# Changes To Implement 20-Year Patent Term and Provisional Applications

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URL: https://www.frixlaw.com/law-library/documents/fr%3A95-9838

## Record

- **Collection:** Federal Register
- **Document type:** Rule
- **Published:** April 25, 1995
- **Citation:** 60 FR 20195

## Text

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 arg

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A95-9838. Public record. Not legal advice.