Changes To Implement 20-Year Patent Term and Provisional Applications

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 3

[Docket No. 950404087-5087-01]

RIN 0651-AA76

Changes To Implement 20-Year Patent Term and Provisional

Applications

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (PTO) is amending the rules of

practice in patent cases to establish procedures for: filing and

processing provisional application papers; calculating the length of

any patent term extension to which an applicant is entitled where the

issuance of a patent on an application filed on or after June 8, 1995

(the implementation date of the 20-year patent term provisions of the

Uruguay Round Agreements Act), other [[Page 20196]] than for designs,

was delayed due to interference proceedings, the imposition of a

secrecy order and/or appellate review; and implementing certain

transitional provisions contained in the Uruguay Round Agreements Act.

EFFECTIVE DATE: June 8, 1995.

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

Gonzales, Senior Legal Advisors, Office of the Deputy Assistant

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

9285, by fax at (703) 308-6916 or by mail marked to their attention and

addressed to the Commissioner of Patents and Trademarks, Box DAC,

Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION: The Uruguay Round Agreements Act (Public Law

103-465) was enacted on December 8, 1994. Public Law 103-465 amends 35

U.S.C. 154 to provide that the term of patent protection begins on the

date of grant and ends 20 years from the filing date of the

application. The amendment applies to all utility and plant patents

issued on applications having an actual United States application

filing date on or after June 8, 1995. Specifically, 35 U.S.C.

154(a)(2), as contained in Public Law 103-465, provides that the patent

term will begin on the date on which the patent issues and will end

twenty years from the date on which the application was filed in the

United States. If the application contains a specific reference to an

earlier application under 35 U.S.C. 120, 121 or 365(c), the patent term

will end twenty years from the date on which the earliest application

referred to was filed. As amended by Public Law 103-465, 35 U.S.C. 154

does not take into account for determination of the patent term any

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

365(b).

Under 35 U.S.C. 154(b)(1), as contained in Public Law 103-465, if

the issuance of an original patent is delayed due to interference

proceedings under 35 U.S.C. 135(a) or because the application is placed

under a secrecy order under 35 U.S.C. 181, the term of the patent shall

be extended for the period of delay, but in no case more than five (5)

years.

Under 35 U.S.C. 154(b)(2), as contained in Public Law 103-465, if

the issuance of a patent is delayed due to appellate review by the

Board of Patent Appeals and Interferences or by a Federal court and the

patent is issued pursuant to a decision in the review reversing an

adverse determination of patentability, the term of the patent shall be

extended for a period of time but in no case more than five (5) years.

However, a patent shall not be eligible for extension under 35 U.S.C.

154(b)(2) if the patent is subject to a terminal disclaimer due to the

issuance of another patent claiming subject matter that is not

patentably distinct from that under appellate review.

Under 35 U.S.C. 154(b)(3)(B) and 154(b)(3)(C), as contained in

Public Law 103-465, the period of extension under 35 U.S.C. 154(b)(2)

shall be reduced by any time attributable to appellate review before

the expiration of three (3) years from the filing date of the

application and for any period of time during which the applicant for

patent did not act with due diligence, as determined by the

Commissioner.

Under 35 U.S.C. 154(b)(4), as contained in Public Law 103-465, the

total duration of all extensions of a patent under 35 U.S.C. 154(b)

shall not exceed five (5) years.

The provisions for patent term extension under 35 U.S.C. 154(b) are

separate from and in addition to the patent term extension provisions

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

154(b) are designed to compensate the patent owner for delays in

issuing a patent, whereas the patent term extension provisions of 35

U.S.C. 156 are designed to restore term lost to premarket regulatory

review after the grant of a patent. In order to prevent a term

extension under 35 U.S.C. 154(b) from precluding a term extension under

35 U.S.C. 156, Public Law 103-465 amends 35 U.S.C. 156(a)(2) to specify

that the term has never been extended under 35 U.S.C. 156(e)(1).

The 20-year patent term provision is contained in 35 U.S.C. 154, as

amended by Public Law 103-465. Section 154 of title 35, United States

Code, applies to utility and plant patents, but not to design patents.

The term of a design patent is defined in 35 U.S.C. 173 as fourteen

(14) years from the date of grant. Therefore, the patent term and

patent term extension provisions set forth in 35 U.S.C. 154, as amended

by Public Law 103-465, do not apply to patents for designs.

In addition, Public Law 103-465 establishes a domestic priority

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

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

include the Paris Convention priority period. Public Law 103-465

provides a mechanism to enable applicants to quickly and inexpensively

file provisional applications. Applicants will be entitled to claim the

benefit of priority in a given application based upon a previously

filed provisional application in the United States. The domestic

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

Section 111 of title 35, United States Code, was amended by Public

Law 103-465 to provide for the filing of a provisional application on

or after June 8, 1995. Section 41(a)(1) of title 35, United States

Code, was amended by Public Law 103-465 to provide a $150.00 filing fee

for each provisional application, subject to a fifty (50) percent

reduction for a small entity. The requirements for obtaining a filing

date for a provisional application are the same as those which

previously existed for an application filed under 35 U.S.C. 111, except

that no claim or claims as set forth in 35 U.S.C. 112, second

paragraph, is required. Moreover, no oath/declaration as set forth in

35 U.S.C. 115 is required. The provisional application is also not

subject to the provisions of 35 U.S.C. 131, 135 and 157, i.e., a

provisional application will not be examined for patentability, placed

in interference or made the subject of a statutory invention

registration. Further, the provisional application will automatically

be abandoned no later than twelve (12) months after its filing date and

will not be subject to revival to restore it to pending status beyond a

date which is after twelve (12) months from its filing date. A

provisional application will not be entitled to claim priority benefits

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

Also, Public Law 103-465 amended 35 U.S.C. 119 to allow an

applicant to claim the benefit of the filing date of one or more

copending provisional applications in a later filed application for

patent under 35 U.S.C. 111(a) or 363. The later filed application for

patent under 35 U.S.C. 111(a) or 363 must be filed by an inventor or

inventors named in the copending provisional application not later than

12 months after the date on which the provisional application was filed

and must contain or be amended to contain a specific reference to the

provisional application. The provisional application must disclose an

invention which is claimed in the application for patent under 35

U.S.C. 111(a) or 363 in the manner provided by the first paragraph of

35 U.S.C. 112. In addition, the provisional application must be pending

on the filing date of the application for patent under 35 U.S.C. 111(a)

or 363 and the filing fee set forth in subparagaph (A) or (C) of 35

U.S.C. 41(a)(1) must be paid.

Since 35 U.S.C. 154(a)(3), as contained in Public Law 103-465,

excludes from the determination of the patent term any application on

which priority is claimed under 35 U.S.C. 119, [[Page 20197]] 365(a) or

365(b), the filing date of a provisional application is not considered

in determining the term of any patent.

Section 119(e)(1) of title 35, United States Code, provides that if

all of the conditions of 35 U.S.C. 119 (e)(1) and (e)(2) are met, an

application for patent filed under 35 U.S.C. 111(a) or 363 shall have

the same effect as though filed on the date of the provisional

application. Thus, the effective United States filing date of an

application for patent filed under 35 U.S.C. 111(a), and entitled to

benefits under 35 U.S.C. 119(e), is the filing date of the provisional

application. Any patent granted on such an application, is prior art

under 35 U.S.C. 102(e) as of the filing date of the provisional

application.

Likewise, the effective United States filing date of a patent

issued on an international application filed under 35 U.S.C. 363, and

entitled to benefits under 35 U.S.C. 119(e), is the filing date of the

provisional application, except for the purpose of applying that patent

as prior art under 35 U.S.C. 102(e). For that purpose only, 35 U.S.C.

102(e) defines the filing date of the international application as the

date the requirements of 35 U.S.C. 371 (c)(1), (c)(2) and (c)(4) were

fulfilled.

Public Law 103-465 further includes transitional provisions for

limited reexamination in certain applications pending for two (2) years

or longer as of June 8, 1995, taking into account any reference to any

earlier application under 35 U.S.C. 120, 121 or 365(c). The

transitional provisions also permit examination of more than one

independent and distinct invention in certain applications pending for

three (3) years or longer as of June 8, 1995, taking into account any

reference to any earlier application under 35 U.S.C. 120, 121 or

365(c). These transitional provisions are not applicable to any

application which is filed after June 8, 1995, regardless of whether

the application is a continuing application.

The amendments to title 35 relating to 20-year patent term, patent

term extension, provisional applications and the transitional

provisions are effective on the date which is six (6) months after the

date of enactment, i.e., on June 8, 1995.

A Notice of Proposed Rulemaking was published in the Federal

Register at 59 FR 63951 (December 12, 1994) and in the Patent and

Trademark Office Gazette at 1170 Off. Gaz. Pat. Office 377-390 (January

3, 1995).

Forty-nine written comments were received in response to the Notice

of Proposed Rulemaking. A public hearing was held at 9:30 a.m. on

February 16, 1995. Fourteen individuals offered oral comments at the

hearing. The forty-nine written comments and a transcript of the

hearing are available for public inspection in the Special Program Law

Office, Office of the Deputy Assistant Commissioner for Patent Policy

and Projects, Room 520, Crystal Park I, 2011 Crystal Drive, Arlington,

Virginia, and are available on the Internet through anonymous file

transfer protocol (ftp), address: ftp.uspto.gov.

The following includes a discussion of the rules being added or

amended, the reasons for those additions and amendments and an analysis

of the comments received in response to the Notice of Proposed

Rulemaking.

Changes in text: The final rules contain numerous changes to the

text of the rules as proposed for comment. Those changes are discussed

below. Familiarity with the Notice of Proposed Rulemaking is assumed.

Section 1.9(a)(1) is being changed for clarity to define a national

application as a U.S. application for patent which was either filed in

the Office under 35 U.S.C. 111, or which entered the national stage

from an international application after compliance with 35 U.S.C. 371.

Also, a new paragraph (a)(3) is being added to define the term

``nonprovisional application'' as a U.S. national application for

patent which was either filed in the Office under 35 U.S.C. 111(a), or

which entered the national stage from an international application

after compliance with 35 U.S.C. 371.

The proposed deletion of Sec. 1.60 is being withdrawn. Therefore,

Sec. 1.17(i) is being changed to retain the reference to Sec. 1.60.

Section 1.17(q) is being changed to delete the fifty (50) percent

reduction for small entities in the $50.00 fee established for filing a

petition under Sec. 1.48 in a provisional application and a petition to

accord a provisional application a filing date or to convert an

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

Sections 1.17(r) and (s) are being changed to include a fifty (50)

percent reduction for small entities in the fees established for entry

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

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

the final rule, the fee required by Secs. 1.17(r) and 1.17(s) from a

small entity is $365.00. The fee required from other than a small

entity is $730.00.

The elimination of the small entity reduction in Sec. 1.17(q) and

the addition of the small entity reduction in Secs. 1.17 (r) and (s)

are the result of additional review, which resulted in the conclusion

that the fees established for the transitional procedures in

Secs. 1.129 (a) and (b) may be reduced by fifty (50) percent for small

entities. However, the petition fees required by Sec. 1.17(q) are not

subject to the fifty (50) percent reduction for small entities.

The proposed deletion of the retention fee practice set forth in

former Sec. 1.53(d), now redesignated Sec. 1.53(d)(1), is being

withdrawn. Therefore, Sec. 1.21(1) is being retained and amended to

refer to Sec. 1.53(d)(1). Also, the proposed change in the text to

Sec. 1.17(n) is being withdrawn, since Sec. 1.60 is being retained.

Section 1.28(a) is being changed to clarify the procedure for

establishing status as a small entity in a nonprovisional application

claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior

application. In such cases, applicants may file a new verified

statement or they may rely on a verified statement filed in the prior

application, if status as a small entity is still proper and desired.

If applicants intend to rely on a verified statement filed in the prior

application, applicants must include in the nonprovisional application

either a reference to the verified statement filed in the prior

application or a copy of the verified statement filed in the prior

application. A verified statement in compliance with existing Sec. 1.27

is required to be filed in each provisional application in which it is

desired to pay reduced fees.

Section 1.45(c), first sentence, is being changed for clarity to

refer to a ``nonprovisional'' application.

Section 1.48 is being changed to include a new paragraph (e)

setting forth the procedure for deleting the name of a person who was

erroneously named as an inventor in a provisional application. The

procedure requires an amendment deleting the name of the person who was

erroneously named accompanied by: a petition including a statement of

facts verified by the person whose name is being deleted establishing

that the error occurred without deceptive intention; the fee set forth

in Sec. 1.17(q); and the written consent of any assignee. The first

sentences of Secs. 1.48 (a)-(c) are also being changed for clarity to

refer to a ``nonprovisional'' application.

Section 1.51(a)(2)(i) is being changed to require that the

provisional application cover sheet include the residence of each named

inventor and, if the invention was made by an agency of the U.S.

Government or under a contract with an agency of the U.S. Government,

the name of the U.S. Government agency and Government contract number.

The residence of each named inventor is information which is

[[Page 20198]] necessary to identify those provisional applications

which must be reviewed by the PTO for foreign filing licenses. If the

invention disclosed in the provisional application was made by an

agency of the U.S. Government or under a contract with an agency of the

U.S. Government, the security review for that application should

already have been done by that agency of the U.S. Government.

Therefore, identification of those particular provisional applications

on the cover sheet will reduce the number of applications which the PTO

must forward to other agencies of the U.S. Government for security

review.

Section 1.53(b)(1) is being changed to retain the reference to

Sec. 1.60.

Section 1.53(b)(2)(ii) is being changed to require that any

petition and petition fee to convert a Sec. 1.53(b)(1) application to a

provisional application be filed in the Sec. 1.53(b)(1) application

prior to the earlier of the abandonment of the Sec. 1.53(b)(1)

application, the payment of the issue fee, the expiration of twelve

(12) months after the filing date of the Sec. 1.53(b)(1) application,

or the filing of a request for a statutory invention registration under

Sec. 1.293. Where the Sec. 1.53(b)(1) application was abandoned before

the expiration of twelve (12) months after the filing date of the

application, a petition to convert the application to a provisional

application may be filed in the Sec. 1.53(b)(1) application if the

petition to convert is filed prior to the expiration of twelve (12)

months after the filing date of the Sec. 1.53(b)(1) application and is

accompanied by an appropriate petition to revive an abandoned

application under Sec. 1.137.

Section 1.53(b)(2)(iii) is being changed to indicate that the

requirements of Secs. 1.821-1.825 regarding application disclosures

containing nucleotide and/or amino acid sequences are not mandatory for

provisional applications.

Section 1.53(d)(1) is being changed to retain the retention fee

practice. The proposal to delete the retention fee practice set forth

in Sec. 1.53(d) is being withdrawn.

The first sentences of Secs. 1.55 (a) and (b) are being changed for

clarity to refer to a ``nonprovisional'' application.

Also, Secs. 1.55 (a) and (b) are being changed to clarify that the

nonprovisional application may claim the benefit of one or more prior

foreign applications or one or more applications for inventor's

certificate.

Section 1.59 is being changed to retain the reference to the

retention fee set forth in Sec. 1.21(l) and to clarify that the

retention fee practice applies only to applications filed under

Sec. 1.53(b)(1).

The proposal to delete Sec. 1.60 is being withdrawn. Therefore,

Sec. 1.60 is being retained and amended to clarify in the title of the

section and in paragraph (b)(1) that the procedure set forth in the

section is only available for filing a continuation or divisional

application if the prior application was a nonprovisional application

and complete as set forth in Sec. 1.51(a)(1). Also, paragraph (b)(4) is

being amended to delete the requirement that the statement which must

accompany the copy of the prior application include the language that

``no amendments referred to in the oath or declaration filed to

complete the prior application introduced new matter therein.'' The

requirement is unnecessary because any amendment filed to complete the

prior application would be considered a part of the original disclosure

of the prior application and, by definition, could not contain new

matter. Also, paragraph (b)(4) is being amended to refer to

Sec. 1.17(i).

Section 1.62(a) is being changed to refer to a prior complete

``nonprovisional'' application and to clarify that a continuing

application may be filed under Sec. 1.62 after payment of the issue fee

if a petition under Sec. 1.313(b)(5) is granted in the prior

application. Section 1.62(a) is also being changed to clarify the

existing practice that the request for a Sec. 1.62 application must

include identification of the inventors named in the prior application.

Section 1.63(a) is being changed for clarity to refer to an oath or

declaration filed as a part of a ``nonprovisional'' application.

Section 1.67(b) is being changed for clarity to refer to a

``nonprovisional'' application.

Section 1.78 (a)(1) and (a)(2) are being changed to refer to a

``nonprovisional'' application and to clarify that the nonprovisional

application may claim the benefit of one or more prior copending

nonprovisional applications or international applications designating

the United States of America. Section 1.78(a)(1)(ii) is being changed

to retain the reference to Sec. 1.60. Section 1.78(a)(1)(iii) is being

retained and amended to refer to Secs. 1.53(b)(1) and 1.53(d)(1).

Sections 1.78 (a)(3) and (a)(4) are being changed to refer to a

``nonprovisional'' application and to clarify that the nonprovisional

application may claim the benefit of one or more prior copending

provisional applications.

Section 1.78(a)(3) is also being changed to remind applicants and

practitioners that when the last day of pendency of a provisional

application falls on a Saturday, Sunday, or Federal holiday within the

District of Columbia, any nonprovisional application claiming benefit

of the provisional application must be filed prior to the Saturday,

Sunday, or Federal holiday within the District of Columbia. Section

111(b)(5) of title 35, United States Code, states that a provisional

application is abandoned twelve months after its filing date. Sections

119 (e)(1) and (e)(2) of title 35, United States Code, require that a

nonprovisional application claiming benefit of a prior provisional

application be filed not later than twelve months after the date on

which the provisional application was filed and that the provisional

application be pending on the filing date of the nonprovisional

application. Under Sec. Sec. 1.6 and 1.10, no filing dates are accorded

to applications on a Saturday, Sunday, or Federal holiday within the

District of Columbia. Thus, if a provisional application is abandoned

by operation of 35 U.S.C. 111(b)(5) on a Saturday, Sunday, or Federal

holiday within the District of Columbia, a nonprovisional application

claiming benefit of the provisional application under 35 U.S.C. 119(e)

must be filed no later than the preceding day which is not a Saturday,

Sunday, or Federal holiday within the District of Columbia.

Section 1.78(a)(4) is also being changed to delete the requirement

that the reference in the nonprovisional application to the provisional

application indicate the relationship of the applications. As a result

of the change, Sec. 1.78(a)(4) provides that a nonprovisional

application claiming benefit of one or more provisional applications

must contain a reference to each provisional application, identifying

it as a provisional application and including the provisional

application number (consisting of series code and serial number).

However, the section does not require the nonprovisional application to

identify the nonprovisional application as a continuation, divisional

or continuation-in-part application of the provisional application.

Section 1.83(a) is being changed to delete the proposed

redesignation of paragraph (a) and to delete proposed paragraph (a)(2).

Also, Secs. 1.83 (a) and (c) are being changed for clarity to refer to

a ``nonprovisional'' application. Further, Sec. 1.83(c) is being

changed to remove the reference to paragraph (a)(1).

Section 1.101 is being changed for clarity to refer to a

``nonprovisional'' application. [[Page 20199]]

Sections 1.129 (a) and (b) are being changed to identify the

effective date of 35 U.S.C. 154(a)(2) as June 8, 1995.

Further, Sec. 1.129(a) is being changed to provide that the first

and second submissions and fees set forth in Sec. 1.17(r) must be filed

prior to the filing of an Appeal Brief, rather than prior to the filing

of the Notice of Appeal, and prior to abandonment of the application.

The requirement that the fee set forth in Sec. 1.17(r) be filed within

one month of the notice refusing entry is being deleted. Section

1.129(a) is also being changed to provide that the finality of the

final rejection is automatically withdrawn upon the timely filing of

the submission and payment of the fee set forth in Sec. 1.17(r). The

language indicating that the submission would be entered and considered

after timely payment of the fee set forth in Sec. 1.17(r) ``to the

extent that it would have been entered and considered if made prior to

final rejection'' is being deleted. In view of the magnitude of the fee

set forth in Sec. 1.17(r), the next PTO action following timely payment

of the fee set forth in Sec. 1.17(r) will be equivalent to a first

action in a continuing application. Under existing PTO practice, it

would not be proper to make final a first Office action in a continuing

application where the continuing application contains material which

was presented in the earlier application after final rejection or

closing of prosecution but was denied entry because (1) new issues were

raised that required further consideration and/or search, or (2) the

issue of new matter was raised. The identical procedure will apply to

examination of a submission considered as a result of the procedure

under Sec. 1.129(a). Thus, under Sec. 1.129(a), if the first submission

after final rejection was initially denied entry in the application

because (1) new issues were raised that required further consideration

and/or search, or (2) the issue of new matter was raised, then the next

action in the application will not be made final. Likewise, if the

second submission after final rejection was initially denied entry in

the application because (1) new issues were raised that required

further consideration and/or search, or (2) the issue of new matter was

raised, then the next action in the application will not be made final.

In view of 35 U.S.C. 132, no amendment considered as a result of the

payment of the fee set forth in Sec. 1.17(r) may introduce new matter

into the disclosure of the application.

Section 1.129(b)(1) is being changed to identify the date which is

two months prior to the effective date of 35 U.S.C. 154(a)(2) as April

8, 1995. Section 1.129(b)(1) is also being changed to clarify in

subsection (ii) that the examiner has not made a requirement for

restriction in the present or parent application prior to April 8,

1995, due to actions by the applicant.

Section 1.129(b)(2) is being changed to delete the identification

of the period provided for applicants to respond to a notification

under Sec. 1.129(b) as one month. The time period for response will be

identified in any written notification under Sec. 1.129(b) and will

usually be one month, but in no case will it be less than thirty days.

The period may be extended under Sec. 1.136(a). The language is also

being changed to provide that applicant may respond to the notification

by (i) electing the invention or inventions to be searched and

examined, if no election has been made prior to the notice, and paying

the fee set forth in Sec. 1.17(s) for each independent and distinct

invention claimed in the application in excess of one which applicant

elects, (ii) confirming an election made prior to the notice and paying

the fee set forth in Sec. 1.17(s) for each independent and distinct

invention claimed in the application in addition to the one invention

which applicant previously elected, or (iii) filing a petition under

Sec. 1.129(b)(2) traversing the requirement without regard to whether

the requirement has been made final. No petition fee is required. The

section is also being changed to provide that if the petition under

Sec. 1.129(b)(2) is filed in a timely manner, the original time period

for electing and paying the fee set forth in Sec. 1.17(s) will be

deferred and any decision on the petition affirming or modifying the

requirement will set a new time period to elect the invention or

inventions to be searched and examined and to pay the fee set forth in

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

application in excess of one which applicant elects.

Section 1.129(c) is being changed to clarify that the provisions of

Secs. 1.129 (a) and (b) are not applicable to any application filed

after June 8, 1995. However, any application filed on June 8, 1995

would be subject to a 20-year patent term.

Section 1.137 is being amended by revising paragraph (c) to

eliminate, in all applications filed on or after June 8, 1995, except

design applications, the requirement that a terminal disclaimer

accompany any petition under Sec. 1.137(a) not filed within six (6)

months of the date of the abandonment of the application. The language

``filed before June 8, 1995'' and ``filed on or after June 8, 1995'' as

used in the amended rule, refer to the actual United States filing

date, without reference to any claim for benefit under 35 U.S.C. 120,

121, or 365. No change to Sec. 1.137 was proposed in the Notice of

Proposed Rulemaking. However, in all applications filed on or after

June 8, 1995, except design applications, any delay in filing a

petition under Sec. 1.137(a) will automatically result in the loss of

patent term. The loss of patent term will be the incentive for

applicants to promptly file any petition to revive. Therefore, no need

is seen for requiring a terminal disclaimer in such applications. It

would amount to a penalty if a terminal disclaimer was required.

Section 1.136 is being amended by revising paragraph (d) to

eliminate, in all applications filed on or after June 8, 1995, except

design applications, the requirement that a terminal disclaimer

accompany any petition under Sec. 1.316(b) not filed within six (6)

months of the date of the abandonment of the application. Acceptance of

a late payment of an issue fee in a design application is specifically

provided for in Sec. 1.155. Therefore, Sec. 1.316 does not apply to

design applications. The language ``filed before June 8, 1995'' as used

in the amended rule, refers to the actual United States filing date,

without reference to any claim for benefit under 35 U.S.C. 120, 121, or

365. No change to Sec. 1.316 was proposed in the Notice of Proposed

Rulemaking. However, in all applications filed on or after June 8,

1995, except design applications, any delay in filing a petition under

Sec. 1.316(b) will automatically result in the loss of patent term. The

loss of patent term will be the incentive for applicants to promptly

file any petition under Sec. 1.316(b). Therefore, no need is seen for

requiring a terminal disclaimer in such applications. It would amount

to a penalty if a terminal disclaimer was required.

Section 1.317 is being amended by removing and reserving paragraph

(d) to eliminate the requirement that a terminal disclaimer accompany

any petition under Sec. 1.317(b) not filed within six (6) months of the

date of lapse of the patent. No change to Sec. 1.317 was proposed in

the Notice of Proposed Rulemaking. However, the delay in filing a

petition under Sec. 1.317(b) does not result in any gain of patent

term. Therefore, no reason is seen for requiring a terminal disclaimer

in such cases.

Section 1.701(a) is being changed to identify the implementation

date as June 8, 1995, and to clarify that a proceeding under 35 U.S.C.

135(a) is an interference proceeding.

[[Page 20200]]

Section 1.701(b) is being changed to provide that the term of a

patent entitled to an extension under Sec. 1.701 shall be extended for

the sum of the periods of delay calculated under paragraphs (c)(1),

(c)(2), (c)(3) and (d) of Sec. 1.701 and the extension will run from

the expiration date of the patent. The reference to a terminal

disclaimer is being deleted to be consistent with Sec. 1.701(a)(3) and

to avoid any confusion.

Section 1.701(c)(1)(i) is being changed for clarity by deleting the

phrase ``if any'' after the first occurrence of ``interference'' and by

inserting the same phrase after the phrase ``the number of days.''

Section 1.701(c)(1)(ii) is being changed to clarify that the period

referred to ends on the ``date of the termination of the suspension''

rather than on the date of the next PTO communication reopening

prosecution.

Section 1.701(d)(1) is being amended to clarify that the ``time''

referred to is time ``during the period of appellate review''.

Section 1.701(d)(2) is being amended to clarify that the

Commissioner, under the broad discretion granted by 35 U.S.C.

154(b)(3)(C), has decided to limit consideration of applicant's due

diligence only to acts occurring during the period of appellate review.

The supplementary information published in the Notice of Proposed

Rulemaking contained examples of what might be considered a lack of due

diligence for purposes of Sec. 1.701(d)(2) as proposed. Specifically,

the supplementary information identified requests for extensions of

time to respond to Office communications, submission of a response

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

informal applications as examples. In view of the comments received and

the language adopted in the final rules, those examples are withdrawn.

Acts which the Commissioner considers to constitute prima facie

evidence of lack of due diligence under Sec. 1.701(d)(2) are

suspensions at applicant's request under Sec. 1.103(a) during the

period of appellate review and abandonments during the period of

appellate review.

Discussion of Specific Rules

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

being amended as indicated below:

Section 1.1 is being amended to add a paragraph (i) to provide a

special ``Box Provisional Patent Application'' address to assist the

Mail Room in separating and processing provisional applications and

mail relating thereto.

Section 1.9 is being amended to redesignate paragraph (a) as

paragraph (a)(1) and to define a national application as a U.S.

application for patent which was either filed in the Office under 35

U.S.C. 111, or which entered the national stage from an international

application after compliance with 35 U.S.C. 371. A new paragraph (a)(2)

is being added to define the term ``provisional application'' as a U.S.

national application filed under 35 U.S.C. 111(b). Also, a new

paragraph (a)(3) is being added to define the term ``nonprovisional

application'' as a U.S. national application for patent which was

either filed in the Office under 35 U.S.C. 111(a), or which entered the

national stage from an international application after compliance with

35 U.S.C. 371.

Sections 1.12 and 1.14 are being amended to replace the references

to Sec. 1.17(i)(1) with references to Sec. 1.17(i).

Sections 1.16(a)-(e) and (g) are being amended to clarify that

those sections do not apply to provisional applications. A complete

provisional application does not require claims. However, provisional

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

application. Nevertheless, no additional claim fee or multiple

dependent claim fee will be required in a provisional application.

Section 1.16(f) is being amended to insert the words ``basic fee''.

Section 1.16(e) refers to ``the basic filing fee''. Current Office

practice allows a design application to be filed without the design

filing fee or the oath/declaration as set forth in Sec. 1.53(d)(1). The

change to Sec. 1.16(f) is merely for clarification. In addition,

Sec. 1.16(a) is being amended to replace the word ``cases'' with the

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

elsewhere in the rule.

Section 1.16 is also being amended to add a new paragraph (k) which

lists the basic filing fee for a provisional application as $75.00 for

a small entity (see Secs. 1.9(c)-(f)) or $150.00 for other than a small

entity as contained in Public Law 103-465. Since the filing fee for a

provisional application is established by Public Law 103-465 as a 35

U.S.C. 41(a) fee, the filing fee for a provisional application will be

subject to the fifty (50) percent reduction provided for in 35 U.S.C.

41(h).

Further, Sec. 1.16 is being amended to add a new paragraph (1)

which establishes the surcharge required by new Sec. 1.53(d)(2) for

filing the basic filing fee or the cover sheet required by new

Sec. 1.51(a)(2) for a provisional application at a time later than the

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

$50.00 for other than a small entity.

Section 1.17(h) is being amended to clarify that the $130.00

petition fee for filing a petition for correction of inventorship under

Sec. 1.48 applies to all patent applications, except provisional

applications. Paragraph (i)(1) is being redesignated as paragraph (i)

and paragraph (i)(2) is being removed. The fee for a petition under

Sec. 1.102 to make an application special has been placed in paragraph

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

are being deleted, since the paragraphs currently refer to sections in

parts other than Part 1. Section 1.17(i) is also being amended to

clarify that the fee set forth in paragraph (i) for filing a petition

to accord a filing date under Sec. 1.53 applies to all patent

applications, except provisional applications.

A new Sec. 1.17(q) is being added to establish a petition fee of

$50.00 for filing a petition for correction of inventorship under

Sec. 1.48 in a provisional application and for filing a petition to

accord a provisional application a filing date or to convert an

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

The petition fee set forth in Sec. 1.17(q) is not reduced for a small

entity.

New Secs. 1.17 (r) and (s) are being added to establish the fees

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

for each additional invention requested to be examined under

Sec. 1.129(b), respectively. These fees have been set at $365.00 for a

small entity and $730.00 for other than a small entity.

Section 1.21(l) is being amended to refer to Sec. 1.53(d)(1).

Section 1.28(a) is being amended to clarify the procedure for

establishing status as a small entity in a nonprovisional application

claiming benefit under 35 U.S.C. 119(e), 120, 121, or 365(c) of a prior

application. In such cases, applicants may file a new verified

statement or rely on a verified statement filed in the prior

application, if status as a small entity is still proper and desired.

If applicants intend to rely on a verified statement filed in the prior

application, applicants must include in the nonprovisional application

either a reference to the verified statement filed in the prior

application or a copy of the verified statement filed in the prior

application. Status as a small entity may be established in a

provisional application by complying with existing Sec. 1.27.

Section 1.45(c) is being amended to clarify that the first sentence

applies to a ``nonprovisional'' application. Section 1.45 (c) is also

being amended to add a second sentence relating to joint inventors

named in a provisional [[Page 20201]] application. The second sentence

states that each inventor named in a provisional application must have

made a contribution to the subject matter disclosed in the provisional

application. All that Sec. 1.45(c), second sentence, requires is that

if a person is named as an inventor in a provisional application, that

person must have made a contribution to the subject matter disclosed in

the provisional application.

Sections 1.48 (a)-(c) are being amended to specify that the

procedures for correcting an error in inventorship set forth in those

sections apply to nonprovisional applications. New paragraph (d) is

being added to establish a procedure for adding the name of an inventor

in a provisional application, where the name was originally omitted

without deceptive intent. Paragraph (d) does not require the verified

statement of facts by the original inventor or inventors, the oath or

declaration by each actual inventor in compliance with Sec. 1.63 or the

consent of any assignee as required in paragraph (a). Instead, the

procedure requires the filing of a petition identifying the name or

names of the inventors to be added and including a statement that the

name or names of the inventors were omitted through error without

deceptive intention on the part of the actual inventor(s). The

statement would be required to be verified if made by a person not

registered to practice before the PTO. The statement could be signed by

a registered practitioner of record in the application or acting in a

representative capacity under Sec. 1.34(a). The $50.00 petition fee set

forth in Sec. 1.17(q) would also be required. New paragraph (e) is also

being added setting forth the procedure for deleting the name of a

person who was erroneously named as an inventor in a provisional

application. The procedure requires an amendment deleting the name of

the person who was erroneously named accompanied by: a petition

including a statement of facts verified by the person whose name is

being deleted establishing that the error occurred without deceptive

intention; the fee set forth in Sec. 1.17(q); and the written consent

of any assignee.

Section 1.51 is being amended to redesignate Sec. 1.51(a) as

Sec. 1.51(a)(1) and to include a new paragraph (a)(2) identifying the

required parts of a complete provisional application. As set forth in

Sec. 1.51(a)(2), a complete provisional application includes a cover

sheet, a specification as prescribed in 35 U.S.C. 112, first paragraph,

any necessary drawings and the provisional application filing fee. A

suggested cover sheet format for a provisional application is included

as an Appendix A to this Notice of Final Rulemaking and is available

from the PTO free of charge to the public. However, the rule does not

require the applicant to use the PTO suggested cover sheet. Any paper

containing the information required in Sec. 1.51(a)(2)(i) will be

acceptable. The cover sheet is required to identify the paper as a

provisional application and to provide the information which is

necessary for the PTO to prepare the provisional application filing

receipt. Also, the residence of each named inventor and, if the

invention disclosed in the provisional application was made by an

agency of the U.S. Government or under a contract with an agency of the

U.S. Government, the name of the U.S. Government agency and Government

contract number must be identified on the cover sheet.

Section 1.51(b) is being amended to indicate that an information

disclosure statement is not required and may not be filed in a

provisional application. Any information disclosure statements filed in

a provisional application will either be returned or disposed of at the

convenience of the Office. An information disclosure statement filed in

a Sec. 1.53(b)(1) application which has been converted to a provisional

application will be retained in the application after the conversion,

if the information disclosure statement was filed before the petition

required by Sec. 1.53(b)(2)(ii) was filed.

The title of Sec. 1.53 and paragraph (a) are being amended to refer

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

``application number'' is found in current Sec. 1.53(a).

Section 1.53(b) is being redesignated as Sec. 1.53(b)(1) and is

being amended to refer to Sec. 1.17(i) rather than Sec. 1.17(i)(1) to

conform to the change therein.

A new Sec. 1.53(b)(2) is being added to set forth the requirements

for obtaining a filing date for a provisional application. Section

1.53(b)(2) states that a filing date will be accorded to a provisional

application as of the date the specification as prescribed by 35 U.S.C.

112, first paragraph, any necessary drawings, and the name of each

inventor of the subject matter disclosed are filed in the PTO. The

filing date requirements for a provisional application set forth in new

paragraph (b)(2) parallel the existing requirements set forth in former

paragraph (b), now redesignated paragraph (b)(1), except that no claim

is required. In order to minimize the cost of processing provisional

applications and to reduce the handling of provisional applications,

amendments, other than those required to make the provisional

application comply with applicable regulations, are not permitted after

the filing date of the provisional application.

Section 1.53(b)(2)(i) is being added requiring all provisional

applications to be filed with a cover sheet identifying the application

as a provisional application. The section also indicates that the PTO

will treat an application as having been filed under Sec. 1.53(b)(1),

unless the application is identified as a provisional application on

filing. A provisional application, which is identified as such on

filing, but which does not include all of the information required by

Sec. 1.51(a)(2)(i) would still be treated as a provisional application.

However, the omitted information and a surcharge would be required to

be submitted at a later date under new Sec. 1.53(d)(2).

Section 1.53(b)(2)(ii) is being added to establish a procedure for

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

application. The section requires that a petition requesting the

conversion and a petition fee be filed in the Sec. 1.53(b)(1)

application prior to the earlier of the abandonment of the

Sec. 1.53(b)(1) application, the payment of the issue fee, the

expiration of twelve (12) months after the filing date of the

Sec. 1.53(b)(1) application, or the filing of a request for a statutory

invention registration under Sec. 1.293. The grant of any such petition

would not entitle applicant to a refund of the fees properly paid in

the application filed under Sec. 1.53(b)(1).

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

provisions of Public Law 103-465 which prohibit any provisional

application from claiming a right of priority under 35 U.S.C. 120, 121

or 365(c) of any other application. The section also calls attention to

the provisions of Public Law 103-465 which provide that no claim for

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

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

invention registration may be filed in a provisional application.

Section 1.53(b)(2)(iii) further specifies that the requirements of

Secs. 1.821-1.825 are not mandatory for provisional applications.

However, applicants are reminded that an invention being claimed in an

application filed under 35 U.S.C. 111(a) or 365 which claims benefit

under 35 U.S.C. 119(e) of a provisional application must be disclosed

in the provisional application in the manner provided by the first

paragraph of 35 U.S.C. 112. Voluntary compliance with the requirements

of Secs. 1.821-1.825 in [[Page 20202]] the provisional application is

recommended, in order to ensure that support for the invention claimed

in the 35 U.S.C. 111(a) application can be readily ascertained in the

provisional application.

Section 1.53(c) is being amended to require that any request for

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

way of a petition accompanied by the fee set forth in Sec. 1.17(i), if

the application was filed under Sec. 1.53(b)(1), or by the fee set

forth in Sec. 1.17(q), if the application was filed under

Sec. 1.53(b)(2). This reflects the current practice set forth in the

Manual of Patent Examining Procedure (MPEP), section 506.02 (Sixth

Edition, Jan. 1995) with regard to any request for review of a refusal

to accord a filing date for an application. The PTO will continue its

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

accord the requested filing date is found to have been a PTO error.

Section 1.53(d) is being redesignated as Sec. 1.53(d)(1).

Section 1.53(d)(2) is being added to provide that a provisional

application may be filed without the basic filing fee and without the

complete cover sheet required by Sec. 1.51(a)(2). In such a case, the

applicant will be notified and given a period of time in which to file

the missing fee, and/or cover sheet and to pay the surcharge set forth

in Sec. 1.16(l).

Section 1.53(e) is being redesignated as Sec. 1.53(e)(1) and

amended to refer to Sec. 1.53(b)(1). Also, a new Sec. 1.53(e)(2) is

being added to indicate that a provisional application will not be

given a substantive examination and will be abandoned no later than

twelve (12) months after its filing date.

Sections 1.55(a) and (b) are being amended to clarify that the

sections apply to nonprovisional applications and to clarify that a

nonprovisional application may claim the benefit of one or more prior

foreign applications or one or more applications for inventor's

certificate. Also, Sec. 1.55(a) is being amended to replace the

reference to 35 U.S.C. 119 with a reference to 35 U.S.C. 119(a)-(d). In

addition, the reference to Sec. 1.17(i)(1) in Sec. 1.55(a) is being

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

change to Sec. 1.17. Section 1.55(b) is also being amended to refer to

35 U.S.C. 119(d) to conform to the paragraph designations contained in

Public Law 103-465.

Section 1.59 is being amended to clarify that the retention fee

practice set forth in Sec. 1.53(d)(1) applies only to applications

filed under Sec. 1.53(b)(1).

Section 1.60 is being amended to clarify in the title of the

section and in paragraph (b)(1) that the procedure set forth in the

section is only available for filing a continuation or divisional

application if the prior application was a nonprovisional application

and complete as set forth in Sec. 1.51(a)(1). Paragraph (b)(4) is being

amended to delete the requirement that the statement which must

accompany the copy of the prior application include the language that

``no amendments referred to in the oath or declaration filed to

complete the prior application introduced new matter therein.'' The

requirement is unnecessary because any amendment filed to complete the

prior application would be considered a part of the original disclosure

of the prior application and, by definition, could not contain new

matter. Also, paragraph (b)(4) is being amended to refer to

Sec. 1.17(i).

Section 1.62(a) is being amended to clarify that the procedure set

forth in the section is only available for filing a continuation,

continuation-in-part, or divisional application of a prior

nonprovisional application which is complete as defined in

Sec. 1.51(a)(1). Section 1.62(a) is also being amended to clarify that

a continuing application may be filed under Sec. 1.62 after payment of

the issue fee if a petition under Sec. 1.313(b)(5) is granted in the

prior application and that the request for a Sec. 1.62 application must

include identification of the inventors named in the prior application.

The phrase ``Serial number, filing date'' in Sec. 1.62(a) is being

changed to ``application number.''

Section 1.62(e) is being amended to replace the reference to

Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with

the change to Sec. 1.17. Also, the term ``application serial number''

in Sec. 1.62(e) is being changed to ``application number.''

Section 1.63(a) is being amended to replace the reference to

Sec. 1.51(a)(2) with a reference to Sec. 1.51(a)(1)(ii) in order to

conform with the changes in Sec. 1.51 and to refer to an oath or

declaration filed as a part of a nonprovisional application.

Section 1.67(b) is being amended to replace the reference to

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

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

Secs. 1.53(b) and 1.118 are being deleted to make clear that the new

matter exclusion applies to all applications including those filed

under Secs. 1.60 and 1.62. Also, the section is being amended to refer

to a nonprovisional application.

Sections 1.78 (a)(1) and (a)(2) are being amended to clarify that

the sections apply to nonprovisional applications claiming the benefit

of one or more copending nonprovisional applications or international

applications designating the United States of America. Section

1.78(a)(1)(iii) is being amended to refer to Secs. 1.53(b)(1) and

1.53(d)(1). Section 1.78(a)(2) is also being amended to eliminate the

use of serial number and filing date as an identifier for a prior

application. The section will require that the prior application be

identified by application number (consisting of the series code and

serial number) or international application number and international

filing date.

Sections 1.78 (a)(3) and (a)(4) are being added to set forth the

conditions under which a nonprovisional application may claim the

benefit of one or more prior copending provisional applications. The

later filed nonprovisional application must be an application other

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

application. There must be a common inventor named in the prior

provisional application and the later filed nonprovisional application.

Each prior provisional application must be complete as set forth in

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

Sec. 1.53(b)(2) and include the basic filing fee. Section 1.78(a)(3)

also includes the warning that when the last day of pendency of a

provisional application falls on a Saturday, Sunday, or Federal holiday

within the District of Columbia, any nonprovisional application

claiming benefit of the provisional application must be filed prior to

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

Columbia. A provisional application may be abandoned by operation of 35

U.S.C. 111(b)(5) on a Saturday, Sunday, or Federal holiday within the

District of Columbia, in which case, a nonprovisional application

claiming benefit of the provisional application under 35 U.S.C. 119(e)

must be filed no later than the preceding day which is not a Saturday,

Sunday, or Federal holiday within the District of Columbia.

Section 1.78(a)(4) is also being added to provide that a

nonprovisional application claiming benefit of one or more provisional

applications must contain a reference to each provisional application,

identifying it as a provisional application and including the

provisional application number (consisting of series code and serial

number). The section does not require the nonprovisional application to

identify the nonprovisional application as a continuation, divisional

or continuation-in-part application of the provisional

application. [[Page 20203]]

Sections 1.83 (a) and (c) are being amended to clarify that the

sections apply to nonprovisional applications.

Section 1.97(d) is being amended to replace the reference to

Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with

the change to Sec. 1.17.

Section 1.101(a) is being amended to indicate that the section

applies to nonprovisional applications.

Section 1.102(d) is being amended to replace the reference to

Sec. 1.17(i)(2) with a reference to Sec. 1.17(i) to be consistent with

the change to Sec. 1.17.

Section 1.103(a) is amended to replace the reference to

Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with

the change to Sec. 1.17.

Section 1.129 is being added to set forth the procedure for

implementing certain transitional provisions contained in Public Law

103-465. Section 1.129(a) provides for limited reexamination of

applications pending for 2 years or longer as of June 8, 1995, taking

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

120, 121 or 365(c). An applicant will be entitled to have a first

submission entered and considered on the merits after final rejection

if the submission and the fee set forth in Sec. 1.17(r) are filed prior

to the filing of an Appeal Brief and prior to abandonment of the

application. Section 1.129(a) also provides that the finality of the

final rejection is automatically withdrawn upon the timely filing of

the submission and payment of the fee set forth in Sec. 1.17(r). After

submission and payment of the fee set forth in Sec. 1.17(r), the next

PTO action on the merits may be made final only under the conditions

currently followed by the PTO for making a first action in a continuing

application final. If a subsequent final rejection is made in the

application, applicant would be entitled to have a second submission

entered and considered on the merits under the same conditions set

forth for consideration of the first submission. Section 1.129(a)

defines the term ``submission'' as including, but not limited to, an

information disclosure statement, an amendment to the written

description, claims or drawings, and a new substantive argument or new

evidence in support of patentability. For example, the submission may

include an amendment, a new substantive argument and an information

disclosure statement. In view of the fee set forth in Sec. 1.17(r), any

information disclosure statement previously refused consideration in

the application because of applicant's failure to comply with Sec. 1.97

(c) or (d) or which is filed as part of either the first or second

submission will be treated as though it had been filed within one of

the time periods set forth in Sec. 1.97(b) and will be considered

without the petition and petition fee required in Sec. 1.97(d), if it

complies with the requirements of Sec. 1.98. In view of 35 U.S.C. 132,

no amendment considered as a result of the payment of the fee set forth

in Sec. 1.17(r) may introduce new matter into the disclosure of the

application.

Section 1.129(b)(1) is being added to provide for examination of

more than one independent and distinct invention in certain

applications pending for 3 years or longer as of June 8, 1995, taking

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

120, 121 or 365(c). Under Sec. 1.129(b)(1), a requirement for

restriction or for the filing of divisional applications would only be

made or maintained in the application after June 8, 1995, if: (1) The

requirement was made in the application or in an earlier application

relied on under 35 U.S.C. 120, 121 or 365(c) prior to April 8, 1995;

(2) the examiner has not made a requirement for restriction in the

present or parent application prior to April 8, 1995, due to actions by

the applicant; or (3) the required fee for examination of each

additional invention was not paid. Under Sec. 1.129(b)(2), if the

application contains claims to more than one independent and distinct

invention, and no requirement for restriction or for the filing of

divisional applications can be made or maintained, applicant will be

notified and given a time period to (i) elect the invention or

inventions to be searched and examined, if no election has been made

prior to the notice, and pay the fee set forth in Sec. 1.17(s) for each

independent and distinct invention claimed in the application in excess

of one which applicant elects, (ii) in situations where an election was

made in response to a requirement for restriction that cannot be

maintained, confirm the election made prior to the notice and pay the

fee set forth in Sec. 1.17(s) for each independent and distinct

invention claimed in the application in addition to the one invention

which applicant previously elected, or (iii) file a petition under

Sec. 1.129(b)(2) traversing the requirement without regard to whether

the requirement has been made final. No petition fee is required.

Section 1.129(b)(2) also provides that if the petition is filed in a

timely manner, the original time period for electing and paying the fee

set forth in Sec. 1.17(s) will be deferred and any decision on the

petition affirming or modifying the requirement will set a new time

period to elect the invention or inventions to be searched and examined

and to pay the fee set forth in Sec. 1.17(s) for each independent and

distinct invention claimed in the application in excess of one which

applicant elects. Under Sec. 1.129(b)(3), each additional invention for

which the required fee set forth in Sec. 1.17(s) has not been paid will

be withdrawn from consideration under Sec. 1.142(b). An applicant who

desires examination of an invention so withdrawn from consideration can

file a divisional application under 35 U.S.C. 121.

Section 1.129(c) is being added to clarify that the provisions of

Secs. 1.129 (a) and (b) are not applicable to any application filed

after June 8, 1995. However, any application filed on June 8, 1995,

would be subject to a 20-year patent term.

Section 1.137 is being amended by revising paragraph (c) to

eliminate, in all applications filed on or after June 8, 1995, except

design applications, the requirement that a terminal disclaimer

accompany any petition under Sec. 1.137(a) not filed within six (6)

months of the date of the abandonment of the application. The language

``filed before June 8, 1995'' and ``filed on or after June 8, 1995'' as

used in the amended rule, refer to the actual United States filing

date, without reference to any claim for benefit under 35 U.S.C. 120,

121 or 365.

Section 1.139 is being added to set forth the procedure for

reviving a provisional application where the delay was unavoidable or

unintentional. Section 1.139(a) addresses the revival of a provisional

application where the delay was unavoidable and Sec. 1.139(b) addresses

the revival of a provisional application where the delay was

unintentional. Applicant may petition to have an abandoned provisional

application revived as a pending provisional application for a period

of no longer than twelve months from the filing date of the provisional

application where the delay was unavoidable or unintentional. It would

be permissible to file a petition for revival later than twelve months

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

the application for the twelve-month period following the filing of the

provisional application. Thus, even if the petition were granted to

reestablish the pendency up to the end of the twelve-month period, the

provisional application would not be considered pending after twelve

months from its filing date. The requirements for reviving an abandoned

provisional application set forth in Sec. 1.139 parallel the existing

requirements set forth in Sec. 1.137. [[Page 20204]]

Sections 1.177, 1.312(b), 1.313(a), and 1.314 are being amended to

replace the references to Sec. 1.17(i)(1) with references to

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

Section 1.316(d) is being amended to eliminate, in all applications

filed on or after June 8, 1995, except design applications, the

requirement that a terminal disclaimer accompany any petition under

Sec. 1.316(b) not filed within six (6) months of the date of the

abandonment of the application. Acceptance of a late payment of an

issue fee in a design application is specifically provided for in

Sec. 1.155. Therefore, Sec. 1.316 does not apply to design

applications. The language ``filed before June 8, 1955'' as used in the

amended rule, refers to the actual United States filing date, without

reference to any claim for benefit under 35 U.S.C. 120, 121 or 365.

Section 1.317(d) is being removed and reserved to eliminate the

requirement that a terminal disclaimer accompany any petition under

Sec. 1.317(b) not filed within six (6) months of the date of lapse of

the patent.

Section 1.666 is being amended to replace the reference to

Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with

the change to Sec. 1.17.

Section 1.701 is being added to set forth the procedure the PTO

will follow in calculating the length of any extension of patent term

to which an applicant is entitled under 35 U.S.C. 154(b) where the

issuance of a patent on an application, other than for designs, filed

on or after June 8, 1995, was delayed due to certain causes of

prosecution delay. Applicants need not file a request for the extension

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

automatic by operation of law. It is currently anticipated that

applicant will be advised as to the length of any patent term extension

at the time of receiving the Notice of Allowance and Issue Fee Due.

Review of the length of a patent term extension calculated by the PTO

under Sec. 1.701 prior to the issuance of the patent would be by way of

petition under Sec. 1.181. If an error is noted after the patent

issues, patentee and any third party may seek correction of the period

of patent term granted by filing a request for Certificate of

Correction pursuant to Sec. 1.322. The PTO intends to identify the

length of any patent term extension calculated under Sec. 1.701 on the

printed patent.

Section 1.701(a) is being added to identify those patents which are

entitled to an extension of patent term under 35 U.S.C. 154(b).

Section 1.701(b) is being added to provide that the term of a

patent entitled to extension under Sec. 1.701(a) shall be extended for

the sum of the periods of delay calculated under Secs. 1.701 (c)(1),

(c)(2), (c)(3) and (d), to the extent that those periods are not

overlapping, up to a maximum of five years. The section also provides

that the extension will run from the expiration date of the patent.

Section 1.701(c)(1) is being added to set forth the method for

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

interference proceeding under 35 U.S.C. 135(a). The period of delay

with respect to each interference in which the application was involved

is calculated under Sec. 1.701(c)(1)(i) to include the number of days

in the period beginning on the date the interference was declared or

redeclared to involve the application in the interference and ending on

the date that the interference was terminated with respect to the

application. An interference is considered terminated as of the date

the time for filing an appeal under 35 U.S.C. 141 or civil action under

35 U.S.C. 146 expired. If an appeal under 35 U.S.C. 141 is taken to the

Court of Appeals for the Federal Circuit, the interference terminates

on the date of receipt of the court's mandate by the PTO. If a civil

action is filed under 35 U.S.C. 146, and the decision of the district

court is not appealed, the interference terminates on the date the time

for filing an appeal from the court's decision expires. See section

2361 of the MPEP. The period of delay with respect to an application

suspended by the PTO due to interference proceedings under 35 U.S.C.

135(a) not involving the application is calculated under

Sec. 1.701(c)(1)(ii) to include the number of days in the period

beginning on the date prosecution in the application is suspended due

to interference proceedings not involving the application and ending on

the date of the termination of the suspension. The period of delay

under Sec. 1.701(a)(1) is the sum of the periods calculated under

Secs. 1.701 (c)(1)(i) and (c)(1)(ii), to the extent that the periods

are not overlapping.

Section 1.701(c)(2) is being added to set forth the method for

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

application being placed under a secrecy order.

Section 1.701(c)(3) is being added to set forth the method for

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

appellate review. The period of delay is calculated under

Sec. 1.701(c)(3) to include the number of days in the period beginning

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

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

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

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

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

Section 1.701(d) is being added to set forth the method for

calculating any reduction in the period calculated under

Sec. 1.701(c)(3). As required by 35 U.S.C. 154(b)(3)(B),

Sec. 1.701(d)(1) provides that the period of delay calculated under

Sec. 1.701(c)(3) shall be reduced by any time during the period of

appellate review that occurred before three years from the filing date

of the first national application for patent presented for examination.

The ``filing date'' for the purpose of Sec. 1.701(d)(1) would be the

earliest effective U.S. filing date, but not including the filing date

of a provisional application or the international filing date of a PCT

application. For PCT applications entering the national stage, the PTO

will consider the ``filing date'' for the purpose of Sec. 1.701(d)(1)

to be the date on which applicant has complied with the requirements of

Sec. 1.494(b), or Sec. 1.495(b), if applicable.

As contained in Public Law 103-465, 35 U.S.C. 154(b)(3)(C) states

that the period of extension referred to in 35 U.S.C. 154(b)(2) ``shall

be reduced for the period of time during which the applicant for patent

did not act with due diligence, as determined by the Commissioner.''

Section 1.701(d)(2) is being added to provide that the period of delay

calculated under Sec. 1.701(c)(3) shall be reduced by any time during

the period of appellate review, as determined by the Commissioner,

during which the applicant for patent did not act with due diligence.

Section 1.701(d)(2) also provide that in determining the due diligence

of an applicant, the Commissioner may examine the facts and

circumstances of the applicant's actions during the period of appellate

review to determine whether the applicant exhibited that degree of

timeliness as may reasonably be expected from, and which is ordinarily

exercised by, a person during a period of appellate review. Acts which

the Commissioner considers to constitute prima facie evidence of lack

of due diligence under Sec. 1.701(d)(2) are suspension at applicant's

request under Sec. 1.103(a) during the period of appellate review and

abandonment during the period of appellate review.

Section 3.21 is being amended to provide that an assignment

relating to a national patent application must identify the national

patent application by the application number (consisting of the series

code and the serial number, [[Page 20205]] e.g., 07/123,456) and to

eliminate the use of serial number and filing date as an identifier for

national patent applications in assignment documents. This change is

intended to eliminate any confusion as to whether an application

identified by its serial number and filing date in an assignment

document is an application filed under Sec. 1.53(b)(1), 1.60 or 1.62 or

a design application or a provisional application since there is a

different series code assigned to each of these types of applications.

Section 3.21 is also being amended to provide that if an assignment

of a patent application filed under Sec. 1.53(b)(1) or Sec. 1.62 is

executed concurrently with, or subsequent to, the execution of the

patent application, but before the patent application is filed, it must

identify the patent application by its date of execution, name of each

inventor, and title of the invention so that there can be no mistake as

to the patent application intended.

Further, Sec. 3.21 is being amended to provide that if an

assignment of a provisional application is executed before the

provisional application is filed, it must identify the provisional

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

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

Section 3.81 is being amended to replace the reference to

Sec. 1.17(i)(1) with a reference to Sec. 1.17(i) to be consistent with

the change to Sec. 1.17.

Responses to and Analysis of Comments: Forty-nine written comments

were received in response to the Notice of Proposed Rulemaking. These

comments, along with those made at the public hearing, have been

analyzed. Some suggestions made in the comments have been adopted and

others have not been adopted. Responses to the comments follow.

General Comments

1. Comment: One comment questioned the use of the word ``proposed''

in the notice of proposed rulemaking in describing the statutory

amendments contained in Public Law 103-465.

Response: The statutory changes contained in Public Law 103-465

were described as ``proposed'' changes in the Notice of Proposed

Rulemaking because the President had not signed the legislation at the

time the notice was prepared for publication. In fact, the legislation

was signed by the President on December 8, 1994, which is the date of

enactment.

2. Comment: Several comments urged the PTO to favorably consider

the 17/20 patent term specified in H.R. 359 since this proposed

legislation would overcome the existing impact of extended PTO

prosecution and eliminate patent term extensions for prosecution

delays. Furthermore, the proposed legislation is consistent with the

Uruguay Round Agreements Act, Public Law 103-465.

Response: The administration and the PTO strongly believe that the

20-year patent term as enacted in Public Law 103-465 is the appropriate

way to implement the 20-year patent term required by the GATT Uruguay

Round Agreements Act. The PTO will take steps to ensure that processing

and examination of applications are handled expeditiously.

3. Comment: One comment stated that the proposed rules are

premature in view of the Rohrabacher bill, H.R. 359.

Response: The proposed rules are not premature. Public Law 103-465

was signed into law on December 8, 1994, with an effective date of June

8, 1995, for the implementation of the 20-year patent term and

provisional applications. The Commissioner must promulgate regulations

to implement the changes required by Public Law 103-465.

4. Comment: One comment stated that there is nothing in the TRIPs

agreement that requires the term to be measured from filing, nor that

provisional applications be provided for, nor that new fees of $730 as

set forth in Secs. 1.17 (r) and (s) be established. It is suggested

that 35 U.S.C. 154 be amended to provide that ``every patent (other

than a design patent) shall be granted a term of twenty years from the

patent issue date, subject to the payment of maintenance fees.'' It was

also suggested that the section regarding maintenance fees be amended

to add a new fee payable at 16.5 years of $5000 (for large entity)/

$2500 (for small entity) for maintenance of patent between 17 and 20

years.

Response: The suggestion has not been adopted. The administration

and the PTO strongly believe that the 20-year patent term as enacted in

Public Law 103-465 is the appropriate way to implement the 20-year

patent term required by the GATT Uruguay Round Agreements Act. The

establishment of a provisional application is not required by GATT. The

provisional application has been adopted as a mechanism to provide easy

and inexpensive entry into the patent system. The filing of provisional

applications is optional. Provisional applications will place domestic

applicants on an equal footing with foreign applicants as far as the

measurement of term is concerned because the domestic priority period,

like the foreign priority period, is not counted in determining the

endpoint of the patent term. As to the Secs. 1.17 (r) and (s) fees, the

statute authorizes the Commissioner to establish appropriate fees for

further limited reexamination of applications and for examination of

more than one independent and distinct inventions in an application.

5. Comment: One comment suggested that the 20-year patent term of

claims drawn to new matter in continuation-in-part (CIP) applications

be measured from the filing date of the CIP application, irrespective

of any reference to a parent application under 35 U.S.C. 120.

Response: The suggestion has not been adopted. The term of a patent

is not based on a claim-by-claim approach. Under 35 U.S.C. 154(a)(2),

if an application claims the benefit of the filing date of an earlier

filed application under 35 U.S.C. 120, 121 or 365(a), the 20-year term

of that application will be based upon the filing date of the earliest

U.S. application that the application makes reference to under 35

U.S.C. 120, 121 or 365(a). For a CIP application, applicant should

review whether any claim in the patent that will issue is supported in

an earlier application. If not, applicant should consider canceling the

reference to the earlier filed application.

6. Comment: One comment objected to the 20-year term provisions of

Public Law 103-465 because it was believed that payment of maintenance

fees would be required earlier under 20-year term than under 17-year

term.

Response: The payment of maintenance fees are not due earlier under

20-year term than under 17-year term. Maintenance fees continue to be

due at 3.5, 7.5 and 11.5 years from the issue date of the patent.

7. Comment: Several comments suggested that the expiration date be

printed on the face of the patent.

Response: The suggestion has not been adopted. The expiration date

will not be printed on the face of the patent. The PTO will publish any

patent term extension that is granted as a result of administrative

delay pursuant to Sec. 1.701 on the face of the patent. The term of a

patent will be readily discernible from the face of the patent.

Furthermore, it is noted that the term of a patent is dependent on the

timely payment of maintenance fees which is not printed on the face of

the patent.

8. Comment: One comment suggested that in order to aid the bar in

advising clients as to whether a provisional application has had its

priority claimed in a patent, the PTO should somehow link the

provisional application number [[Page 20206]] with the complete

application number and/or the patent number.

Response: It is contemplated by the PTO that all provisional

applications will be given application numbers, starting with a series

code ``60'' followed by a six digit number, e.g., ``60/123,456.'' If a

subsequent 35 U.S.C. 111(a) application claims the benefit of the

filing date of the provisional application pursuant to 35 U.S.C. 119(e)

and the 35 U.S.C. 111(a) application results in a patent, the

provisional application would be listed by its application number and

filing date on the face of the patent under the heading ``Related U.S.

Application Data.'' The public will be able to identify an application

under the above-noted heading as a provisional application by checking

to see if it has a series code of ``60.''

9. Comment: Several comments suggested that the PTO consider

modifying the rules to permit the filing of all applications by

assignees. This would promote harmonization with other patent laws

throughout the world and would eliminate one of the difficulties which

will occur for the PTO in considering claims for priority based on the

filing of a provisional application.

Response: Assignee filing was recommended in the 1992 Advisory

Commission Report on Patent Law Reform. The PTO is currently

undertaking a project to reengineer the entire patent process. The

suggestion will be taken under advisement in that project.

10. Comment: Several comments stated that a complete provisional

application should not be forwarded to a central repository for

storage.

Response: In view of the relatively small filing fee for a

provisional application and the fact that the provisional application

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

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

Repository for storage rather than being kept in the examination area

of the PTO.

11. Comment: One comment suggested that the provisional application

be maintained with the 35 U.S.C. 111(a) application because the

examiner may need it to determine whether the 35 U.S.C. 111(a)

application is entitled to the benefit of the prior provisional

application and in the event of 18-month publication, there will be a

demand for accessibility by the public to the provisional and 35 U.S.C.

111(a) applications upon publication.

Response: The suggestion has not been adopted. Benefit of the same

provisional application may be claimed in a number of 35 U.S.C. 111(a)

applications. If the PTO is to maintain the provisional application

file with one of several 35 U.S.C. 111(a) applications claiming benefit

of the provisional application and the 35 U.S.C. 111(a) application

containing the provisional application file were to go abandoned while

one of the other 35 U.S.C. 111(a) application issues, the public would

be entitled to inspect the provisional application file but not the

abandoned 35 U.S.C. 111(a) application file containing the provisional

application file. This would create access problems.

12. Comment: One comment suggested that provisional applications be

available in full to the public if the benefit of priority is being

claimed.

Response: Section 1.14 relating to access applies to all

applications including provisional applications. If the benefit of a

provisional application is claimed in a later filed 35 U.S.C. 111(a)

application which resulted in a patent, then access to the provisional

application will be available to the public pursuant to Sec. 1.14. The

mere fact that a provisional application is claimed in a later filed 35

U.S.C. 111(a) application does not give the public access to the

provisional application unless the 35 U.S.C. 111(a) application issues

as a patent.

13. Comment: Several comments requested that the PTO clarify

whether a 35 U.S.C. 111(a) application will be accorded an effective

date as a reference under 35 U.S.C. 102(e) as of the filing date of the

provisional application for which benefit under 35 U.S.C. 119(e) is

claimed. If so, the comment questioned whether pending applications

will be rejected under 35 U.S.C. 102(e) on the basis that an invention

was described in a patent granted on a provisional application by

another filed in the U.S. before the invention thereof by the applicant

for patent.

Response: If a patent is granted on a 35 U.S.C. 111(a) application

claiming the benefit of the filing date of a provisional application,

the filing date of the provisional application will be the 35 U.S.C.

102(e) prior art date. A pending application will be rejected under 35

U.S.C. 102(e) on the basis that an invention was described in a patent

granted on a 35 U.S.C. 111(a) application which claimed the benefit of

the filing date of a provisional application by another filed in the

U.S. before the invention thereof by the applicant for patent.

14. Comment: One comment suggested that the PTO issue a final rule

stating that if a 35 U.S.C. 111(a) application claims the benefit of

the filing date of a provisional application, the ``inventive entity''

for the purposes of 35 U.S.C. 102(e) will be the inventors listed on

the issued patent, and the list of inventors in the provisional

application shall have no effect on the identity of an ``inventive

entity'' for the purposes of 35 U.S.C. 102(e).

Response: The suggestion has not been adopted. The ``inventive

entity'' for the purpose of 35 U.S.C. 102(e) is determined by the

patent and not by the inventors named in the provisional application.

As long as the requirements of 35 U.S.C. 119(e) are satisfied, a patent

granted on a 35 U.S.C. 111(a) application which claimed the benefit of

the filing date of a provisional application has a 35 U.S.C. 102(e)

prior art effect as of the filing date of the provisional application

based on the inventive entity of the patent. It is clear from 35 U.S.C.

102(e) that the inventive entity is determined by the patent and a rule

to this effect is not necessary.

15. Comment: One comment requested the PTO to express its position

as to whether the filing of a provisional application with the

subsequent filing of a 35 U.S.C. 111(a) application claiming benefit of

the provisional application under 35 U.S.C. 119(e) creates a prior art

date against other patent applicants under 35 U.S.C. 102(g).

Response: As to 35 U.S.C. 102(g), the filing of a provisional

application with the subsequent filing of a 35 U.S.C. 111(a)

application claiming benefit of the provisional application under 35

U.S.C. 119(e) creates a prior art date under 35 U.S.C. 102(g) as of the

filing date of the provisional application.

16. Comment: One comment suggested that in view of the 20-year

patent term measured from filing, Sec. 1.103(a) should be deleted. The

PTO should not have the right to suspend action on any application,

thereby reducing applicant's term of protection.

Response: Section 1.103(a) refers to suspension of action as a

result of a request by applicant. If applicant wishes to suspend

prosecution and thereby reduce his/her term of protection, applicant

should be permitted to do so.

17. Comment: One comment suggested that in order to avoid delays

resulting from consideration of petitions to withdraw premature notices

of abandonment, examiners should be required to contact an attorney of

record prior to abandoning the application to find out if a response to

an Office communication has been filed.

Response: The suggestion has not been adopted. However, in order to

avoid loss of patent term, applicants are encouraged to check on the

status in [[Page 20207]] cases where applicants have not received a

return postcard from the PTO within two (2) weeks of the filing of any

response to a PTO action.

18. Comment: One comment asked whether there is a ``cut-off'' date

after which patentees may lose the opportunity to choose 17- vs. 20-

year patent term.

Response: The ``cut-off'' date is June 8, 1995. A patent that is in

force on June 8, 1995, or a patent that issues after June 8, 1995, on

an application filed before June 8, 1995, is automatically entitled to

the longer of the 20-year patent term measured from the earliest U.S.

effective filing date or 17 years from grant. This is automatic by

operation of law. Patentees need not make any election to be entitled

to the longer term. A patent that issues on an application filed on or

after June 8, 1995 is entitled to a 20-year patent term measured from

the earliest U.S. effective filing date.

19. Comment: One comment stated that there is no clear guidance as

to a patentee's ``bonus rights'' that may arise because of the

difference in a 17-year term vs. a 20-year term. Will parties that were

previously in a licensing arrangement have to renegotiate terms for the

bonus patent term?

Response: Section 154(c) of title 35, United States Code, states

that the remedies of sections 283 (injunction), 284 (damages) and 285

(attorney fees) shall not apply to acts which were commenced or for

which substantial investment was made before June 8, 1995, and became

infringing by reason of the 17/20 year term and that these acts may be

continued only upon the payment of an equitable remuneration to the

patentee that is determined in an action brought under chapters 28 and

29 of Title 35. There is no guidance provided in the statute as to the

meaning of ``substantial investment'' and ``equitable remuneration.''

Licensing arrangements are between the parties to the agreement and are

determined by the terms of the agreement and state law and are outside

the jurisdiction of the PTO.

20. Comment: One comment questioned whether an international

application designating the U.S. filed before June 8, 1995, with entry

into the U.S. national stage on or after June 8, 1995, preserves the

17-year patent term measured from grant.

Response: An international application designating the U.S. that is

filed before June 8, 1995, with entry into the U.S. national stage

under 35 U.S.C. 371 on or after June 8, 1995, preserves the option for

a 17-year patent term measured from date of grant.

21. Comment: One comment suggested that 35 U.S.C. 371(c) be amended

because a declaration should not be required to obtain a filing date

and a prior art date under 35 U.S.C. 102(e).

Response: The suggestion has not been adopted. This issue was not

addressed in the Notice of Proposed Rulemaking. However, the suggestion

will be taken under advisement as part of a comprehensive effort being

conducted by the PTO to re-engineer the entire patent process.

22. Comment: One comment suggested that Secs. 1.604, 1.605 and

1.607 be amended to state that provisional applications are not subject

to interference.

Response: The suggestion has not been adopted because it is

unnecessary. By statute, 35 U.S.C. 111(b)(8), provisional applications

are not subject to 35 U.S.C. 135, i.e., a provisional application will

not be placed in interference.

23. Comment: One comment suggested that Secs. 1.821-1.825 be

amended so that (1) only unbranched sequences of ten or more amino

acids and twenty or more nucleotides which are claimed have to be

included in Sequence Listings, (2) previously published sequences can

be omitted, and (3) the sequences of primers and oligonucleotide probes

should not be included in a Sequence Listing if encompassed by another

disclosed sequence.

Response: The suggestion has not been adopted. There was no change

proposed to Secs. 1.821-1.825 in the Notice of Proposed Rulemaking.

However, the suggestion will be taken under advisement as part of a

comprehensive effort being conducted by the PTO to reengineer the

entire patent process.

24. Comment: One comment suggested that Secs. 5.11 to 5.15 be

amended to provide for the grant of a foreign license for a provisional

application.

Response: The suggestion has not been adopted. The present language

of Secs. 5.11 to 5.15 already provides for the grant of a foreign

license for a provisional application.

25. Comment: One comment suggested that in order to assist defense

agencies in reviewing application for secrecy orders, PTO should (1)

automatically impose a secrecy order on any application filed under 35

U.S.C. 111(a) if a secrecy order was previously imposed on

corresponding provisional application, and (2) require applications

filed under 35 U.S.C. 111(a) based on a previous provisional

application to indicate changes made to the provisional application in

the 35 U.S.C. 111(a) application by means of underlining and

bracketing.

Response: The suggestions have not been adopted. The PTO cannot

automatically impose a secrecy order on any 35 U.S.C. 111(a)

applications even if a secrecy order was previously imposed on a

provisional application, for which benefit under 35 U.S.C. 119(e) is

claimed, unless the agency which imposed the secrecy order on the

provisional application specifically requests the PTO to do so since

the 35 U.S.C. 111(a) application could disclose subject matter which is

different from that which is disclosed in the provisional application.

As to item (2), the PTO will not require applicants to identify the

differences in subject matter disclosed in the 35 U.S.C. 111(a)

application and the provisional application.

26. Comment: One comment suggested that in order to relieve defense

agencies from possible liability for secrecy orders imposed for more

than 5 years, the PTO should seek legislation setting patent term at 20

years from the earliest filing date or 17 years from the issue date,

whichever is longer, for any patent application placed under secrecy

order.

Response: The suggestion has not been adopted. The PTO strongly

believes that the 20-year patent term as enacted in Public Law 103-465

is the appropriate way to implement the 20-year patent term required by

the GATT Uruguay Round Agreements Act. The 35-year limit for patent

term extension set forth in Sec. 1.701(b) is required by statute, 35

U.S.C. 154(b).

Comments Directed to Specific Rules

27. Comment: One comment suggested that in order to eliminate the

need for the expression ``other than a provisional application'' in

other parts of the regulations, Sec. 1.9 should be amended to identify

a 35 U.S.C. 111(a) application by some term that can be used in the

rules to distinguish that type of application from a provisional

application.

Response: The suggestion has been adopted. The rules are being

amended to include a definition of the term ``nonprovisional

application'' in Sec. 1.9(a) to describe an application filed under 35

U.S.C. 111(a) or 371. Further, the term ``nonprovisional application''

is being used in the final rules where the rule applies only to

applications filed under 35 U.S.C. 111(a) or 371 and not to provisional

applications.

28. Comment: One comment suggested that the rules be simplified if

[[Page 20208]] a ``national application'' could be defined in Sec. 1.9

to exclude a provisional application.

Response: The suggestion has not been adopted. Section 1.9(a),

prior to this rulemaking, defined a national application to include any

application filed under 35 U.S.C. 111. A provisional application is an

application filed under 35 U.S.C. 111. It is appropriate to define a

provisional application as a special type of national application.

29. Comment: One comment requested an explanation of the showing

required in a petition under Secs. 1.12 and 1.14 for access to pending

applications and to assignment records for pending applications.

Response: There was no substantive change proposed to either

Sec. 1.12 or 1.14 in the Notice of Proposed Rulemaking. Thus, the

showing required in a petition under Sec. 1.12 or 1.14 remains the same

after this final rulemaking as before. A discussion of such a petition

can be found in section 103 of the MPEP.

30. Comment: Several comments objected to the definition in

Sec. 1.45(c) of joint inventors in provisional applications as being

those having made a contribution to ``the subject matter disclosed'' in

the provisional application. Various language, such as, ``the subject

matter which constitutes the invention,'' ``subject matter disclosed

and regarded to be the invention,'' ``disclosed invention,'' ``the

inventive subject matter disclosed'' was suggested. Another comment

requested guidance as to the determination of inventorship in a

provisional application.

Response: The suggestion has not been adopted. The term

``invention'' is typically used to refer to subject matter which

applicant is claiming in his/her application. Since claims are not

required in a provisional application, it would not be appropriate to

reference joint inventors as those who have made a contribution to the

``invention'' disclosed in the provisional application. If the

``invention'' has not been determined in the provisional application

because no claims have been presented, then the name(s) of those

person(s) who have made a contribution to the subject matter disclosed

in the provisional application should be submitted. Section 1.45(c)

states that ``if multiple inventors are named in a provisional

application, each named inventor must have made a contribution,

individually or jointly, to the subject matter disclosed in the

provisional application.'' All that Sec. 1.45(c) requires is that if

someone is named as an inventor, that person must have made a

contribution to the subject matter disclosed in the provisional

application. When applicant has determined what the invention is by the

filing of the 35 U.S.C. 111(a) application, that is the time when the

correct inventors must be named. The 35 U.S.C. 111(a) application must

have an inventor in common with the provisional application in order

for the 35 U.S.C. 111(a) application to be entitled to claim the

benefit of the provisional application under 35 U.S.C. 119(e).

31. Comment: Several comments suggested that it might be desirable

to correct inventorship in a provisional application where an

individual was erroneously named as an inventor and that the procedure

for doing so should be set forth in Sec. 1.48.

Response: Under 35 U.S.C. 119(e), as contained in Public Law 103-

465, a later filed application under 35 U.S.C. 111(a) may claim

priority benefits based on a copending provisional application so long

as the applications have at least one inventor in common. An error in

naming a person as an inventor in a provisional application would not

require correction by deleting the erroneously named inventor from the

provisional application since this would have no effect upon the

ability of the provisional application to serve as a basis for a

priority claim under 35 U.S.C. 119(e). However, in response to the

comments, Sec. 1.48 is being amended to include a new paragraph (e)

which sets forth the requirements for deleting the names of the

inventors incorrectly named as joint inventors in a provisional

application, namely, a petition including a verified statement by the

inventor(s) whose name(s) are being deleted stating that the error

arose without deceptive intent, the fee set forth in Sec. 1.17(q) and

the written consent of all assignees.

32. Comment: One comment suggested that in order to make the

procedures for provisional applications as simple as possible, there is

no need to provide any rules to add inventor(s) or change inventorship

in a provisional application since the whole concept of inventorship is

meaningless without a claim. Error in inventorship can be corrected by

the filing of and 35 U.S.C. 111(a) application within 12 months after

the filing of a provisional application.

Response: The suggestion has not been adopted. One of the

requirements of 35 U.S.C. 119(e) is that a 35 U.S.C. 111(a) application

must have at least one inventor in common with a provisional

application in order for the 35 U.S.C. 111(a) application to be

entitled to claim the benefit of the filing date of the provisional

application. In situations where there is no inventor in common between

the 35 U.S.C. 111(a) application and the provisional application due to

error in naming the inventors in the provisional application,

procedures must be established to permit applicant to correct the

inventorship in the provisional application.

33. Comment: One comment suggested that an individual who is the

inventor of subject matter disclosed in a provisional application, but

who is not named as an inventor in the provisional application because

that subject matter was not intended to be claimed in a later filed 35

U.S.C. 111(a) application, could be added as an inventor pursuant to

Sec. 1.48(d) in the provisional application if the subject matter was

claimed in 35 U.S.C. 111(a) application.

Response: The individual could be added as an inventor pursuant to

Sec. 1.48(d) in the provisional application so long as the individual

was originally omitted without deceptive intent.

34. Comment: One comment questioned whether it would be proper for

a registered practitioner who did not file the provisional application

to sign the statement required by Sec. 1.48(d) that the error occurred

without deceptive intention on the part of the inventors.

Response: It would be proper for a registered practitioner who did

not file the provisional application to sign the statement required by

Sec. 1.48(d), if the registered practitioner has a reasonable basis to

believe the truth of the statement being signed.

35. Comment: One comment suggested that there should be no

diligence requirement to correct inventorship in a provisional

application.

Response: Diligence is not a requirement to correct inventorship in

a provisional application in either Sec. 1.48(d) or 1.48(e).

36. Comment: One comment suggested that Sec. 1.48(a) be amended by

deleting the requirements for ``a statement of facts verified by the

original named inventor or inventors establishing when the error

without deceptive intention was discovered and how it occurred'' and

for the written consent of any assignee.

Response: The suggestion has not been adopted. There was no

substantive change proposed to Sec. 1.48(a) in the Notice of Proposed

Rulemaking. Since the correction of inventorship affects ownership

rights, the existing rules are designed to provide assurances that all

parties including the original named inventors and all assignees agree

to the change of inventorship. If the [[Page 20209]] requirements for

verified statements of facts from the original named inventors and

written consent of the assignees are to be deleted, the PTO would no

longer have the assurances that all parties agree to the change.

37. Comment: One comment expressed concern that a provisional

application filed without a claim will leave subsequent readers with

little or no clue as to what the inventors in the provisional

application considered to be their invention at the time the

provisional application was filed and doubted that a provisional

application filed without a claim defining the invention could ever

provide a sufficient disclosure to support a claim for a foreign or

U.S. priority date.

Response: Claims are not required by the statute to provide a

specification in compliance with the requirements of 35 U.S.C. 112,

first paragraph. However, if an applicant desires, one or more claims

may be included in a provisional application. Any claim field with a

provisional application will, of course, be considered part of the

original provisional application disclosure.

38. Comment: One comment suggested that the PTO issue a

specification format or guideline for a provisional application to

enable an inventor to comply with 35 U.S.C. 112, first paragraph.

Response: The format of a provisional application is the same as

for other applications and is set forth in existing Sec. 1.77 which is

applicable to provisional applications except no claims are required

for provisional applications.

39. Comment: Several comments suggested that the PTO revise its

rules to clarify that strict adherence to the enablement, description

and best mode requirements of 35 U.S.C. 112, first paragraph, is not

required in provisional applications.

Response: The suggestion has not been adopted. The substantive

requirements of a specification necessary to comply with 35 U.S.C. 112,

first paragraph, are established by court cases interpreting that

section of the statute, not by rule. The case law applies to

provisional applications as well as to applications filed under 35

U.S.C. 111(a).

40. Comment: Several comments suggested that the rules or comments

published with the Final Rule indicate whether there is any requirement

to update the best mode disclosed in the provisional application when

filing the 35 U.S.C. 111(a) application.

Response: No rule was proposed to address the issue when going from

a provisional application to a 35 U.S.C. 111(a) application because no

current rule exists when going from one 35 U.S.C. 111(a) application to

another 35 U.S.C. 111(a) application. The question of whether the best

mode has to be updated is the same when going from one 35 U.S.C. 111(a)

application to another 35 U.S.C. 111(a) application or from a

provisional application to a 35 U.S.C. 111(a) application. Accordingly,

the rationale of Transco Products, Inc. v. Performance Contracting

Inc., 38 F.3d 551, 32 U.S.P.Q.2d 1077 (Fed. Cir. 1994), would appear to

be applicable. Clearly, if the substantive content of the application

does not change when filing the 35 U.S.C. 111(a) application, there is

no requirement to update the best mode. However, if subject matter is

added to the 35 U.S.C. 111(a) application, there may be a requirement

to update the best mode.

41. Comment: One comment suggested that Sec. 1.51(c) be amended to

permit a provisional application to be filed with an authorization to

charge fees to a deposit account.

Response: Section 1.51(c) permits an application to be filed with

an authorization to charge fees to a deposit account. Section 1.51(c)

applies to provisional applications. Therefore, no change to

Sec. 1.51(c) is necessary.

42. Comment: One comment suggested that the PTO confirm that there

will be no procedural examination of a provisional application other

than to determine whether the provisional application complies with

Sec. 1.51(a)(2).

Response: The PTO intends to require compliance with the formal

requirements of Secs. 1.52(a)-(c) only to the extent necessary to

permit the PTO to properly microfilm and store the application papers.

43. Comment: Several comments suggested that an English translation

of a foreign language provisional application should not be required

unless necessary in prosecution of the 35 U.S.C. 111(a) application to

establish benefit. If an English translation is required, there is no

useful purpose to require the translation at any time earlier than the

filing of 35 U.S.C. 111(a) application claiming the benefit of the

provisional application.

Response: Provisional applications may be filed in a language other

than English as set forth in existing Sec. 1.52(d). However, an English

language translation is necessary for security screening purposes.

Therefore, the PTO will require the English language translation and

payment of the fee required in Sec. 1.52(d) in the provisional

application. Failure to timely submit the translation in response to a

PTO requirement will result in the abandonment of the provisional

application. If a 35 U.S.C. 111(a) application is filed without

providing the English language translation in the provisional

application, the English language translation will be required to be

supplied in every 35 U.S.C. 111(a) application claiming priority of the

non-English language provisional application.

44. Comment: One comment suggested that a new model oath or

declaration form for use in claiming 35 U.S.C. 119(e) priority and a

``cover sheet'' for use in filing provisional applications be published

as an addendum to the final rules.

Response: The suggestion has been adopted. See Appendix A for the

sample cover sheet for filing a provisional application and Appendix B

for the sample declaration for use in claiming 35 U.S.C. 119(e)

priority.

45. Comment: One comment suggested that the statement in

Sec. 1.53(b)(2) that the provisional application will not be given a

filing date if all the names of the actual inventor or inventor(s) are

not supplied be deleted and Sec. 1.41 be amended to make an exception

for provisional applications. The comment suggested that 35 U.S.C.

111(b) is satisfied as long as the name of one person who made an

inventive contribution to the subject matter of the application is

given.

Response: The suggestion has not been adopted. Section 111(b) of

title 35, United States Code, states that ``a provisional application

shall be made or authorized to be made by the inventor.'' This language

parallels 35 U.S.C. 111(a). The naming of inventors for obtaining a

filing date for a provisional application is the same as for other

applications. A provisional application filed with the inventors

identified as ``Jones et al.'' will not be accorded a filing date

earlier than the date upon which the name of each inventor is supplied

unless a petition with the fee set forth in Sec. 1.17(i) is filed which

sets forth the reasons the delay in supplying the names should be

excused. Administrative oversight is an acceptable reason. It should be

noted that for a 35 U.S.C. 111(a) application to be entitled to claim

the benefit of the filing date of a provisional application, the 35

U.S.C. 111(a), application must have at least one inventor in common

with the provisional application.

46. Comment: One comment suggested that a drawing should not be

required to obtain a filing date for a provisional application.

Whatever is filed should be given a serial number and filing date in

order to establish status as a provisional application, regardless of

what is in the specification or drawing. If the provisional

[[Page 20210]] application omitted drawings, has pages missing, or is

otherwise incomplete, then applicant may not be able to rely on the

filing date of the provisional application in a subsequently filed 35

U.S.C. 111(a) application. It should not be the job of the Application

Branch to review compliance with Sec. 1.81(a).

Response: Section 111(b) of title 35, United States Code, states

that a provisional application must include a specification as

prescribed by 35 U.S.C. 112, first paragraph and a drawing as

prescribed by 35 U.S.C. 113. Drawings are required pursuant to 35

U.S.C. 113 if they are necessary to understand the subject matter

sought to be patented. If a provisional application as filed omitted

drawings and/or has pages missing, the provisional application is prima

facie incomplete and no filing date will be granted. Application Branch

currently reviews all applications to make sure that no filing date

will be granted to an application that is prima facie incomplete.

Application Branch will perform the same type of review with

provisional applications. If a filing date is not granted to a

provisional application because it is prima facie incomplete, applicant

may petition the PTO under Sec. 1.182 to grant a filing date to the

provisional application as of the date of deposit of the application

papers if it can be shown that the omitted items are not necessary for

the understanding of the subject matter.

47. Comment: One comment objected to the requirement in

Sec. 1.53(b)(2)(i) for a cover sheet identifying the application as a

provisional application because it is unnecessarily rigid and contrary

to Congress' desire to keep the filing of provisional application as

simple as possible.

Response: The requirement that a provisional application be

specifically identified on filing as a provisional application is not

seen to be burdensome on the applicant and is necessary for the PTO to

properly process the papers as a provisional application. All an

applicant is required to do in order to comply with the requirement of

Sec. 1.53(b)(2)(i) is to include a transmittal sheet identifying the

papers being filed as a PROVISIONAL application.

48. Comment: Several comments suggested that in

Sec. 1.53(b)(2)(ii), as proposed, the phrase ``the expiration of 12

months after the filing date of the provisional application'' should

read ``the expiration of 12 months after the filing date of the

Sec. 1.53(b)(1) application''.

Response: The suggestion has been adopted.

49. Comment: One comment objected to the requirement in

Sec. 1.53(b)(2)(ii) for a petition to convert an application filed

under Sec. 1.53(b)(1) to a provisional application and suggested that

any confusion concerning applicant's intention could be handled

informally without a petition or petition fee.

Response: The requirement for a petition and fee is intended to

ensure that the cost of any PTO reprocessing is borne specifically by

the applicant requesting the action.

50. Comment: Several comments suggested that the filing fee

required in an application filed under 35 U.S.C. 111(a) claiming

benefit of the filing date of an earlier 35 U.S.C. 111(a) application

which has been converted to a provisional application under proposed

Sec. 1.53(b)(2)(ii) be reduced, since the $730/$365 filing fee was paid

in the earlier application.

Response: The suggestion has not been adopted. The filing fee

required in an application filed under 35 U.S.C. 111(a) is set by

statute. The statute does not provide for the suggested reduction in

the filing fee.

51. Comment: One comment suggested that the proposed

Sec. 1.53(b)(2)(iii) should apply retroactively to permit applications

filed between June 9, 1994, and June 8, 1995, to be converted to

provisional applications.

Response: The suggestion has not been adopted. The statute does not

permit a provisional application to have a filing date prior to June 8,

1995.

52. Comment: One comment suggested that Sec. 1.53(b)(2)(ii) be

revised to state that the petition requesting conversion must also be

filed before (1) the application becomes involved in interference, or

(2) notice by the PTO of intent to publish the application as a

statutory invention registration. This suggestion conforms with 35

U.S.C. 11(b)(8).

Response: The suggestion has not been fully adopted. It is not

necessary to include interference in Sec. 1.53(b)(2)(ii) because if a

35 U.S.C. 111(a) application becomes involved in an interference

proceeding and applicant files a petition requesting conversion of that

35 U.S.C. 111(a) application to a provisional application, the 35

U.S.C. 111(a) will be removed from the interference proceeding upon

granting the petition to convert. When a subsequent 35 U.S.C. 111(a)

application is filed based on the provisional application, the

subsequent 35 U.S.C. 111(a) application could be placed in the

interference proceeding if necessary. As to the reference to statutory

invention registration, Sec. 1.53(b)(2)(ii) is being amended to require

the petition and the fee be filed prior to the earlier of the

abandonment of the 35 U.S.C. 111(a) application, the payment of the

issue fee, the expiration of 12 months after the filing date of the 35

U.S.C. 111(a) application, or the filing of a request for a statutory

invention registration under Sec. 1.293.

53. Comment: One comment suggested that the procedures for

converting a 35 U.S.C. 111(a) application to a provisional application

be explained in greater detail in Sec. 1.53(b)(2)(ii) or in the

discussion. If a 35 U.S.C. 111(a) application is converted to a

provisional application on the last day of the 12-month period, and a

second 35 U.S.C. 111(a) application is concurrently filed, how should

this be done and how should the first sentence in the second 35 U.S.C.

111(a) application be worded. Furthermore, if a 35 U.S.C. 111(a)

application is converted to a provisional application on the last day

of the 12-month period, will it be necessary to file a second 35 U.S.C.

111(a) application on the same day, or else lose the priority claim.

Response: The suggestion has not been adopted. The language in

Sec. 1.53(b)(2)(ii) is clear relating to the requirements for

converting a 35 U.S.C. 111(a) application to a provisional application.

If applicant wishes to convert a 35 U.S.C. 111(a) application to a

provisional application, applicant must file a petition requesting the

conversion along with the petition fee set forth in Sec. 1.17(q). The

petition and the fee must be filed prior to the earlier of the

abandonment of the 35 U.S.C. 111(a) application, the payment of the

issue fee, the expiration of 12 months after the filing date of the 35

U.S.C. 111(a) application, or the filing of a request for a statutory

invention registration under Sec. 1.293. In the example noted in the

comment, if a 35 U.S.C. 111(a) application is converted to a

provisional application on the last day of the 12-month period, a

second 35 U.S.C. 111(a) application must be filed on that same day,

otherwise, applicant will lose the priority pursuant to 35 U.S.C.

119(e). An example of how the first sentence of the second 35 U.S.C.

111(a) application would read is, ``This application claims the benefit

of U.S. Provisional Application No. 60/------, filed ------, which was

converted from Application No.------.''

54. Comment: One comment suggested that the PTO consider a rule

mandating that any prior U.S. application that would have been eligible

for conversion to a provisional application that is abandoned in favor

of a continuing application within one [[Page 20211]] year of the

earlier priority date asserted be deemed constructively converted to a

provisional application.

Response: The suggestion has not been adopted. Conversion of a 35

U.S.C. 111(a) application to a provisional will be permitted only by

way of a petition and under the conditions set forth in

Sec. 1.53(b)(2)(ii). One reason for this is that the PTO plans to

provide sufficient information on the printed patent to determine the

end date of the 20-year patent term by identifying provisional

applications using a unique series code, i.e., ``60''. Thus, a 35

U.S.C. 111(a) application converted to a provisional application will

need to be reprocessed by the PTO with a new application number. The

petition fee is intended to reimburse the PTO for the extra processing

necessitated by the conversion.

55. Comment: One comment stated that Sec. 1.53(b)(2)(ii) permits

the conversion of a 35 U.S.C. 111(a) application to a provisional

application. However, it is silent as to whether such a conversion

would kill any benefit the 35 U.S.C. 111(a) application had of domestic

and/or foreign priority.

Response: Section 111(b)(7) of title 35, United States Code,

specifically states that a provisional application shall not be

entitled to the right of priority of any other application under 35

U.S.C. 119 or 365(a) or to the benefit of an earlier filing date in the

United States under 35 U.S.C. 120, 121, or 365(c). If a 35 U.S.C.

111(a) application is converted to a provisional application, the

granting of the conversion will automatically eliminate any claim of

priority which could have been made in the 35 U.S.C. 111(a)

application.

56. Comment: Several comments suggested that it was inconsistent

with the purpose of the provisional application to require any

compliance with the Sequence Disclosure Rules Secs. 1.821-1.823 and

1.825, since the provisional applications are not examined and there is

no comparison of the sequences with the prior art.

Response: The Office agrees with the comments that a provisional

application need not comply with the requirements of Secs. 1.821

through 1.825. Section 1.53(b)(2)(iii) is being amended to indicate

that the requirements of Secs. 1.821 through 1.825 regarding sequence

listings are not mandatory for a provisional application. However,

applicants are cautioned that in order for a 35 U.S.C. 111(a)

application to obtain the benefit of the filing date of an earlier

filed provisional application, the claimed subject matter of the 35

U.S.C. 111(a) application must have been disclosed in the provisional

application in a manner provided by 35 U.S.C. 112, first paragraph.

Applicants are encouraged to follow the sequence rules to ensure that

support for the invention claimed in the 35 U.S.C. 111(a) application

can be readily ascertained in the provisional application.

57. Comment: One comment suggested that the language in

Sec. 1.53(e)(2) that a provisional application will become abandoned no

later than twelve months after its filing date was misleading and that

the words ``no later than'' should be deleted because it was believed

that a provisional application could not be abandoned prior to twelve

months after its filing date.

Response: The statute does not state that a provisional application

can never be abandoned prior to twelve months after its filing date. In

fact, a provisional application may be abandoned as a result of

applicant's failure to timely respond to a PTO requirement. For

example, if a provisional application which has been accorded a filing

date does not include the appropriate filing fee or the cover sheet

required by Sec. 1.51(a)(2), applicant will be so notified if a

correspondence address has been provided and given a period of time

within which to file the fee, cover sheet and to pay the surcharge as

set forth in Sec. 1.16(l). Failure to timely respond will result in the

abandonment of the application. This may occur prior to twelve months

after its filing date. Furthermore, a provisional application may also

be expressly abandoned prior to twelve months from its filing date.

58. Comment: One comment objected to the deletion of the

``retention fee'' practice in Sec. 1.53(d) since it permits an

applicant in a first application claiming benefits under 35 U.S.C. 119

(a)-(d) or 120 to correct inventorship by filing a second application

without having to pay the full filing fee in the first application.

Response: Since the comment indicated that there is a benefit to

retain the retention fee practice, the proposal to eliminate the

practice is withdrawn.

59. Comment: One comment stated that the language of Secs. 1.53

(d)(1) and (d)(2) indicates an intent by the PTO to mail the ``Notice

Of Missing Parts'' to applicant's post office address and argues that

the ``Notice'' should be mailed to the registered practitioner who

filed the application on behalf of the applicant.

Response: The language in Secs. 1.53 (d)(1) and (d)(2) states that

the applicant will be notified of the missing part, if a correspondence

address is provided. This means that the ``Notice'' to applicant will

be mailed to the correspondence address provided in the application

papers. Under current PTO practice, if no specific correspondence

address is identified in the application, the address of the registered

practitioner who filed the application on behalf of the applicant is

used as the correspondence address. If no specific correspondence

address or registered practitioner is identified in the application,

the post office address of the first named inventor is used as the

correspondence address. No change in current PTO practice in this

regard is required as a result of Sec. 1.53(d)(2) nor is any change

planned.

60. Comment: Several comments objected to the proposed deletion of

Sec. 1.60. One comment suggested that the deletion of Sec. 1.60 was a

major rule change and should have been proposed separate from the

proposed rules dealing with the changes in practice required by Public

Law 103-465.

Response: In view of the comments received, the proposal to delete

Sec. 1.60 is withdrawn. However, the proposal will be considered as

part of a comprehensive effort being conducted by the PTO to reengineer

the entire patent process.

61. Comment: One comment suggested that in view of the deletion of

Sec. 1.60, language should be incorporated in Sec. 1.53(a)(1) to state

that a copy of the prior application along with a copy of the

declaration may be filed to obtain a filing date. Furthermore, full

details and guidelines of the procedure should accompany the rule.

Response: The suggestion has not been adopted. The proposal to

delete Sec. 1.60 is withdrawn in view of several comments received

objecting to the deletion.

62. Comment: One comment suggested that the removal of the stale

oath practice be codified.

Response: The suggestion has not been adopted. Neither the statute

nor the rules require a recent date of execution to appear on the oath

or declaration. The PTO practice of objecting to an oath or declaration

where the time elapsed between the date of execution and the filing

date of the application is more than three months is found in section

602.05 of the MPEP. Therefore, the removal of the stale oath practice

will be accomplished by amending the MPEP.

63. Comment: One comment questioned whether a copy of an

application faxed to an attorney could be filed in the PTO as the

application papers.

Response: Yes. While a patent application may not be faxed directly

to the PTO, an application faxed to an [[Page 20212]] attorney may be

forwarded to the PTO by mail or courier as the application papers

provided the papers meet the formal requirements of Sec. 1.52.

Effective November 22, 1993, Sec. 1.4 was amended to include a new

paragraph (d) to specify that most correspondence filed in the PTO,

which requires a person's signature, may be an original, a copy of an

original or a copy of a copy. Only correspondence identified in

Secs. 1.4(e) and (f) require the original to be filed in the PTO. Thus,

an oath or declaration required by Sec. 1.63, 1.153, 1.162 or 1.175 may

be an original, a copy of an original or a copy of a copy. See 1156

Off. Gaz. Pat. Office 61 (November 16, 1993).

64. Comment: One comment suggested that applicant be permitted to

use Sec. 1.62 procedure to file the 35 U.S.C. 111(a) application which

claims the benefit of a provisional application, at least in those

situations where the 35 U.S.C. 111(a) application has been converted to

a provisional application which is followed by the filing of a second

35 U.S.C. 111(a) application.

Response: The suggestion has not been adopted. Section 1.62 will

not be amended to permit the filing of a 35 U.S.C. 111(a) application

based on a provisional application because the PTO sees this situation

as a trap for applicants. The filing procedures would be made more

complicated if an exception is provided to address situations where a

35 U.S.C. 111(a) application is converted to a provisional application

and a second 35 U.S.C. 111(a) application is later filed. However, the

suggestion will be taken under advisement when greater familiarity with

provisional applications is developed.

65. Comment: One comment suggested that Sec. 1.62 procedure be

replaced with a simple petition procedure to reopen prosecution.

Response: The suggestion is not being adopted. However, the

suggestion will be taken under advisement as part of a comprehensive

effort being conducted by the PTO to reengineer the entire patent

process.

66. Comment: One comment suggested that the language in

Sec. 1.62(a) that requires an identification of the ``applicant's name

of the prior complete application'' is confusing and should be

clarified.

Response: The suggestion has been adopted. Section 1.62 is being

amended to require the identification of the ``applicants named in the

prior complete application.''

67. Comment: One comment suggested that Sec. 1.62 be amended to

state that the refiling procedures set forth in Sec. 1.62 may be used

after the issue fee is paid when a petition under Sec. 1.313(b)(5) is

granted. This practice is permitted pursuant to the notice published in

1138 Off. Gaz. Pat. Office 40 (May 19, 1992).

Response: The suggestion has been adopted.

68. Comment: One comment suggested that Sec. 1.62 be amended to

clarify whether applicant needs to re-list, in the Sec. 1.62

application, all the references cited by the examiner and applicant in

the parent application in order to get those references printed on the

eventual patent.

Response: The suggestion has not been adopted. Section 609 of the

MPEP (Sixth Edition, Jan. 1995) has been amended to clarify that in a

Sec. 1.62 application, references submitted and cited in the parent

application need not be resubmitted. These references will be printed

on the patent. However, in any continuing application filed under

Sec. 1.53(b)(1) or 1.60, a list of the references must be resubmitted

if applicant wishes to have the references printed in the eventual

patent.

69. Comment: One comment suggested that Sec. 1.67 should go into

more detail on when supplemental oaths are required in Sec. 1.53

filings of continuation and divisional applications.

Response: The suggestion has been adopted because it is seen to be

unnecessary and no substantive change was proposed to Sec. 1.67 in the

Notice of Proposed Rulemaking.

70. Comment: One comment suggested that ``not but'' in Sec. 1.67(b)

should read ``but not''.

Response: The suggestion has been adopted.

71. Comment: Several comments suggested that a rule be provided to

state that an application for patent is permitted to claim the benefit

of the filing date of more than one prior provisional application so

long as the applicant complies with all statutory provisions.

Response: The suggestion has been adopted. Section 1.78(a)(3) is

being amended to indicate that applicants are permitted to separately

claim the benefit of the filing date of more than one prior provisional

application in a later filed 35 U.S.C. 111(a) application provided all

statutory requirements of 35 U.S.C. 119(e) are complied with. It is

noted that current practice permits an application to claim the

benefits of the filing date of more than one prior foreign application

under 35 U.S.C. 119(a)-(d) and of more than one prior copending U.S.

application under 35 U.S.C. 120, without an explicit statement to that

effect in the rules. Since the final rules are being amended to

specifically permit applications filed under 35 U.S.C. 111(a) to claim

the benefits of the filing date of more than one prior copending

provisional application, corresponding changes are also being made to

Secs. 1.55 and 1.78(a)(1) relating to claims for the benefits available

under 35 U.S.C. 119(a)-(d) and 120 to be consistent with

Sec. 1.78(a)(3).

72. Comment: Several comments requested that the PTO specify

language to use in the first sentence of an application when priority

is based on more than one provisional application.

Response: Section 1.78(a)(4) requires that ``any application

claiming the benefit of a prior filed copending provisional application

must contain or be amended to contain in the first sentence of the

specification following the title a reference to such prior provisional

application, identifying it as a provisional application, and including

the provisional application number.'' Where a 35 U.S.C. 111(a)

application claims the benefit of more than one provisional

application, a suitable reference would read, ``This application claims

the benefit of U.S. Provisional Application No. 60/----, filed ---- and

U.S. Provisional Application No. 60/----, filed ----.'' In addition,

for an application which is claiming the benefit under 35 U.S.C. 120 of

a prior application, which in turn claims the benefit of a provisional

application under 35 U.S.C. 119(e), a suitable reference would read,

``This application is a continuation of U.S. application No. 08/----,

filed ----, now abandoned, which claims the benefit of U.S. Provisional

Application No. 60/----, filed ----.''

73. Comment: One comment suggested that the rules address the

effect on patent term where an applicant in a continuing application

deletes the reference to the prior filed application before the patent

issues.

Response: an applicant has full control over claims to the benefit

of an earlier filing date under 35 U.S.C. 120, 121 or 365(c). The 20-

year patent term will be based upon the filing date of the earliest

U.S. application that the applicant makes reference to under 35 U.S.C.

120, 121 and 365(c). Whether an applicant is entitled to the benefit of

the filing date of an earlier application is something that an

applicant should examine before the patent is issued. The PTO is not,

unless it comes up as an issue in the examination process, going to

determine whether any of the claims are entitled to the earlier filing

date. Applicant however, should determine whether the claims are

entitled to or require the benefit of the earlier filing

[[Page 20213]] date. If not, the applicant should consider canceling

the reference to the earlier filed application to avoid having the 20-

year patent term measured from that earlier filing date. An amendment

adding or deleting a reference to an earlier filed application

presented prior to a final action will be entered, however, the claims

may be subject to possible intervening prior art.

74. Comment: One comment stated that in view of the fact that a

provisional application is not entitled to claim the benefit of a prior

filed copending national or international application as stated in

Sec. 1.53(b)(2)(iii), the phrase ``other than a provisional

application'' in Sec. 1.78(a)(2) is unnecessary.

Response: Section 1.78(a)(2) is being amended to state that ``any

nonprovisional application claiming the benefit of a prior copending

nonprovisional or international application must contain * * *.''

Section 1.78(a)(2) addresses a 35 U.S.C. 111(a) application which

claims the benefit of a prior copending 35 U.S.C. 111(a) application or

international application.

75. Comment: Several comments objected to the content requirements

for drawings filed in a provisional application as originally set forth

in proposed Sec. 1.83(a)(2). One comment suggested that no rule was

necessary to set forth the required content of drawings in a

provisional application.

Response: In view of the comments received, the proposed amendment

to Sec. 1.83 is withdrawn. Under 35 U.S.C. 113, first sentence,

applicant must furnish drawings in a provisional application ``where

necessary for the understanding of the subject matter sought to be

patented.'' This requirement is also stated in existing Sec. 1.81(a).

Therefore, no further elaboration on the content of the drawings in a

provisional application is believed necessary in the rules.

76. Comment: One comment suggested that the rules specify that

formal drawings are not required in a provisional application.

Response: The suggestion has not been adopted. However, the PTO

intends to examine provisional applications for requirements of form

only to the extent that is necessary to permit normal storage and

microfilming of the application papers. Formal drawings are usually not

required for those purposes.

77. Comment: Several comments suggested that Sec. 1.97(d) be

amended to require the PTO to consider any information disclosure

statement submitted after a final rejection or notice of allowance if

an appropriate fee is paid.

Response: The suggestion has not been adopted because no

substantive change to this rule was proposed in the Notice of Proposed

Rulemaking. The existing rules are designed to encourage prompt

submission of information to the PTO. To permit applicant to merely pay

a fee to have any information disclosure statement submitted after a

final rejection or Notice of Allowance would be contrary to the effort

to encourage prompt submissions.

78. Comment: One comment suggested that Sec. 1.97 be changed so

that an office action which uses a newly cited reference as a ground

for rejection under 35 U.S.C. 102 or 103 cannot be made final.

Response: The suggestion has not been adopted because no

substantive change to this rule was proposed in the Notice of Proposed

Rulemaking.

79. Comment: One comment suggested that the words ``which are not

examined'' in Sec. 1.101 as proposed are unnecessary and could create a

negative implication that some provisional applications are examined.

Response: The suggestion has not been adopted. By statute,

provisional applications are not subject to 35 U.S.C. 131, i.e., the

Commissioner is not permitted to examine a provisional application for

patentability.

80. Comment: Several comments stated that it is unfair to require

small entities to pay the full $730.00 fee set forth in proposed

Sec. 1.129. It is suggested that the fee be changed to $365.00 or less.

Response: Pursuant to Public Law 103-465, the Commissioner has the

authority to establish appropriate fees for the further limited

reexamination of applications and for the examination of more than one

independent and distinct invention in an application. As a result of

additional review, it was concluded that these fees may be reduced by

50% for small entities. Sections 1.17 (r) and (s) are being amended to

indicate that the fees are reduced by 50% for small entities, that is,

$365.00 for small entities.

81. Comment: Several comments suggested that the transitional

procedure set forth in Sec. 1.129(a) as proposed is equivalent to

filing one application, i.e., it provides for an extra examination and

reexamination after the original final rejection, and, therefore, the

requirement for two $730.00 fees, which is equivalent to two filing

fees, is unwarranted. Another comment suggested that if the proposed

$730.00 fee is adopted, the examiner should be instructed to treat the

after-final amendment as any other initial filing, i.e., a new

application, not as an amendment submitted after a non-final office

action.

Response: Under existing PTO practice, it would not be proper to

make final a first Office action in a continuing or substitute

application where the continuing or substitute application contains

material which was presented in the earlier application after final

rejection or closing of prosecution but was denied entry because (1)

new issues were raised that required further consideration and/or

search, or (2) the issue of new matter was raised. The identical

procedure will apply to examination of a submission consideration as a

result of the procedure under Sec. 1.129(a). Thus, under Sec. 1.129(a),

if the first submission after final rejection was initially denied

entry in the application because (1) new issues were raised that

required further consideration and/or search, or (2) the issue of new

matter was raised, then the next action in the application will not be

made final. Likewise, if the second submission after final rejection

was initially denied entry in the application because (1) new issues

were raised that required further consideration and/or search, or (2)

the issue of new matter was raised, then the next action in the

application will not be made final. Thus, the fee required by

Sec. 1.129(a) has been set at the amount required for filing an

application because the procedure provided by the rule is equivalent to

the filing of two applications. No new matter can be entered by payment

of the fee set forth in Sec. 1.17(r).

82. Comment: Several comments suggested that the fees required for

filing a provisional application and those fees required by

Secs. 1.129(a) and (b) for the transitional procedures should not be

greater than the average cost of processing such matters by the PTO.

Two comments stated that the fee required by Sec. 1.129(a) is excessive

relative to PTO costs.

Response: The fee required for filing a provisional application is

set by Public Law 103-465 and the PTO has no discretion with respect to

the amount of that particular fee. As to the fee required by

Sec. 1.129(a), the procedures relating to the first submission provided

by Sec. 1.129(a) is equivalent to the filing of a file wrapper

continuation application under Sec. 1.62, and therefore, the fee

required with the first submission is appropriately set at the same

amount as a filing fee, which is $730.00. The $730.00 fee is subject to

a 50% reduction for small entities. The second submission is equivalent

to the filing of [[Page 20214]] a second file wrapper continuation

application and the fee for the second submission is appropriately set

at the same amount as a filing fee. As to the fee required by

Sec. 1.129(b), the procedures set forth in Sec. 1.129(b) permit

applicants to retain multiple inventions in a single application rather

than having to file multiple divisional applications. The fee for each

independent and distinct invention in excess of one is appropriately

set at the same amount as the filing fee for a divisional application,

which is $730.00. The $730.00 fee is subject to a 50% reduction for

small entities.

83. Comment: One comment suggested that the time period for the

payment of the $730.00 fee for the transitional after-final practice by

extended if applicant files a petition seeking reversal of the

examiner's refusal to enter the amendment after final without fee,

until one month after an unfavorable decision on the petition.

Response: If an earlier filed petition seeking reversal of the

examiner's refusal to enter the amendment after final is granted by the

Director finding that the final rejection was premature, but the

petition had not been decided by the time the Sec. 1.129(a) fee was

due, applicant must submit the Sec. 1.129(a) fee so as to toll the time

period for response to the final rejection. Otherwise, the application

would be abandoned. Upon granting of such a petition by the Director,

the Sec. 1.129(a) fee paid will be refundable to applicant on request.

Applications that fall under Sec. 1.129(a) are under final rejection

and there is a time period running against the applicant. Applicant

must toll that time period by paying the transitional after-final fee

set forth in Sec. 1.129(a) and any necessary extension of time fees and

Notice of Appeal fee. Section 1.129(a) is being amended to indicate

that the submission and the fee set forth in Sec. 1.17(r) may be

submitted before the filing of the Appeal Brief and prior to

abandonment of the application.

84. Comment: One comment suggested that if it is decided that the

transitional after-final practice is made permanent, the PTO should

seek legislative authorization to provide reduced fees for small

entities.

Response: If it is decided that the transitional after-final

practice be made permanent, the PTO will propose legislation to

accomplish this change.

85. Comment: Several comments suggested that Secs. 1.129 (a) and

(b) should apply to all applications regardless of whether they were

filed before or after June 8, 1995.

Several comments suggested that the practices set forth in

Secs. 1.129 (a) and (b) should be made permanent.

Several comments suggested that an applicant should be permitted to

have a submission entered and considered after any final rejection upon

payment of a fee as set forth in Sec. 1.17(r), not just the first and

second final rejections.

Response: The suggestions have not been adopted at this time.

However, the PTO is undertaking a project to reengineer the entire

patent process. These suggestions will be taken under advisement in

that project.

86. Comment: One comment suggested that the PTO make an effort to

treat applications in which a submission under Sec. 1.129(a) has been

filed on an expedited basis.

Response: Once the submission is filed and the fee set forth in

Sec. 1.17(r) is paid the finality of the last PTO action is withdrawn.

The filing of the submission and the fee under Sec. 1.129(a) is

equivalent to the filing of a continuing application and will be

treated in the same fashion and under the same turnaround time frame as

a continuing application.

87. Comment: One comment suggested that PTO practice be changed so

that a first Office action in a continuing application cannot be made

final.

One comment suggested that PTO practice regarding second action

final be relaxed.

Response: The suggestions have not been adopted at this time.

However, the PTO is undertaking a project to reengineer the entire

patent process. These suggestions will be taken under advisement in

that project.

88. Comment: One comment stated that in proposed Sec. 1.129, there

is no express provision for the finality of the previous rejection to

be withdrawn if applicant complies with the proposed rule. It is

suggested that the proposed rule state that the finality of the

previous action would be withdrawn if applicant complied with the rule

when making a first or second submission after a final action.

Response: The suggestion has been adopted.

89. Comment: One comment requested that the PTO clarify whether

Sec. 1.129(a) required the first final rejection to be specifically

withdrawn and a different final (i.e., one containing a new ground of

rejection) rejection made before applicant is entitled to make a second

submission.

Response: The final rule provides that the finality of the previous

final office action is automatically withdrawn upon the timely filing

of the first Sec. 1.129(a) submission and the fee set forth in

Sec. 1.17(r). If the first PTO action following the payment of the

Sec. 1.17(r) fee is a non-final office action, a further response from

applicant will be entered and considered as a matter of right without

payment of the fee set forth in Sec. 1.17(r). If the next office action

or any subsequent action is made final, the finality of that office

action will be automatically withdrawn upon the timely filing of a

second Sec. 1.129(a) submission and the fee set forth in Sec. 1.17(r).

90. Comment: One comment suggested that the PTO not permit the

first PTO action following the payment of the Sec. 1.17(r) fee to be

made final under any circumstances.

Response: The suggestion has not been adopted. The first PTO action

following the payment of the Sec. 1.17(r) fee may be made final under

the same conditions that a first office action may be made final in a

continuing application (see section 706.07(b) of the MPEP). However, it

would not be proper to make final a first Office action in a continuing

or substitute application where the continuing or substitute

application contains material which was presented in the earlier

application after final rejection or closing of prosecution but was

denied entry because (1) new issues were raised that required further

consideration and/or search, or (2) the issue of new matter was raised.

The procedure set forth in section 706.07(b) of the MPEP will apply to

examination of a submission considered as a result of the procedure

under Sec. 1.129(a).

91. Comment: Several comments suggested that the filing of the

first submission under Sec. 1.129(a) within the statutory period for

response set in final rejection should toll the running of the six-

month statutory period.

Response: The filing of a submission, e.g., an information

disclosure statement or an amendment, after a final rejection without

payment of the fee set forth in Sec. 1.17(r) will not toll the period

for response set in the final rejection. However, Sec. 1.129(a) is

being amended to provide in the rule that the finality of the previous

Office action is automatically withdrawn upon the filing of the

submission and the payment of the fee set forth in Sec. 1.17(r). Thus,

the filing of a submission and the payment of the fee set forth in

Sec. 1.17(r) and any extension of time fees and Notice of Appeal fee,

if they are necessary to avoid abandonment of the application, will

automatically toll the period for response set in the final rejection.

It must be kept in mind that the provisions of Sec. 1.129 apply only to

an application, other than for reissue or [[Page 20215]] a design

patent, that has been pending for at least two years as of June 8,

1995, taking into account any reference made in such application to any

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

92. Comment: One comment asked (1) whether it would be necessary to

file a Notice of Appeal and appeal fee with or after the first

submission and fee if the examiner acts on the first submission and

before the end of the six months from the date of the final rejection

issues (a) a notice of allowance, (b) a non-final action, or (c) a

second final rejection; (2) would the Notice of Appeal and fee be due

only at the end of the six months from the date of the final rejection

regardless of whether the examiner has acted on the submission by then;

and (3) if the Notice of Appeal and fee have once been paid following a

first final rejection, would a second notice and fee need to be paid if

a second final rejection were issued and applicant desired to file a

second submission under Sec. 1.129(a).

Another comment suggested that the appeal fee set forth in

Sec. 1.17(e) should not be required where the Notice of Appeal is filed

with a Sec. 1.129(a) submission and the fee set forth in Sec. 1.17(r).

Response: As to questions (1) and (2) and the second comment, if

the first submission and the proper fee set forth in Sec. 1.17(r) are

timely filed in response to the final rejection, the finality of the

previous rejection will be automatically withdrawn and applicant need

not file the Notice of Appeal or the appeal fee. For example, if the

first submission and the proper fee set forth in Sec. 1.17(r) were

filed on the last day of the six-month period for response to the final

rejection, applicant must also file a petition for three months

extension of time with the appropriate fee in order to avoid

abandonment of the application. In such case, applicant need not file

the Notice of Appeal or the appeal fee if the proper fee set forth in

Sec. 1.17(r) was timely paid. However, under the same fact situation,

if applicant failed to submit the proper fee set forth in Sec. 1.17(r),

the finality of the previous rejection would not be withdrawn and the

time period for response would still be running against applicant. In

such case, a Notice of Appeal and appeal fee must also accompany the

papers filed at the six-month period in order to avoid abandonment of

the application. The proper fee set forth in Sec. 1.17(r) must be filed

prior to the filing of the Appeal Brief and prior to the abandonment of

the application.

As to question (3), if the Notice of Appeal and fee have once been

paid following a first final rejection and applicant timely files a

first submission and the proper fee set forth in Sec. 1.17(r), the

finality of the previous final rejection will be withdrawn and the

appeal fee paid could be applied against any subsequent appeal. If the

examiner issues a non-final rejection in response to applicant's first

submission, a further response from applicant will be entered and

considered as a matter of right. If any subsequent Office action is

made final, applicant may file a second submission along with the

proper fee pursuant to Sec. 1.129(a). If the second submission and the

proper fee set forth in Sec. 1.17(r) are timely filed in response to

the subsequent final rejection, the finality of the previous final

rejection will be withdrawn. Any submission filed after a final

rejection made in the application subsequent to the fee under

Sec. 1.129(a) having been paid twice will be treated as set forth in

Sec. 1.116. Applicant may, upon payment of the appeal fee, appeal a

final rejection within the time allowed for response pursuant to

Sec. 1.191.

93. Comment: One comment questioned whether the ``first

submission'' under Sec. 1.129(a) has to be the first response filed

after a final rejection or could it include subsequent responses to the

same final rejection.

Response: The ``first submission'' under Sec. 1.129(a) would

include all responses filed prior to and with the payment of the fee

required by Sec. 1.129(a) provided the submission and fee are filed

prior to the filing of the Appeal Brief and prior to abandonment of the

application.

94. Comment: One comment suggested that Sec. 1.129(a) be changed to

permit the procedure to be available up until the filing of an Appeal

Brief since it is not uncommon to file an amendment after a Notice of

Appeal is filed but before the filing of an Appeal Brief.

Response: The suggestion has been adopted. Section 1.129(a) is

being amended to indicate that the submission and the fee set forth in

Sec. 1.17(r) must be submitted before the filing of the Appeal Brief

and prior to abandonment of the application.

95. Comment: One comment suggested that the transitional after-

final practice be available at any time after final, including after

the resolution of an appeal unfavorable to applicant in whole or in

part.

Response: The suggestion has not been adopted. Section 1.129(a) is

being amended to indicate that the submission and the fee set forth in

Sec. 1.17(r) must be submitted before the filing of the Appeal Brief

and prior to abandonment of the application. The suggestion to extend

the period to after the resolution of an appeal unfavorable to

applicant in whole or in part has not been adopted because the

suggestion would further unduly extend prosecution of the application.

96. Comment: One comment stated that if an examiner must withdraw

the finality of the rejection as a result of the transitional

provision, the examiner should be credited with two counts in order to

be compensated for the additional work.

Response: The examiner credit system is not part of this rulemaking

package. However, as part of the Public Law 103-465 implementation

plan, some accommodation will be made for the extra work performed.

97. Comment: One comment stated that regarding the transitional

after-final practice, the fee should not be required if the only reason

is to have the PTO consider recently obtained art.

Response: Under current practice, if applicant submits prior art

after final rejection but before the payment of issue fee, the art will

be considered if applicant makes the required certification and submits

a petition with the required petition fee of $130.00 (see section 609

of the MPEP). If applicant can make the certification, applicant would

not have to rely on the transitional after-final procedure to have the

prior art considered. In the event that applicant cannot make the

certification, then the procedure under Sec. 1.129(a) is available if

applicant wishes the PTO to consider the prior art without refiling the

application.

98. Comment: One comment suggested that the PTO modify existing

restriction practice to make it more difficult for examiners to require

restriction, for example, by requiring every restriction requirement to

show two-way distinctness and separate status in the art established by

means other than reference to the PTO's classification system.

Response: The suggestion has not been adopted. However, the PTO is

undertaking a project to reengineer the entire patent process. This

suggestion will be taken under advisement in that project.

99. Comment: One comment suggested that the pendency periods

required by Secs. 1.129(a) and (b) should be 18 months rather than 2-

year and 3-year, respectively.

Response: The pendency periods set forth in the rule which

establish eligibility for the transitional procedures are set forth in

Public Law 103-465.

100. Comment: One comment suggested that Sec. 1.129(a) be amended

to [[Page 20216]] permit prosecution to be reopened after a Notice of

Allowance or final rejection upon the filing of a form requesting that

prosecution be reopened and payment of the necessary fee.

Response: The procedures set forth in Sec. 1.129(a) are not

applicable to amendments filed after a Notice of Allowance. Amendments

filed after the mailing of a Notice of Allowance are governed by

Sec. 1.312. The procedures set forth in Sec. 1.129(a) are applicable to

amendments filed after a final rejection. If applicant submits an

amendment after final and the examiner notifies the applicant in

writing that the amendment is not entered, Sec. 1.129(a) permits

applicant to submit a letter prior to abandonment of the application

and prior to the filing of the Appeal Brief, requesting entry of the

prior filed amendment along with the payment of the appropriate fee set

forth in Sec. 1.17(r). The letter requesting entry of the prior filed

amendment would be equivalent to ``a form'' as suggested in the

comment.

101. Comment: One comment suggested that the PTO liberalize its

current practice under Sec. 1.116 to make it easier for amendments or

evidence to be entered and considered after a final rejection.

Response: The suggestion has not been adopted since no change was

proposed to Sec. 1.116 in the Notice of Proposed Rulemaking. However,

the suggestion will be taken under advisement as part of a

comprehensive effort being conducted by the PTO to reengineer the

entire patent process. It should be noted that any change to liberalize

the current practice under Sec. 1.116 would necessitate increasing

fees.

102. Comment: Several comments suggested that the transitional

restriction provision be modified to state that no restriction

requirement shall be made or maintained in any application pending for

three years on the effective date of the legislation. The comment

stated that if restriction requirements made prior to April 8, 1995,

are permitted to be maintained then applicants will be forced to file

divisional applications resulting in the automatic loss of term after

June 8, 1995. A heavy penalty will be placed on the chemical,

pharmaceutical and biotechnology industries, who have less than 4

months to search through the ancestors of all pending applications and

to identify all restriction requirements and to file divisional

applications before June 8, 1995. The comment further suggested that

the current restriction practice be changed in view of the

implementation of the 20-year term.

Response: The suggestion has not been adopted. The two-month date

set forth in Sec. 1.129(b)(1)(i) is from the Statement of

Administrative Action, which is part of Public Law 103-465. Under

section 102 of Public Law 103-465, ``the statement of administrative

action approved by the Congress shall be regarded as an authoritative

expression by the United States concerning the interpretation and

application of the Uruguay Round Agreements and this Act in any

judicial proceeding in which a question arises concerning such

interpretation or application.'' The Commissioner does not have any

authority to establish rules which are inconsistent with the Act. It is

noted that in cases where a restriction requirement was made prior to

April 8, 1995, applicant will have sufficient time to file divisional

applications prior to June 8, 1995, so as to retain the benefit of the

17-year patent term for those divisional applications.

The PTO is currently reviewing the restriction practice in view of

the implementation of the 20-year patent term. It is noted that a

change in restriction practice without changes to other fees would have

a negative impact on funding needed to operate the PTO.

103. Comment: Several comments suggested that proposed exceptions

(1) and (2) in Sec. 1.129(b) ignore the mandatory language of section

532(2)(B) of Public Law 103-465 and should be deleted.

Response: The suggestion has not been adopted. The exceptions

referred to are contained in the Statement of Administrative Action,

which is part of Public Law 103-465. Under section 102 of Public Law

103-465, ``the statement of administrative action approved by the

Congress shall be regarded as an authoritative expression by the United

States concerning the interpretation and application of the Uruguay

Round Agreements and this Act in any judicial proceeding in which a

question arises concerning such interpretation or application.''

104. Comment: One comment asked whether ``restriction'' under

Sec. 1.129(b) apply to election of species under Sec. 1.146.

Response: ``Restriction'' under Sec. 1.129(b) applies to both

requirements under Sec. 1.142 and elections under Sec. 1.146.

105. Comment: Several comments requested that clarification be made

as to what constitutes ``actions by the applicant'' in Sec. 1.129(b)(1)

and specifically, whether a request for extension of time under

Sec. 1.136(a) constitutes such ``actions'' by the applicant.

Response: Examples of what constitute ``actions by the applicant''

in Sec. 1.129(b)(1) are: (1) applicant abandons the application and

continues to refile the application such that no Office action can be

issued in the application, and (2) applicant requests suspension of

prosecution under Sec. 1.103(a) such that no Office action can be

issued in the application. Extension of time under Sec. 1.136(a) would

not constitute such ``actions by the applicant'' under

Sec. 1.129(b)(1).

106. Comment: One comment suggested that the one-month period set

forth in Sec. 1.129(b) is insufficient to give an applicant time to

file a petition under Sec. 1.144 from a restriction requirement.

Several comments suggested that Sec. 1.129(b) be amended to permit

applicant to challenge the restriction requirement by way

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