# Changes to Implement 18-Month Publication of Patent Applications

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URL: https://www.frixlaw.com/law-library/documents/fr%3A95-18886

## Record

- **Collection:** Federal Register
- **Document type:** Proposed Rule
- **Published:** August 15, 1995
- **Citation:** 60 FR 42352

## Text

[[Page 42352]]

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

[[Page 42353]]
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.

[[Page 42354]]

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,

[[Page 42355]]
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.

[[Page 42356]]

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A95-18886. Public record. Not legal advice.