publication should include the entire application, or at least

the claims, each independent claim, or a claim of each statutory class

in the application. The remaining comments that did not oppose pre-

grant publication indicated that any Patent Application Notice should

contain information similar to what is published in the Official

Gazette or sufficient information to determine whether further

investigation was warranted. Those comments that opposed any pre-grant

publication opposed publication of any information other than the

applicant's name, address and a ``non-enabling'' abstract of the

invention.

Response: The Technical Contents Publication will include a copy of

the Patent Application Notice, and the specification, abstract, claims

and drawings of the application-as-filed. The Technical Contents

Publication will be available for public review through video display

terminals in the Public Search Room and through CD-ROM collections of

facsimile images of Patent Application Notices and Technical Contents

Publications in the Patent and Trademark Depository Libraries. Copies

of the Patent Application Notices and Technical Contents Publications

will also be available for purchase under the conditions that paper

copies of patents are currently available for purchase. When budgetary

and process constraints permit, text searching of the Patent

Application Notices and Technical Contents Publications will be

implemented.

H.R. 1733, if enacted, would not provide any appropriations to

cover the costs of early publication, but would provide that these

costs are to be recovered by adjusting the filing, issue and

maintenance fees, by charging a separate publication fee, or by any

combination of these methods, i.e., that the patent applicant is to

bear the costs of publication. A number of comments have criticized

this method of allocating the publication costs as pre-grant

publication provides no benefit to the patent applicant. The Office was

required to balance the requests for a printed publication conveying

the greatest amount of application information with those comments

opposing additional publication costs. To provide the maximum amount of

application information at the lowest cost to applicant, the

specification, abstract, claims and drawings of the application-as-

filed will be available for public review in the Technical Contents

Publication.

4. Should the patent applicant receive a copy of the published

application--either published notice and/or application content at time

of publication?

Summary: A majority of the comments indicated that the applicant

should receive a copy of the Patent Application Notice.

Response: The Office proposes to provide for the delivery of the

Patent Application Notice similar to the current delivery of patents.

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5. Should the PTO permit an accelerated examination? If so, under

what conditions?

Summary: A majority of the comments favored permitting accelerated

examination. A number of comments indicated that accelerated

examination should be provided for applicants who either: (1) meet the

current conditions for accelerated examination; or (2) pay a relatively

high fee, i.e., that the Office should add the payment of a high

accelerated examination fee to the current conditions for providing an

accelerated examination. A number of comments, however, indicated that

adding the payment of a high accelerated examination fee to those

conditions for providing an accelerated examination would benefit large

companies at the expense of small entities.

Response: The Office will provide accelerated examination only

under the current conditions set forth in Sec. 1.102, as described in

MPEP 708.02. Accelerated examination is currently provided depending

upon the subject matter of the invention, medical condition of the

applicant, business circumstances, or the willingness of the applicant

to participate in a special accelerated examination procedure.

Increasing the number of applications receiving accelerated

examinations could diminish the availability or speed of accelerated

examination to an individual applicant because there will be more

applications receiving an accelerated examination. It would further

delay the examination of applications not provided with accelerated

examination. Adding a condition for providing accelerated examination

which bears no relationship to the merits of the application or

circumstances of the applicant, i.e., for the mere payment of a fee, is

not considered appropriate. Therefore, the Office does not propose to

change the conditions under which the examination of an application

will be accelerated.

The Office, however, will continue to make special an application

under the conditions currently set forth in MPEP 708.02 (VIII), special

examining procedures for certain new applications--accelerated

examination. MPEP 708.02 (VIII) provides that a new application may be

granted special status provided that the applicant: (1) submits a

written petition to make special accompanied by the fee set forth in

Sec. 1.17(i); (2) presents all claims directed to a single invention,

or if the Office determines that all the claims presented are not

obviously directed to a single invention, will make an election without

traverse as a prerequisite to the grant of special status; (3) submits

a statement that a pre-examination search was made; (4) submits one

copy each of the references deemed most closely related to the subject

matter encompassed by the claims; (5) submits a detailed discussion of

the references pointing out with the particularity required by

Sec. 1.111 (b) and (c) how the claimed subject matter is

distinguishable over the references; and (6) submits any affidavit or

declaration under Sec. 1.131 that is necessary to overcome the

references before the application is taken up for action, but in no

event later than one month after request for special status. An

application granted special status under MPEP 708.02 (VIII) will be

taken up by the examiner before all other categories of applications

except those clearly in condition for allowance and those with set time

limits, such as examiner's answers, etc., and will be given a complete

first action which will include all essential matters of merit as to

all claims.

6. Since the cost for publishing applications must be recovered

from fees, how should the cost of publication be allocated among the

various fees, including the possibility of charging a separate

publication fee?

Summary: The overwhelming majority of comments opposed a separate

publication fee. Most comments indicated that the costs of publication

should be spread over the existing fees, with the remaining comments

indicating that these costs should be absorbed by those accessing the

published applications or the Office.

Response: H.R. 1733, if enacted, would not provide appropriations

for the Office to absorb the publication cost, but provides that the

``Commissioner shall recover the costs of early publication . . . by

adjusting the filing, issue, and maintenance fees, by charging a

separate publication fee, or by any combination of these methods.''

Notwithstanding that H.R. 1733, if enacted, would not authorize the

Office to recover the costs of publication through those seeking access

to the published application, the demand for publication products,

e.g., Patent Application Notices and Technical Contents Publications,

would not be consistent, and it would not be possible to project the

demand for publication products with the degree of precision necessary

to recover a substantial portion of the publication costs through the

inclusion of such costs in the fees charged for the publication

products. In addition, the Office will supply, inter alia, CD-ROM

collections of facsimile images of the Patent Application Notices and

Technical Contents Publications under the condition that CD-ROM

collections of patent images are currently supplied. As the Office has

no authority to control the further duplication of such images, it

would not be practicable to attempt to recover publication costs

through increases in the fees charged for publication products, since

those persons desiring copies of Patent Application Notices or

Technical Contents Publications would simply obtain them from the

original purchasers of the CD-ROM collections, who need not include any

publication costs in their prices. Therefore, the Office proposes to

adjust the filing, issue, and maintenance fees to recover the costs of

publication.

In a Notice of Proposed Rulemaking published in the Federal

Register at 60 FR 27934 (May 26, 1995) and in the Patent and Trademark

Office Official Gazette at 1174 Off. Gaz. Pat Office 134-50 (May 30,

1995), a number of changes to the rules of practice to, inter alia,

adjust patent and trademark fees to reflect the fluctuations in the

Consumer Price Index (CPI) pursuant to 35 U.S.C. 41(f) were proposed

(Patent and Trademark Fee Notice of Proposed Rulemaking). The proposed

patent and trademark fee adjustments, if adopted in final rules, would

take effect on October 2, 1995 (October 1, 1995 being a Sunday), prior

to the effective date of the fee increase in this notice of proposed

rulemaking to recover the costs of publication. The proposed amendments

to Secs. 1.19(b)(1)(i) and 1.19(b)(1)(ii) are repeated in this notice

of proposed rulemaking for clarity.

The Office estimates that it will cost about $9 million to publish

applications in Fiscal Year 1996. To allocate these costs among the

filing fees of those applications which the Office anticipates will be

filed in Fiscal Year 1996, the issue fee for those applications for

which the Office anticipates payment of an issue fee in Fiscal Year

1996, and maintenance fees due at three (3) years and six (6) months,

seven (7) years and six (6) months, and eleven (11) years and six (6)

months for those patents for which the Office anticipates payment of

the respective maintenance fees in Fiscal Year 1996, a further increase

in the filing fee for an original nonprovisional (35 U.S.C. 111(a)) or

reissue application to $780 ($390 for a small entity) and a plant

application to $540 ($270 for a small entity), issue fee for an

original or reissue application to $1280 ($640 for a small entity) and

a plant application to $660 ($330 for a small entity), maintenance fee

due at three (3) years and six (6) months to

[[Page 42357]]

$1020 ($510 for a small entity), maintenance fee due at seven (7) years

and six (6) months to $2020 ($1010 for a small entity), and maintenance

fee due at eleven (11) years and six (6) months to $3020 ($1510 for a

small entity) is necessary to recover the costs of publication in

Fiscal Year 1996. A comparison of existing fee amounts, fee amounts

proposed in the Patent and Trademark Fee Notice of Proposed Rulemaking,

and fee amounts proposed in this notice of proposed rulemaking is

included as an Appendix B to this notice of proposed rulemaking.

7. Should the PTO require an affirmative communication from a

patent applicant indicating that the applicant does not wish the

application to be published, or should failure to timely submit a

publication fee be taken as instruction not to publish the application?

That is, should an application be published unless the applicant

affirmatively indicates that the application is not to be published,

regardless of whether a publication fee has been submitted? What

latitude should the PTO permit for late submission of a publication

fee?

Summary: An overwhelming majority of the comments (except for those

who opposed any pre-grant publication) favored a requirement that an

applicant affirmatively communicate that an application is being

expressly abandoned to avoid publication of the application at 18

months.

Response: The Office does not process applications as abandoned

until seven (7) months after the mailing date of an Office action to

allow for extensions of time under Sec. 1.136(a) and mailing delays.

Where no response to an Office action setting a shortened statutory

period for response of three (3) months mailed at 13 months after

filing in an application is received, the application becomes abandoned

by operation of 35 U.S.C. 133 at 16 months after filing, but is not

recognized or processed by the Office as an abandoned application until

20 months after filing, and thus would be published in regular course

at 18 months. Therefore, an applicant intending to permit an

application to become abandoned for failure to respond to an Office

action mailed within seven (7) months of the projected publication date

must take affirmative action to avoid publication of the application.

The Office intends to indicate the projected date of publication on

the filing receipt. Any person who wants to avoid publication of the

application at 18 months must submit a letter of express abandonment in

sufficient time to permit the Office to act on the letter. Likewise,

any person who considers the projected date of publication on the

filing receipt to be incorrect must submit a request to correct the

projected date of publication in sufficient time to permit the Office

to act on the request.

Currently, the Office considers two (2) months to be the minimum

time necessary to avoid publication of an application. Therefore, any

letter of express abandonment or request to withdraw the application

from publication submitted less than two (2) months from the projected

date of publication will not be considered effective to avoid

publication of the application at the projected date of publication.

The Office also intends to indicate on the filing receipt the date by

which an application must be expressly abandoned to avoid its

publication.

8. The delayed filing of either a claim for priority under 35

U.S.C. 119 or 120 may result in the delayed publication of the

application. Should priority or benefit be lost if not made within a

reasonable time after filing? What latitude should the PTO permit for

late claiming of priority or benefit?

Summary: A large majority of the comments indicated that claims for

priority under 35 U.S.C. 119 and 120 should be lost if not timely

filed. A number of comments also indicated that there should be

provisions for the acceptance of late claims for priority.

Response: The submission of a claim for priority under 35 U.S.C.

119 or 120 later than four (4) months prior to the publication date

appropriate for an application claiming that priority date will result

in delays in the publication of the application and will interfere with

the publication process. Therefore, the Office proposes to change the

rules of practice to provide that claims for priority under 35 U.S.C.

119 or 120 must be made within two (2) months of filing, or fourteen

(14) months from the filing date for which a benefit is desired,

whichever is later. To avoid a potential loss of patent rights to an

applicant who inadvertently failed to present a timely claim for

priority, the Office further proposes to provide for the acceptance of

late claims for priority submitted during the pendency of the

application with a surcharge, so long as the delay in submitting the

claim for priority was unintentional.

9. Once the patent has issued, should the paper document containing

information similar to that published in the Gazette of Patent

Application Notices, i.e., the Patent Application Notice, be removed

from the search files, and should publication information be included

on the issued patent?

Summary: A majority of the comments indicated that the Patent

Application Notice should not be removed from the search files.

Response: The Office will not remove the Patent Application Notice

from the search files upon issuance of the patent.

10. After publication, should access to the content of the

application file be limited to the originally filed application papers?

If not, what degree of access should be permitted? Should access be

limited to the content before publication, or should it extend to

materials added after publication?

Summary: A majority of the comments indicated that, upon

publication, the access to the content of the application file should

not be limited.

Response: The Office proposes to change the rules of practice to

provide that, upon publication, access to the entire content of the

application file would be permitted. To avoid undue interference with

the examination of the application, however, the public access to the

application file of a pending published application is proposed to be

limited to obtaining, upon the payment of the fee set forth in

Sec. 1.19(b)(2), a copy of the application file produced during non-

working hours by the Office when the application file is made available

by the appropriate patent application processing organization. The

Office also proposes to provide, upon the payment of the fee(s) set

forth in Sec. 1.19(b)(4), as proposed, a copy of specifically

identified document(s) contained in a pending published application.

The Office will provide public access to a database containing

information concerning the status of a pending published application

and the content of the application file similar to that contained in

the Patent Application Location and Monitoring (PALM) system. Using

this database, interested members of the public will be able to

ascertain the status of a pending published application to determine

whether obtaining a copy of the file wrapper and content of the

application or any document(s) in the file wrapper is warranted. In

addition, this database can also be used to permit specific

identification of the document(s) of which a copy is desired, assuming

that obtaining a copy of the entire file wrapper and content is not

considered warranted.

The Office specifically proposes to provide a copy of a

specifically identified document contained in a pending published

application for a fee of $75.00. Each paper in the application file to

which a separate paper number is assigned constitutes a document in

[[Page 42358]]

the application. As the cost of obtaining a pending published

application from its location in the various patent application

processing organizations throughout the Office is a substantial portion

of the cost of providing a copy of the file wrapper and content of a

pending published application, the fee for providing a copy of the

first requested document from a pending published application must

recover the cost of obtaining the application. The Office, however,

will provide copies of additional documents from the same application

in the same request for a fee of $25.00 per document.

11. After publication, should assignment records of a published

application also be made accessible to the public?

Summary: An overwhelming majority of the comments indicated that,

upon publication, the assignment records of an application should be

accessible to the public.

Response: The Office proposes to change the rules of practice to

provide that, upon publication, the assignment records of the

application would be available by both application and Patent

Application Notice (PAN) number and open to public inspection through

the existing Patent Assignment Search System. The Office further

proposes to permit applicants to indicate on the assignment cover sheet

whether they want assignment information to be printed on the Patent

Application Notice. The Office, however, does not propose to require

that any assignment information be printed on the Patent Application

Notice.

12. After publication, should access include the deposit of

biological materials as set forth in Sec. 1.802 et seq.?

Summary: A majority of the comments indicated that, upon

publication, any deposit of biological materials should be accessible

to the public. A number of comments, however, indicated that such

access should be limited in the manner similar to that in European or

Japanese laws, or that such access should be limited to experimental

use.

Response: Section 1.809(c) currently provides that the applicant

need not provide any necessary deposit of biological materials until

three (3) months from the mailing of the Notice of Allowance and Issue

Fee Due. The deposit of biological materials on filing of an

application are often required by foreign laws. Applicants may not be

able to claim priority under these laws based upon an earlier United

States application filed without any necessary deposit of biological

materials. The laws and rules of practice of the United States,

however, do not require an applicant to make any deposit of biological

materials until the application is allowed. See, In re Lundak, 723 F.2d

1216, 227 USPQ 90 (Fed. Cir. 1985). Accordingly, the Office proposes to

change the rules of practice to provide that, upon publication, any

deposit of biological materials that has been made would be available

after deposit under the same conditions that such deposit of biological

material would be available for an issued patent.

13. What types of problems will be encountered if all amendments

must be made by (a) substitute paragraphs and claims, (b) substitute

pages, or (c) replacement of the entire application?

Summary: A majority of the comments indicated that, if the rules of

practice regarding the submission of amendments were changed, a

requirement for substitute paragraphs and claims, or substitute pages

would be acceptable.

Response: The Office currently considers changes in the procedures

for entering amendments into applications to be unnecessary to the

current planning approach to implementation of 18-month publication,

and, as such, no change to the rules of practice to require substitute

paragraphs and claims, substitute pages, or replacement of the entire

application is being proposed.

14. Should protest procedures be modified to permit the third party

submission of prior art only prior to a specific period after

publication of the application? What action should be taken with

respect to untimely submissions by a third party?

Summary: A majority of comments indicated that third party

submissions of prior art patents and publications should be permitted

for a limited period upon publication, but the overwhelming majority of

comments opposed any pre-grant opposition procedure.

Response: The Office does not intend to institute any procedures

that would amount to pre-grant opposition. H.R. 1732 was also

introduced in the House of Representatives on May 25, 1995, and, if

enacted, will expand reexamination, i.e., post-grant opposition,

proceedings to provide a third party requester with increased

participation rights, including the right to appeal any decisions

favorable to patentability to the Board of Patent Appeals and

Interferences and to the courts. In view of the opposition to pre-grant

third party participation, i.e., support for the continued ex parte

examination of pending applications, the Office proposes to change the

rules of practice to limit the period for filing protests and petitions

for the institution of public use proceedings.

The Office proposes to change the rules of practice concerning

protests to provide that a submission by a third party in a pending

application would be considered if: (1) it is submitted within two

months of the date the application was published or prior to the

mailing of a notice of allowance under Sec. 1.311, whichever occurs

first; (2) the submission has been served on the applicant in

accordance with Sec. 1.248 if filed after the date the application was

published, and the submission indicates such service; (3) the

submission is accompanied by a $220 fee if submitted after publication

of the application; and (4) the application is still pending when the

submission and application file is brought before the examiner.

The $220 fee for a protest submitted after publication of the

application is considered appropriate. Any party submitting a protest

after publication has benefitted by the publication of the application.

The third party should not obtain this benefit solely at the expense of

the patent applicant, but should obtain this benefit only upon payment

of a fee. In addition, it is expected that any protest submitted after

publication of the application will be considered late in the

prosecution of the application, which will cause inconvenience both to

the patent applicant and the Office. Therefore, the requirement for the

payment of a fee is considered appropriate to defray the costs of the

belated consideration of any such submission and discourage the

submission of protests having questionable merit.

Third parties may continue to submit information concerning prior

public use of the invention in accordance with Sec. 1.292. Currently,

Sec. 1.292 does not set forth a time period within which a petition for

the institution of public use proceedings must be filed. The Office

proposes to further amend Sec. 1.292 to provide that the public use

petition will be entered if submitted within two months of the

publication date of the application or prior to the mailing of a notice

of allowance under Sec. 1.311, whichever occurs first.

The proposed changes to Secs. 1.291 and 1.292 are intended to limit

any right of third parties to have information entered and considered

in a pending application. They do not vest the applicant with any right

to prevent the Office from sua sponte making such information of record

in the application or relying upon such information in subsequent

proceedings in the application, i.e., they do not limit the authority

of the Office to re-open the

[[Page 42359]]

prosecution of an application to consider any information deemed

relevant to the patentability of any claim.

A number of miscellaneous comments concerning the 18-month

publication of patent applications were also received.

Comment 1: A number of comments opposed any pre-grant publication

of pending applications as an improper limiting of the right of a

patent applicant to maintain trade secrets, or argued that any pre-

grant publication should not occur prior to 24 or 60 months from the

earliest filing date.

Response: H.R. 1733, if enacted, would require the Commissioner to

publish pending applications at 18 months. The proposed changes to the

rules of practice concern the implementation of an 18-month publication

system mandated by statute, not the advisability of an 18-month

publication system. If legislation containing provisions for the

publication of pending applications is enacted, it is not expected that

the Office would have the discretion to determine whether or when

pending applications are to be published. That is, it is expected that

any legislation containing provisions for the publication of pending

applications will mandate whether and when applications are to be

published.

Comment 2: A number of comments indicated that the publication of

pending applications should be joined with provisional rights.

Response: H.R. 1733, as proposed, provides for provisional rights.

This issue, however, was not treated in the 18-Month Publication Notice

or this notice of proposed rulemaking since it does not affect the way

business is conducted with or within the Office.

Comment 3: One comment indicated that the requirement under 35

U.S.C. 112, first paragraph, for a disclosure of a best mode should be

eliminated in view of 18-month publication.

Response: The requirement in 35 U.S.C. 112, first paragraph, for a

disclosure of a best mode is a statutory, not regulatory, requirement.

Therefore, the Office has no authority to eliminate or limit this

requirement of the patent statutes.

Comment 4: One comment indicated that any publication of patent

applications should address the situation in which: (1) an applicant

files a continuing application prior to receiving a patent, and then

maintains the pendency of continuing application(s), which are

maintained in confidence, to obtain claims of various scope; (2) a

second party invests resources in developing a product which does not

infringe the claims of the patent, but which the applicant could draft

claims in the continuing application(s) to cover; and (3) the applicant

then permits a continuing application having claims which covers the

second party's product to issue, thus checkmating the second party.

Response: H.R. 1733, if enacted, would provide that applications

shall be published ``as soon as possible after the expiry of a period

of 18 months from the earliest filing date for which a benefit is

sought.'' Any continuing application which claims priority from any

prior application would be published either 18 months after the filing

date of the earliest filed prior application or as soon as possible

after filing of the continuing application, and thus would not be

maintained in confidence.

Comment 5: One comment indicated that applicants should obtain the

defensive benefit of their filing date in a published application

regardless of whether the application issues as a patent, either by

statute or rule.

Response: H.R. 1733, if enacted, would provide that a published

application is prior art under 35 U.S.C. 102(e) as of its filing date.

As prior art is defined by statute, i.e., 35 U.S.C. 102, the Office has

no authority to promulgate regulations defining what does or does not

constitute prior art.

Comment 6: One comment indicated that any rulemaking should be

postponed until there is pending legislation, and it is clear as to

what form 18-month publication will take.

Response: As legislation has been introduced, the form that 18-

month publication will likely take is known. As such, it is now

appropriate to initiate the rulemaking process in light of the changes

that would be necessitated by this legislation, the requirement for a

rapid implementation, if enacted, and the desire on the part of the

Office to receive public input prior to initiating the rulemaking

process. If H.R. 1733 is amended during the legislative process, the

final rules will comply with this legislation as enacted. If H.R. 1733

is not enacted, the proposed rules that would implement publication of

patent applications would be withdrawn.

Comment 7: One comment indicated that it is unclear as to whether,

when a restriction requirement is applied, each application will

require a separate publication fee.

Response: No separate publication fee has been proposed. In

accordance with current practice, each application would require

separate filing, issue, and maintenance fees, which fees will be

increased to recover the costs of publication.

Comment 8: Several comments indicated that the Office should not

impose access fees for either copying the paper application files, or

searching and copying a published application from any electronic data

base.

Response: As discussed supra, the Office intends to provide free

public access to images of the Patent Application Notices and Technical

Contents Publications through video display terminals in the Public

Search Room and through CD-ROM collections of facsimile images of

Patent Application Notices and Technical Contents Publications in the

Patent and Trademark Depository Libraries. Copies of the Patent

Application Notices, Technical Contents Publications, or copies of the

file wrapper and contents of the application will be available for a

fee. The costs of publication have been allocated primarily to those

applicants whose applications are being published. Since publication

primarily benefits those seeking access to the published applications,

it is reasonable to require such persons to pay a fee for making copies

of the Patent Application Notices and Technical Contents Publications,

or obtaining a copy of the file wrapper and application contents of a

published application from the Office.

Comment 9: One comment indicated that the publication of

applications may result in instances in which third parties will submit

information to the applicant directly, rather than to the Office. In

instances in which the applicant was previously aware of the

information, but did not consider it material, the applicant cannot

submit the information to the Office in that application (if after

final or allowance), but will be charged with a Sec. 1.56 violation if

they do not file a continuation application to have it considered.

Thus, Sec. 1.56 should be amended such that an applicant in this

situation no longer has a duty to submit information to the Office.

Response: Section 1.56 expressly provides that there is no duty to

submit information which is not material to the patentability of any

existing claim. Since the applicant previously determined that the

information was not material, the fact that a third party has provided

this previously known material to the applicant has no effect on the

applicant's compliance with Sec. 1.56. Second, since the applicant was

previously aware of this information, the applicant is under a duty to

bring such information to the attention of the Office if it is

material, regardless of the actions of any third party, and the

applicant is not under a duty to bring such information to the

attention of the

[[Page 42360]]

Office if it is not material, again regardless of the actions of any

third party. In either instance, the third party's actions have no

bearing on whether the applicant is in compliance with Sec. 1.56.

Therefore, no change to Sec. 1.56 is being proposed.

Comment 10: One comment indicated that Sec. 1.56 should be modified

or abolished. Where information is brought to the attention of the

applicant after allowance, the applicant should be considered to have

met his or her duty of disclosure under Sec. 1.56 if the applicant

simply chooses to permit the patent to issue, as the public can take

care of itself through reexamination or whatever opposition proceedings

are instituted.

Response: As indicated supra, no change to Sec. 1.56 is being

proposed. In addition, the Office is proposing to limit third party

protest procedures, and is not proposing to develop any procedures

amounting to pre-grant opposition. Since the Office is continuing the

ex parte examination of applications, the proposed modification or

abolition of Sec. 1.56 is not considered appropriate.

Comment 11: One comment indicated that an applicant should be

allowed to request early publication.

Response: Section 1.306(d) is being proposed to provide for

petitions requesting early publication.

Comment 12: One comment indicated that the Office should require

that the text of all applications be filed in digital form, and the

publication of applications should be purely digital, i.e., that Office

should not print any publication.

Response: 35 U.S.C. 22 provides that ``[t]he Commissioner may

require papers filed in the Patent and Trademark Office to be printed

or typewritten.'' Therefore, the Office does not currently have the

authority to require that application papers be submitted in digital

form. The Office is considering the legislative and regulatory changes

that would be necessary to permit purely digital filing of application

papers; however, requiring all applicants to submit application papers

in digital form at this time would place an unnecessary burden on those

applicants lacking word-processing resources. In addition, the Office

received a substantial number of comments requesting a printed

publication containing more information, as well as a number of

comments opposing the promulgation of any regulations concerning a

standard application format which were in excess of EPO and PCT

regulations and not necessary to 18-month publication.

Comment 13: One comment indicated that the Office should clearly

define or eliminate the ``formal'' pre-examination search requirement

in MPEP 708.02.

Response: MPEP 708.02(VIII) provides that an application may be

granted special status under the condition that, inter alia, the

applicant:

Submits a statement that a pre-examination search was made, and

specifying whether by the inventor, attorney, agent, professional

searchers, etc., and listing the field of search by class and

subclass, publication, Chemical Abstracts, foreign patents, etc. A

search made by a foreign patent office satisfies this requirement.

This definition of a pre-examination search is reasonably clear as

to what actions are necessary for an applicant to have satisfied this

requirement of MPEP 708.02(VIII), and the requirement for a pre-

examination search is basic to the justification for granting special

status to an application on that basis. No changes to 37 CFR 1.102 are

being proposed.

Comment 14: One comment indicated that the publication of

applications at 18 months will create a security review problem,

especially where a nonprovisional, i.e., 35 U.S.C. 111(a), application

claiming the benefit of a prior provisional application not subject to

a secrecy order contains additional material which must be reviewed.

Therefore, the Office should require that any nonprovisional

applications claiming the benefit of a prior provisional application

indicate any additional material by underlining and bracketing.

Response: Provisional applications will increase the number of

applications requiring security screening. All provisional applications

will require security screening immediately after filing in the same

manner as nonprovisional applications due to the licensing provision of

35 U.S.C. 184. Any subsequent U.S. patent application claiming the

benefit of a prior provisional application will also require security

screening unless it is evident on its face that no additional subject

matter is contained in the application beyond that in the provisional

application. It would be beneficial for the applicant to provide this

information to the Office upon filing of the nonprovisional

application. Thus, the Office is considering suggesting that applicants

employ a standard application transmittal letter similar to the

standard transmittal letter for transmitting an international

application to the United States Receiving Office (PTO-1382). This

standard transmittal letter would indicate, inter alia: (1) any

difference between a provisional application and a nonprovisional

application claiming the benefit of the provisional application; (2)

the residence of the inventor(s) to avoid the unnecessary screening of

foreign origin applications; and (3) any Government interests in the

application, which applications should be screened through contract

provisions.

Comment 15: One comment indicated that the Office should

automatically place a secrecy order on any nonprovisional application

in which the prior provisional application was under a secrecy order.

Response: The Office does not have the authority to impose a

secrecy order without a specific recommendation from a defense agency.

35 U.S.C. 181. Additionally, all secrecy orders include the provision

that any other patent application already or hereafter filed in this or

any foreign country which contains any significant part of the subject

matter of the application under secrecy order also falls within the

scope of the secrecy order and must be brought to the immediate

attention of Licensing and Review. See Sec. 5.2(d). All papers

pertaining to such applications must be filed under the provisions of

Sec. 5.33, i.e., to the attention of Licensing and Review. Thus, the

applicant is obligated to maintain proper security of any

nonprovisional application that claims benefit of a prior provisional

application under a secrecy order.

Comment 16: One comment expressed concern that the defense agencies

may not have sufficient time to complete national security review of

applications made available to them under 35 U.S.C. 181 prior to

publication at 18 months from the earliest filing date for which a

benefit is sought, and suggested that applications not be published

until they have been cleared by the defense agencies.

Response: H.R. 1733, if enacted, would provide for withholding an

application from publication beyond 18 months from the earliest filing

date for which a benefit is sought if the application is under a

secrecy order or abandoned. There is no provision for delaying the

publication of an application until a completion of all reviews under

35 U.S.C. 181. In addition, 35 U.S.C. 184 authorizes foreign filing of

an application without the need for a license once the application has

been on file for at least six (6) months. In view of 35 U.S.C. 184, the

defense agencies must complete all security reviews within six (6)

months of filing to prevent public disclosure. Thus, security review

must be completed within six (6) months of the actual U.S. filing date.

For those

[[Page 42361]]

applications due for publication prior to six (6) months from the

actual filing date, e.g., those claiming the benefit of an earlier

application filed more than 18 months prior and those which a petition

for early publication has been granted, considerations of national

security mandate a limited delay in publication. The Office will not

pass an application for publication that is still under review by a

defense agency unless it has been on file for at least six (6) months

and the defense agency has been provided a minimum of three (3) months

to review the application.

Comment 17: One comment indicated that the digitized images of the

application file contents should be available in magnetic tape form in

the morning of the day of publication.

Response: Digitized images of the Patent Application Notice and

Technical Contents Publication will be available in magnetic tape form

for a fee to all parties as soon as possible after publication similar

to the way in which digitized images of granted patents are provided,

assuming that there is interest in such products.

Comment 18: One comment indicated that it is unclear as to whether

an examiner can cite the Patent Application Notice, and whether the

examiner will be required to supply the full application specification.

Response: When an examiner cites a published application, a copy of

the Technical Contents Publication will be provided with the Office

action under the same conditions that a copy of the entire patent of

any cited patent would currently be provided. That is, where an

examiner would provide only those portions of a patent relied upon,

rather than a copy of the entire patent due to its size, i.e., in

instances of jumbo patents, the examiner would similarly be expected to

provide only those portions of a published application relied upon in

instances of jumbo applications.

Comment 19: One comment indicated that the entire application as

filed should be published, otherwise the abandoned published

application must be permanently stored in a manner that would permit

on-site retrieval.

Response: The Technical Contents Publication of any published

application will be electronically available, without any necessity for

retrieval of the actual application file. Therefore, a printed

publication of the application-as-filed would not provide any

information not electronically available. Nevertheless, the actual file

of an abandoned application may be readily obtained regardless of where

it is stored.

Comment 20: One comment indicated that the 18-Month Publication

Notice did not set forth the capacity of Patent and Trademark

Depository Libraries (PTDLs) to: (1) Collect fees, (2) provide

librarians of assistance, and (3) house new publications.

Response: Each PTDL sets its own service standard procedures. Any

customer must directly contact the PTDL to ascertain its customer

service standards and requirements. Nevertheless, as the Office

proposes to publish only a Patent Application Notice, rather than the

entire application-as-filed, in printed form, and further proposes to

provide the Patent Application Notices and Technical Contents

Publications to PTDLs through CD-ROM collections of facsimile images,

this publication of applications would appear to alleviate, rather than

exacerbate, any publication storage housing problems.

Comment 21: One comment indicated that the Office should provide a

first Office action on the merits in all patent applications within 14

months of the actual filing date of the application in the United

States.

Response: The ability of the Office to process application within

any established time frame is entirely dependent upon the staff and

resources allocated by Congress, the Office of Management and Budget

(OMB), and the Department of Commerce (DoC). In January of 1995, the

first Office action was mailed within 14 months of the actual filing

date of the application in the United States in ninety-two (92) percent

of all applications in which a first Office action was mailed. Any

applicant who absolutely needs a first Office action on the merits

mailed within 14 months of the actual filing date of the application

should consider a petition to make special using the special examining

procedure for certain new applications set forth in MPEP 708.02(VIII).

In addition, any independent inventor meeting the requirements set

forth in 35 U.S.C. 122(b)(2) and Sec. 1.306(e), as proposed, may wish

to consider filing the application with a petition under Sec. 1.306(e).

Comment 22: One comment noted the current procedure of permitting

applicants to submit trade secret material and later expunge the

material if it is not necessary to patentability, and indicated that

new procedures should be implemented in the content of pre-grant

publication of pending applications.

Response: The current procedures for the treatment of petitions to

expunge trade secret, proprietary, or protective order material are set

forth in MPEP 724.05. Applicants are cautioned, in MPEP 724.05, that in

instances in which a decision on the petition is not made prior to the

date on which the application issues as a patent, any material in the

application file will remain open to public inspection, and, as such,

petitions to expunge must be filed as soon as possible. Under an 18-

month publication system, any material in the application file on the

date the application is published would likewise remain open to public

inspection. However, as petitions to expunge are considered under

Sec. 1.182, i.e., petitions not otherwise provided for, no change to

the rules of practice regarding petitions to expunge is being proposed.

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, Parts 1, 3 and 5, are

proposed to be amended as follows:

Section 1.4(a), as proposed, would add Patent Application Notices

and Technical Contents Publications to those services and facilities

which correspondence with the Office may comprise.

Section 1.5(a), as proposed, would provide that any letter

concerning an application must identify on the top page in a

conspicuous location, the application number (consisting of the series

code and the serial number) or serial number and filing date assigned

to that application by the Office, or the international application

number of the international application, regardless of whether the

application is a published application. That is, the identification

required for a pending or abandoned application would not change due to

its status as a published application.

Section 1.5(f), as proposed, would provide that a paper concerning

a provisional application must identify the application as such and by

the application number.

Section 1.5(g), as proposed, would provide that a paper relating to

a Patent Application Notice should identify it as such and by the

Patent Application Notice number. That is, a paper concerning a

published application must identify the application by application

number, not Patent Application Notice number; however, a paper

concerning the Patent Application Notice per se must identify it by

Patent Application Notice number.

Section 1.9(a), as proposed, would define an international

application in subparagraph (a)(4), rather than in paragraph (b).

Section 1.9(b), as proposed, would now define a published

application as an application for patent which has

[[Page 42362]]

been published pursuant to 35 U.S.C. 122(b).

A new Sec. 1.9(h), as proposed, would define national security

classified as specifically authorized under criteria established by 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 Act of Congress or Executive Order.

Section 1.11, as proposed, would provide that, like an issued

patent or a statutory invention registration, the specification,

drawings, and all papers relating to the case in the file of an

abandoned published application would be open to inspection by the

public. Section 1.11, as proposed, would further provide that a copy of

the specification, drawings, and all papers relating to the case in the

file of any published application, a patent, or statutory invention

registration may be obtained upon the payment of the fee set forth in

Sec. 1.19(b)(2). That is, while the actual application file of an

abandoned published application, patent, and statutory invention

registration would be available for public inspection, the actual

application file of a pending published application would not be

available for public inspection, but a copy of the specification,

drawings, and all papers relating to a pending published application

would, upon the payment of the fee set forth in Sec. 1.19(b)(2), be

provided to any member of the public.

Section 1.12, as proposed, would provide that the assignment

records relating to published applications are available and open to

public inspection at the Office, and copies of those assignment records

may be obtained upon request and payment of the fee. Section 1.12 would

further exclude the assignment records of published applications from

those records that are preserved in confidence. Finally, Sec. 1.12, as

proposed, would revise paragraph (c) to read ``preserved in confidence

under Sec. 1.14'' for consistency with Sec. 1.14.

Section 1.13, as proposed, would provide that, like an issued

patent, certified and non-certified copies of Patent Application

Notices, Technical Contents Publications, and the file wrapper and

contents of published applications would, upon payment of a fee, be

furnished to any person.

Section 1.14, as proposed, would revise the title and paragraphs

(a) and (e) to read ``preserved in confidence'' for consistency with

the language in 35 U.S.C. 122.

Section 1.14(a), as proposed, would provide that published

applications are excluded from those pending and abandoned applications

which are maintained in confidence. Section 1.14(a), as proposed, would

further change ``the United States of America has been indicated as a

Designated State in a published international application'' to ``a

published international application in which the United States of

America has been indicated as a Designated State'' for clarity, and add

``U.S. published application'' to those documents in which

identification of an application by application number or serial number

and filing date would entitle the public to status information

concerning the application. Section 1.14(a), as proposed, would further

provide that reference to an application in a U.S. published

application or patent, or identification of an application by

application number or serial number and filing date in a published

patent document or a published international application in which the

United States of America has been indicated as a Designated State would

entitle the public to the application number, filing date, and status

information concerning any application claiming the benefit of the

identified or referenced application. Finally, Sec. 1.14(a), as

proposed, would replace the phrase ``serial number'' with ``application

number or serial number and filing date'' since the mere reference to a

serial number without the series code (application number) or filing

date would not constitute a reference to a specific single application.

Section 1.14(b), as proposed, would provide that published

applications, as well as applications that are referred to in a

published application, are excluded from those abandoned applications

which are not open to public inspection. Section 1.14(b), as proposed,

would further provide that applications that are referred to in

applications open to public inspection pursuant to this section and

applications which claim the benefit of an application open to public

inspection pursuant to this section are also excluded from those

abandoned applications which are not open to public inspection.

Finally, Sec. 1.14(b), as proposed, would further remove applications

that have been published pursuant to 35 U.S.C. 122(b) from those

abandoned applications that may be destroyed after 20 years from their

filing date.

Section 1.16(a), (h) and (g), as proposed, would increase the

filing fee for an original nonprovisional (35 U.S.C. 111(a)) or reissue

application to $780 ($390 for small entities), and plant application to

$540 ($270 for small entities). The filing fee for a design application

would not be affected by this proposed rule change.

Section 1.17(i), as proposed, would add petitions under

Sec. 1.306(d) for early publication of an application, petitions under

Sec. 1.306(e) for deferred publication of an application, and under

Sec. 1.701(f) for patent term extension based upon administrative

delays not specifically provided for to the list of petitions for which

the fee set forth in Sec. 1.17(i) is required.

A new Sec. 1.17(t), as proposed, would be added to establish the

fee for submitting a protest under Sec. 1.291 after publication of an

application.

A new Sec. 1.17(u), as proposed, would be added to establish the

surcharge for accepting a late claim for priority under 35 U.S.C.

119(a)-(d) or for the benefit of a prior application under 35 U.S.C.

119(e), 120 or 121 filed during the pendency of the application.

Section 1.18 (a) and (c), as proposed, would increase the issue fee

for an original or reissue application to $1280 ($640 for small

entities), and plant application to $660 ($330 for small entities). The

issue fee for a design application would not be affected by this

proposed rule change.

Section 1.19(a)(1), as proposed, would add Patent Application

Notices to the documents that the Office would supply in the manner of

a patent upon payment of a fee.

A new Sec. 1.19(a)(4), as proposed, would add Technical Contents

Publications to the documents that the Office would supply upon payment

of a fee.

Section 1.19(b)(2), as proposed, would add the file wrapper and

contents of published applications to the files that the Office would

supply a copy of upon payment of a fee.

Current Sec. 1.19(b)(4), as proposed, would be redesignated as

Sec. 1.19(b)(5), and would add the assignment records of published

applications to the assignment records that the Office would supply

upon payment of a fee.

A new Sec. 1.19(b)(4), as proposed, would provide the fees for a

certified or uncertified copy of documents contained in a pending

application. Section 1.19(b)(4)(i), as proposed, would provide that the

fee for a certified or uncertified copy of the first document contained

in a pending application would be $75.00. Section 1.19(b)(4)(ii), as

proposed, would provide that the fee for a copy of each commonly

requested additional document contained in such pending application

would be $25.00. That is, while the fee for the first document

contained in a pending application would be $75.00, the fee for a copy

of each additional document

[[Page 42363]]

contained in the same pending application and requested together with

the first document would be $25.00. Where, however, a person requests a

first document from a pending published application, and subsequently

requests an additional document, the additional document was not

commonly requested with the first document, and the fee for the

additional document would be $75.00. Nevertheless, the fee for any

further additional document(s) commonly requested with the additional

document would be $25.00 per additional document.

Section 1.19(c), as proposed, would provide that copies of all

Technical Contents Publications published annually would also be

provided to libraries upon payment of the fee for copies of all patents

issued annually.

Section 1.20(e)-(g), as proposed, would increase the fee for

maintaining an original or reissue patent in force beyond four years,

eight years, and twelve years, respectively, to $1020, $2020, and

$3020, respectively ($510, $1010, and $1510, respectively, for small

entities).

Section 1.24, as proposed, would add the purchase of copies of

Patent Application Notices and Technical Contents Publications to those

documents for which the coupons set forth therein may be used.

Section 1.51(a)(1), as proposed, would further provide that a

complete application comprises, inter alia, an abstract.

Section 1.52(a), as proposed, would provide that all papers which

are to become a part of the permanent records of the Office must be

legibly typed in permanent dark ink in portrait orientation on

flexible, strong, smooth, non-shiny, durable and white paper.

Currently, Sec. 1.52(a) permits such papers to be hand-written, and

does not limit the color of the ink or paper, quality of the paper, or

orientation of the typing. Section 1.52(a), as proposed, would further

provide that the application papers must be presented in a form having

sufficient clarity and contrast between the paper and the typing

thereon to permit electronic reproduction by use of digital imaging and

optical character recognition, as well as the direct reproduction

currently provided for. Section 1.52(a), as proposed, would further

provide that substitute typewritten papers ``will,'' rather than

``may,'' be required if the original application papers are not of the

required quality. As any substitute typewritten papers containing the

subject matter of the originally filed application papers would

constitute a substitute specification, the provisions of Sec. 1.125

governing the entry of a substitute specification would be applicable,

and Sec. 1.52(a), as proposed, would include a specific reference to

Sec. 1.125.

Section 1.52(b), as proposed, would provide that the claims must be

set forth on a separate sheet. Section 1.72(b) currently provides that

the abstract must be set forth on a separate sheet. Thus,

Secs. 1.52(b), as proposed, and 1.72(b) would require that the abstract

and claims be set forth on a separate sheet. Section 1.52(b), as

proposed, would further provide that the sheets of paper must be the

same size and either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by

27.9 cm (8\1/2\ by 11 inches), with a top margin of at least 2.0 cm.

(\3/4\ inch), a left side margin of at least 2.5 cm. (1 inch), a right

side margin of at least 2.0 cm. (\3/4\ inch), and a bottom margin of at

least 2.0 cm. (\3/4\ inch), and that no holes should be provided in the

paper sheets. Section 1.52(b) currently provides that papers must be

written on but one side, but this phrase is proposed to be changed to

``typed on but one side'' to conform to Sec. 1.52(a) which, as

proposed, would no longer permit hand-written or hand-printed

(``written or printed'') papers. Section 1.52(b), as proposed, would

further provide that the lines ``must,'' rather than ``should,'' be

1\1/2\ or double spaced, and that the pages ``must,'' rather than

``should,'' be numbered consecutively, starting with page one, with the

numbers being centrally located above or below the text. Finally,

Sec. 1.52(b), as proposed, would specifically reference drawings to

clarify that drawings are part of the application papers, but that the

standards for drawings are set forth in Sec. 1.84.

Section 1.52(d), as proposed, would provide that where an

application is filed in a language other than English, the verified

English translation of the non-English-language application and the fee

set forth in Sec. 1.17(k) are required to be filed with the application

or within such time period as may be set by the Office, and that

extensions of time pursuant to Sec. 1.136(a) would not be available for

submitting the English translation.

Section 1.53(d)(1), as proposed, would further provide that the

applicant will be given a time period within which to file an abstract

and claims on a separate sheet, or substitute specification in

compliance Sec. 1.125 with papers typed on but one side of the paper or

new sheets of drawings, each of the substitute specification and sheets

of drawings of sufficient clarity, contrast, and quality, and in a

proper size and format for electronic reproduction in instances in

which the application papers did not comply with Secs. 1.52 (a) and

(b), as proposed, or the drawings were of such poor quality as to

preclude their digital image scanning into the electronic data base.

Section 1.53(d)(1), as proposed, would further provide that extensions

of time pursuant to Sec. 1.136(a) would not be available for filing an

abstract and claims on a separate sheet, and a substitute specification

with papers typed on but one side of the paper and sheets of drawings,

each of sufficient clarity, contrast, and quality and in the proper

size and format for electronic reproduction.

Section 1.54(b), as proposed, would provide that the applicant will

be informed of the application number, filing date, and projected

publication date on a filing receipt. The phrase ``application serial

number'' would be changed to ``application number'' for consistency

with Sec. 1.5(a).

Section 1.55(a), as proposed, would provide that any claim to

priority under 35 U.S.C. 119(a)-(d) must be stated within two months of

filing or within fourteen months of the date of the prior foreign

application, whichever is later, and must identify the prior foreign

application by specifying its application number, country, and day,

month and year of its filing. The proposed amendment to Sec. 1.55,

however, would not affect claims to priority under 35 U.S.C. 172, and

would not affect the time periods set forth in Sec. 1.55(a) for the

perfection of any claim for priority under 35 U.S.C. 119 (a)-(d), i.e.,

the filing of a certified copy of the foreign application.

Section 1.55(c), as proposed, would provide a procedure for the

acceptance of claim to priority under 35 U.S.C. 119(a)-(d) presented

after the time period set in Sec. 1.55(a). The procedure would require

the filing of a petition during the pendency of the application

requesting acceptance of the delayed claim, the surcharge set forth in

Sec. 1.17(u), and a statement that the delay was unintentional.

Section 1.55(d), as proposed, would provide that the time periods

set forth in this section, i.e., two months of filing or within

fourteen months of the filing date of the prior foreign application as

set forth in Sec. 1.55(a), and during the pendency of the application

as set forth in Sec. 1.55(c), cannot be extended.

Section 1.58(b), as proposed, would be removed and reserved as

unnecessary in view of the proposed amendments to Secs. 1.52 (a) and

(b).

Section 1.58(c), as proposed, would delete the sentence ``[i]f it

is not

[[Page 42364]]

possible to limit the width of a formula or table to 5 inches (12.7

cm.), it is permissible to present the formula or table with a maximum

width of 10\3/4\ inches (27.3 cm.) and to place it sideways on the

sheet'' and ``[h]and lettering must be neat, clean, and have a minimum

character height of 0.08 inch (2.1 mm.)'' to conform to the typing and

paper size and orientation limitations in Secs. 1.52 (a) and (b), as

proposed. Section 1.58(c), as proposed, would further provide metric

dimensions with English equivalents in parentheticals, rather than vice

versa.

Section 1.60(d), as proposed, would provide that the applicant will

be given a time period, which is not extendable under Sec. 1.136(a),

within which to file an abstract and claims on a separate sheet, and a

substitute specification in compliance with Sec. 1.125 with papers

typed on but one side of the paper and sheets of drawings, each of

sufficient clarity, contrast, and quality and in the proper size and

format for electronic reproduction where the papers of the prior

application did not comply with Secs. 1.52 (a) and (b), as proposed, or

the drawings of the prior application were of such poor quality as to

preclude their digital image scanning into the electronic data base.

Section 1.62(d), as proposed, would provide that the applicant will

be given a time period, which is not extendable under Sec. 1.136(a),

within which to file any substitute specification and drawings required

under Sec. 1.62(e)(2), discussed infra.

Section 1.62(e), as proposed, would be subdivided into paragraphs

(e)(1) and (e)(2) for clarity. Section 1.62(e)(1), as proposed, would

contain the first two (2) sentences of Sec. 1.62(e) without change.

Section 1.62(e)(2), as proposed, would provide that a substitute

specification and drawings would be required when the application being

filed under Sec. 1.62 is a continuation-in-part application. Section

1.62(e) currently provides that no copy of the prior application or new

specification is required, that the filing of a copy of the prior

application or new specification is in fact considered improper, and

that a petition with instructions to cancel the copy of the prior

application or new specification is necessary to obtain the date of

deposit of the request for an application under Sec. 1.62 as the filing

date. Section 1.62(e)(2), as proposed, would provide that any new

specification filed will not be considered part of the original

application papers, but will be treated as a substitute specification

in accordance with Sec. 1.125.

Section 1.62(f), as proposed, would amend ``35 U.S.C. 122'' to read

``35 U.S.C. 122(a)'' to reflect the changes in H.R. 1733, if enacted,

would change ``secrecy'' to ``confidence'' as is found in Sec. 1.14, as

proposed, and would change ``37 CFR 1.14'' to ``Sec. 1.14'' for

consistency.

Section 1.72(b), as proposed, would provide that the abstract

should be prior to the first page of the specification, rather than

following the claims, to conform to Sec. 1.77, as proposed.

Section 1.75, as proposed, would include an amendment to paragraph

(g), and would add two new paragraphs. Section 1.75(g), as proposed,

would add the phrase ``the least restrictive claim should be presented

as claim number 1'' to paragraph (g) to facilitate the selection of a

representative claim. Section 1.75(h), as proposed, would provide that

the claim or claims must be set forth on a separate sheet. Section

1.75(i), as proposed, would provide that where a claim sets forth a

plurality of elements or steps, each element or step of the claim

should be separated by a line indentation to facilitate the digital

image and/or OCR scanning of the claim into the electronic data base.

Section 1.77, as proposed, would provide that the elements of the

application, if applicable, should appear in the following order: (1)

Utility Application Transmittal Form; (2) Fee Transmittal Form; (3)

abstract of the disclosure; (4) title of the invention; or an

introductory portion stating the name, citizenship, and residence of

the applicant, and the title of the invention may be used; (5) cross-

reference to related applications; (6) statement regarding federally

sponsored research or development; (7) reference to a ``Microfiche

appendix; (8) background of the invention; (9), brief summary of the

invention; (10) brief description of the several views of the drawing;

(11), detailed description; (12) claim or claims; (13) drawings; (14)

executed oath or declaration; and (15) sequence listing. The phrase

``if applicable'' is proposed to be inserted in the heading, rather

than associated with any particular listed element, to clarify that

Sec. 1.77 does not per se require that an application include all of

the listed elements, but merely provides that any listed element

included in the application should appear in the order set forth in

Sec. 1.77. Section 1.77, as proposed, would further provide that the

(1) abstract of the disclosure; (2) title of the invention; (3) cross-

reference to related applications; (4) statement regarding federally

sponsored research or development; (5) background of the invention; (6)

brief summary of the invention; (7) brief description of the several

views of the drawing; (8) detailed description; (9) claim or claims;

and (10) sequence listing, should appear in upper case, without

underlining or bold type, as section headings, and if no text follows

the section heading, the phrase ``Not Applicable'' should follow the

section heading. Finally, Sec. 1.77, as proposed, would be amended to

change the reference to Sec. 1.96(b) in Sec. 1.77(c)(2),

Sec. 1.77(a)(7) as proposed, to Sec. 1.96(c) for consistency with

Sec. 1.96, as proposed.

Section 1.78(a)(2), as proposed, would provide that any claim to

the benefit of any prior filed copending nonprovisional application or

international application designating the United States of America must

be stated within two months of filing or fourteen months from the

filing date of the prior application, whichever is later, and must

include an identification of the prior application by application

number.

Section 1.78(a)(3), as proposed, would delete the sentence

``[s]ince a provisional application can be pending for no more than

twelve months, the last day of pendency may occur on a Saturday,

Sunday, or Federal holiday within the District of Columbia which for

copendency would require the nonprovisional application to be filed

prior to the Saturday, Sunday, or Federal holiday.'' In view of the

proposed amendment in H.R. 1733 to 35 U.S.C. 119(e), the provisions of

Sec. 1.7 would be applicable to a nonprovisional application claiming

the benefit of a prior provisional application.

Section 1.78(a)(4), as proposed, would provide that any claim to

the benefit of any prior filed copending provisional application must

be stated within two months of filing or within fourteen months of the

filing date of the prior application, whichever is later, and must

include an identification of the prior application by application

number.

Section 1.78(a)(5), as proposed, would provide a procedure for the

acceptance of a delayed claim to priority under 35 U.S.C. 119(e), 120

or 121. The procedure would require the filing of a petition during the

pendency of the application requesting acceptance of the delayed claim,

the surcharge set forth in Sec. 1.17(u), and a statement that the delay

was unintentional.

Section 1.78(a)(6), as proposed, would provide that the time

periods set forth in this paragraph, i.e., two months of filing or

within fourteen months of the filing date of the prior application as

set forth in Secs. 1.78 (a)(2) and (a)(4), and during the pendency of

the application

[[Page 42365]]

as set forth in Sec. 1.78(a)(5), cannot be extended.

Section 1.78(c), as proposed, would change ``two or more

applications or an application and a patent'' to ``an application or a

patent under reexamination and an application or a patent'' such that

the provisions of Sec. 1.78(c) will also be applicable to a patent

under reexamination. Section 1.78(c), as proposed, would further

correct ``inventors and owned by the same party contain conflicting

claims'' to read ``inventors are owned by the same party and contain

conflicting claims.''

Section 1.78(d), as proposed, would change ``obviousness-type

double patenting rejection'' to ``non-statutory double patenting

rejection'' as current examining procedures authorize non-obviousness-

type double patenting rejections, as well as obviousness-type double

patenting rejections (MPEP 804(II)), and either may be obviated by

filing a terminal disclaimer in accordance with Sec. 1.321(b). Section

1.78(d), as proposed, would further change each instance of

``application'' to ``application or a patent under reexamination'' for

consistency with Sec. 1.321(b) and to clarify that double patenting is

a proper consideration in reexamination (Ex parte Obiaya, 227 USPQ 58,

60-61 (Bd. Pat. App. & Inter. 1985)), and that a non-statutory double

patenting rejection in a patent under reexamination may be obviated by

filing a terminal disclaimer in accordance with Sec. 1.321(b).

Section 1.84(c), as proposed, would provide that a reference to the

application number, or, if an application number has not been assigned,

the inventor's name, may be included in the left-hand corner of the

drawing sheet, provided that reference appears within 1.5 cm. (\9/16\

inch) from the top of the sheet. As the back side of a drawing sheet

will not be scanned into the electronic data base, an applicant can

include other identifying indicia on the back side the drawing sheet.

Section 1.84(f), as proposed, would provide that the size of all

drawing sheets in an application must be either 21.0 cm. by 29.7 cm.

(DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches) to conform

to the requirement in Sec. 1.52(b) concerning papers in an application.

Section 1.84(g), as proposed, would be amended to delete the margin

requirements for the sheet sizes that would no longer be acceptable if

the proposed change to Sec. 1.84(f) were adopted. Section 1.84(g), as

proposed, would be further amended to provide that, to facilitate

digital image scanning of the drawing sheets, the sheets should have

scan targets (cross-hairs) on two cater-corner margin corners. Finally,

Sec. 1.84(g), as proposed, would increase the bottom and side margins

such that each sheet must include a top margin of at least 2.5 cm. (1

inch), a left side margin of at least 2.5 cm. (1 inch), a right side

margin of at least 1.5 cm. (\9/16\ inch), and a bottom margin of at

least 1.0 cm. (\3/8\ inch), thereby leaving a sight no greater than

17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4) drawing

sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6\15/16\ by

9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inch) drawing

sheets.

Section 1.84(j), as proposed, would provide that one of the views

should be suitable for publication in the Patent Application Notice,

and the Gazette of Patent Application Notices, as well as the Official

Gazette, as the illustration of the invention.

Section 1.84(x), as proposed, would be amended to delete the

provisions indicating the proper location for holes in a drawing sheet,

and provide that no holes should be provided in the drawing sheets.

Section 1.85, as proposed, would provide that drawings must be

suitable for ``electronic'' reproduction ``by digital imaging'' before

being admitted for examination. As discussed supra, as a drawing figure

will be included in the Gazette Entry in the Gazette of Patent

Application Notices and the Patent Application Notice, drawings

suitable for electronic reproduction by digital imaging would be

necessary for the initial processing of the application.

Section 1.96, as proposed, would be amended to designate the text

preceding current paragraph (a) as paragraph (a), and would redesignate

current paragraphs (a) and (b) as paragraphs (b) and (c), respectively.

New Sec. 1.96(a), as proposed, would be further amended to insert a

period between ``specification'' and ``[a] computer,'' to change

``these rules'' to ``this section,'' and to change ``may be submitted

in patent applications in the following forms'' to ``may be submitted

in patent applications as set forth in paragraphs (b) and (c) of this

section.

New Sec. 1.96(b), as proposed, would be further amended to change

the sentences ``[t]he listing may be submitted as part of the

specification in the form of computer printout sheets (commonly 14 by

11 inches in size) for use as ``camera ready copy'' when a patent is

subsequently printed'' and ``[s]uch computer printout sheets must be

original copies from the computer with dark solid black letters not

less than 0.21 cm high, on white, unshaded and unlined paper, the

printing on each sheet must be limited to an area 9 inches high by 13

inches wide, and the sheets should be submitted in a protective cover''

to ``[a]ny listing submitted as part of the specification must be

original copies from the computer with dark solid black letters not

less than 0.21 cm high, on white, unshaded and unlined paper, and the

sheets should be submitted in a protective cover,'' to delete the

sentence ``[w]hen printed in patents, such computer printout sheets

will appear at the end of the description but before the claims and

will usually be reduced about \1/2\ in size with two printout sheets

being printed as one patent specification page,'' and to delete the

phrase ``if the copy is to be used for camera ready copy.'' Section

1.96(a)(1), new Sec. 1.96(b)(1) as proposed, currently provides that

the requirements of Sec. 1.84 apply to computer program listings

submitted as sheets of drawings, and Sec. 1.96(a)(2), new

Sec. 1.96(b)(2) as proposed, currently provides that the requirements

of Sec. 1.52 apply to computer program listings submitted as part of

the specification. Section 1.52(b), as proposed, would require that the

sheets of paper be the same size and either 21.0 cm. by 29.7 cm. (DIN

size A4) or 21.6 cm. by 27.9 cm (8\1/2\ by 11 inches), with a top

margin of at least 2.0 cm. (\3/4\ inch), a left side margin of at least

2.5 cm. (1 inch), a right side margin of at least 2.0 cm. (\3/4\ inch),

and a bottom margin of at least 2.0 cm. (\3/4\ inch), and Sec. 1.52(a),

as proposed, would require that application papers be legibly typed in

permanent dark ink in portrait orientation.

New Sec. 1.96(c), as proposed, would be amended to change the

references to Sec. 1.77(c)(2) in new Sec. 1.96(c) to Sec. 1.77(a)(7)

for consistency with Sec. 1.77, as proposed, to change ``may'' and

``should'' to ``must,'' to delete the sentence ``[a]ll computer program

listings submitted on paper will be printed as part of the patent,'' to

relocate the phrase ``except as modified or clarified below'' in

subsection (c)(2), to change the phrase ``computer-generated

information submitted as an appendix to an application for patent shall

be in the form of microfiche in accordance with the standards'' to

``computer-generated information submitted as a ``microfiche appendix''

to an application shall be in accordance with the standards'' for

clarity, to change to sentences ``[e]ither Computer-Output-Microfilm

(COM) ouput or copies of photographed paper copy may be submitted'' and

``[i] the former case, NMA standards MS1 and MS2 apply; in

[[Page 42366]]

the latter case, standard MS5 applies'' to ``[c]omputer-Output-

Microfilm (COM) ouput may be submitted in accordance with either NMA

standard MS1 or MS2,'' to change ``serial number'' to ``application

number,'' and to provide metric dimensions with English equivalents in

parentheticals, rather than vice versa.

Section 1.97(a)-(d), as proposed, would be amended to include the

phrase ``for an applicant for patent or for reissue of a patent, or an

owner of a patent under reexamination'' in paragraph (a) and ``by the

applicant or patent owner'' to clarify that Sec. 1.97 is not available

for any third party seeking to have information considered in a pending

application. Any third party seeking to have information considered in

a pending application must proceed under Secs. 1.291 or 1.292, both

discussed infra. Section 1.97(c), as proposed, would be further amended

to correct the phrase ``certification as specified in paragraph (3) of

this section'' to read ``certification as specified in paragraph (e) of

this section.''

Section 1.98, as proposed, would provide that any Patent

Application Notice or Technical Contents Publication listed in an

information disclosure statement must be identified by applicant,

Patent Application Notice number or Technical Contents Publication

number and publication date. Section 1.98, as proposed, would also

limit those U.S. patent applications of which a copy need not be

included to unpublished applications.

Section 1.107, as proposed, would provide that if domestic

published applications are cited by the examiner, their Technical

Contents Publication number, publication date, the names of the

applicants must be stated. Section 1.107, as proposed, would be amended

to delete the phrase ``and the classes of inventions.''

Section 1.108, as proposed, would further except published

applications from those abandoned applications that will not be cited

as references.

Section 1.131(a), as proposed, would include pending or patented

U.S. published applications which substantially show or describe but do

not claim the same patentable invention, as defined in Sec. 1.601(n),

and abandoned U.S. published applications as references to which the

provisions of Sec. 1.131 apply. Pending or patented U.S. applications

would be treated in the same manner that U.S. patents are currently

treated, i.e., Sec. 1.131 would apply only if the pending or patented

application does not claim the same patentable invention. Abandoned

U.S. published applications would be treated in the manner that foreign

patents or printed publications are currently treated. As U.S.

published applications, either pending, abandoned or patented, may

constitute prior art under 35 U.S.C. 102(a) or (e), this change, and

the change to Sec. 1.132 infra, are necessary to accommodate such

references.

In a Notice of Proposed Rulemaking published in the Federal

Register at 59 FR 49876 (September 30, 1994) and in the Official

Gazette at 1167 Off. Gaz. Pat. Office 96-97 (October 25, 1994)

(Sec. 1.131 Notice of Proposed Rulemaking), Sec. 1.131(a) was proposed

to be amended to, inter alia, broaden its application to instances in

which inventions of a pending application or patent under reexamination

and a patent held by a single party are not identical as set forth in

35 U.S.C. 102, but not patentably distinct, and changes to Sec. 1.131

were adopted as a final rule. 60 FR 21043 (May 1, 1995); 1174 Off. Gaz.

Pat Office 155 (May 30, 1995). An amendment to Sec. 1.131(a) was

proposed in the Sec. 1.131 Notice of Proposed Rulemaking to avoid a

potential conflict between Sec. 1.131(a) and Sec. 1.602(a) in instances

in which Sec. 1.131(a) prohibits the filing of affidavits or

declarations thereunder when the same patentable invention as defined

in Sec. 1.601(n) is being claimed, but Sec. 1.602(a) prohibits, unless

good cause is shown, the declaration or continuance of an interference

when the application(s) and patent are owned by a single party. While

this conflict between two pending applications can be avoided by filing

a continuation-in-part application merging the conflicting inventions

into a single application, this conflict can result in hardship where

there is a pending application and an issued patent that can no longer

be merged by filing a continuation-in-part application.

Specifically, the proposed amendment to Sec. 1.131(a) in the

Sec. 1.131 Notice of Proposed Rulemaking would have permitted the

filing of an affidavit or declaration thereunder in a pending

application or patent under reexamination to avoid a rejection under 35

U.S.C. 103 based upon a patent which qualifies as prior art only under

35 U.S.C. 102(a) or (e) where the pending application or patent under

reexamination and patent upon which the rejection was based were owned

by a single party. This proposed amendment to Sec. 1.131(a) in the

Sec. 1.131 Notice of Proposed Rulemaking, however, was withdrawn in the

final rule to permit further study.

Section 1.131(a), as currently proposed, would permit a showing of

prior invention in a pending application or patent under reexamination

to avoid a rejection under 35 U.S.C. 103 based upon a patent which

qualifies as prior art only under 35 U.S.C. 102(a) or (e), where the

application or patent under reexamination and the patent upon which the

rejection is based are both owned by a single party, so long as the

invention claimed in the pending application or patent under

reexamination and in the other patent are not identical as set forth in

35 U.S.C. 102. Section 1.131(a)(3), as proposed, would not require

common ownership at the time the latter invention was made, but

consistent with Sec. 1.602(a), would require only that there be common

ownership when the Sec. 1.131 affidavit or declaration is under

consideration.

Where the patent upon which the rejection is based is not prior art

under 35 U.S.C. 102 (a) or (e), but is prior art only under 35 U.S.C.

102(f) or (g), to the pending application or patent under

reexamination, and the invention claimed in the pending application or

patent under reexamination is not identical as set forth in 35 U.S.C.

102, the issue is whether the subject matter of the other patent and

the invention claimed in the pending application or patent under

reexamination were, at the time the invention was made, owned by the

same person or subject to an obligation of assignment to the same

person, i.e., whether the patent upon which the rejection is based is

disqualified as prior art under the second paragraph of 35 U.S.C. 103,

and Secs. 1.78 (c) and (d) are applicable to this issue. Where,

however, the patent upon which the rejection is based is prior art

under 35 U.S.C. 102(a) or (e), it cannot be disqualified as prior art

under the second paragraph of 35 U.S.C. 103, and as such Secs. 1.78 (c)

and (d) are inapplicable. Section 1.131(a)(3), as currently proposed,

would permit a showing of prior invention in an application or patent

under reexamination where the application or patent under reexamination

and patent upon which the rejection was based were owned by a single

party.

As the conflict between two pending applications can be avoided by

filing a continuation-in-part application merging the conflicting

inventions into a single application, Sec. 1.131(a)(3), as proposed,

provides only for a showing of prior invention to avoid a rejection

based upon a patent. In situations in which two pending applications

claiming patentably indistinct but not identical inventions are held by

a single party but cannot be merged into a single application,

petitions under Sec. 1.183 will be entertained for waiver of the

Sec. 1.131

[[Page 42367]]

requirement that the rejection be based upon a patent.

Section 1.131, as proposed, would not affect a statutory or non-

statutory double patenting rejection. Specifically, affidavits or

declarations under Sec. 1.131 will continue to be ineffective where the

claims of the pending application or the patent undergoing

reexamination are rejected under 35 U.S.C. 101 for double patenting and

the claims of the pending application or the patent under reexamination

claim the identical invention of a patent. However, where patentably

indistinct but not identical inventions are claimed, a non-statutory

double patenting rejection can be overcome by filing an appropriate

terminal disclaimer.

Section 1.132, as proposed, would change ``domestic'' to ``U.S.''

for consistency with Sec. 1.131, and would include U.S. pending

published applications which substantially show or describe but do not

claim the invention, and abandoned published applications as references

to which the provisions of Sec. 1.132 apply for the reasons discussed

supra.

Section 1.136(a), as proposed, would provide that extensions under

Sec. 1.136(a) are not available where the response is to a requirement

for an English translation, an abstract or claims on a separate sheet,

or substitute specification or sheets of drawings of sufficient

clarity, contrast, and quality and in the proper size and format for

electronic reproduction submitted pursuant to Secs. 1.52(d), 1.53(d),

1.60(d), 1.62(d), 1.494(c), or 1.495(c), or an oath or declaration

submitted pursuant to Secs. 1.494(c) or 1.495(c).

Section 1.138, as proposed, would add ``or publication'' to the end

of the sentence that ``express abandonment of the application may not

be recognized by the Office unless it is actually received by

appropriate officials in time to act thereon before the date of issue''

to clarify that the express abandonment must be filed in sufficient

time to permit its correlation with the application file and the

termination of the publication process. Section 1.138, as proposed,

would further provide that an applicant seeking to abandon an

application to avoid publication of the application must submit a

proper letter of express abandonment at least two months prior to the

projected date of publication to allow sufficient time to permit the

appropriate officials to recognize the abandonment and remove the

application from the publication process, and that unless an applicant

receives written acknowledgement of the letter of express abandonment

prior to the projected date of publication, applicant should expect

that the application will be published in due course.

Section 1.154, as proposed, would provide that the elements of a

design application, if applicable, should appear in the following

order: (1) Design Application Transmittal Form; (2) Fee Transmittal

Form; (3) preamble, stating name of the applicant and title of the

design; (4) cross-reference to related applications; (5), statement

regarding federally sponsored research or development; (6) description

of the figure or figures of the drawing; (7) description; (8) claim;

(9) drawings or photographs; and (10) executed oath or declaration. The

phrase ``[t]he following order of arrangement should be observed in

framing design specifications'' is proposed to be changed to ``[t]he

elements of the design application, if applicable, should appear in the

following order'' to clarify that Sec. 1.154 does not per se require

that an application include all of the listed elements, but merely

provides that any listed element included in the application should

appear in the order set forth in Sec. 1.154.

A new Sec. 1.163(c), as proposed, would be added to provide that

the elements of a plant application, if applicable, should appear in

the following order: (1) Plant Application Transmittal Form; (2) Fee

Transmittal Form; (3) abstract of the disclosure; (4) title of the

invention; (5) cross-reference to related applications; (6) statement

regarding federally sponsored research or development; (7) background

of the invention; (8) brief summary of the invention; (9) brief

description of the drawing; (10) detailed botanical description; (11)

claim; (12) drawings (in duplicate); (13) executed oath or declaration;

and (14) Plant Color Coding Sheet. The phrase ``if applicable'' is

proposed to be included in the heading, rather than associated with any

particular listed element, to clarify that Sec. 1.163 does not per se

require that an application include all of the listed elements, but

merely provides that any listed element included in the application

should appear in the order set forth in Sec. 1.163.

A new Sec. 1.163(d), as proposed, would be added to define a plant

color coding sheet. A plant color coding sheet is a sheet that

specifies a color coding system as designated in a recognized color

dictionary, and lists every plant structure to which color is a

distinguishing feature and the corresponding color code which best

represents that plant structure. The plant color coding sheet will

provide a means for applicants to uniformly convey detailed color

characteristics of the plant. Providing this information is a

systematic manner will facilitate the examination of the application.

Section 1.291, as proposed, would provide that a protest must be

filed within two months of the date the application is published or

prior to the mailing of a Notice of Allowance, whichever occurs first,

to be considered timely, and that any protest submitted after

publication must be accompanied by the fee set forth in Sec. 1.17(t).

In addition, Sec. 1.291(a)(2), as proposed, would require that any

protest filed after the date the application was published be served

upon the applicant in accordance with Sec. 1.248, i.e., filing two

copies of the protest in the Office would not be acceptable. As a

protest cannot be considered subsequent to issuance of the application

as a patent, Sec. 1.291(b), as proposed, would provide that the protest

will be considered if the application is still pending when the protest

and application file is brought before the examiner, i.e., that the

application was pending at the time the protest was filed would be

immaterial to its ultimate consideration. Finally, Sec. 1.291, as

proposed, would further locate the sentences ``[p]rotests raising fraud

or other inequitable conduct issues will be entered in the application

file, generally without comment on those issues'' and [p]rotests which

do not adequately identify a pending patent application will be

disposed of and will not be considered by the Office'' in paragraph

(b).

Section 1.292, as proposed, would be amended to delete the phrase

``is filed by one having information of the pendency of an

application'' as applications will no longer necessarily be maintained

in confidence throughout their entire pendency, and would move the

requirement for the fee set forth in Sec. 1.17(j) from paragraph (a) to

paragraph (b) where the conditions for entry of a petition for the

institution of public use proceedings are set forth. Section 1.292, as

proposed, would further require that any petition filed after the date

the application was published be served on the applicant in accordance

with Sec. 1.248. Finally, Sec. 1.292, as proposed, would provide that a

petition to institute public use proceedings must be filed within two

months of the date the application is published or prior to the mailing

of a Notice of Allowance, whichever occurs first, to be considered

timely.

Sections 1.305 through 1.309 are proposed to be added to set forth

the procedures for the 18-month publication of patent applications.

Section 1.305, as proposed, would provide that applications may be

[[Page 42368]]

withdrawn from publication at the initiative of the Office or upon

request by the applicant. The basis for the withdrawal of an

application from publication would be limited to: (1) A mistake on the

part of the Office, e.g., the application is abandoned or has issued as

a patent, or the projected publication date is not at 18 months from

the earliest filing date for which a benefit is sought; (2) the

application is either national security classified or subject to a

secrecy order pursuant to 35 U.S.C. 181; or (3) express abandonment of

the application.

Section 1.306(a), as proposed, would provide that applications

under 35 U.S.C. 111(a), 161 or 371 will be published as soon as

possible after the expiration of a period of 18 months from the filing

date, including the earliest filing date for which a benefit is sought,

but excludes applications that: (1) Are national security classified or

subject to a secrecy order pursuant to 35 U.S.C. 181; (2) have issued

as a patent; (3) are recognized by the Office as no longer pending,

i.e., are abandoned; or (4) were previously published through early

publication.

Section 1.306(b), as proposed, would provide that the publication

of an application will include a notice designated as a ``Gazette

Entry'' containing information such as the application number, filing

date, title, inventor's name, abstract, a drawing figure, a

representative claim, and U.S. and IPC classification in a Gazette of

Patent Application Notices, and a printed publication designated as a

Patent Application Notice or PAN containing information such as the

application number, filing date, title, inventor's name, correspondence

address, abstract, a drawing figure, a representative claim, and U.S.

and IPC classification. In addition, Sec. 1.306(b), as proposed, would

provide that the publication of an application will include a document

designated as a Technical Contents Publication containing the Patent

Application Notice, and the specification, abstract, claims, and

drawings of the original application papers. Finally, Sec. 306(b), as

proposed, would provide that publication would include public access to

a copy of the specification, drawings, and all papers relating to the

application file in accordance with Sec. 1.11.

Section 1.306(c), as proposed, would provide that provisional

applications under 35 U.S.C. 111(b) shall not be published, and that

design applications under 35 U.S.C. 171 and reissue applications under

35 U.S.C. 251 shall not be published pursuant to Sec. 1.306. H.R. 1733,

if enacted, would not authorize the publication of design applications

(prior to their issuance as patents) or provisional applications.

Reissue applications are currently published through the announcement

in the Official Gazette of the filing of the reissue application, and

the opening of the application to public inspection in accordance with

Sec. 1.11(b).

Section 1.306(d), as proposed, would provide for the early

publication of applications. Any request for early publication of an

application should be filed as soon as possible, and must be by way of

petition, including the fee set forth in Sec. 1.17(i). In addition, any

application must include an abstract and claims on a separate sheet,

any substitute specification or drawings required pursuant to

Secs. 1.53(d), 1.60(d), or 1.62(d), and any English translation

required pursuant to Sec. 1.52(d). The Office cannot assure publication

of an application on any certain date, and, as such, requests for

publication on a date certain will be treated as a request for

publication as soon as possible. Finally, as H.R. 1733, if enacted,

would not authorize the publication of provisional applications, no

consideration will be given to any request for the early publication of

a provisional application.

Section 1.306(e), as proposed, would implement the provisions in

H.R. 1733 (35 U.S.C. 122(b)(2)) for, under limited circumstances, not

publishing an application under 35 U.S.C. 122(b) until three months

after an Office action under 35 U.S.C. 132. Section 1.306(e), as

proposed, would specifically provide that an applicant who is an

independent inventor and has been accorded status under 35 U.S.C. 41(h)

in an application that does not claim the benefit of an earlier filing

date under 35 U.S.C. 119, 120, 121, 365(a) or 365(c) may request that

the application not be published until three months after an action on

the merits, and that a petition requesting that the application not be

published until three months after an action on the merits must be

submitted on filing, and accompanied by the petition fee set forth in

Sec. 1.17(i) and a certification that the invention disclosed in the

application was not or will not be the subject of an application filed

in a foreign country, which certification must be verified if made by a

person not registered to practice before the Patent and Trademark

Office.

Section 1.307, as proposed, would provide for the delivery of the

printed publication, i.e., the Patent Application Notice or PAN, to the

correspondence address of record, which is the manner in which a patent

is currently delivered to the patentee.

Section 1.308, as proposed, would provide for the correction of the

printed publication, but such correction would be granted only for a

significant mistake made by the Office which is apparent from Office

records.

Section 1.315, as proposed, would change ``the attorney or agent of

record, if there be one; or if the attorney or agent so requests, to

the patentee or assignee of an interest therein; or, if there be no

attorney or agent, to the patentee or to the assignee of the entire

interest, if he so requests'' to ``the correspondence address of

record. See Sec. 1.33(a)'' for simplicity as patents are currently

mailed to the patentee at the correspondence address of record.

Section 1.321(c), as proposed, would change ``double patenting

rejection'' to ``non-statutory double patenting rejection'' for

consistency with Sec. 1.78(c), as proposed, and to clarify that the

filing of a terminal disclaimer is ineffective to overcome a statutory

double patenting rejection.

Section 1.492(a), as proposed, would increase the basic national

fee for international applications entering the national stage under 35

U.S.C. 371 to: (1) $710 ($355 for a small entity) where an

international preliminary examination fee as set forth in Sec. 1.482

has been paid on the international application to the Office; (2) $780

($390 for a small entity) where no international preliminary

examination fee as set forth in Sec. 1.482 has been paid to the Office,

but an international search fee as set forth in Sec. 1.445(a)(2) has

been paid on the international application to the Office as an

International Searching Authority; (3) $1040 ($520 for a small entity)

where no international preliminary examination fee as set forth in

Sec. 1.482 has been paid and no international search fee as set forth

in Sec. 1.445(a)(2) has been paid on the international application to

the Office; (4) $120 ($60 for a small entity) where the international

preliminary examination fee as set forth in Sec. 1.482 has been paid to

the Office and the international preliminary examination report states

that the criteria of novelty, inventive step (non-obviousness), and

industrial applicability, as defined in PCT Article 33(1) to (4) have

been satisfied for all the claims presented in the application entering

the national stage (see Sec. 1.496(b)); and (5) $910 ($455 for a small

entity) where a search report on the international application has been

prepared by the European Patent Office or the Japanese Patent Office.

Section 1.494 (c) and (g), as proposed, would provide that the

applicant will be given a time period within which to file an abstract

and claims on a separate

[[Page 42369]]

sheet, or substitute specification in compliance Sec. 1.125 with papers

typed on but one side of the paper or new sheets of drawings, each of

the substitute specification and sheets of drawings of sufficient

clarity, contrast, and quality, and in a proper size and format for

electronic reproduction in instances in which the application papers

did not comply with Secs. 1.52 (a) and (b), as proposed, or the

drawings were of such poor quality as to preclude their digital image

scanning into the electronic data base. Section 1.494(c), as proposed,

would further provide that extensions of time pursuant to Sec. 1.136(a)

would not be available for filing an English translation, oath or

declaration, abstract and claims on a separate sheet, and a substitute

specification with papers typed on but one side of the paper and sheets

of drawings, each of sufficient clarity, contrast, and quality and in

the proper size and format for electronic reproduction.

Section 1.495 (c) and (h), as proposed, would provide that the

applicant will be given a time period within which to file an abstract

and claims on a separate sheet, or substitute specification in

compliance Sec. 1.125 with papers typed on but one side of the paper or

new sheets of drawings, each of the substitute specification and sheets

of drawings of sufficient clarity, contrast, and quality, and in a

proper size and format for electronic reproduction in instances in

which the application papers did not comply with Secs. 1.52 (a) and

(b), as proposed, or the drawings were of such poor quality as to

preclude their digital image scanning into the electronic data base.

Section 1.495(c), as proposed, would further provide that extensions of

time pursuant to Sec. 1.136(a) would not be available for filing an

English translation, oath or declaration, abstract and claims on a

separate sheet, and a substitute specification with papers typed on but

one side of the paper and sheets of drawings, each of sufficient

clarity, contrast, and quality and in the proper size and format for

electronic reproduction.

The proposed rules to implement 18-month publication provide that

extensions of time pursuant to Sec. 1.136(a) are not available for

submissions which will affect the publication of the application.

Section 1.53(d)(1), as proposed, does not exclude extensions of time

pursuant to Sec. 1.136(a) for the filing of an oath or declaration as

the absence of an oath or declaration for an application filed under 35

U.S.C. 111(a) does not affect the publication of the application.

Section 1.306(a), as proposed, does not provide for the publication of

a national application for patent which resulted from an international

application until after compliance with 35 U.S.C. 371, and an

international application is not in compliance with 35 U.S.C. 371 until

an oath or declaration is filed. See 35 U.S.C. 371(c)(4). Therefore,

the absence of an oath or declaration will affect the publication of an

application under 35 U.S.C. 371. Accordingly, Secs. 1.494(c) and

1.495(c), unlike Sec. 1.53(d)(1), provide that the period for filing

the oath or declaration cannot be extended pursuant to Sec. 1.136(a) to

consistently provide that extensions of time pursuant to Sec. 1.136(a)

are not available for submissions which will affect the publication of

the application.

Section 1.497(a), as proposed, would be amended to provide that an

applicant in an international application must file an oath or

declaration that: (1) is executed in accordance with either Secs. 1.66

or 1.68, (2) identifies the specification to which it is directed, (3)

identifies each inventor and the country of citizenship of each

inventor, and (4) states that the person making the oath or declaration

believes the named inventor or inventors to be the original and first

inventor or inventors of the subject matter which is claimed and for

which a patent is sought, rather than an oath or declaration in

accordance with Sec. 1.63, to enter the national stage pursuant to

Secs. 1.494 or 1.495. Currently, the failure to file an oath or

declaration in strict compliance with Sec. 1.63 results in non-

compliance with Sec. 1.497, and thus 35 U.S.C. 371, which in turn

delays the entry of the international application into the national

stage. To expedite the entry of international applications into the

national stage, Sec. 1.497(a), as proposed, would require only an oath

or declaration that is properly executed, identifies the specification

to which it is directed, and, as required by 35 U.S.C. 115, identifies

each inventor and the country of citizenship of each inventor and

states that the person making the oath or declaration believes the

named inventor or inventors to be the original and first inventor or

inventors of the subject matter which is claimed and for which a patent

is sought.

Section 1.497(b), as proposed, would be subdivided into paragraphs

(b)(1) and (b)(2). Section 1.497(b)(1), as proposed, would provide that

the oath or declaration must be made by all of the actual inventors

except as provided for in Secs. 1.42, 1.43 or 1.47. Section

1.497(b)(2), as proposed, would change ``[i]f the international

application was made as provided in Secs. 1.422, 1.423 or 1.425, the

applicant shall state his or her relationship to the inventor and, upon

information and belief, the facts which the inventor is required by

Sec. 1.63 to state'' to ``[i]f the person making the oath or

declaration is not the inventor (Secs. 1.42, 1.43 or 1.47), the oath or

declaration shall state the relationship of the person to the inventor

and, upon information and belief, the facts which the inventor is

required to state'' such that Sec. 1.497(b), as proposed, would be

parallel to Sec. 1.64.

Section 1.497(c), as proposed, would be added to provide that the

oath or declaration must comply with the requirements of Sec. 1.63.

Section 1.497(c), as proposed, would further provide that in instances

in which the oath or declaration does not comply with Sec. 1.63, but

meets the requirements of Sec. 1.497 (a) and (b), as proposed, the oath

or declaration will be accepted as complying with 35 U.S.C. 371(c)(4)

and Secs. 1.494(c) or 1.495(c), thus permitting the application to

enter the national stage and the assignment of dates under 35 U.S.C.

102(e) and 371(c). A supplemental oath or declaration in compliance

with Sec. 1.63, however, will be required in accordance with Sec. 1.67.

Section 1.701(a), as proposed, would add ``an unusual

administrative delay by the Office'' to the bases for extension of

patent term due to prosecution delay. H.R. 1733 provides that the

Commissioner shall prescribe regulations to govern the particular

circumstances deemed to be an unusual administrative delay. Section

1.701(a)(4)(i), as proposed, would set forth the failure to act on a

reply under Sec. 1.111 or appeal brief under Sec. 1.192 within six

months of the date it was filed; the failure to act on an application

within six months of the date of a decision under Sec. 1.196 by the

Board of Patent Appeals and Interferences where claims stand allowed in

an application or the nature of the decision requires further action by

the examiner; and the failure to issue a patent within six months of

the date that the issue fee was paid and all outstanding requirements

were satisfied as circumstances constituting a prima facie unusual

administrative delay. In an application entitled to an extension under

Sec. 1.701(a)(3), however, any unusual administrative delay during the

appellate proceeding would be disregarded under Sec. 1.701(a)(4) in

accordance with the ``not overlapping'' provision in Sec. 1.701(b).

Requests for patent term extension based upon circumstances not

specifically set forth in Sec. 1.701(a)(4)(i) as a prima facie unusual

administrative delay must be specifically requested by petition and

would be considered on a case-by-case basis. Section 1.701(a), as

proposed,

[[Page 42370]]

would further add ``subject to the provisions of this section'' and

delete the phrase ``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'' from paragraph (a)(3).

Section 1.701(b), as proposed, would add paragraph (c)(4) to those

paragraphs summed in calculating the period of extension, and change

the maximum extension from five years to ten years in accordance with

H.R. 1733.

Section 1.701(c), as proposed, would provide that the period of

delay is the sum of the number of days, if any, in the period of

unusual delay by the Office. That is, the ordinary delay in processing

and examining an application would not be included under Sec. 1.701(c),

as proposed, in determining the extension under Sec. 1.701(b). For

example, (1) where there was a failure to act on a reply under

Sec. 1.111 within six months of the date it was filed, the period of

delay is the number of days in excess of six months, if any, in the

period beginning on the date a reply under Sec. 1.111 was filed and

ending on the mailing date of an action in response thereto, (2) where

there was a failure to act on an appeal brief under Sec. 1.192 within

six months of the date it was filed, and the application is not

entitled to an extension under Sec. 1.701(a)(3), the period of delay is

the number of days in excess of six months, if any, in the period

beginning on the date an appeal brief under Sec. 1.192 was filed and

ending on the mailing date of either a notification under Sec. 1.192(d)

or examiner's answer under Sec. 1.193, and (3) where there was a

failure to issue a patent within six months of the date that the issue

fee was paid and all outstanding requirements were satisfied,

Sec. 1.701(a)(3), the period of delay is the number of days in excess

of six months, if any, in the period beginning on the date the issue

fee was paid or all outstanding requirements were satisfied, whichever

is later, and the date the patent was issued.

Section 1.701(d), as proposed, would change ``[t]he period of delay

set forth in paragraph (c)(3)'' to ``[t]he period set forth in

paragraph (c),'' as the limitation on patent term extension in H.R.

1733 based upon an applicant's failure to engage in reasonable efforts

to conclude processing or examination of the application is not limited

to extension under 35 U.S.C. 154(b)(2), i.e., delays during appellate

proceedings. Section 1.701(d), as proposed, would further delete ``any

time during the period of appellate review that occurred before three

years from the filing date of the first national application for a

patent presented for examination.'' Public Law 103-465 provides that

extensions under 35 U.S.C. 154(b)(2) shall be reduced by any time

during the period of appellate review that occurred before three years

from the filing date of the first national application for patent

presented for examination, where H.R. 1733 provides only that no patent

shall be extended under 35 U.S.C. 154(b) that has issued before the

expiration of three years after the filing date of the application or

entry of the application into the national stage under 35 U.S.C. 371,

whichever is later, not taking into account any claim to the benefit of

the filing date of any application under 35 U.S.C. 120, 121, or 365(c).

Section 1.701(d), as proposed, would further change ``any time

during the period of appellate review, as determined by the

Commissioner, during which the applicant for patent did not act with

due diligence'' and ``[i]n determining the due diligence of an

applicant, the Commissioner may examine the facts and circumstances of

the applicant's actions during the period of appellate review to

determine whether the applicant exhibited that degree of timeliness as

may reasonably be expected from, and which is ordinarily exercised by,

a person during a period of appellate review'' to ``any time during the

processing or examination of the application, as determined by the

Commissioner, during which the applicant for patent failed to engage in

reasonable efforts to conclude processing or examination of the

application,'' ``[i]n determining whether an applicant failed to engage

in reasonable efforts to conclude processing or examination of the

application, the Commissioner may examine the facts and circumstances

of the applicant's actions during the entire prosecution 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, an applicant for patent seeking to conclude the

processing or examination of the application,'' and ``[c]ircumstances

constituting a failure to engage in reasonable efforts to conclude

processing or examination of the application include: (1) requesting

suspension of action under Sec. 1.103, and (2) abandonment of the

application.''

H.R. 1733 provides that the period of extension under 35 U.S.C.

154(b) shall be reduced by a period equal to the time during the

processing or examination of the application leading to the patent in

which the applicant failed to engage in reasonable efforts to conclude

processing or examination of the application and that the Commissioner

shall prescribe regulations establishing the circumstances that

constitute a failure of an applicant to engage in reasonable efforts to

conclude processing or examination of an application. Section

Sec. 1.701(d) specifically sets forth requesting suspension of action

under Sec. 1.103 and abandonment of the application as examples of

prima facie failures to engage in reasonable efforts to conclude

processing or examination of the application. In determining whether an

applicant engaged in reasonable efforts to conclude processing or

examination of the application, however, the facts and circumstances of

applicant's actions during the entire prosecution of the application

will be considered on a case-by-case basis to determine whether the

applicant exhibited that degree of timeliness as may reasonably be

expected from, and which is ordinarily exercised by, an applicant for

patent seeking to conclude the processing or examination of the

application. As such, it is not possible to list all of the specific

circumstances in Sec. 1.701(d). That is, circumstances other than the

examples specifically set forth Sec. 1.701(d) may, on a case-by-case

basis, be considered the failure to engage in reasonable efforts to

conclude the processing or examination of the application.

A new Sec. 1.701(e), as proposed, would provide that no patent

shall be extended under this section: (1) beyond the expiration date

specified in a terminal disclaimer in a patent whose term has been

disclaimed in such terminal disclaimer, or (2) an instance in which the

patent issued before the expiration of three years after the filing

date of the application or entry of the application into the national

stage under 35 U.S.C. 371, whichever is later, not taking into account

any claim to the benefit of the filing date of any application under 35

U.S.C. 120, 121, or 365(c). H.R. 1733 provides these limitations on

extensions under 35 U.S.C. 154(b).

A new Sec. 1.701(f), as proposed, would provide that any extension

of patent term under Sec. 1.701(a)(4) on the basis of an administrative

delay other than one specifically set forth in Secs. 1.701(a)(4)(i)(A)-

(C) must be requested by petition. Due to the necessity for

individualized determinations of patent term extensions based upon

prosecution delay due to an unusual administrative delay by the Office

not specifically provided for, such extensions of patent term under

Sec. 1.701(a)(4) must be specifically requested by petition in a timely

manner. Section 1.701(f), as proposed, would specifically provide

[[Page 42371]]

that any petition for patent term extension based upon Sec. 1.701(a)(4)

for an unusual administrative delay by the Office other than one

specifically set forth in Secs. 1.701(a)(4)(i)(A)-(C) cannot be filed

prior to the mailing of a notice of allowance under Sec. 1.311 and must

be accompanied by a statement of the facts involved, the administrative

delay by the Office to be reviewed, the period of extension requested,

and the fee set forth in Sec. 1.17(i). The petition may include a

request that the petition fee be refunded if an extension of the patent

term under Sec. 1.701(a)(4) is granted.

Section 1.808(a), as proposed, would provide that upon the

publishing of the application, all restrictions imposed by the

depositor on the availability to the public of the deposited material

will be irrevocably removed, subject to provisions of Sec. 1.808(b).

Section 3.31, as proposed, would provide that the assignment cover

sheet may, but need not, include an indication that the assignment

information is to be printed on the Patent Application Notice. Section

3.31, as proposed, would further provide that, due to constraints in

the publication process, any such indication not submitted within two

months of filing or fourteen months from the earliest filing date for

which a benefit is claimed, whichever is later, may result in the

assignment information not being printed on the Patent Application

Notice.

Section 5.1, as proposed, would include a new paragraph (c) which

would provide defense agencies adequate time to complete national

security review under 35 U.S.C. 181 before an application would be

released for publication under Sec. 1.306. Specifically, the period for

completion of a defense agency review would be six (6) months from the

actual U.S. filing date for applications filed under 35 U.S.C. 111(a)

or three (3) months from the date the application was made available to

the defense agency for review, whichever is later.

Section 5.1, as proposed, would further include a new paragraph (d)

which would set forth the current practice that applications on

inventions not made in the United States and on inventions in which the

Federal Government has a known property interest are not made available

to defense agencies under Sec. 5.2(b).

A new Sec. 5.9, as proposed, would set forth the procedures for the

treatment of national security classified applications. The procedures

set forth in this section, except for those pertaining to the

publication of applications pursuant to Sec. 1.306, are the current

procedures for the treatment of national security classified

applications. It is, however, considered appropriate to implement these

procedures through the rulemaking process.

35 U.S.C. 181 authorizes the withholding of the grant of a patent

on an application that has been placed under a secrecy order; however,

title 35, United States Code, does not specifically authorize the

withholding of the grant of a patent on an application that is national

security classified, but not placed under a secrecy order.

Nevertheless, the Office is prohibited by Executive Order and statute

from disclosing a national security classified application. Therefore,

procedures for obtaining a secrecy order pursuant to 35 U.S.C. 181 on a

national security classified application, or the declassification of

such application, are necessary.

Section 5.9(a), as proposed, would provide that patent applications

and papers that are national security classified and contain authorized

national security markings of ``Confidential,'' ``Secret'' or ``Top

Secret'' are accepted by the Office, that national security classified

documents mailed to the Office must be addressed in compliance with

Sec. 5.33, and that national security classified documents may be hand-

carried to Licensing and Review.

Section 5.9(b), as proposed, would provide that a national security

classified patent application will not be published pursuant to

Sec. 1.306 or allowed pursuant to Sec. 1.311 of this chapter until the

application is declassified.

Section 5.9(c), as proposed, would clarify that, in a national

security classified application, it is the applicant's responsibility

to either obtain a secrecy order pursuant to Sec. 5.2, or have the

application declassified by the relevant department or agency. Section

5.9(c), as proposed, would further provide that in a national security

classified patent application filed without a notification pursuant to

Sec. 5.2(a), i.e., a recommendation for imposition of a secrecy order

from the relevant department or agency, the Office will set a time

period within which the application must be declassified, a secrecy

order must be obtained, or evidence of a good faith effort to obtain a

secrecy from the relevant department or agency must be presented in

order to prevent abandonment of the application.

Section 5.9(d), as proposed, would provide for instances in which,

after an effort to obtain a secrecy order, the national security

classified application has not been declassified and a secrecy order

has not been obtained. Section 5.9(d), as proposed, would specifically

provide that in each instance in which the national security classified

application has not been declassified and a secrecy order has not been

obtained, but the applicant has presented evidence of a good faith

effort to obtain a secrecy order, the Office will again set a time

period within which the application must be declassified, a secrecy

order pursuant to Sec. 5.2 must be obtained, or evidence of a good

faith effort to again obtain a secrecy order pursuant to Sec. 5.2 from

the relevant department or agency must be presented in order to prevent

abandonment of the application. This process will reiterate until the

application becomes abandoned, e.g., through a lack of a good faith

effort to obtain a secrecy order or failure to prosecute under 35

U.S.C. 133, the application is declassified, or a secrecy order is

obtained.

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. It has been determined that this rulemaking is significant for the

purposes of Executive Order 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 these 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 proposed changes is to require that application papers

be filed in a format which permits their digital image and OCR scanning

into an electronic data base, and that claims for the benefit of the

filing date of prior foreign and domestic applications be submitted

promptly to permit publication of the application at 18 months from the

earliest filing date for which a benefit is sought.

The Office has also determined that this notice has no Federalism

implications affecting the relationship between the National Government

and the States as outlined in Executive Order 12612.

These proposed rule changes contain a collection of information

requirements subject to the Paperwork Reduction Act of 1980, 44 U.S.C.

3501 et seq. The initial patent application filing is

[[Page 42372]]

currently approved by the Office of Management and Budget under Control

No. 0651-0032. Public reporting burden for the collection of

information for filing the initial patent application is estimated to

average 11 hours 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.

The Fee Transmittal form, Utility Patent Application Transmittal

form, Design Patent Application Transmittal form, Plant Patent

Application Transmittal form, Plant Color Coding Sheet, Declaration

form, and Plant Patent Application Declaration form will reduce the

burden and uncertainty associated with the submission of an application

and related information, and enhance the Office's ability to use

standardized automation routines (optical character recognition, etc.)

to record and process information concerning applications. Public

reporting burden for these collections of information is estimated to

average: (1) 12 minutes per response for the Fee Transmittal form, (2)

12 minutes per response for the Utility Patent Application Transmittal

form, (3) 12 minutes per response for the Design Patent Application

Transmittal form, (4) 12 minutes per response for the Plant Patent

Application Transmittal form, (5) 12 minutes per response for the Plant

Color Coding Sheet, (6) 24 minutes per response for the Declaration

form, and (7) 24 minutes per response for the Plant Patent Application

Declaration. These estimates include the time for reviewing

instructions, searching existing data sources, gathering and

maintaining the data needed, and completing and reviewing the

collections of information.

The assignment cover sheet is currently approved by the Office of

Management and Budget under Control No. 0651-0027. Public reporting

burden for the collection of information on the assignment cover sheet

is estimated to average 30 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 this

burden to the Office of Assistance Quality and Enhancement Division,

Patent and Trademark Office, Washington, D.C. 20231, and to the Office

of Information and Regulatory Affairs, Office of Management and Budget,

Washington, DC 20503 (ATTN: Paperwork Reduction Act Projects 0651-0027

and 0651-0032). The Fee Transmittal form, Utility Patent Application

Transmittal form, Design Patent Application Transmittal form, Plant

Patent Application Transmittal form, Plant Color Coding Sheet,

Declaration form, and Plant Patent Application Declaration form have

been submitted to the Office of Management and Budget for clearance

under the Paperwork Reduction Act. See 60 FR 35174 (July 6, 1995).

Written comments and recommendations for the proposed information

collection should be sent to Maya A. Bernstein, OMB Desk Officer, room

10236, New Executive Office Building, Washington, D.C. 20230.

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, Chapter I, 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.

37 CFR Part 5

Classified information, foreign relations, inventions and patents.

For the reasons set forth in the preamble, 37 CFR parts 1, 3 and 5

are proposed to be amended as follows, with removals indicated by

brackets ([]) and additions by arrows (>, patent

application notices, technical contents publicationsincluding a published application,(f) When a paper concerns a provisional application, it should

identify the application as such and include the application number.

(g) A paper relating to a patent application notice should identify

it as such and include the patent application notice number.(4)(b) A published application as used in this chapter means an

application for patent which has been published pursuant to 35 U.S.C.

122(b).(h) National security classified as used in this chapter means

specifically authorized under criteria established by 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

Act of Congress or Executive order.Thean abandoned

published application, a,a.A copy of the

specification, drawings, and all papers relating to the case in the

file of a published application, a patent, or statutory invention

registration may be obtained upon the payment of the fee set forth in

Sec. 1.19(b)(2).published

applications,which has not been published pursuant

to 35 U.S.C. 122(b)confidence, patent application notices,

technical contents publications, file wrapper and contents of published

applications,, patent application notices,

technical contents publications, file wrapper and contents of published

applications,confidence,which have not been published pursuant to 35 U.S.C.

122(b)confidence.application number orand filing date, a U.S. published application,a

published international application in whichor

unless the application claims the benefit of the filing date of an

application that has been referred to in a U.S. published application

or patent, or identified by application number or serial number and

filing date in a published patent document or a published international

application in which the United States of America has been indicated as

a Designated State, in which case the application number, filing date,

and status information such as whether it is pending, abandoned, or

patented may be supplied,Abandonedwhich have not been published pursuant to 35 U.S.C.

122(b)as provided

in Sec. 1.11(b) and as set forth below.Ifpublished application orapplication

open to public inspection pursuant to this section, application which

claims the benefit of the filing date of an application open to public

inspection pursuant to this section,an

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